EU court rejects revocation appeal in syringe TM case

The EU General Court has dismissed a request to revoke a syringe trademark on the grounds of non-use, partially affirming the initial decision of the Cancellation Division.

The Fourth Chamber of the EU General Court delivered its judgment on Tuesday, February 27.

In 2006, Covidien registered word sign ‘Magellan’ (EU trademark number 5,437,711) with the European Union Intellectual Property Office (EUIPO) in class 10 for medical apparatus and instruments.

Swiss company Covidien is a manufacturer of medical materials and equipment, and its Magellan product is a syringe with a hypodermic safety needle.

Hansen Medical applied to revoke the mark in February 2013, alleging that the mark had not been genuinely used during a continuous period of five years.

The California-headquartered company designs and manufacturers catheter robotics accessories.

The EUIPO’s Cancellation Division dismissed Hansen’s revocation application in October 2014, in respect of the injection uses covered by ‘Magellan’, as “the use of the injection devices in the context of medical procedures was proved” by the evidence filed.

However, the Cancellation Division did grant revocation in relation to other goods, including surgical, dental, and veterinary apparatus and instruments, after finding that “none of the evidence provided” established genuine use.

Covidien appealed against the revocation, while Hansen appealed against the division’s dismissal of its application.

In February 2016, the Second Board of Appeal joined the two appeals. It upheld Covidien’s appeal but dismissed Hansen’s, annulling the revocation of the mark in relation to surgical, dental, and veterinary apparatus and instruments.

The appeal board held that the Cancellation Division had made an “arbitrary separation” of the goods into subcategories, and the evidence of genuine use covered all the goods for which the mark had been registered.

The division also committed a “procedural irregularity” by not inviting Hansen to submit observations on all of the evidence and additional comments that had been submitted by Covidien, according to the appeal board.

Covidien had provided evidence of the mark’s use, and this was contested by Hansen. Covidien then provided further evidence and comments, but these had not been revealed to Hansen.

However, as the decision would not have been “substantively different” if Hansen had been allowed to submit observations, the Second Board of Appeal concluded that Covidien’s appeal could still be upheld and Hansen’s dismissed.

Hansen appealed against the decision to the EU General Court, arguing that the evidence submitted by Covidien was “not capable” of proving the use of the mark for surgical, dental, and veterinary apparatus and instruments.

Hansen said the mark covers different product categories and could therefore be separated into medical uses, and surgical, dental and veterinary uses. It argued that the board erred in finding this to be an “arbitrary separation”.

The California-headquartered company also claimed that the board had failed to fulfil its obligations to “state reasons” for its conclusion.

The EU General Court held that no evidence provided “shows that an injection device used in medical procedures differs from an injection device used in dental, surgical or veterinary procedures”, so the board had “rightly found” that genuine use of the mark in respect of all the goods it was registered for had been established.

In agreement with the appeal board, the court said that there was “nothing” to indicate that a different decision would have been reached, despite the procedural irregularity.

In response to Hansen’s complaint about the board’s reasoning and conclusion, the court found that the board had presented the facts and the legal considerations which were of “decisive importance” to the decision.

The EU General Court dismissed Hansen’s appeal and ordered the company to pay the costs.

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