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COMPARATIVE ADVERTISING A review of the ECJ’s recent clarifications on comparative advertising in Europe, with general guidelines for those who wish to use a third party’s trade marks in their advertising ......................... 1 GENERIC MEDICINES LEGISLATION The absence of legislative clarity on marketing and distributing generic drugs in the 2004 Medicines Directive is significant, and has led some Member States to make their own interpretations ................... 4 TESTING THE LAWS OF TRANSIT In the aftermath of the Counsel Regulation (EC) which allows EU customs authorities to take action against counterfeit goods in transit in the EU customs territory, this article looks at the courts’ application of the 2003 regulation ............... 6 “FAMILIES” OF TRADE MARKS A recent Court of First Instance (CFI) ruling suggests that repetition of a basic element in several marks (such as the ‘easy’ organizations— easyJet, easyInternetcafe, easyCar, etc.) can enhance their individual and collective distinction ............ 8


Legal Issues in Intellectual Property

Comparative Advertising in Europe – A New Dawn?
by David Stone and Nicholas Bolter Comparative advertising, where the advertiser’s product or services are compared favourably with those of a competitor, is well known in the United States. But European trade mark laws regarding the use of third parties’ trade marks are more strict, and make comparative advertising more difficult. Recent cases decided before the European Court of Justice (ECJ) have provided some clarity to the rules regarding use of third party trade marks and have made it easier for businesses to use trade marks of others in comparative advertising.

The Recent Cases
In Gillette Company v LA-Laboratories Ltd C-228/03, ECJ (17 March 2005), Gillette had sought an injunction in Finland to stop LA-Laboratories from selling its rival PARASON FLEXOR razor brand with a label saying “All Parason Flexor and all Gillette Sensor handles are compatible with this blade”. Gillette argued that this constituted an infringement of the registered trade marks GILLETTE and SENSOR. Article 6(1)(c) of the Trade Marks Directive states that a third party may refer to another’s trade mark if it is necessary to indicate the intended purpose of a product or service. The ECJ held that comparative advertisers have a duty to act fairly in relation to the legitimate interests of the trade mark owner. The use of another’s trade mark would not be in accordance with honest practices in industrial and commercial matters if, for example: (i) it was done in such a manner as to give the impression that there was a commercial connection between the third party and the trade mark owner;
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Joining the .mobi era ...............9 GCC Update ............................10 IP Europe News Briefs ............11


Comparative Advertising in Europe – A New Dawn? (ii) it affected the value of the trade mark by taking unfair advantage of its distinctive character or repute; (iii) it entailed the discrediting or denigration of that mark; or (iv) where the third party presented its product as an imitation or replica of the product bearing the trade mark of which it was not the owner.

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VIPA manufactures components compatible with SIMATIC controllers. In 1988, VIPA adopted a numbering system “virtually identical” to that used by Siemens.

The ECJ found that the fact that a third party used a trade mark in order to indicate the intended purpose of the product which it marketed did not necessarily mean that the third party was presenting its products as being of the same quality as, or having equivalent properties The ECJ decided that comparative In this case, Lidl and Colruyt both to, those of the trade mark advertising is permitted so long as operate food stores, including in owner’s products. LA-Laboratories’ it does not take unfair advantage Belgium. Colruyt published

is to stimulate competition for the benefit of consumers: the effect of advertising on consumers is therefore a necessary element in determining whether a comparative advertiser has taken unfair advantage of a Siemens brought proceedings third party’s mark. against VIPA, alleging that it was taking unfair advantage of In Lidl Belgium GmbH & Co KG v Siemens’ reputations in its Etablissementen Franz Colruyt programmable controllers. On appeal, NV Case C-356/04, (29 March the German Bundesgerichtshof 2006), the ECJ again considered referred two questions to the ECJ, the misleading and comparative asking, in short, if VIPA’s adoption advertising Directive 84/450/EEC. of Siemens’ numbering system The ECJ has yet to give its decision was “taking unfair advantage” of in this case, but Advocate General Siemens’ marks and, in assessing Tizzano has delivered his Opinion. that question, should the benefit to The majority of Advocates consumers and the advertiser be General’s Opinions are followed considered? by the ECJ.

