editorial: things can only get better · closing down all tourist attractions and major shopping...

A federal court decision in New Jerseyunderscores some of the difficulties andfrustrations brand owners face incombating unauthorized internetpharmaceutical sales. In a suit brought byCelgene Corporation against DistinctPharma of Mumbai, India, (Celgene Corp. vDistinct Pharma, 2018 WL4251848 (D.N.J.6 September, 2018)), the court refused toenter a default judgment in Celgene'sfavour, because it was not clear if Distincthad been properly served with thecomplaint and summons in accordancewith US constitutional due processrequirements. The dispute involved theallegedly unauthorized use of Celgene'sREVLIMID trade mark in connection withunapproved internet sales to UScustomers of lenalidomide, the activeingredient of Celgene's REVLIMID cancertreatment drug. To protect its REVLIMIDmark and to address potential health andsafety issues, Celgene sued Distinct fortrade mark infringement, unfaircompetition, and false designation of originunder the Lanham Act, as well as for a

violation of a relevant New Jersey statute.

The Hague Convention governed serviceof the complaint and summons in thiscase, as Celgene knew of Distinct'saddress and India and the US were bothcontracting parties to the Convention.Celgene had properly sent the complaintto the Indian Central Authority (the officecharged with making service), but hadheard nothing from the Central Authorityfor over a year despite sending twowritten follow-up requests in the interim.The court examined the HagueConvention provisions that allow for agrant of default judgment even wherethere was no proof of actual service.(Article 15).

Despite finding that Celgene had metthese Hague Convention requirements,the court determined that Celgene hadfailed to establish that the efforts atservice in India also had met USconstitutional due process dictates. Thatis, the court ruled that meeting HagueConvention requirements was not enough

for Celgene to establish proper service ofprocess necessary for the entry of adefault judgment. The court noted thatthis 'is a frustrating situation, to be sure'for Celgene, and did not explain whatCelgene could do to meet theconstitutional test in the wake of over ayear of silence from the Indian CentralAuthority.

As luck would have it, after the courtdecision, Celgene finally received a replyand proof of service from the IndianCentral Authority. With this evidence inhand, and no word from Distinct, lastmonth it renewed its motion for defaultjudgment, which is now pending beforethe court.

Despite Celgene's eventual receipt ofproof of service, this case demonstratesthat pharma companies suing foreign-based companies in the US must beprepared in some cases for significantdelays – and the problem is not limited toIndia. See Subotich v Travelers

At the time of writing, the old continentappears to be descending into chaos.France has just survived its fourthSaturday of social unrest and strugglesto come to terms with the impact ofclosing down all tourist attractions andmajor shopping arteries in the capital,thus reversing the positive economictrend that had slowly begun after theterrorist attacks of 2015. Britain awaits

with baited breath the parliamentary vote on Tuesday, with littleor no idea what the political landscape will look like onWednesday. Falling off the cliff-edge is starting to feel like a viablealternative to the stock piling of medicines, vaccines and essentialfoodstuffs which the port authorities are now advocating.

In Greek mythology, Chaos or Khaos is the primeval state ofexistence from which the first gods appeared. In other words, thedark void of space. It is made from a mixture of what the AncientGreeks considered the four elements: earth, air, water and fire.Eris was the Greek goddess of chaos, strife and discord; her

Roman name was Discordia. My teenage son uses an on-line chatservice for gamers known as Discord to communicate with hispeer group, thereby underscoring my current feeling that theworld is slowly descending into an incontrolled state! Or asEddie Izzard, the UK stand up comedian once said in anAustralian accent ‘Armeggedon, short for Ahm a geddin' out ofhere’.

One wishes one could actually ‘get out of here’, if only for a shortwhile but the omnipresent global media of all forms renders suchaspirations mere pipe dreams. Short of living in a vacuum, itself adark void of space, one must navigate a personal path throughthe chaos to maintain sanity. Thankfully, PTMG continues to offerstability for the year ahead – our Spring and Autumn conferenceswill take place in Rome and Berlin whatever and your Committeewill work hard to ensure the continuing high standards ofspeakers and content that has earned our conferences' their welldeserved reputation. It remains for me, on behalf of theCommittee, to wish you all a happy holiday season and a healthy2019.

Vanessa

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PharmaceuticalTrade Marks GroupPharmaceuticalTrade Marks Group Sept 2017

Editorial: Things can only get better...

US Update by Jonathan S. Jennings Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP

Dec 2018

continued on page 3

New Members

We are delighted to welcome the following new members to the Group:

Dominic Murphy from HGF,Birmingham, UK [email protected]

Kristof Neefs from Inteo, Mechelen,Belgium [email protected]

Rodrigo Marre from MacKenna,Irarrazaval, Cuchacovich & Paz, Santiago,Chile [email protected]

Gifty Gakpetor from IPTogetherLimited, London, [email protected]

Anna Gołębiowska from GołębiowskaKrawczyk Roszkowski & Partners,Warsaw, Poland [email protected]

Suzanne Power from AA Thornton &Co., London, UK [email protected]

Natalia Gulyaeva from Hogan LovellsCIS, Moscow, [email protected]

Carine Bourguignon from IntellectualProperty Avenue Sàrl, Geneva,Switzerland [email protected]

Christina Tenbrock from Hoyng RokhMonegier, Düsseldorf, Germany [email protected]

Julia [email protected] and VitalyShishaev [email protected] bothfrom Gorodissky & Partners, Moscow,Russia

Shadya Ahmed Awad from SMAS IP,Amman, Jordan [email protected]

Inés Cantero Clivillé from ABGIntellectual Property, Madrid, Spain [email protected]

Bidyut Bikash [email protected] and VidhiSingh [email protected] bothfrom Archer & Angel, New Delhi, India

Tomislav Pejcinovic from CPZ – Centarza Patente d.o.o., Zagreb, Croatia [email protected]

Jose Eduardo T. Genilo from ACCRALaw Offices, Taguig, Philippines [email protected]

Dajian Wu from Yuhong IntellectualProperty Law Firm, Beijing, [email protected]

Jens Jakob Bugge from Horten, Hellerup,Denmark [email protected]

Richard Stilwell from Lysaght, St. Helier,Jersey [email protected]

YungJoon Kwon from Kwon & KimPatent & Trademark Attorneys, Seoul,South Korea [email protected]

Malena Lofte from Groth & Co. KB,Stockholm, [email protected]

Ana Pekevska-Vasileva from Karanovic &Nikolic, Skopje, Macedonia [email protected]

Bibiana Agudelo from OlarteMoure,Bogota, [email protected]

Roberto Valenti from DLA Piper StudioLegale Tributario Associato, Milan, [email protected]

