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LimeGreenIP News

Influencer promo guide: Best practices for drug and device firms

In our “Influencer promo guide: Best practices for drug and device firms”, we offered a list of best practices for medical device and pharmaceutical companies interested in taking advantage of the benefits of social media influencers for advertising their products, while adhering to FDA regulations. How can these companies be mindful of FDA rules while partnering with influencers? The below points, pulled from our guide, are tailored to address your most pressing concerns.

Get familiar with the latest FTC disclosure requirements for influencers and marketers.

In 2017, the FTC sent over 90 letters to influencers reminding them to be compliant in their Endorsement Guidelines, which illustrate the FTC’s monitoring of misleading social media advertising. The guidelines require clear and conspicuous disclosure of any relationship between the influencers and the company. Disclosure should tell the full story of the influencer’s connection to the brand in a ways that avoids ambiguity, such as a hashtag that says, “#thanks(company’s name). Further, setting a social media post to “sponsored posts” is not sufficient in disclosing the influencer – brand relationship, but adding a “#ad” hashtag constitutes sufficient disclosure.

Brands must be truthful in their advertising when working with social media influencers.

Following from the above point, a staple of the FTC’s disclosure guidelines is truthful advertising. A social media influencers cannot endorse a products he or she has not used, disliked, or make unsubstantiated claims.

Given the high stakes involved in advertising of healthcare products, companies should clarify the terms of their engagement with their influencer in a written contract.

Such a contract protects the company from misleading the public and establishes the company’s expectations for the influencer’s engagement. The contract should include requirements for use of and content in sponsored posts, requirements of pre-approval and timing of posts, and requirements of compliance with FDA regulations.

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EU: “Der Grüne Punkt” is not a trademark used for packaged goods

“Der Grüne Punkt” is a concept that presumably everyone in Germany is familiar with; recently, the financing symbol for participation in the dual collection and recovery systems was the subject matter of proceedings before the General Court (GC). The General Court’s main task was to examine the question of whether proven use of the trademark on packaging is sufficient to prove that the trademark is, at the same time, also used for the packaged goods themselves.

Background

In 1996, Duales System Deutschland GmbH registered “Der Grüne Punkt” and the corresponding figurative sign with the European Union Intellectual Property Office (EUIPO) as a EU collective mark. Subsequently, the company granted licences in the trademark to third parties for participation in a dual disposal system for product packaging. After the Cancellation Division of EUIPO had partially granted an application for revocation of the trademark due to non-use, the proprietor of the trade mark filed an appeal against the revocation, which was initially unsuccessful. Its subsequent action before the General Court was directed against the dismissal of the appeal.

Decision

The action brought by the company was also unsuccessful. According to the General Court, the relevant public merely perceives the trademark “Der Grüne Punkt” used on sales packaging to be an indicator that the packaging in question can be collected and recovered by means of a special waste disposal system, but not an indicator of a use of the trademark for the packaged goods themselves.

With this finding, the GC countered the Plaintiff’s arguments. The Plaintiff had essentially stated that the documents it submitted proved that the trademark in dispute is used commercially both for the packaging of the goods and for the packaged goods themselves, and that this constituted genuine use of the European Union trademark within the meaning of art. 15(1) of Regulation (EC) No 207/2009 (now article 18(1) of Regulation (EU) 2017/1001).

The GC found that, based on the perception of the relevant public, there was no genuine use of the trademark “Der Grüne Punkt” in accordance with its main function, namely to guarantee the origin of the goods in dispute. The GC held that it is true that the trademark in dispute refers to the fact that the manufacturer or distributor of the goods in question is part of the Plaintiff’s licence agreement system and thus points to a certain ecologically minded behaviour on the part of that company. However, according to the GC, the relevant public is certainly capable of distinguishing between a trademark that points to a product’s commercial origin and a trademark that indicates the recovery of packaging waste that has been emptied and used, especially since the products themselves are frequently identified by trademarks belonging to different companies, and that the use of “Der Grüne Punkt” therefore pertained solely to the packaging of goods. Continue Reading

Spring fever at the IP Lounge 3.0 on influencer marketing

On 11 April 2019 our Düsseldorf office hosted its third IP Lounge. The IP Lounge is an event planned and hosted by our younger associates and particularly addresses “Young Professionals” to provide a time and place to get to know each other and exchange ideas.

