Pharmaceutical trademarks and applications for revocation of trademark for non-use to the National Institute of Industrial Property (loi Pacte)
I. Assessment of use with respect to products
In our previous review of case law on pharmaceutical trademarks, we examined the differences in practice between the European Union and French courts in identifying the products for which the trademark was in genuine use when considering an application for revocation for non-use.
It had been noted that the EUIPO re-characterizes the specification of goods by restricting it to the specific goods that it considers to be in use, whereas the French courts identify in the specification the goods corresponding to the goods in use, without changing the scope of the specification.
It is therefore appropriate to examine the position adopted by the National Institute of Industrial Property in the context of the new revocation procedure provided for by articles L.716-1 et seq. of the Intellectual Property Code following the entry into force of the LOI Pacte (“ Pacte law”).
The decision CD20-0005 of June 3, 2021 relating to an application for revocation for non-use filed on April 2, 2020 against the trademark GELOX N°1533727is of twofold interest since:
(i) the National Institute of Industrial Property must rule on the qualification of a sub-category of pharmaceutical products
(ii) and that, to do so, it bases itself on :
a. the criteria identified by the case law of the CJEU recently recalled in the decisions of October 22, 2020, C-720/18 and C-721/18, EU:C:2020:854, Ferrari SpA / DU and July 16, 2020, C-714/18 P, ACT / EUIPO) and
b. a concrete assessment of the products taking into account the definitions of pharmaceutical products and medicines resulting from case law and the public health code.
The National Institute of Industrial Property thus decides that the use of the trademark for a medicine prescribed against pain, burns or heartburn of the stomach or esophagus constitutes a genuine use of the trademark for the subcategory of "medicines for human use" insofar as medicines are likely to constitute an autonomous subcategory of pharmaceutical products, which are distinguished by their human or animal destination.
The National Institute of Industrial Property's assessment therefore differs from that of the EUIPO in that it identifies an autonomous subcategory of a product identified in the specification, and therefore does not rephrase the specification like the EUIPO.
The National Institute of Industrial Property thus rejected (i) the applicant's request to reduce the specification of the mark to "pharmaceutical products for combating heartburn", which it claimed was an autonomous subcategory of "pharmaceutical products", and (ii) the owner's argument that the mark should be recognized as validly used for the subcategory of "medicinal products for human use" on the grounds that the definition of the subcategories of "pharmaceutical products" should be based on whether they are for human or veterinary use.
The National Institute of Industrial Property's analysis is based on the principles established by the case law of the CJEU and recalls in particular:
- that it is necessary to assess in a concrete manner whether the goods used constitute an autonomous subclass of goods in relation to the goods covered by the mark in order to relate the former to the latter, (CJEU of 22 October 2020, C-720/18 and C-721/18, paragraph 41; CJEU of 16 July 2020, C-714/18 P, paragraph 46)
- that the essential criterion for the definition of an autonomous subcategory of products is the criterion of the purpose and destination of the products in question, (CJEU of 22 October 2020, C-720/18 and C-721/18, paragraph 41 ),
- that, "where the goods covered by a trade mark have .../...several purposes, the existence of a distinct subclass of goods cannot be determined by taking into consideration, in isolation, each of the purposes which those goods may have, since such an approach does not make it possible to identify autonomous subclasses in a coherent manner and has the consequence of excessively limiting the rights of the trade mark proprietor (CJEU of October 22, 2020, C-720/18, paragraph 47).
Specifically, the National Institute of Industrial Property recalls that:
- "pharmaceutical products" means medicines and compositions with a therapeutic, curative or preventive purpose (CA Paris, September 25, 2020, RG 19/16330),
- according to article L5111-1 of the Public Health Code, "a medicine is any substance or composition presented as having curative or preventive properties with respect to human or animal diseases, as well as any substance or composition that may be used in humans or animals or that may be administered to them with a view to establishing a medical diagnosis or to restoring, correcting or modifying their physiological functions by exerting a pharmacological, immunological or metabolic action",
then the National Institute of Industrial Property considers that it emerges
- from the definition of pharmaceutical products mentioned above, that pharmaceutical products have the same purpose, namely to treat diseases of the body, and that taking into consideration each specific therapeutic indication in isolation to determine an autonomous subcategory, could lead to excessively limit the rights of the trademark owner,
- and from this definition as well as from the definition of medicines, that medicines are likely to constitute an autonomous subcategory of pharmaceutical products, which are distinguished by their human or animal destination
- evidence of use that the mark is used for "medicines for human use".
In a previous decision, dated February 15, 2021 (DC20-0015) relating to an application for revocation for non-use filed on April 29, 2020 against a French trademark ODEX N°11/3860413 in the name of SC JOHNSON PROFESSIONNEL SA, the National Institute of Industrial Property been able to identify the goods in use within the specification of the challenged trademark, considering that the use of this mark for (i) washing foams for the hands and the body, shower gels for the body and hair, (i) for hand and body cleansing foams, body and hair shower gels, pearlescent hand and body cleansing creams, solvent-free hand cleansing creams and (ii) for bactericidal hand cleansing foams and lotions, demonstrates genuine use respectively for (i) "cleaning and degreasing preparations; soaps; cosmetics; hair lotions" and (ii) for "hygienic products for medicine; disinfectants", covered by the trademark registration, but not for other products such as pharmaceutical preparations.
II. Assessment of use with respect to the signs
a. Use of the sign in a modified form
According to Article L714-5, 3° of the Intellectual Property Code, is a valid use of the mark "The use of a trademark, by the holder or with his consent, in a modified form that does not alter its distinctive character, whether or not the trademark is registered in the name of the owner in the form used.
