EU General Court rejects opposition to Merck TM

The EU General Court handed a victory to Merck KGaA late last week, after rejecting a Swiss company’s trademark appeal.

On Thursday, November 15, the General Court rejected HR & Managing Licensing’s appeal against a European Union Intellectual Property Office (EUIPO) decision which found that Merck had demonstrated serious use of its mark ‘Flexagil’.

Germany-based Merck KGaA applied to register ‘Flexagil’ as a European trademark in September 2008, covering classes 5, 23 and 30. However, after partial renunciation, the mark covers only “pharmaceutical products for the treatment of disorders of the musculoskeletal system of the human body” in class 5.

In 2009, the trademark was registered under number 7,301,237.

Six years later, HR & Managing Licensing applied to revoke the trademark, claiming that the mark hadn’t been used seriously for a continuous period of five years.

The EUIPO’s Cancellation Division granted the application for revocation on the ground that Merck hadn’t produced proof of use.

Merck appealed against the decision and, in October 2017, the EUIPO’s Fourth Board of Appeal annulled the Cancellation Division’s finding and dismissed HR & Managing Licensing application.

The appeal board found that the evidence provided by Merck sufficiently demonstrated genuine use of the trademark.

This time, HR & Managing Licensing appealed against the decision to the General Court, alleging that the evidence of use was insufficient to demonstrate genuine use.

HR & Managing Licensing submitted a number of arguments, including that the appeal board admitted documents which presented the earlier trademark in a form different from that under which it was registered.

Under EU law, the use of trademark in a form differing from its registered firm is considered to be use, as long as the distinctive character of the trademark is not impaired.

In Merck’s evidence, the trademark also featured the addition of the word element ‘krém’, an addition that the General Court said did not alter the distinctive character of the trademark, as it merely referenced the form of administration of the products (a cream).

The court also rejected HR & Managing Licensing’s contention that a “higher degree of seriousness of use” should be required for Merck than that required for medium and small firms.

Finally, the Swiss company argued that use in Hungary is not sufficient to prove use of the contested trademark. This argument was also rejected by the court.

“It is clear from all the evidence submitted to the Board of Appeal that it was without making any error of assessment that it established on the basis of certain elements submitted to it that the proprietor of the contested mark had demonstrated the genuine use of the contested mark,” concluded the court.

The court dismissed the action and ordered HR & Managing Licensing to pay costs.

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