Edited By Elina Saviharju

In this issue:

  • Commission Proposes Extension to Term of Copyright Protection for Performers
  • The Market Court Rules on Slavish Imitation in the Crocs Shoes Case
  • Pharma Industry Finland Renews its Code of Ethics
  • Simplified Destruction Procedure of Counterfeit Goods with the Customs
  • Establishment of a New Pharmaceutical Center Prepared
  • Distinctive Character of a Trademark May Be Inferred from an Earlier Mark
  • Pharma Regulatory: The Effects of the Sunset Clause as of 7 November 2008

INTELLECTUAL PROPERTY

Commission Proposes Extension to Term of Copyright Protection for Performers

The European Commission proposes to extend the term of copyright protection for performing artists and record producers from 50 to 95 years. If adopted, the extension would make performers and producers eligible for broadcast remuneration, remuneration for performances in public places and compensation payments for private copying of their performances also during the extended term. The Commission says that the proposal would, e.g., help the recording industry to adapt to the new business environment characterized by a steep decline in sales of physical CDs.

The proposed extension of the term has immediately been criticized by a group of prominent European law professors in an open letter published in The Times on 21 July 2008. According to the scholars, the proposal does nothing to encourage innovation and creativity. On the contrary, it in fact undermines the credibility of the copyright system.

The Commission also proposes to fully harmonize the copyright term applicable to co-written musical compositions. Co-written musical compositions are musical compositions which comprise contributions, such as lyrics and a musical score, from several authors. According to the figures presented by the Commission, between 60 % and 70 % of music is co-written. Under Member State laws, such compositions are currently classified either as single works of joint authorship with a unitary term of protection or as separate works with separate terms running for each individual author (like in Finland and Sweden), thus resulting in different terms of protection in different Member States for the same piece of music. The Commission now proposes a uniform method of calculating the term from the death of the last surviving author.

The above proposals were published on 16 July 2008 and they will next be discussed by the Member States in the European Council's work group. In parallel with these proposals, the Commission also presented its Green Paper on Copyright in the Knowledge Economy, with which the Commission envisages to have a wide-ranging and open debate on the future of copyright policy in Europe.

MARKETING AND CONSUMER

The Market Court Rules on Slavish Imitation in the Crocs Shoes Case

On 19 August 2008, the Market Court gave its ruling in the case of Crocs, Inc. and others v Mirnet Oy (MAO 332/08) where the Court found Mirnet Oy's ("Mirnet") marketing of Alligator footwear and related decorative shoe accessories contrary to good business practice.

Mirnet had sold footwear with an Alligator logo printed on the sole and ankle strap of the shoes. Also a label with the brand name Alligator had been attached to the shoes. The shoes had been sold to retailers wrapped in clear film. On Mirnet's Web store, the product category menu bar contained the categories "Alligator shoes" and "Alligator Kids boots".

Crocs brought proceedings against Mirnet for violation of good business practice claiming that Mirnet sold slavish imitations of Crocs Shoes. Crocs claimed, among other things, that the footwear and accessories sold by Mirnet were liable to be confused with Crocs Shoes and Jibbitz shoe decorations. Mirnet maintained that the Crocs' footwear design was not creative and that there was no likelihood of confusion, since the word "alligator" is not similar to "crocs". It also claimed to be no longer selling shoe decorations.

In the decision, the Market Court found the design of Crocs Shoes creative and stated that the Alligator footwear was almost identical to Crocs Shoes in its design. However, it noted that imitating or marketing imitations is not contrary to good business practice unless it creates an impression that the imitations are from the same commercial source as the original products. Mirnet has distinguished its Alligator footwear from those of Crocs when selling them to retailers and there was no likelihood of confusion. However, the Court found that in Mirnet's Web store the Alligator name was used mainly as a product category and not clearly as the product name for the footwear. From the pictures on the site, one could not sufficiently ascertain whether the footwear was Alligator or Crocs shoes. Since Mirnet had not clearly indicated the product name together with the pictures, it had not sufficiently prevented the likelihood of confusion in its Web store.

Consequently, the Court enjoined Mirnet from selling footwear liable to be confused with Crocs Shoes unless they are clearly distinguished with pictures or signs from those of Crocs in marketing. It also enjoined Mirnet from selling decorative shoe accessories liable to be confused with Jibbitz shoe decorations. The Court ordered the injunctions to be subject to a conditional fine of EUR 30 000 and the parties to bear their costs of the proceedings.

LIFE SCIENCE

Pharma Industry Finland Renews its Code of Ethics

The Pharma Industry Finland has updated its Code of Ethics (the "PIF Code"). The renewed version of the Code entered into force on 1 July 2008 and the purpose thereof is to set general guidelines for the marketing of pharmaceuticals as well as to ensure the appropriate nature and confidentiality of information. Almost all companies marketing pharmaceuticals in Finland have committed to comply with the PIF Code.

