ITMA 322 APRIL 2005

More documents

Recommendations

Info

ITMA BUSINESS tacts. Delegates are drawn from a very wide range of backgrounds including brand owners, barristers, law firms, investigators, anti-counterfeiting technology companies, police and trading standards authorities, HM Customs and Excise, university academics and the Patent Office. The conference also serves as an important reminder to attendees of the practical constraints and pressures that law enforcement organisations in the UK are under, and the dedication of many individual members within these organisations. Many things have changed since 1980. West Ham and Nottingham Forest fans continue to believe that PTMG Autumn 2005 Conference, Cannes It’s official. “The internet is a headache” confirmed the Deputy Secretary General of the World Customs Association at this year’s PTMG autumn conference. Many of the speakers in Cannes discussed this symptom and the other problems arising in the field of pharmaceutical counterfeiting and the seeming conflict between the private rights of brand holders and public interests in using the internet, online auctions and credit cards. Nikolay Livadkin of Louis Vuitton began the conference by discussing the problem of counterfeit sales online. He commented that up to 30% of counterfeit sales may be via the web, in an arena which is evolving fast, but where the legal position is often unfavourable, public authorities unmotivated and brand owners often uncertain of the factual position. He feared that the main beneficiary of counterfeits was organised crime and hoped that there would be more involvement by auction site companies in dealing with the problem. Jyrki Nikula of eBay responded to this, by stressing that they are simply a venue for trade, but that they do take active measures to protect IP rights, much of it on a voluntary basis. They educate users, search for suspicious items, let rights holders request the removal of infringing items, suspend offenders, cooperate with law enforcers and provide information on certain sellers. The attorney J Scott Evans surfed into the lecture room to discuss the problems of counterfeiting and spoofing on the web. He stressed that companies should talk and work together with competitors, law enforcers, legislators, the public and internally, and that better communication and co-operation is required. He provided some compelling statistics, such as that in one case 13 arrested people were found to operate 4,600 websites and that 40% or more of pharmaceuticals in some countries are counterfeit. This issue was followed by Eli Lilly and Company’s Bruce Longbottom who provided useful substantive suggestions for dealing with a problem he compared to weeding. Even if some weeds come back, you have to keep weeding to reduce the problem. To tackle the weeds, he particularly recommended criminal enforcement, working with law enforcers, UDRP actions, seeking stronger laws, educating the public better, sharing information within the industry and contacting internet auction companies, customers, the glory days will return one day, and the recent success by the English cricket team has helped to ease the pain for their long-suffering supporters. Brand owners, enforcement groups and consumers today face an increased risk of counterfeits and IP related fraud, most of which originates from and/or are distributed by well organised criminal networks. ACG now represents the interests of over 200 companies in 30 different countries and its core objectives — lobbying, awareness and networking — remain as relevant today as they did in 1980. Steve Beale, Unilever plc and Forest fan ISPs, and possibly credit card companies. The complexities of key words on the web were then discussed by Nick Wood of Com Laude. Like other new technology issues, this is resulting in IP infringement litigation, although he believes creative solutions and working flexibly with search engines may lead to better results. He commented on the benefits and problems of key words, the steps taken by search engine companies and the litigation against them. He believed that brand owners should understand and profile the people who surf for their brands and those who infringe them, they should get to know the search engine companies, how they differ, the litigation against them and whether there are more appropriate targets for litigation. When counterfeits are purchased online, credit cards are often used and Lewis Segall of VISA explained how the credit card system operates. The contracts with the banks issuing the cards prevent the illegal use of cards, but moreover, the retail merchant’s bank is likely to terminate its contract with the merchant, if there are many charge backs against the merchant, where purchasers refuse to pay. The internet is not simply a source of counterfeits, but also of inaccurate medical information, as Professor Trevor Jones explained. In a poll 84% of people said that they trusted information on the internet, but only 51% said they trusted information from pharmaceutical companies. Patients are acquiring medical information from questionable sources and are not taking their prescribed pills as a result. The answer he feels is more information from GPs, so patients have an information relationship with their GPs which, in turn, will help preserve trade marks. Pharmaceutical counterfeits do not simply cross “virtual” borders, as Kunio Mikuriya explained in a talk on the World Customs Organisation. WCO is improving the legal framework, legal powers, interparty co-operation and information sharing, as well as analysing the risks. They hope to raise the awareness of the public and governments, develop legal standards and controls and work together with businesses, in what they regard as a war of many long battles. WIPO was also represented at PTMG: Matthijs Geuze, along with three other people in WIPO’s “enforcement section”, is active in educating the public and helping states, the exchange of information 4 ITMA Review December 2005