Vladimir Bud from Darts-ip, Brussels,Belgium [email protected]

Chinweizu Ogban from Jackson Etti andEdu, Victoria Island, Nigeria [email protected]

Anisa Tomic from Maric & Co. LLC LawFirm, Sarajevo, Bosnia and [email protected]

Ivana Šarlija from Zivko Mijatovic &Partners, Zagreb, Croatia [email protected]

Pierre-Emmanuel Meynard from CabinetLavoix, Paris, [email protected]

Pericles Casuela from Betita CabilaoCasuela Sarmiento, Muntinlupa,Philippines [email protected]

Željko Topić from the European PatentOffice, Munich, Germany [email protected]

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Words from the Chair

To Brexit or not to Brexit, thatis the question: Currently, the EUand the British Governmentdesperately try to reach acontractual deal on the conditionsof the Brexit. It seems thatBrexiteers have by farunderestimated the complexity ofthis exercise. Last week we heardthat there is a deal, but now itseems rather unlikely that thecurrent British Government willget the necessary support for thedeal in the House of Commons.The risks of a hard Brexit withouta deal are tremendous andfrightening. On the Europeancontinent we are watching thelatest developments in London ina state of agony and despair. Thishas been going on for far too long.Christmas is approaching and Ihave a very personal wish (thatmost likely will not be fulfilled):Let's call the whole thing off!

Another year has passed. Time tolook back and forth: In Spring wewent to beautiful Porto for ourSpring conference. What abeautiful city! And in October weenjoyed sunny Dubrovnik at ourAutumn conference. I am reallylooking forward to 2019 whichwill take us to Rome and Berlin.

I wish all PTMG members, yourfamilies and friends a MerryChristmas and a Happy New Year!

Frank Meixner

Members News

Alexandra Kusturovic from theEuropean Union Intellectuall PropertyOffice (EUIPO), Alicante, [email protected]

Robert Dorneau from Soroker AgmonNordman, Herzliya, Israel [email protected]

Batur Oktay from Starbucks CoffeeCompany, Seattle, USA [email protected]

Zuzana Cích Hečko from Allen & Overy,Bratislava, Slovakia [email protected]

Edward Taelman from Allen & Overy(Belgium) LLP, Brussels, [email protected]

Marine Le Bihan-Journe from MarchaisAssocies, Paris, France [email protected]

Vanja Nedimovic from Dennemeyer &Associates S.A., Howald, [email protected]

Irena Kurteva from Herrero &Asociados, Madrid, Spain [email protected]

Hulda Arnadottir [email protected] and MariaKristjansdottir [email protected] both fromG.H. Sigurgeirsson / LEX, Reykjavik,Iceland

Kristian Elftorp from Zacco Sweden AB,Stockholm, [email protected]

María Ángela Fernández Munarrizfrom Bird & Bird (International) LLP,Madrid, [email protected]

Victoria Sukhanova from Gowling WLG(International) Inc., Moscow, [email protected]

Emma White from Stephenson HarwoodLLP, London, [email protected]

Andrea Breier from LexDellmeier IP LawFirm, Munich, [email protected]

Sajidha Gamieldien from Adams &Adams, Pretoria, South [email protected]

Meike de Boer from Novo Nordisk,Bagsvaerd, [email protected]

Alberto Zacapa from Gustavo Zacapa yAsociados, Tegucigalpa, Honduras [email protected]

Sarah Power from William Fry, Dublin,Ireland [email protected]

Moves and Mergers

Thomas Tresper has moved toWegnerpartner, Berlin, Germany. He canbe contacted at [email protected]

Mark Kramer has left StephensonHarwood and is now with ShoosmithsLLP, London, UK. Mark can be contactedat [email protected]

Fernando Strubing Gomes has left RCFto join Ipan Group in Munich, Germany.Fernando can be contacted at [email protected]

Obituary

It is with great sadness that we report

the passing of Barbara Vogt who had

been Head of Trade Marks at

Grünenthal for 17 years before her

retirement in 2017. Barbara was very

active for many years in the Trade Mark

Committee of EFPIA and was a very

long standing member of our Group

who regularly attended our

conferences. She will be greatly missed

by her many friends at PTMG.

Please remember to let us know of anychanges to your contact details. You cannotify me either via the PTMG websitewww.ptmg.org or directly [email protected] or by writing to me atTillingbourne House, 115 GregoriesRoad, Beaconsfield, Bucks, HP9 1HZ

Lesley Edwards

US UpdateContinuedProperty Casualty Company of America,2017 WL 2912457 (E.D. Wis. 7 July, 2017)(one-year delay for service in China).Where countries, such as India, do notallow for alternative postal deliveryservice under the Hague Convention, theprospect for a delay is particularly acute.See generally, Theodore J. Folkman,'International Judicial Assistance ForMassachusetts Lawyers' MCLE (2012). Therequirement to also conform withconstitutional due process in the US addsanother layer of difficulty for litigants, whomay face constitutional challenges to theadequacy of service even after it doesoccur. Grupo Famsa v Eighth Jud. Dist.Ct., 371 P.3d 1048 (Nev. 2016)(NevadaSupreme Court reversed a lower-courtdecision and ordered an evidentiaryhearing to determine whether service ofprocess on a lower-level employee of acompany based in Mexico complied withUS constitutional due process obligations,even though service had met HagueConvention requirements).

As internet-based companies from outsidethe US continue to infringe the trademark rights of pharma companies, brandowners must factor in potentiallysignificant delays in simply serving thecomplaint and summons beforeconsidering what relief might be attainable.Where the Hague Convention does notapply, there may be speedier options forservice (such as by e-mail), but there willstill be a requirement that a plaintiffestablish that service meets constitutionaldue process.

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PTMG is preparing ananniversary book for its upcoming 100th conference.

Do you have any photographs taken atprevious PTMG conferences?

If so, please contact the Editor.

Members News continued

EUROPEAN UNION

Suzanne Power, AA Thornton & Co.

A recent decision from the EUIPO’s Boardof Appeal (the Board) confirms thatpreparations used for medical andpharmaceutical purposes can still be foundto be similar to one another, where one isavailable over the counter and the othercan only be obtained by prescription.

The Board’s decision of 26 November2018 stemmed from a successfulopposition by Takeda Pharmaceutical(Takeda) to an EU trade mark applicationfor KENZEN of Nikken International(Nikken). Takeda had opposed the mark’sregistration for goods in class 5, whichincluded nutritional supplements andweight management powders, on the basisof a likelihood of confusion with itsidentical earlier mark KENZEN, registeredin respect of cardiovascular agents in class 5.

