Fenwick & West trademark litigator Eric Ball was asked by Law360 to comment on a case before the U.S. Court of Appeals for the Fourth Circuit that is likely to yield one of the most influential trademark rulings in 2016: a dispute between drugmakers Bayer AG and Belmora LLC.
The case centers on whether Bayer has standing to file a U.S. trademark action over the name "Flanax," its brand name for the Alleve pill in Mexico, even though Bayer has never used that name in the United States.
Belmora registered the "Flanax" trademark for a pill similar to the Alleve pill that it sold in the United States. Bayer considers the product to be a knockoff designed primarily to confuse Mexican American immigrants – who know of Bayer's brand in Mexico – and rob them of their consumer protections under the Lanham Act. The question is whether Bayer can assert Lanham Act rights for a name it doesn't use in this country.
“If Bayer wins, this could give owners of trademarks in China or Europe new claims against their U.S. competitors,” Ball told Law360.
“With a flattening world, especially with apps and Internet companies, this could have a significant impact on trademark enforcement actions,” he added.
The full article is available through the Law360 website (subscription required).