editorial:christmas3 international update european union: ohim introduces free of charge mediation...

Why is it that the time of year whichshould be synonymous with hope andnew beginnings each year becomes moreand more of a headache? Massive mediaadvertising to harass youngsters into thelatest craze purchase, playground peergroup pressure for that must-havestocking filler, how many mince pies tobake before the carol singing evening,

worries about travel conditions and whether there will be thatlast minute panic in the office which will mean that you won’t getaway as planned. All around the world people are packing niceclothes and squashing toys into suitcases and hoping that check-in attendants will be more lenient at this time of the year.

As 2011 draws to a close, with the ever present economicsituation underpinning every news bulletin, I am led to wonderwhat this great commercial frenzy is truly about. Forshopkeepers it is a critical time and one where stress levels areat their maximum if the end-of-day figures don’t look good. Forfood producers, continuous long hours of preparation to ensurethat fresh produce reach all the relevant points of sale in a timelyfashion. Not forgetting those professions, especially health care

workers, who will be on duty throughout the season, oftenworking long hours to cover for colleagues.

Herein lies some of the message of this time of year – lookingout for each other, be it colleagues, elderly neighbours who livealone, friends who face sad anniversaries to get through. After all,time is money and giving some of one’s time is as good as givingan expensive present.

Please forgive me for sounding a little like Scrooge; it must bethat hard hitting moment in the kitchen a fortnight ago when myyoungest child announced “I don’t believe in Father Christmasanymore. Everyone knows it’s the parents who leave thepresents”. That’s it, the magic has gone. Ah well, at least thatmeans I can keep him occupied writing proper thank you lettersthis year before school starts again!!

I trust that every one of you will find a true reason to celebrateChristmas this year, surrounded by those you care for andlooking forward to 2012. The PTMG Board and Committee joinme in wishing you and your families a very happy and healthyfestive season.

Vanessa

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PharmaceuticalTrade Marks GroupPharmaceuticalTrade Marks Group Dec 2011

Editorial: Christmas ...

Members NewsNew members

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

Alan Behr of Alston & Bird LLP, NewYork, USA ([email protected])

Jill Hamilton-Brice of InterbrandHealth,London, UK([email protected])

ChristopherWalters of Spoor & FisherJersey, Jersey, Channel Islands, British Isles([email protected])

Didier Boulinguiez of CabinetPlasseraud, Paris, France([email protected])

Charline Di Luca ([email protected])and EmmanuelleTevenin([email protected]) both of Hirsch &Associes, Paris, Francec

ThomasTresper of Merck KGaA,Darmstadt, Germany([email protected])

Ralf Möller of Harmsen Utescher,Hamburg, Germany([email protected])

Konrad Lenneis of BMA BrandstätterRechtsanwälte GmbH, Vienna, Austria([email protected])

Thorbjorn Swanstrom of AwapatentA/S, Copenhagen, Denmark([email protected])

Anne MarieVerschuur of NautaDutilhN.V., Amsterdam, The Netherlands([email protected])

Frank Hagemann of FPS Rechtsanwälte& Notare, Hamburg, Germany([email protected])

Lucy Rana ([email protected]) and RishuSrivastava ([email protected]) both ofS.S. Rana & Co., New Delhi, India

Kathleen Lemieux of Borden LadnerGervais LLP, Ottawa, Ontario, Canada([email protected])

Olivier Boland of Novagraaf France,Levallois Perret, France([email protected])

Antonella De Gregori of Studio LegaleBird & Bird, Milan, Italy([email protected])

Clemence Gautier of Tilleke & GibbinsInternational Ltd., Bangkok, Thailand([email protected])

Elisabeth Fossot of Cabinet Ores, Paris,France([email protected])

SandraWidjojo of George Widjojo &Partners, Jakarta,([email protected])

Matthias Stolmár of Stolmár Scheele &Partner, Munich, Germany([email protected])

Theresa Bailey of Intellectual PropertyOnline Ltd., Reading, UK([email protected])

Maria Rosa Fabara Vera of Fabara &Guerrero Intellectual Property, Quito,(Ecuador [email protected])

ccoonnttiinnuueedd oonn tthhee nneexxtt ppaaggee

Catherine Gilles-Fort of Sanofi, Gentilly,France([email protected])

Nicolas-David Lair of Sanofi, Gentilly,France([email protected])

Josée Sanchez of Sanofi, Gentilly, France([email protected])

Sylvie Guillas of Sanofi, Gentilly, France([email protected])

Luis Beneyto of Elzaburu S.L.P., Madrid,Spain ([email protected])

Isabelle Thill of Cabinet Regimbeau, Paris,France [email protected]

Jordi Guell of Curell & Sunol S.L.P.,Barcelona, Spain ([email protected])

Murgiana Haq of hslegal LLP, Singapore([email protected])

Samantha Copeling of Adams & Adams,Pretoria, South Africa([email protected])

Catherine Delaud of Sodema ConseilsSA, Paris, France ([email protected])

Franklin Hoet-Linares of Hoet, PelaezCastillo & Duque, Caracas, Venezuela([email protected])

Agnieszka Matusik of Kulikowska &Kulakowski, Warsaw, Poland([email protected])

Marianne Gabriel of Casalonga Avocats,Paris, France ([email protected])

Gregoire Goussu of Lavoix Avocats,Paris, France ([email protected])

Rachel Conroy of Boult Wade Tennant,London, UK ([email protected])

Margarida Martinho do Rosário ofGastão da Cunha Ferreira Lda., Lisbon,Portugal ([email protected])

Vojtech Chloupek of Bird & Bird, Prague,Czech Republic([email protected])

Claudia Kaya of Destek Patent, Bursa,Turkey ([email protected])

Yvan Merlotti of Inteltech SA, Neuchȃtel,Switzerland ([email protected])

Henrik af Ursin of Kolster Oy Ab,Helsinki, Finland ([email protected])

Irina Birukova of Salans, Moscow, Russia([email protected])

Isabelle de Blic-Hamon of Nestec SA,Vevey, Switzerland([email protected])

Ana-Maria Baciu of Nestor NestorDiculescu Kingston Petersen SCA,Bucharest, Romania([email protected])

Santiago O’Conor of Marval O’Farrell &Mairal, Buenos Aires, Brazil([email protected])

David Stewart of Wrays Lawyers, West

Perth, WA, Australia([email protected])

Andra Musatescu of Andra MusatescuLaw & Industrial Property Offices,Bucharest, Romania([email protected])

Klaudia Blach-Morysinska([email protected]) andMalgorzata Darowska([email protected]) both of Salans D.Oleszczuk Kancelaria Prawnicza Sp.K.,Warsaw, Poland

Jarmila Traplova of Traplova Hakr KubatLaw and Patent Offices, Prague, CzechRepublic ([email protected])

Gloria Wu of Kangxin Partners P.C.,Beijing, China ([email protected])

Javier Toro of JM Toro, Madrid, Spain([email protected])

Zahra Mouhoubi of Virbac Group,Carros, France([email protected])

Adrian Zimmerli of Zimmerli, Wagner &Partner AG, Zurich, Switzerland([email protected])