Nikken appealed the opposition decision,on the primary basis that the earlierregistered goods targeted a differentpublic from the goods of its application. Inthis regard Nikken argued inter alia thatTakeda’s goods are aimed at 'patients', andthe consumers of its goods would not beconsidered as such; rather, they are simply'consumers wishing to improve andmaintain their overall health andwellbeing'. Nikken also argued that theconflicting goods are sold via completelydifferent trade methods, with the earliergoods available via prescription only, andits own goods distributed via networkmarketing.

The Board was unconvinced by Nikken’ssubmissions and held that the OppositionDivision was correct to find that theconflicting goods were similar, such thatthere existed a likelihood of confusion.According to the Board, the goods of bothparties are all 'chemical or biologicalcompositions […] used to enhance thefunctioning, health and wellbeing of thehuman body' and so they have a similarnature and intended purpose. Moreover,the earlier and contested goods could allbe available for purchase in pharmacies,even if the former required a doctor’sprescription. The fact that Nikken hadopted to distribute its products vianetwork marketing for the time being wasirrelevant, as it could choose to alter thisstrategy in the future.

The Board accordingly dismissed theappeal in its entirety, upheld the refusal ofNikken’s application, and made an awardof costs in favour of Takeda.

KAZAKHSTAN

PETOSEVIC

The information on all pending trade markapplications in Kazakhstan recentlybecame available on the National Instituteof Intellectual property (NIIP) website, inRussian and Kazakh languages only.

On 3 July 2018, various intellectualproperty legislation amendments cameinto force in Kazakhstan aimed atsimplifying the administrative proceduresrelated to obtaining IP rights protection.Further to the recently adopted laws, inNovember 2018 Kazakhstan adopted newregulations defining in greater detailcertain provisions related to theadministrative procedures, among otherthings allowing the NIIP to publish pendingtrade mark applications online.

The applications are published onlinewithin five working days after the formalexamination is completed. This will simplifythe monitoring of potentially infringingapplications, enabling rights holders to fileobservations and oppositions before suchapplications become registrations.

Although observations and oppositionsagainst pending trade mark applicationsare not explicitly provided for in thelegislation, we had positive experiencewith filing informal observations andoppositions with the NIIP. The NIIP paysattention to materials filed against pendingapplications and may use them when itissues its decisions. Informal observationsmust be filed before the Examiner issues adecision on the pending application, i.e.,within seven months from the trade markapplication filing date.

An appeal against the NIIP’s decision onrefusal of a trade mark application isconsidered by the Board of Appeal withinthree months from the date of the issueof the final refusal.

Apart from pending trade marks,applications for plant variety protectionare now also published on the NIIPwebsite, as well as all other registered IPrights starting from the Official GazetteNo. 37 dated 8 October 2018.

MYANMAR

Denise Mirandah, miranda asia

Whilst the long awaited landmark changesto IP laws in Myanmar are yet to befinalised, the Deed Registration Law 2018has been enacted by the Union Parliamentof Myanmar. The salient features under thislaw are enumerated herein below:

l The language of the documents filed must be in the Myanmar Language.

l Documents filed in a foreign language must be accompanied by a translation which must be notarised in Myanmar together with the requisite certificationfrom a Myanmar Notary Public.

l The trade mark application must be accompanied by a Declaration stating that the Applicant is the creator of the trade mark and that the trade mark in question does not copy in part or in itsentirety, a trade mark owned by a thirdparty. In addition, the Declaration mustalso state that the Applicant is unaware of use of the said trade mark by any other entity or entities in respect of any goods or services.

l The trade mark being applied for registration must be used on the goods/services that the Applicant is currently offering to consumers.

However, it remains to be seen if this newlaw will be enforced exactly in the mannerenacted by the Registry.

In February 2018, the Upper House of theMyanmar Parliament passed the TradeMark Bill but the Bill is now pendingbefore the Lower House. There appear tobe indications that the Bill may beapproved in 2019. Once approved,Myanmar’s trade mark laws will conformto a greater degree with internationalstandards and will offer a broader scopeof protection to IP owners.

RUSSIA

PETOSEVIC

Russia has recently amended its customslegislation. The new Federal Law 'Oncustoms regulations in the RussianFederation' was adopted on 3 August2018 and entered into force on 4September 2018. While certain transitionalprovisions will not enter into force untilDecember 2018 and February 2019, thoserelated to the protection of intellectualproperty rights are already in effect.

The main novelty concerns the maximumcustoms watch protection period, whichhas been extended from two to threeyears. Rights holders can now choosebetween a one-, two- or three-yearprotection term when filing or renewingcustoms watch applications. As before, thecustoms watch may be renewed for anindefinite number of times.

International Update

4

SERBIA

PETOSEVIC

On 12 July 2018, the Serbian SupremeCourt of Cassation issued a decisionconfirming that parallel imports constitutetrade mark infringement, revoking the firstand second instance decisions of theCommercial Court and the CommercialAppellate Court. This ruling is significantbecause even though parallel imports havebeen prohibited since amendments to theSerbian trade mark law entered into forcein 2013, court decisions against parallelimporters have been very rare andinconclusive.

PETOŠEVIĆ Serbia represented the rightsholder, a well-known Swiss fashion label, incourt proceedings against a Serbiancompany that was distributing apparelitems bearing the plaintiff ’s trade markswithout the plaintiff ’s consent. First, therequest for securing evidence was filedwith the Commercial Court in Belgrade,and after securing evidence, an attemptwas made to settle the matter out ofcourt. The defendant refused to complywith the plaintiff ’s demands and a lawsuitwas filed with the Commercial Court. Thecourt held that the evidence provided wasinconclusive and ruled in favor of thedefendant on 28 January 2016. TheCommercial Appellate Court confirmedthe first instance decision on 10 October2017. However, the Supreme Courteventually overturned lower courtdecisions ruling that the evidence wassufficient to prove parallel import.

While lower courts in Serbia are notobliged to follow the opinions anddecisions of higher courts, in practice theyrarely rule contrary to higher courtsstance. To our knowledge, this is the firsttime that a parallel import case reachedthe Supreme Court of Cassation and theruling is significant because it will allowrights holders to invoke it in their struggleagainst this type of trade markinfringement.

SINGAPORE

Denise Mirandah and Aditi PranavDesai, miranda asia

A geographical indication (GI) can beunderstood to be a sign which, whenapplied to products, corresponds to aparticular geographical origin attributingcertain essential and peculiar qualities orreputation to such products. In essence, aGI performs the function of being anindicator of certain characteristics orreputation or certifying adherence totraditional/distinctive methods of

production of such goods. On account ofsuch geographical origins andcorresponding history, products bearing aGI enjoy special reputation.

