International Update
Czech Republic
PETOSEVIC
The customs officials in the Czech
Republic have recently seized a total
of 194,300 counterfeit Viagra and
Cialis pills at Prague's Vaclav Havel
airport.
The fake anti-impotence pills
originated in south Asia. The
investigation is ongoing and it is not
yet known whether they were
intended for the Czech Republic
market.
If sold as originals, the estimated
value of the pills would have been
EUR 3.4 million (USD $ 4.6
million).
India
Sonal Madan, Chadha & Chadha
In a recent judgment in Bloomberg
Finance LP v Prafull Saklecha dated 23
October, 2013, the Delhi High Court
while restraining the Defendants from
using BLOOMBERG as part of their
corporate name has thrown light on
the provisions of dilution as envisaged
in the Indian Trade Marks Law.
The decision comes at an opportune
time given that the legal position on
unauthorized use of a registered mark
as part of corporate name by a third
person in respect of goods/ services
which are different from those
covered by such registration was
ambiguous. The precedents relied
upon by the Defendants limited the
scope of infringement provisions to
use of a registered mark as a
corporate name in respect of the
same goods and services as covered
by such registration.
The Court was of the view that the
element of having to demonstrate the
likelihood of confusion is absent from
the law on dilution and thus
restrained the Defendants from using
the Plaintiff's registered trade mark
BLOOMBERG as part of their
corporate name despite the fact that
the two parties were involved in
completely different businesses. The
court further clarified that a
trademark with a reputation shall be
entitled to anti dilution protection
even if it cannot be said to be well
known.
The decision is particularly good for
the Pharmaceutical industry as their
marks having reputation cannot be
used in different industries.
Moldova
Nicolae Muresan, Andra
Musatescu Law & Industrial
Property Offices
EGIS Gyogyszergyar Nyilvanosan
Mukodo Reszvenytarsasag (EGIS), has
just obtained a positive decision from
the Moldavian Trade mark Office
(AGEPI).
Facts of the case:
AGEPI issued a provisional refusal for
the international trade mark
ALTFORALLE, which was considered
by the Trade mark Office as similar
with ALTORAL and ALTORAL (in
cyrillic) trade marks registered for
`antiallergic pharmaceutical products',
as ground for refusal.
EGIS filed an appeal against AGEPI's
Provisional Refusal.
Arguments:
Our main arguments were based on
the following:
(1) ALTFORALLE cannot be
considered similar with ALTORAL
taking into consideration (i) the
difference in size between the two
trade marks, (ii) the inexistence of
semantic similarity between the
examined trade marks taking into
account that none of the trade marks
has a meaning, (iii) the doubling of
the letter `L' puts the emphasis on
the ending of the word;
(2) in order to even further depart
from any potential similarity of
products, EGIS decided to limit its
products from `pharmaceutical
preparations for human use' to
`pharmaceutical preparations for
gynaecological use';
(3) `pharmaceutical preparations for
gynaecological use' cannot be
considered similar with `antiallergic
pharmaceutical products';
(4) there is no likelihood of confusion
including association;
(5) only Moldova issued a provisional
refusal on such grounds.
Findings of the Trademark Office:
Further to the arguments brought
before it, the Office issued a final
decision in favour of EGIS,
overturning its provisional refusal.
Comments:
We consider the final decision of the
Trade Mark Office, which was
summoned to us on 31 October,
2013, as well founded and of
importance, not only for EGIS, which
is now able to use the same trade
mark in all of the countries where the
protection was requested (e.g.
Poland, Czech Republic, Romania,
Bulgaria etc.) via the international
registration, but also as a precedent.
In this respect, our view is that
AGEPI will take this decision into
account in future similar cases.
Ukraine
PETOSEVIC
On 7 August, 2013, the Simferopol
District Court, in the southern
Crimea region of Ukraine, imposed
fines to the amount of approximately
EUR 3,000 (USD $ 4,000) on two
members and a fine of EUR 3,600
(USD $ 4,900) on the leader of an
organized group that produced and
sold counterfeit water softener
Calgon. In addition to imposing fines,
the court prohibited the three
defendants from engaging in business
activities for two years.
Since the fall of 2005, the defendants
manufactured the fake water softener
in a rented apartment in Simferopol
by mixing a fabric dye called Sinjka
and laundry powder called Lotos,
produced in Ukraine. They used
polymer film and a heat gun to make
the packaging. During the search of
the premises in 2007, more than
14,000 counterfeit packages of water
softener weighing half a kilo each
were found and seized.
The request for compensation of
material damages in the amount of
EUR 68,000 (USD $ 92,000) filed by
the trade mark owner Reckitt
Benckiser Household and Healthcare
Ukraine was partially sustained by the
court, which awarded compensation
in the amount of approximately EUR
2,300 (USD $ 3,100).
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