The renewed PIF Code regulates the cooperation between the pharmaceutical industry and patient organizations. The new Code emphasizes the transparency and openness of this cooperation. According to the renewed PIF Code, pharmaceutical companies shall publish the names of the patient organizations that they have sponsored and the nature of the sponsorship.

Furthermore, the Code of Good Medical Sales Representation Practices accepted in 2007 by the Association of Finnish Local and Regional Authorities has been incorporated into the PIF Code. The purpose of the Code was to create common guidelines for medical sales representation in order to ensure the quality of medical care. The renewed PIF Code also includes provisions concerning scholarships and consultancy agreements with health care professionals.

IN BRIEF

Simplified Destruction Procedure of Counterfeit Goods with the Customs

The Finnish Ministry of Finance is preparing new provisions that will enable a simplified destruction procedure of counterfeit goods seized by the Customs in certain cases of passivity of the alleged infringer. The provisions are based on Article 11 of the Council Regulation Concerning Customs Action against Goods Suspected of Infringing Certain Intellectual Property Rights and the Measures to be Taken against Goods Found to Have Infringed Such Rights (1383/2003). The preparations come in a situation where the long duration of the proceedings concerning the destruction of counterfeit goods has been discussed in the media, inter alia, in connection with the destruction of 60,000 pairs of counterfeit Adidas shoes seized already five years ago. The new provisions will be circulated for comments among relevant stakeholders together with a draft for the complete reform of customs legislation in autumn 2008. According to an estimate by a Ministry official, a Government Bill will be forwarded to the parliament in late fall 2008.

Establishment of a New Pharmaceutical Center Prepared

The Ministry of Social Affairs and Health has taken an initiative to reorganize its subordinate institutions responsible for pharmaceutical matters and to introduce a new pharmaceutical center. The reorganization concerns the National Agency for Medicines ("NAM"), the National Authority for Medicolegal Affairs ("TEO"), the National Product Control Agency ("STTV") and the Centre for Pharmacotherapy Development ("ROHTO"). Also certain pharmaceutical matters currently handled by the National Research and Development Centre for Welfare and Health (STAKES) and the Social Insurance Institution ("Kela") will be centralized to the new center. The starting point for the reform is the centralizing of all tasks relating to pharmaceutical matters in the new pharmaceutical center. The pharmaceutical center would, inter alia, be responsible for granting marketing authorizations for pharmaceutical products as well as for the evaluation of total costs and cost effectiveness of pharmaceutical treatment. The Ministry aims to launch the new center during fall 2009, but the schedule and detailed effects and form of the reform remain open.

Distinctive Character of a Trademark May Be Inferred from an Earlier Mark

On 17 July 2008, the ECJ ruled in P L & D SA v OHIM, Julius Sämann Ltd (C-488/06 P) on whether the distinctive character of a trademark may be based on an earlier trademark. P L & D had applied to register as a Community trademark the tree shaped AIRE LIMPIO figurative mark for, e.g., air fresheners. Sämann opposed, citing its earlier silhouette tree Community trademark and two almost identical silhouette International registrations, one of which read "ARBRE MAGIQUE". OHIM's Opposition Division based its decision on Sämann's Community trademark and rejected the opposition finding that the shape of fir tree was not particularly distinctive for air fresheners. Both the CFI and OHIM's Board of Appeal rejected P L & D's registration and found that it was liable to be confused with Sämann's Community trademark which had acquired a distinctive character as a result of the use and well-known nature of the ARBRE MAGIQUE trademark in Italy. The ECJ confirmed that distinctive character of a mark may result from its use as part of another registered mark. It found that CFI was correct in finding that the silhouette of a fir tree was distinctive and that it had acquired a particularly distinctive character as a result of being used as part of the ARBRE MAGIQUE mark which is well-know in Italy.

Pharma Regulatory: The Effects of the Sunset Clause as of 7 November 2008

The National Agency for Medicines ("NAM") has published on its website a list of marketing authorizations and registrations for pharmaceutical products which are under the threat of lapsing as of 7 November 2008 when the so-called "Sunset Clause" will for the first time have legal effect. The Sunset Clause was introduced in Finland in November 2005 in connection with the implementation of Directive 2004/27/EC. According to the implementing provisions of the Medicines Act, a marketing authorization will be cancelled if the pharmaceutical product in question is not launched on the Finnish market within a period of three years from the date on which the marketing authorization was granted, or if a product is not marketed within three consecutive years. The NAM has announced that no corresponding list will be published of marketing authorizations lapsing after 7 November 2008 and that ensuring the validity of marketing authorizations is the duty of the pharmaceutical company in question. Marketing authorization holders will be notified in writing once the registration has lapsed and this information will also be available at NAM's website.

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