Singapore is presently augmenting thescope of protection afforded to GIs, inparticular to comply with its obligationsunder the recently signed EuropeanUnion-Singapore Free Trade Agreement(EUSFTA). Upon ratification of theEUSFTA by Singapore, The GeographicalIndications Act 2014 (GI Act 2014) passedby the Parliament of Singapore on 14 April2014, will come into force.

Applications for the registration of GIs inrelation to certain categories of wines,spirits and selected categories ofagricultural products and foodstuffs, whichoriginate from and have obtainedprotection as a GI in countries andterritories that are party to the WorldTrade Organisation or the ParisConvention, will be permitted to be filedby GI products’ producers, associationsaffiliated with such producers and therelevant authorities that govern GIproducers.

An important feature of the Act includesthe establishment of the new Registry ofGeographical Indications (GI Registry)which will regulate GI applications andregistrations in Singapore.

The Act and the proposed GI Rules willadminister the Registry’s operationalaspects with respect to GIs. They areanalogous to the Trade Marks Rules inSingapore and bear structural similarity toit. In fact, a public consultation on theproposed rules has also been conductedby the Intellectual Property Office ofSingapore.

Once an application for the registration ofa GI has been filed, it will first beexamined to ensure compliance withformalities and criteria for registration.Pursuant to the substantive examination,the application will be published forpotential third party oppositions.

Key provisions of the proposed GI Rulesinclude:

(a) Preliminary general provisions;

(b) Registration of a GI;

(c) Qualification of rights;

(d) Setting up and maintenance of aRegister for GIs;

(e) Renewal of registration of GIs;

(f) Cancellation of GIs;

(g) Evidence and procedure and costs; and

(h) Extension of time and continuedprocessing.

Once registered, a GI would enjoy a 10year protection which is renewable every10 years upon the payment of therequisite renewal fees. The proposed Actand Rules also provide for the cancellationof GIs in line with the trade mark law andgrounds of cancellation must be specifiedby the party requesting the cancellation.

Registered GI owners can also placereliance on additional protection affordedby enhanced border enforcementmeasures, pursuant to the proposed Actand Rules. Registered GI owners wouldthen enjoy a higher degree of protectionagainst third party infringers engaging inunauthorised exploitation of their GIrights. This will further enhanceSingapore’s position as a country at theforefront of protecting IP rights.

UKRAINE

PETOSEVIC

On 1 August 2018, the Ukrainian IPOstarted publishing information on pendingtrade mark applications in its onlinedatabase immediately after sending aconfirmation of the trade mark applicationfiling date to the applicant.

The information on pending applications isnow published online within two monthsfrom the moment a trade markapplication is filed. Until recently, the IPOdid not publish the information until atleast six months after the filing.

Trade mark owners are now able tomonitor new applications soon after theyare filed, ensuring timely enforcement oftheir prior rights.

UZBEKISTAN

PETOSEVIC

Uzbekistan’s president signed a decree on22 June 2018 abolishing the requirementto examine the safety, quality andeffectiveness of medicines authorized incountries with high regulatoryrequirements. Previously, no medicinesregistered abroad were eligible formarketing authorizations under thesimplified procedure in Uzbekistan.

The 20 countries, determined by anotherpresidential decree dated 24 September2018, are the following:

Australia;

Belgium;

UK;

Germany;

Denmark;

Israel;

International Update

5

Ireland;Spain;Italy;Canada;South Korea;Netherlands;Norway;Slovenia;USA;Finland;France;Switzerland;Sweden; andJapan.

Uzbekistan will also apply the simplifiedprocedure to medicines registered by theEuropean Medicines Agency (EMA), an EUagency for the evaluation of medicinalproducts.

The simplified procedure was establishedby the Resolution of the Cabinet ofMinisters No. 862, dated 24 October2018. The competent authority is the StateCenter for Expertise and Standardizationof Medicines, Medical Devices and MedicalEquipment under the Ministry of Health.

The following are eligible for acceleratedapproval:

• medicines authorized in one of the countries with high regulatory requirements;

• new combinations of medicines already authorized in Uzbekistan; and

• medicines already authorized in Uzbekistan but produced in new forms,dosages or packages, with a different label or by other manufacturers.

Under the simplified procedure, once theapplicant submits the required documentsand pays the EUR €1,082 (USD $1,237)application fee, the State Center has 15working days to reach the decision ongranting a marketing authorization andone working day to notify the applicant.Approved medicines are recorded into theState Register of Medicines, MedicalDevices and Medical Equipment and areinitially valid for a period of five years.After this period, the holder can apply forrenewal and after the renewal, themarketing authorization will remain validfor an unlimited period.

An application may be refused if itcontains incomplete or invalidinformation, but applicants can re-applywithin 15 working days upon receipt of anotification of refusal.

The authorization can be terminated if:

• the medicinal product is banned in Uzbekistan or in the country where it was originally authorized;

• the medication causes serious side effects not specified in the instructions for use; or

• the applicant requests termination.

UNITED KINGDOM

Chris McLeod & Luke Ingleton,Elkington + Fife LLP

The United Kingdom Intellectual PropertyOffice (UK IPO) has rejected anapplication to register LECIPHOL in class5 on the basis of an opposition filed byprobiotic supplement manufacturer,Probiotics International Limited (PIL).

Background

In October 2017, Conella (Holdings)Limited (Conella), filed a UK application toregister LECIPHOL in relation to foodsupplements, dietetic preparations,vitamins and minerals in class 5. Onpublication, PIL opposed the applicationon the basis of its registered andunregistered rights in the mark LEPICOL.

PIL argued that there was a likelihood ofconfusion between its registered LEPICOLmarks and the LECIPHOL mark. PIL alsoasserted that it had a reputation in itsLEPICOL marks and that it had use-basedrights in the LEPICOL marks.

Conella filed a counterstatement denyingall of the grounds of opposition.

Decision

The UK IPO’s Hearing Officer (HO) firstconsidered the registered marks. AsConella had admitted in its writtensubmissions that the goods covered by itsapplication were identical or similar to theclass 5 goods covered by PIL’s earlierLEPICOL marks, the HO turned to acomparison of the marks.

As LEPICOL and LECIPHOL start withthe letters LE, end in the letters OL andas all of the letters in the earlier LEPICOLmarks are present in LECIPHOL, the HOfound that there was a high degree ofvisual similarity between the LEPICOLword mark and LECIPHOL and a mediumdegree of visual similarity between theLEPICOL figurative mark and LECIPHOL.The HO also held that there was a highdegree of aural similarity between therespective marks but that there was noconceptual similarity. Having considered allof the relevant factors, the HO concluded

that there was a likelihood of confusionbetween the marks and therefore thisground of opposition succeeded.