Juan Carlos Amaro of Becerril, Coca &Becerril S.C., Mexico City, Mexico([email protected])

Kumpei Kogure of SOEI Patent & LawFirm, Tokyo, Japan([email protected])

Hae-in Kim of AJU Kim Chang & Lee,Seoul, Republic of Korea,([email protected])

Helma van de Langenberg of NovagraafNederland B.V., Amsterdam, TheNetherlands ([email protected])

Jonathan Agmon of Soroker-Agmon,Herzliah, Israel ([email protected])

Hajime Tsukuni ([email protected])and Daisuke Yamamura([email protected]) both of Tsukuni& Associates, Tokyo, Japan

Nicole Linker of Actelion PharmaceuticalsLtd., Allschwil, Switzerland([email protected])

Yan (Jane) Zhao of Beijing SunMoonIntellectual Property Agent Ltd., Beijing,China ([email protected])

Rodney Goh of Deacons, Hong Kong([email protected])

Ozden Yuce of Istanbul Patent andTrademark Ltd. Sti., Istanbul, Turkey([email protected])

Georgina Busku of Danubia Patent & LawOffice, Budapest, [email protected] or([email protected])

Michael Peroff of The Law Office ofMichael A. Peroff, Chicago, Illinois, USA([email protected])

Eleonora Carrillo of Jacobacci & PartnersS.p.A., Turin, Italy

([email protected])

Ragnheiõur Pétursdóttir([email protected]) and BrynhildurPálmarsdóttir ([email protected])both of Arnason Faktor, Reykjavik, Iceland

Rafael Atab of Dannemann, Siemsen,Bigler & Ipanema Moreira, Rio de Janiero,(Brazil [email protected])

Luca Ghedini of Notarbartolo & GervasiS.p.A., Milan, Italy ([email protected])

Maarten Schut of Kennedy Van der Laan,Amsterdam, The Netherlands([email protected])

Elena Miller of Bojinov & Bojinov Patent,Trademark and Law Offices, Sofia, Bulgaria([email protected])

Celine Schwarzenbach of SchneiderFeldmann AG, Zurich, Switzerland([email protected])

Kristiane Vandborg of H. Lundbeck A/S,Valby, Denmark ([email protected])

Jonathan Jennings of Pattishall, McAuliffe,Newbury, Hilliard & Geraldson LLP,Chicago, Illinois, USA ([email protected])

MMoovveess aanndd MMeerrggeerrss

My sincere apologies to Paola Ruggierowho left Barzano & Zanardo to join Bird &Bird in Milan, Italy and not the other wayaround, as stated in our previous issue.Paola can be contacted at([email protected].)

David Bancroft can now be found atDabias in Gauting, Germany. His new e-mailaddress is ([email protected])

Frances Drummond has left Freehills tojoin Norton Rose Australia. She can becontacted 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 me atTillingbourne House, 115 Gregories Road,Beaconsfield, Bucks, HP9 1HZ

LLeesslleeyy EEddwwaa rrddss

PTMG Secretary

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Thank youThe PTMG Board and editors pastand present take this opportunityto thank Dee Drinkwater, formerlyof Double Dees Ltd., for theprofessionalism and efficiency withwhich she has assisted in thepublishing of LL&P over the past 12years. We all wish you well inyour retirement.

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International Update European Union: OHIM introducesfree of charge mediation serviceMichael Hawkins, Noerr, Alicante

The Office for the Harmonization of theInternal Market (OHIM) now offers a free ofcharge mediation service for parties engagedin contentious proceedings before its Boardsof Appeal. The service, which is entirelyvoluntary, is available at the joint request ofthe parties. The decision to mediate has theeffect of suspending the underlying appealproceedings.

Interested parties are invited to choose amediator from a list of OHIM’s staff withspecific training in mediation. The mediationis held at OHIM’s premises in Alicante or,for a fee of EUR 750 to cover travel andaccommodation expenses, at OHIM’ssatellite office in Brussels.

Unless otherwise agreed, the mediation willbe conducted in the language of the appealproceedings. It will normally be scheduledfor one day, will be subject to confidentialityobligations and will involve a mixture ofindividual and joint sessions with themediator. Mediation is not limited to thesubject matter of the appeal proceedings,and may embrace additional disputesbetween the parties. As the service isentirely voluntary, any party is free towithdraw at any time.

Currently, this service is only available inBoards of Appeal proceedings, and only afterthe Statement of Grounds of Appeal hasbeen filed. However, if it proves to besuccessful, it may be extended to firstinstance proceedings before OHIM.

Greece: changes to trade mark lawEleni Lappa, ip work, Athens

The Greek Trade Mark Law is changing. AGreen Paper has been discussed in a publicconsultation procedure and is currentlybeing finalised. The highlights of the new lawinclude the incorporation of theEnforcement Directive (previously only asmall portion concerning copyright wasimplemented) with the tougher and fasterrelief against infringements that this entails,as well as particular provisions of theCommunity Trade Mark Regulation of207/2009 EC.

This will at least bring the legal frameworkfor trade mark protection on the same levelas Greece’s European Union counterpartsand this work in progress will be bound tobring good news for trade mark owners.After all, the much needed development ofthe Greek economy may only be achievedwhen intellectual property rights may beeffectively secured thus providing comfort toforeign entities to enter the market withouttaking risks.

India: Delhi High Court refusesgrant of interim reliefSonal Madan, Ranjan Narula AssociatesRanbaxy Laboratories Limited challenged the

use of Intas Pharmaceuticals Limited’s markNIFTAS for treatment of urinary tractinfection alleging similarity with theirregistered trade mark NIFTRAN used forsimilar drugs. Intas defended their caseclaiming difference in the trade marks,established use and registered rights in thetrade mark NIFTAS.

The court held that since both parties wereregistered owners of their respective marks,no case of trade mark infringement wasmade out and that the matter had to bedecided solely on the principles of passingoff. The court observed that the rival markswere neither phonetically nor visually similar.In view of the dissimilarities between themarks, packaging, price and form of the rivalproducts and the fact that the mark inquestion was used on a “prescription drug”,the court denied an interim relief toRanbaxy.

Iraq: April 2012 deadline to avoidcancellationEdward Hardcastle & Mona Saleh, Rouse

The Iraqi Trade Mark Office issued a noticeon 11 October 2011 setting out details oftrade mark records which have gone missingduring the various recent conflicts.

During the various conflicts over recentyears the Iraqi Trade Mark Office hasstruggled to operate. The TMO was shut anumber of times, records and physical fileswere destroyed and at one point theRegistrar was kidnapped.

The TMO is now functioning normally buthistorical records are being rebuilt, with databeing manually entered. On 11 October2011, the Iraqi TMO issued a notice withdetails of the files that are missing betweenapplication numbers 1 and 34999. Detailscan be found atwww.iq-tmo.com/pdf/Burned%20Files.pdf.

Registrants may provide the missinginformation to the TMO. Registrants arerequested to submit documents showingthat they are the owners of the rights.Information must be supplied to the TMOby 6 months from the date of the publicationof the Declaration; i.e. by 10 April 2012.Failure to provide the information will resultin the registrations being cancelled.

