A brief wrap-up of recent decisions relating to trade
marks in the pharma space from the EU, the United States and
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
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)
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
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
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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