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The recent case of Align Technology, Inc., vStrauss Diamond Instruments, Inc.,examines the doctrine of 'nominative fairuse' in the context of social mediaadvertising. The United States Court ofAppeals for the Ninth Circuit, whichincludes California, originally coined thephrase to describe an alternative test foranalyzing likelihood of confusion wherethe defendant uses [plaintiff's] trade markto describe the plaintiff's product, ratherthan its own… provided [the defendant]meets the following three requirements:First, the product or service in questionmust be one not readily identifiablewithout use of the trade mark; second,only so much of the mark or marks maybe used as is reasonably necessary toidentify the product or service; and third,the user must do nothing that would, inconjunction with the mark, suggestsponsorship or endorsement by the trademark holder.
Other courts may consider additional ordifferent factors, or treat nominative fairuse as an affirmative defense.
Here, Align asserted its well-knownINVISALIGN and ITERO registered marksfor teeth-straightening devices and
procedures against Strauss's competingdental device called 'MagicSleeve'. Alignbrought suit over Strauss's use of thehashtags #itero, #iteroscanner,#iteroelement and #invisalign inadvertising for its MagicSleeve device onFacebook, LinkedIn, Instagram andYouTube. Strauss had placed thesehashtags next to photographs showing itsMagicSleeve demonstrating, along with adcopy, that the MagicSleeve product couldcover the wand of Align's iTero scanner.
Align moved for a preliminary injunction.Strauss defended by asserting its use ofAlign's marks in the hashtags constitutednominative fair use, and therefore was notactionable. The court rejected thisargument, however, because Strauss had insome instances used Align's marks toidentify Strauss's own products, notAlign's. This contradicted 'the foundationalassumption of nominative fair use' that theuse must refer to the mark holder'sproduct. The court also found thatStrauss had used more of Align's marksthan necessary. The hashtags, appearingnear the ad's text, were superfluous anddid not even identify Strauss's product.The court suggested an effective and
lawful ad might have referenced howStrauss's MagicSleeve interconnected withAlign's products, but that was not donehere.
The court also distinguished the role ofhashtags in advertising from earlier casesfinding nominative fair use in metatags,concluding: '[m]etatags function behindthe scenes to direct an internet searcherto a webpage, but hashtags are visible toconsumers in advertising.' Thus, the visiblenature of hashtags cut against the analogyto metatag cases.
Ultimately, after disposing of thenominative fair use issue, the court foundAlign had established likelihood ofconfusion and granted the preliminaryinjunction against the hashtag use, whilegranting and denying this remedy as toother conduct alleged in the case.
The case provides some guidelines onhow pharma companies may lower theirrisk in attempting to make fair use of theircompetitors' marks. Of note, theincorporation of the marks in hashtags,per se, did not dictate the result. Thecourt applied the basic principles ofnominative fair use in this social mediacontext in the same way as it would formarks appearing in any other media.
As we all watched in horror at the fireravaging Notre Dame cathedral incentral Paris on Monday April 15th, fewcould have ever imagined that thecolony of honey bees that had beenintroduced to the rafters in Spring 2013would ever survive. And yet, some180,000 bees kept in hives on the leadroof that collapsed are alive! Satellitephotographs have shown that three of
the hives did not burn whilst the bees themselves have been seenbuzzing around one of the gargoyles. This variety of bees, BrotherAdam, is particularly adapted to urban beekeeping and thecathedral management had been keen to participate in thisbiodiversity experiment on the rooftoops of the French capital.
In a less spectacular fashion but closer to home, imagine mydelight when our old apple tree produced blossom again earlierthis Spring, after being partially consumed by flames in our ownfire last November. At the time, the fireman seemed somewhatmore concerned with preserving this natural heritage than our
rickety garden shed, but watching the bees buzz around andpollinate our future crop of cooking apples, I fully comprehendfor the first time how resilient Nature can be.
Unfortunately, this resilience does not always produce positiveresults. The recent upsurge in measles epidemics which killed110,000 people in 2017 worldwide is a reminder of the power ofMother Nature. Unicef recently revealed that more than 500,000children in the UK have not been vaccinated against measles andfirst reports for 2019 are showing that cases are up 300% on lastyear, thus continuing the trend of the past two years. Measles is ahighly contagious disease which, even if caught early, can lead tocomplications including blindness and loss of hearing. Negativepress around the two dose vaccination in many high-incomecountries is causing the return of this virulent childhood disease.
As we head towards the holiday season in the Northernhemisphere, I do hope that you will all find time to enjoy thepositive power of nature, enjoying some peaceful, sunny momentsin which to read this edition of Law, Lore & Practice.
Vanessa
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PharmaceuticalTrade Marks GroupPharmaceuticalTrade Marks Group Sept 2017
Editorial: The power of Mother Nature
US Update by Jonathan S. Jennings Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
May 2019
New Members
We are delighted to welcome the following new members to the Group:
Tina Bond from Takeda PharmaceuticalsInternational AG, Zurich, [email protected]
Tiago Reis Nobre from InventaInternational SA, Lisbon, [email protected]
Kfir Luzzatto from Luzzatto &Luzzatto, Omer, Israel [email protected]
Zhanqing Tang from Chofn IntellectualProperty, Beijing, [email protected]
Juliane Messner from Geistwert,Vienna, Austria [email protected]
Markus Rouvinen from ThomsenTrampedach GmbH, Copenhagen,Denmark [email protected]
Marco Martinelli from ThomsenTrampedach, Malmö, [email protected]
Daniel Hunt from Brand Institute,Miami, Florida, [email protected]
Claudio Intrieri from Brandstock AG,Munich, [email protected]
Elena Galletti from BrandstockServices AG, Milan, Italy [email protected]
Alberto Pelosi from Bugnion SpA,Milan, Italy [email protected]
Sunmi Lee from Y.P. Lee, Mock &Partners, Seoul, South [email protected]
Fatima Arrad from SMAS IP,Casablanca, Morocco [email protected]
Gonçalo de Magalhães MoreiraRato from Magalhães Associados, Lisbon,[email protected]
Judith Bussé from Crowell & Moring,Brussels, Belgium [email protected]
Leonor Magalhães Galvão fromMagellan IP, Rio de Janeiro, [email protected]
Ludovico Megalini from Darts-ip,Brussels, Belgium [email protected]
Julia Matheson from Hogan Lovells USLLP, Washington, DC, USA [email protected]
Cheryl Small from Astellas PharmaEurope Ltd., Chertsey, Surrey, [email protected]
Amanda Agati from Fross ZelnickLehrman & Zissu P.C., New York, NY,USA [email protected]
Hakan Pehlivan from Istanbul PatentsA.S., Istanbul, Turkey [email protected]
Helena Granado from Carlos Polo yAsociados, Alicante, Spain [email protected]
Richard Pringle from Reckitt BenckiserCorporate Services Ltd., Slough,Berkshire, UK [email protected]
Sebastian Taylerson from AddisonWhitney, London, UK [email protected]
Carolina [email protected] and JoseAntonio [email protected] both fromHerrero & Asociados S.L., Madrid, Spain
Nick Redfearn from Rouse, Jakarta,Indonesia [email protected]
Zac Casstevens from TrademarkNow,Kilkenny, [email protected]
Alessandro Fiammenghi fromFiammenghi-Fiammenghi s.r.l., Rome, [email protected]
David Davis from Baker McKenzie,Chicago, USA [email protected]
Talal Khan from United Trademark &Patent Services, Dubai, [email protected]
Manuela Bruscolini from InterpatentSrl, Turin, [email protected]
Gioia Perucci from Società ItalianaBrevetti S.p.A., Rome, [email protected]
Maria Antonietta Botti from StudioFerrario Srl, Rome, Italy [email protected]
2
Words from the Chair
Springtime in Rome in 2019, I guessthere are worse places to visit at thistime of the year! We again had awonderful PTMG Spring Conferencein Rome. From our perfectly locatedhotel we had a stunning view on theeternal city. The Gala Dinner was agreat event in the lavishly decoratedPalazzo Brancaccio. Once again wewere very happy with the high qualityof the presentations from ourspeakers. They took us on a journeywhich covered topics such as Brexit,Italy as a Safe Harbour forPharmaceutical Manufacturers, thecrossover between designs and trademarks and enforcement of designrights, just to name a few.....