As boundaries of what is permitted in Europe are pushed further, comparative advertising will undoubtedly lead to further litigation.
advertising will now presumably of the reputation of a trade mark, be found to be lawful. trade name or other distinguishing marks of a competitor. The more recent case of Siemens AG v VIPA Gesellschaft für Visualisierung The ECJ upheld VIPA’s use. VIPA’s und Prozeßautomatisierung mbH, adoption of Siemens’ numbering Case C-59/05, ECJ (23 February system served to inform the public 2006), related to Council Directive that the two products in question 84/450/EEC of 10 September have equivalent features. The 1984 concerning misleading and inclusion of the word VIPA in comparative advertising. VIPA’s numbering system ensured that consumers were not given a Siemens manufactures programmable false impression of any connection controllers under the name between VIPA and Siemens. SIMATIC, together with a system of order numbers consisting of Finally, the ECJ held that the very several capital letters and numbers. purpose of comparative advertising 2 advertisements comparing its prices to those of other supermarkets. The advertisements included a “price index”, suggesting a saving of up to €293 per annum compared to Lidl across a basket of goods. Another advertisement asserted that Colruyt’s BASIC line of products is cheapest across the market. Lidl sued, and the Brussels Commercial Court referred five questions to the ECJ, in short asking if the “price index” advertisements and the “cheapest across the market” advertisements are legal. Article 3(a)(1) of the Directive
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Comparative Advertising in Europe – A New Dawn?

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provides that comparative advertising Conclusion will be permitted where the It is likely that the boundaries of following conditions are met: what comparative advertising is permitted and what is not will be it is not misleading; and (a) pushed further over the coming years but for the time being, a business (b) it compares goods or services that wishes to use comparative meeting the same needs or advertising should consider the intended for the same purpose; and following general guidelines when using a third party’s trade marks: (c) it objectively compares one or more material, relevant, verifiable 1. The use of the trade mark and representative feature(s) should be in a manner that of those goods or services, ensures that consumers appreciate which may include price. that there is no commercial connection with the trade In his opinion, Advocate General mark owner, for example by Tizzano supported “price index” prominent use of the comparative comparisons, noting that in the advertiser’s trade marks in supermarket sector, these will be addition to the third party’s mark; more useful to consumers than express price comparisons of 2. The comparative advertiser particular goods. Further, the should ensure that the use of Advocate General opined that it is the third party’s trade mark

should compare goods or services meeting the same needs or intended for the same purpose. In addition, any comparison between goods should compare objectively one or more material, relevant, verifiable and representative feature(s) of those goods or services, which may include price. For example, non-flexible airline tickets should be compared only with other non-flexible tickets, rather than more costly flexible tickets. Comparative advertising is undoubtedly an area that will lead to further litigation as the boundaries of what is permitted are pushed further. However, fair comparisons between the goods and services of one enterprise with those of another are permitted and, with a little care,

The European Court of Justice held that the very purpose of comparative advertising is to stimulate competition for the benefit of consumers.
not necessary for the advertisement itself to list the goods and prices compared, so long as consumers are able to obtain this information (for example, from a website). Price comparison is one form of comparative advertising that is common throughout Europe. Accurate price index comparisons can assist consumers in making informed choices and are therefore to be welcomed. The Advocate General’s clear guidance will assist in the development of this form of advertising in EU Member States that have not, to date, encouraged it. does not adversely affect the value of the trade mark by taking unfair advantage of its distinctive character or repute or by discrediting or denigrating the third party trade mark. For example, humorous advertising that includes a third party mark should be undertaken with caution; can provide a powerful marketing tool for businesses and enable consumers to make informed decisions when selecting competing products.