This time, the hot-topic “Influencer-Marketing” was discussed. Dr. Ricarda Braun, Kerstin Jonen and Dr. Martin Adrian Koch provided a very interesting insight into the backgrounds of influencer-marketing, the legal provisions discussed in this regard and the German, currently quite inconsistent case law. Furthermore, Kevin Tewe from the Artist Management Agency TEWE MEDIA GmbH and Helena Wöscher from Springlane gave interesting insights into their everyday work for and with influencers. Last but not least, Nico Kuhlmann, Lea Prehn, Anja Pecher and Lisa Harz presented their Influencer App which they developed in the course of the Hogan Lovells Legal Tech Hackathon (watch the highlights from the 2018 Hackathon here).

The evening ended with a flying buffet and interesting conversations while enjoying the great view from the Hogan Lovells Sky Office over Düsseldorf.


Last month, we launched a guide outlining a list of best practices on how to achieve compliance while working with social media influencers to promote your products and services online.

You can download the guide here

Hogan Lovells’ U.S. + Germany Patent Update

Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. The most recent update is available in English here. This update covers the following developments across the U.S. and Germany:

United States

  • PTAB Has Discretion to Join Parties and New Issues in “Limited Circumstances” – Proppant Express Investments, LLC v. Oren Technologies, LLC (13 March 2019)
  • PTAB Establishes New Precedent and Pilot Program for Motions to Amend – Lectrosonics, Inc. v. Zaxcom, Inc. (25 February 2019, Designated Precedential 7 March 2019)
  • PTAB May Evaluate Validity of Proposed Substitute Claims on All Statutory Grounds – Amazon.com, Inc. v. Uniloc Luxembourg (18 January 2019, Designated Precedential 18 March 2019)
  • Live Testimony Permissible at PTAB Oral Hearings in Limited Circumstances – K-40 Electronics, LLC v. Escort, Inc. (21 May 2014, Designated Precedential 18 March 2019) and DePuy Synthes Products, Inc. v. Medidea, LLC (23 January 2019, Designated Precedential 18 March 2019)

Germany

  • Recall of Infringing Products Is Disproportionate Remedy If Future Patent Infringement Can Be Avoided by Design-Around, 15 U 43/15 (Higher Regional Court Düsseldorf) – “Heated Floor” (“Beheizbarer Boden”)
  • German Federal Supreme Court on Validity of Transfer of Priority Rights, X ZR 14/17 (Federal Supreme Court) – Wireless Communication Network
  • Higher Regional Court Düsseldorf on Entitlement of Co-Inventor to License Out Patent, I-15 U 2/17 (Higher Regional Court Düsseldorf)  – Flammpunktprüfung
  • Antibiotic Substance Not Patentable If Inevitably Obtained Through Process Suggested by Prior Art X ZR 110/16 (German Federal Supreme Court) – “Rifaximin α

For more information, please click on the link with the detailed update, or contact partners Joe Raffetto or Steffen Steininger.

DSM Watch: EU Copyright Directive clears the finish line

Today the Council of the European Union adopted the EU Copyright Directive (the “Directive”), ending a negotiation process which first started with the Commission’s proposal for a new Directive in early 2016. After publication in the Official Journal of the EU, Member States will have two years to implement the Directive. In Council the UK voted to adopt the Directive, but it’s by no means certain that the UK will implement it. If the UK leaves the EU without a deal it will not be bound to do so, nor will it if any “deal” transition period expires before the Directive implementation period expires.

The Directive is the most substantial revision of EU copyright laws in years and will shape the digital market for years to come. It is aimed at modernising for the digital age and further harmonising EU copyright laws. Key changes include revising the exceptions to infringement; reinforcing the position of rightholders in relation to the use of user-uploaded content by online content sharing services; creating a new right for press publishers in relation to the use of their content online and giving increased protections to authors and performers. Our run down of the whole text is here, with deep dives on the provisions relating to online content sharing services (Article 15) and the new press publishers’ right (Article 17), here and here.

District Court of Hamburg: Swabian whisky not allowed to use the word “glen” in its name

Since 2013, the Scotch Whisky Association (SWA) has tried to prohibit the Swabian whisky producer Waldhornbrennerei, which is based in Berglen near Stuttgart, from using the trade mark “Glen Buchenbach”. After the case was referred to the CJEU, the District Court of Hamburg [Landgericht – LG] ruled in favour of the Scottish association, stating that “glen” suggests to the average consumer that the whisky in question is Scotch whisky.