Meanwhile we have all returned homeand have woken up only to learn thatBrexit has already been postponedtwice. And nobody really knows whatwill happen next in this endlessdrama. A lot of us have followed thenews coverage directly from theHouse of Commons prior to the lastEU summit which then grantedanother delay until the end ofOctober 2019. That seems to provethat politicians and business leaderson the continent are rather nervousabout the potential negative economicimpact. But will it be the lastextension of time prior to Brexit(with or without a deal)? Or will thething be called off? Or new electionsor a second referendum? A lot ofopen questions and no answersavailable…
In the meantime we are preparing forour PTMG Autumn Conference inBerlin. We are very much lookingforward to going back to the Germancapital which in the last 30 years haschanged dramatically and has becomesomething of a trendy hot spot fortourists from all over the world. Wehave again secured a good number ofexperienced speakers taking usthrough what will be an excitingprogramme. After finalising theprogramme, registration for theconference will commence early inJune.
Until then I wish you a wonderfulspring and summer season. Hope tosee many of you in Berlin in October!
Frank Meixner
Members News
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Ronit Barzik-Soffer from ReinholdCohn Group, Tel Aviv, Israel [email protected]
Victoria Gyles from Wiggin LLP,London, UK [email protected]
Phuong Nguyen from Novartis, EastHanover, NJ, USA [email protected]
Moves and Mergers
Mark Peroff has established the newfirm Peroff Saunders P.C., New York, USAand can now be contacted at [email protected]
Renata Piekarz has joined Polservice,Warsaw, Poland and can be contacted [email protected]
Emilia Zubornyak has left AlfaWassermann to join EGISPharmaceuticals PLC, Budapest, Hungary.Emilia can now be contacted [email protected]
Erika Kremeike has left Shop ApothekeB.V. to join LIOC Patents & Trademarks,Eindhoven, Netherlands. Erika can nowbe contacted at [email protected]
Sergio Gonzalez and AngelesMoreno have set up their own firm,Iberian IP, Madrid, Spain. They can becontacted at [email protected] [email protected]
Juile Barrett also known as JulieBarrett-Major, has left AA Thornton toset up her own consultancy, PurposiveStep Consulting, in London, UK. Julie canbe contacted [email protected]
William (Bill) Hansen has moved toPowley & Gibson, New York, USA. Bill cannow be contacted at [email protected]
Lisa Iverson has left Neal & McDevittto join Friedmann Law Group, Chicago,USA. Lisa can now be contacted at [email protected]
Jordi Güell has left Curell Sunol to setup his own firm, Güell IntellectualProperty SLP, Barcelona, Spain. Jordi canbe contacted at [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 Edwards
Members News
The UK Intellectual Property Office (UKIPO) has held that there is no likelihood ofconfusion between the marks AniWrapand ACTI-WRAP, despite considering therespective goods to be identical. Thisdecision is notable for the HearingOfficer’s (HO) assessment of therespective goods, which is a reminder thatmedical goods aimed at different fields maystill be considered identical.
Background
L&R Medical UK Limited (the opponent)opposed J.A.K Marketing Limited’s (theapplicant) application for the word mark‘AniWrap’ for bandages [supportive] forveterinary use in class 10, based on itsearlier UK trade mark registration ofACTI-WRAP in class 10 covering supportarticles for surgical or medical use;bandages, cohesive bandages, supportbandages. In its opposition, L&R Medicalargued that the respective goods wereidentical or similar and that the markswere visually, phonetically and conceptuallysimilar, resulting in a likelihood ofconfusion.
In response, J.A.K Marketing denied theopposition claims and requested that L&RMedical provide proof of use of itsregistration which had been registered formore than five years before the publicationdate of the application.
Both sides filed evidence, with theopponent producing evidence of use. Theapplicant filed evidence and submissions,which included internet evidence of theterm ‘vet wrap’ to try to distinguish itsgoods from those of the opponent, andinternet evidence of other ‘cohesivebandage’ products using the word WRAP,in an attempt to demonstrate that WRAPwas a descriptive element in the sector.
Decision
The HO provided a detailed analysis of theparties’ evidence and was particularlycritical of the opponent’s evidence of use,because much of it fell outside of therelevant five-year period. Nevertheless, theHO considered that it was sufficient todemonstrate genuine use, but only forbandages, cohesive bandages, supportivebandages. The HO was also unimpressedby the applicant’s limited reference in itsevidence to other WRAP brands.
Despite the applicant’s attempts to draw adistinction between the medical andveterinary sectors, the HO found the
respective goods to be identical, citing thecases of Property Renaissance Ltd (t/aTitanic Spa) v Stanley Dock Hotel Ltd (t/aTitanic Hotel Liverpool) & Ors [2016]EWHC 3103 (Ch), and Gérard Meric vOHIM Case T-133/05. Importantly, the HOheld that the applicant’s ‘bandages[supportive] for veterinary use’ fell withinthe scope of bandages, and were thereforeidentical to the opponent’s goods.
The HO also found that the word WRAPwas not descriptive of the goods but wasstrongly allusive, noting that whilst the'prefixes ACTI and Ani respectively play aslightly greater role in the overallimpression of the marks, the word wrapstill contributes to the overall look and feelof the marks when their respectivetotalities are considered'.
However, fortunately for the applicant,when comparing the marks as a whole, theHO found that overall the shared elementsof the marks (A..I.WRAP) did not create alikelihood of confusion, including nopossibility of direct or indirect confusion.This was because, although both markscontained the word WRAP, the prefixesACTI and Ani were phonetically andconceptually dissimilar. The opposition wastherefore unsuccessful.
Other notable parts of the decision includethe useful summary in paragraph 36 of thecase law and principles for proving use of atrade mark registration in WaltonInternational Ltd & Anot v Verweij FashionBV [2018] EWCH 1608 (Ch) and the reference in paragraph 37 to the scope ofword marks in Bentley Motors Limited vBentley 1962 Limited (BL O/158/17).
Conclusion/Comment
The HO’s decision, although perhaps notwholly surprising, is interesting on variouslevels and appears well-reasoned andexplained. The HO’s comments on theopponent’s evidence of use are a usefulreminder that all evidence should be withinthe relevant period, and that the level ofoverall use does not need to be significant.The decision highlights the weight given tothe beginning of marks, and that elementsof marks which a party may discount asdescriptive may nevertheless contribute tothe overall impression of the marks.
The decision also reminds us that,particularly in the context of medicalgoods, attempts to argue that goods aredissimilar because they relate to differentindustries will rarely be of assistance.