3. The comparative advertiser DAVID STONE is a Partner in the London should not present its product office of Howrey LLP. He can be reached as an imitation or replica of the at StoneD@howrey.com. trade mark owner’s product; and NICHOLAS BOLTER is a Senior Associate 4. The comparative advertisement in the London office of Howrey LLP. He should not be misleading and can be reached at BolterN@howrey.com. 3

A Cure for Generic Medicines Legislation?
by James Irvine and Jay Sahota The 2004 Medicines Directive was widely touted as a balanced and polished reform of the law relating to medicines in E u r o p e . U n f o r t u n a t e l y, one of the key pharmaceutical practices it has not remedied is the marketing of generic drugs. Instead, it appears to have caused even greater uncertainty and controversy. The manufacture, marketing and distribution of medicinal products for human use in the EC is governed primarily by Directive 2001/83/EC. The 2001 Directive provides that medicinal products may not be placed on any Member State market unless a competent national authority has granted a marketing authorisation or the European Medicines Agency (EMEA) has granted a Community-wide authorisation. Such authorisation is subject to a number of conditions that include the submission of toxicological and pharmacological test results and clinical trials that demonstrate the quality, safety and efficacy of the products. Within the pharmaceuticals industry, research and development (R&D) companies prepare new drugs and seek marketing authorisations with the data generated. Generic equivalent drugs that piggyback onto the market after a data exclusivity period – which protects the original innovator for a set period – can provide an abridged application 4 and rely on the data generated by the original R&D company. Under the 2001 Directive, this was most commonly possible where the generic drug was similar to another product that had been authorised within the Community for not less than 6 years and was marketed in the Member State for which the application was made (Article 10.1(a)(iii)). Each Member State could extend the 6-year period of data exclusivity to a maximum of 10 years. An EMEA authorisation benefited from a 10-year exclusivity period. The most significant changes that the new Directive 2004/27/EC introduces relate to data protection. Article 10 has now been replaced – the new first paragraph of which states that: “The applicant shall not be required to provide the results of pre-clinical tests and of clinical trials if he can demonstrate that the medicinal product is a generic of a reference medicinal product which is or has been authorised under Article 6 [i.e. issued a marketing authorisation] for not less than eight years in a Member State or in the Community”. Furthermore, the 10-year period of market exclusivity may be extended to a maximum of 11 years if, during the first 8 years, the market authorisation holder obtains an authorisation for one or more new “therapeutic indications”. Unfortunately, not all of the changes are quite so clear-cut. For instance, the new legislation introduces a ‘Bolar’ provision. New Article 10.6 states that: “Conducting the necessary studies and trials with a view to the application of paragraphs 1,2,3 and 4 [ re l a t i n g t o g e n e r i c applic ations] and th e consequential practical requirements shall not be regarded as contrary to patent rights or to supplementary protection certificates”. The problem here is that no clear guidance has yet been published on what actions are and are not allowed. Currently, it seems that companies are allowed to do everything with their generic drug as long as they don’t actually market it. For example, there is disagreement as to whether exports are covered. It is also unclear what actions during the last 2 years of the 10-year data protection period will be allowed by Article 10 under the guise of ‘pre-marketing’. Production for market launch may well fall within this grey area.

The new legislation thus seeks to harmonize the data exclusivity period at 8 years. It also introduces a new market exclusivity period of an additional 2 years so that generic drugs may not be introduced to the market until 10 years after the Another issue arises from the original date of authorisation. introduction of a ‘Eurogeneric’

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A Cure for Generic Medicines Legislation? provision – the ability to obtain authorisation for a generic drug in any Member State regardless of whether the reference product was authorised there (so long as it has been authorised in another Member State). Apart from this being regarded as wholly unfair by

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only agreed to entertain requests drug authorisation can be made for transition periods. after 6 years in relation to an existing product in any Member State – Finally, according to Article 2 of whether or not the reference the new legislation, the new product is marketed there. “periods of protection” will “not apply to reference medicinal In an industry already beset by products for which an application public and political scrutiny and

In an industry already beset by public and political scrutiny and mistrust, pharmaceutical companies rely on legislative clarity in order to self-regulate effectively.