In support of the claimed reputation of itsregistered marks, PIL filed evidence whichestablished a reasonable reputation in itsLEPICOL marks through use in the UnitedKingdom in relation to nutritional anddietary supplements. Given the visual andaural similarity, the HO held that thepublic would make a mental link betweenthe respective marks. The HO also foundthat Conella’s use of LECIPHOL wouldtake unfair advantage of the reputationthat PIL enjoyed in its LEPICOL marks.The opposition therefore succeeded onthis ground.

The HO was also satisfied that theessential requirements of the law ofpassing off, namely goodwill in the UnitedKingdom, a misrepresentation leading todeception or a likelihood of deception anddamage resulting from themisrepresentation, were all present. Asthere was a high degree of similaritybetween the marks and they were to beused in the same sector, the HO decidedthat damage to PIL’s business throughdiversion of sales and a loss of control ofits reputation were easily foreseeable.Accordingly, the opposition alsosucceeded on this ground.

As the opposition succeeded on allgrounds, the HO found in favour of PILand ordered Conella to pay costs of GBP£1,500.

Comment

Although the UK IPO’s decision was notwholly surprising, it demonstrates thevalue of conducting a clearance searchprior to filing an application. Perhaps ifConella had been aware of the earlierLEPICOL marks, it may have chosen notto file the application or adopt analternative mark.

International Update continued

6

98th conference in Rome

Registration opensin January 2019

The Welcome Reception took place onWednesday evening and with the mildweather, attendees came together aroundthe pool of the hotel.

The Chairman's opening remarks thefollowing morning extended a warmwelcome to all new attendees andreminded delegates that we wereapproximately 400 participants from 70countries, the majority of whom hadchosen to take up the PTMG conferenceApp this time round.

The firstspeaker wasDavidLossignol,Sandoz, INTAPresident Elect.While brandvalue isgrowing global-ly, so are brandrestrictionsrising, saidDavid. Plain packaging is now becoming athreat for brand owners in many sectors.INTA’s initiatives against it, the WTO fileregarding Australian Plain Packaging Lawand a survey showing that the number ofsmokers has increased since the law wasput into force were part of David’sspeech. He questioned the approach'INNs are safer than brands' with apotential impact on patients and discussedhow restrictions in different jurisdictionsimpose upon the industry. Herecommended that the pharmaceuticalindustry be engaged to IMSN, use ISMPdata, use PhRMA, EFPIA and the Medicinesfor Europe platforms.

After David,GordanaPavlovic fromCabinetPavlovic gave athoroughpresentationcovering thewhole WesternBalkancountries

including topics such as the internationalagreements each country is a member of,trade mark prosecution systems on acountry by country basis, the situation ofwell-known marks backed with case lawand use requirements. She also talkedabout enforcement from the Courts’ andCustoms’ perspectives. Considering thegeographical location of the Balkans, goodsin transit was an important point duringher speech in addition to parallel imports.

During the coffee break, attendeesenjoyed the great weather on the terraceof the hotel. Most of the attendeesagreed that this was one of the mostbeautiful places during PTMG meetingswhere people could share a fantastic viewunder the Croatian sunshine.

The FoundersLecture wasdelivered byLori Mayallfrom Gilead.PharmaceuticalBuyers Clubsclaim that theyare the ‘RobinHoods’ of thepharmaceuticalindustry, merefacilitatorsbetweenmanufacturers and purchasers. Loriexpertly argued, with examples from herown company, that the very negativeadvertising that these Clubs use masks thedamage that they themselves are creatingin the supply chain by diverting themedicines from developing markets andreturning them to developed markets suchas the US. This pithy, well illustratedpresentation concluded with a call toaction for all pharmaceutical companiesand their representatives to get involvedin the name of patient safety.

The Chairman then made the usualpresentation to Lori Mayall and all agreedthat she had indeed fufilled the remit ofthis now regular feature at the Autumnconference.

Finally beforelunch, JohnColbourn fromWiggin LLPprovideddelegates withtheInternationalcase round-up,which as everis a muchappreciated

slot. John introduced recent case lawincluding but not limited to the EuropeanUnion, Canada, USA, Brazil and Indiaregarding absolute grounds, goods andservices, oppositions and cancellations,infringement, co-existence and exhaustion.There were some well-known cases suchas Louboutin v Van Haaren and Kit Katbut John's presentation also enabledattendees to fill the gaps in their minds asto other recent cases.

After lunch,Ruth Burstallfrom Baker &McKenziecertainly didnot allow anytime for asiesta bycomparing theBlockchainRevolution toteenage sex –everyone'stalking about it but no-one is actually surehow it works! Ruth filled us in as to whatblockchain is; how it can be applied in thepharmaceutical industry - even though theindustry is staying a bit far from it for now- why blockchain can be chosen intracking goods in the supply chain, howdoes it work and what problems thereare, how it allows us to follow upcounterfeit products - identify them andtrace the origin and finally how it mayhelp parallel import issues. She also talkedabout its impact on IP lawyers’ lives. Welearned about WIPO and EUIPO’s interestin seeking how they can possibly use it.She mentioned the negatives of blockchainand the need to regulate by pointing tosolutions that are being developed.

PTMG 97th conference report, DubrovnikPearls of Trade Mark Wisdom from the Pearl ofthe AdriaticOzlem Fütman, Ofo Ventura, Turkey and Vanessa Parker, Editor LL&P

David Lossignol

Gordana Pavlovic

Frank Meixner andLori Mayall FoundersLecture Presentation

John Colbourn

Ruth Burstall

7

The finalpresentationson Thursdayafternoon werea double-sloton INNs andINN stems asobstacles forpharmaceuticaltrade marksand bothNorbert

Hebeis from Friedrich Graf vonWestphalen & Partner and BruceLongbottom, PTMG committee memberfrom Lilly certainly spoke with knowledgeand passion onthis oftendiscussed topic.Norbertexplainedcommon pointsand differencesof INNs andINN Stemswith Pharmatrade marks.He examinedcases forabsolute grounds for refusal of pharmamarks based on INNs and INN stems andin a hypothetical case he focused on whatwould happen if we were to mix INNstems in pharma marks as stem and thenegatives of such uses. He addressed INNsfrom EUIPO guidelines by backing up withscenario cases. He concluded hispresentation by recommending not to filePharma trade marks with INN stems instem position and encouraging brandowners to file invalidity actions againstsuch marks.

Bruce examined how the NovolimusEUIPO case would be decided by thepatent offices in Canada, US, Switzerlandand India in light of case law regardingINN/INN Stem in these jurisdictions. Hetouched on the issue regarding whatHealth Authorities do to protect INNsagainst pharma trade marks. He voiced theopinion that INNs are already protectedenough and giving additional protection toINN stems increases risks and invited usto think about whether INNs cause moreconfusion or if they protect consumersfrom confusion more than the trade mark.