It’s a wrap! UK IPO finds no likelihood of confusion between AniWrap and ACTI-WRAPAllister McManus and Chris McLeod, Elkington & Fife LLP
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Re-elected Chairman Frank Meixner welcomed delegates to the beautiful cityof Rome and gave an update on thecontinued growth and success of PTMGbefore handing over to the first speaker to
kick off theconference. JonathanJennings ofPattishallMcAuliffeopened theconference onMondayafternoon witha round-up ofrecent trademark cases that
reveal international trends regarding thestruggle to register non-traditional trademarks, the growth in anti-counterfeitingenforcement and remedies, and theincreasing reliance on bad faith as aground for challenging the use andregistration of trade marks. Anentertaining tour of cases that rangedfrom shoes, to chocolate, to car tyres andcrash boards for spinal support, revealedthat, whilst there is growing acceptance ofnon-traditional marks, the boundaries arestill unclear and risks remain as the courtand trade mark registries find their way.Jonathan also discussed international anti-counterfeiting initiatives, with manycountries promising enhanced remediesand more action, in response not only tothe growing threat from pirates but therecognition of the political importance offighting counterfeiting. Jonathan also notedthat challenges based on bad faith groundsare gaining ground, illustrated by manycase studies.
Tania Clark of Withers & Rogers, currentlyPresident of CITMA, then took the delegates through Brexit - The Trade MarkPerspective. Tania explained the implications ontrade marks ofthe UK’s exitfrom the EUand the keyagreedintellectualpropertyprovisions ofthe WithdrawalAgreement.Of particular
relevance is that existing EU registeredtrade marks will automatically be 'cloned'in the UK free of charge and will continueto be protected. However, pending EUapplications designating the UK will needto be re-filed in the UK within 9 monthsafter the end of the transitional period.She discussed the implications of a 'no-deal' Brexit which is looking more likelyand highlighted some ongoing enforcementand jurisdictional issues that are stillunresolved including parallel imports. Taniaalso covered the post-Brexit implicationson the rights of representation,opposition, invalidation and infringementproceedings and shared some much-needed action points in light of thecurrent uncertainty.
In the last session of the day, a differentperspective on Brexit was provided bySunayana Shah of Pharma ConsultingMondial Ltd in her presentation on theregulatory impact of Brexit on the healthand pharmaceutical sector. Sunayana gave a
detailedaccount of theUK’s difficultjourney toexiting the
EU which highlighted thehuge taskahead. Sheprovideddelegates witha sobering summary of
the practical impact of Brexit, therelocation of the European MedecinesAgency to Amsterdam, and the key risks inthe health industry if there is no deal,including the clear threat of disruption tothe supply of medicines throughout theEU and the UK, and the attempts toaddress this. Sunayana shared theMedicines and Health Care ProductsRegulatory Agency’s response detailing itspreparations in the event of a no-dealBrexit, the fact that the UK Government isstockpiling certain medicines inpreparation, and the implementation of theSerious Shortage Protocol to allowpharmacists to substitute medicinesdifferent to the one prescribed in theevent of a serious shortage.
The Cocktail Reception and Gala Dinnerwere held in the magnificent PalazzoBrancaccio in the historic centre of Romebetween the Colosseum and the basilicasof San Giovanni and Santa Maria Maggiore.Drinks were held in the stunning Hallwayof Mirrors and the delicious gala dinnertook place in the Gala Hall of theBrancaccio Palace. The evening was madeeven special with the performance of localfolk songs by a mandolin quartet and theexciting news that London will be thevenue for the 2020 Spring Conference.
After a few remarks from the Chairmanabout our delightful previous evening,Laura Pedemonte of Barzano & Zanardoopened the day's proceedings with apresentation on Is Italy a Safe Harbour forPharmaceutical Manufacturers and TradeMark Owners? Laura shared interest-
ing facts andfigures to showhow Italybecame theleadingproducer ofpharmaceuti-cals in the EUas well as theframework fordrug names andregulatoryapproval inItaly. The
discussion of parallel imports ofpharmaceuticals was of particular interest,focussing on the recent BILASKA/ROBILAS case, which indicates that theItalian courts follow European Courtprinciples that require objectivejustification for repackaging. The delegateslearned that Italy has a very active parallelimport market but, interestingly, themajority of decisions are in favour of themanufacturers. Laura went on to coverhow Italian opposition proceedings havebecome a useful tool for trade markowners in recent years, explaining thealignment between Italian and EUIPOproceedings, whilst highlighting crucialdifferences in practice.
The theme of parallel trade was continuedby Ulf Grundmann’s presentation onParallel Importation of Medical Devices, anissue which raises the challenge of trying
Continued on next page
Laura Pedemonte
Jonathan Jennings
Tania Clark
PTMG Spring Conference Report March 11th and 12th, RomePharmaceutical Trade Marks MMXIX - La Dolca Via è FinitaCatherine Zheng, Deacons
Sunayana Shah
to protect public health, whilst adhering tothe principle of free movement of goodswithin the EUand reconcilingthe interests ofthe trade markowner and theparallelimporter. Ulfexplained thelegal frame-workgoverningparallelimports ofmedicalproducts as set out in the landmarkBristol-Myers Squibb trade mark case andthe requirements of the EU MedicalDevices Directive and Regulation, withinteresting real-life examples ofunacceptable repackaging which couldcompromise patient safety, highlightingareas of particular note for parallelimporters. Following a discussion ofrelevant case law, Ulf looked at therequirements of the new EU MedicalDevices Regulations and the impact onparallel importation of medical products.
Thomas Frydendahl of Gorrisen Federspielopened the afternoon session with athought-provoking presentation on the
CrossoverbetweenDesigns andTrade Marks.Thomasexaminedrecent EU caselaw, illustratingthe difficulty ofdetermining theperception ofthe relevantpublic, raising
issues of natural law and legal philosophy.He discussed design law, highlighting thedifferent legal standards for assessing thedistinctiveness of trade marks and designsand for assessing infringement. Trademarks remain a very powerful right butdesigns are relatively easy to register andhave a presumption of validity, makingdesigns a useful but under-utilised tool;although there are risks if the design isweak. He suggested practitioners considerparallel application strategies, so that thedesign rights (although limited in time)may be relied upon whilst building up usein a trade mark. An interesting discussionfollowed on appreciating the legal risksand benefits of trade marks versus designs,which are not always handled correctlywhen designs are filed by an in-housepatents department.
Roger Staub of Walder Wyss presentednext on the Enforcement of Design Rightsin Switzerland and also other countries ashe noted that there were not manypublished design cases in Switzerland. Hetook thedelegatesthrough thechallenges ofenforcingdesign rights inparticular,dealing withprior art andthe difficultiesof conducting aprior artsearch, as thescope can bevery wide. Roger looked at the differentapproaches of EU and Switzerland in thetest of infringement, and explained thedefence of fair use, the procedural aspectsof a design infringement case and theremedies. There was an interestingdiscussion of alternatives to relying ondesigns, in particular copyright, althoughthere can be evidentiary challenges toestablishing chain of title, especially withold works. Trade marks can be a strongalternative but often cannot be obtained.Unfair competition is also a veryinteresting tool in some countries butthere is a lack of harmonisation and it isunreliable due to its subjective nature.
Martine Roth of Novartis then gave apresentation on Trade Marks inDivestments, Takeovers and Mergers,discussing the transformation of thepharmaceutical industry, the impact ontrade mark portfolios and the changing
role of trademark attorneys.Martine notedthe impact ofemergingtechnologiesand health appsas a key area ofdevelopment inthe industry,which led to aninterestingdiscussion ofhow to define
and handle digital assets. She shared herpersonal experience of the divestmentprocess, emphasising the need for a strongdivestment procedure, the importance ofcollaboration with other departments andthe involvement of the trade markfunction at every step of the process. Shediscussed the significance of knowing yourportfolio, how it fits into the business andhow it will develop in the future, notingthat it is sometimes like being a detective
to determine what is relevant to the trademark function in a complex businessenvironment.
