Kochanski.pl

Pharmaceutical
Trade Marks Group
Oct 2011
Editorial: on peace of mind .
and more tales are being told where the converse is now true. Therefore, one should certainly not abuse their intake but when appropriate and where use is targeted correctly, there is no price for that peace of mind where, after a couple of days' treatment, one's child is back on his or her feet again. Indeed, it almost seems obscene for those of us in the developed world to take the moral high ground that it is better for their immune trip to the local GP later that afternoon, system to cope on its own compared to those parents who anguished only two generations previously and those who in less with a snoring, very hot six-year-old on my knees, a 15-minute fortunate situations still face that anguish today.
consultation and a prescription for antibiotics was all it took(plus a quick trip to the chemist in the village) to settle the Meanwhile of course, vast amounts of ‘getting well again’ television have been consumed and zombie status has set in, butthat is another story! The following day it struck me how different that scenario wouldhave been only 60 years ago. Back then, parents did not have This Autumn e-edition of LL&P is a shortened one but I trust that the inner certitude that the doctor would diagnose, prescribe you will enjoy reading it all the same and look forward to seeing and cure their child with a miracle medicine that we enjoy today.
many of you in Prague in less than a month for another excellent Of course, everyone now knows that ‘antibiotics are not automatic’. In the early years of wide commercialisation in thewestern world, new antibiotics were developed faster than the bacteria could develop resistance to them. Unfortunately, more Members News
New members
Bassam Ibrahim of Buchanan Ingersoll &
Paola Ruggiero has left Studio Legale Bird
& Bird to join Barzano & Zanardo Milano Florence Tordoir of Nederlandsch
S.p.A. in Milan, Italy. Her new e-mail address John Breen of InterbrandHealth, New
York, NY, USA(John.breen@interbrandhealth.com) Lovisa Jonsdottir has left Arnason Faktor
Ivana Toningerova of Korejzova & Co.,
Kivanc Ok of Grup Ofis Patents &
Reykjavik, Iceland. She can be contacted at Vikrant Rana of S.S. Rana & Co., New
Espen Clausen has left Tandbergs and has
Jo-Ann See of Amica Law LLC, Singapore,
Emily Ellis of Ellis Terry, Wellington, New
Dana Bentata of Bentata Abogados,
Rajita Sharma has left Edwards Angell
Caracas, Venezuela (dbentata@bentata.com) Tuba Tuncer of C&T Intellectual Property
Palmer & Dodge to join Stephens Innocent Trademark Patent Consultancy and FT Ltd., Theodore Davis Jr. and Olivia Baratta
both of Kilpatrick Townsend & Stockton Myrtha Hurtado Rivas of Novartis
Ulrika Carlsson of Groth & Co.,
Moves and mergers
James Thomas has left Troutman Sanders
Tillingbourne House, 115 Gregories Road,Beaconsfield, Bucks, HP9 1HZ Firas Qumsieh of NJQ Associates,
Trademark and Copyright Legal Services, in Lesley Edwards
contact address is james@thomaslegal.pro. Kirsten Peter of IPAN Intellectual
Michael Hawkins has left Hogan Lovells
and has joined Noerr Alicante IP, SL in
International Update
Bahrain: law on protection of
trade names
Zeina Salameh and Joanna Matar, Saba & International Corp. In support of its case registered 'HILLTONE HOTEL and logo' as a objecting to use of the name HILLTONE for application for rectification/cancellation of Hilltone's registration no. 396750, which there is a substantial risk of diversion on opposed Hilltone's application under No.
496536 when it was published in 1992.
France: Trade Marks vs Generics:
Act II
filed by Hilton is pending. In response to to any Arab consulate will be accepted.
Jean-Philippe Bresson and Franck Soutoul, This means that simply signed powers will trademark, patent and design applications.
European Union: New Customs
regulation
since 1948, but was not able to establish was neither bad faith in adoption nor any issued a restraining order against Hilton Council, with the aim of producing a final already been blocked by the FrenchConstitutional Council in 2009 because Macedonia: changes to law on
civil procedure
reported in LL&P December 2009).
affect intellectual property right owners a sufficient link with the law in question. information that the plaintiff must provide preserved for the time being. But we fear that such a provision in favour of generics India: Supreme Court allows use
of
HILLTONE mark for hotel
hill station in Indian Rajasthan state) run continued on the next page
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bearing the false trade description whilst publish an official list of expert witnesses offence for any person who applies a false There is a change in the legal remedies as trade description to any goods subject to rights relating to a registered trade mark, Ukraine: Customs security for
limitations for filing an appeal before the processing counterfeit goods
reduced
Malaysia: The Trade Descriptions
Act 2011
intellectual property rights, issued by the security deposited by the right holders to relevant where the infringing mark is not identical with the registered trade mark.
piece of legislation as it provides for the The penalties for a false trade description Poland/Hungary: implications of unsuccessful
merger of Polpharma & Gedeon Richter
Kardina Marciniszyn, Kochanski, Warsaw
disorders in the United States and in 2012 company, or at least not as lucrative as at US$ 40 million. It is worth noting that the greater compensation than that granted in Genefar controlling almost 100% of shares transaction. Hence, it can not be excluded particularly and actively involved in the Eastern markets, including Russia, Ukraine Arbitration, despite having declared that Polpharma withdrew from the transaction.
The prevailing opinion is that the Polish with around a hundred years of tradition, Nevertheless, it seems that the chances of successfully challenging the said judgement plans to acquire US$1 billion worth of the 3
Consumerising wellness: where consumer
products meet science
Lisa Ritchie, Managing Associate, Simmons & Simmons LLP, London
which are medical and scientific, must be ‘We have to move from illness to wellness. Businesses will
have to invest in wellness. There is no choice. It's not
philanthropy. It's enlightened self-interest.’
