Editorial: On Friendship - PTMG · and gifts. However, there is a maleficent lady Nancy who has developed an evil plan together with he rpa tyf l ows:T the public (and Santa Claus)

Seeking relief by summary judgmentbefore the Trademark Trial and AppealBoard (TTAB) of the United States Patentand Trademark Office is difficult in thebest case, and even more so when theissues are not clear-cut. The case ofAllergan, Inc. v Gems Style Inc., Opp. No.91241842, 2019 WL 5294892 (TTAB Oct.17, 2019)(non-precedential), demonstratesthis point.

Allergan, owner of the registered BOTOXmark for its well-known pharmaceuticalpreparations, moved for partial summaryjudgment on likelihood of confusiongrounds against Gems Style's use-basedapplication to register GS GEMS STYLEHAIR BOTOX for a variety of non-medicated hair care treatments - with'style hair botox' disclaimed. The TTABnoted that 'summary judgment is anappropriate method of disposing of casesin which there is no genuine dispute as toany material fact, thus allowing the case to

be resolved as a matter of law.' (citing Fed.R. Civ. P. 56(a)). Gems Style had admittedin the pleadings that BOTOX was afamous mark. Consequently, the TTABnoted that Allergan's BOTOX mark 'isentitled to a broad scope of protection,and the admitted fame of the mark is adominant consideration in balancing theDuPont factors.'

To establish likelihood of confusion underthe standard DuPont factors, Allerganasserted consumers would perceive thegoods as coming from the same or relatedsources. To bolster its position, Allerganrelied on the prosecution history of anearlier unsuccessful application by GemsStyle to register BOTOX standing alone, inwhich the Examining Attorney found thatthe parties' goods may be perceived asemanating from a single source. The TTABrejected this evidence, remarking that aprior Examining Attorney's decision wasnot binding. The TTAB did not even refer

to Gems Style's earlier application toregister BOTOX on its own as suggestinga bad-faith intent to target Allergan'smark. Gems Style offered no clearexplanation as to why it needed toreference BOTOX in the first place, or therationale for its disclaimer of 'style hairbotox'.

Allergan also offered evidence of someoverlap in trade channels, as approximately20 medical spas purportedly offer bothhair-related goods and services andBOTOX treatments. Gems Styleresponded that Allergan did not show thatenough medical spas offered both types ofgoods, that Internet evidence showedAllergan's goods to be 'expensive andpurchased by sophisticated CertifiedPhysicians at Certified Aesthetic Clinics,'and that the visual differences betweenthe marks were significant.

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Christmas is the time for sendinggreetings cards to friends around theglobe, both old-fashioned ones withenvelopes and more eco-friendlye-cards. So what is friendship and whydo we continue this tradition ?

Facebook® has brought its own brandof friendship to the forefront of our lives

where a click can be enough to feel that someone is respondingto our thoughts and mood. Explaining to my teenage son that inorder to meet up with a long-distance friend when I was his age,we had to plan ahead, send a letter, wait for the reply and hopethat our plans would not have changed in the meantime was metwith a look that made me feel I had fallen in from the Ice Age.And yet good friendship is built on patience, the understanding of

the needs of others and a resolve that distance will not adverselyaffect the relationship.

The French 16th century writer Michel de Montaigne wrote ‘Ilove a friendship that flatters itself in the sharpness and vigour ofits communications’ and I am tempted to tweet this quote to allNATO leaders as they prepare to celebrate the 70th anniversaryof the organisation. International organisations need to evolve asevents and circumstances put such friendship to the test of time.Thankfully, PTMG has managed such an evolution over 50 yearsand it is heart-warming to review past editions of LL&P and notehow many times Profile candidates refer to the importance offriendship among the members of our Group.

Here's hoping that friendship is at the heart of your festiveseason!

Vanessa

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PharmaceuticalTrade Marks GroupPharmaceuticalTrade Marks Group Sept 2017

Editorial: On Friendship

US Update by Jonathan S. Jennings Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP

Dec 2019

New Members

We are delighted to welcome the following new members to the Group:

Nicoletta Epaminonda from Lellos P.Demetriades Law Office LLC, Nicosia,Cyprus [email protected]

Dan Comerford from TrademarkNow,Kilkenny, [email protected]

John Pryor from Com Laude, London,UK [email protected]

Julia Zhevid from Petosevic, Moscow,Russia [email protected]

Pedro Manuel Cordova Balda fromFerrere, Quito, [email protected]

Gustavo de Freitas Morais fromDannemann, Siemsen, Bigler & IpanemaMoreira, Rio de Janeiro [email protected]

Olusegun Adesokan from Adesokan &Adesokan, Lagos, [email protected]

Helen Kavadias from HWL EbsworthLawyers, Sydney, [email protected]

Fiona Nguyen from Girl Friday IP PtyLtd, Perth, [email protected]

Jennifer Kepler from Gevers Legal,Berchem, Belgium [email protected]

Edwina [email protected] and Emmy Hunt [email protected] bothfrom Potter Clarkson LLP, Nottingham,UK

Oleh Karpenko from Petosevic, Kiev,Ukraine [email protected]

Mariam Sabet from Al Tamimi &Company, Dubai, United Arab [email protected]

Heather Boyd from Pillar IP Inc.,Greely, Ontario, Canada [email protected]

Ana Gómez Sánchez from Pons IP,Madrid, Spain [email protected]

Jens-Christian Jahnke from Balder IPLaw, Madrid Spain [email protected]

Katharina Hannen from EscheSchümann Commichau, Hamburg,Germany [email protected]

Daphne Lainson from Smart & Biggar,Ottawa, Canada [email protected]

Joseph Goedhals from Adams &Adams, Pretoria, South [email protected]

Sebastian Stigar from Bryn Aarflot AS,Oslo, Norway [email protected]

David Degen from Novartis PharmaAG, Basel, [email protected]

Yonca Celebi from Moroglu Arseven,Istanbul, [email protected]

Viktoria Schoneweg from Darts-ip,Brussels, [email protected]

Stella Weng from Ferrere, Montevideo,Uruguay [email protected]

Urfee Roomi from Sujata Chaudhri IPAttorneys, Noida, India [email protected]

Joseph Sarmiento from Betita CabilaoCasuela Sarmiento, Muntinlupa City,[email protected]

Christoph Schreiber from dompatentvon Kreisler, Cologne, [email protected]

Ling Zhao from CCPIT Patent &Trademark Law Office, Beijing, [email protected]

Anna Toh from Amica Law LLC,Singapore [email protected]

Luca Colombo from Brandstock LegalGmbH, Munich, [email protected]

Valentin Ivanov from Dennemeyer &Associates S.A., Moscow, [email protected]

Andrew Wiseman from Allens, Sydney,[email protected]

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Words from the Chair

A Christmas Carol: Christmas isaround the corner. Somewhere upnorth Santa Claus is pretty busywrapping all the gifts and is preparingfor his road trip during which he willdeliver all the Xmas presents. Thisyear Santa Claus is extremely proudsince his traditional means of trans-portation (the reindeers and a sleigh)were recently endorsed as 'environ-ment friendly' by Greta Thunberg andher friends...... On the other hand drafting the list ofrecipients of Xmas presents isextremely challenging this year. Thecurrent tenant of the White Househas called Santa Claus repeatedly on aspecial direct line called Twitterdesperately trying to convince himthat he is a good guy deserving praiseand gifts. However, there is amaleficent lady Nancy who hasdeveloped an evil plan together withher party fellows: They try to showthe public (and Santa Claus) in endlesspublic hearings that the currenttenant of the White House does notdeserve any gifts at all, but on thecontrary should be punished. But this is by far not the only problemfor Santa. Somewhere hidden in thedark German forests rests a SleepingBeauty called Angie in her crystalpalace. She has been reigning her littleland for more than 14 years and by amagic spell is now caught in herpalace and has lost all her energy. Sheis now afraid to be forgotten byeveryone. That is why she at leastwants to ensure that Santa Claus willpay her a visit with massive mediacoverage. But Santa Claus keepsignoring her phone calls and messagessince he is not so sure that in herenchanted state of paralysis shedeserves his visit and presents. Meanwhile back in our PTMGuniverse everything looks pretty niceand Santa Claus has no doubt thePTMG members deserve his Xmasgifts. We have had two wonderfulconferences this year. We started inItaly in March where we stayed in thehills around Rome with a magnificentview on the Eternal City. And only inOctober did we meet in rainy Berlinfor our Autumn Conference. Bothconferences were big successes interms of content of presentations andvenues. I am confident that the 100thconference in London in March willbe another success story. I am lookingforward to seeing many of you at thisrather landmark event. Until then I wish you a peaceful,healthy and happy festive season withfamily and friends!

