Pharma mark held to be identical to common abbreviation

European Union
In Longevity Health Products Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-190/09, March 9 2011), the General Court has upheld the Board of Appeal of OHIM’s decision to cancel the registration of the Community trademark (CTM) 5 HTP for goods in Class 5 of the Nice Classification (being, among other things, pharmaceutical, veterinary and sanitary preparations).

Longevity Health Products registered 5 HTP as a CTM in January 2004. Two years later, a third party brought cancellation proceedings on the grounds that the registration was contrary to Articles 7(1)(d) and (g) of the Community Trademark Regulation (40/94) (although proceedings were brought under the provisions in force at the time).

In March 2008 the Cancellation Division of OHIM upheld the application for cancellation for all goods in Class 5. Longevity appealed. On appeal, the Board of Appeal’s reasoning was as follows:
  • the mark was nearly identical to the customary abbreviation '5-HTP' for the naturally occurring amino acid 5-hydroxytrytophan;
  • the Cancellation Division was not wrong to include health professionals within the relevant public;
  • the difference in spelling between the mark and the customary abbreviation was minor (only a hyphen);
  • the mark was used in current language and good-faith practices of the trade and, therefore, fell within the scope of Article 7 grounds for refusal; and
  • the mark could not be saved by Article 52(2), as Longevity had failed to prove that the mark had acquired distinctive character as a result of its use.
Longevity appealed to the General Court on two points of law, while OHIM raised its own separate argument as to the admissibility of the appeal. OHIM’s challenge to the admissibility of the appeal was based on a technical argument that Longevity had not provided sufficient evidence of authorisation of its EU representative. The General Court disagreed that the evidence was insufficient.

The General Court began its consideration of the first ground of appeal by clarifying that Article 7(1)(d) can be used only to refuse trademarks in light of the information available at the time the application was filed. In its view, the customary nature of a mark should be interpreted only by reference to the goods in the application - even if Article 7 does not refer to this - and to the relevant public (the customary nature must be considered in conjunction with the presumed attention of the average consumer.) The General Court also clarified that, although there is overlap between Article 7(1)(c) and (d), marks fail under the latter not due to their descriptiveness, but to their customary nature in respect of the goods. It also noted that, where a mark has become part of everyday language or part of the good-faith practices in the trade, it no longer fulfils its basic purpose of establishing the origin of the goods.

In the case in point, the mark had been registered for goods in Class 5, so the General Court considered the mark in relation to those goods. In line with existing case law, the court noted that, for pharmaceutical goods, the relevant public consisted of medical professionals, as well as patients who were the end users of the products. Where the mark was not language specific, as in the present case, the relevant public could be anyone in a member state.

It was also noted that, while the Board of Appeal’s decision did not specify whether it considered the relevant public to be professionals or consumers, this would not have affected its conclusion because, due to the nature of the goods, the consumer’s attention would be especially high.

Longevity raised the argument that the mark was not a true abbreviation due to the absence of a hyphen, but the General court noted that it had filed no evidence to contradict the view that the mark served as an abbreviation (with or without the hyphen), and that the relevant public would not attach importance to a hyphen, especially as it is not pronounced in spoken language. It was also noted that Article 7(1)(d) does not require descriptiveness, so Longevity’s arguments that the mark was not an exact abbreviation was irrelevant. The first ground of appeal was thus rejected.

Longevity also argued that the mark had acquired distinctiveness through use. The General Court noted that distinctiveness must have been acquired between the date of registration and the date of the application for a declaration of invalidity, and that distinctiveness could be evidenced through:
  • market share;
  • market strength;
  • geographical scope;
  • length of use; and
  • investment in promoting the mark.
In the case in point, the evidence submitted by Longevity included a price list and information about the goods. It did not explain why the evidence showed public awareness of the mark, rather than that the mark was a generic pharmaceutical term. The second ground of appeal was thus rejected.

Given the capacity of brand names to generate revenue, particularly in the pharmaceutical industry, this judgment may be more damaging for Longevity than it would have been for companies operating in other industries. It is common knowledge that this particular industry is inundated with competing brands, so it is perhaps not surprising that there is a trend for pharmaceutical marks to be subjected to closer scrutiny from OHIM and to challenges by competitor brands. As a relevant example of this, Longevity’s CTM application for RESVEROL was refused by the General Court in December 2010 due to an earlier registration of LESTEROL for the same class of goods (for further details please see "Decision shows dangers of allowing marks to be compared in the abstract").

Ellen Forrest-Charde and Chris McLeod, Squire Sanders & Dempsey (UK) LLP, London

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