International Update EUROPEAN UNION Chris McLeod and Viktoria Vakratsa, Elkington + Fife The General Court has ruled in favour of Boehringer Ingelheim Pharma GmbH & Co. KG (Boehringer) following an appeal by Laboratoire de la mer (Laboratoire). Boehringer owns an EU trade mark registration of RESPIMAT covering pharmaceutical preparations and instruments and apparatus for inhaling pharmaceutical preparations in classes 5 and 10. Boehringer opposed Laboratoire’s EU trade mark application for the mark RESPIMER covering pharmaceutical preparations and medical apparatus and instruments for treatment of symptoms in the respiratory system in classes 5 and 10, and other goods in class 3. Decision The General Court has upheld the decision of the Fifth Board of Appeal (the Board) of January 2016 and rejected the EU application on the grounds of likelihood of confusion under article 8(1)(b) of EU Trade Mark Regulation No. 207/2009. Laboratoire argued that the Board’s decision was lacking legal basis, because it failed to explain why it did not rely on a prior French trade mark office decision, rejecting an analogous opposition by Boehringer to the RESPIMER mark. The General Court confirmed the decision of the Board in that national decisions are taken into consideration without being given decisive weight, and that the EUIPO is not bound by national court jurisprudence. In response to Laboratoire’s second plea, the Court could not find sufficient supporting evidence to overturn the Board’s decision and thus upheld that general references to documents cannot compensate for failure to set out the essential supporting evidence. The Court rejected Laboratoire’s claim of alleged similarities between the goods in question. Another point raised by Laboratoire was that the Board had failed to take into account the conceptual differences between the two marks. In essence, the Court held that despite the common component ‘RESPI’, the suffixes ‘MER’ and ‘MAT’ were considerably different, as the former refers to the French term for sea while the latter may be considered to mean ‘material’ or ‘automat’. This difference, according to Laboratoire, was sufficient to demonstrate a lack of likelihood of confusion. However, the Court upheld the refusal of the mark due to the visual and aural similarities and confirmed that marks should be assessed in their entirety. Laboratoire concluded its pleas by arguing that the Board’s assessment of the 4 comparison of marks was misconstrued, as the earlier mark was used in relation to a combination of products. In fact, the genuine use assessment of the earlier trade mark showed that the mark had been used in relation to a combined product, consisting of an inhaler under the trade mark Respimat, in conjunction with the pharmaceutical preparation Spiriva Respimat. However, the Court confirmed again the Board’s position that the comparison must be made between marks as registered and applied for, whether or not they are used in combination with other marks or indications. Comment Laboratoire’s arguments did not persuade the General Court to overturn the Board’s decision. Arguably, the relevant public, with a higher level of attention due to the nature of the goods, might be confused due to the overall similarities between the marks. It is also worth highlighting the different approach of the EUIPO from that of the French trade mark office, as it confirms a lack of harmonisation between the EUIPO and national trade mark offices. INDIA Samta Mehra, Remfry & Sagar Deceptively similar trade marks have by and large met restraint, more so when these pertain to the pharmaceutical domain. A recent case of GlaxoSmithKline Pharmaceuticals Ltd. & Anr. v Sarath Kumar Reddy reiterates the principal of ‘exacting judicial scrutiny’ in case of pharmaceutical products. At the same time, interestingly, this case witnessed the Court’s refusal of grant of punitive damages to the Plaintiff, marking this as a significant development. The Plaintiffs - GlaxoSmithKline Pharmaceuticals Limited and Smithkline Beecham Limited (GSK group), engage in the business of manufacturing and marketing a wide range of pharmaceutical/ medicinal preparations and healthcare products, and are proprietors of several registrations for GSK and other related marks in various classes such as 1, 3, 5, 9, 10, 16, 21, 29, 30, 32, 35, 41 and 42. The said registrations are valid and still in force. In 2009, the Plaintiffs learnt of a company named GSK Life Sciences Private Limited through the records of the Registrar of Companies. On enquiries, it was found that the Defendant - Sarath Kumar Reddy, is a Director of the said company and that the company’s registered office was a fake address and that no balance sheet or annual returns had been filed by the said company. Thereafter, the plaintiffs filed a complaint under the Companies Act to declare the company as defunct. The said complaint is stated to be pending. On learning about the use of GSK as part of the trading style by the Defendant and also as a trade mark similar to the one used by the Plaintiffs, a Cease & Desist notice was addressed to the Defendant which was responded to by stating that GSK in the company GSK Life Sciences Private Limited was an anagram taken after the Director’s initials – Dr. Gadikota Sarath Kumar Reddy. This led to a case being filed in this court by the GSK group against this entity. In 2013, this court passed an ex parte ad-interim injunction restraining the defendant from using GSK or any other mark similar to Plaintiff’s name/mark/GSK logo. The instant case adjudicates on the suit for permanent injunction moved by the Plaintiff, restraining infringement of trade mark, passing off, damages etc. Perusing all material offered by the Plaintiffs, the Court agreed on their proprietorship over the GSK and related marks. The defendant’s products were also offered to the Court for assessment of similarity re adoption and inscribing of the GSK logo. Holding the infringing products to be deceptively similar, the Court ruled in favor of the plaintiffs restraining the defendants from using GSK as part of their trading style and/or the similar logo by itself or in conjunction therewith. The Plaintiffs had also prayed for grant of punitive damages. However, the court observed that besides the copies of packaging of infringing products, there was no other material which would indicate the extent of sales by the defendant. Further, the loss to Plaintiff, if any, on account of sales by the Defendant also could not be quantified. Thus, the Court rejected their prayer for grant of punitive damages. This is an interesting development and marks a shift from the recent trend. KAZAKHSTAN PETOSEVIC Kazakhstan’s Ministry of Justice has drafted a new law amending and supplementing a number of intellectual property laws and regulations, with an aim to make Kazakhstan’s IP legislation fully in line with the Organization for Economic Cooperation and Development’s (OECD) standards in the area of IP protection and with the Singapore Treaty on the Law of Trade marks. The Ministry of Justice has recently held public hearings on the draft law, which aims to introduce the following changes: • A single-level system for the registration of IP rights, i.e. allregistrations to be handled by the National Institute of Intellectual Property (NIIP), as opposed to the current two-level system where both the NIIP and the department for IPrelated rights within the Ministry of Justice are involved; continued on next page