Background

The SWA is an organisation incorporated under Scottish law that is committed to protecting and promoting the trade with Scottish whisky. Its members produce around 95% of Scotch whisky sold worldwide. The Berglen-based distillery being sued distributes – primarily via the Internet – a Swabian whisky under the name “Glen Buchenbach”, which consists of the Gaelic word “glen” (meaning “narrow valley”) and the name of the stream Buchenbach, which runs through the Buchenbach Valley in the town of Berglen. The SWA is of the opinion that the use of the word “glen” is misleading and has therefore filed a cease and desist claim.

Decision

The District Court of Hamburg granted the complaint, arguing that, ultimately, the description “glen” is misleading and that the Plaintiff therefore has a cease and desist claim against the Defendant.

The decision was preceded by a request for a preliminary ruling, in the context of which the District Court of Hamburg submitted to the CJEU several questions regarding the interpretation of art. 16 of Regulation (EC) No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89.

Referring to the corresponding judgment of the CJEU of 7 June 2018 (C‑44/17), the District Court of Hamburg initially found that arts. 16 (a) and (b) of Regulation No 110/2008 were not violated. With respect to art. 16 (a), the court stated that the description “glen” is neither a protected geographical indication nor a form that is a phonetically and/or visually very similar to the actually protected geographical indication “Scotch whisky”. With respect to art. 16 (b), the court found that there was no misappropriation or unlawful imitation of, or allusion to, the registered geographical indication. The court held that the fact that the word “glen” can trigger a chain of associations, thus leading the public to assume that the whisky in question is a Scotch whisky, is not sufficient according to the jurisprudence of the CJEU. Continue Reading

The Curse of Shoeless Joe Continues: TTAB Finds White Sox Fan Lacked Bona Fide Intent-To-Use

For any baseball fans already preparing to capitalize when their favorite team wins their next World Series game, you may strike out before getting up to bat at the Trademark Trial and Appeal Board (“TTAB”) in the United States Patent and Trademark Office (“USPTO”). In a recent precedential decision, the TTAB found that “a mere hope that an alleged condition precedent to using [a] mark – the Chicago White Sox winning the World Series – would occur someday” is insufficient to show bona fide intent-to-use.

William Yedor filed an intent-to-use application on February 26, 2016 for the mark MIRACLE ON 35TH STREET for “paper goods and printed matter, namely, posters, photographs, lithographs, post cards” in Class 16 and “clothing, namely, T-shirts, sweatshirts, caps, jackets” in Class 25. A&H Sportswear Co., Inc. opposed this application on likelihood of confusion and dilution by blurring grounds based on their numerous MIRACLE-formative registrations for apparel goods in Class 25. A&H Sportswear moved for summary judgment on their claims.

The TTAB granted A&H Sportswear’s motion for summary judgment, finding that Yedor failed to produce objective evidence of his bona fide intent-to-use the mark on the covered goods.

“The evidentiary bar for showing bona fide intent to use is not high,” the TTAB emphasized, but “more is required than a mere subjective belief” and “objective evidence must indicate an intention to use the mark that is firm and demonstrable.”

Yedor stated that he “intends to sell T-shirts, owns the domain name whitesoxshirts.com, has one shirt design, gave friends and family a ‘prototype T-shirt’ in 2005, and plans to build a website in the event the Chicago White Sox win the World Series,” but only produced one image of a prototype T-shirt he designed in 2005, eleven years prior to his application’s filing date.

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Alternative to interlocutory injunctions? Shanghai IP Court innovates with a “partial judgment” on patent infringement

Earlier this year, the Shanghai IP Court (“Court”) handed down an interesting judgment in a patent infringement case between a French car parts manufacturer and three Chinese defendants (two Xiamen, Fujian Province based companies and an individual). On 27 March 2019, upon appeal, the IP Court of Appeal at the Supreme People’s Court upheld the judgment. The judgment is interesting not so much for its outcome, but for the procedural discretion employed by the Court. That is, instead of handing down a complete judgment on infringement and damages following the end of court proceedings – which would be typical – the Court instead issued a “partial judgment” on the infringement claim, while granting the plaintiff’s petition to calculate the amount of damages to be awarded at a later date in time. This is a promising result for IP owners who can have the issue of infringement decided more quickly, and could represent the beginning of a more viable strategic alternative to applying for interlocutory injunctions.

