Senior Associate Suzanne Power reports on the Summer 2019 trade mark decisions from the UK and EU in the Pharma and Med Dev sectors.

1. Slogans remain difficult to register as EU trade marks – Case T-555/18 of 3 April 2019, Medrobotics Corp. v EUIPO

This decision from the EU’s General Court (“GC”) highlights the inherent difficulties in registering slogans as EU trade marks.

In this case, medical device specialist Medrobotics had sought to register SEE MORE. REACH MORE. TREAT MORE. as an EU trade mark in relation to probes and articulated arms for diagnostic and surgical use. The application was refused on the grounds that the mark was not distinctive of the goods applied for.

In defence of the mark’s suitability for registration, Medrobotics argued that it had the requisite distinctive character for the following reasons:

1. the sentences of the mark have an “unusual and incorrect structure” and that will prevent the relevant public from understanding the precise meaning;
2. there is only a weak connection between the mark and the goods applied for; the mark conveys a promotional message “only subliminally and suggestively”; and,
3. the mark is characterised by “brevity, originality and conciseness”, and will be memorable to the relevant public, particularly due to the repetition of “more”.

The GC dismissed these arguments, however, finding that there was nothing particularly unusual in the syntax and grammar of the mark that would prevent the public from immediately understanding its meaning in relation to the goods and services applied for. Moreover, the repetitive structure was fairly common to advertising language and there was nothing otherwise striking in the mark that might confer distinctive character on it.

This decision joins a growing body of case law from which it is evident that it is difficult to obtain EU trade mark registrations for slogans, for the fact that they tend primarily to give information regarding the goods rather than acting as a clear badge of origin. Those looking to register slogans will often need evidence that distinctiveness has been acquired through use, but putting together such evidence for all EU territories in which the refusal may apply is no mean feat.

2. EU trade marks need to be acceptable for registration in all EU languages – Case R 351/2017-1 of 5 June 2019, Biolatte Oy v EUIPO

In another recent decision from the GC, it was held that the mark Biolatte is descriptive of dietary supplements and so should be refused registration in the EU for those goods. This assessment was made from the perspective of the Italian speaking consumer.

The GC found that the Italian speaking consumer would break the mark down into the elements “bio” and “latte”. “Bio” would be understood as an abbreviation of the Italian adjective “biologico”, meaning “organic”, and “latte” would be understood to refer to milk. The consumer would also recognise that “latte” bears the same root as the Italian word for “lactic acid” – i.e. “acido lattico”.

It was further found that, having interpreted the meaning of the mark in the manner set out above, the consumer would perceive Biolatte to mean that all or part of the goods applied for include milk or nutritional substances obtained from milk. The mark was therefore descriptive, as it only provided relevant public with information regarding the content of the goods in question, and that in turn rendered it devoid of distinctive character, as it could not also perform the essential trade mark function of indicating the commercial origin of the goods.

The applicant had advanced an alternative claim that the mark had acquired distinctive character through use, but this also failed as it was held that none of the evidence provided on this point related to the relevant territory of Italy.

This decision serves as a reminder that the grounds for refusing EU trade marks will be applied with reference to all EU languages. If a ground for refusal exists in just one language, this suffices for an objection to be raised. Moreover, where such an objection is raised and is felt to be unfounded, it must be challenged with arguments and evidence that are specific to the territory in question.

3. Assessment of likelihood of confusion: marks must be compared as a whole – Case O-270-19 of 21 May 2019, Dr. Kurt Wolff GmbH & Co. KG v. Care XY Limited

This decision of the UK Intellectual Property Office (the “UK IPO”) confirms the principle that, when assessing likelihood of confusion of trade marks, the marks must be compared as a whole, and not artificially dissected.

Care XY (the “Applicant”) had sought to register the mark carexy in the UK in relation to pharmaceutical preparations (inter alia). An opposition was filed on the basis of several earlier EU registrations for the mark Karex, also covering pharmaceutical preparations (inter alia).

The Applicant had sought to argue that the initial parts of both marks (“care” and “Kare”) evoke the concept of care, and neither party can claim exclusive rights to the word “care”, given the connection with the relevant goods. The comparison of the marks should therefore focus on the additional elements of each mark.

However, the UK IPO’s Hearing Officer dismissed this argument. He remarked that the comparison of marks requires each to be considered as a whole and no element could be discounted unless it was negligible. In the marks in question the “care” and “Kare” elements were far from negligible; rather, they contribute “significantly to the impact of the marks as a whole”. Moreover, the marks as a whole have at least normal distinctive character, as they contain “no more than a vague allusion”.

Those findings allowed the Hearing Officer to conclude that the minor differences between the marks (e.g. the presence or absence of the letter “y” at the end) were “overwhelmed by the similarities”, and so given the overlap between the goods, there was a likelihood of confusion. The application was accordingly refused.

4. Delay in obtaining market authorisation not always a justification for non-use – Case C-668/17 of 3 July 2019, Viridis Pharmaceutical Ltd v EUIPO

The EU’s Court of Justice (“CJEU”) recently held that an EU trade mark used primarily in clinical trials had not been put to genuine use, and that the corresponding registration must be revoked.

Back in 2003, Viridis applied to register the mark BOSWELAN in relation to pharmaceutical products 2003. By 2013 it had distributed around 400,000 BOSWELAN branded capsules as part of a clinical trial, but had still not obtained market authorisation for the product – or, in fact, even applied for such authorisation.

Viridis argued that its registration should not be revoked for the following primary reasons:

1. the use of the mark in the course of the clinical trials was genuine trade mark use; or, in the alternative,
2. it had a proper reason for non-use of the mark, in that it was prohibited from advertising the product, due to not having secured market authorisation.

The CJEU dismissed these arguments, finding as follows:

1. genuine use of a registered trade mark is use that identifies to third parties the commercial origin of the registered goods or services. It must relate to products already marketed, or products where marketing is “imminent”;
2. Viridis’ use of the mark in its clinical trial did not constitute genuine use as it was purely internal in nature, and not on the competitive market. There was no indication that Viridis had taken steps for its product to be imminently marketed; the clinical trial was still underway and no market authorisation had been applied for; and,
3. not only was Viridis’ use not genuine – it also did not have a proper reason for the lack of use. The time scales for Viridis to complete the clinical trials and apply for market authorisation were all within Viridis’ control, and it was Viridis’ choice to apply to register its trade mark at such an early stage in the product’s lifecycle when its future was still so uncertain.

This decision confirms that careful consideration is needed to the timing of filing pharmaceutical trade marks for products still under development. A premature filing risks loss of rights if steps to market the product cannot be taken within the five year period following registration.

Should you wish to discuss any part of this article, please contact the writer, or a member of the Trade Mark, Pharmaceuticals or Medical Devices teams.

Category: Latest Insights | Author: Suzanne Power | Published: October 2019 | Read more