Rights holders with registrations in Iraqshould instruct their agents to review theIraqi TMO website to confirm whether anyof their rights are on the list in theDeclaration. If rights are listed, then theagents should be instructed to file thenecessary information with the Iraqi TMO. Ifinformation is not available or rights ownersare concerned that rights may lapse, thennew applications should be filed.

Kosovo : new trade mark lawGordana Pavlovic, Cabinet Pavlovic, Brusselsand Belgrade

A new trade mark law came into force inKosovo on 8 September 2011. The law is a

result of Kosovo’s efforts to harmonize itslegislation with European Union law. Somenotions typical for the United States legalsystem – such as the need to specify in thetrade mark application whether the trademark is used or whether there is intent touse – have been abandoned.

Trade mark protection is granted to a markthat (i) serves to distinguish goods andservices in commercial circulation, and (ii)can be graphically represented. This includeswords, personal names, devices, letters,numbers, the shape of goods or theirpackaging, colours and any combinations ofthe above.

Rights arise from registration, not from use.Prior use gives rights to the trade markowner only if the trade mark is well-known.The law provides for opposition within threemonths of publication, which takes placeafter examination on absolute grounds. If theapplicant does not respond to theopposition, it is accepted automatically. Badfaith trade marks cannot be challenged inopposition proceedings, but only by way ofan invalidation action. The same applies incase of a conflict with a personal name orimage, copyright and other intellectualproperty right.

In addition, interested parties can fileobservations, pointing out reasons for therefusal on absolute grounds. The decisionsof the IP Office can be appealed to theBoard of Appeals, a body which is still to beestablished by the Ministry of Trade andIndustry. A decision of the Board of Appealscan be challenged in an administrative actionbefore the Court.

A trade mark registration lasts 10 yearsfrom the application date (under the oldTrade mark Law the term was calculatedfrom the registration date). Use ismandatory. If the trade mark is not used for5 years, it can be cancelled at the request ofan interested party. Cancellation has effectas of the date of filing the request forcancellation. Competence for trade markcancellation cases is placed on the IP Office(not the Courts, as was the case in the past).

The law provides for preliminary injunctions.At the request of the rights holder whoproves that his trade mark has beeninfringed or threatened to be infringed, theCourt may order the seizure and/or removalfrom the market of the infringing goods.Such a measure can be ordered ex-parte. Incase of an infringement on a large scale forthe purpose of acquiring commercialbenefit, and where such infringement maycause the trade mark owner irreparabledamage, the Court may order the seizureof movable and immovable property fromthe infringer, or block bank accounts andother assets.


Romania: Customs participate ininternational anti-counterfeitingoperationPETOSEVIC

During September 2011, the Romaniancustoms authorities participated in aninternational operation known as PangeaIV, which targeted the online sale ofcounterfeit and otherwise illegal medicine.

The operation was coordinated by theInternational Criminal Police Organization(INTERPOL), in cooperation with theInternational Medical Products Anti-Counterfeiting Taskforce (IMPACT) andthe World Customs Organization (WCO).

Authorities from 81 countries took part inthe operation, the aim of which was todisrupt the online criminal networks andactivities connected with the sale of illegalmedicine and to raise public awarenessabout the health risks involved inpurchasing medicine online.

During the operation, 55 people werearrested, 13,495 websites closed, 45,419medicine packages inspected, 7,901packages confiscated, 2,422,636 drugsseized, including 304 tablets by theRomanian customs officials.

Ukraine: 2.5 million packages ofcounterfeit medicine sold in Ukraine in2010PETOSEVIC

According to Ukraine’s State Inspectoratefor the Quality Control of Medicines, atotal of 1.2 billion packages of medicinewere sold in Ukraine last year. Out of thisamount, 2.5 million packages, (worthapproximately USD 2.5 million EUR 1.8million) were substandard, non-registeredor counterfeit.

The counterfeit medicine mostly consistedof antibiotics and hormone drugs bearingthe marks of well-known drug makers.Almost 50 percent of the fake drugs wereobtained through the Internet.

According to the Ukrainian authorities,during the last two years more than 300cases related to misleading consumers interms of medicine and foods for specialmedical purposes have been considered.

Saudi Arabia : changes to TradeMark Office practiceEdward Hardcastle, Rouse

The Saudi Arabian Trade Mark Office hasrecently announced two changes inpractice which will affect all those whowish to obtain or maintain rights in theKingdom. The changes came into force on1 Muharram 1433 (26 November 2011).

The first is to formalise the requirement

for the original legalised Power ofAttorney to be available at the time offiling the application. The ImplementingRegulations of the Trade Mark Law areclear that the original Power of Attorneyis required at the time of filing, althoughonly a copy needs to be submitted to theTMO with the application documents. Forsome years the TMO has acceptedapplications without the original Power ofAttorney being produced provided theoriginal document was produced later.This discretionary late filing will no longerbe allowed. In practice the TMO had beenrequiring the original Power of Attorneywith all applications for the last fewmonths.

Powers of Attorney are clearlyproblematic for the Saudi TMO as thesecond change also relates to them. TheSaudi TMO will no longer accept anyPower of Attorney which is more than 10years old. Rights holders will have toexecute a new Power of Attorney toreplace any existing document.

Rights holders need to be aware of thesechanges to ensure that the Power ofAttorney required for use in Saudi Arabiais executed, notarised and legalised ingood time. The entire process can takesome weeks in some countries, with feesfor expedited services adding to the cost.

Yemen: new trade marksimplementing regulationsSaba & Co. IP

The implementing regulations ofTrademark Law no. 23 of 2010 in Yemenwere issued on 27 July 2011, according toMinisterial Decision No. 213 of 2011. Thenew salient features of these regulationsinclude:

1. The 8th edition of the Nice classification is adopted with no local sub-classification.

2. The Registrar is expected to complete substantive examination (examination on absolute and relative grounds) within 30 days from submission of all required documents.

3. Applications for renewal of trade marks will be published in the Official Gazette.

4. In the event that an owner of a trade mark desires to secure provisional protection to a mark which is used on products or services displayed in national or international exhibitions held in the country, it shall notify the competent authority one month beforethe opening of the exhibition. The trade mark owner shall be granted a certificate of provisional protection of

his trade mark within a period that does not exceed 3 months after the end of the exhibition.

5. The Trade mark Office will no longer issue any certificates of renewal, change of name or change of address. Only official receipts to this effect will be granted to applicants attesting to any change of title.

6. The Trade Mark Office has cancelled all surcharges imposed on late filing of documents.

7. There is a grace period of 1 year for late renewals without payment of a surcharge.

8. The registration number will remain the same as the filing number once an application matures to registration.

9. A new schedule of official fees is introduced. The fees have increased substantially in comparison with their current level.

Also to note that on 3 October 2011,implementing regulations related toIndustrial Designs Law No. 28 of 2010 inYemen were issued according toMinisterial Decision No. 212.

