Shape mark case sent back to Court of Appeal


The French Supreme Court, in one of the last cases to be heard under the French Trademark Law 1964, has overturned a Court of Appeal decision to refuse cancellation of a three-dimensional mark registered for the shape of a pharmaceutical product (Laboratoires Irex v Roche Case 21.01.2004).

Pharmaceutical giant Roche registered a three-dimensional mark for the shape of its LEXOMIL tablets in 1985. Following the expiration of Roche's pharmaceutical patent, Laboratoires Irex started to sell a generic product under the name Anyrex. Irex's tablets had the same shape as that covered by Roche's mark. Roche brought trademark infringement proceedings against Irex. Irex counterclaimed and requested the cancellation of the mark on the basis that the shape was dictated by its technical function.

At first instance, the court rejected Irex's counterclaim and the Paris Court of Appeal affirmed this decision. It noted, among other things, that a wide range of shapes was available to Irex to use for its tablets and it was not necessary, therefore, for it to use a shape that was very similar to Roche's shape mark. The court also stated that the shape used by Irex in Portugal for the same pharmaceutical product was different from that used on the French market. Irex, said the court, had failed to explain satisfactorily why this was the case. Irex appealed.

The French Supreme Court first stated that the applicable law was the Trademark Law 1964, which provides that a shape cannot be a trademark if it is made up of signs that relate exclusively to the nature of the relevant product or service. It stated that this required the courts to make a thorough examination of whether the shape of Roche's mark was solely dictated by its technical function. As the lower court had not ruled on this issue, the Supreme Court reversed its decision and remanded the case back to the Court of Appeal.

The Trademark Law 1964 was the legislation in force prior to the implementation in France of the Community Trademark Directive. It is worth noting, however, that the provisions in the old law are not too dissimilar to those in the new law. Therefore, this decision could well be considered in cases under the new law.

Richard Milchior, Milchior-Smilevitch, Paris

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