The final presentation of the conferencewas given by Frances Drummond ofNorton Rose Fulbright, amusingly titled'Siri: How can I use technology to managemy portfolio?'. The fascinating session tookthe delegates from the early days of
typewriters andtelexes, tocurrenttechnologies inthe IP field thathelp withprosecutionandmaintenance ofIP, thetracking andmanagement ofinfringements,and the
commercialisation of IP. Frances noted thatmassive changes and disrupters are comingand encouraged delegates to investigatethe possibilities. She shared her ownexperiences of how machine tools can beused to help with low level work and savevaluable time by condensing tasks thatused to take months to almost no time atall. She also discussed the huge efficienciesin using technology to assist lawyers in theareas of contract review, drafting andmanagement, and even gave a livedemonstration of creating a co-existenceagreement using a chatbot. Delegates werewarned to make sure that their portfoliocovers their innovation activities and weregiven plenty of food for thought on therise of artificial intelligence, its ethics andregulation.
The Chairman thanked the Speakers fortheir presentations and wished delegates asafe journey home, until we meet again inBerlin.
99th conference in Berlin
October 2rd to 5th
Registration opensearly June 2019
Please remember to set your servers to receive your
email invitation from bcdme.com domain
5
Ulf Grundmann
Thomas Frydendahl
Roger Staub
Martine Roth
Frances Drummond
BRAZIL
Andre Provedel, Baker & McKenzie
Brazil is finally on its way to joining theMadrid Protocol. On 4 April 2019, theChamber of Deputies allowed the countryto adhere to the Protocol, passing thelegislative decree to the Federal Senate forfinal voting. If approved, the last steptowards accession would be its ratificationby the Brazilian President.
In preparation for adhering to the MadridProtocol, the Brazilian Patent andTrademark Office (BPTO) has takenseveral measures over the past few yearswhich has resulted in a substantial timereduction in the examination of trademark applications. The BPTO has investedin new technology, improved internalprocedures and adopted a home-officeprogram for Examiners aiming atcomplying with the examination deadlinesset by the Protocol.
As a result, the time frame between thefiling and the substantive examination oftrade mark applications was reduced in2018 as follows: (i) applications withoutopposition from 24 to 12 months; and (ii)applications with opposition from 48 to 13months. Looking at the big picture, thebacklog of trade mark applicationsdecreased from 358,776 at the end of2017 to 191,535 at the end of 2018, whichrepresents a drop of 46%.
It is indisputable that the Madrid systemoffers the great advantage of efficientlyregistering a trade mark through the filingof a single application, in one language,covering multiple territories. Besides, italso enables trade mark holders to savetime and money with reduced fees and acentralized system. However, authorities,scholars and Industrial Propertyorganizations in Brazil have identified thataccessing the Madrid Protocol withoutamending the legislation currently in forcemay cause varying legal standards fornational and foreign applicants.
With the purpose of adjusting theBrazilian IP Law (Federal Law No.9,279/96) to the Madrid system, a new billis expected to be enacted before, or atthe same time as, the ratification of theMadrid Protocol. The main goal is tocreate compatible legal standards inconnection with the following issues: (i)automatic allowance of trade markapplications not examined within the timelimit of 18 months counted from the filingdate; (ii) granting of powers to receivesummons by applicants domiciled abroadto a Brazilian attorney, which should also
be required for international applications;(iii) extension of the requirement thatapplicants may only request theregistration of a trade mark relating to theactivity they effectively and licitly exercisedirectly or indirectly to applicationsgoverned by the Madrid Protocol; (iv) jointownership of trade mark registrations,currently not allowed under the BrazilianIP Law; (v) multi-class application system,also not permitted nowadays under theBrazilian IP Law; (vi) adoption of thePortuguese language for oppositionpurposes and in official documents tocomply with Brazilian constitutional rules;(vii) demonstrate use or non-usethroughout the lifecycle of the trade mark;and (viii) repeal Article 135 of theBrazilian IP Law, which states thatassignments must include all registrationsor applications for identical or similartrade marks covering identical, similar orrelated products or services, under thepenalty of having the non-assignedregistrations cancelled or the applicationsrejected.
Accession to the Madrid Protocol is likelyto bring positive economic and socialimpact in Brazil and the amendments tothe legislation currently in force will becrucial for providing equal treatment fornational and foreign trade mark owners.After years of hard work involving majorplayers in the Industrial Property sector,Brazil is now very close to joining theMadrid Protocol. The next round ofdiscussions in the Federal Senate will bedecisive for a positive outcome in thislengthy and challenging process.
EURASIAN ECONOMIC UNION
PETOSEVIC
Two documents were recently signed inthe Eurasian Economic Union (EAEU)moving forward the process ofestablishing the unified IP system –detailed regulations on running the EAEUCustoms Register and the Agreement onEAEU Trade marks, Service Marks andAppellations of Origin.
EAEU Customs Register
The Realization Plan establishing the rulesof operation of the EAEU CustomsRegister, adopted by the EurasianEconomic Commission (EEC) on 30October 2018, entered into force on 6December 2018.
The Realization Plan describes theprocedures to be followed by the EEC,EAEU member states’ customs authoritiesand rights holders, as well as any
interested parties wishing to obtaininformation on a particular trade mark,service mark or appellation of origin.
While the Realization Plan is a technicaldocument which does not contain newinformation for rights holders, it isimportant because it is the last regulationwhich had to be adopted for the EAEUCustoms Register to become operational,which is now expected to happen soon.
Agreement on EAEU Trade Marks,Service Marks and Appellations ofOrigin
On 6 December 2018, the Council of theEEC signed the Agreement on EAEU Trademarks, Service Marks and Appellations ofOrigin. The Agreement will becomeeffective after the EEC adopts additionalregulations governing its implementation,which is expected in 2020.
The signing of the Agreement confirmsthat the final text passed internalapprovals in all EAEU member states andconcludes the negotiation stage. It is nowonly a question of technicalities that needto be completed before we see EAEUtrade marks, service marks andappellations of origin become the newstandard for the region, some time in2020.No. 37 dated 8 October 2018.
HONG KONG
Karan Sit and Theresa Mak, ROUSE
In the recent case of PCCW-HKTDatacom Services Limited & Ors v HongKong Broadband Network Limited, theHong Kong Court dismissed a trade markinfringement claim brought by the PCCW-HKT group of companies (PCCW) againstHong Kong Broadband Network Limited(HKBN), accepting a defence whichpermits honest comparative advertising.
The dispute
The advertisements that PCCWcomplained about contain the English andChinese straplines 'PCCW HomeTelephone and eye CommunicationsService customers Say goodbye to bloatedmonthly fees' and '電訊盈科家居電話'eye'用戶 唔駛再忍受咁大食嘅家居電話用費(meaning PCCW Home Telephone and'eye' customers no longer have tobear/endure gluttonous home telephonefees).
PCCW alleged that HKBN’s use ofPCCW’s trade marks constitutedinfringement and HKBN relied on section21 of the of the Trade Marks Ordinance(Cap. 559) as a defence.
Under section 21 of the Trade MarksOrdinance, comparative advertising is adefence to trade mark infringementprovided that the comparative advertising
International Update
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is in accordance with honest practices inindustrial or commercial matters,determined by factors considered by theCourt as relevant, and in particular thefollowing:
l whether the use takes unfair advantage of the trade mark;
l whether the use is detrimental to the distinctive character of repute of the trade mark; or
l whether the use is such as to deceive the public.
The dispute turned on whether HKBN’suse of PCCW’s trade marks was inaccordance with honest practices.
The average consumer in HongKong
The Court commented that the averageconsumer in Hong Kong is savvy toadvertising language, exaggeration andtrade puffery, bearing in mind thecolloquial and often colourful andexaggerated terms frequently andcommonly used in the Chinese media inHong Kong.