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5

Send me no flowers? CJEU decides inINTERFLORA AdWords caseDr Birgit Clark, Senior Trade Mark Practitioner, Baker & McKenzie LLP, London

On 22 September 2011, the Court ofJustice of the European Union (CJEU)handed down its eagerly awaited decisionin the Interflora case, a referral from theHigh Court of England and Walesconcerning keyword ('AdWord')advertising (C-323/09). This decisionfollows the CJEU's earlier decisions in theAdWords cases, most notably in the threejoined French cases (joined Cases C-266to 238/08) which provided initial guidanceon the legality of keyword advertising, theAustrian BergSpechte referral (C-278/08),the German referral, eis.de (C-91/09) andthe Dutch referral in Portakabin (C-558/08). In Interflora, the court has nownot only reiterated its basic approval ofthe AdWords business model, but hasalso decided against additional protectionfor trade marks with a 'reputation'. Thedecision is particularly noteworthy since itendorses and further defines the"investment function" as an additionalfunction of a trade mark.

AdWords systemThe search engine provider Googleoperates a system called 'AdWords',which allows advertisements to bedisplayed under the heading 'sponsoredlinks' alongside 'natural results' in responseto keywords being entered by an internetuser in the search engine. In this article,the terms AdWord and keyword are usedinterchangeably.

FactsThe proceedings were brought byInterflora against Marks & Spencer (M & S)in relation to M & S's use of the markINTERFLORA, spelled in differentpermutations (‘Interflora Flowers’,‘Interflora Delivery’, ‘Interflora.com’,‘Interflora.co.uk’ etc.) as an advertisingkeyword. When an internet user typed‘Interflora’ into Google's search field, anadvertisement for M & S’s services wasshown in the ‘sponsored link’ section,visually separated from the natural searchresults. A number of questions werereferred from the High Court of Englandand Wales to the CJEU seeking additionalclarification on (1) how keywordadvertising may adversely affect thefunction of a trade mark used as akeyword and (2) whether keywordadvertising may take unfair advantage ofor cause detriment to the distinctivecharacter or repute of that trade mark.Google itself was not part of theproceedings.

DecisionReferring to its precedents in GoogleFrance (Joined Cases C-236/08 to C-

238/08) and BergSpechte (C-278/08), theCJEU in Interflora reiterated that in casesof so-called "double-identity" trade markinfringement can only be assumed if thereis an adverse effect on one of the funtionsof the trade mark. The court furtherconfirmed that a trade mark owner couldnot ‘oppose the use of a sign identicalwith the mark if that use is not liable tocause detriment to any of the functions ofthat mark. The relevant functions of atrade mark in this context not onlyincluded the 'function of indicating origin'but also other functions, such asguaranteeing the quality of the goods orservices and the functions ofcommunication, investment andadvertising. With regard to keyword usein cases of "double-identity", the relevantfunctions to be examined were initially thefunctions of indicating origin and theadvertising function and, somewhat morecontroversial, in cases of a mark with areputation, the investment function.

Origin function Again, referring to Google France, thecourt affirmed that whether the facts of acase indicated adverse effects on theorigin function depended ‘in particular onthe manner’ in which that advertisementwas presented. Whether this was thecase was for the national court to assess,on a case-by-case basis. Trade markinfringement would have to be assumed intwo circumstances: (1) where a thirdparty's advertisement suggests that thereis an economic link between that thirdparty and the trade mark proprietor; or(2) where an advertisement is so vagueconcerning the origin of the goods orservices that a normally informed andreasonably attentive internet user isunable to determine, on the basis of thead displayed, whether the advertiser is anunrelated third party or economicallylinked to that trade mark proprietor.

Applying this guidance to the specifics ofthe Interflora case, the CJEU addressedInterflora's argument that the markINTERFLORA had acquired a secondarymeaning such that it would be understoodas denoting a commercial network offlorists. The CJEU took the view that theorigin function of the INTERFLORA trademark could be adversely affected ifinternet users gained the incorrectimpression from M & S’s ad that M & Sitself was part of the Interflora network. Itwas not enough if some users found itdifficult to ascertain whether this was thecase. The CJEU further held that thereferring national court had to determinewhether a reasonably well-informed andreasonably observant internet user whohas entered search terms including the

word ‘Interflora’ into Google searchengine “was able tell that the flower-delivery service offered did not originatefrom Interflora”. Since the Interfloranetwork was “composed of a largenumber of retailers which vary greatly interms of size and commercial profile” it“may be particularly difficult for (...) theinternet user to determine, in the absenceof any indication from the advertiser,whether or not the advertiser (...) is partof that network”. As such, the CJEUappears to indicate that it was to up theadvertiser to ensure that the languageused in the ad was unambiguousconcerning trade origin.

Advertising functionWith regard to the advertising function,the CJEU stressed, again in reference toits precedent in Google France, that atrade mark owner was entitled to preventa third party from using a sign identicalwith its trade mark in relation to identicalgoods or services, where that useadversely affects the proprietor's use of itsmark as a factor in sales promotion or asan instrument of commercial strategy. Itwas ‘clear’ that use of a trade mark as akeyword by advertisers was liable to have‘certain repercussions’ on the proprietor's‘advertising use’ who, for example, had topay a higher price per click if he wished toensure that the advertisements appearedbefore those of other operators whichhad also chosen the mark as a keyword.In this context, the CJEU reiterated thatthe ‘home and advertising page’ wasusually also displayed in the natural searchresults free of charge, which ensured aguaranteed visibility of trade mark ownerand its products. In light of this, the courttook the view that there was no adverseeffect on the advertising function of theINTERFLORA trade mark.

Marks with a 'reputation'Notably, the decision provided some newguidance concerning trade marks with a'reputation' which are granted particularprotection under European trade marklaw, considering that there is a ‘clearexploitation of a mark with a reputation’where such marks are used as advertisingkeywords. It had not been in disputebetween the parties that the markINTERFLORA had acquired considerablereputation. The CJEU thereforeaddressed the High Court's questions asto whether M & S's buying and bidding onthe INTERFLORA trade mark as anadvertising keyword amounted to trademark infringement since it was either"detrimental to the distinctive characteror repute" (so-called 'dilution') of the

continued on the next page

mark, or, alternatively took an "unfairadvantage" of the mark (so-called 'free-riding').

FFooccuuss oonn tthhee "" iinnvveessttmmeenntt ffuunnccttiioonn""

In Interflora, the CJEU for the first timediscussed the protection of a trade mark’sinvestment function in more detail. Thisconcept had first been highlighted by thecourt in its L'Oreal v Bellure decision.The CJEU now expanded on this and heldthat use by a competitor of a sign identicalto a trade mark in relation to identicalgoods or services has an adverse effect onthat function where that use "substantially"interferes with the proprietor’s use of itstrade mark "to acquire or preserve areputation capable of attracting consumersand retaining their loyalty". Moreover, ina situation where a trade mark alreadyenjoys a reputation, the investmentfunction is adversely affected where suchuse “affected that reputation” and in sodoing “jeopardised its maintenance”.However, the investment function wouldnot be affected if the only consequence ofthat third party use of the mark was thatthe trade mark owner had to adapt itsown efforts to acquire or preserve itsreputation and retaining consumer loyalty.The court also clarified that a trade markowner cannot rely on the fact that suchuse could prompt some consumers toswitch from the goods or services bearingthe trade mark to those of a competitor.

