Pharmaceutical preparations’ will be removed from your trade mark registration if you are only using for dietetic substances, vitamins and supplements according to the General Court
Late last year, the General Court issued its decision in the Hasco (NUTURCAPS) case. The factual scenario is slightly complicated (there’s some accession points in there for those interested!), but the outcome is clear.
If your trade mark is registered for ‘pharmaceutical preparations’, vulnerable in the EU (i.e. more than 5 years old) and only being used for vitamins, supplements and/or dietetic preparations, then your trade mark registration can be revoked and removed from the register for non-use.
In 2019 Hasco TM (a Polish company) filed to invalidate NATURCAPS registered in the name of Esi Srl based on its earlier trade mark NATURKAPS. So far, so good. The mark being invalidated, NATURCAPS, covered a variety of goods in Class 5 including dietary and nutritional supplements. The earlier trade mark, NATURKAPS, covered ‘pharmaceutical products’. In the proceedings Esi Srl requested proof of use of the NATURKAPS trade mark for ‘pharmaceutical products’, it being more than 5 years old and relied upon in the invalidity.
Proof of use was filed by Hasco, but the finding of the Board of Appeal was that the proof of use did not support the trade mark as registered. The evidence adduced was for the use of NATURKAPS as a food supplement. The sole issue before the General Court was whether ‘food supplements’ could be classified as ‘pharmaceutical products’. Definitely not says the General Court.
In re-iterating the findings of the Board of the Appeal the GC confirmed:
- where a trade mark was registered for only part of the general indications listed in the class heading of a particular class, but it had been used only for goods or services which fell under another general indication in that same class, the mark could not be regarded as having been used for the registered goods or services;
- the class headings of Class 5 made a clear distinction between pharmaceutical products, on the one hand, and dietetic substances, on the other hand, as separate indications (even under the 7th Edition of NICE which was relevant here);
- the use of the earlier mark for food supplements could not be considered to be use for the registered goods or for a subcategory thereof; and
- the food supplements came under dietetic substances adapted for medical use and the goods for which genuine use had been demonstrated, namely dietary supplements, were distinct from pharmaceutical products.
Hasco argued that ‘pharmaceutical products’ was a generic term which includes both medicinal products and food supplements since all of those products are intended to improve health. Again, re-iterating the Board of Appeal, the General Court ruled:
“the category of ‘pharmaceutical products’, … covers goods resulting from pharmacy, that is to say the art of creating, preparing, preserving and dispensing or administering medicinal products, intended for the treatment or prevention of illnesses.
The food supplements marketed by the applicant under the earlier mark are goods which are concentrated sources of nutrients. According to a literal meaning, their purpose is to supplement the nutritional value of the normal diet of a human being and their main purpose is not the treatment or prevention of illnesses, although they are generally also used to improve the health of a patient.
Therefore, that definition indicates that food supplements do not come under the ‘pharmaceutical products’ category in Class 5, covered by the earlier mark, and makes them more likely to fall under the category of ‘dietetic substances adapted for medical use’, which are intended for the treatment of a specific nutritional deficiency.”
Impact of the decision:
We all know how incredibly full Class 5 is. It covers everything from ‘purely’ pharmaceutical products which are regulated and prescribed, through to vitamins you can buy off the shelf, all the way through to the exact opposite of anything wellness related – ‘poisons’. There were nearly 12,000 EU applications made for class 5 in 2022, a class seeing year on year growth, only rivelled by class 9 (thanks Metaverse). Trade mark clearance work in class 5 requires thought out reasoning and research on whether you are dealing with a highly attentive end consumer (such as a doctor for regulated pharmaceuticals) or the average Joe who will pick their vitamins off the shelf (read as ‘order online’).
The decision is helpful because it supports the position that most of us have mooted – that a pharmaceutical and a supplement, vitamin, whatever you want to call it, should be able to co-exist. There needs to be some delineation in respect of Class 5, and this is a step towards that. It’s understood that there’s wiggle room in Class 5 because of the different consumers and advising your clients or the business appropriately as a result of this is key. This is why there are so many Class 5 co-existence agreements around these type of products – albeit no-one really has oversight of the level of formalised co-existence as agreements of this kind are not registrable against trade marks. But maybe they should be! Maybe that would help us create a ‘workable’ class 5. A class where we also have the difficulty of working within a Regulatory naming regime as well.
Although the case doesn’t go as far as saying that pharmaceuticals and vitamins are dissimilar for opposition and invalidity purposes (and we have decisions that say the contrary), that does feel like the very gradual direction of travel for this class. It also feels, as many of us have long suspected, that Class 5 both in the UK and EU would benefit from a more US way of drafting and registering specifications (very narrow).
The case solidifies and reconfirms what we all know – review and renew your portfolio. If you don’t have sufficient coverage you’ll need to re-apply and make sure it’s for terms that reflect your actual use.
If you need advice in respect of the article and new filings, please contact Alicja in respect of the EU and Kelly in respect of the UK.