Court considers whether use for specific goods is sufficient to establish use for class


The Federal Administrative Court has considered whether the use of a trademark for specific pharmaceuticals - here "antibiotic creams for the treatment of burns" - was sufficient to uphold protection of the mark for the claimed goods - namely, "pharmaceuticals" without further specifications (B-6375/2011, August 12 2013).

The owner of the trademark FUCIDIN opposed the application for the registration of FUSIDERM, which claimed protection for pharmaceuticals, with the exception of those for the treatment of psoriasis, neurodermitis and Crohn's disease. The owner of the mark applied for claimed that FUCIDIN had not been put to genuine use for "pharmaceuticals"; according to the applicant, it could be shown that FUCIDIN had in fact been used for "antibiotic creams for the treatment of burns".

The question before the Administrative Court was whether this was sufficient to establish use for "pharmaceuticals". The court held that it was not - the relevant consumers (medically trained persons) would not think that a trademark used for a drug with a specific indication was used for drugs with wholly different indications. They would, however, believe that the trademark was used for drugs with similar indications. In this case, use of the mark for "antibiotic creams for the treatment of burns" established use for "prescription ointments".

The court found that "prescription ointments" and the goods claimed by the mark applied for were similar, as the latter encompassed prescription ointments.

With regard to the similarity of the signs, the court noted that 'fusi' and 'fuci' would be understood as abbreviations for 'fusidic acid', the common active ingredient of the goods (and an international non-proprietary name or INN). Since the similarity between the marks was limited to these descriptive terms, there was no likelihood of confusion between the marks and the opposition was dismissed.

The case is important for several reasons. Most trademarks for pharmaceutical goods are used only for pharmaceuticals with a specific indication - after all, there is no 'cure all'. Therefore, the court's observations on sufficient use are highly relevant for practitioners. The court also seems to deviate from the Swiss practice whereby pharmaceutical goods, irrespective of their indications, were always considered to be similar (see RKGE of March 15 2005, SILKIS v SIPQIS). The decision of the court in the present case can be understood as meaning that the indications must be similar for an opposition to have a chance to succeed.

In addition, the decision somehow contradicts the recent decision of the court in GADOVIST v GADOGITA. In that case, the court held that the fact that a sign contains an INN stem does not mean that its scope of protection is limited. The question was whether the relevant consumers (physicians) would understand the term descriptively. In the FUCIDIN decision, the court did not seem to consider how the relevant consumers would understand the marks, and simply concluded that, since fusidic acid is an INN, the term 'fusi' enjoys no (or very limited) protection as a trademark.

Mark Schweizer, Meyerlustenberger Lachenal, Zurich

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