The case

The facts of the case were as follows: the French claimant brought a patent infringement suit against the defendants for alleged infringement of its invention patent, which protects a certain type of connector piece used on vehicle windshield wipers. Given the substantial amount of evidence, the technical complexity involved in the calculation of damages, and in light of the ongoing harm to the plaintiff’s business interests caused by the infringement, the claimant petitioned the Court for an advance partial judgment on just the issue of the infringement, with the hope that a permanent injunction would be ordered immediately by the Court.

The Court ruled that such a petition had a sufficient legal basis under Article 153 of the Civil Procedure Law, which provides that when “…some of the facts in a case being tried…are already evident, the court may pass judgment on that part of the case first.” Following a determination that the products fell within the scope of the plaintiff’s claims (with additional assistance of a Court appointed technical expert), the Court applied Article 153 and granted an advance ruling on infringement, ordering the defendants to immediately cease sales and manufacture of the infringing product, while the judgment on damages would be issued at a later time.

Practical benefits of advance partial judgments Continue Reading

Real Estate Horizons: The Power of the Brand

Real Estate Horizons is a snapshot of key legal topics and market trends across the globe. This post higlights the importance of IP rights in this sector. With property developments increasingly focusing on experience and becoming “destinations” or lifestyle brands in their own right, branding has become an essential element of the development process. Therefore, protecting your IP rights is important, helping to protect and even increase the value of your development.

There are four main reasons to protect your real estate brand:

  • to prevent copying;
  • to create a branded, experiential destination for customers, tenants, and other users;
  • to increase revenue through licensing (for example through merchandise); and
  • to increase recognition of your brand and marketability of your development.

Conversely, if you are an investor/purchaser you should be looking to ensure that all the necessary IP rights are owned by the developer and transferred as part of the transaction. Here are some key things to consider in protecting these rights.

Trade Mark Rights

This covers, amongst other things, names, nicknames, and logos.

The name of the development, as well as any nicknames, can and should be protected by registration as well as any designs or logos used.

Registering trade marks will help to protect against damaging infringement and copycats.

There are many trade marks registered in retail and real estate services. It is a crowded market and that can make it difficult to register a trade mark which is sufficiently different to those already registered. Register the trade mark early. If the name of the development becomes synonymous with the area it’s in it may be difficult to register the name as geographical locations are not generally registrable and must be kept free for all to use.

Copyright

Copyright arises automatically in certain original works and is ordinarily owned by the creator of the work. Copyright may arise in building plans, websites, photographs, virtual tours, and in software code, for example AR/VR used in apps.

Summary: Get ahead and stay ahead of your IP rights. IP rights are an important part of the development process and as the influence of tech and lifestyle branding continues to increase, the importance of IP rights and protecting your development brand continues to grow.


Click here to read the full Real Estate Horizons report. Our strategy is to anticipate and monitor how clients can adapt to change and be ready for the year ahead. Not only does our international network mean that we are adept at dealing with a wide range of cross-border issues, but our offices throughout the world have the knowledge to offer both global and local solutions, ranging from effective deal structuring to PropTech and investment in student accommodation.

Hogan Lovells named MIP Global Firm of the Year – Second year running!

Hogan Lovells global IPMT practice has been awarded the accolade of ‘Global IP Firm of the Year’ at the Managing Intellectual Property North America awards – becoming the first firm to win the award in consecutive years and the only firm to win it three times.

The award recognizes the strength of our global practice and the excellent work done by our teams in assisting clients on business critical matters. This is underpinned by MIP also awarding us:

  • Germany – Impact Case of the Year for our work on the DOCERAM v CeramTec Community design dispute
  • Germany – Patent: Contentious Firm of the Year
  • Russia – Patent: Contentious Firm of the Year
  • China – Foreign Firm of the Year
  • Japan – Foreign Firm of the Year

Commenting on our wins, Global Head of IPMT, Burkhart Goebel said:

We are delighted to be named Global IP Firm of the Year again, and to receive recognition for the strength of our local practices in Germany, Russia, China and Japan. The awards highlight our leadership in jurisdictions recognized by rights holders as important markets to protect their IP, as well as our ability to successfully navigate clients through more challenging and increasingly important jurisdictions.”