and the co-ordination of official bodies. He recommended the forum on the WIPO website that allows the exchange of information, co-operation and training benefits. Christophe Zimmermann of the European Commission gave a useful pro-active, practical guide to customs seizures and stressed that brand owners should set up customs watches and co-operate more actively with customs. More fake medicines are being seized, but counterfeiters are switching routes, improving their concealment methods, securing entire trafficking routes and setting up complex structured organisations. Setting up customs watches, he believed, is a step in the right direction in the protection of the health of our families and society as a whole. Practical guidance was also given on packaging security by Geoff Power of GSK. Different strategies and different tools are appropriate to different situations and he discussed bar codes, RFID, overt protection using holograms and inks, secret security measures and forensic tags which each have their benefits and their disadvantages. Creativeness has led to several successful prosecutions connected with Glaxo. Stacey Hallerman of Pfizer then discussed the benefits of branding clinical trials and protecting those names. Branding can give value, a sense of community with a patient, assist with data analysis and have industry benefits. Often the exhibition booth concerning a clinical trial may be more visited than that of the finished product. It may well be appropriate to do Community Trade Mark Renewals 1 November 2005 marked an important milestone in the ten years since OHIM opened its doors in Alicante. Proprietors of registered Community trade marks filed back in 1996 now have the opportunity to apply to OHIM for the renewal of these rights for a further ten-year period. Time frame Applications to renew a registered CTM can be made before OHIM at any time during a six-month period which expires on the last day of the month in which the CTM itself expires. If the renewal application is not submitted within this initial six-month period, a further six-month period is available, with a 25% surcharge added to the corresponding renewal fee, up to a maximum of €1,500 per application. E-Renewal Of particular interest at this time will be the two electronic renewal interfaces, which have been developed as part of OHIM’s ongoing e-business programme, and which will offer CTM proprietors the maximum degree of flexibility when renewing their CTMs. A publicly accessible e-renewal form with both single and multiple filing options is available on the Office’s homepage, and registered users of MYPAGE have the possibility of using the Renewal Manager ITMA BUSINESS availability searches for the names for clinical trials and register those names. Regulatory affairs for pharmaceutical marks was discussed by Beatrix Friedeberg of AstraZeneca. The US and EU authorities both have the same aims of ensuring safe dispensing, but adopt different strategies, which she compared. In relation to the EMEA, it may be worth asking colleagues elsewhere in Europe if they foresee a problem with a proposed name, reviewing the EMEA website for other approved names, starting the process early and at first seeing if the preferred name is allowed, before trying others (whilst in the US it may be more appropriate to start by filing for two names for the same product). Finally, infringement issues concerning get-up were discussed by David Bernstein of Debevoise & Plympton and Mary Lehany of Novartis. They considered what evidence to file to prove confusion, such as evidence of motive (including what the defendants have tried in the past), evidence to show how they could trade without using your get-up, survey evidence, evidence of actual confusion on chatrooms etc, and evidence of how products will look side by side on shelves. They advised the protection of copyright, designs and trade marks for get-up where possible and the need to act quickly and talk internally as well as with competitors when faced with supermarket own brand products. James Cornish, Page White and Farrar, james.cornish@pagewhite.com which automatically lists all CTMs in their name which are pending renewal. Fees The recent fee reductions have seen a significant decrease in the cost of a CTM renewal, making a further ten years of Community-wide protection a more attractive and cost-effective option than ever for businesses worldwide. Electronic renewal of a CTM costs €1,350, with a fee of €1,500 for proprietors who opt to use the other mail, fax and personal delivery methods. Prospects OHIM looks forward to a positive response from its users as the CTM renewal period commences, with around 40,000 renewal applications expected in the first two years of activity. With this in mind, the Office has worked hard to ensure that all systems relating to the renewal procedure are fully operational on 1 November, and we hope that this effort will benefit our users as they extend their CTM protection into the next decade. More Information Link to OHIM’s website: http://oami.eu.int/ Link to e-renewal: http://oami.eu.int/en/erenew.htm Link to List of Fees: http://oami.eu.int/en/office/marque/taxes.htm December 2005 ITMA Review 5
Page 1 and 2: Contents ITMA business Public Relat
Page 3: This note was written before the ev
Page 7 and 8: ITMA BUSINESS and Mrs Ramage gave a
Page 9 and 10: Features What’s in a Brand? Brand
Page 11 and 12: Design & Copyright The Costs of Cop
Page 13 and 14: would be off the hook in relation t
Page 15 and 16: Case comments On Your Bikes In the
Page 17 and 18: fully registered if there were an a
Page 19 and 20: Stone Island CASE COMMENTS Sportswe
Page 21 and 22: People Alexander von Mühlendahl re
Page 23 and 24: Proposed publication of tutorial ma

ITMA 322 APRIL 2005

You also want an ePaper? Increase the reach of your titles

Delete template?

Save as template?