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  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)  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  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  FCA 210 (15 March 2012)).