many R&D companies, Member States are also clashing over whether the new or old data protection periods apply for such European reference products. There is disagreement as to whether the applicable periods are those in the reference product authorising state or those in the generic product authorising state. The new legislation also fails to resolve the issues of generic drugs for acceding countries. In the unprecedented “Acceding Countries Declaration” of 5 September 2003, these states argued for the retention of the 6-year protection period – stating that delaying the launch of generic drugs would harm their fragile national health systems. Generic drugs in these countries make up a vital share of the market (between 30 to 70% of the volume of medicines consumed), and of reimbursement lists as they significantly reduce patient expenditure. A similar petition was made on 26 November 2003 but so far the Commission has

for authorisation has been submitted before [30 October 2005]”. This not only means that the new 8/10 year protection period doesn’t apply to existing reference products but it also fails to state expressly what the period should be. Instead, it simply r e f e r s to Ar tic le 10. Therefore, the most sensible interpretation is that the old 6-year period continues to apply. In other words, it is true that the old Article 10 has been ‘replaced’ but only to the extent that the new periods of protection have themselves become operative. Where they have not (i.e. in the case of existing reference products), the intention is to apply the new Article 10 but to read the old period of protection back into it. O f course , a ny ne w pie c e of legislation relies on a certain amount of further definition. However, clarity is most certainly needed quickly on this one. For instance, if one considers this last point alongside the Eurogeneric provision, the anomalous result is that an application for generic

mistrust, pharmaceutical companies rely on legislative clarity in order to self-regulate effectively. Therefore, in the absence of guidance from the EU, many Member States a r e now ma king the ir o w n interpretations of the 2004 amendments such as the UK’s MHRA implementation paper (MLX 317, March 2005). It is certainly hoped that further EU direction on this matter is published in the near future.

JAMES IRVINE is a Partner in the London office of Howrey LLP. He can be reached at IrvineJ@howrey.com. JAY SAHOTA is an Associate in the
London office of Howrey LLP. He can be reached at SahotaJ@howrey.com.


Testing the Laws of Transit
The marketing of counterfeit and infringing goods causes considerable damage to manufacturers, traders and right-holders and can also endanger the health and safety of consumers. states that it is not punishable under the criminal law to transport infringing goods, is this contrary to Article 2 of Council Regulation, EC N° 3295/94 of 22 December 1994? This lays down measures to prohibit the release of counterfeit and pirated goods from free circulation, export, re-export or entry for a suspensive procedure.

by Amaury de Saint Amand Shan Chen-S. This concerned the transit of goods through France from a non-EU country to Spain: the Paris Civil Court ruled that Konami’s trade mark rights had been infringed whilst the products were in transit through France.

