|The AmeriKat's view from the terrace|
of the Copacabana Palace
last Monday night
“Don’t miss the (right) mark”
In the first session of the day, the panel addressed issues surrounding registrability and regulatory matters affecting the approval and enforcement of pharma trade marks in Brazil, the US, Canada and the Philippines.
The pharma trade mark frameworks in these jurisdictions share an important common feature - the need for registration with two separate bodies. The first body being the trade mark registry and the second being the regulatory body. The justification for the additional regulation of these marks is clear - errors caused by confusion between new and old drug names can have very serious consequences. At the same time though, the criteria for registration or approval from the two bodies differ significantly in each jurisdiction. Take the US system as an example. A pharma mark will need to be both registered at the USPTO under US trade mark law and approved by the FDA, the latter process involving aspects such as phonetic and orthographic computer analysis (known as “POCA” - a lookalike/soundalike analysis) and a “scripting” review (which looks at what a mark may look like when handwritten). With two bodies working independently and to different rules, the double registration mechanism can result in approval or registration from one without the same (or even input) being forthcoming from the other.
“Collective Marks and GIs”
The topic for the second session of the morning was collective marks (CMs) and geographical indications (GIs). The use of CMs and GIs varies significantly across the globe. The US registers GIs as certification marks and permits registration of CMs. The EU has separate regulations for CMs and GIs as well as a sui generis system for agricultural products, wines and spirits. Brazil holds separate regulations for CMs and GIs and classifies GIs into Indications of Source (IS) and Appellations of Origin (AO). Across South America more generally, each country has adopted its own combination of ISs, AOs and/or GIs.
Volker Schoene (Loschelder Rechtsanwälte) followed this with a comparison of the enforcement measures available under the two regimes. Among the key differences, the CM regime does not provide for controls by public authorities and only allows for private law enforcement. The GI regime on the other hand does offer public authority controls as well as permitting both public and private law enforcement. The CM regime stipulates that only members must comply with regulations of use, whereas the GI regime extends the obligation to comply with the relevant specification to members and non-members.
|If you asked nicely, like Tom did, |
Patrick would give you
an Idaho Potato plush
“Keeping the faith – dealing with bad faith registrations”
Companies regularly face registration and/or use of their trade marks by third parties in jurisdictions where the company does not have a relevant prior registration. Most of the time, as Mariangela Sampaio (Unilever Brasil) pointed out, these registrations are done with the express intention of selling them back to the foreign company at an inflated price. In many jurisdictions, it is possible to oppose the use and/or registration if bad faith can be proved. In the first afternoon session, the panel guided the audience through the law for doing so in Brazil, the EU and the US, each time covering a range of cases.
|Tobias Cohen |
To conclude the session, moderator Sergio Barragan of Pepsico, Inc. asked the panellists what recommendations they would give to their clients to combat the issue of bad faith registrations. Suggestions included advising clients to keep a close eye on future plans for territorial expansion of their business; to monitor in particular risk areas such as China where challenging bad faith registrations can be more problematic; to gather and catalogue evidence of use of their trade marks where registered; to investigate what, if any, other trade marks companies suspected of bad faith registrations have applied for; and to make provision in contracts with business partners restraining those partners, following a breakdown of the relationship, from registering trade marks which might hinder future business plans.
“Non-traditional marks: sounds like a mark, smells like a mark…”
The final session of the day was on the topic of non-traditional marks. The panellists (hailing from Japan, the US and Spain) presented the law in their respective jurisdictions of non-traditional trade marks including colour, sound, scent, texture, hologram, moving image and 3D shape marks as well as elements applied to trade dress.