Risks and side effects... of the EU trade mark in companies

Transcription

1 Group Intellectual Property Risks and side effects... of the EU trade mark in companies Myrtha Hurtado Rivas, Global Head Trademarks & Domain Names Novartis International AG Bundespatentgericht Symposium, Munich,19 April 2018

2 Novartis Novartis provides innovative healthcare solutions that address evolving needs of patients and societies. We offer a diversified portfolio of innovative medicines, generic and biosimilar pharmaceuticals and eye care. In 2017, the Group achieved net sales of USD 49.1 billion, while R&D amounted to approximately USD 9 billion. We employ approximately 122,000 associates and our products are sold in 155 countries around the world. 2

3 1. Importance of EU trade marks Global portfolio: marks Novartis operates in all EU member states 18% (17537 marks) of global portfolio cover EU countries, 2% are EUTMs (2306 marks) The different natures of businesses within Novartis define the trade mark strategy in the EU EU 18% Outside EU 82% 3

4 Filing trend from 2007 to IM filings 800 Cross-divisional filings IM IM TOTAL Total 4

5 2. Oppositions at EUIPO The advantage of unitary character of EUTM enables owners to enforce rights across all member states. Novartis in numbers: as opposing party: 1711 as opposed party: 248 Total oppositions: 1959 Approximately 10% of our marks are being opposed. 5

6 I. Positive Effects 1. Simpler, quicker and cost efficient trade mark protection across the EU 2. EU wide trade mark defense and enforcement 3. EUTM related jurisprudence allows further harmonization of national trade mark legislation and jurisprudence, subsequently increasing legal certainty 6

7 II. Side Effects Trade mark owners abandon national rights Costs related to legal clearance of trade marks Costs related to negotiations and settlement of disputes Geographical scope of products or services to be protected define national vs EUTM pathway Systematic collection of proof of use non-use challenge Registrability of non-traditional trademarks Consumer perception evolves even faster today Representation Acquired distinctiveness Impact on national Offices 7

8 Exelon Transdermal Patch EUTM Generics at the time of launch 8

9 Current patches Exelon Patch New patch of generic companies 9

10 III. Risks Examination practice at EUIPO Broader basis for absolute grounds due to scope of languagues considered One similar mark in a single Member State can put TM at risk conversion is costly EUTM as basis for an International Registration? Efficient EU wide enforcement high investment of human and financial resources when facing EU wide actions Surveys to proof confusingly similarity, acquired disctinctiveness a challenge Long time lines for final decisions throughout all judicial instances Non-specialized judges at EU level 10

11 Risks Evolution of Practice Non-Traditional Trademarks

12 Representation, description and type of trademark IR Description: The mark consists of distinctive design and layout of a retail store. Colour: Metallic grey and light brown Class 35: Retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto. 12

13 Representation, description and type of trademark EUTM & Description: Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%. Class 32: Energy drinks. Description: The two colours will be applied in equal proportion and juxtaposed to each other. Colour: blue (Pantone 2747C), silver (Pantone 877C). Class 32: Energy drinks. INID: 558 (Mark consisting exclusively of one or several colors) 13

14 Representation, description and type of trademark EUTM Description: The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler. Class 10: Inhalers. In the UK, the High Court and the Court of Appeal decided that this mark was invalid due to it not being graphically represented. 1 Would the EUIPO decision be the same under the current practice? INID: Glaxo Wellcome UK Ltd v Sandoz Ltd [2017] EWCA Civ

15 Registrability of non-traditional TMs - Interpretation of the trade mark Internationally agreed Numbers for the Identification of (bibliographical) Data (INID) or Type of trade mark Type Representation of trade mark Description of trade mark Description Representation «What you see, is what you get»? 15

16 Side Effects Surveys in the Pharmaceutical areas

17 Surveys related to EUTM I. Pharmaceutical regulations require surveys to be undertaken in a pharmacovigilant way a. Vendors need to be trained to be able to follow pharmacovigilance procedure b. During the survey internally resources need to be made available to tackle any potential pharmacovigilant input II. Geographical scope of the survey III. Feasibility of cross-jurisdictional surveys IV. Costs V. Time lines VI. RoI 17

18 Conclusions EUTM will continue to be a widely used pathway for companies due to its time and cost effiency, in particular for those present in a high number of European Member States. In specific areas the EUIPO will need to review its practice as further digitalization and unprecedented impact of social media continue to change the business environment. This will allow for further innovation and development in European industries. As risks persist, a thourough assessment of the different protections paths for trade marks needs to be conducted at all times. 18

19 Thank you