Genuine Goods

Although concerning genuine Council Regulation (EC) N° goods this time, the Paris Court of 1383/2003 of 22 July 2003 The ECJ stated that: Appeal came to a similar conclusion allowed EU customs authorities to in the Marquis Trans Service ➤ Provisions of the Customs v/Yves Saint Laurent Parfum’s take action against counterfeit goods that were entering, leaving Regulation (EC) N° 3295/94 case (28 September 2001). It ruled or placed in transit (‘external are applicable to situations in that Marquis’s transit of genuine transit’) in the EU customs territory. which goods in transit between perfume products from Kuwait to How have courts helped to define two countries not belonging to the US via France constituted an its application? the EC are temporarily unlawful importation without the detained in a Member State by trade mark owner’s consent. Counterfeit Goods customs authorities of that Class International / ColgateThe April 2000 case of Polo State; and Palmolive Company and others Lauren/Dwidua I (Case C-383/98) concerned the external transit of ➤ The duty to interpret national (C-405/03) has also had a significant counterfeit Ralph Lauren garments law so as to be compatible impact on the rules for genuine from Indonesia to Poland at a time with Community law cannot, goods transit. This time, the ECJ before it became a member of the of itself and independently of was asked to rule whether temporary EU. In court proceedings initiated a law adopted by a Member storage in a customs warehouse of in Austria, where the goods had State, have the effect of original trade mark goods with a been intercepted, the Supreme determining or aggravating the customs transit status – namely Court asked the ECJ for a preliminary liability in criminal law of an toothpaste bearing the AQUAFRESH ruling: does the Customs Regulation entity which has failed to trade mark – and the transit of apply to infringing goods in external observe the requirements those goods to countries outside transit that were ultimately likely o f c u s t o m s r e g u l a t i o n the EEA should be regarded as an infringing use of a trade mark. to be fraudulently sold on the EC (Regulation N° 3295/94). market? The ECJ affirmed this and, in doing so, broadened the scope Therefore, case law implies that The case concerned the stopping of what external transit meant. goods intercepted at a border that of a suspected fraudulent shipment would infringe an IP right under of the toothpaste from South Also initiated in Austria was the legislation of that country (if they Africa into Rotterdam. Once the Montres Rolex S.A. and others were marketed) may be detained goods were found to be original, (Case C-60/02, 7 January 2004) by the customs authorities. The fact Class International applied for the concerning the transit of Chinese that the goods may not infringe IP release of the goods and claimed goods destined for the Slovak market rights in the country of destination damages. On whether a Community – again not yet part of the EU – is not to be taken into consideration. Trade Mark holder can prevent the entry of goods which bear their mark through Austria. The ECJ was asked by the national court This position persists today – as under customs transit procedure, the (Landesgericht Eisenstadt) to demonstrated by the recent 2005 ECJ eventually ruled in favour of consider whether, if a national law case of Konami Corporation/Jun Class International. It stated that: 6
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Testing the Laws of Transit

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➤ The trade mark proprietor cannot oppose the mere entry into the Community under external transit procedure or the customs warehousing procedure, of original goods bearing that mark which had not already been put on the market in the Community previously by the proprietor or with his consent. The decision was in line with Commission/France C-23/99 (26 September 2000) and Rioglass/ Transemar C-115/02 (23 October 2003), which reasoned that the placing of genuine (grey market)

free circulation (i.e. importation) in the EEA.

Although this particular ECJ decision is referring to genuine goods, Article 5(1) of the Directive and Article 9(1) of the Regulation actually apply to both authentic and non-authentic goods when they are being introduced into the Community for purposes of putting them on the market. Further direction on whether this works in practice is eagerly awaited. So, too, are the results of the preliminary ruling The answers to these questions request to the ECJ made by the will be useful in further elaborating Bundesgerichtshof (Germany) in ECJ doctrine on the transit of goods.

affirmative and irrespective of the answer to (b), is a distinction to be drawn according to whether the article whose destination is a Member State, an associated State or a third country? Is it relevant in this regard whether the article has been produced in the country of origin lawfully or in infringement of a right to a sign existing there held by the trade mark proprietor?

Case law implies that goods intercepted at a border may be detained by customs authorities if they infringe an IP right under the legislation of that country, regardless of the IP rights in the country of destination.

goods in a transit or customs warehouse is not liable to affect the essential function of the trade mark. This can be based on either Article 5(1) together with article 5(3)(b) and (c) of the Trademark Directive or Article 9(1) together with Article 9(2)(b) and (c) of the Regulation on Community Trade Mark that “such entry does not constitute trade mark use. While such goods remain nonCommunity goods, storing them in a customs warehouse (without the consent of the trade mark owner) is not using a mark in the course of trade”. The Class International ruling states that a right holder may only oppose importation of goods when they are released into

Montex Holdings Ltd and Diesel S.p.A. (C-281/05, 2 June 2005). The following questions are being asked concerning the interpretation of Article 5(1) and (3) of Trade Mark Directive and Article 28 to 30 EC: (a) Does a registered trade mark grant its proprietor the right to prohibit the transit of goods with the sign? (b) If the answer is in the affirmative, may a particular assessment be based on the fact that the sign enjoys no protection in the country of destination? AMAURY DE SAINT AMAND is a Partner in (c) If the answer to (a) is in the
the Paris office of Howrey LLP. He can be reached at deSaintAmandA@howrey.com.