Frank Meixner

Members News

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Boya Yin [email protected] and DiWu [email protected] both from LungTin Intellectual Property Agent Ltd.,Beijing, China

Ben Natter from Haug Partners LLP,New York, [email protected]

Sue Ironside from Ironside McDonaldIntellectual Property, Auckland, NewZealand [email protected]

Sean Ibbetson from Bristows LLP,London, UK [email protected]

Evan Fultz from Womble BondDickinson (US) LLP, Raleigh, NorthCarolina, USA [email protected]

Karolina Schoeler from Harte-Bavendamm, Hamburg, [email protected]

Herschel Perel from WebTMS Ltd.,Reading, [email protected]

Kirsten Gilbert from Marks & ClerkLaw LLP, London, UK [email protected]

Julian Rayner from Wiggin LLP, London,UK [email protected]

Aude Thrierr from Casalonga, Paris,France [email protected]

Damian Broadley from AJ Park,Wellington, New [email protected]

Ananyaa Banerjee from S.S. Rana &Co., New Delhi, India [email protected]

Pawat Varapirom from TMPIntellectual Property, Bangkok, [email protected]

Taryn Byrne from Page, White & FarrerLimited, London, UK [email protected]

Oliver Spies from Page White & FarrerGermany LLP, Munich, [email protected]

Audrey Baujoin from Cabinet Laurent& Charras, Dardilly, France [email protected]

Caroline Brou from Darts-ip, Munich,Germany [email protected]

Members News continued Huaming Tang from China Patentagent (H.K.) Ltd., Beijing, China [email protected]

Kit Wan from China Patent Agent(H.K.) Ltd., Hong Kong, [email protected]

Xiang An from China Sinda IntellectualProperty Ltd., Beijing, [email protected]

Luiz Augusto Lopes Paulino fromDannemann Siemsen, São Paulo, [email protected]

Hans Eriksson from Westerberg &Partners Advokatbyrå AB, Stockholm,Sweden [email protected]

Neeta Kumari from Yellow BrandProtection, Aschaffenburg, [email protected]

Gianni Chiarolini from Yellow BrandProtection, Mechelen, [email protected]

Manuela Kirch-Kopp from MedaPharma S.à.r.l., [email protected]

Jonathan Ball from Gowling WLG (UK)LLP, London, UK [email protected]

Anna Piechówka from Hasik Rheimsand Partners, Warsaw, [email protected]

Moves and Mergers

Nils Wolfgang Bings has left DWFGermany to join PwC Legal AG inDüsseldorf, Germany. Nils can be con-tacted at [email protected]

Sarah Power has left William Fry tojoin Pinsent Masons in Dublin, Ireland.Sarah can be contacted [email protected]

Please remember to let us know of anychanges to your contact details. You cannotify me either via the PTMG websitewww.ptmg.org or directly [email protected] or by writing to meat Tillingbourne House, 115 GregoriesRoad, Beaconsfield, Bucks, HP9 1HZ

Lesley EdwardsPTMG Secretary

US UpdatecontinuedThe TTAB perfunctorily rejected Allergan'ssummary judgment motion, finding thatfactual questions existed as to the similarity'of the parties' marks and the conditionsunder which and buyers to whom sales aremade, i.e., normal care v careful,sophisticated purchasing.' The TTABacknowledged that 'adispute as to amaterial fact is genuine only if a reasonablefact finder viewing the entire record couldresolve the disputed matter in favour ofthe non-movant.' With this standard inmind, the TTAB seemed too willing toidentify the similarity of marks as a genuineissue of disputed fact given Gems Style'sadmission of the fame of BOTOX, and theseeming lack of any other facts necessaryfor the TTAB to rule on the issue.Similarly, the conditions under which theproducts were sold would seem fairly clear,given the types of products at issue here.A silent factor in denying summaryjudgment here may have been that GemsStyle was not represented by counsel, andthe TTAB tends to be somewhat lenienttowards parties representing themselvespro se.

With the denial of summary judgment, thecase will proceed to the full trial phase.Briefing summary judgment motions addsexpense to the opposition procedure, andwhether to file them is a case-by-casedecision. Theoretically, they should begranted when the facts are very straight-forward and essentially undisputed in theview of a reasonable fact finder. However,the TTAB historically has shown somereluctance to grant summary judgment inany event, but especially when the factualissues are more complex.

100th PTMGConference

The Savoy London March 16th- 17th 2020

Chair Frank Meixner opened theconference at Berlin’s InterContinentalHotel, welcoming 70 new attendees,joining the conference group of 400.Respects were paid in a minute’s silencefor PTMG’s dear friend and Treasurer, SeanBrosnan who passed away in August. Hewill be missed by all Committee andBoard members, and the membership as awhole, with his wife Lesley, children andgrandchildren in everyone’s thoughts.

In the first session of the conference,Michael Hawkins of Noerr looked attrends ininternationalcases over thelast 6-9months,includinggenuine use,bad faith,nutraceuticals,the power of aprefix inlikelihood ofconfusion,hashtag trademarks, reputed trade marks and a previewof new cases coming up. Michael talked usthrough the Viridis case, where clinicaltrials for BOSWELAN were deemedinternal use only and there were noproper reasons for non-use, such that anon-use attack succeeded. Cases of BIGMAC and ADIDAS respectively showedthe difficulties of evidencing genuine usesatisfactorily, even for high profile brandswhere use of the mark might be perceivedas a given. In the ADIDAS case, 12,000pages of evidence were deemedinsufficient. Bad faith findings are also onthe rise, with the MONOPOLY decisionbeing a notable example. That there mighthave been additional motives, aside fromthat of avoiding the need to prove use ofthe mark, was not enough to makere-filing strategies acceptable, nor was thefact that this was a common strategyamongst trade mark owners.

This led neatly into the Founder’s Lecture,in which TomHannah ofGSK reviewedthe issues ofthe SKY vSKYKICK case,albeit stillawaiting theAdvocateGeneral’sopinion. Tomlooked at how

SKYKICK raises questions of requiredclarity and precision in specifications ofgoods. Sky’s specifications ranged from4000 to 8000 words and included suchdiverse items as Christmas trees, whipsand bulletproof jackets, but of morerelevance is whether 'computer software'per se is too broad as a specification term,and whether a registration found to be inbad faith for certain goods/services shouldbe wholly invalid or just partially so. If onlysome goods/services would be lost, thiscould be an incentive for more bad faithfilings, but there would be serious reper-cussions for rights holders if they couldlose their rights entirely. Whilst case lawsuggests that 'pharmaceutical preparationsand substances' is an acceptable term, thistoo could change in future. Just as the USrequires specification of the nature orpurpose of pharmaceutical preparations,we might well be moving the same way inthe EU. This evolving area of case law willcertainly present challenges forpharmaceutical trade marks with long leadtimes.

Manje Epping and Wiebke Baars of TaylorWessing then presented an update onregulatory status, health claims and trademarks in the area of botanicals, givingexamples of how many of the sameumbrella brands sell botanicals as foods or

as medicinal products in close proximity inthe marketplace, including in pharmacies,with very similar packaging and claimsused. They gave some insight intodelimitation between foods and medicinalproducts in the EU; although it should beclear cut, we learned how, really, it is not.EU member states have quite differentassessments from country to country andso there is no real harmonisation whendealing with botanicals in foods versusmedicinal products. This complicateslabelling for across the EU territory, andwith differences in marketing botanicals asfoodstuffs compared with pharmaceuticals.Free movement of goods is affected by thelack of harmonisation and insufficient

mechanisms of mutual recognition, whilstareas such as Health Claims Regulation forbotanicals remain incomplete.

Next stop was North America, fromwhere we time travelled with Scott Joliffeof Gowling WLG through internationaltrade agreements, beginning with the Parisand Berne Conventions, and first attemptsto harmonise IP over 100 years ago, todiscussion of the latest North AmericanAgreement. Whilst NAFTA and TRIPSwere significant,Scott looked atother tradeagreementsnegotiated overthe years.Although theTrump adminis-tration hastaken thestance thatinternationaltreaties harmthe US people,it did sign the USMCA free trade agree-ment for US, Mexico and Canada, but thishas yet to be ratified. For Canada, 2019has seen significant changes to Canadiantrade mark law with, inter alia, the removalof use as a prerequisite to registration,Madrid Protocol implementation andadoption of the Nice classification. Scottfelt that International treaties have for 30years done a good job of harmonising IPand, whether the latest agreement isratified or not, North America is still in agood place.