The Court went on to provide theexample of a reasonable consumer andreader of advertisements in Hong Kongwho would be sceptical and impervious toHong Kong real estate advertised against a'backdrop of the French Riviera' orstraplines describing a residential unit'with unrivaled sea view' for sale, wellknowing that in reality, this would mean'no more than a narrow view of water,seen through gaps in buildings fronting theunit in question'.
The decision
The Court concluded that HKBN’s use ofPCCW’s trade marks in theadvertisements were in accordance withhonest practices.
The Court accepted HKBN’s evidencethat PCCW’s prices for fixed linetelephone service were more expensivethan those of HKBN and took the viewthat the average reasonable readerhardened to advertising language in HongKong will not consider the use of thewords 'bloated' or “大食” (meaninggluttonous in English) to carry anyderogatory meaning of PCCWovercharging or cheating their customers.
To the average consumer in Hong Kong,the words 'bloated/大食' simply meansexpensive. Referring to PCCW’s service asbeing more expensive is not disparaging, asa higher price tag may denote prestige and
exclusivity. In fact, the evidence shows thatPCCW seeks to distinguish themselvesfrom other players who 'basically work onprice reduction'.
Relevance
Given the serious consequences that mayresult from the administering of a wrongpharmaceutical product, end users ofpharmaceutical products generally show ahigh degree of attentiveness, with a higherthan average level of care and attention. Itappears that so long as a fair and honestcomparison is drawn, comparativeadvertising campaigns relating topharmaceutical products would unlikelyconstitute trade mark infringement andshould therefore be allowed. Having saidthis, particular care should be given whencomparing different pharmaceuticalproducts to ensure that the advertisementis in no way misleading.
INDIA
Aaina Sethi, Chadha and Chadha,
In the case Curewell Drugs &Pharmaceuticals Pvt. Ltd. & Anr. v RidleyLife Science Private Ltd & Anr., the mainquestion of law taken into considerationwas to find a way to reduce the duality ofsimilar named medicines on the TradeMarks Register and avoid confusion in thepharmaceutical sector due tosimilarity/identity between names.
Background
The Plaintiff manufacturedpharmaceuticals, including a multivitaminsupplement called BEVITAL which wasbeing infringed by the Defendants. TheDefendant, a known habitual violator oftrade marks, was found to be selling drugswith branding and packaging similar and, insome cases, identical to those of variouspharmaceutical companies, including, thePlaintiff ’s. The High Court of Delhi grantedpermanent injunction against theDefendant for infringement of thePlaintiff ’s trade mark and unauthorizedadoption of its trade dress. The Plaintiffwas entitled to damages of INR 2,00,000(approximately USD $2,894) from theDefendant, to be paid within 3 weeks fromthe order date and a refund of 50 percentof the court fees. Since the Defendant wasa habitual infringer, the court directed thatany future violation of the Plaintiffs’ trademarks by the Defendant would make itliable to pay INR 10,00,000 (approximatelyUSD $14,468) to the Plaintiffs withoutdisputing the liability.
In addition, the Court took into notice thefact the Drug Authorities had approved
the Defendant's mark BEVITAL eventhough it was identical to the Plaintiff'spre-existing mark BEVITAL, both formulti-vitamin supplements and thecompeting product labels were alsoidentical.
The issue of identical brand names beingregistered and the role of DrugController General of India (DCGI) andthe state FDAs were the focus points ofdiscussion.
It was observed that as per the dictum ofthe Supreme Court in Cadila Health CareLtd. v Cadila Pharmaceutical Ltd.,authorities ought to demand from theApplicants who seek drug approvals tosubmit a search report issued by the trademark authorities prior to giving themregistration. However, there was nomechanism to implement this proceduremandated by the Supreme Court till date.
The High Court of Delhi reiterated that ifproducts are sold with identical brandnames, the basic purpose stands defeated.It opined that the DCGI and the stateFDAs ought to implement an action planin which drugs with identical or nearidentical brand names or marks are notgiven licenses.
The court further suggested that the druginspector who inspects the manufacturingfacilities of various pharmaceuticalcompanies should be provided with adatabase of the brand names alreadyregistered and their packaging in order toensure that imitative packaging is notpermitted to be manufactured, printed andsold in the market.
In compliance with the above order, ameeting was held where it was discussedthat the brand name/trade name in case ofpharmaceuticals is neither controlled bythe Licensing Authority under the Drugsand Cosmetic Act 1940 and Rules 1945,nor the Trade Marks Office. Therefore, itwas suggested to amend the Drugs andCosmetics Rules 1945.
In view of the above, the Ministry ofHealth and Family Welfare via anotification on 26 February 2019,proposed to amend Drugs and CosmeticsRules, 1945 and released draft Drugs andCosmetics (Amendment) Rules, 2019. Thekey highlight was four new conditions forthe grant/renewal of various licensesunder Drugs and Cosmetics Act, 1945have been proposed to be inserted. Theyimply that, in case the applicant intends tomarket the drug under a brand name ortrade name, the applicant will have tofurnish an undertaking to the licensingauthority, that such or similar brand nameor trade name is not already in existence
International Update
so that the brand name or the tradename to be used by the applicant doesnot lead to any confusion or deception inthe market.
In addition to the above proposedamendment, the High Court of Delhi alsoissued the following non-exhaustivedirections:
l Creation of a secured platform, to be under the supervision of the DCGI, accessible to all State FDAs, both for access of data and for uploading of data;
l Creation of a 'master electronic database' of all the approved brand names for manufacture and sale of drugs issued both by the DCGI and theState FDAs and making the same available to all state FDAs and Drug Controllers through a secured platform;
l List of registered trade marks under Class 5 for pharmaceutical and medicinal preparations be obtained from the Controller General of Patents, Trade Marks and Designs and be made available to the approving authorities at the Central level and State level. The said list ought to be updated bi-annually i.e., on 1st January and 1st July every calendar year;
l Access to the data to be given to Drug Inspectors/Drug Controllers across thecountry;
l Drug Inspectors/Drug Controllers to conduct regular and periodic inspections to ensure that the drugs that are being manufactured are duly licensed for. The reports of the said inspections to be submitted through the secured platform;
l Periodic and regular reports of Drug Inspectors should be compulsorily submitted to the respective licensing authorities on the secured platform anda mechanism be set up for review of the said reports at the State level;
l Periodic meetings ought to be held at the central level, to review the status ofmanufacture and sale of drugs across the country, under the aegis of the DCGI;
l Strict action in accordance with law ought to be taken against those manufacturers who manufacture drugs without licenses, who indulge in adulteration or contamination of drugs etc. A periodic report as to the numberof actions taken, ought to be uploaded on the secured platform of the DCGI.
Thus, in line with the mandate of the HighCourt of Delhi, draft rules have beensuggested to make the process ofregistration of trade marks/brand namesin the pharmaceutical sector clearer. Oncefinalized, these rules need to be notified inthe official gazette by 31 December 2019.
INDONESIA
Tania Lovita, ROUSE
Fake medicines are commonplace inIndonesia. In 2017 the discovery of acounterfeit vaccines network acrossIndonesia caused a public outcry thatmeant politicians, bureaucrats and healthorganisations had to take action.
The Indonesian National Food and DrugsAgency (BPOM) issued Regulation No. 33of 2018 on Implementation of 2D Barcodefor the Supervision of Food and Drugs(Regulation) that came into effect on 7December 2018. Any food or drug(including traditional medicines, healthsupplements, cosmetics and processedfoods) which is locally produced orimported for circulation in Indonesia musthave a 2D barcode affixed on the productlabel. The purpose of the Regulation is toimprove BPOM food and drug circulationstandards through the utilisation of trackand trace technology and digital reporting.
