EU court rejects appeal over ex-Allergan TM
The EU General Court today, March 6, rejected an appeal against an European Union Intellectual Property Office (EUIPO) decision to reject the registration of a mark formerly owned by Allergan.
Pharmaceutical company Allergan applied to register ‘Nocuvant’ as a trademark in 2014, covering ‘pharmaceutical preparations for the treatment of nocturia’ in class 5.
Nocturia is a urological disorder in adults characterised by frequent urination at night time.
Soon after Austria-based Gebro opposed the trademark, citing its EU, Austrian, international and German word marks for ‘Nocutil’ in opposition. All of Gebro’s trademarks covered goods in class 5.
In response, Allergan requested Gebro provide genuine proof of use for the trademarks.
Gebro produced various documents to prove genuine use, and its opposition was upheld by the EUIPO’s Opposition Division in January 2017.
The division only relied on Gebro’s EU word mark ‘Nocutil’ to find that while genuine use had only been proved for some of the goods covered by the mark, there was a likelihood of confusion on the part of the German-speaking and Spanish-speaking public, given the identity of the goods and the average degree of similarity between the marks.
Allergan appealed against the decision and, by an ancillary appeal, Gebro contested the Opposition Division’s finding that genuine use had not been proved in relation to ‘preparations for treating nocturia’.
In March last year, the EUIPO’s Second Board of Appeal dismissed Allergan’s appeal, but allowed Gebro’s.
The appeal board confirmed that Gebro had proved genuine use and that there was a likelihood of confusion.
Again, Allergan appealed, arguing that the Opposition Division had erred in finding Gembro had proved genuine use and that the trademarks were similar.
Two months later, Allergan transferred ownership of the ‘Nocuvant’ trademark to US specialty drug company Serenity Pharmaceuticals.
The General Court today dismissed Serenity’s appeal and ordered the company to pay costs.
The court concluded that the appeal board hadn’t erred in finding that Gebro’s documents were sufficient to prove genuine use in the EU.
Allergan had argued that because Gebro hadn’t relied on evidence that actual sales of ‘Nocutil’-branded goods had been made outside Germany and Hungary, it was not proved that that mark had been used across the EU.
But, the court said: “It follows from the case-law that it cannot be ruled out that, in certain circumstances, the market for the goods or services for which an EU trademark has been registered is in fact restricted to the territory of a single member state.”
It added that this may be the case for the pharmaceutical market, which is “characterised by a system of marketing authorisation and certification of protection which may be issued on a national basis”.
Allergan’s second argument that the trademarks were not similar was also dismissed.
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