After a long, lazy lunch of many courses,we re-assembled to hear from Tara Aaronof Aaron Sanders PLLC on the subject of

data privacy.Tara began withsome soberingfigures from asurvey of UKPharma ITdecisionmakers, whichrevealedadmissionsfrom 60% ofthosequestioned,

that their company had lost importantdata. Worse still, IT decision makers hadadmitted to not reporting breaches. AsGDPR has, from 2018, provided for dataprotection for the EU, the CaliforniaConsumer Protection Act will come into

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Scott Joliffe

Michael Hawkins

Tom Hannah

PTMG 99th Conference report, BerlinPharmaceutical Trade Marks @ Checkpoint CharlieRachel Havard, AA Thornton, United Kingdom

Manje Epping and Wiebke Baars

Continued on next page

Tara Aaaron

efect from the beginning of 2020, andconsumer protection legislation is soon tocome online in Japan, Korea, Brazil,Nigeria, Australia and Thailand. Privacyraises important questions now in IPinvestigations, especially in cases ofcybersquatting. As 'baddies have rightstoo', GDPR is leading to challenges. Inparticular, where WHOIS information wasoften used in IP investigations, these arenow hampered by privacy shields andheavy redaction of the WHOIS database.Tara provided some recommendations forpharma trade mark attorneys, includingthe need to work with privacy depart-ments, to remember the broad definitionsof personal information, to carefullyconsider legitimate interests and how weare sharing information.

André Maré ofENSAfrca thenspoke aboutmanagingpharmaceuticaltrade markportfolios inAfrica. Withmore focus inAfricancountries uponfacilities forhealthcare andaccess to

medicine, has come increasing scope forpharmaceutical trade mark activity. Andréobserved how, in Africa, the commercialorigin of pharmaceutical brands has linksto the history of colonisation; for example,UK businesses tend to enter throughSouth Africa. André touched uponnational as well as regional protectionsystems ARIPO and OAPI, and consideredthe Madrid Protocol route. There is theneed for caution if looking to use theMadrid Protocol for African countries; forenforcement, there may be little benefit, aslocal ratification of agreements has notbeen completed, but there may be somebenefit if registering for regulatorypurposes, and little or no objections willbe raised to Madrid designations. Africa’sfirst to file trade mark systems make trademark squatting an issue, especially byagents and distributors. Whilstenforcement is on the increase, there arelong timeframes and the forms tend to bepaper based and bureaucratic. Othergeneral words of caution were that lowcompetition amongst African trade markattorneys leads to higher costs, and extracare should be taken when selecting localattorneys.

The last presentation of the day was fromBaris Kalayci of Gun + Partners on thesubject of fighting counterfeits anddiverted medicines in and from Turkey.Smuggling and repackaging ofpharmaceuticals in Turkey is apparentlyprolific, but Turkey is taking significant

steps toaddress theproblem, as asignatory of theMEDICRIMETreaty and alsowith a numberof relateddomestic lawsand regulations.There arecriminal sanc-tions for pro-ducing and sellingfake medicines, including custodialsentences for trade mark infringement.Systems have also been introduced formedicine tracking, requiring that serialnumbers be added to products. As theSocial Security Institution buys mostmedicines in Turkey, we were told thatpharmacists are getting involved indiverting medicines, with drugs often overordered so that the patient gets what theyneed and the rest is sold on. Customs IPapplications are very effective andCustoms are given training on what tolook for. For goods imported into othercountries, investigations in Turkey areworth considering to see if those goodsare being exported from Turkey.

Our day drew to a close with a relaxedand charming evening at Berlin’s ArminiusMarket Hall. Jolly music played as weentered the historic market hall to begreeted by long candlelit tables betweentraditional stalls, subtle coloured lightingcasting shadows on the high ceiling, and afeast of everything from schnitzel andwarm fried potato salad, fish and chips andsushi to homemade ice cream anddelicious cakes. Not to mention thewonderful selection of crisp local beersand wines. This was a great way to spendthe evening of Reunification Day inGermany, with animated chatter amongstfriends and colleagues from around theglobe.

What is the best way to follow a late nightof merry-making? Two back-to-backsessions on IP tax strategies the nextmorning, of course! Credit to all, in thatthe lecture hall was crowded, and OliverWehnert of Ernst & Young GmbHexpressed his pleasure at the sight of the'quite full room'before him. Asthe intangiblenature of IPmakes it mobileand easy tomove from onecountry toanother, Olivertalked of theresultingchallenges invaluing IP. Heexplained that

identifying registered rights is the easypart, but a registration itself has no valuefor tax purposes, and the IP needs to beexploited for value to be added. Whilst thelegal owner used to be the one entitled toresidual profit, now it is much more vague,with legal ownership deserving only afunding return if nothing else is attachedto add value, and it is the functions toenhance value that deserve residual profit.This leads to the need to look at who isinvolved in development and exploitationand where in the business or groupstructure they sit. Many documentationrequirements therefore arise formultinational companies and there is theneed for granular identification of howdecisions are taken. In the event thatdouble taxation occurs, this can beexpensive and complicated to cancel out.

Alexander Loh of Merck KGaA followedon from Oliver’s presentation to discusshis company's approach to IP taxstrategies, i.e., to pay their fair share oftaxes in the countries where they areactive but they (quite rightly) do not wantto pay twice. Alexander reiterated that, inpharma, it is a difficult question as towhere profit is to be split, with longdevelopment cycles, but also projects maynot be successful later on. Considerationshould be given to a transfer of IP as eachstage is reached. High values can be builtup in IP and high capital gain results in hightaxes, suggesting that it is better totransfer from the entrepreneur, then tothe manufacturer, and then to localdistribution companies. Alexander alsodiscussed functions for attracting profits,reinforcing that where people are locatedand who makes the strategic decisions is akey question. Marketing intangibles anddigital business are likely to make thisdifficult,especially asdigital businesshas no physicalpresence.Potentialconsumercontributions toadding of valueto IP in aspecific country,e.g. throughsocial media,could bring evengreater challenges.Admiration was expressed here for the'innovative spirit' of the tax authorities.

Next, Ling Zhao of CCPIT spoke aboutprotection of pharma brands in China,with focus on well-known trade marks andbad faith applications, taking us throughthe recent changes to Chinese legislation.Much evidence is apparently needed toprove well known status, and there can bereluctance by Chinese examiners to

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André Maré

Baris Kalayci

Oliver Wehnert

Alexander Loh


review it all, such that they may prefer touphold other grounds. However, wellknown marks can enjoy protectionextended todissimilargoods. Themaincategories ofbad faithapplicationsinclude copiesand imitationsof famoustrade marksand filingwithout intentto use, oftenapparent where several thousand applica-tions are filed by one individual applicant.Bad faith decisions are gaining traction,leading to a more positive outlook, withChinese trade mark filings slowing down,and less private applicants. Meanwhile,Class 5 remains one of the top favouredclasses for foreign applicants in China. It isgood news that the success rate ofoppositions is improving, especially withthe crack down on bad faith applications,but Ling strongly recommends registrationof trade marks as early as possible inChina, and forward planning.

Our focus remained upon China for apresentation from Aaron Hurvitz ofKangxin Partners, on linguistics and theregulatory regime. Aaron spoke of thehuge problem of trade mark squatting inthe territory, with first filing of trademarks having become an entrepreneurialbusiness. Chinese applicants will travel the

world and lookfor lower profilebrands forwhich to filetrade markapplications, andthey will evenmake token useof the marks todefend againstnon-usechallenge. Thereis a clear dangerin not searching

in China before proceeding there, asobstacles will be run into quickly. Aaronrecommended registration of trade marksin English, Chinese and transliterationssimultaneously, and to cover necessaryclasses and subclasses, to prevent othersfilling the gaps. Although parallel importsare not a real concern, as pharma is verywell regulated by China’s Food & DrugAdministration and any repackagingrequires a trade mark certificate and alicence from the trade mark rights holder,counterfeit pharmaceutical manufacture isa widespread problem across the wholeterritory, with very proficient organisedcrime groups behind it. The Chinesegovernment is making efforts to educate

the public and tackle the problemorganically, and this is something pharmacompanies can assist with, especially tohelp recognition of counterfeits.

After a tasty buffet lunch and a goodopportunity for networking, we took astep away from pharma and trade marks,to hear from Florian Drücke of theGerman Music Industry Federation, on thesubject of the new Copyright Directiveand securing a level playing field in the EU.How people listen to their music hasevolved significantly from the SonyWalkmanthrough tomusic stream-ing, in just ashort space oftime. Florianexplained how,with newplatforms, it isbecomingincreasinglydifficult toenforcecopyright, butalso how imple-mentation of the new Directive is likely toassist, with responsibility for onlinecontent-sharing service providers forlicensing content, transparency forconsumers and non-commercialconsumer uploads covered by licences. Inrelatively recent history, cease and desistapproaches were directed at generalconsumers downloading music. This didresult in negative PR in music copyrightowners looking to police what is theirs,but in an evolving industry with differentand ever changing ways of listening tomusic, it is getting harder and harder forthe creator to benefit. Clearer digitalrights should mean fewer worries forcitizens and, indeed, a more level playingfield.

