Trans-Pacific Partnership Agreement: What does it mean for Trade marks? Bridie Egan, King & Wood Mallesons Background After years of negotiations and much fanfare, the final text of the Trans-Pacific Partnership Agreement (TPP) was signed on 4 October 2015 by 12 countries: Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, Peru, New Zealand, Singapore, the United States and Vietnam. As you are no doubt aware, the TPP is a blockbuster free trade agreement which intends to drive growth across the 12 economies and establish a trade and investment environment which is more predictable and transparent. The TPP is not yet a done deal – each of the 12 countries need to sign and ratify the final text pursuant to their national procedures. The US is the main concern, with many commentators expressing doubt that the US Congress will give the final text the green light. The Intellectual Property chapter contains provisions which are largely reflective of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) but which can be seen to extend rights in certain areas. Pharma brand owners will likely welcome the changes in this regard. Most signatory countries will not need to make any noteworthy changes to their trade mark regime in order to comply with the provisions. Snapshot of the trade mark provisions • No country may require that a sign be visually perceptible. The TPP extends the scope of signs that are registrable as trade marks beyond the scope set by TRIPs. This provision specifically states that each country shall make best efforts to register scent marks, but also that countries may require a concise and accurate description and/or a graphical representation. • Collective and certification marks must be protectable as trade marks. Collective and certification marks are not defined under the TPP however the meaning of each is well known. • Trade mark Owners’ exclusive rights extend to ‘related’ goods or services. This provision extends the scope of protection under TRIPs by replacing ‘identical or similar goods or services’ with ‘related goods or services’. The provision grants owners the right to prevent third parties from using identical or similar signs in respect of related goods or services. • Well-known trade marks. The TPP specifically states that registration is not a pre-requisite for determining that a trade mark is well-known, otherwise the provisions in respect of well-known trade marks mirror those under TRIPs. • Remedies. The TPP requires countries to provide civil remedies and border protection mechanisms for trade mark infringement by provisions which are broadly in line with the TRIPs Agreement. However, the TPP arguably goes one step further in respect of the scope of activities for which criminal procedures and penalties are required. The TPP requires countries to provide criminal procedures and penalties for wilful trade mark counterfeiting on a commercial scale, which is reflective of the requirements under TRIPs. However, the TPP goes on to provide an expansive definition of commercial scale which includes: acts carried out for commercial advantage or financial gain and significant acts, not carried out for commercial or financial gain, that have a substantial prejudicial impact on the rights owner in the marketplace. BIO is a descriptive component, but not fatally so, according to the General Court Chris McLeod, Elkington and Fife LLP, London In case T-262/14 Bionecs GmbH v OHIM (26 November 2015), the General Court has considered the descriptiveness of the term BIO and its effect on similarity between marks. In February 2012, Bionecs GmbH applied to register BIONECS as a CTM for goods in international class 5. In April 2012, Fidia farmaceutici SpA opposed the application on the basis of an earlier International Registration of BIONECT designating Austria, the Czech Republic and Poland and covering “pharmaceutical preparations used in tissue repair”. In April 2014, OHIM’s Opposition Division upheld the opposition because the goods were identical or similar, the BIO element was weak, the marks were visually and phonetically similar because of the common element BIONEC and conceptually similar to some extent because part of the relevant public, i.e., medical professionals, would understand the 12 meaning of BIO. In June 2013, Bionecs appealed against the decision and in February 2014 OHIM’s Fourth Board of Appeal dismissed the appeal, essentially agreeing with the Opposition Division, adding that, despite the descriptiveness of BIO meaning that the earlier mark may have a below average distinctive character, the near identity of the marks and the similarity between the goods meant that there was a likelihood of confusion. The General Court judgment centred on the following customary issues: 1. The relevant public – which would have a heightened level of attention when choosing the goods in question. 2. The goods – which were similar because they were of the same nature, had the same purpose and had partially identical distribution channels, including pharmacies. 3. The marks – unsurprisingly, the Court held the marks to be visually and phonetically highly similar, and, given the descriptiveness of BIO, that conceptual similarity would play a limited role in the assessment of the likelihood of confusion. The Court therefore upheld the Board of Appeal’s decision, concluding that, despite the high level of attention of the relevant public, and the descriptiveness of BIO, the other similarities established a likelihood of confusion between the marks. This judgment is in line with OHIM’s CP5, the Common Practice on “Relative Grounds – Likelihood of Confusion (Impact of non-distinctive/weak components)” because BIO was not the only common element between the marks. The overall visual and phonetic similarities were sufficient for there to be a likelihood of confusion.