International Update Continued The new version of the law prohibits: 7 Dissemination of false, inaccurate or misleading information that may cause damage to an economic entity or its business reputation (Art. 141); counterfeits would also be useful, if available) • Places of production • Relevant companies – authorized importers/suppliers/manufacturers/ consignees/exporters • Authorized traders (name, address and registration numbers of persons or entities) The new decree provides for a simplified procedure for the destruction of goods, without a court order, if the holder of the goods consents to the destruction (explicitly or tacitly) within a deadline of 10 working days (three working days for perishable goods) and if the IP rights holder confirms that the goods are counterfeit and requests their destruction within the same deadline. This deadline cannot be extended unless the IP rights holder decides to file a lawsuit. The old decree allowed for a deadline extension of 10 working days in both cases (request for destruction of the goods under the simplified procedure or lawsuit). Moreover, the deadline to request a Customs Watch in ex-officio cases is now four working days, rather than three. An important novelty is the introduction of the “small consignments procedure”. Small consignments are postal or express courier consignments that contain three units or less or weigh less than two kilograms. However, as the customs authorities announced, dealing with small consignments requires certain technical adjustments that the Customs Administration has yet to implement, thus some delays are expected before this procedure is put into practice. the goods as allowed under section 11(2)(b) of the Act; or 2 that the reliance by Flynn Pharma on its trade mark rights under domestic legislation to stop these imports constitutes a disguised restriction on trade and is contrary to the free movement provisions of the Treaty on the Functioning of the European Union (TFEU). Decision Does the Defendants’ use of the word FLYNN amount to trade mark use? The Judge held that the Defendants’ use of the word FLYNN is not a description of the goods. It is not a word associated with medicines or ingredients or otherwise denoting the qualities or characteristics of the medicine. It will be perceived by consumers as a mark of origin because there is no evidence that consumers will interpret the sign in the way the Defendants suggest, namely as an indication of the source of the Active Pharmaceutical Ingredient (API) or the site of the manufacture of the product. They will interpret it as being an indication of the holder of the marketing authorisation of the product and therefore as indicating that the product originates with Flynn Pharma as being the entity responsible for the quality of the goods. The Judge concluded that this is clearly a trade mark use of the sign. Is the prevention of these parallel imports contrary to EU law? The Judge looked in detail at existing case law on parallel imports and exhaustion of rights. She held that the Defendants can only rely on the TFEU to defeat the claim of infringement if they can show that Epanutin was placed on the market in the exporting Member State by the same entity as is now seeking to prevent its import into the UK. While Flynn Pharma is responsible for placing its product on the market in the UK, Pfizer (with whom Flynn Pharma has an agreement), is responsible for placing Epanutin on the market in other Member States. Therefore, Flynn Pharma’s trade mark rights were not exhausted in respect of Epanutin placed on the market in other Member States, and Flynn Pharma’s claim for infringement succeeded. 7 Misleading others as to the price, quality, quantity, place of production or other characteristics of the goods (Art. 142); 7 Illegal disclosure of information (Art. 147); 7 Committing or omitting acts that can lead to confusion with regards to competing business entities or goods, including the illegal use of trade marks, service marks, company names, trade names, appellations of origin, or trade dress infringement (colors, packaging, design of retail space, corporate style, shop windows) (Art. 146); 7 Other forms of unfair competition (Art. 148). 7 Commercialization of goods with illegally used IP rights (Art. 145); 7 Registration of IP rights in bad faith (Art. 144); 7 Incorrect comparison of business entities or their goods, including the use of terms such as “the best”, “first”, “number one”, “only”, “exclusive”, “just”, without indicating characteristics or parameters of comparison that can be verified in practice (Art. 143); Serbia PETOSEVIC A new decree on customs enforcement of intellectual property rights, modelled after the EU Regulation No. 608/2013, entered into effect in Serbia on 1 September,2015. This new decree was published in the Official Gazette No. 25 of 13 March 2015. Under the decree, the trade mark owner’s declaration of liability is incorporated in the Customs Watch Application and is no longer required as a separate document. The new decree requires IP rights holders to provide more information on genuine goods, including technical information, distribution channels, etc. It remains to be seen how this will be applied in practice, as we have not yet filed any Customs Watch Application under the new regulation. However, at this point, the following additional information is required: • Distinctive features of genuine goods (a scanned copy of presentation/guideline on 6 United Kingdom Rachel Conroy, Boult Wade Tennant Background The Defendants proposed to import into the UK pharmaceutical products which had been sold in other EU Member States under the brand name Epanutin and affixing to them the name Phenytoin Sodium Flynn (phenytoin sodium being the pharmaceutical ingredient). The Claimant, Flynn Pharma Limited (Flynn Pharma), alleged that this would constitute an infringement under section 10(1) of the Trade Marks Act 1994 of its UK and CTM trade mark registrations for FLYNN in Class 5 because it is use of the identical sign for identical goods, and sought an injunction. The Defendants sought to rely on two defences: 1 that such imports would not be an infringement because use of the word Flynn would be a description of