PTMG 92nd Conference - March 14th - 15th 2016 Pharmaceutical Trade Marks on a London Stage Kathy Wright, Astellas Pharma Europe Ltd. Back in London for the 2nd time in two years, the prestigious Savoy Hotel was the meeting point for PTMG Spring 2016. As delegates old and new entered the auspicious Ballroom for the opening of the conference our Chairman’s remarks were delightful and lighthearted with a reiteration of continuing to keep the conference intimate. The conference continues to prove very popular and, attracting high levels of attention, can become oversubscribed. Frank Meixner has quickly settled into his role and we can be confident that his guidance at the forefront of the organisation will be nothing but promising. Professor Dinwoodie, Oxford University kicked off the conference with the Keynote presentation on the topic of Territoriality in European Trade Mark Law. With his fluid and witty style the professor was able to using various trade mark cases to emphasis his points - show how territoriality is still very much practiced within the EU Graeme Dinwoodie in spite of the fact that this practice should well be on the wane. The unitary nature of the EUTMR (the CTM name changed on 23rd March 2016) has been used as model to other foreign regions, eg the Eurasian Customs Union (Russia-Belarus-Kazakhstan) or the Trans-Tasman (Australia/New Zealand) and even the African Unions (OAPI/ARIPO) to name a few. However, Lusophone marks for Portugese speaking countries was generally unheard of by the audience. In spite of these unitary type trade mark systems individual country trade mark disputes were, under their own national trade mark laws, seen to be superseding this unitary nature and pulling towards territoriality in the decisions that would eventually be handed down. The continued social changes within the EU therefore makes this territorial pull relatively outdated with the professor emphasising and highlighting that the higher decisions in favour of trade marks that are used only in one territory should not necessarily be dictated to the rest of the region. Next up was Laura Scott of William Fry who brought us the International Case round-up. Personally, it felt like there was not as many pharmaceutical cases as would have been preferred but of the cases highlighted was the case of acquired distinctiveness in the KIT KAT™ 4fingered bar. Many in the UK would consider this Laura Scott iconic chocolate bar to be highly distinctive but in the eyes of the law, under the ruling of Arnold J to be precise, the trade mark proprietor has not been able to prove this is so. Another interesting case was the so called David & Goliath court of appeal action between Fox TV of America and the Glee Club (UK) regarding use of the trade mark name GLEE. The ‘David’ in this case, the Glee Club, had already won a trade mark infringement case two years’ prior and has just won the appeal filed against them by ‘Goliath’, Fox TV. Cases from Australia, Canada, Japan and the US rounded out this always welcome item on the agenda. This reporter had to miss the cocktail reception due to her son’s milestone celebration of 13 years on this earth and therefore can only rely on the reports heard the following morning in which the following phrases were used, eg: ‘excellent dinner’; ‘lovely vegetarian option’; ‘amazing atmosphere’; ‘the bar’ and ‘2 in the morning!’ and of course, ‘Paris, Spring 2017’ ahhh! The new day brought fresh presentations and the first one was a firm favourite by David Gilat of Gilat, Bareket & Co. It opened with a video showing well known brands that were being used in a supposed non-trade mark manner which immediately captured and held the audience’s attention. Fittingly titled “Brand David Gilat Infringement without Actual Trade Mark Use” this was all about the well known NESPRESSO™ television advertisements using George Clooney as their star and a little known Israeli company’s – Espresso Club - send up of the ad whilst trying to promote their own coffee maker. David’s clever opening video generated a message of what brand can mean. Brands/TM’s are a means of communication between the market and the end user; bridging a gap between the two whilst playing on emotions using a myriad of promises, assurances and messages. In this new possible landmark case is there actual trade mark infringement where the trade mark (NESPRESSO) has not been used ? The implication is there and the entire Israeli ad alludes to the NESPRESSO ad but is it classic trade mark infringement or infringement based on the Gestalt principle, where one might be seen to be trespassing on the brand in a broader sense, the goodwill generated from the brand. David concluded that under this Gestalt principle there is infringement, however what will the law decide? Watch this space … Terry Dixon of GSK brought alive all that encompasses the transition of a prescription only product to the OTC (over the counter) world. From the industry perspective the question of rebranding or revival of a brand is a subject that has to commonly be considered. If we think of SNICKERS (formerly Marathon), or STARBURST (Opal fruits) firm favourites on the UK sweet market the brand owners would Terry Dixon have had to consider the equity in the old brands and then move forward, or not, with the need to reinvigorate the equity. Of course, this journey would not be without its trade mark challenges: clearance, finding an adequate global brand with the required coverage and the challenges from pre-existing 3rd party rights. These challenges in themselves opened the door to unique collaborative opportunities for web designers, 7