Catherine Parrish Lake
Catherine Parrish Lake helps businesses and individuals develop, protect and utilize intellectual property rights. Catherine advises clients on acquiring, registering, maintaining, licensing and enforcing trademarks, copyrights and trade secrets. She also counsels clients on branding strategies, e commerce and Internet issues, intellectual property infringement problems and privacy concerns. Her practice includes advising franchise clients with regard to franchise disclosure documents and compliance with state and federal franchise laws and regulations, as well as guiding nutritional supplement companies through regulatory compliance issues.
Canada: Temporary Relief for Unlicensed Supplements
The Canadian government recently proposed a temporary solution to allow continued sales of unlicensed Natural Health Products (NHPs). The proposed regulations, titled “Natural Health Products (Unprocessed Product License Applications) Regulations” (the “Proposed Regulations”) provide an exemption for some unlicensed NHPs that have pending applications for licensure.
Under current Canadian regulations, NHPs must be licensed. There is currently a backlog of approximately 10,000 unlicensed NHPs on the market in Canada that have applications pending to receive regulatory approval. In January of this year, the National Association of Pharmacy Regulatory Authorities issued a statement urging pharmacies to halt sales of unlicensed NHPs because such products posed a risk to public safety. Some pharmacies adopted this position, cutting off market access for some manufacturers.
The Proposed Regulations would allow continued sales of unlicensed NHPs in some situations. To qualify, a manufacturer must have an application on file with Health Canada that has been pending for more than 180 days and the product must meet certain safety requirements. If implemented, the Minister of Health would notify an applicant that an exemption number has been assigned. Within thirty days of this notice, the applicant must consents to having its exemption information posted on the Health Canada website and must verify that the product meets certain safety and use criteria (for example that it is not intended for use by children or women who are pregnant or nursing and does not contain harmful or prohibited ingredients).
Once an applicant provides consent and verification, the NHP will be deemed to hold a license, allowing the product to be sold legally. Manufacturers will be required to display the exemption number (rather than an NHP number) on product labels. The Proposed Regulations give manufacturers 12 months or until the next label run to comply with the labeling requirements. Manufacturers must also comply with other safety requirements imposed by Canadian “Natural Health Products Regulations”, but will not share in all of the rights provided to licensees under such regulations.
Note that deemed licenses provide only temporary relief. The Proposed Regulations will be in force for 30 months after becoming effective. Therefore, manufacturers will still need to complete the licensing process. For those whose Canadian applications are stuck in queue, however, the Proposed Regulations should provide some relief.
Mark "Perfecting Serum" found not descriptive for skin moisturizer
Having a policing policy helped the owner of the mark “Perfecting Serum” for skin moisturizer overcome an examiner’s charge of mere descriptiveness. Because the owner was able to show that it had taken steps to prevent third parties from using the mark other than to identify the owner’s product, the Trademark Trial and Appeal Board reversed the refusal to register the mark. The Board also found that the term “perfecting” was not commonly understood by consumers as describing a quality or feature of skin moisturizer. This case reaffirms the need to have a strong policing policy for trademarks both prior to registration and post registration.
Competitors both guilty of false advertising
A recent case illustrated two important points in advertising:
- substantiate one’s advertising claims; and
- make sure your glass house is strong before casting stones at a competitor.
Schering-Plough sued Neutrogena (PDF) claiming that Neutrogena’s sunscreen ads falsely claimed to offer the “best line of sun sport protection.” The judge agreed because a graph on the product suggested that UVA and SPF were different measures, which was false.
Notably, the judge found it irrelevant that the false information pertained to both products. Schering-Plough’s victory was short lived, however, because the judge also found that it lacked sufficient support for its advertisement that its Coppertone sun screen provided better coverage than Neutrogena’s sun screen. It seems that Schering-Plough had not tested Neutrogena’s product.
It is important to remember that advertisements need to be accurate and to have backup for all claims made. As this case shows, it is also important to review one’s own advertisements before bringing claims that a competitor’s advertisements are false.