There are two types of barcode -Authentication and Identificationbarcodes. Identification barcodes areissued by BPOM and will include thedistribution permit number and validityperiod. This is required for over-the-counter (OTC) medicines, traditionalmedicines, health supplements, cosmeticsand processed foods.
Authentication barcodes will include moredetails such as the distribution permitnumber, batch number/production code,expiry date and serial number of theproduct. They are required forprescription drugs (biological products,narcotics, psychotropics, certain types ofOTC medicines and processed foods). Thebarcode can be issued by BPOM or by thebusiness itself in the form of a QR codewhich can be read by BPOM’s track andtrace application.
To obtain a barcode, a business must firstapply to access the BPOM track and traceapplication by submitting companydocuments. Once access is granted, therequest for the issuance of BPOMbarcodes must be submitted no later than
10 business days prior to thecommencement of production. BPOM willthen assess and issue the barcode within 5business days.
In addition, there is a reporting obligation.Businesses, distribution facilities andpharmaceutical service facilities mustsubmit utilisation reports relating to their2D barcodes and distributed products toBPOM through the track and traceapplication. Non-compliance will attractadministrative sanctions.
Interestingly, anyone can scan and report2D Barcodes using the BPOM MobileApplication to participate in thesupervision of food and drugs. This willenable consumers to check theauthenticity of medicines and foods.
This might seem like a burdensomeadditional requirement for the food anddrugs industry. However, given theprevalence of fake products this will helpboth businesses to check for fakes in theirdistribution chain, as well as governmentand consumers.
KOSOVO
PETOSEVIC
On 7 November 2018, the Court ofAppeals in Prishtina issued a rulingconfirming the right of the trade markholder to ban the unauthorizedimportation and sale of goods bearinghis/her trade mark, regardless of thegoods’ authenticity and the fact that theywere purchased from a dealer authorizedto sell them outside Kosovo.
This decision is in line with Article 8 ofthe Kosovo Law on Trade Marks, whichstates that it is sufficient to ascertain thatthe importation and placing of the goodson the market occurred without therights holders’ authorization. However,local case law has been inconclusive andsuch cases have rarely reached theappellate court. This ruling is significantbecause it will allow rights holders toinvoke it in their struggle against this typeof trade mark infringement.
In May 2015, the defendant in this caseimported apparel goods bearing the trademark of a well-known multinational fastfashion company from Bangladesh toKosovo. Kosovo customs officials detainedthe goods, suspecting they werecounterfeits. The trade mark holderconfirmed that the goods were indeedcounterfeits, and the Commercial MattersDepartment of the Basic Court of
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Prishtina ruled in favor of the plaintiff.
The defendant filed an appeal stating thatthe goods were purchased from anauthorized dealer, but the Court ofAppeals ruled that the trade mark holdermay request third parties to refrain fromunauthorized importation and sale ofgoods bearing their trade mark regardlessof their authenticity and even if they werepurchased from an authorized dealer. Thecourt underlined that Kosovo applies theprinciple of national exhaustion of rightsand that, in case at hand, plaintiff ’s trademark rights are exhausted only if theplaintiff places the goods on the market.
TURKEY
Selma Ünlü, NSN Law Firm
Intellectual Property Law allows theapplicants to request the proof of use ofthe opponent’s trade mark(s) in the eventthat the opposition is filed on the basis of'likelihood of confusion' providing thatthe opponent’s trade mark(s) is/areregistered more than 5 years at the timeof the application or priority date of theconflicting application. Upon the requestof the applicant, Turkish Patent andTrademark Office requires the submissionof use evidences or justifiable reasons fornon-use. If the use cannot be proven bythe opponent, the opposition is rejected. Ifthe use is proven only for a part of thegoods and services, the opposition isreviewed for the same/similar goods andservices to used ones.
It should be noted that, the proof of userequest should be submitted in a verystrict and non-extendable deadline of onemonth as of the notification of theopposition to the applicant. However, theOffice does not notify the applicants of IRapplications filed through WIPO with thedesignation of Turkey with third partyoppositions since Madrid Protocol doesnot contain such notification system. TheOffice notifies the applicant with thedecision if it partially or totally accepts theopposition and the applicant has a right toappeal such decision. The problem here isthat the applicants of IR applicationscannot claim non-use defense at appealstage and they thus encounter therejection of their applications despite thefact they have chance to save theapplications with the non-use defense.
In order to not lose the right to claimnon-use defense and save the applicationwith this defense argument, we advise the
applicants of IR applications to follow upthe status of their applications and oncedetected the third party opposition, to filea counterstatement by claiming the non-use defense if the conditions are met assoon as possible before the issuance ofTPTO’s decision. At TPTO’s meeting withthe IP industry, the President of the Officehas orally told that there will be anamendment at Madrid Protocol to allowthe national offices to notify the thirdparty oppositions in a near future whichwill procedurally solve this problem. Untilthis amendment, the Office will take thenon-use defenses of the IR applications’applicants into consideration even if theydo not notify the oppositions.
UAE
Margaret Campbell and SamanthaGrainger, ROUSE
The United Arab Emirates (UAE), lookingto cement itself as one of the world’s topdestinations for quality healthcare, hasseen rapid growth in medical tourism inrecent years. With healthy levels ofgovernment and private sectorinvestment, the Dubai Health Authorityplans to attract 500,000 internationalmedical tourists to the city annually by2020. Behind the scenes the UAE isworking hard to develop and implementplans, policies and legislation to bring it upto speed with global standards. The latestlegislation which comes into effect in May2019 is the Health Data Protection Law -Federal Law No.2/2019: On the Use of theInformation and CommunicationTechnology (ICT) in Health Fields. TheUAE currently does not have a general,federal data protection law, nor a singlenational data protection regulator. Thereare protections in place under the UAEConstitution and regulations whichimpose obligations of confidentiality onhealthcare practitioners and the collectionof data, but this new legislation looks toprovide all encompassing protection ofhealthcare data across the UAE, includingits free zones.
All healthcare entities which provideservices related to health – healthtreatment, health insurance and IT mustcomply with the new regulations. With theever-growing advances in medicaltechnology, this will impact on a widerange and number of companies, includingone of the latest additions to the medicalworld, health advice provided by
telemedicine companies. On top of theusual data protection protections - notusing the information other than for thepurpose of the provision of healthservices (except with the prior consent ofthe patient), accurate and reliableprocessing and adequate securitymeasures - the Ministry of Health andPrevention will also establish a new,centralised system to allow for thecollection, storage and exchange of allhealth information and data. The lawprohibits the transfer of health dataoutside the UAE, unless authorisation hasbeen granted by the relevant healthauthority. Cloud solutions hosted outsidethe UAE, outsourcing IT services overseas,remote IT support within multi-nationalcompanies and remote collection of anypatient data within the UAE, from outsidethe UAE may be significantly impacted.Breaches of this provision shall be met byfinancial penalties ranging fromUSD $140,000 - USD $200,000.
Implementing regulations will be issued inAugust 2019 and the practical applicationof the legislation will be seen more clearlythen. Healthcare providers, insurers,administrators and technology companiesin the healthcare space will, in themeantime, need to review and audit theircurrent practices and comply with the law.It is expected that there will be a graceperiod to achieve compliance with the law.
The law is unique insofar that it is the firstfederal privacy law relating to healthcaredata and protection of personal andsensitive data in the UAE and with its aimto raise the protection of health data inthe UAE on a par with best internationalpractice, it will also work to strengthenthe UAE’s health regulation frameworkand position on the global map of medicaltourism.
