TM TM TM TM TM TM Pharmaceutical Trade Marks Group Dec 2015 Editorial: Peace be with you ... As 2015 draws to a close, I for one will not be looking back much as this year has carried a heavy load. And yet, the Certainly, trecent PTMG conference in Warsaw provided us with another opportunity to An which small our celebrate that annual makestown festival iorganisation truly unique. A gathering of over 60 nationalities, all sharing a ofte common interest, where the basiscourse, Of of our tprofessional and personal relationships is wholehearted respect for the culture and values of others. Perhaps 2015 will be remembered by future generations as the year when, being unable to solve our differences, we nevertheless took charge of our own planet's destiny. Each and every one of us can and should make an impact - even reading Law, Too often Lore & r Practice on a screen rather than printing it out - if we want to hand down a More surprisingly, themore recluse parts ofand positive legacy to in future. Luckily, local that personal initiatives are here again leading the way and influencing c Indeed linguistic d the debate. Whilst the symbolism of bringing together world leaders in Paris at this time, for the COP21, is lost on no-one, theand the the Commission ecological impact of huge motorcades of security staff for each of them P does leave one wondering whether such gatherings should not be held virtually. As ever, new technologies bring advantages and disadvantages and if we are told that part of the massive waste However, in the past 25 years, our continent has recycling issues we now face are due to constant upgrades of m mobile technology, then we must also discipline ourselves to exploit the technology to better our planet and ultimately the My heart goes out to trade lives m of all those who live upon her. Unlike Janus, I shall only be looking forward in the coming weeks - to 2016, to another conference at The Savoy in March with an exciting programme and of course to our Autumn conference in Oslo. The PTMG Committee members all join me in wishing you and your families a peaceful festive season. Vanessa US Update Jonathan S. Jennings, Pattishall, McAuliffe Brand owners in the pharma industry have several bases for taking action against parallel imports (gray market goods) in the United States. Of course, they can work with the FDA, Customs, or other government agencies, but they may also take direct action by bringing suit in federal court based on a violation of trade mark and unfair competition laws. On 6 November 2015, the United States District Court for the Eastern District of New York underscored this point by preliminarily enjoining the sales of gray market diabetes test strips in Abbott Laboratories v Adelphia Supply USA, Case No. 1:15-cv-5826 (E.D.N.Y.) (unreported). In this case, the court found that the defendants’ sale and distribution of FreeStyle test strips designed for the international market caused a likelihood of confusion with Abbott’s authorized domestic sales of FreeStyle strips meant for the US market. Significantly, although the actual domestic and international test strips were identical, the court found that the differences in the packaging and the instructional inserts for the products would be material to the consumer purchase decision and, therefore, sufficiently material to cause consumer confusion. “Material differences” is the standard typically followed under US law to determine whether sales of a gray market good should be enjoined. In coming to this decision, the court highlighted eight material differences presented by Abbott between the domestic and international products at issue, which included: • The US package includes a National Drug Code number, while the international strips do not. Pharmacies scan these codes for insurance reimbursement. • The instructional insert for the US strips states that a user could obtain blood from three FDA-approved sites the finger, upper arm, or palm - while the international version lists the finger, upper arm, and palm, as well as nonFDA approved back of hand, forearm, calf, and thigh as sites to obtain blood. • The packaging and instructional inserts for the US strips are in English and Spanish, while the packaging and instructional insert for the international strips were often in other languages, and may not include English. • The international packaging contains various symbols unaccompanied by explanatory text, which the domestic packaging does not. Of note, the court rejected one of the wholesale defendant’s arguments that confusion was unlikely because its customers are pharmacies, which it alleged are sophisticated and know when they are purchasing non-US test strips. Further, the court found that the defendants’ sale of the international strips interferes with Abbott’s quality control for its domestic products. Abbott presented evidence to establish that it “has in place continued on page 3