Now in its third year, Class 46 is dedicated to European trade mark
law and practice. This weblog is written by a team of enthusiasts who
want to spread the word and share their thoughts with others.
WEDNESDAY, 6 JANUARY 2010 Poland: first judgment on differences between sponsorship and advertising of pharmaceutical product
A Polish court has issued its first judgment regarding TV/radio sponsored programs and advertising of pharmaceutical products.
US Pharmacia Company prepared a TV spot that was aired with a TV show. The following statement appeared in the spot:
The programme is sponsored by the manufacturer of Apap Noc medicine. Apap Noc – now also available in the big package. Combats pain and helps you fall asleep.
According to article 17(1) of the Polish Law on Broadcasting – LOB - (in Polish: Ustawa o radiofonii i telewizji) of 29 December 1992, Journal of Law (Dziennik Ustaw) of 1993, No 7 item 34, consolidated text of 19 Novemver 2004, Journal of Laws (Dziennik Ustaw) No 253 item 2531, with later amendments, sponsored programmes or other broadcasts shall be identified as such by sponsor credits at their beginning or end. Such credits may specify only the sponsor’s name, business name, trademark or contain some other identification of the business operator or its business activities, the image of a single product or service.
According to article 4 pt. 7 of the LOB, the "sponsorship" shall mean a direct or indirect financing or co-financing of the production or transmission of a programme or other broadcasts by an entity other than the broadcaster or producer of the programme, with a view to establishing, enhancing or promoting the renown of the name, business name, product or service, trademark.
The Polish Act on Pharmaceutical Law – PHL - (in Polish: ustawa prawo famraceutyczne) of 6 September 2001, published in Journal of Laws (Dziennik Ustaw) of 2008, No 45, item 271, with later amendments, does not include provisions relating to sponsorship of programs or other broadcasts in radio and television.
The Main Pharmaceutical Inspector (MPI) is the central organ of public administration authorized to ensure compliance with pharmaceutical regulations in the context of advertising. According to MPI many pharmaceutical companies are trying to skip the strict sponsorship rules for advertising of pharmaceutical/ medicinal products. MPI has already delivered several decisions requiring pharmaceutical companies to immediately cease advertising of medicines, and only US Pharmacia appealed this decision to the Voivodeship Administrative Court. The company argued that the spot was aimed at enhancing the reputation of the medicinal product. The MPI argued that it is unacceptable to add any other indications relating to both the sponsor and the subject of its activities, in particular the goods and services. Such behaviour turns sponsorship into advertising activity.
The VAC in a judgment of December 2009, case act signature VI SA Wa 1758/09, ruled that the sponsorship cannot be used an unacceptable advertisement. It has to be a form of promotion separated from advertising. The content and meaning of communication and the message broadcasted decides whether we are dealing with advertising or with corporate sponsorships. The Court also emphasized that each the advertising of medicinal product has to be made in accordance with the current Regulation of the Minister of Health on the advertising of medicinal products of 21 November 2008, Journal of Laws (Dziennik Ustaw) No 210 item 1327. The advertising of a medicinal product targeted to the public must contain the following essential information:
the name of the medicinal product
the INN of the active substanc, in the case of medicinal products containing more than 3 active substances, the term "complex product"
the dose of the active substance or active substance concentrations, with the exception of a complex product
pharmaceutical form of the product
indication or indications for therapeutic use
contraindications
identification of the responsible entity
The advertising of medicinal product targeted to the public that is made in the audio-visual form additionally has to contain a warning of the following content:
Before use read the leaflet included in the package or consult with your doctor or pharmacist, as each drug that was used improperly may threaten your life or health.
This warning shall be placed in the bottom of the ad, in terms of representing not less than 20% of its surface, so as to make the text stand out from the background plane visible, legible, motionless, placed horizontally, the distance of letters from the top and bottom edge of the background plane ad cannot be bigger than 1/2 in height and the distance between the lines of the string cannot be bigger than the height of the letters. This warning must be read clearly in the Polish language and it has to appear on the screen no less than 8 seconds. The same rules regarding the warning apply to the advertising of a medicinal product targeted to the public that was prepared as a sound message.
Advertising products targeted to the public in a static visual form, shall contain a warning stating:
Before use read the label, which includes indications, contraindications, data on adverse effects and dosage and information about the medicinal product, or consult a doctor or pharmacist, as each drug used improperly threatening your life or health.
The Warning must be placed in the bottom of the ad, in terms of representing not less than 10% of its surface in such a way as to make the text stand out from the background plane visible, legible, motionless, placed horizontally, the distance of letters from the top and bottom edges of the background plane of the ad cannot be bigger than 1/2 in height and the distance between lines of the inscription cannot be bigger than the height of the letters. In the case of advertising to the public in a visual form which includes more than one page, a warning has to be placed on the first page.
MONDAY, 4 JANUARY 2010 Latest Trademark World The December 2009/January 2010 issue of Trademark World has been published. You can read the full contents of this issue here.