“Families” of Trade Marks Widen Their Following
by Carreen Shannon and Annette Hirschfeld The concept of “families” of trade marks has yet to be fully explored in European intellectual property law. Yet in the UK, they are a commonly used and powerful tool in commercialising goods and services. The most striking contemporary example of a family of trade marks in those for the ‘easy’ organisations trademark by Marine Enterprise In principle, this ruling should now Projects that contained the word offer a broader scope of protection. BAINBRIDGE for goods in Class 25. However, there are some unclear issues – particularly if the wording The CFI ruled that extended of the CFI decision is taken too protection was available for Il literally. For instance, what Ponte under harmonised EU trade constitutes a family? The CFI mark law. The issue it was focusing states that two actually used trade on was not whether the consumer marks are not enough. But will confuses one trade mark with the three do? Furthermore, literal other, but situations where the adoption of the ruling would mean consumer wrongly assumes that that easyJet would not be able to the trade mark at issue forms part invoke the argument against use of of the family. Therefore, although the sign Holidayeasy, as the families of trade marks as a concept position of ‘easy’ differs.

The trade mark at issue must not only be similar, but it must also have characteristics which can be connected to the family.
such as easyJet, easyInternetcafé, easyCar and easyCruise. They work on the principle that the repetition of a basic element in several marks will enhance both their individual and collective distinction. And it seems a recent Court of First Instance (CFI) ruling has now recognised this. The case in question concerns opposition proceedings instigated by Il Ponte Finanziaria SpA – owner of 11 Italian figurative, 3D and word trade marks that all contain the word BRIDGE. These were combined with various figurative elements and/or other words and registered for goods in Classes 18 and/or 25, which includes clothing, shoes and leatherwear. The dispute arose over Il Ponte’s opposition to the registration of a figurative 8 were not specifically mentioned in the Regulation, the CFI recommended that the whole family of marks should be taken into account when assessing likelihood of confusion. Taking the CFI decision and local trade mark law into account, the following practical guidelines offer the best route to safeguarding families of trade marks:

The CFI went on to specify clear ➤ The basic element can consist of conditions that must be fulfilled in anything that can be recognised order to use this successfully as an by the public as an indication argument. In the first place, one of origin (e.g. words, figures, must have a family of trade marks colours, shape, etc.). Even if that are actually used in order for the basic element may not be consumer confusion to be an issue. distinctive when seen on its Secondly, the trade mark in issue own, repetition of the element must not only be similar, but it improves the distinctive character must also possess characteristics of the family of trade marks as which can be connected to the a whole. family. However, a connection will not be made if the common ➤ The element should be easily element of the family is used in a combined with the other trade different position or if the trade mark elements (e.g. sub brands, mark in issue has a different figurative elements, etc.). semantic meaning.
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“Families” of Trade Marks Widen Their Following ➤ The element should be as original as possible. For instance, ‘Mc’ is commonly used, which caused problems for McDonald’s when it acted against McSmart in the Netherlands, and against McChina in the UK.

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feature of the series, it can also family, these lesser-known be easily circumvented by trade marks may not be taken third parties. For example, into consideration. one could argue that if a later trade mark owner chose a ➤ Immediate action must be different colour, the consumer taken against third parties that would not assume that mark to make use of the family be part of the family. element. Otherwise, it will The element should be consistently become common and protection ➤ used in all trade marks. For ➤ Consistent use of the trade will be lost. example, the element should mark family is a prerequisite be used in the same place (e.g. to being able to use the argument. CARREEN SHANNON is an Associate a prefix or suffix). This actually benefits lesser- in the Amsterdam office of Howrey She can be reached at known trade marks in the family, LLP. which can profit from the ShannonCarreen@howrey.com. ➤ Adding design elements such as a capital letter or a colour reputation of the more famous can enhance the family argument. trade marks in the family. ANNETTE HIRSCHFELD is an Associate However, if the added design However, be aware that when in the Amsterdam office of Howrey LLP. She becomes an important distinctive determining the existence of a can be reached at HirschfeldA@howrey.com.