The CJEU further held that use of acompetitor's mark as an advertising

keyword would be "detrimental to thedistinctive character" of that mark if therewas a danger that the mark itself couldbecome a generic term through this use('dilution') and so was “no longer capableof creating an immediate association, inthe minds of consumers, with a specificcommercial origin”. Nonetheless, thecourt appeared to take the view thatselecting a competitor's trade mark as anadvertising keyword did not necessarilycontribute to this where it has “merelyserved to draw the internet user’sattention to the existence of an alternativeproduct or service to that of theproprietor of the trade mark”. Things mayhowever have to be judged differently bythe national court where the ad that wastriggered “did not enable the reasonablywell-informed and reasonably observantinternet user to tell that the servicepromoted by M & S is independent fromthat of Interflora”.

However, the CJEU acknowledged thatselecting a third party trade mark as anadvertising keyword is an atempt to takeadvantage of a trade mark which has areputation and thus amounts to "takingunfair advantage" of that mark ('free-riding). This will particularly occur, ifconsumers then as a consequence decidesto buy the advertiser's competingproducts rather than those of the trademark owner. If such a keyword selectionwas made "without due cause", or affectedthe "origin function" of the trade mark,then this would have to be considered as

unfair. Especiallywhere the advertiser'sgoods were imitations of the trade markowner's goods. In contrast, where thethird party ad offered an alternative to thetrade mark owner's goods or services, useof the mark as a keyword would “as arule” fall within the ambit of faircompetition and thus lawful (“with duecause”), unless there was an element ofconfusion, tarnishment or dilution.

CCoommmmeenntt

The CJEU has now addressed – but assome may say not necessarily answered -all questions relating to keywordadvertising referred to it from the variousnational courts and, in the process,covered almost every possible perspectiveof trade mark protection. However, assome legal commentators were quick toobserve, the guidance provided by theCJEU in the Interflora case on the issue ofusing trade marks with a reputation asadvertising keywords is somewhat opaque.There is also some unease when it comesto the CJEU’s focus on additionalfunctions of a trade mark, in particular theinvestment function. The last chapter inthe ongoing AdWords saga has not yetbeen written: it will now be for thereferring national court, the High Court ofEngland & Wales, to flesh out and furtherclarify this guidance by applying it to theactual dispute between M & S andInterflora.

In a non-precedential decision of theTrademark Trial and Appeal Board(“TTAB”), the TTAB found that theapplicant’s use of LAZACOR andLAZACOR + for “homeopathicsupplements” is not likely to causeconfusion with the mark NASACORT fora “steroid preparation for the treatmentof allergic rhinitis”. In reaching itsdecision, the TTAB reached a series ofinteresting conclusions. For example, theTTAB found that a prescription drug totreat rhinitis and a homeopathicsupplement (not limited to any specifictreatment and therefore including rhinitis)are sufficiently related such that if soldunder the same or similar marks, theywould be likely to cause confusion. TheOpposer’s marks were not famousdespite evidence of annual sales well overUSD $200 million and substantialadvertising expenditures because theOpposer did not produce unsolicitedmedia references to the notoriety ofOpposer’s marks. Further, the Opposer’sassertions that the product sold under itsmarks could be sold over-the-counter in

the future was not relevant to the currentopposition. Aventis Pharmaceuticals Inc. v.Heal the World Inc., Opposition No.91192046 (October 24, 2011).

In another non-precedential decision ofthe TTAB, it upheld an opposition basedon the marks ENSURE, PEDIASURE andNEOSURE (for nutritional products andsupplements) against applications for themarks CATSURE and DOGSURE (forfood supplements for cats and dogs). Inreaching its conclusion, the TTAB foundthat the Opposer’s goods (used byhumans) were related to the Applicant’sgoods based on evidence that theApplicant had compared its product toOpposer’s products (e.g., that its productsdo the same thing for cats and dogs thatOpposer’s product does for humans).Abbott Laboratories v. Pet-Ag, Inc.,Opposition No. 91170148 (November 22,2011).

Finally, the USPTO issued the 8th editionof the Trademark Manual of ExaminingProcedure (the “TMEP”), superseding allprior versions. Highlights of changes in

this edition include the following: (1)consent agreements makingrepresentations about both parties’ beliefsconcerning likelihood of confusion orwhich include undertakings by bothparties to take certain actions to avoidconfusion must be signed by both partiesto be acceptable; (2) when using thelanguage “full line of pharmaceuticals” in adescription of goods, the applicant will berequired to provide evidence that it usesthe mark in connection withpharmaceuticals to treat diseases orhealth problems in all categories in theWorld Health Organization (“WHO”)International Statistical Classification ofDiseases and Related Health Problems;and (3) an applicant for an extension ofprotection under the Madrid Protocolmay seek an amendment to the mark toadd a standard character claim eventhough the international registration doesnot indicate that the mark is in standardcharacters, so long as the mark otherwisequalifies for such a claim (subject toconsultation with the Supervisor of theMadrid Processing Unit).

US UpdateJames Thomas, Thomas Trademarks and Copyright Legal Services, North Carolina

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Wednesday 12 OctoberRight from the get go, the PTMG delegates and their guestswere greeted with Czech pivo (beer) at the WelcomeReception located in the Zlata Praha Restaurant and Terrace ofthe InterContinental Prague Hotel, which was situated in thehistoric Jewish Quarter of Prague. Gusts of wind carrying withit a bit of chill did not stop many of the attendees from takingin the scenic views from the Terrace. PTMG Veterans and firsttimers alike mingled, exchanged cards and stories, and took inthe fresh Czech air.

Rosina Baxter and Richard Gilbey

Thursday 13 OctoberDelegates sipped coffee and tea (and took in a delicious treat)as they settled into Congress Hall of the Hotel waking up tothe sweet and familiar voice ofSue Evans, Chairwoman.Richard Gilbey of GilbeyDelorey kicked off themorning discussing trademarks in history, particularly,the history of Aspirin. Quite along and complicated historyfor such a little pill (see infrafor mention of another littlepill). The day progressed witha presentation by RosinaBaxter of Reckitt Benckiserwho explained the practicaland important implications

today of the shrinking marketin which we live. After a quickcoffee break, EdwardHardcastle delivered a resolutemessage that it takes patienceand determination toaccomplish your IP goals in theMiddle East. A critical point,depending on the stake-holder:Do not bother with efforts toobtain a trademark coveringalcoholic beverages in thisregion regardless of yourperseverance or tenacity.From the Middle East, we

transversed to the other side of the world where AlejandroLuna of Olivares & Ciadiscussed the current trademark issues facing his countryof Mexico. After acosmopolitan presentation ofdelicious food and stunning daytime views from the 9th floorof the Hotel, Jeremy Newmanof Rouse explored the waragainst counterfeiters in the EUwhere methods appear to differfrom other regions of theworld, including the US, asviewed through the Nokia andPhilips ECJ cases. D’ArcyQuinn of CropLife made achilling link between counterfeitproducts and in-house counterfeiters, so the essential take-away of the day was to initiate a “Know Your Customer orKYC program. You cannot be in Prague for an InternationalIntellectual Property Conference and not discuss famous Czechtrade marks. Thanks to Lukáš Lorenc of �Cermák a spol whotold the captivating history of BUDVAR and BUDWEISER.That night, delegates enjoyed an evening of regional cuisine andentertainment starting with pivo tasting on the trolley ride to

the restaurant, U Fleku, wherewe consumed as much goulashas one could possibly eat!Who knew that trolley ridescould be so much fun in and ofthemselves?