Then to Brazil, and Gustavo Piva deAndrade of Danneman Siemsen discussedsoftware issues in the pharma industry,including the evolving area of digital health.Gustavo observed how software isrequired in such a diverse range of areas,from the logistics of manufacture todelivery with a complex chain of events, totesting and diagnostics with software andalgorithms increasingly replacing doctors,to sensors which transfer biologicalresponses into electric signals, plus healthapps and AI solutions. Gustavo talked usthrough the evolution of law since the1970s when software and hardware weresold together, through the 1980s whencopyright protection became possible insoftware, through to TRIPS and Braziliancopyright legislation in the 1990s underwhich computer programs were defined asprotected in the same way as literaryworks, with source code and programmingessentially a text, as well as copyright in agraphic interface if it is original and the

overallappearance isnot dictated byfunction. Brazilpermitscopyrightregistrationwhich willproveownership plusdate ofcreation andhelp with

obtainingpreliminary injunctions. Patients’interests are a key consideration to thecourts and there is well developedBrazilian law in the software dispute area.

Rachel Cockburn Buhl of Ferringpresented the final topic of theconference, 'The in-house trade markfunction', sharing with us how she hasneeded to go way beyond portfoliomanagement to deal with numerouschallenges, including long lead times,multiple brand candidates for globalclearance, insufficient communicationbetween regulatory and legal teams andthe high rejection rate of trade marks formarketingauthorisations.Rachel hadfound PTMGto be a hugesource ofsupport, andeveryone lovedher 'I heartPTMG' slide,leading tomuch covertphotography ofthe slide fortheir marketing tweets! In pharma, patentsare often the focus … but patents expire.The in-house role is to secure and manageassets and to persuade management.Stakeholders may not think of trade marksfirst, hence the need to embed them inthe heart of the business. We were alsogiven some useful reminders of howoutside counsel can help, in assistingportfolio management as much as possible,remembering regulatory processes, launchprocesses and lead times, and beingmindful of internal challenges andconstraints on budget.

With the end of another excellenteducational programme, we dressed in ourfinery for the final evening’s Gala Dinner atthe beautiful, baroque CharlottenburgPalace. Armed with umbrellas, begged andborrowed, we braved the rain, to berewarded with more candlelight, music,delicious food and good company. Wewaited with bated breath to hear wherewe will go for the Autumn 2020conference – Amsterdam; but first, Londonin the Spring, so keep those umbrellashandy!

Ling Zhao

Aaron Hurvitz

Florian Drücke

Rachel Cockburn Buhl

Gustavo Piva de Andrade

6

EUROPEAN UNION

Dr. Thomas Tresper,Wegnerpartner Wegner & PartnermbB

A comma can kill, it is said, or save a life.In the matter of life and death of anopposition, proof of use for some of theearlier marks depended on the GeneralCourt’s interpretation of the specificationof goods – and the importance ofpunctuation.

Background

AxiCorp had obtained an internationalregistration designating the EU for theword mark AXICORP ALLIANCE andcovering the goods 'pharmaceuticalpreparations' in Class 5, among othergoods and services. AlliancePharmaceuticals filed an opposition basedon, inter alia, likelihood of confusion withthe earlier EUTM registration forALLIANCE, covering the following goodsin Class 5: 'Pharmaceutical preparationsbut not including infants’ and invalids’foods and chemical preparations forpharmaceutical purposes.' The EUIPOrejected the opposition on the grounds oflack of evidence of genuine use. The Boardof Appeal concluded that the OppositionDivision had correctly interpreted thespecification strictly, as excluding chemicalpreparations for pharmaceutical purposes.Even if it were to be considered that thespecification included certainpharmaceuticals of herbal origin, theapplicant had not shown that the markALLIANCE had been used for suchpharmaceuticals, given that the evidence ofuse submitted referred exclusively tosynthetic components.

Decision

The General Court annuls the decision inso far as the Board of Appeal dismissedthe appeal for lack of evidence of genuineuse. The Court states that the wording ofthe specification in English, the language inwhich the earlier EUTM was filed, mightgive rise to two possible literalinterpretations: In the absence ofpunctuation or additional information, onepossible literal meaning of the specificationsuggested that both 'infants’ and invalids’foods' and 'chemical preparations forpharmaceutical purposes' were covered bythe restriction 'but not including'.However, another possible literalinterpretation did not exclude 'chemicalpreparations for pharmaceutical purposes'from the specification. The Court findsthat, in the context of determining theextent of the protection of an earlier

EUTM and assessing the evidence ofgenuine use of that mark, if two possibleliteral interpretations of the specificationof that mark exist, but one of them wouldlead to an absurd result as regards theextent of the protection of the mark, suchdifficulty must be resolved by opting forthe most plausible and predictableinterpretation of that specification. TheCourt holds that it would be absurd toadopt an interpretation of thespecification which would have the effectof excluding all of the applicant’s goods,leaving only goods in respect of which ithas not sought trade mark protection asgoods protected by the earlier EUTM. Inview of these considerations, the EUIPOhad incorrectly interpreted thespecification.

Comment

Can punctuation or its absence kill? SirRoger Casement claimed that he wasbeing hanged on a comma, but that maybe a myth. In the famous example, 'Let’seat Grandma', it would be absurd indeedto assume that a comma or rather itsabsence marked the difference betweengood children and cannibals. And yet, thesentence has often been used as a lessonon how to be clear and precise. Clarityand precision is required of a trade markapplicant when identifying the goods andservices for which the protection of themark is sought, to enable others todetermine the extent of the protection onthat basis alone. That burden was on thetrade mark applicant even before thecurrent Article 33(2) EUTMR entered intoforce. In the case decided by the GeneralCourt, one might question whether itwould lead to a nonsensical result if'chemical preparations for pharmaceuticalpurposes' were meant to be excludedfrom the goods 'pharmaceuticalpreparations', and whether the authoritiesor third parties are able to establish thetrade mark proprietor’s intention on thesole basis of the identification of thegoods.

INDIA

Radha Khera & Samta Mehra,Remfry & Sagar

In October 2019, the High Court of Delhiin the case of Glaxo SmithKlinePharmaceuticals Ltd. and Ors. v NavalKishore Goyal and Ors. once againadjudicated on 'deceptive similarity oftrademarks'.

The marks in question were ZENTEL andFENTEL- both for pharmaceuticalpreparations. Glaxo Smithkline

Pharmaceuticals Ltd. (GSK), together andthrough their subsidiaries and affiliatesworldwide is engaged in the business ofmanufacturing and marketing a wide rangeof pharmaceutical, medicinal and healthcare products. ZENTEL is one of itsbrands of medicine for de-wormingpurposes in human beings and standsregistered in India since 14 May 1980 andhas been used in India since 1986.

In March 2003, on learning of a similarproduct FENTEL, being manufactured andsold by the Defendants for identicalgoods, GSK filed a suit against them. Thesuit was first listed in July 2003 whereinthe Court granted ex-parte injunction infavour of GSK and restrained thedefendants from manufacturing, selling oroffering for sale pharmaceuticalpreparations under the trade markFENTEL or any other similar mark.Thereafter, the said injunction wasconfirmed in September 2004. Proceedingsin the main suit progressed and on thebasis of the pleadings, issues were framed.The main issues to be decided were a)whether the use of the mark FENTEL bythe defendants amounts to infringement ofplaintiffs registered trademark ZENTELand b) whether the suit was liable to bedismissed on the ground of delay, lachesand estoppel.

The Defendants’ contention was that theirproduct FENTEL had been introduced in1998 and had acquired substantialreputation in the market. They claimedthat the word FENTEL had been derivedfrom the name of their company, nature ofdisease and the drug Albendazole – F fromFAITH, which was part of the company’strading style, ENT obtained from theGreek word enterikos which meantintestines and EL from the name of thedrug. They further contended that themark was being publicized and promotedalongside the ZENTEL products forseveral years and that the Plaintiffs hadnot raised a timely objection on use oftheir mark. Thus, on grounds of delay,latches and estoppel, the Defendantargued that plaintiffs were not entitled tothe relief of injunction.