Joining the .mobi Era
Scheduled to launch in May this year, .mobi is the first top-level domain dedicated to delivering the Internet to mobile devices. It aims to make mobile phones as useful as a PC for browsing – creating an exclusive link between the mobile operator, Internet services and users. .mobi has been approved by the Internet Corporation for Assigned Names and Numbers (ICANN) and is sponsored by a consortium of companies including a number of prominent mobile and Internet companies. The global registry for .mobi is Mobile Top Level Domain Ltd (mTLD). To protect trade marks and brands on the Internet, holders of registered trade marks are able to register their trade marks as .mobi domain names during a “Sunrise Registration Period”. This is divided into a Limited Industry Sunrise (22 May 2006 to 29 May 2006) for trade mark holders in the mobile industry and a Trade Mark Sunrise (12 June 2006 to 21 August 2006) for all other trade mark holders. General Registration starts on 28 August and commences with a two week “Landrush” period when desirable .mobi domain names may be registered at a premium price.

by Anna Haigh A set of style guides, known as “Switch On! Guides”, will act as a reference for domain holders when developing mobile content and services. They cover mandatory rules, highly recommended best practices and optional best practices. In the case of disputes over domain names, .mobi has two dispute resolution processes. The Sunrise Dispute Resolution process is available as part of the Sunrise Registration service whilst the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) process covers .mobi domain name challenges at any other time.

.mobi domain names must be registered through an accredited .mobi registrar. The cost is determined by market competition and each registrar determines its own prices and policies for domain name registration. Registered .mobi domain names will be available ANNA HAIGH is an Associate in the and recorded via the .mobi London office of Howrey LLP. She can WHOIS database. be reached at HaighA@howrey.com.


Global Counsellors College
In late April a mix of in-house Chateau Hotel Mont Royal near counsel from more than a dozen Chantilly, France. It was organized by PLC in partnership with Howrey. Between faculty and ‘students’ there were about 75 counsel participating.
College participants enjoy an 'after class' private tour of the Chateau of Chantilly's magnificent library.

Global Counsellors College participants gather on the terrace of the Chateau Hotel Mont Royal for 'faculty clinics' on topics such as trade marks, patent litigation, and competition.

countries and many of the largest companies in Europe and the world gathered for two days of intensive workshops on delivering corporate legal services globally. This was the 3rd Annual Global Counsellors College, held at the

Before his talk on "What Corporate Leaders Want from their Global Counsel", Bill Amelio, President and CEO of PC giant Lenovo (USA), chats with Mike O'Neill, Howrey partner (Belgium) and former General Counsel of Honeywell Europe.

Faculty Jan Eijsbouts, General Counsel of Akzo Nobel (Netherlands) and Michael Chabeli, General Counsel's office, Coca-Cola (USA), share views on one team's presentation.

GCC Faculty
BILL AMELIO President & CEO, Lenovo Group SEBASTIAN BIEDENKOPF General Counsel, Tchibo Holdings MICHAEL CHABELI Executive Assistant and Senior Counsel, Coca-Cola CHRIS CROWDER Chief Counsel, International, The Scotts Company JAN EIJSBOUTS General Counsel, Akzo Nobel NV PAOLO FORMICA SVP-General Counsel, ENI Exploration & Product Division TIM GLASSETT Senior VP & Deputy General Counsel, Hilton Hotels Corporation WILL HALVERSTADT Associate General Counsel, International, General Mills JULIE KANBERG Associate General Counsel, The Gap Inc. CHRISTOPHER MORGAN General Counsel, Honda Europe PHILIPPE SUMEIRE General Counsel, Groupe SEB GEOFFREY TIMMS Group Head of Legal, Legal & General Group KEVIN WALSH Managing Director, Monsanto Europe
Lindsay Hunter, Counsel, Nestle (UK), makes a point during the team breakouts. Senior global corporate counsel share their insights with the 'students'. Alan Grimaldi, Howrey IP Group Co-chair (USA), Susan McDonald, counsel at Abbey National (UK), and Michael Chabeli, Coca-Cola (USA), pose at happy hour.