Friday 14 OctoberDelegates spent the morningvisiting BRIC (Brazil, Russia,India and China). After asuccint setting of the scene byCarly Mansell from GSK whochaired the morning session,Mario Soerensen Garcia ofSoerensen Garcia Advogadosgot us underway discussing thepharmaceutical industry in the

83rd PTMG Conference, Prague, 12-14October 2011PHARMACEUTICAL TRADE MARKS IN A SHRINKING WORLDMichele Katz and Julie Katz, Husch Blackwell LLP

Edward Hardcastle

Jeremy Newman

Lukáš Lorenc

Mario Soerensen Garcia7

emerging market of Brazil where he concluded, “I love youdrug dealers!” (thanking his pharma clients for enforcing their IPrights in his country). Likewise, after comparing andcontrasting various aspects of Brazil and Russia, EugeneArievich, Baker & McKenzie, followed suit, not to be outdone.Chander Lall of Lall Sethi covered the India portion of BRICand the delegates roared over the Viagra lifestyle drug videofrom YouTube (how many of our readers just searched it?).

Finally, Catherine Zheng of Deacons concluded the morning’ssessions with her eloquent coverage of the emergingpharmaceutical market in China.

The afternoon was just asriveting. First, David Lossignolof Novartis took us throughthe role of a trade mark duringthe various stages of growthfrom a compound to apharmaceutical product.Second, Jonathan Jennings ofPattishall McAuliffe discussedthe US perspective on graymarket goods. And finally,Keith Barritt of Fish &Richardson closed this year’ssessions with an interestingdiscussion of what’s new withgTLDs, including the veryprovocative .xxx domainnames. The Gala Dinner andDance took place at the ZofinPalace, located on a beautifulisland in the heart of Prague.With bated breath, theattendees waited for Sue Evansto reveal next year’s location.After toying with us, Sue finallyannounced: Barcelona! Welook forward to seeing you nextyear for another set of sessionson the most cutting edge,relevant IP news, and growingstrong bonds with otherPTMG members.

Here’s to a healthy,happy and prosperousNew Year

Eugene Arievich

Chander Lall and Carly Mansell

David Lossignol

Keith Barritt

Jonathan Jennings

8

The Editor enjoying theentertainment at ZofinPalace

A strong pharmaceutical brand isimportant in fostering loyalty amonghealthcare professionals and patients alike,and is an important as part of a strategy tomitigate the loss of revenue when a patent(or supplementary protection certificate)expires. In addition to more traditionalintellectual property rights, design rightscan be used to protect the shape, colourand packaging of pharmaceutical productsand medical devices, particularly forconsumer orientated products.Community design rights can also be usefultools in tackling counterfeit or falsifiedmedicines and parallel imports, and canalso be used to obtain some registeredprotection in an otherwise non-distinctiveelement of packaging while it acquiresdistinctiveness through continued use.

A Registered Community Design (“RCD”)gives the right holder a monopoly rightthroughout the European Union for theoutward appearance of an object (or partthereof) resulting from the lines, colours,shape, texture and/or ornamentation. Theright is initially for five years, extendableup to 25 years, and contrary to trademarks, is available absolutely with no needto register the design for particular goodsor services. The Design Regulation(6/2002) allows designs to be registered ifthey are new and have individual character.Individual character requires the design toproduce a “different overall impression”on the “informed user”. Practicallimitations affecting registration includewhere a design element is dictated solelyby its technical function and the freedomof the designer in developing the design.

On 20 October 2011, the Court of Justiceof the European Union had its firstopportunity to substantively consider thenew design law in the case of PepsiCo Incv Grupo Promer Mon Graphic SA (C-281/10P). The significance of this casecannot be understated – it is binding on allcourts, OHIM and national registries inEurope, it provides guidance on theinterpretation of the Design Regulationand of course affects the work thatpractitioners across Europe are doing on adaily basis. In particular, clarity is providedon the definition of “informed user”, theconcept of design freedom and the“overall impression” a design creates. Allpharmaceutical brand owners should beaware of this decision and consider itsimplications for their designs portfolio.

BackgroundPepsiCo applied to register a RCD for“rappers” in September 2003 (figure 1),claiming priority from an earlier Spanishdesign (a rapper is a small collectiblepromotional toy, often included in foodproducts aimed at children). The design

was published and registered in November2003 as “promotional item[s] for games”.In February 2004, Grupo Promer appliedto OHIM for a declaration of invalidity,based on an earlier RCD for “metalplate[s] for games” (figure 2), arguing thatPepsiCo’s design lacked novelty andindividual character (Article 25(1)(b)) andthat PepsiCo’s design was “in conflict” withGrupo Promer's prior design (Article25(1)(d)). Furthermore, Grupo Promerargued that PepsiCo had acted in bad faith,as Grupo Promer had previously shared itsrapper design with Frito Lay (a division ofPepsiCo) under terms of confidentiality.

Figure 1: PepsiCo’s RCD.

Figure 2: Grupo Promer’s earlier RCD.

OHIM’s Invalidity Division invalidatedPepsiCo’s RCD on the basis that it was “inconflict” with the prior design, but GrupoPromer's other arguments failed. At thetime PepsiCo applied for its RCD, GrupoPromer’s design had not been publishedand it could not be taken into account as aprior design for the purposes of Article25(1)(b), and bad faith is not a ground forinvalidating a design under the DesignRegulation.

PepsiCo successfully appealed to the ThirdBoard of Appeal. Grupo Promer took thecase to the General Court, which reversedthe decision again, invalidating PepsiCo’sdesign. PepsiCo then appealed to theEuropean Court of Justice; the AdvocateGeneral gave his opinion on 12 May 2011,noting that “this case offers the firstopportunity to clarify a number of points… in relation to Community designs”.

The Court of Justice’s Decision At the heart of the case was whetherPepsiCo’s RCD was “in conflict” withGrupo Promer’s earlier RCD. To answer

this question, the Court of Justice assessedwhether PepsiCo’s RCD created adifferent overall impression on theinformed user, taking into account thedegree of design freedom of the designer.Although this case related to invalidityproceedings, this test also applies to theinfringement of RCDs.

Who is the informed user?To date, Courts have been happier to saywho the informed user is not, rather thanwho it is. Given that the identity of theinformed user has a significant impact onthe validity of a design (and also whetheror not it is infringed), it is useful that theCourt of Justice has now laid down acomprehensive test.

The Advocate General had helpfullysuggested that the informed user is not the“average consumer” of trade mark law,nor a “person skilled in the art” frompatent law. Rather, the informed user “canbe said to lie somewhere between thetwo”.