UZBEKISTAN
PETOSEVIC
On 8 February 2019, the UzbekGovernment signed a Resolution 'OnMeasures to Improve PublicAdministration in the Field of IntellectualProperty', intended to improve the IPprotection system in the country.
The text of the resolution identifiesinadequate public service system,insufficient inter agency cooperation,failure to detect and tackle IP infringementin a timely manner, high official fees andlack of qualified personnel as majorimpediments to enforcement efforts.
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Under the resolution, the Agency forIntellectual Property, which operated as anindependent government agency, wasrecently transferred under the wing of theMinistry of Justice.
The main highlights of the new resolutionare the following:
l The Agency now publishes information on pending trade mark applications on its website within one business day from receiving the applications; before, information on pending trade mark applications was obtained through an availability search which involved a special request and fee, while the Agency only published information on registered trade marks;
l Manufacturers, suppliers, vendors or their representatives may submit officialwritten observations and oppositions before the Agency against pending bad faith trade mark applications; before, such observations were considered as unofficial requests;
l Exclusive trade mark rights are now active from the moment of official registration, not the moment of official publication as stipulated by the previouslaw;
l The five-year non-use grace period has been reduced to three years.
By 1 July 2019:
l The Ministry of Justice and the Department for Combating Economic Crimes under the Prosecutor General'soffice will have to review all trade marks registered in Uzbekistan, identify all well-known trade marks registered in bad faith (probably meaning famous trade marks and brands; this is yet to be clarified) and take measures to cancel such registrations;
l The Agency, in partnership with the Customs Committee and the Department for Combating Economic Crimes, needs to develop and implement a single integrated and constantly updated IP database which will allow online and real time tracking of IP rights that have received or lost legal protection, and automatic inclusionand exclusion of IP rights from the Customs IP Registry upon receipt or loss of legal protection, respectively.
The main reason behind the need toreview all registered trade marks is thatthere have been numerous cases ofcompanies with globally known brandsencountering difficulties when entering theUzbek market, because their trade markswere already registered in the name ofUzbek citizens and legal entities. However,in Uzbek legislation the legal notion of a'well-known trade mark' does not neces-sarily encompass all famous foreign brands,which is why the Ministry of Justice willhave to come up with specific amend-ments to the legislation in force.
Starting from 1 September 2019, it will bepossible to file trade mark applications inelectronic form through local centres ofthe State Services Agency under theMinistry of Justice or through the SinglePortal of Interactive State Services; beforethe Resolution, trade mark applicationscould only be submitted in paper formdirectly to the Agency for IntellectualProperty in Tashkent.
The resolution also envisages a step-by-step reduction of trade mark andindustrial design related official fees from 1January 2020.
VENEZUELA
Ricardo A. Antequera, AntequeraParilli & Rodríguez
On 1 February 2019, Venezuelan PTO(SAPI) published a new resolution onlyaffecting foreign IP owners with theobligation of payment of official fees inPETROS, a crypto currency created by Mr.Nicolás Maduro´s administration in 2018as a way to collect US dollars whileavoiding US sanctions. Since 2018 fees hadbeen suspended and this resolution is theonly way to proceed with payment.
SAPI gave a 60 day term to pay matterspending since February 2018 –when feeswere suspended- but for foreign IPowners, especially for US, the use ofPETROS is banned which creates seriousissues for them.
On 19 March 2018 US President DonaldTrump banned transactions involving 'anydigital currency, digital coin, or digitaltoken, that was issued by, for, or on behalfof the Government of Venezuela on orafter 9 January 2018', by Executive OrderN°. 13827.
This prohibition is applicable (unlessexempted by a license granted by USauthorities) to:
a. United States citizens, permanent resident aliens;
b. Entities organized under the laws of theUnited States or any jurisdiction within the United States (including foreign branches of such entities);
c. Any person within the United States.
For US brand owners it seems possible toapply for a license from the Office ofForeign Assets Control (OFAC) if theydecide to proceed with such payment inPETROS, as stated in section 1.(b) of theexecutive order No. 13827: 'Theprohibitions in subsection (a) of thissection apply except to the extentprovided by statutes, or in regulations,orders, directives, or licenses that may beissued pursuant to this order, andnotwithstanding any contract entered intoor any license or permit granted beforethe effective date of this order.' It may bepossible as well that a US law firm mayobtain such a license in order to protectthe IP interests of their clients inVenezuela. However, whether the OFACmay grant such licenses is yet to be seen.
After 30 days of the resolution beingpublished, Venezuelan law firms are filingpetitions before the local IP agency toobtain a 60 days extension, as mentionedin the conflictive resolution and demandingclarification regarding which matters arepart of this situation.
This situation is well known tointernational associations related to IP,hoping to increase awareness and concernso that the International IP community canact as amicus curiae in any proceedingwhether requiring a general or specificlicense from OFAC (for US IP holders) forthe payment of official fees in PETROS, ora change in the resolution in general.These associations may also address thisissue to WIPO or WTO as it would beconsidered as a discriminatory practicewhen only applied to foreign IP owners,infringing the national treatment principle.
For those foreign IP owners who mightconsider themselves outside the reach ofthe US executive order, it would be highlyadvisable to consult on this issue withtheir compliance team before proceedingwith any payments in PETROS, since thereis a lot of uncertainty about the validity ofthis so called crypto currency on theinternational markets.
International Update continued
In 2017, both the Industrial PropertyCode No. 6769 (the IPC) and theRegulation on the Implementation of theIPC (the Regulation) were published andentered into force, uniting all IP rights inone Code which were previouslyregulated by different decree-laws.
The non-use defence in oppositionproceedings was introduced with the IPC.According to the IPC if the trade markclaimed to be similar to the application isregistered for more than 5 years as of theapplication date (or priority date) of theopposed application, upon request of theapplicant, the Turkish Patent andTrademark Office (the Office) shall ask theopponent to prove the effective use inTurkey on the relevant goods and/orservices within the scope of the trademark relied upon the opposition.
Upon an opposition to an application, theOffice has to notify the applicant that anopposition has been filed. The applicant isentitled to submit responses within onemonth as of the notification date of theopposition. Together with the responses,the applicant may also request the proofof use of the opponent’s trade marks, ifthe opposition is based on likelihood ofconfusion argument (Article 6/1 of theIPC). The Office shall then notify theopponent and inform that such proof ofuse can be submitted within one month.
The trade marks for which use could notbe proven will not be taken intoconsideration in the evaluation of theopposition based on similarity. If it isproved that the trade mark is used onlyfor some goods/services within the scopeof the registration, the opposition will bereviewed only on the basis ofgoods/services for which use has beenproven.
Since the counter non-use claim inopposition proceedings is a whole newconcept, to clarify the use and role of theconcept, the Office published the Proof ofUse Guidelines (the Guidelines) on 28April, 2017 and updated it on 30September, 2017. In the Guidelines, amongother explanations, the Office explains thequalifications of proof of use evidence andlists the evidence materials which can beused to prove the genuine use of a trademark in Turkey.
According to the Guidelines : invoices,price lists, catalogues, product codes,products, packaging, signboard visuals,advertisements, promotions and theirinvoices, marketing surveys, opinionresearches, information about thecommercial activity and any additionaldocuments/statements regarding Turkey
can be submitted to prove the genuineuse of the trade mark. While assessing thegenuine use, the following factors aretaken into account by the Office: time,place, nature, extent of use and use forthe goods/services for which the trademark is registered.
All evidence should be linkable with thetrade mark, should be dated and shoulddemonstrate the genuine trade mark usein Turkey in the last 5 years (retrospectivefrom the date of application/priority of theopposed trade mark).
