Considering the regular section of IP TALK which has been devoted to pharmaceutical from the beginning, we found interesting in this issue to deeper focus on pharmaceuticals under various angles.
Top drugs commercial and domain names policy The 3 best world selling drugs – Lipitor, Plavix and Glivec – are all registered as domain names in most GTLD extensions (.com, .info, .net , .org, .biz) as well as in the .eu but in .asia for Lipitor and Plavix only. Amongst the 3 best selling drugs in France, Voltaren enjoys the larger GTLF registrations. Doliprane and Spasfon are protected under limited extensions (doliprane.fr /.com/.eu and spasfon.fr/. eu).
Some significant lack of protection exists such as spasfon.com, lipitor.travel or plavix.travel (registered by a third parties). Voltarene.fr is also riskily free for registration in France where Voltaren is used under the spelling «Voltarène”. Domain names reproducing pharmaceuticals associated to other elements are nowadays the most widespread tendency of fraudulent registrations. Many cases were handled by the WIPO Arbitration Center such as lipitorforsale.com, lipitorpharmacy.com, plavix-medication.com, plavixwire.com or wwwplavix.com further confirming the huge advantage of trademark watches over the internet.
Latest case law:prevalence of the phonetic
On 5 May, 2008 the second board of appeal of the OHIM considered that there was a risk of confusion between the trademarks CIBUS and ZYDUS covering identical goods in class 5. Though the Board found the signs dissimilar from a visual point of view and with no intellectual meaning, the phonetic resemblance due to the phonetic identity of « CI » / « ZY » and « US » in Spain sufficed to for finding a risk of confusion.
Comparative advertising and generics
On March 26, 2008, the French Supreme Court denied trademark infringement and considered as legitimate comparative advertisement the announcement in magazines of the oncoming trading of the Paroxetine G. Gam as the Deroxat® generic.
For the Judge, the public was informed that the Paroxetine G. Gam speciality had the same quality, quantity composition and pharmaceutical form that the Deroxat and its bioequivalent was demonstrated. The comparison was regarded as objectively made through pertinent, verifiable and representative features of the goods in compliance with French provisions on comparative advertisement. This decision consequently introduces another exception to the monopoly of pharmaceutical trademark owners.