The Court of Justice developed thisnotion, confirming that the informed user:

“must be understood as lying somewherebetween that of the average consumer,applicable in trade mark matters, whoneed not have any specific knowledge andwho, as a rule, makes no directcomparison between the trade marks inconflict, and the sectoral expert, who is anexpert with detailed technical expertise.Thus, the concept of the informed usermay be understood as referring, not to auser of average attention, but to aparticularly observant one, either becauseof his personal experience or his extensiveknowledge of the sector in question …

[A]s regards the informed user’s level ofattention, it should be noted that, althoughthe informed user is not the well-informedand reasonably observant and circumspectaverage consumer who normally perceivesa design as a whole and does not proceedto analyse its various details (see, byanalogy, Case C�342/97 Lloyd SchuhfabrikMeyer [1999] ECR I�3819, paragraphs 25and 26), he is also not an expert orspecialist capable of observing in detail theminimal differences that may exist betweenthe designs in conflict. Thus, the qualifier‘informed’ suggests that, without being adesigner or a technical expert, the userknows the various designs which exist inthe sector concerned, possesses a certaindegree of knowledge with regard to thefeatures which those designs normallyinclude, and, as a result of his interest inthe products concerned, shows a relativelyhigh degree of attention when he usesthem.”


Court of Justice clarifies scope of design rightsBy David Stone, Simmons & Simmons LLP, London

9

The Court of Justice appears to havefound the right balance, giving Communitydesigns a robust scope of protection.

Degree of freedom of thedesignerWhen assessing whether two designscreate the same overall impression on theinformed user, the degree of freedom ofthe designer must be taken intoconsideration. Some features of a productare “compulsory” – and so the designer isnot free to change them. Where thereare significant constraints and limiteddesign freedom, small differences betweentwo designs may be enough to create adifferent overall impression on theinformed user. This is particularly relevantto pharmaceutical design, where for manyproducts (e.g. tablets) a designer wouldhave limited freedom.

Cases to date have highlighted such designconstraints as safety legislation andproduct standards and other featureswhich the design must possess if it is tofulfill its function. But the AdvocateGeneral also posed the question ofwhether the designer’s freedom can berestricted by features which the marketexpects the product to have. Interveningto support PepsiCo's appeal, OHIM alsourged the Court to take marketexpectations into account.

The Court of Justice did not need todecide the question, and has not, decliningto interfere with the General Court'sfinding that design freedom included:

“the constraints of the features imposedby the technical function of the product oran element thereof or by statutoryrequirements applicable to the product.”

Technical aspects of a design are alreadyexcluded from protection, so it seemsmore sensible to include in therestrictions of design freedom things otherthan technical issues only. If a syringe is

expected to have a needle, a barrel and aplunger, these are restrictions on thedesigner’s freedom, and something thatwould be apparent to the informed user.The fact that two syringes each have thesefeatures does not contribute to theircreating the same overall impression onthe informed user. The Court of Justicehas left this discussion for another day.

How to assess overall impressionIn making the assessment of overallimpression, the informed user looks at thetwo designs side by side – the notion of“imperfect recollection” from trade marklaw will only be relevant if a side by sidecomparison is impractical or uncommon inthe sector concerned. This sits well withthe notion of an “informed user” – this isnot a rapid decision of a consumer in asupermarket, but rather a consideredanalysis by an educated user of theproduct concerned.

All parties agreed that the primarycomparison should be between the RCDas shown in the registration, and the priordesign (in this case comparing two linedrawings), but PepsiCo argued that theGeneral Court had based its assessmenton an examination on PepsiCo’s physicalrappers, rather than the design drawings inthe RCD.

The Advocate General had suggested thatthe comparison should be between theRCD as filed and the prior design, but thatthe physical rapper could be used “only toconfirm the findings already made”. Oneof the dangers, of course, is that it isextremely difficult to determine whether aphysical object is made to the design – inmany cases, the physical object will haveadditional material that makes it differentto the line drawing or photograph in theRCD.

The Court of Justice has adopted theAdvocate General's approach, noting:

“since in design matters the person makingthe comparison is an informed user who… is different from the ordinary averageconsumer, it is not mistaken, in theassessment of the overall impression ofthe designs at issue, to take account of thegoods actually marketed whichcorrespond to those designs.

…[T]he General Court did indeed base itsassessments on the designs in conflict asdescribed and reproduced in therespective applications for registration,with the result that the comparison of theactual goods was used only for illustrativepurposes in order to confirm theconclusions already drawn and cannot beregarded as forming the basis of thestatement of reasons given in thejudgment under appeal.”

The Court of Justice dismissed PepsiCo’sappeal with costs. The end effect is thatPepsiCo’s RCD, filed in 2003, has nowbeen held to be invalid. There is no appealfrom the Court of Justice.

CommentPharmaceutical companies must takeadvantage of all rights available to them toensure their intellectual property benefitsfrom comprehensive and strongprotection. This decision provides clarityto some of the key concepts in the DesignRegulation, and most importantly itconfirms the strength of the RegisteredCommunity Design. The impact of thisdecision on both ongoing design disputesand any infringement actions not taken inthe past should be assessed. Practitionersshould always be alive to the possibility offiling design registrations for new andinnovative designs, and where possible,should apply for a design registration atthe same time as a trade markregistration.

On 29 October 2011, Advocate GeneralBot delivered his Opinion in Case C-307/10, Chartered Institute of PatentAttorneys v. Registrar of Trade Marks.The case arose from an application of themark IP TRANSLATOR for the services“Education; providing of training;entertainment; sporting and culturalactivities”, which is the class heading forClass 41 of the Nice Classification. TheUnited Kingdom Intellectual PropertyOffice objected because the mark wasdescriptive for translation services whichfall into Class 41. The Institute argued thattranslation services were outside the

specification, but the Office refused, takingthe view that since the Institute hadspecified the Class 41 headings it had alsoclaimed protection for translation services.On appeal to the Appointed Person, thefollowing questions were referred to theCourt of Justice of the European Unionfor a preliminary ruling:

“In the context of the Directive:

(1) Is it necessary for the various goods or services covered by a trade mark application to be identified with any, and if so what particular, degree of clarity and precision?

(2) Is it permissible to use the general words of the class headings of the [Nice Classification] for the purpose of identifying the various goods or services covered by a trade mark application?

(3) Is it necessary or permissible for suchuse of the general words of the ClassHeadings of [the Nice Classification] to be interpreted in accordance with Communication No 4/03 ...?”


IP TRANSLATOR: guidance given by AG ontrade mark specifications Dr. Alexander von Mühlendahl, J.D., LL.M., Rechtsanwalt,

The reference thus raised the centralquestions in the ongoing debate about theuse of class headings or other genericterms in trade mark applications andregistrations and the consequences ofallowing such generic claims. TheAdvocate General proposed the followingas answers:

(1) (a) Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks and Council Regulation (EC) No 207/2009of 26 February 2009 on the Community trade mark are to be interpreted as meaning that the identification of the goods or servicesfor which the applicant seeks protection must satisfy requirements of clarity and precision which are sufficient to enable the competent authorities and the economic operators to determine accurately the scope of the protection conferredby the trade mark.

(b) Those requirements may be satisfied by a specific list of each of the goods and services for which the applicant seeks protection. They may also be fulfilled by identification of thebasic goods or services enabling the competent authorities and economic operators to determine the essential characteristics and objective properties of the goods and services concerned.

