Consulting Patent Attorney Julie Barrett-Major and Trade Mark Attorney Suzanne Power represented the firm at the Autumn Pharmaceutical Trade Marks Group (PTMG) conference in Dubrovnik, Croatia from 3rd to 6th October 2018.
Julie and Susie hosted a tea and round table event at the Hotel Croatia Cavtat just before the start of the conference in Dubrovnik on the 3rd October.
Julie reports on the event below:
We were blessed with fabulous weather and a particularly stunning view from the balcony of Salon 6, which formed a beautiful backdrop to our lively discussions. It was especially interesting to hear from people having such a wide range of perspectives, originating in south America through Europe to Asia/the far east.
We were particularly interested to hear everyone’s views on how/whether plain packaging could become a reality for the pharma industry, as is increasingly the case with tobacco products – and now explicitly unimpeded by the WTO. Although the motivation for such a move would be cost reduction rather than health benefits, Julie suspects there may be support from some quarters to extend plain packaging to medicines, with the consequent weakening of trade mark and other IPRs.
The participants also talked at some length about the regulatory aspects of trade mark clearance and advice, in light of the possible refusal by a regulatory authority (such as the EMA) of an ‘invented name’ for safety reasons. Perhaps worse, refusal by the regulator can occur because a trade mark, although registered at IPOs, nevertheless is effectively unusable because of a prior regulatory-approved invented name which has not been registered at IPOs or put on the market. Although rare (because most pharma marks are registered well before the marketing authorisation application reaches that stage), such a mark could not have been found in the usual clearance searches either at the IPOs or of trade marks in use, which results in a rather late and unwelcome blockage to launch.
In addition, Susie summarised a couple of cases from the European General Court, which seems to be adopting a much stricter view of confusability / similarity than the EUIPO for pharma marks. We certainly have our work cut out when advising our pharma clients on freedom to use!
Of course and inevitably, the uncertain outcome of Brexit was discussed at some length and, suffice it to say, we shall let you know when there is anything new and concrete to report. Meanwhile, our website is updated as developments occur.
The round table was enjoyed by all; each participant contributed information and views with enthusiasm. It is likely that, by popular request, we shall have an AAT round table prior to the next PTMG conference (Spring 2019), too!
PTMG is a not for profit organisation and their primary objective is to enable members to meet at regular intervals to consider problems of mutual interest in relation to the multi-faceted personality of a Pharmaceutical Trade Mark.