Under Turkish regulations no medicinalproduct for human use can be sold andmarketed unless it obtains a marketingauthorization from the Turkish Ministry ofHealth. Such applications can be madeonly by real or legal persons residing inTurkey. In addition, it is strictly forbiddento advertise all type of drugs to thegeneral public. Only authorized productscan be promoted to healthcareprofessionals. Drugs cannot be solddirectly from the pharmaceutical companyto patients. Pharmaceutical companies selltheir drugs to warehouses, which then sellto pharmacies.
Due to these special regulations,pharmaceutical trade mark owners facesome difficulties to prove the genuine useof their trade marks in Turkey, whenrequested. As it is mentioned above,among other materials, the genuine use ofa trade mark may be proven bycatalogues, advertisements andpromotions. The Guidelines state explicitlythat submitting visuals or videos ofadvertisements and promotion materialsand the invoices thereof constitutes greatimportance.
Pharmaceutical trade mark owners cannotsubmit any evidence showing theadvertising of their products to thegeneral public in Turkey. It is possiblehowever to submit promotional materialsintended for healthcare professionals andinformation and documentation regardingscientific meetings held in relation to theirproducts.
Due to this legal impediment faced bytrade mark owners to prove the genuineuse of the trade mark, submitting othertypes of documentation will be particularlyimportant. However, since in most of thecases the trade mark is registered onbehalf of the foreign entity, the linkbetween the Turkish entity holding themarketing authorization of the productand the foreign trade mark owner shouldalso be explained and supported bydocuments. If the invoices and otherdocuments proving the use of the trade
mark are issued by another entity, even ifthis entity is affiliated to the trade markowner, we see that the Office does notdirectly accept such evidence and seekslicense or sublicense agreements as wellas franchise and/or merchandisingagreements in order to accept therelationship between the companies andthe use of the trade mark. Therefore,submitting documentation which willsatisfy the Office showing the linkbetween the entities is very important toprove the use of a trade mark. Henceevidence showing the sale of the productby the marketing authorization holder to awarehouse might not suffice to prove thatthe trade mark has been genuinely usedby the trade mark holder or by anauthorized representative.
The maximum sale prices ofpharmaceuticals are set by the Ministry ofHealth and are published in the Ministry’sofficial website as well as the number anddate of the marketing authorization of theproduct. This information is available tothe public and may be used as evidencesupporting the retrospective use claim.
In a recent case where the trade markrelied on in the opposition was used onpharmaceuticals, the Office accepted thatthe trade mark was used based oninvoices and other evidence showing theuse of the trade mark and did not seekfurther documentation showing theadvertisement or promotion of the goods.It was explained in the proof of usepetition that due to regulatory reasons,only invoices and documents regarding theproceedings before the Ministry of Healthsuch as MA, price listings, etc. could besubmitted. This decision also proves thatthe Office will tailor the proof of useimplementation, depending on the type ofgoods and taking into consideration otherlaws and relevant legislation.
Although the proceedings andexaminations related to the non-usedefence can still be considered as quitenew, we see that the Office has alreadyadapted its examination proceduresaccording to different industries and theirspecific regulatory requirements. TheOffice accepts that evidence related to theadvertising of pharmaceuticals is notavailable due to regulatory prohibitions.Therefore any other kind of evidenceshowing the retrospective use of the trademark is accepted; thus allowingpharmaceutical companies to benefit froma fair examination made by the Officewhich relies on the knowledge of thespecific conditions and requirementsrelated to the industry.
Non-Use Defence in Opposition Proceedings inTurkey Güldeniz Dogan Alkan and Dicle Dogan, Gün + Partners
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Where were you brought up andeducated?
I was born in Mainz (Germany), spent mychildhood in a rural area near Idar-Oberstein (somehow half-way betweenFrankfurt and Luxembourg) and my youthin Worms (an old town at the Rhine river)where I finished school. After militaryservice at the navy, I studied law inMannheim, Toulon (France) andSaarbrücken.
How did you become involved intrade marks?
Given my specialisation in Internationalpublic and European law I wanted to workfor European Institutions. While bridgingtheir long-lasting selection processes I gothired as a lawyer at the trademarkdepartment of Schering in Berlin (nowbelonging to Bayer). There, I learnedquickly how trademark law is influencedby International and European law.Furthermore, it allowed me to work in anInternational environment. I had foundwhat I was looking for.
Apart from that I was exposed topharmaceutical trademarks already as achild since my father as a physician,provided me when needed with pens andother writing utensils he regularly receivedfrom pharma representatives. Whentrashing out my room at my parent’shouse many years later I kept an‘ULTRAVIST’ pen, still one of ‘our’trademarks.
What would you have done if youhadn’t become involved inintellectual property?
Before studying law I considered to studymedicine or political science in order tobecome a journalist.
Which three words would you use todescribe yourself?Optimistic, circumspect, loyal.
Complete the following sentence:
“I wish that …
public discussions would be based moreon facts and less on emotions….”
What was (were) your bestsubject(s) at school?
History, Biology and Latin
What do you do at weekends?
Hiking, biking, reading, gardening, cookingItalian and Levantine cuisine and jams.
What’s the best thing about your job?
Working in an evolving field of law, whichconnects me with people from all over theworld within my organization but alsooutside of it. Each day in the office isdifferent and exciting.
What did you want to be as a child?
A sailor, discovering new territories (butborn 200 years too late).
What is your biggest regret?
Not having continued piano and singinglessons.
What is your favourite work of art?
The sun-drenched drawings of Lorrain andTurner but also those of the painters whogot inspired by the very special light of theMediterranean such as van Gogh andFrench impressionists, Picasso, Léger andothers.
What is the best age to be?
Any part of our life where we are in goodhealth, like what we do and aresurrounded by friends and beloved ones. Itcan be every single day.
Whom do you most admire and why?
Those who have taken even high risks tosave the lives of others, for their courageand humanity.
Which book or books are youcurrently reading?
Canale Mussolini by Antonio Pennacchiand Navid Kermani’s Along the trenches.
What is your favourite drink?
A glass of good white or red wine andport wine.
What is your favourite holidaydestination?
There are so many nice places still to bevisited but among others the AzoreanIslands, Sicily, the wide beaches of FrenchAquitaine and the Northern Italian lakedistrict deserve further visits.
What is your favourite building /piece of architecture and why?
All buildings where people went to thelimits of the techniques of their time, suchas the Pantheon in Rome, Gothicchurches, 'industrial cathedrals' and bridgescrossing valleys and estuaries.
What’s your favourite mode oftransport and why?
FridaysForFuture kids may criticize me forthat but I love travelling in a window seaton a plane, watching out all the time andtaking photographs!
What’s the best invention ever?
The discovery of vaccines since they have(and hopefully will) eradicate dangerousillnesses and antibiotics (and I hope ourindustries try harder to invent new ones!)
Which modern convenience couldyou not live without?
Electricity (and what has been made outof it) and the freedom of press andinformation.
© 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: vparkercordier@wanadoo .fr
Since 2007 Christian Schalk is Senior Counsel Trademarks inBayer AG’s trademark department in Monheim, Germany. Before,he was Head of Global Trademark Center at Schering AG in Berlin(now Bayer). Christian leads a team of fine trademark experts incharge of managing Bayer AG’s global pharma trademark portfoliowhich supports strategic marketing teams in global trademarkdevelopment processes and advises internal clients in alltrademark related legal and regulatory matters including licensingand M&A matters as well as in the field of Copyright. Christianleads also the trademark subcommittee of the German research
based pharmaceutical manufacturer association VFA.
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PROFILE: Christian Schalk