We then adjourned to tea and manypeople enjoyed a walk along the Cavtatbeach area before dressing for our casualevening at Banje Beach where the buffet

food, delightful setting and fun ambianceallowed us all to unwind.

Frank Meixnerwelcomed usall back intothe conferencehall on Fridaymorning andwithoutfurther ado,passed thefloor toRaffaellaBalocco fromthe World Health Organisation who beganby telling delegates that as a scientist shecame ‘as a friend’. As the Group Leader ofthe INN Program in WHO, Raffaella’sspeech gave an insight into the workings ofthis Group. She explained WHO’sstructure and with examples, providedinformation why INNs are needed, how toname and define them and how namingthem has turned out to be a morecomplex and difficult issue over time. 600nomen for biologicals so far and manyadvanced therapies still to come. Sheconcluded by reminding delegates that itwas Leonardo de Vinci who is reputed tohave said 'simplicity is the ultimatesophistication'.

Questions from two committee members,Alan Hunter and Tapio Blanc respectively,underscored the point that movingforward, the situation will only get worseand queried whether the time has notcome to clear out the INN registry? Nodoubt we shall be discussing this topicagain in a future conference but the

Chairmanmoved us ontothe next pres-entation byTina Bond ofTakeda whospoke about'Tablet identi-fiers – justanotherpharmaceuticaltrade mark?'Tina’s

presentation focused on imprints on thedrugs, why they are created from both abusiness and a legal perspective andcompared regulatory situations betweenthe US and the EU. Further, Tina providedinformation about imprinting techniquesand technologies and using case law shediscussed registrability of imprints. At the

end of her speech she introduced futureperspectives in imprinting.

After the coffee break, delegates werewhisked off to Latin America for a fullsession about News and Burning Issuescovering Argentina, Brazil, Mexico and

Venezuela.Thanks to thepresenters, thissection startedand continuedfull of LatinAmericanenergy! Firstoff, Juan LopezManan’s speachcentralized onthe 2018

ArgentinianTrademark Law. He explained the newopposition system and had practicalstrategic advice on oppositionproceedings; the introduction of partialnon-use cancellation actions and mid-termdeclaration of use, the PTO’s new role asto deciding non-use cancellations andcertain invalidity cases, and finally the newfees regime were a few important pointsof his speech. He said that in the first twoyears practitioners do not expect to seethe results but then he believes it will beworking effectively.

Next up,EduardoMachadoannounced thegood news thatBrazil isprobably joiningthe MadridProtocol in2019 whichwould causesome welcomechanges in PTO procedures. MeanwhileBrazil needs to solve the backlog problembeforehand said Eduardo. He gave practicaltips how to expedite trade markapplication examination. He agreed thatpharma patent applications take thelongest time and mentioned someproposed solutions. Practical tips in IPlitigation were part of his speech too.

Laura Collada reminded delegates thatMexico joined the Madrid system in 2013and is now the number 10 filer! Lauraexplained differences in paper and onlinefilings in national applications and whattheir advantages to Madrid filings are. She

8

Bruce Longbottom

Tina Bond

Juan Lopez Manan

Raffaella Balocco

Norbert Hebeis

Eduardo Machado

9

overviewed theAugust 2018amended IPLaw with afocus on theintroduction ofa declaration ofuse system,consent letterpractice whereshe underlinedthat if such

declaration is not filed either on the thirdor the tenth anniversary, the registrationwill be deemed cancelled. She recommended brand owners check theirportfolio since class headings are notaccepted anymore but specific lists ofgoods and services are required. She saidthat the Mexican PTO is now obliged toindicate grounds as to why an oppositionis accepted or refused.

Finally, themorning'ssessionsfinished with adeeplydisturbingpresentationfrom RicardoAlbertoAntequera H.about thecurrentsituation inVenezuela. He gave us a passionateoverview about the dynamics of thepharma industry and the historicalbackground of legal changes in Venezuela.He underlined the importance of bordermeasures in infringement, recommendedprocess patent applications instead ofproduct patents - if at all possible for thepharma industry, and instead of opposition,he said, try mediation whenever possible.

Lunchfollowed,during whichconversationflowed asdelegateshunted outcommitteemembers totry to find outthe destination

of our nextAutumn conference. Are we going to bejobless soon due to Artificial Intelligence?Evrard van Zuylen from Darts IP says 'No,get relaxed!' What is AI and how machinelearning works, ingredients which fuelledAI growth and how AI evolved, exampleshow AI operates for instance in GDPR andfor legal analyses of decisions were someparts of his speech. In a nutshell he said: AIis faster and we need legal people with ascentific background. Machines arecomplementary to humans, human beingsstill decide on the risk or course of actionhe/she is willing to take but the future willbe a collaboration between humans andmachines, less time spent on predictions,more time spent in decision making!

Jason Jonesfrom FrossZelnickLehrman &Zissu gavedelegates anupdate aboutWhat's New atthe USPTOand introducedthe two newUSPTOprogrammes. A 'Proof of use auditprogram' started in 2017 by randomlyauditing proof of use requirements on twoadditional goods and/or services chosenby the USPTO per class. It detects thenon-used marks more effectively and thefraudulent registrations. He explained theconcept of 'fraud' in light of the Bose caseand how the audit works by givingpractical tips. The 'specimen protest emailpilot program' allows third parties emailingthe USPTO to inform that the mark inquestion has not been used, even though ause specimen has been submitted. As Jasonsaid 'Be careful, be honest, be accurate;USPTO is watching you!'

Finally, FranJagla keptalmost all thedelegates in theroom with herfun andcolourfulpresentationentitled Up insmokeexploring thecannabis

pipeline. The chemical compounds ofcannabis, a brief history of the plant in thepharma industry and where it is legalizedglobally and under which restrictions werethe first part of Fran’s speech. She thenwent on to highlight how Epidiolex wasapproved by the FDA and how it becamepossible to have Epidiolex legally sold inthe US by reclassification. She examinedthe cannabis situation in Canada, Israel,Argentina and Australia. In her inimitableway, she drew the audience's attention tothe growing cannabis industry.

To end yet another highly successfulconference, the Gala Dinner was held inthe historical Revelin Fortress indowntown Dubrovnik. The event startedwith a cocktail reception on the terraceilluminated with candles before movingdownstairs to take our seats for thedinner. The Chairman thanked thespeakers and the sponsors and made apresentation to Wolfgang Feiler who hasretired from Takeda and thanked him forhis active participation as a PTMGcommittee member. Then, followingtradition, the Chairman gave delegatesfour clues as to the conference destinationfor Autumn 2019. We will be returning toBerlin! As part of another of ourtraditions, PTMG delegates ended theevening on the dance floor by showing offthe latest dance figures! While adjourning,all of us had the same idea in our minds;we should come to Dubrovnik again!

