3
International Update
CROATIA
Gordana Pavlovic, Cabinet Pavlovic
In its judgment of 17 December 2013, the
Croatian High Commercial Court ruled
that Kras's sale of Mentol sugar-free
candies in lilac packaging infringes trade
mark for lilac color IR 644464 registered
in the name of Kraft Foods Schweiz
Holding GmbH (part of Mondelez
International Group) for chocolate and
products containing chocolate. This is the
first time that a Court in that region
recognized the distinctive character of the
lilac color. The Court held that the trade
mark for lilac color IR 644464 is a trade
mark with reputation, but that Mondelez
did not prove that sale of candies in lilac
packaging may harm its reputation or
distinctiveness, therefore it did not find
infringement on these grounds.
Kraft Foods Schweiz Holding GmbH (part
of Mondelez International Group) owns a
trade mark for lilac color registered under
IR 644464 which is valid in Croatia and
used on a range of Milka chocolate
products as well as on products made by
other companies in co-operation with
Mondelez (e.g. Ledo ice-cream).
Kras is a well-known Croatian producer
of confectionary products. In their
production line they have candies which
are sold in the lilac color packaging,
featuring the word Mentol, commonly
used to designate menthol/mint taste.
Mondelez sued Kras for trade mark
infringement and unfair competition. The
Court of first instance refused Mondelez's
lawsuit. Mondelez appealed to the Court
of 2nd instance which ruled in Mondelez's
favour as far as trade mark infringement is
concerned. The Court held that:
1) The base of the packaging of Kras's
Mentol sugar-free candies is depicted in
various shades of lilac color; these shades
are similar to the International trade mark
registered in the name of Kraft Foods
Schweiz Holding GmbH (part of Mondelez
International Group);
2) the goods at issue are similar, as both
candies and chocolate are confectionery
products;
3) the relevant consumers are consumers
of chocolate, which can be with and
without sugar, and they are likely to make
an association between the contested lilac
packaging and Mondelez's lilac color.
Further, the Court held that the trade
mark for lilac color is a trade mark with
reputation, which enjoys extended
protection, against dissimilar goods.
However, as the Court held that
Mondelez has not sufficiently
demonstrated possible damage to
reputation or distinctiveness of their trade
mark, their claim for infringement of the
trade mark with reputation was refused.
This is a huge victory for Mondelez which
has been trying to defend its trade mark
for lilac color all over the world.
INDIA
Ranjan Narula, RNA Intellectual
Property Attorneys
Glaxo Group Ltd (Glaxo) initiated an
action before the Delhi High Court for
protecting its brand HEPITEC which was
being infringed by a Mumbai based
company, United Biotech (United) by
using the mark HEPROTEC.
Glaxo asserted before the Court that the
mark HEPITEC was a coined word having
no dictionary meaning. It further argued
that the product under the mark
HEPITEC is highly popular and has a high
degree of reputation and goodwill in India
and abroad for treatment of liver related
ailments. Glaxo came across the
unauthorized use of the mark HEPROTEC
by United for treatment of similar
ailments related to the liver.
United countered the Glaxo's submissions
by contending that the suit had been filed
out of trade rivalry as the mark
HEPROTEC is neither identical nor
deceptively similar with the Glaxo's mark
HEPITEC. United in its argument
highlighted various features in both
products that were different i.e. drug
ingredients, form of drug, schedule and
manner of sale and price to argue that
there was no chance of medicines under
the name HEPROTEC being confused
with the medicine sold under the mark
HEPITEC.
The court, after examining the above
issues based on the settled principles of
law governing pharmaceutical marks, held
that prima facie the mark HEPROTEC of
United was deceptively similar to the
registered trademark HEPITEC of Glaxo.
Court further held that the two marks are
phonetically and structurally similar as
almost the entire mark HEPITEC has been
copied by deleting word "I" and inserting
"RO" in the middle.
With respect to the contention of United
that the words HEP and TEC are common
words used in the trade and no one is
entitled to exclusive protection, the court
held that no details to the extent of use
and date of use was provided and hence
the said contention was primarily rejected.
LATVIA
Maija Liberte, Grindeks JSC
On 20 July 2010 Grindeks, JSC, the
leading pharmaceutical company in the
Baltic States, filed a petition with the Riga
Regional court against Olainfarm, JSC, a
local Latvian pharmaceutical company,
which had registered with the Latvian
Patent office the trade mark MIDOLAT in
regard to the goods covered in class 5.
Grindeks stated that the trade mark
MIDOLAT is confusingly
similar with the well-known in Latvia trade
marks MILDRONATS, MILDRONAT (in
Cyrillic) and MILDRONATE. The claimant
also accused the respondent of unfair
competition and requested the court for
the indication of provisional measures of
protection.
At the time the claim was filed, the
defendant had already started the
production of the medicine under the
trade mark MIDOLAT, the active
substance of which (meldonium) was the
same as the active substance of the
medicinal product MILDRONATE.
Meldonium itself was invented in Latvia as
an original preparation for the treatment
of cardiovascular diseases. The patent for
meldonium owned by Grindeks expired in
2006. Currently MILDRONATE is the
most demanded original product
marketed and manufactured by Grindeks
and is one of the most exported Latvian
products.
The request of Grindeks on the indication
of provisional measures of protection was
satisfied. The medicines marked with the
denominations MIDOLAT and
of Olainfarm were seized and
the respondent was obliged to recall from
the course of trade all medication marked
with these denominations.
The litigation continued for three more
years until in January 2014 the Supreme
Court decided to partially satisfy the claim
of Grindeks. The court declared invalid
the trade mark MIDOLAT ,
obliged the defendant to stop the
manufacturing and use of the
denominations MIDOLAT and
in regard to pharmaceutical
preparations, as well as to destroy all the
seized medicines, to publish the judgement
in mass media and to recover to the
complainant the official fees related with
this case.
TURKEY
Sema Salman, NSN Law Firm
In a decision dated 9 April 2014, the
Constitutional Court has accepted the
appeal of the judge of the 4th Istanbul
Court of Intellectual and Industrial Rights
and unanimously decided to cancel Article
42/1 (c) of the Decree Law no.556.
Said appeal was filed before the
Constitutional Court on the ground that
non-use among the grounds for
invalidation of a trade mark violates the
property rights protected with the
Constitution because non-use has been
regulated both as a ground for
cancellation and invalidation and when
non-use is evaluated on invalidation
grounds, it would have a retroactive
effect, meaning that it dates back to the
filing date of the non-used trade mark.
Consequently, the retroactive effect of the
trade mark right as a property right would
violate Article 35 of the Turkish
Constitution regulating The Protection of
Property Right and in addition to this,
although property rights can be limited by
law, limitation under Decree Law no.556
violates Article 91 of the Constitution.