Addressing the issues raised in the Suit,the Court highlighted the dictum bySupreme Court in the case of F. HoffmanLa Roche v Geofferey Manners wherein itwas held that the marks have to becompared from the point of view of anaverage person of imperfect recollectionand meticulous comparison of the wordsside by side is not to be made. The truetest to determine deceptive similarity iswhether the totality of proposed marks issuch that it is likely to cause confusion or

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mistake in the minds of personsaccustomed to the existing trade mark.Stress has to be laid on common featuresrather than on differences in essentialfeatures. Bearing this in mind, the Court inthis case held that the marks ZENTEL andFENTEL were overwhelmingly similarvisually, structurally and phonetically. TheCourt further considered that both drugswere being used for treatment of thesame condition and while these drugswere to be sold on prescription by amedical practitioner, mistakes could not beeliminated for deceptively similar trademarks – either on account of lack ofcompetency or availability of medicinesacross the counter which is notimprobable in a country like India. Thecourt also observed that the adoption ofthe said mark by the defendants is nothonest and the explanation given foradoption is downright imaginative and far-fetched and only to confuse the court.

The Court also touched on the aspect oflaches and stated that mere inaction onthe part of the plaintiff did not precludethem from suing for infringement. It statedthat in order to claim the defence ofacquiescence, there should be a tacit or anexpress assent by the plaintiffs to thedefendants using the mark in a wayencouraging the defendants to continuethe business.

In light thereof, it was confirmed that theuse of the mark FENTEL by the defendantamounts to infringement of the plaintiffsregistered mark ZENTEL and a decree ofpermanent injunction was passed in favourof the plaintiffs. Also, based on the factsand the law, the contention of defendantson delay and acquiescence was rejected.However, nominal damages were grantedin the matter as the Court believed therewas no basis to award damages solely onthe assumptive sale of products. It statedthat the Plaintiffs failed to prove actualdamages and only costs to the tune ofUSD $4,200 were granted.

The case once again highlights the conceptof deceptive similarity of trade marks andthe need for a stricter scrutiny requiredfor pharmaceutical, medicinal and healthcare related products. It is only fair thatextra caution be exercised whilst dealingwith products concerning human health.

SERBIA

Gordana Pavlovic, Cabinet Pavlovic,Brussels and Belgrade

The Patent and Trade Mark Office hasprepared a draft Trade Mark Law whichaims to further harmonise the Serbian

trade mark legislation with that of theEuropean Union (in particular theHarmonisation Directive 2015/2436 andthe Enforcement Directive 2004/48). Thedraft was approved by the Governmentand sent to the Parliament for debate.Below is the summary of the mainprovisions of the proposed Law.

On the positive side, the proposed law re-introduces a provision stating that a trademark owner can prohibit not only theimport and export of infringing goods, butalso their transit through Serbia. In thepast, the Serbian trade mark legislationprovided for the protection of trademarks against goods in transit but,following changes in the Europeanlegislation, such protection was removedfrom the Serbian legislation. The re-introduction of this provision is awelcome move.

On the negative side, the proposed lawreplaces national exhaustion byinternational exhaustion. This is a result ofextensive lobbying against nationalexhaustion on the grounds that it distortscompetition and results in higher pricesfor end consumers. In the first draft, theSerbian IP Office had proposed theprinciple of European exhaustion, but theidea was later abandoned since Serbia isnot yet a member of the European Union.The proposed Trade Mark Law providesfor international exhaustion, which will bereplaced by European exhaustion whenSerbia joins the European Union.

The proposed Trade Mark law alsointroduces opposition proceedings, incombination with ex officio examinationon absolute and relative grounds - thelatter being the system that the Serbian IPOffice has followed for years. This meansthat trade mark applications will first beexamined on absolute and relativegrounds and, if found suitable forregistration, they will be published in theIntellectual Property Gazette foropposition purposes. The Serbian IP Officeclaims that keeping a system of ex officioexamination on relative grounds minimisesthe instances of consumer confusion,which may occur because small andmedium-sized companies often do nothave the resources to monitor the Serbianregister and take appropriate steps tooppose later trade marks.

The deadline for opposition is threemonths from publication date. If theapplicant does not respond, the oppositionwill be automatically accepted. At therequest of the applicant, the opponentmust submit evidence of use of its earlier

trade mark, otherwise the opposition willbe refused. The proposed law provides fora cooling-off period of 24 monthsmaximum.

The decisions of the Serbian IP Office canbe challenged by filing an administrativelawsuit before the Administrative Court.The proposed law abandons the possibilityof appealing to the Board of Appeals atthe Ministry of Education, a remedy whichdid not work very well in practice.

Further, the proposed law provides for themandatory use of trade marks. Thirdparties can challenge a trade mark in caseof unjustified non-use during a period offive years starting from the registrationdate or the date of last use. The novelty isthat, in case of cancellation for non-use,the trade mark will cease to be valid onthe date of filing of the non-usecancellation action. In the past, trademarks ceased to be valid on the date ofexpiry of the five-year period (from theregistration date, respectively from thedate of last use). Use of an earlier trademark is also required to file anopposition/invalidation/infringementaction, but only if the trade mark wasregistered for longer than five years.

Further, trade mark enforcement has beenimproved under the proposed law. The lawfeatures detailed provisions on thecollection of evidence, preliminaryinjunctions, the securing of evidence andthe calculation of damages. The statute oflimitation remains three years from thedate on which the trade mark ownerbecame aware of the infringement and theidentity of the infringer, and five yearsfrom the date of the infringement. Thenovelty is that, in case of continuousinfringement, the five-year term iscalculated from the date of the lastinfringement, which is a welcome change.The law also introduces liability forintermediaries.

The proposed law provides that the newlaw will apply to applications filed andproceedings initiated, after the enactmentof the law.

TURKMENISTAN

PETOSEVIC

A new Law on Trade Marks entered intoforce in Turkmenistan on 19 June 2019,introducing important changes andclarifying the trade mark registrationprocedure.

Trade Mark Definition

The new law defines a trade mark as averbal, graphic or 3D designation of any

International Update continued


colour or colour combination, or acombination of such designations, whichserves to distinguish goods, works andservices. The expression 'otherdesignations' referring to non-traditionaltrade marks is not present in the new law,so it follows that non-traditional trademarks will be denied protection. The term'service mark' that was present in theprevious law was also removed from thenew law for being synonymous with theword 'trade mark'.

Protection Period

According to the new law, trade marksfiled before 5 November 2008 will bevalid for 10 years from the registrationdate, like in the previous law, while thosefiled after this date will be valid for 10years from the application filing date.

Well-Known Trade Marks

The new law excluded the previouslyexisting articles relating to the protectionof well-known trade marks, which meansthat trade marks can no longer berecognized as well-known or be grantedspecial status in Turkmenistan, unless thedetermination of well-known status isprovided for in the by-laws which are yetto be adopted.

Grounds for Refusal

In the new law, the list of grounds forrefusal of a trade mark registration is nowdivided into two, namely, absolute andrelative, while several new grounds forrefusal were added. Trade Marks will nowalso be refused if they contain thefollowing:

• Names of states, international organizations, etc., as well as words derived from them, (e.g. Russian, Turkmen, Mexican, etc.); these may be used as unprotected elements, providedthat there is a permission of the relevant authority;

• Characteristics of goods, including theirtype, quality, quantity, properties, purpose, value, as well as the time, place and method of their production or sales; these could previously be included as unprotected elements, which is no longer possible.

List of Goods/Services

It is no longer possible to file a trademark application using class headings tocover all goods and services indicated inthe classes. Where class headings andother general terms are indicated in thelist of goods, the scope of protection willinclude only those goods and/or services

covered by the literal meaning of thoseterms.

Subsequent Filing of Documents

The time period for the subsequent filingof documents related to the applicationhas been extended from two to threemonths from the filing date. This deadlinecan be further extended for up to threemonths (rather than six months, aspreviously) upon the applicant's request.One document that cannot besubsequently filed is the proof of paymentof the official trade mark filing fee.

Formal Examination

The new law also specifies that formalexamination should be carried out withinone month after the expiration of twomonths from the application filing date.The former law did not specify the timeperiod for conducting formal examination.

Under the new law, applicants can alsorequest accelerated formal examinationwithin ten working days from the requestfiling date, subject to payment of a fee. Theformer law did not include such provision;it was included in a by-law.

Oppositions and Observations

While the former law required theTurkmen PTO to notify applicants of anyoppositions or observations receivedfollowing the completion of formalexamination and the publication ofrelevant information in the OfficialGazette, the new law has removed thisrequirement.

Substantive Examination

According to the new law, substantiveexamination should begin after the formalexamination, but not earlier than sixmonths from the application's prioritydate. While the previous law required thecompletion of substantive examinationwithin 12 months from the filing date, thenew law only specifies when substantiveexamination should begin.