While much of the content is directed to transatlantic issues, there is still plenty to interest the European reader. In particular, in "Understanding Initials" Franck Soutoul and Jean-Philippe Bresson (of Paris-based Inlex) have analysed current European Community practice regarding short trade marks. Also Kate Swaine and Alice Stagg (Wragge, UK) summarise the present law and practice regarding the extent to which a defendant in infringement proceedings can plead the use of his/hers/its own name.
TUESDAY, 29 DECEMBER 2009 Spain - Court donates fakes to an NGO.
According to the newspaper La Vanguardia, the Local Police of Cambrils has succeeded in convincing the Reus Criminal Court to donate 200 fake garments to the NGO Càritas. The donated goods were previously declared counterfeits by a final judgment. No surprise that, given the large number of counterfeited goods yearly seized in the tourist area known as the Costa Daurada (where Cambrils is located), the storage of these materials once the Court cases are concluded has become a nuisance for the Cambrils Municipality, the Court and the local Police.
According to the press article, the aggrieved trademark owners acquiesced in the humanitarian destiny of these Dolce Gabbana, Lacoste and Burberry fakes. It is also stated that the Local Police of Cambrils aims to make of the donation the usual destination of Court-declared faked goods. Up to date, fakes are normally destroyed (or simply thrown in the dump).
TUESDAY, 29 DECEMBER 2009 Greece - "skodo" creates a link with SKODA and not in a nice manners says the Greek Communication Review Board
The Greek Communication Review Board (SEE), has been getting busy this month. In a recent
matter, it reviewed a tv commercial to advertise the DAIHATSU TERIOS in Greece.
According to the decision, the said tv spot included the statement "χωρίς skodo στην αλήθεια" (note: skodo is not in Greek characters), pronounced "horis skodo stin alithia" and meaning "without any discount to the truth". Now, although, "σκόντο" (skodo) is indeed a colloquial word meaning discount, the Board took the view that, particularly since latin characters were used, together with a particular typefont, the above statement created a conceptual link to rivals SKODA and not in a very nice way (i.e, there appeared to be no explanation as to where that discount to truth exists). Accordnigly, the Board held that the said advertsing campaign should be revised. The decision can be found here.
This
Class 46 member admits he missed the tv spot. However, the Board does
seem to be right in this one and it is worth wondering why anyone would go into the trouble of taking this sort of advertising risk, when
good old (and actual) comparative advertising might have done a much
better job.
A personal note: Deepest condolences to our good friend Jeremy Phillips for the loss of his mother.
In a decision dated 11 December 2009, the Swiss Federal Administrative Court held that SNOWSPORT cannot be protected as trade mark for tires (applicant was Pirelli), because the sign indicated the potential use of tires - tires suitable for sporty driving on snow. The applicant argued in vain that SNOWSPORT is usually understood as skiing, snowboarding, sledding, snow-show walking and the like, but not driving a car on snow - particulary since there are no rallies in Switzerland. The decision, which comes as no surprise in view of the Swiss case law, can be found here (in German).
However, the real reason for this post was not this (fairly unremarkable) decision. Rather, it serves as a hook to wish all the readers of Class46 a Merry Christmas and a Happy New Year, and hopefully, some SNOWSPORT over the holidays - of the kind the term usually indicates (although, I wouldn't mind racing a souped up Mitsubishi across finish woods, either).
Very beautiful image of the Matterhorn and Venus by Problemkind, Creative Commons licensed, link leads to higher resolution image.
WEDNESDAY, 23 DECEMBER 2009 Russia: burgerking.RU does not belong to the famous burger chain
Burger King have launched a legal action over the registration of the domain name burgerking.ru against Talco Aktiengesellschaft (Netherlands) and Elvis-Telecom. The former has been the right holder of the domain name since 2000, when it was registered by Elvis-Telecom. Burger King, who had planned to open their first restaurant in Moscow in December 2009, are suing for unlawful use of the trade mark and claiming for a relief under the category of a “protection of patented rights”.
Although cyber squatters are frequently successful in obtaining large sums of money for the sale of a registered domain name to the owner of the relevant trade mark, they may deeply regret the registration of burgerking.ru in the year 2000. Part 4 of the Russian Civil Code (in force as of 1 January 2008) provides that a right holder has an exclusive right to use a web address corresponding with the trade name. According to the database of Rospatent, Burger King registered their first trade mark in Russia in 1994 and have, therefore, become able to benefit from the above right. Moreover, they may obtain compensation up to 5 million roubles (€1177452/ $1688345).
Text of the original article can be found here (in Russian)
WEDNESDAY, 23 DECEMBER 2009 Spain – Want to recover your domain name? Do not go to Court.
In a recent Judgment by the IP-specialized Chamber of the Barcelona Court of (case 182/2009), the Court tackles an interesting question: is it possible for a Spanish Court to order the transfer a domain name from the respondent (alleged cybersquatter) to the claimant (right holder)?
According to the reported Judgment, the answer is: simply said, no.
Based on section 34.3 (e) of the Spanish Trade Mark Act (that prohibits the non-consented used of a third party trademark “on telematic communication networks and as a domain name”), the Judgment stated that all what a Court is entitled to do in a trade mark infringement case involving a domain name registered by an alleged cybersquatter is to cancel it. According to the Judgment, it is therefore beyond the Court powers to order the transfer of the challenged domain name to the claimant.
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