Jason Jones

Fran JaglaLaura Collada

Ricardo AlbertoAntequera H

Evrard van Zuylen

PTMG 97th conference report continued

LA panel and the Chairman

As anyone in charge of the weeklysupermarket run for their household willtell you, there are multitudes of brands,packaging and advertisements in everyaisle you wander down. The same is truewhen shopping for health care products.This is particularly so given that manyOTC consumer health care products aresold in supermarkets or in largesupermarket-style or warehousepharmacies. To distinguish their productsfrom those of their competitors, brandowners will use trade marks, colouring,shapes and images in their product’sget-up. In some cases, however, differentbrands may have common or similarelements in their product’s get-up.

As a comparison of two recent judicialdecisions will tell you, the decision ofwhether one product’s get-up isimpermissibly too close to that of anotheris fact-specific and not always predictable.And while these two cases are in thecontext of skin care and hair care, thelessons from these cases are equallyapplicable to consumer health careproducts, particularly those sold insupermarkets or in large supermarket-style or warehouse pharmacies, but alsothose sold in the smaller pharmacysetting.

The founding principles

The 1937 High Court decision inAustralian Woollen Mills Ltd v F S Walton& Co Ltd provides one of the foundingprinciples for Courts when comparing theget-up of two trader’s products. Dixonand McTiernan JJ eloquently stated in theirjudgment:

'The rule that if a mark or get-up forgoods is adopted for the purpose ofappropriating part of the trade orreputation of a rival, it should bepresumed to be fitted for the purpose andtherefore likely to deceive or confuse, nodoubt, is as just in principle as it iswholesome in tendency.'

A simple guideline in theory. But as Dixonand McTiernan JJ went on to state 'thepractical application of the principle maysometimes be attended with difficulty.'This is because each case of get-upcomparison requires the Court toundertake an assessment as a question offact, deciding whether there is areasonable probability of deception orconfusion occurring. Today, section 18 ofSchedule 2 to the Competition andConsumer Act 2010 (Cth) is the legislative

framework, prohibiting conduct in tradeor commerce which is misleading ordeceptive or likely to mislead or deceive.

The practical realities

This article will consider two recentdecisions with very different outcomes,both of which involved a comparison ofget-up: Homart Pharmaceuticals Pty Ltd vCareline Australia Pty Ltd [2017] FCA 403(Homart v Careline) which has recentlybeen upheld on appeal by the Full FederalCourt in Homart Pharmaceuticals Pty Ltdv Careline Australia Pty Ltd [2018] andMoroccanoil Israel Ltd v Aldi Foods PtyLtd [2017] FCA 823 (Moroccanoil v Aldi).The decisions highlight the factualassessments which judges must undertakeand provide insight into why the ultimatedecision in get-up cases is not alwayspredictable.

Homart v Careline centred on twocompetitors trading in the manufacture,distribution and sale of cosmetic productsin Australia. Careline offered a skin repairproduct advertised as containing'bio-placenta', being a sheep placentaextract. The product was sold underCHANTELLE branding from 2014. In2016, Homart launched a product, alsocontaining 'bio-placenta', under thebranding CHERI. Careline claimed andwas successful in establishing that Homartwas engaging in misleading and deceptiveconduct on the basis of a 'get-up'argument, relying on similarities betweenthe products in respect of almost all ofthe significant and distinctive features.

Here is the packaging of the twoproducts:

Moroccanoil v Aldi involved a number ofclaims and cross-claims, but for thepurpose of this article the claim relatingto 'get-up' will be the focus. Moroccanoiloffered haircare products under theMOROCCANOIL branding from around2009. From 2012, Aldi periodically offeredfor sale and sold hair treatment productscontaining argan oil under the brandingPROTANE with the words 'MoroccanArgan Oil'. Moroccanoil allegedunsuccessfully that Aldi had engaged inmisleading and deceptive conduct (andalso passing off), based on the 'get up' ofthe Aldi products.

Here are examples of packaging for someof Moroccanoil’s and Aldi’s hair care oilproducts:

The two cases resulted in differentoutcomes on the point of 'get-up',highlighting the importance of factualconsiderations which judges must makewhen get-up is being assessed.

The necessary factual assessment

The decision in Homart v Carelinecentred on the general impression left bythe products. Although this processinvolved an assessment of the individualelements of the two products, it was theoverall impression which was the focus.As Justice Burley stated, 'it is erroneousand artificial to take an unduly analyticalapproach to the consideration of thequestion of misrepresentation'. Theconcept of imperfect recollection is alsorelevant.

Justice Burley was persuaded by evidencethat consumers often referred to theCHANTELLE product as 'the gold box'without reference to the actual branding.The combined effect of the size, shape andinternal arrangement of the box and lid of

Getting up hard to predict in get-up cases Alyson Poole and Helen Macpherson, Norton Rose Fulbright Australia

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the products, as well as the bronze-goldcolour utilised in the 'saturated' form, wastherefore given considerable weight. Inthis case, the name of the product wasgiven less weight than might otherwisehave been the case. Justice Burley heldthat consumers would note andremember the CHANTELLE product bythe eye-catching combination of features.This was determined to be separate fromthe name, and provided an indication oforigin, quality and type of goods toconsumers quite aside from the branding.Justice Burley was also persuaded byevidence that, in stores, often the productsmay be placed in a way where the trademark is not seen. The similarities in get-upwere accordingly not held to be overcomesimply through use of the distinct CHERIname.

As a point of comparison, JusticeKatzmann in Moroccanoil v Aldiconsidered the factual differences betweenMoroccanoil and Aldi’s hair care oilproducts, holding that 'the get-up of theMIL and Aldi Oil Treatments are similar,but not deceptively so'. Although Justice

Katzmann found that Aldi hadunquestionably modelled its product onthe Moroccanoil product, her Honourheld that the claim of misleading ordeceptive conduct was not made out.

On the facts of the case, Justice Katzmannheld that, in viewing the Aldi product as awhole, there were a number of differencesin the get-up when compared with theMoroccanoil product. These included thatAldi’s product prominently used 'housebrands' known to be Aldi brands, sold inAldi stores and promoted in Aldicatalogues and television advertisements.Further, Aldi’s product did not include thelarge orange M which was distinctive ofthe Moroccanoil product; Aldi’s brandplacement was horizontal, whileMoroccanoil’s was vertical; and Aldi’sproduct was sold in a plastic, as opposedto glass, bottle. The fact thatMoroccanoil’s product was a 'salon only'brand which is not available in mainstreamsupermarkets (such as Aldi), thedifferentiated promotion of the products,the distinct target markets, and thedisparity in price between the products

were all also persuasive to JusticeKatzmann’s finding.

