EU General Court backs Endoceutics over Merck TM use
The EU General Court has backed Endoceutics, a pharmaceutical company focused on women’s health, by revoking a finding that Merck KGaA had genuinely used a trademark.
In a decision handed down on Friday, November 17, the General Court annulled a decision which had maintained Merck’s trademark for particular uses.
Merck filed an application to register ‘Femibion’ as an EU trademark in 1998, covering class 5 (pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants).
The trademark was registered in January 2000.
In March 2014, Endoceutics applied to revoke the trademark for lack of genuine use.
The Cancellation Division of the European Union Intellectual Property Office (EUIPO) found in June 2015 that genuine use had been shown only for the ‘dietetic substances adapted for medical use’.
It said genuine use did not apply to ‘pharmaceutical, veterinary and sanitary preparations’, ‘food for babies’, ‘plasters’, ‘materials for dressings’ and ‘disinfectants’, and revoked the mark for those goods.
Merck appealed against the decision and, in July 2016, the First Board of Appeal of the EUIPO upheld the action in part and annulled the Cancellation Division’s decision in part.
The appeal board found that genuine use had been shown for “pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition”.
On appeal, Endoceutics asked the General Court to annul the contested decision in part and to revoke the trademark for the uses confirmed by the appeal board’s decision.
Merck and the EUIPO requested that the court dismiss the action.
The First Board of Appeal had noted that Merck had sold a range of preparations for women, including Femibion Healthy Pregnancy, used for prenatal care, and that these products contained vitamins and minerals.
Endoceutics had argued that the goods covered by the trademark are dietetic substances and not pharmaceutical preparations. The General Court agreed with Endoceutics.
“As regards the question whether those goods may be considered to be pharmaceutical preparations in the subcategory defined by the Board of Appeal, it should be noted that the evidence to which the Board of Appeal referred in the contested decision does not support such a conclusion. Not a single item of evidence contains specific information to that effect,” said the court.
Despite annulling the earlier decision, the court refused to revoke the trademark for the uses specified, as requested by Endoceutics.
“It should be noted that the applicant is, in essence, requesting the court to adopt the decision which, according to the applicant, EUIPO ought to have taken,” said the court.
The court concluded that, on the assumption that the Board of Appeal did not analyse all of the evidence submitted, the application to alter the contested decision cannot be granted, “since that would imply … the exercise of administrative and investigatory functions specific to EUIPO and would therefore upset the institutional balance on which the division of jurisdiction between EUIPO and the court is based”.
Merck was ordered to pay its own costs and half of the costs incurred by Endoceutics before the General Court and the Board of Appeal.
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