(2) Directive 2008/95 and Regulation No 207/2009 are to be interpreted as notprecluding the applicant from identifying the goods or services for which they seek protection by using the general indications of the class headings of the common classificationof goods and services for which a mark is registered, provided that thatidentification satisfies the necessary requirements of clarity and precision.

(3) Communication No 4/03 of the President of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 16 June 2003 concerning the use ofclass headings in lists of goods and services for Community trade mark applications and registrations, by which the President indicates that OHIM does not object to the use of any of the general indications and class headings as being too vague or indefinite and that the use of those indications constitutes a claim to all the goods or services falling within the class concerned, does not guarantee the clarity and precision required for the purposes of the registration of a trade mark, whether

a national or a Community trade mark.

Aside from interesting general commentsmade by the Advocate General, such asthe welcome statement that the answersmust necessarily be the same for the CTMsystem and for all national systems, theforthcoming judgment of the ECJ, if itfollows, which seems likely, the Opinion ofthe AG, should demand the attention of alltrade mark proprietors and practitioners.The following five points are of particularinterest.

Firstly,the use of generic indications in theclass headings (example: clothing – Class25) in specifications will be allowed,provided these indications, or any othergeneric indications, satisfy “the necessaryrequirements of clarity and precision”.This requirement is the corollary to therequirement for the representation of amark to be clear, precise, self-contained,easily accessible, intelligible, durable,unequivocal and objective (the so-called“Sieckmann requirements”). If the practiceof OHIM and national Frank Mark Officesin Europe are taken into account, thisrequirement is fulfilled with almost all ofthe class headings.

Second, using the class headings or anyother generic indication does notconstitute a claim to goods or serviceswhich may not properly be understood asfalling under the generic term. Thus,OHIM’s and the practice of many nationaloffices “includes all” cannot be maintained.Generic terms, including class headings,must be interpreted to “mean what theysay” (e.g. “musical instruments” in Class15 do not cover “carrying cases formusical instruments”, also classified inClass 15). Applicants wishing to haveprotection for all goods or services in aclass such as Class 15 must find ways ofdescribing these goods in terms otherthan by use of the class headings.

Third, as regards registrabilityexamination, offices will have to take intoaccount only goods or services fallingunder the generic term. In the IPTRANSLATOR case, a refusal would beappropriate only if translation serviceswould fall under any of the class headings,which does not appear to be the case.

Fourth, as regards conflict cases, theearlier (or later) mark should be taken asclaiming only those goods or serviceswhich fall within the generic termsproperly employed. Other goods orservices falling into the same class wouldbe disregarded.

Finally, as regards use, both for purposesof the defence of non-use and ofrevocation for non-use, any use outside ofthe scope of a generic indication wouldnot constitute use for the goods or

services for which the mark is registered.

All these consequences would go againstcurrent OHIM practice. To the extent thattrade mark proprietors would be put at adisadvantage as compared to earlierpractice, appropriate amendments ofspecifications should be allowed by OHIMand offices in a similar situation, alreadynow on a case-by-case application andperhaps legitimised by an amendment ofapplicable legislation, permittingproprietors to add goods or servicesincluded under current OHIM practice(e.g. “carrying cases for musicalinstruments” in addition to “musicalinstruments”), without expecting arejection on the grounds of impermissibleextension of the list of goods or services.

The judgment of the ECJ is expected inthe first half of 2012.

11

A special mention for Julie Katzwho adopted a 2 year old girl fromMoldova on Friday, October 21.Julie left PTMG Conference inPrague early to join her husband inMoldova after a nearly two yearprocess. Yet another remarkablePTMG story. We are delighted tofeature this family shot here andoffer our congratulations to all.

Editor’s note:

PTMG2012 Autumn Conference

3rd to 5th October 2012 Barcelona


www.ptmg.org

12

Where were you brought upand educated?I was born and brought up in Belfastuntil I was 11 and then I moved to theMidlands in the UK where I waseducated until I went to Universityand Bar School in London.

How did you become involvedin trade marks?In 1988, I had completed my lawdegree and been called to the Bar butdecided that I didn’t have sufficientfunds to commence pupilage. Itherefore thought I would seek eithera commercial pupilage or a job to lastfor about 12 months until I savedenough money go back and do thepupilage. During that time whilstlooking for commercial pupilages I sawan advertisement in the newspaper fora job with The Wellcome Foundation,which I had never heard of. I went foran interview with Geoffrey Foot andhave been doing trade marks eversince

What would you have done ifyou hadn't become involved inintellectual property?I think I would have been a criminalbarrister. I worked with the CrownProsecution Service as a student andcould see myself strutting around inthe Old Bailey.

Which three words would youuse to describe yourself?Honest, extrovert and friendly.

Complete the followingsentence. ‘I wish ...’If I have time to myself… to goshopping.

What's the best thing aboutyour job? Wherever I go in the world I usuallyknow someone and I have lived inLondon, Hong Kong and Sydney – nottoo bad.

What is a commonmisperception of you?That I am somehow scary. In the past,I have been nicknamed “Rottweiler”amongst others but am actually farfrom scary.

What is the best age to be? I find that changes from year to year!

What would be your idealnight out?Dinner and drinks with a bunch offriends and then dancing. The PTMGconference usually provides an idealopportunity.

What’s the toughest thingabout your job?Timesheets.

What is your weakness?Shopping.

Which book or books are youcurrently reading? The Widow Clicquot and My Life inFrance. The first is about my favoritedrink combined with a study of aremarkable woman pioneer. Thesecond is Julia Child’s biography. Shecould be said to be one of the first“celebrity” chefs.

Which one person would youinvite to dinner (other than afamily member or relative)? Colin Firth – preferably dressed as MrDarcy in the lake scene.

What is your favourite fooddish? Thai, I was addicted to this when Iwas pregnant with my son, so muchthat my husband insisted we give it upfor quite a while afterwards.

What is your favourite drink?

Champagne

What is your favourite holidaydestination? Port Douglas in Australia: fab beaches,the Barrier Reef and always warm.

Which piece of advice wouldyou give a visitor to the areain which you live? Move here. Bronte in Sydney is afantastic place to live.

What’s your favourite modeof transport and why?Anything that stays on the ground. Iam frightened of heights so I hateflying.

What do you like, eventhough it’s not fashionable?Sewing - I take classes with a range ofwomen including a surgeon who is avery neat seamstress!

© 2011 The Pharmaceutical Trade Marks GroupCirculated for information only to PTMG Members. The Group takes no responsibility for the contents

Editor: Vanessa Parker

Tel.: +33 679 316 860 email: [email protected]

PROFILE: Frances Drummond

Frances is a partner of Norton Rose Australia,specialising in contentious and non-contentious trademarks. Frances started her career with The WellcomeFoundation in London and then worked for nine yearsin Hong Kong, latterly as a partner of the law firmDeacons. She has been working in Australia since2000 and was formerly a partner at Freehills inSydney. As well as being a lawyer, Frances is aqualified mediator and notary.

editorial:christmas3 international update european union: ohim introduces free of charge mediation...

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