Lessons learnt

The two cases highlight the factualassessment which must be undertakenbefore a claim on the basis of misleadingor deceptive conduct will be made out.And as stated above, importantly , thelessons which come out of these casesapply equally in the closely related contextof consumer healthcare products.

While there may be clear similaritiesbetween two products, it is necessary tomore deeply assess not only thesimilarities, but the differences as well (asJustice Katzmann reminds us), before adecision can be made.

It is also relevant to note that it is not justthe products themselves which must bepart of the assessment. It is alsonecessary to consider elements such astrade channels, price points, likelyconsumer interpretations and reputationheld.

Getting up hard to predict in get-up casescontinued

In memoriam

Florent Gevers

Born on July 14, 1934 and passed away onOctober 23, 2018.

Florent Gevers was a leading figure in thefield of intellectual property, both in hishome country of Belgium and atinternational level. He was a EuropeanTrade Mark and Patent attorney, andamongst others past President of theOfficial Advisory Group of the BelgianGovernment on Industrial Property,

founder member, President and HonoraryPresident of ECTA, President of theBelgian Group of AIPPI, Founder memberand President of LES Benelux and foundermember and President of BMM.

During his career, Florent placed strongemphasis on delivering a high-qualityservice and actively promoting IPawareness and importance. He played aleading role in preparing for both theEuropean Patent, the Benelux Trade Markand he was a driving force behind otherimportant changes, including theimplementation of the Community TradeMark and defending GeographicIndications

He was a man of firm ideas and strongviews, but he was always willing to engagein respectful discussion and his dedicationand commitment made a valuablecontribution to the world of patents andtrade marks in the European Union.

He strongly believed in sharing his

knowledge with others including as avisiting professor at the Universities ofAlicante (Spain), Strasbourg (France),Fordham (New York, USA), and K.U.B.(Brussels), as well as extensively lecturingworldwide (Belgium, France, Greece,Hungary, Nairobi, Spain, Germany, GreatBritain, Japan, Australia, US, amongstothers) and mentoring his juniorcolleagues in Belgium. Though a seniorexpert and authority figure at the office,he could also be counted on to share ahumorous tale to lighten a stressful day,even popping into the office afterretirement.

While less active in daily office work withhis official retirement in 2012, hecontinued to speak and present whenpossible, including at the annual ECTAconference in Alicante 2014.

He will be sadly missed by all his family,friends and former colleagues.

Reproduced by kind permission of GaëlleGevers.

Where were you brought up andeducated?

My entire schooling was at St Mary’sDiocesan School for Girls in Pretoria, andI then studied English and law degrees atNatal University, The University of SouthAfrica and Clare College, Cambridge.

How did you become involved intrade marks?

By accident – after I had qualified at ageneral law firm, the father of a friendsuggested I consider trade mark law at hisfirm, Spoor & Fisher, and so I began,knowing absolutely nothing about IP, as itwasn’t even offered as a University coursein those days.

What would you have done if youhadn’t become involved inintellectual property?

Probably teaching – my grandmother andmother were teachers, and one of oursons is training to be a teacher, so it’s inthe blood.

Which three words would you use todescribe yourself?

Restless, resolute and resourceful.

What was your worst experience inthe world of work?

On my first business trip for the firmhaving, as a vegetarian, to pretend to eat alamb chop at a small lunch hosted by animportant client, because I did not wish tooffend the client!

What’s the best thing about your job?

Being part of a global community ofinvariably nice trade mark lawyers who

share special camaraderie, and getting totravel to great destinations to meet them,has been enriching and has made workmore meaningful.

What did you want to be as a child?

An architect

What is your favourite work of art?

Whistlejacket by George Stubbs in theNational Gallery in London. It’s not deepor meaningful but its simple beauty andscale always amazes.

What is the soundtrack to your life?

Lenny Kravitz ‘I want to get away. I wantto fly away. I wish that I could fly into thesky so very high just like a dragonfly’.

What do you wish more people wouldtake notice of?

William Blake said it best: ‘To see a worldin a grain of sand / and a heaven in a wildflower, / hold infinity in the palm of yourhand / and eternity in an hour’.

What is the best age to be?

The early 40’s because the tortured angstof youth has gone, any children areprobably not yet teenagers, and yourparents are still well, so ‘all’s right with theworld’.

What would be your ideal night out?

Champagne and a symphony concert.

Whom do you most admire and why?

The late Wangari Maathai, the tree womanof Kenya who founded The Green BeltMovement and was the first Africanwoman to win the Nobel Peace Prize.

Which famous historical personwould you like to have been andwhy?

Julius Caesar – perhaps it was all thoseyears studying de Bello Gallico in Latinmade it seem very glamorous to be thecharismatic General commandeering Gauland invading Britain, even though he cameto a sticky end!

Which book or books are youcurrently reading?

Warlight by Michael Ondaatje.

Which music recording would youtake with you to a desert island?

Handel’s Messiah – The King’s CollegeChoir recording.

What music is in the CD player inyour care / what is your iPod set toat the moment?

The Killers.

How do you relax?

Take a mug of tea into the garden andweed or water pot plants.

What is your all-time favourite film?

Forrest Gump – an epic tale of humanity,history and hope.

If you could enact one law, whatwould it be?

A law banning all billboards. I get violentthoughts involving bazookas when I see abillboard spoiling natural or architecturalbeauty.

What’s the best invention ever?

Waterborne sewerage systems.

© 2018 The Pharmaceutical Trade Marks G roupC irculated fo r information only to PTMG Members. The G roup takes no responsibility fo r the contents

Edito r : Vanessa Parker

Tel.: +33 679 316 860 email: vparkercordier@wanadoo .fr

Jean has been with the African firm Spoor & Fisher for 35years and is an attorney, Notary Public and partner in the firm’sPretoria office. Her practice has evolved through many areasbut is now exclusively to do with trade mark clearance, filing,prosecution and portfolio management, and work for SouthAfrican clients outside South Africa. For several decades shehas been a lecturer/examiner/moderator on the InternationalTrade Mark Law course for the South African Institute ofIntellectual Property Law. As for PTMG, in the early days Jeanattended many Spring meetings in places such as Glasgow,Liverpool, Cambridge and Brighton, before graduating to theAutumn meetings in the more exotic destinations. Her favouritePTMG memory is of the late Alan Cox, in kilt and with sword,

'addressing' the Haggis in Glasgow.

12

PROFILE: Jean McIvor