ECJ: therapeutic indication is essential criterion for defining sub-category of pharma goods

In Office for Harmonisation in the Internal Market v Kessel medintim GmbH (Case C-31/14 P, December 11 2014), the Court of Justice of the European Union (ECJ) has upheld a judgment of the General Court which had set aside a decision of the Board of Appeal of OHIM on the ground that the latter had erred in law.

On November 7 2007 Kessel medintim GmbH filed an application for the registration of the Community trademark (CTM) PREMENO. The goods in respect of which registration was sought belonged to Class 5 of the Nice Classification and corresponded to the following description: “vaginal suppositories”.

Janssen-Cilag GmbH brought opposition proceedings against the application based on the earlier German trademark PRAMINO, registered for “prescription medicines” in Class 5. On February 26 2010 the Opposition Division of OHIM refused the application for goods corresponding to the following description: “prescription medicines, namely medicines intended for hormonal contraception”.

On April 26 2010 Kessel brought an action against the decision of the Opposition Division and asked to restrict the list of goods contained in its application to “vaginal suppositories against vaginal infections and dryness delivered without a doctor’s prescription”. On September 21 2010 the Board of Appeal dismissed the action and refused to restrict the list of goods on the ground that the absence of a doctor’s prescription was irrelevant.

Kessel appealed to the General Court, which decided to set aside the decision of the Board of Appeal. The General Court judged that, in accordance with case law, the therapeutic indication was the essential criterion that enabled to identify the pharmaceutical products covered by the CTM application, notwithstanding the fact that Kessel had highlighted an inappropriate criterion (ie, the absence of medical prescription). The General Court concluded that the Board of Appeal had infringed Article 43(1) of the Community Trademark Regulation (207/2009) by not taking into account the restriction to the list of goods requested by Kessel.

OHIM subsequently asked the ECJ to set aside the judgment of the General Court, relying on two grounds of appeal.

Regarding the first ground of appeal, OHIM submitted that a restriction to the list of the goods in respect of which registration is sought cannot be taken into consideration if it is imprecise, which is the case when it is based on a criterion such as the absence of medical prescription.

The ECJ confirmed that the General Court had correctly found that the restriction requested by Kessel could not be rejected for the sole reason that it referred to the irrelevant criterion of the absence of a doctor’s prescription. The restriction was in any case based on the criterion of the therapeutic indication, which constitutes an essential criterion for defining a sub-category of pharmaceutical goods intended to be covered by a CTM.

The ECJ added that the inclusion of the criterion of the absence of medical prescription did not necessarily affect the clarity or precision of the restriction as a whole. In any case, the decision of the Board of Appeal was not based on a lack of clarity of the restriction; therefore, the General Court had been right to conclude that the Board of Appeal had erred in law.

As far as the second ground of appeal was concerned, OHIM submitted that it was bound by the terms of the restriction requested by Kessel and could not rephrase the list of goods for which registration was sought. According to OHIM, the General Court had found that the Board of Appeal should have accepted the restriction in part and rejected it in part.

The ECJ rejected the second ground of appeal, holding that the General Court had found that the Board of Appeal should have taken into consideration the restriction as phrased by Kessel.

As a consequence, the ECJ rejected the appeal.

The position taken by the ECJ is in line with previous judgments. In Reckitt Benckiser (España) SL v OHIM (Case T-126/03), the then Court of First Instance of the European Union had considered a case in which the description of the goods was restricted to a category of goods under the Nice Classification, with regard to both the function and the intended purpose of the goods. As a consequence, the mark was held to have been registered for a collection of goods forming a particularly precise and narrowly-defined sub-category of the category of goods to which it belonged under the Nice Classification (Paragraphs 47-48).

In another case regarding pharmaceutical goods, the Court of First Instance had judged that, since consumers are searching primarily for a product or service which can meet their specific needs, the criterion of the purpose or intended use is of fundamental importance in the definition of a sub-category of goods or services. As far as a therapeutic preparation is concerned, its purpose and intended use are expressed in its therapeutic indication. The dosage form, the active ingredient and the obligation to obtain a doctor’s prescription, are, as a rule, inappropriate criteria for defining a subcategory of goods (Mundipharma AG v OHIM (Case T-256/04), Paragraphs 29-31).

In the present case, the situation was slightly different from that in Mundipharma since both relevant and irrelevant criteria were invoked by the applicant to define the sub-category of goods to be covered by the mark. However, the position taken by the ECJ flows logically from established case law.

Richard Milchior, Granrut Avocats, Paris