INTA files SCOTUS brief in Bayer ‘Flanax’ case

The International Trademark Association (INTA) has filed an  amicus brief asking the US Supreme Court to review a  decision in a case between Belmora and Bayer centring on pain relief drug Flanax (naproxen).

Bayer owns the trademark for ‘Flanax' in Mexico and has sold the drug under the mark there since 1970, while Belmora owns the same trademark in the US and has been selling the drug since 2004.

Bayer had sued Belmora on several grounds, including false designation of origin. The Trademark Trial and Appeal Board (TTAB) had earlier cancelled Belmora’s trademark for ‘Flanax’.

The US District Court for the Eastern District of Virginia dismissed Bayer’s claims because it said Bayer “lacks standing to bring the statutory cause of action”.

The district court further concluded that Bayer, as the owner of a foreign ‘Flanax’ trademark, was not permitted to use the mark in the US to assert priority rights over Belmora’s US ‘Flanax’.

As a result of the court’s ruling, the TTAB decision was reversed and Belmora’s trademark ordered to be reinstated.

The US Court of Appeals for the Fourth Circuit later vacated and remanded the  ruling of the Eastern District of Virginia.

Belmora filed a petition for a writ of certiorari in October this year.

In the INTA brief, filed on Monday, November 21, it was explained that the Supreme Court should grant certiorari because the case “presents a timely opportunity to provide clarity and guidance on an issue of great importance to trademark owners”.

The amicus brief said clarity is needed on whether a foreign trademark owner can establish standing to pursue claims against the owner of the same mark in the US and, if so, under what circumstances a foreign trademark owner would establish such standing.

INTA explained in the brief that “the inconsistent rulings of the courts of appeals have also led to, and will continue to cause, forum shopping, inconsistent outcomes, and consumer confusion”.