In the decision dated February 15, 2021 (DC20-0015) relating to an application for revocation for non-use filed on April 29, 2020 against a French trademark ODEX N°11/3860413 in the name of SC JOHNSON PROFESSIONNEL SA, the National Institute of Industrial Property (NIIP) considered that the trademark with a stylization and the addition of a figurative element as represented below do not modify the general impression produced by it and validates this use.
The NIIP's position is in line with the European Union's case law since the distinctive term constituting the trademark is used identically and the added graphic has only a weak distinctive power and is therefore not likely to modify the overall impression produced by the trademark.
b. Use of the mark in combination with another mark
In its decision of March 15, 2021 (DC20-0009) regarding an application for revocation for non-use filed on April 7, 2020 against an ASSAINOL trademark No. 96614247, the NIIP considered that the use of this trademark with the addition of a figurative element in the complex form did not modify the general impression produced by the trademark and thus did not alter its distinctive character.
The NIIP also considered that the ASSAINOL trademark was used as a trademark and not as a reference for a range of products sold under the DEO umbrella brand, since the ASSAINOL trademark was intended to distinguish more specifically certain products in the range, and that the mere presence of the symbol ® of the word "Registered" accompanying the sign DEO, without legal value in France, is not such as to demonstrate that the products are marketed under the trademark DEO and not under the sign ASSAINOL.
III. Place of use
According to article L.714-5, 4°) of the Intellectual Property Code, the following is considered to be trademark use: "4° The affixing of the trademark on goods or their packaging, by the holder or with his consent, exclusively for export.”
In the afore mentioned decision of March 15, 2021 (DC20-0009) regarding the application for revocation for non-use against the ASSAINOL trademark N° 96614247, the NIIP considered that the documents presented by the owner (invoices, brochures, a printing order dated 2015 of a label intended to be affixed to the 5L bottles on which the mark appears as well as the mention "Formulated and produced in France") showed that the products on which the mark is affixed were sold from France to Russia.
IV. Starting point of the suspect period
Pursuant to Article L.716-3 of the Intellectual Property Code, "serious use of the trademark begun or resumed after the five-year period referred to in the first paragraph of Article L.714-5 shall not constitute an obstacle to revocation if such use began or resumed within a period of three months preceding the application for revocation and after the owner learned that the application for revocation might be filed.”
In the above mentioned decision of March 15, 2021 (DC20-0009) concerning the application for revocation filed on April 7, 2020 against the trademark ASSAINOL k No. 96614247 , the applicant for revocation claimed to have sent the owner on December 3, 2019 a letter requesting it to justify the genuine use of the trademark, so that the documents produced, dated after this letter cannot be taken into account to assess the use of the trademark, as they felt within the suspect period resulting from Article L.716-3 of the Intellectual Property Code.
The NIIP refused to accept this date and on the contrary considered that the starting point of the suspect period to be taken into consideration was January 7, 2020, i.e. three months before the application for revocation filed on April 7, 2020, since the aforementioned article refered to a "period of three months preceding the application for revocation".
However, as the trademark owner had filed evidence of the use of its trademark for the five-year period preceding the suspect period, the INPI should have rejected this argument;
Moreover, if the five-year period to be taken into account must indeed exclude the three-month suspect period preceding the filing of the non-use cancellation action, it should be considered that the starting point of the suspect period is the date on which the trademark owner learned that the application for revocation could be filed, contrary to the NIIP's view in the above-mentioned decision.
V. Effective date of lapse
Article L.716-3 of the Intellectual Property Code stipulates that "Revocation shall take effect on the date of the application for revocation or, at the request of a party, on the date on which a ground for lapse occurred. It has an absolute effect".
By application of this provision, and contrary to the applicants’ claim requesting that the cancellation for non-use should take effect from the date of publication of the registration of the challenged mark, the NIIP decided that revocation takes effect from the date of the application for revocation for lack of use (decision of March 15, 2021 (DC20-0009) - mark ASSAINOL N° 96614247).
VI. Allocation of costs
Article L.716-1-1 of the Intellectual Property Code provides that: "At the request of the winning party, the Director General of the National Institute of Industrial Property shall charge to the losing party all or part of the costs incurred by the other party within the limits of a scale set by order of the Minister in charge of industrial property.
In decision of July 28, 2021 (DC 20-0047) relating to an application for revocation for non-use filed against the French part of the international trademark n°756236 P'tit Chambourcy, the NIIP declared that the application for revocation had become devoid of purpose .
Further to the revocation for non-use of the mark in parallel proceedings of which the applicant (as well as the NIIP) could not have been aware.
Consequently, the application for revocation was closed for lack of purpose and not for inadmissibility, and the application for revocation was therefore not granted, so that neither party can be declared the winner and their requests for allocation of costs were therefore denied.
In decision CD20-0005 of June 3, 2021 - trademark GELOX N°1533727, it can be noted that following the partial renunciation of the contested trademark GELOX, the applicant in the revocation action did not justify a legitimate interest in obtaining a decision on the merits of these products, so that the NIIP did not rule on the allocation of cost further to the renunciation;
Therefore, following a partial waiver, it is recommended that a legitimate interest in obtaining a decision on the merits be asserted in order to obtain reimbursement of costs.
VII. Time limits for rendering a decision
NIIP generally renders decisions within 5 months when the owner of the challenged trademark does not file proof of use and 13 months in case of filing of proof and exchange of arguments between the parties.
We therefore recommend filing non-use cancellation action with the NIIP against French marks or French designations of International registration that would be the basis of a pre-litigation claim or if such marks are disclosed by a prior right search.