Shrinivas N. Shanbhag, Medical Adviser, Reliance Industries, India supplement can ‘banish stiff, aching jointsin a week’ and a claim that a milk Traditional models of business in the life would help ‘get the better of spots’. focus on translating science into revenue health professionals. Instead, in a world functional, there exists a ‘health space’ in products. The challenge for life sciences in preserving wellness than curing illness, category’, suggesting that the rules of exponentially growing) “personal care” health and wellness, while satisfying the sophisticated formulations, scientifically credible claims, an ageing population and 2012 Spring Conference
clinical trials and scientific evidence to and Brazil. India and the Asia-Pacific are both ‘health promotion’ and ‘disease already beginning to bite: late last year, a manufacturer to stop claiming that itsacai berry supplement had a weight loss reluctant to allow claims that probiotics withdraw health claim applications for its 2012 Spring Conference
in the health and consumer industries.
also getting in on the act, with numerous Glowelle drink in the US last year, which functional food and beauty products.
beauty and health. Indeed, late last year clear that health claims, especially those 4
E P I L E X and E - P L E X confusingly similar for
pharmaceuticals in different therapeutic fields
Bill Ladas, SJ Berwin LLP, London
In Case T-161/10, Longevity Health that excluding Tecnifar's goods from class Products, Inc v OHIM, the General Court 5 ‘is not sufficient, in itself, to exclude any ‘dietetic substances adapted for medical level of similarity between the goods that EPILEX, each covering class 5 goods (albeit that Longevity excluded Tecnifar's goods).
for medical purposes’ were only of average Background
similarity to the Opponent's goods (as the indications in holding that there was only Longevity filed its CTM application for E- ‘some degree’ of similarity between the PLEX on 22 May 2006, claiming a broad list applied only to persons or animals suffering of class 5 goods and also classes 3 and 35.
from epilepsy’), and that ‘mineral food similarity as held by the Board of Appeal).
supplements, vitamin preparations’ were mark registration for EPILEX covering anti- with the Board that there was an ‘average’ epileptics in class 5. During the proceedings, degree of similarity between the marks, and addressed to different types of consumers). follows, presumably with the intention of In making its global assessment, the Board similarity between the goods – went on to removing the overlap with Tecnica's anti- considered – also taking into account the epileptics: Pharmaceutical and veterinary confusion, even where the level of attention of the relevant public is above average.
were held to be at the ‘average’ level – Conclusion
dietetic substances adapted for medical use, confusion with regard to the highly similar goods covered (i.e. ‘pharmaceutical and veterinary preparations, except medicines earlier mark will not remove the similarity to combat diseases in connection with the Despite this, the opposition was upheld by General Court
the Opposition Division except in relation to 'sanitary preparations'. The signs were found to be visually and aurally similar and particular, the Board of Appeal held that there were no conceptual differences that are highly similar, whereas it was sufficient influenced the assessment of similarity.
different take. It upheld the opposition, the restriction to its specification removed but only as against ‘pharmaceutical and veterinary preparations, except medicines to combat diseases in connection with the central nervous system’. The exclusion did referred to previous case law to the effect food supplements for medical purposes).
US Update
James Thomas, Thomas Trademarks and Copyright Legal Services, North Carolina
respect to the growing lists of goods and of further revisions to the process. In its request such additional information in all cases, but only ‘in a relatively small subset followed by a full review of the data from reviews and approvals are still spotlighted goods/services’. It is anticipated that sponsors submitted applications under the filings involving lengthy lists of goods and pilot. Therefore, it has elected simply to request additional specimens, affidavits, action and will instead continue to review new applications and section 8 and section names under only the existing process.
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PROFILE: Shlomo Cohen
Shlomo Cohen is the founder of the intellectual property
law firm Dr. Shlomo Cohen & Co., Israel. Educated in Tel-Aviv,
New York and Brussels, he was admitted to the Israel Bar in
1973 and speaks English, Hebrew and French. The 2008 Who's
Who Legal wrote ‘the number one practitioner in Israel for
trade marks legal expertise’. Shlomo has contributed to a
great number of IP related publications and has been a
Lecturer in Intellectual Property at the Hebrew University
School of Law for a number of years. He is most proud of his
three sons, the setting up of the Israel Bar Pro Bono
programme and founding, along with others, the leading Israeli
Human Rights Watch Organization.
Where were you brought up and
What's the best thing about
Which music recording would
educated?
your job?
you take with you to a desert
island?
What is your favourite work of
art?
What is your all-time favourite
film?
How did you become involved
in trade marks?
What is the soundtrack to your
life?
Which one person would you
invite to dinner (other than a
family member or relative)?
Who was your mentor or role
What would you have done if
model?
you hadn't become involved in
What is your most treasured
intellectual property?
possession?
Which three words would you
Which piece of advice would
use to describe yourself?
you give a visitor to the area in
which you live?
Which book or books are you
Complete the following
currently reading?
sentence. ‘I wish .’
Les Bienveillantes by Irene Nemirovsky, What is your favourite building
/ piece of architecture and why?
wonderful, imaginative combination ofold and new.
What do you do at weekends?
What is your favourite
Reading, movies, friends and family.
children's book?
What do you like, even though
The Little Prince by Antoine de Saint it's not fashionable?
Complete the sentence: “I'm no
good at .”
Small talk.
2011 The Pharmaceutical Trade Marks Group Circulated for information only to PTMG Members. The Group takes no responsibility for the contents Tel.: +33 679 316 860 email: vparkercordier@wanadoo.fr 6

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