AIPPI Congress Report 4: Trade mark sessions come in all shapes and sizes

The AmeriKat's view from the terrace
of the Copacabana Palace
last Monday night

9:00AM, last Tuesday.  This may have seemed like an early start after a night (and early morning) of caipirinhas at the Copacabana Palace where AIPPI's Cultural Evening was held.  For those who had called it a night a little earlier though, like the AmeriKat's wise colleague Tom Brazier (Allen & Overy LLP), the first Tuesday morning session of the AIPPI World Congress 2015 in Rio contained a hearty four-course menu of trade mark debate and dialogue.  Over to Tom for his report on AIPPI's Trade Mark Tuesday: 

“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.

Jacques Labrunie

Recognising this issue, Jacques Labrunie (Gusmão & Labrunie), moderator for the session, asked his fellow panellists whether a company could commercialise a drug using a trade mark approved by the regulatory body but refused by the trade mark registry. The panellists confirmed that this was possible but with reservations. Commercialisation of a product in this way would expose the company to risks and limitations in the use of the name of its product. For example, in the US and Canada, the company could rely on its common law trade mark rights acquired through prior use of the mark. However, the scope of those rights would be defined by the nature of that prior use and could be more limited (in terms of geographical scope and/or range of goods for which the name could be used) than a registered trade mark. In addition, the reason for the rejection of the application at the trade mark registry might lead further down the line to a trade mark action against the company.

“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. 

Sandra Leis

Sandra Leis (Dannemann Siemsen) began the session by comparing the features of the CM and GI regimes. This comparison included aspects such as registration (required for CMs vs may be required for GIs), connection to a geographical area (not necessarily connected for CMs vs connected for GIs), length of protection (10-year term protection/renewal for CMs vs no term, no renewal for GIs) and whether CMs and GIs are subject to cancellation due to non-use (yes for CMs vs no for GIs, unless compliance with GI requirements have changed).

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

The session was rounded off by Patrick Kole (Idaho Potato Commission). Patrick, assisted by a video of Idaho’s landscapes and Idaho Potato Commission branded golf kit, spoke of the need for an effective enforcement plan to protect the US$400million invested in the promotion of the Idaho brand over the last 75 years.

“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
Jehoram

‎On the EU side, Tobias Cohen Jehoram (De Brauw Blackstone Westbroek) recapped on the relevant legislation (Article 3(2) TMD and Article 52(1)(b) Community Trade Mark Regulation (CTMR) as well as some key CJEU cases on bad faith registrations. Tobias covered the CJEU case of Lindt & Sprüngli/ Hauswirth (C-529/07) (chocolate bunnies) pointing to the CJEU’s analysis of three factors for determining whether an applicant was acting in bad faith at the time of the application: the applicant’s knowledge of the use of an identical or confusingly similar sign; the applicant’s intention to prevent that third party from continuing to use a sign he had been using; and the degree of legal protection enjoyed by both the applicant’s and third party’s signs. Tobias also covered the CJEU case of Malaysia Dairy (C-320/12) (Yakult bottles) highlighting the Court’s judgment on the interpretation of the concept of bad faith in the EU and further analysis of the applicant’s knowledge in bad faith cases. 

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.

Elena Molina

The AmeriKat's good friend Elena Molina (Intangibles) provided the EU perspective. Elena spoke of the huge potential of non-traditional marks given their ability to transcend language and cultural barriers and the importance of sensory branding. Despite this, Elena noted that only 0.53% of the total number of registered CTMs were non-traditional marks, with 3D marks forming the vast majority of this small percentage. In the second part of her presentation, Elena covered EU cases concerning various types of non-traditional marks including olfactory (Sieckmann C-273/00), 3D (Philips C-299/99 and Lego C-48/09), sound (Shield Mark C-283/01) and colour marks (Libertel C-104/01 and Heidelberger C-49/02). Finally, Elena considered the potential effect of the upcoming reform of the CTM system on non-traditional marks. The final compromise text (8 June 2015) of the Proposal for a Regulation amending the CTMR provides that an EU trade mark may consist of “any signs…being represented on the Register of European Union trade marks…in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. Elena suggested that the proposal text was a more flexible requirement than the current “signs capable of being represented graphically” requirement under Article 4 CTMR. For non-traditional marks, Elena concluded, the future looks promising.