A brief wrap-up of recent decisions relating to trade marks in the pharma space from the EU, the United States and Australia.

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If you would like a copy of the presentation given in Hamburg, please contact the author.

At the recent Pharmaceutical Trade Marks Group conference in Hamburg I was invited to provide a global case law round-up, taking in important decisions relating to trade marks in the pharma space from the EU, the United States and Australia.

  • There was an enormous amount of material to get through, but the main topics related to formalities (and particularly cases since IP Translator and OHIM’s President’s Communication 2/2012, such as the General Court’s decision in Present-Service Ullrich GmbH & Co. KG v OHIM (31 January 2013)), absolute grounds, relative grounds and non-use.
  • The absolute grounds cases from the General Court were largely predictable in rejecting neologisms that did not amount to more than the mere sum of their parts (eg. BIODERMA (Case T-427/11 Laboratoire Bioderma v OHIM (21 February 2013)) and MEDIGYM (Case T-33/12, Piotrowski v OHIM (10 February 2013)). An interesting contrast was also drawn between the willingness of the US TTAB to recognize the pre-disposition of consumers to recognizing shapes as indicators of source (In re The Procter & Gamble Company, 105 U.S.P.Q.2d 1119 (TTAB 2012) [precedential] (16 November 2012)), as against the approach taken by the European courts.
  • From Australia, developments in relation to the examination of marks containing INN stems were discussed (the most recent decision being (Boehringer Ingelheim Vetmedica GmbH [2013] ATMO 8, 31 January 2013)), as was the first Federal Court authority on the bad faith ground of opposition (Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 (13 February 2012)).
  • The relative grounds cases highlighted the difficulties that the General Court has in dealing with complex marks containing descriptive words. The Olive Line decision (Case T-273/10 Olive Line International SL v OHIM (22 May 2012)) was particularly telling in this regard, and was contrasted with the recent decision of Arnold J of the UK High Court in Starbucks (HK) Ltd & Ors v British Sky Broadcasting Group Plc & Ors [2012] EWHC 3074 (Ch) (2 November 2012), in which Arnold J made the memorable comment (relating to a CTM registration for the mark NOW in a device format) that trade mark registrations should be wary of “registering descriptive marks under the cover of a figurative figleaf of distinctiveness, and refuse registration of such marks in the first place".
  • An interesting decision from the US TTAB in which two colour marks were compared was also discussed (In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377 (TTAB 2012) [precedential].).
  • In terms of cases comparing goods, the recent decision in Case T-504/11 Paul Hartmann AG v OHIM (4 February 2013), which rejected an argument as to whether various incontinence items in class 5 were similar to underwear in class 25, was contrasted with the earlier (and far more favourable to the opponent) decision in Case T-48/06 Astex Therapeutics v OHIM (10 September 2008), where insecticides for killing dust mites and pharmaceuticals were held to be (lowly) similar due to their being complementary.
  • The two non-use cases discussed were Australian decisions, relating to partial restrictions under Australian law (Murray Goulburn Co-Operative Co Limited v Castle Co Pty Ltd (AUTMO, 15 January 2013)), and the general discretion not to remove a registration, even absent use during the relevant period (UCP Gen Pharma AG v Mesoblast, Inc [2012] FCA 210 (15 March 2012)).