However, the new law introduces thepossibility to accelerate substantiveexamination to as little as 20 working daysfrom issuing the formal examinationdecision, at the request of the applicantand subject to payment of a fee. At thesame time, if an application with an earlierconvention priority is received fromanother applicant for an identical trademark and for similar goods or services,Turkmen PTO is entitled to invalidate thetrade mark registered in the acceleratedprocedure.

Invalidation of Trade MarkRegistration

The new law introduces several newgrounds for trade mark invalidation,namely if:

• The trade mark was registered in the name of a person not engaged in entrepreneurial activity; Article 3 of thenew law states that 'a trade mark may be registered in the name of a physical person engaged in entrepreneurial activities without forming a legal entity, or a legal entity engaged in entrepreneurial activities';

• The trade mark is identical or confusingly similar to a previously registered appellation of origin (AO), unless the designations in question are included in the trade mark only as unprotected elements and registered for the same goods and in the name of the same person as the AO;

• An agent or representative of the trademark owner, in one of the contracting parties to the Paris Convention, filed anapplication for the registration of the same trade mark in their own name, unless this action was justifiable;

• An identical or confusingly similar trademark to the competitor's is registered for similar goods and/or services; however, clarification is needed to further interpret the meaning of 'competitor' in this context.

Disputes and Appeals

The new law now specifies that trademark registrations may be invalidated byTurkmen PTO's Appeals Commissiondecisions or court decisions. This is animportant new provision because itclarifies which state bodies havejurisdiction to handle trade markinvalidations.

Finally, the period for appealing the AppealCommission's decisions in court has beenshortened from six months to 45 calendardays.

VENEZUELA

Ricardo A. Antequera H., AntequeraParilli & Rodríguez

For Venezuela, 2019 has been a verychallenging year. The political andeconomic crisis has increased and relatingto intellectual property rights, we facedconstantly changes in process anddecisions that impacted the regular courseof matters.

Since 2014 a highly discriminatorypayment system for foreign entities was

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This year has proved useful in providing uswith two potentially very formative EUtrade mark cases dealing with the thornyissue of what constitutes bad faith.

AG opinion in SkyKick v Sky

In his opinion in the Sky vs SkyKick case,the Advocate General (AG) of the Courtof Justice of the European Union (CJEU)on 16 October 2019 potentially intro-duced ground-breaking new principles inEU trade mark law.

In the view of the AG, a registeredproprietor could be regarded as acting inbad faith if there was no genuine intentionto use the mark on the full range ofapplied-for goods or services, even incases where a very broad specificationterm might also cover goods or servicesfor which there is a genuine intention touse. Should the CJEU follow the AG'sopinion, this could have far-reaching ramifi-cations for trade mark registrationscovering broad terms.

This widely reported case followed areferral from the High Court of Englandand Wales and involved proceedings inwhich the well-known broadcaster Skysued SkyKick (a supplier for cloudmigration software) for trade markinfringement of UK and EU registrationsfor SKY. The registered specificationsincluded goods such as 'whips' and 'bleach-ing preparations', for which Sky prima faciehad no intention to use, as well as moreobviously relevant, but extremely broad,goods such as 'computer software'.SkyKick contended that Sky's registrationswere invalid because (i) the goods andservices were not specified with sufficientclarity and precision and (ii) Sky had nointention to use in relation to the fullrange of goods and services, thus theapplications were made at least partially inbad faith.

In the AG's opinion:

• A lack of clarity and precision is not, in itself, a ground for invalidity. However, permitting registration for excessively broad terms such as 'computer software' is unjustified and contrary to the public interest. Furthermore, while such a term may be clear, it lacks precision, as the goods are too variable

in their function and field of use to be compatible with the function of a trade mark. Such a registration would provide a monopoly of immense breadth not justified by any legitimate commercial interest of the proprietor. On this point, the opinion goes so far as to reference the strict practice of the USPTO, seemingly with a nod of approval.

• The intention of the proprietor to use should be considered when assessing whether the criteria for precision is met, mirroring the principles for determining revocation for non-use, in particular when use is only in relation to subcategories of goods/services. Theopinion does not envision a change in examination practice, as it would remain inappropriate for a trade mark office to determine whether there is anintention to use during the course of examination. Nevertheless, it is difficultto see how an office, which is required to consider the clarity and precision of specifications, could justify not objectingto a term such as 'computers software' on examination in the face of a ruling by the CJEU that it is not precise.

• Any application filed with no intention to use, even if only in relation to some goods/services, resembles an anticompetitive attempt to prevent third parties from developing their owncommercial activities, which is clearly not the objective of the trade mark system. The mere fact that the applicant may be attempting to acquire a general monopoly, rather than preventa specific third party, is irrelevant and such behaviour still amounts to an abuse of the trade mark system.

• Contrary to prior case law of the General Court, the Regulation and Directive are sufficiently clear (now in Article 59(3) and Article 7 respectively)that, where grounds for invalidity only apply to some goods or services, a registration shall be declared invalid only to that extent. As such, a registration can be deemed only partially filed in bad faith, including where the intended use was only in relation to subcategories of categories applied for.

Bad faith or not? The sky is the limitRachel Wilkinson-Duffy, Baker McKenzie


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implemented by Venezuelan TrademarkOffice (SAPI). This was followed by atemporary suspension of payment ofofficial fees in 2018, and then at the startof this year the designation of theVenezuelan government crypto currency,the Petro, as the only way to pay officialfees. Despite the fact that there is noprovision in the US sanctions (USExecutive Order 13850) that prohibitsUS persons from the payment of officialfees for the acquisition and maintenanceof IPRs in Venezuela, payment in Petros isin violation of these sanctions and thusrights holders can no longer pay thesegovernment fees.

As a result of extensive discussions andhearings between the IP community andSAPI, a new alternative was offered. Atthe beginning of May, SAPI posted on itswebsite and related social mediaaccounts the availability of a newprocedure for the payment of officialfees for foreign IP holders in US dollarsor EUROS, but only in cash.

However, the mechanism is far fromperfect, since this new procedure willrequire authorized IP law firms to haveaccess to US dollars in cash. Early on inAugust another set of US sanctions wereenacted upon Venezuela, prohibiting USindividuals or companies from engagingin transactions with the Government ofVenezuela, by broadening the scope anddefinition of Government of Venezuela toinclude not only some state ownedcompanies and particular officials butalso including this time all property andproperty interests of the Government ofVenezuela

On the same day as the issuance of thisnew Executive Order, 6 August 2019,OFAC published new General Licenses,and among them, General License 27 inwhich they expressly authorize USpersons to pay fees to the Governmentof Venezuela and to pay reasonable andcustomary fees and charges to attorneysand representatives within the US orVenezuela in connection with intellectualproperty transactions.

Consequently, General License 27authorizes transactions in connectionwith the protection, maintenance andenforcement of intellectual propertyrights in Venezuela, including the paymentof official fees. Expressly permitted arethe filing, prosecution and maintenanceof any patent, trade mark, copyright, orother form of intellectual propertyprotection in Venezuela, as well as thefiling and prosecution of opposition orinfringement proceedings with respect toan IP right, or the entry of a defense insuch proceedings.

EUIPO Board of Appeal in Monopoly

The second noteworthy recent case onbad faith involved the slightly earlierdecision of the EUIPO's Second Board ofAppeal issue on 22 July 2019 in KreativniDogadji v Hasbro, which at the time ofwriting was understood to be underappeal to the General Court.

This case involved an application toinvalidate an EUTM registration owned byHasbro for MONOPOLY on the groundsthat it was filed in bad faith for the solepurposes of circumventing the userequirements. Hasbro had prior EUTMsfor the identical mark MONOPOLY andthe challenged registration coveredgoods/services already protected underthese older, and notably vulnerable tonon-use attack, registrations, in addition toa wider category of goods/services.

After the unusual step of conducting anaural hearing, in which Hasbro providedoral evidence through cross-examination,the Board held that it saw no commerciallogic for the re-filing of an identical markfor identical goods/services other than toavoid the need to prove use inenforcement proceedings. Hasbro'sregistration was therefore declared invalidfor all the goods/services alreadyprotected by prior registrations. Thisfinding appears to have focused on twopoints:

i. that the Board considered Hasbro's evidence to include an admission that there is an advantage in a filing strategy which avoids the need to prove genuineuse in opposition proceedings (althoughthis point was contended by Hasbro), and

ii. Hasbro did not allow its older registrations to lapse on renewal, implying that the decision to re-file wasnot for the purpose of portfolio consolidation. On the second point, however, it is worth noting that the older registrations formed the basis of ongoing oppositions when they becamedue for renewal, which under EU principles would have fallen away insofar as they were based on these registrations had they not been renewed.