Michael Chabeli, General Counsel's office, Coca-Cola (USA), Philippe Sumeire, GC of Groupe SEB (France), and Chris Morgan, GC Europe for Honda (UK) suggest how global in-house counsel can juggle a range of priorities.


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IP Europe News Brief
Aural Similarity Not Enough For Trade Mark Confusion
The ECJ has rejected an appeal in relation to the confusing similarity of the marks ZIRH and SIR & Device (Mülhens GmbH v OHIM, 23 March 2006). In doing so, the ECJ ruled that mere aural similarity between marks is not sufficient – and visual and conceptual differences may overcome aural similarities. This finding should now do away with arguments of likelihood of confusion when, for example, beverage trade marks are yelled in a crowded bar. excluded from patentability, it International Trade Mark should include features relating to: Applications Up in 2005 The Madrid System, administered (i) the diagnosis for curative by the World Intellectual Property p u r p o s e s s t r i c t o s e n s u Organisation (“WIPO”), enables representing the deductive a trade mark owner to secure m e d i c a l o r v e t e r i n a r y protection of a mark in up to 77 decision phase as a purely countries, through the filing of a intellectual exercise, single application. In 2005, the number of international trade mark (ii) the preceding steps which are applications received by WIPO constitutive for making that under the Madrid System totalled diagnosis; and 33,565, an increase of 13.9% from 2004. The number of designations (iii) the specific interactions with (submitted at the time of filing the the human or animal body registration or filed subsequently) which occur when carrying also increased considerably (up those out among these 19.4%). According to WIPO, the preceding steps which are of a recent accession of the United technical nature. States and of the European Community to the Madrid The decision makes a subtle Protocol has been a major factor change in the manner that the behind the significant increase in European Patent Office will treat the use of the system. applications for patents in this field. The next issue of IP Intelligence: Europe will review the consequences that this may have for applicants.

Patentability of Diagnostic Methods
The Enlarged Board of Appeal of the European Patent Office recently considered questions regarding the patentability of diagnostic methods. It concluded that for a claim to be

Global Counsellors College

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The workshops centered on a business scenario with IP, competition, and litigation implications, presented through unfolding acts of a short film. In-house counsel delegates from various industries and countries worked in teams to advise the corporate leadership (a mock panel of executives played by senior in-house counsel faculty) on interpretation, recommendations and actions in light of various serious issues unfolding in numerous jurisdictions. Howrey’s IP lawyers

Willem Hoyng, Howrey Europe managing partner (Netherlands), in his role on the mock executive panel, questions the legal team's IP recommendations (led by Richard Konrath, Corporate Attorney at Caterpillar Logistics, Belgium).

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Global Counsellors College

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in Europe and the US served as coaches to the delegate teams. One of the corporate executives speaking on “What Corporate Leaders Want from their Global Counsel” concluded that the Global Counsellors College was a During the mock mediation, Vivek Prashar, Counsel, provides input Emilie “first-rate global professional Abbey National,Scott Company as(France) Chevalier, Counsel, The and Bill Rooklidge, IP partner at Howrey (USA), listen. development programme” and proclaimed that the energy and For more information about the problem-solving skills of the College, including the 4th Annual international counsel present was in 2007, go to: impressive indeed. www.practicallaw.com/college.

Alex Morrall of PLC opens the final morning session of the 3rd annual Global Counsellors College.

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© 2006 Howrey LLP. This publication is intended as a report on legal developments in the area of intellectual property. It is not intended as legal advice. Readers should not act upon the information contained within this publication without professional advice. No portion of this publication may be reproduced without express permission. For information contact David Stone at StoneD@howrey.com. Howrey, IP Intelligence: Europe and the Howrey logo are trade marks of Howrey LLP.

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