Features
WTR’s exclusive survey of the CTM system explores the reaction from leading filing agents to the cut in feesand gauges OHIM’s performance over the past year
Using a famous person’s identity to promote a productor service can be very tempting for marketers, but ifhandled incorrectly it can lead to publicity rightclaims that may extend beyond the celebrity’s lifetime
Word telephone numbers, which substitute numeralswith letters, have been widely used in the United Statesfor years, but as they become more common in othercountries, it is time to consider the risks such numberspose, in particular with regards to domain names
The development of the Internet has exacerbated theconflicts and uncertainty in US trademark law – to thepoint where it now seems necessary to amend theFederal Trademark Act
Border protection in Latin America is a complexoperation. However, some countries, includingArgentina, have introduced highly effective newmeasures that may inspire change across the region
BP recently announced that it has scrapped its headof trademarks role. WTR examines the thinkingbehind this decision and wonders what the movesays about how corporations can align theirtrademark practice with the core business strategy
Country correspondent
The Indian courts have adopted theprinciple of trans-border reputation toprotect foreign pharmaceutical marks thathave not been registered in India.
Spanish practice on pharmaceuticaltrademarks reflects recent developmentsat EU level. This article examines therelationship between such marks andinternational non-proprietary namesand the criteria for determining therelevant public.
The main issues presented bypharmaceutical trademarks in Beneluxconcern their descriptiveness, the relevantpublic and parallel imports
Substantive legislative changes haveopened the door to the parallelimportation of pharmaceuticals in Israel.Parallel importation cannot be prohibited,unless the goods undergo substantialchanges such that they can no longer beattributed to the mark owner.
Pharmaceutical trademarks in Portugal must meet both the requirements for registration as a trademark and those for eligibility as a medicine name, which are much stricter.
Trade dress issues in relation topharmaceutical products have become moreapparent in Brazil as trade in generic drugsincreases. Luckily, local law providesadequate protection against imitation.
Inconsistencies in approach to the test oflikelihood of confusion make it difficultto evaluate in advance the risks associatedwith adopting a pharmaceuticaltrademark in Italy.
Pharmaceutical trademarks must clear anumber of hurdles, including distinct andindependent reviews by the US Patentand Trademark Office and the Food andDrug Administration.
As in most other jurisdictions, in Chinapharmaceutical companies must navigatea dual system of registration and approvalof their trademarks and the commercialnames of their products.
Part IV of the new Civil Code establishesthe basic regime for the protection ofpharmaceutical trademarks in Russia.Rights holders must also be aware oflegislation governing the use ofmedicines, and practice at the Patent andTrademark Office and the courts.
The EU courts have wrestled with thelikelihood of confusion test forpharmaceutical marks over the years,often coming to seemingly conflictingconclusions. The Romanian courts, onthe other hand, have preferred to keepthings simple and have taken a moreconsistent line.
Many trademark challenges are specific tothe pharmaceutical industry. Issues includewhether clinical trials can be consideredtrademark use in Canada – a prerequisite totrademark registration – and the limitedextent to which pharmaceuticaltrademarks can be used in advertising.
As with all EU member states, Denmarktightly regulates the use ofpharmaceutical trademarks. This analysisexamines how Denmark has aligneditself with the EU model.
A drug marketing authorization can begranted only if the name applied forvaries by at least three letters frompreviously registered names. However,this rule is now being challenged
News
David Kappos has beenconfirmed as the new directorof the US Patent and TrademarkOffice
A number of rulings from acrossEurope indicate that courts aretaking a hardline approach tonon-traditional signs and shapemarks in particular.
The EU Customs Regulation(1383/2003) is coming underincreased scrutiny from brandowners. Some are suggestingthat its wording is unclear andprevents Customs and thecourts from taking necessaryaction
The Russian Patent andTrademark Office has issuedguidelines to clarify thecircumstances in which a partymay file a request for therevocation of a trademark onthe grounds of non-use
Columns
The rapid pace of development in the worldof Web 2.0, and social media sites inparticular, could be seen as a benefit tobrand owners, but it has also raised newconcerns regarding trademark infringement
While it can be expensive to acquire,maintain and enforce trademark rights inthe United States, it is crucial to bear inmind that some of the costs associatedwith trademark management may besubject to significant tax deductions
UK Customs no longer accepts witnessstatements from mark owners as the basisto dispose of counterfeit goods seized atthe border. This will translate intosignificant cost increases for brand owners