Importance for pharma

Both these cases, if the principles areupheld, will have a potentially far-reachingimpact on EU trade mark practice.SkyKick would introduce into EU law therequirement for a genuine intention to usewhich has not previously been consideredpresent and significantly lift the bar onwhat is considered to meet the criteria of'precise'. This has the potential to shiftfiling practice on specifications within theEU from its current, arguably overlypermissive, approach to one which ismore closely aligned with that followed inthe US. The extent of such a shift is,however, likely to determine whether thisis widely perceived as a positive change, oran undue restriction on trade markproprietors. For many of us who haveexperienced the ever increasing challengeof clearing a new mark for use andregistration, this shift is likely to be at leastcautiously welcomed. It may, however,have a lower practical impact in theoverall clearance of pharmaceutical trademarks though, where it is necessary tocross both the regulatory and trade markhurdles. Unlike other sectors in which amore precise description of goods andservices would avoid a conflict with marksregistered for those of a different functionand field of use, a pharmaceutical markmay still be refused regulatory clearance ifconsidered too similar to a trade markused in relation to a product for anentirely different indication. Nevertheless,the requirement for a more precisedescription is still likely to have a positiveimpact on trade mark clearance for class 5goods.

This leads to the question of whetherbroad terms such as 'pharmaceuticalpreparations' or 'medical devices' are likelyto be permissible if the AG opinion isupheld. Applying the AG's reasoning, itmust be assessed whether the goodswhich fall within these broad categoriesare too variable in their function and fieldof use to be compatible with the functionof a trade mark. There is certainly scopeto maintain that they are and we canexpect this line of argument to becomecommonplace. Whether or not the trademark offices in the EU would start toapply such a stricter approach at theexamination stage remains to be seen.However, with only partial invalidity orrefusal being a potential outcome, for

those brand owners who wish to maintainthe practice of filing for broad terms,there seems little incentive to limit thescope of protection applied for to moreprecisely mirror the intended use, otherthan to avoid future objections. The AG'sopinion does not categorically answerwhether a trade mark office or court inhanding a dispute may proactively amend abroad specification term, or if theproprietor must offer this up in advanceof a decision. An analogy was drawn inthe opinion between the assessment ofintention to use and after genuine use, sofollowing that reasoning it seems areasonable conclusion that the proactiveapproach by the office or court would beappropriate, as it is when determining thescope of protection in a non-userevocation action. Nevertheless, while thisremains uncertain, it would seem prudentfor applicants seeking to file broadly toadopt the policy of including both broadand more precise terms independentlygoing forward.

A further concern envisaged by these twocases is the potential combination of arequirement for a genuine intention to useand a prohibition on re-filing, if the policyadopted in Kreativni Dogadji v Hasbro isupheld and broadly applied. This wouldhave the potential of introducing aparticularly significant additional hurdle forpharmaceutical trade mark owners. Asestablished in Viridis v Hecht Pharma, alack of use due to delays in the conclusionof clinical trials and obtaining marketingauthorisation does not constitute a validreason for non-use sufficient to maintain aregistration. In such circumstances, onecan envisage a scenario where a trademark owner has lost its first registrationdue to a non-use attack but is barredfrom re-filing on the grounds that thismerely circumvents the use requirements.One can only hope that a properassessment of the facts in such a casewould result in a different outcome. Arequirement for an intention to use, ifapplied strictly, could also have significantimplications for those who keep a trademark bank, where at the time of filing it isnot known which specific goods the markis intended for use.

Given the very wide-reaching potentialimpact of these cases, they will certainlybe ones to watch closely.

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Bad faith or not? The sky is the limit continued

Our May 2019 article in LL&P focused onthe non-use defence in oppositionproceedings. This time we will beconcentrating on the non-use defence incourt proceedings. Article 25/7 of theIndustrial Property Code (IPC) regulatesinvalidation actions and Article 29/2regulates infringement actions regardingtrade marks. Both articles refer in theirlast paragraphs to Article 19 foreseeingthe procedures for the non-use defence.Article 19 of the IPC governs the non-usedefence in opposition proceedings.Accordingly, the mechanism of a non-usedefence can be applicable for invalidationand infringement actions.

In invalidation actions based on confusingsimilarity, the non-use defence may beclaimed by the defendant similar toproceedings before the Turkish Patent andTrademark Office (the Office). The plaintiffmust prove use of the trade mark that thecourt action relied upon within theprevious five years, starting from the filingdate of the court action. This mechanismhas also been incorporated into courtactions. The main reason behind this is toavoid earlier trade mark owners abstainingfrom filing oppositions where this defenceis implemented and therefore bypassingsuch a defence mechanism by only filingcourt actions once the younger trademark is registered.

If the trade mark that a court actionrelied upon has been registered more thanfive years before the contested trademark's filing or priority date, the plaintiffmust also prove the use of its trade markwithin the previous five years. If theplaintiff fails to prove that the trade markwas effectively used in Turkey or if thejustified reason for not using the trademark is not proven, the request forinvalidation will be partially or entirelydismissed.

In infringement actions, if the defendantrequests proof of use, in accordance withArticle 29/2 the plaintiff must prove theuse of its trade mark within the previousfive years from the filing date of the courtaction.

The non-use defence, both in invalidationand infringement actions can be asserted

according to general procedure rulesdetermined in the Turkish Procedure Lawnumbered 6100. As per the TurkishProcedure Law, upon filing the invalidationor infringement action the plaint petitionand its exhibits are notified to thedefendant. Once the plaint petition isnotified, the defendant must submit aresponse petition within two weeks. Inthat response petition the defendant mustallege the non-use defence so that thecourt then orders the plaintiff to submitevidence supporting the use of the trademark(s) relied upon. But the IPC providesa period of one month for submittingproof of use evidence, so these twoprovisions are contradictory.

Since the non-use mechanism is regulatedas a defence, the courts do not have theauthority to ex-officio request proof ofuse from the plaintiff. A decision regardingtrade mark use shall be made atpreliminary examination stage beforehearing the case on the merits if thedefendant asserted the non-use defence.In practice, we see that most judges donot render such decisions regarding non-use defence at the preliminaryexamination phase. The courts refer toexperts for evaluation of trademark use.The court may choose to appoint oneexpert or an expert panel and based upontheir evaluation, the judge then renders adecision on the merits.

It should be noted that in case thedefendant applies for such a defencemechanism, and if the court concludesthat the trade mark is not used andtherefore dismisses the request forinvalidation or infringement actions, thiswould not automatically cause therevocation of the plaintiff ’s trade mark.However, the defendant is entitled to filewithin two weeks a counter-actionrequesting the revocation of the plaintiff ’strade mark.

Due to the technicality of thepharmaceutical sector, usually the courtsappoint an expert panel consisting ofthree experts. The experts are required bythe court to provide opinion merely onthe technical points within their specialistarea and not on the merits of the case.Consequently, based on parties’

submissions, evidence and the expertreview of the file, the court delivers itsjudgment at the last hearing and within acouple of months the reasoned decision isdrafted.

As to proving trade mark use - invoices,price lists, catalogues, product codes,products, packaging, signboard visuals,advertisements, promotions and theirinvoices, marketing surveys, opinionresearches, information about thecommercial activity and any additionaldocuments or statements regarding Turkeycan be submitted to the courts.

While assessing genuine use the courtshall take different factors intoconsideration. For example, time, place,nature, extent of use and use for thegoods/services for which the trade markis registered should be examined. Allevidence submitted to the file should beexplicitly linked to the trade mark, datedand should demonstrate genuine trademark use in Turkey.

Under Turkish regulations, pharmaceuticalproducts should obtain a marketingauthorization from the Turkish Ministry ofHealth to be sold only in pharmacies andmarketed to healthcare professionals. Suchmarketing authorizations can be appliedfor only by entities or real personsresiding in Turkey. Advertising ofpharmaceuticals to the general public isprohibited. Therefore pharma companiescan only promote their products tohealthcare professionals which can presentdifficulties when proving use. Brochures,presentations, documentation regardingscientific meetings held in relation to theirproducts and any other kind ofdocumentation is important in thisconnection.

Another hurdle is the fact that often theentity owning the marketing authorizationin Turkey and the trade mark owner arenot the same. In such cases, the trademark owner should explain theconnection with the local entity andsubmit extensive documents showing thatthe local entity is using the trade mark inTurkey.

Non-Use Defence in Litigation Proceedings in Turkey Güldeniz Dogan Alkan and Dicle Dogan, Gün + Partners

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The legalization of medical cannabis in2017 has turned into an attractivedestination for related businesses. Newbusiness perspectives have opened up;however, anyone wishing to do businesswith cannabis should be familiar with itscomplex legal framework.

