Words from the Chair Duracell obtains cancellation for energy drinks in Iran Duracell Batteries B.V. (DB) has been successful in the court action against an Iranian manufacturer, producing Duracell Energy Drinks which borrowed the name, shape and distinctive copper and black branding from the well-known battery. Mr. Mohammad Badamchi, Raysan Patent & Trademark Agents, Iran What an amazing Conference we had at The Savoy in London! It was great to see so many of you, from so many different countries, from both private practice and in-house as well as some of our colleagues who provide us with great trade mark related services. I was particularly pleased to see so many industry people at the 88th PTMG Conference. Not only did we attract most of the big pharma companies, but also many industry attendees represented smaller pharma companies, some of whom were attending a PTMG Conference for the very first time. For me this is certainly another sign, in addition to the long waiting list, that PTMG is doing well. Obviously, this is not only good news for the PTMG Committee, as of course high attendance represents a well respected and successful organisation, but also for all the attendees. Our fees structure, which changed last year to attract more industry delegates, also probably helped with the attendance level and I am also sure that the reputation and high quality of PTMG conferences are attractive. We did very well in London, so let's now do our best to ensure that many colleagues from the pharma industry join us for another very promising conference in Chicago. Duracell Batteries B.V. have to prove that such is the strength of the Duracell brand that consumers might believe that the PPC mark and design would take unfair advantage of the repute of DB’s trade mark and is without due cause. The First Instance Court dismissed the action holding that as the goods covered by the Duracell registration in classes 04 and 32 are sufficiently distinctive with batteries in class 09, this will not mislead and confuse the consumers. The First Instance Court did not find any grounds for cancellation of the Duracell registrations and industrial design. Duracell Batteries B.V. brought a court action to cancel Duracell trade mark registrations for goods in classes 04 and 32 and industrial design of the shape and distinctive copper and black branding in Iran. Because an application cannot be refused on the basis of the reputation of another trade mark, Pars Pirikas’ applications had been accepted and registered in Iran. The Pars Pirikias Company (PPC) had registered the name Duracell for oils in class 04 and drinks in class 32 as trade a mark and the Duracell’s design of the shape and distinctive copper and black branding as an industrial design in Iran. The Iranian company has also used the Duracell Rabbit figure in some advertisements for the energy drink. Such is the similarity that many Iranian consumers have been fooled into thinking that the product is manufactured, licensed or somehow authorized by the Duracell Batteries B.V. in Iran. The Appellate Court has ruled that the registration of Duracell trade mark and distinctive copper and black get-up by PPC constitutes unfair competition and PPC takes unfair advantage of the repute of DB’s trade mark and design without due cause. The Iranian company is attempting to appropriate the reputation that is built on longevity and endurance and will benefit from the years of promotion that DB has undertaken. The average consumer will, undoubtedly, connect the endurance and longevity of DB’s goods with the goods of the PPC. The defendant is trying to ride on the coat tails of DB’s trade mark, in order to benefit from its power of attraction, reputation and prestige, and to exploit these without paying any financial compensation and without being required to make efforts of his own in that regard. The Court of Appeal has accepted the reputation of the DURACELL trade mark in relation to batteries in Iran and has confirmed that the reputation of DURACELL is such that it will go beyond the relevant public for batteries. The Court of Appeal has further held that the use of Duracell trade mark and Duracell battery distinctive copper and black get-up will mislead consumers into thinking that the goods are coming from a particular undertaking, and thus to distinguish those goods from those of the other undertaking. trade marks are different, consumers will be confused and misled by the trade marks. (DB) appealed the First Instance Court decision claiming that the Iranian company has chosen the DURACELL name and get-up with the intention of trading off the significant goodwill which has been generated in the name and get-up. Moreover, DB considers that PPC will take an unfair advantage by trading off the reputation associated to Duracell trade mark and distinctive design. The Court of Appeal accepted the DB’s arguments and reversed the First Court’s decision and ruled for cancellation of Duracell registrations as well as the Duracell shape and distinctive copper and black get-up. The importance of the judgment for pharmaceutical trade mark owners is that according to Iranian Law and due to the importance to public health, pharmaceutical trade marks and marks for foodstuffs are required to be registered in Iran, to be allowed for production, importation or sale in Iran, and because an application cannot be refused by the Trade mark Office on the basis of the reputation of another trade mark, enforcement of trade mark rights on the basis of fame and well-known status of trade marks should be brought before the Courts. The other important points in the judgment are as follows: • Use of an identical mark for different goods may constitute infringement. • Enforcement of unregistered designs is possible. As regards to pharmaceutical trade marks, the courts tend to protect the public at the first stage and the business interests of the pharmaceutical trade mark owner in the next step. • Confusion of consumer is the determining factor. Sophie Bodet All the very best, and see you in Chicago! The Court of Appeal has held that the determining factor is consumers’ confusion for goods and/or services and not classification of goods and/or services. Although the classes covered by the 2