with Regurin. In particular, given this meant that pharmacists were foregoing significantly increased profits, Floyd LJ concluded that this suggested there was strong resistance to brands other than Regurin. The crucial question is whether Asplin J was entitled to decide that, through adopting its own (putative) brand for the 60mg product, Doncaster could realistically compete for the whole of the market by persuading doctors to prescribe by reference to that brand. This was a factual assessment for the trial Judge and Floyd LJ recognised that there were very limited circumstances in which the Court should intervene with it. However, he concluded that there was no evidence entitling the Judge to come to the conclusion that she reached. In particular, he accepted that Doncaster could not compete for sales prescribed as Regurin because UK pharmacists could not substitute another product where the prescription is written for the brand. Further, Doncaster submitted that it was unrealistic to expect a parallel importer to brand its product (which was exactly the same as Regurin XL) and market it to doctors. Doncaster’s CEO had said in evidence that it would be a “fool’s errand” to seek to generate demand associated with a brand when selling parallel imports. Floyd LJ recognised this as an aspect of interstate trade rather than a commercial decision by Doncaster. For Doncaster, adopting its own brand was not a “real world alternative”: indeed, on the basis that regular interruptions in supply occur in respect of parallel imports, Floyd LJ suggested it would have been “verging on the irresponsible to encourage a doctor to prescribe a Doncaster brand”. He concluded therefore that the Judge should not have dismissed this evidence without giving some reason for doing so. Comment This decision will not be welcomed by pharmaceutical manufacturers. However, the decision should also not be perceived as presenting unlimited opportunity for parallel importers to re-brand products with the registered trade mark that applies in the Member State of import. In all cases, it will be necessary to consider whether otherwise effective access to the market would be hindered, which will require a careful assessment of that market and the practices applying in that market. In this case, the Court of Appeal was persuaded that there was strong resistance to brands other than Regurin at the dispensing level, and that it would have been unrealistic for Doncaster to adopt its own brand name (and market that brand to prescribing doctors) for imported Regurin XL. It is unusual however for the Court of Appeal to interfere with the lower Court's assessment of the factual position. Famous trade marks as key words Frédérique Potin, Simmons & Simmons, Paris, France In a recent decision, the French Supreme Court has again confirmed its reluctance to find a search engine liable as an editor capable of controlling the use and publication of infringing content and, in particular, the use of famous trade marks as key words. In this particular case, the French national railway company, the SNCF, filed proceedings for unfair use of a trade mark having a reputation, against a web provider which hosted the tuto4pc.com website that used some of the SNCF’s most famous trade marks as key words to point to competing travel agencies’ websites. Before deciding on the famous trade mark unfair use issue, the Court had to determine whether the web provider was acting as a mere “hosting company” or had an active role in the choice of the contents published on the tuto4pc.com website. Indeed, pursuant to the French Loi pour la Confiance en l’économie numérique of 29 June 2004 (LCEN) which implements the directive on electronic commerce, web hosting companies benefit from a limited liability regime in respect of infringing contents published on websites that they host, i.e. they may only be found liable if they fail to remove infringing content after being put on notice of the infringement by the right holder. In our case, the Court of Appeal had considered that the reproduction of the trade mark SNCF on the first page of the site (and its subsequent removal after service of the first instance decision) together with the creation of a commercial advertising system, constituted sufficient elements to establish the defendant’s active role in the choice of contents published and, therefore, its full liability. These arguments were, however, rejected by the Supreme Court who considered that it was not established that the defendant had knowledge and control of the data stocked by advertisers, and confirmed, once again, its reluctance to admit the full liability of web hosting companies. On the trade mark unfair use front, the Supreme Court quashed the Court of Appeal’s decision, considering that stocking the sign SNCF, and other famous trade marks as key words and organizing the publication of advertising using such key words did not constitute use of a trade mark in the course of trade, as the defendant did not directly benefit from such use. This approach is based on the CJEU decisions in cases C236/08 to C-238/08 Google France of 23 March 2010 which established the principle that use of famous trade marks as key words does not constitute use of a trade mark in the course of trade. On the basis that the defendant did not have an active role in the choice of contents published on the tuto4pc.com site, it was not possible to find the web provider liable for unfair use of the famous trade marks as keywords. As regards the pharmaceutical industry, although the online sale of pharmaceutical products is strictly regulated, using famous medicines’ brands as key words is no doubt tempting when trying to sell generics or counterfeits and the pharmaceutical industry should be particularly watchful. PTMG 91st Conference Warsaw 30 September2 October 2015 Registration on line at www.ptmg.org from mid June 11