Medical marijuana has been legal inGermany since March 2017. Since thisdate, doctors have been able to prescribecannabis flowers and extracts fromcannabis to seriously ill patients. Thenumber of patients receiving cannabis onprescription has increased rapidly,triggering a genuine demand for domesticgrowing and importation and thus offeringa great opportunity for innovative businessmodels. However, it should be noted that,under German law, medicinal cannabisproducts are subject to both pharma andnarcotics legislation with accordingly highrequirements on product quality, importand distribution.

The domestic growing of cannabis ismanaged and controlled by the FederalCannabis Agency (Cannabisagentur) set upby the Federal Institute for Drugs andMedical Devices (Bundesinstitut fürArzneimittel und Medizinprodukte,BfArM), as the competent regulatoryauthority whose main task is ensuring ahigh quality of cannabis produced inGermany. Home growing, even for medicalpurposes, remains prohibited andproduction can only be carried out bycompanies selected by the CannabisAgency in a government bidding process.

The first successful tender procedure wascompleted in May 2019. The tender coversa total of 10,400 kg of cannabis, spreadover four years with 2,600 kg each. It isdivided into 13 lots of 200 kg per year.This means that the first contract hasbeen awarded for the cultivation andharvesting of a total of 7,200 kg ofcannabis and is expected for the fourthquarter of 2020.

The total production will be bought up bythe Cannabis Agency and subsequently

resold without profit to pharmaceuticalmanufacturers, wholesalers andpharmacies holding the required licenses.Until the next bidding process is initiated,the growing of cannabis remains reservedonly for those that have been alreadyselected by the Cannabis Agency.

Additionally, supply of cannabis productsto patients will be covered by imports.Importation of cannabis requires severalnarcotics and pharma legislation-relatedlicenses and authorizations. In particular,any company wishing to import cannabisproducts into Germany has to apply tothe Federal Opium Authority, a sub-unit ofthe BfArM, for a narcotic trade license; theapplicant must have a registered office inGermany and has to provide specificdocumentation, inter alia relating to thepersons in charge, who must have therequired expertise, as well as relating tothe local production plants, which must besecured against unauthorized removal.

Finally, it should be mentioned thatviolations of the applicable narcoticslegislation may result in severe criminalsanctions. Still, if the licensing proceedingsmentioned above are observed, thelegalization of cannabis offers greatopportunities for innovative businessmodels.

In this context, cannabis manufacturersshould consider protecting their brand asa trade mark. To note that in Germanytrade mark protection for recreationalcannabis is not possible because the retailof it would constitute an infringement ofthe Narcotic Drugs Act(Betäubungsmittelgesetz - BtMG). This iswhy the German Patent and TrademarkOffice for the time being only acceptstrade mark protection for marketablecannabis. A typical list of goods andservices would include the followingitems: 'cannabis for medical purposes'(Class 5), 'foodstuffs containing marketablecannabis' (class 29), 'marketable cannabisplants' (Class 31), 'smoking articles for theuse of marketable cannabis' (class 34),'retail of marketable cannabis' (Class 35).

Opportunities in Medical Cannabis in GermanyMargret Knitter, SKW Schwarz

continuedIt is particularly important to submitinvoices issued by the local entity.Experts appointed by the court oftenseek to find the link between the twoentities; invoices and commercial booksof the local entity showing that theproduct bearing the trade mark has beensold in Turkey are relevant. If invoices andother documents proving the use of thetrade mark are issued by another entity,even if this entity is affiliated to the trademark owner, the courts may not directlyaccept such evidence. Therefore it isimportant to submit license or sublicenseagreements or franchises and/ormerchandising agreements in order toprove the relation of the companies andthe use of the trade mark.

In a recent case, experts examining theinvoices of the local entity stated thatthey could not determine whether theamounts shown in the invoices submittedto the case file were recorded to thecommercial books of the local entity aswell. Hence evidence showing the sale ofthe product by the local entity might notsuffice to convince the court that thetrade mark has been genuinely used bythe trade mark holder or by anauthorized representative.

Other documentation can also supportthat the trade mark has been used. Forexample, the maximum sale prices ofpharmaceuticals are set by the Ministryof Health and are published in theMinistry’s official website as well as thenumber and date of the marketingauthorization of the product. Thisinformation is available to the public andmay be used as evidence supporting theretrospective use claim.

Although non–use defence is a newconcept in invalidation and infringementactions, IP courts and experts appointedby the court are experienced in whatdocuments should be submitted sincerevocation actions based on non-usewere regulated before the IPC in DecreeNo. 556. Therefore, while assessing thisdefence, the courts take intoconsideration such elements as the lackof advertising material or the possiblejustified reason for a pending marketingauthorization from the Ministry ofHealth.

Where were you brought up andeducated?

My parents emigrated from the UK(Yorkshire) to Canada. I was born inToronto. We moved to the US when I wasvery small, and I grew up in Indianapolis,Indiana. All my schooling, including lawschool, was in Indiana.

How did you become involved intrade marks?

In my first legal job (as an associate withan Indianapolis law firm) I handled trademark, copyright and Internet issues forvarious clients. The Internet was juststarting, so there were many interestingnew issues.

What would you have done if youhadn’t become involved inintellectual property?

I would probably be a pastor in a churchsomewhere or a missionary.

Which three words would you use to

describe yourself?

Humble, kind and humble. If repeat wordsare not allowed, then: humorous.

Complete the following sentence:

“I wish that …

There was more forgiveness in the world.Whether in the family or workplace oranywhere else, we should show muchgrace to one another.

What was your biggest work orcareer mistake and what did youlearn from it?

I litigated a case involving a weak trademark and lost, when the case should havesettled. I learned to be more cautious andto consider all options.

Complete the sentence: I’m no goodat …

Selecting clothes that match. I’ve learnedto let my wife select my clothes. ForPTMG in Berlin she took photos of theclothes for me to wear, but then myluggage was delayed and arrived late Fridayevening. Oh well!

What’s the best thing about your job?

No two days are the same. You neverknow what will show up in your email orat your door.

What did you want to be as a child?

I wanted to be a journalist, as I likedwriting and was told that our family wasrelated to Charles Dickens (still don’tknow whether that is true).

What is the soundtrack to your life?

Amazing Grace (how sweet the sound,that saved a wretch like me….).

What is a common misperception ofyou?

As an evangelical Christian I can still enjoygood beer or wine and have a good time.

What is your philosophy in a nutshell?

Show the love of Christ to others.

Who was your mentor or role model?

Bob Lee, who is known/remembered wellby many in PTMG. Being in-house trademark counsel for a large multinationalpharmaceutical company is no ordinaryjob. Bob patiently trained and mentoredme for many years. I owe a lot to him!

Whom do you most admire andwhy?

William Wilberforce. He lived and

followed his Christian convictions and

made a large impact on his part of the

world – especially abolition of the slave

trade.

Which book or books are youcurrently reading?

Boundaries by Dr. Henry Cloud and Dr.

John Townsend on when to say yes and

know how to say no in order to take

control of your life. Very interesting.

What is your favourite children’sbook?

The King, the Mice and the Cheese.

Which book changed you?

Ecclesiastes (in the Bible). I was struggling

with the big picture of life, and it really

resonated with me. Very philosophical and

yet very practical. It pointed me in a very

different direction.

What is your all-time favourite film?

The Lord of the Rings, Return of the King.

Frodo and Sam, the riders of Rohan, good

v evil, lots of good stuff!

What is comfort eating for you?

A donut and tea (English breakfast tea of

course).

What is your favourite item ofclothing?

All my favourite items of clothing have

been thrown away by my wife, as I wore

them far too often.

© 2019 The Pharmaceutical Trade Marks G roupC irculated fo r information only to PTMG Members. The G roup takes no responsibility fo r the contents

Edito r : Vanessa ParkerTel.: +33 679 316 860 email: [email protected]

PTMG committee member Bruce Longbottom is AssistantGeneral Counsel for Trademarks at Eli Lilly and Company, withresponsibilities including: (1) managing trademark matters on aglobal basis, (2) supporting global anti-counterfeiting strategy, and(3) advice on copyright compliance and Internet matters. Brucehas been active in INTA (former Chair of AnticounterfeitingCommittee and on Board of Directors). He has testified as awitness in criminal trials involving counterfeiting of Cialis as wellas testifying before a US Congress subcommittee on ‘CounterfeitDrugs: Fighting the Illegal Supply Chain’. He is honored to carryon Lilly’s long-standing commitment to PTMG.

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PROFILE: Bruce Longbottom