TM TM TM TM TM TM Pharmaceutical Trade Marks Group May 2016 Editorial: BREXIT, what else? As a British passport holder living in France for more than 25 years, I am, as you might imagine, more than a little concerned by the upcoming United Certainly, Kingdom referendum on the 23rd of tJune. Despite the appeal lodged by a British WWII army veteran living in Italy, all those of us annual small townmore An who left the UK festival ithan 15 years ago are not eligible to vote, even though our lives will be directly affected by the outcome of the ofte vote. Losing European Union citizenship Of course, should the leave campaign be successful, like two million other tBritish citizens living in Europe, I will have to re-apply to reside in the country my children call home. It begs the question: where have all the dreams gone? The student enthusiasm of my generation, embodied by the fall of the Berlin wall in 1989, our desire to continue to better integrate with our neighbours and the naïvety that the advantages we Too often rcould see would be appreciated by all. For trade mark practitioners of course, the European Union trade mark (formerly the More surprisingly, insuch ambitiousparts of that CTM) was just one more recluse goal. Harmonisation and a structure which enabled new member c states to continue to join the system on an equal footing did not Indeed linguistic seem utopian at the time. This mechanism continues to evolve d and remains much admired around the globe as a positive example of a level playing field for competitive activity. The deeply anguishing times we live in today are no worse than those my grandparents knew: millions of displaced people the Commission and the throughout the continent and beyond, more migrants than we P have recently witnessed. And yet, having lost so much and so many loved ones, they all, whatever their nationality, wanted to rebuild something anew and to aim for an ideal. How is it that today, sharing what we have with others has become nigh-on impossible? How can we reverse this years, ourfor those that However, in the past 25 tendency continent has come behind us? Thankfully, the PTMG family continues to build m the bridges that politicians seem incapable of doing and our shared common interest overrides all other individual My heart goes out to trade considerations. m Nonetheless, within the PTMG committee, we have our own Brexit to adjust to as we say good-bye to Rosina Baxter of Benckiser, a long standing committee member whose first meeting took place on 28 September 2005. I understand that we shall have the pleasure of her company in Oslo and who knows, we may even be able to continue to pick her brains for the catchy conference titles she has penned in the past. Meanwhile, I know I speak for all in wishing her a happy, healthy and well-earned retirement. Vanessa US Update Jonathan S. Jennings, Pattishall, McAuliffe [1] On 23 March 2016, the 4th Circuit issued an opinion in Belmora LLC v Bayer Consumer Care AG & Bayer Healthcare LLC, holding that brand owners need not own or use a trade mark in the United States in order to have standing to bring a federal suit for unfair competition in cases involving misrepresentation. This case involved Bayer Consumer Care’s sale of a pain reliever in Mexico under the trade mark FLANAX. Bayer does not own a US trade mark registration for FLANAX and does not sell FLANAX products in the US Instead, Bayer markets a comparable naproxen sodium pain reliever in the US under the trade mark ALEVE. Without Bayer’s authorization, Belmora LLC began selling a naproxen sodium pain reliever in the US under the FLANAX mark in the same trade dress as Mexican FLANAX and registered the FLANAX mark with the USPTO. Belmora marketed its product to Mexican-Americans and implied through advertising to its distributor and retail customers that Belmora’s FLANAX was the same as Bayer’s Mexican FLANAX. Bayer objected to Belmora’s use and registration of FLANAX as a misrepresentation of source and petitioned to cancel Belmora’s registration. After the Trademark Trial and Appeal Board of the USPTO granted Bayer’s petition to cancel Belmora’s trade mark registration for FLANAX, both parties brought suit in federal court. The District Court granted Belmora’s motion to dismiss Bayer’s claims and reversed the USPTO’s cancellation of the US registration for FLANAX, essentially finding that a brand owner must use a mark in the US to protect its rights. The Fourth Circuit in turn reversed the District Court and found that Bayer did state a claim against Belmora for passing off, unfair competition and false advertising, as well as for cancellation of the registration for misrepresentation, even though Bayer did not sell FLANAX in the US. Relying on the Supreme Court’s 2014 landmark decision in Lexmark v Static Control, the Fourth Circuit held Bayer’s claims fell within the Lanham Act’s zone of interest and that Bayer had alleged injuries that were proximately caused by Belmora’s actions. The court noted that a defendant who passes off its products as the plaintiff’s is liable under Section 43(a) of the Lanham Act, regardless of whether the plaintiff actually owns a US trade mark. The Fourth Circuit indicated hesitance to hold for hypothetical brand owners in the future who may assert an unfair competition claim when only “a few isolated consumers . . . confuse a mark with one seen abroad,” clearly attempting to draw some boundaries on the scope of its holding. Brand owners who use different marks in the US and other countries now have support for policing cases of misrepresentation and passing off in the US. It remains to be seen how far this precedent will extend, for example, in situations where the use of the marks is in countries that are not as close to the US as Mexico or Canada. [1] Members of the author’s firm represented Bayer in this case.