13 Feb The General Court has no doubt at all: food supplements are not pharmaceutical products.
Pharmacies have changed a lot through years and have developed into shops where consumers navigate in an avalanche of products (medicinal, dietary, hygiene, etc.) which can be easily interconnected and used in the same treatments -but with different focus-as they are all intended to improve health. So, is there a clear boundary between all these goods or are they all simply “pharmaceutical products”?
In this line, in a recent decision of the General Court, Case T-12/22 Hasco TM/EUIPO – Esi (NATURCAPS), the Court has made it clear that pharmaceutical products and food supplements fall within the field of health, as do dietetic substances adapted for medical use or nutritional or dietary supplements. However, while such a finding may be relevant in the context of the comparison of those goods for the purposes of Article 8(1)(b) of Regulation 2017/1001, that is, when examining the likelihood of confusion between two marks, the Court has considered that it is not so in the context of the examination for the purposes of Article 64(2) of Regulation 2017/1001, read in conjunction with Article 47(2) of that regulation, that is, in connection with the genuine use of a mark for the goods or services for which it was registered.
The case involved an application for a declaration of invalidity of the EU trademark “NATURCAPS” before the EUIPO filed by the company Hasco TM sp. z o.o. sp.k (HASCO). The application was based on the earlier Polish word mark “NATURKAPS”, filed on 9 November 2000 in Poland, registered on 10 September 2004 and then duly renewed, for pharmaceutical products in class 5.
Following the request made by Esi Srl, the proprietor of the mark “NATURCAPS”, the EUIPO invited HASCO to submit proof of genuine use of their earlier mark relied on in support of the application for a declaration of invalidity.
The Cancellation Division considered that the evidence filed by HASCO did not prove genuine use for the registered goods and rejected the application for a declaration of invalidity in its entirety on this ground.
HASCO then filed an appeal against the decision of the Cancellation Division. The Board of Appeal found that, given that HASCO had not put forward any argument relating to the assessment of the proof of use, namely that the evidence had actually been adduced for the use of food supplements only, the sole issue raised before it was whether or not the use shown for food supplements could be classified as use for pharmaceutical products in Class 5 protected by the earlier mark.
The Board of Appeal concluded that the class heading of Class 5 made a clear distinction between pharmaceutical products, on the one hand, and dietetic substances, on the other hand, as separate indications; that the use of the earlier mark for food supplements could not be considered to be use for the registered goods or for a subcategory thereof; the food supplements came under dietetic substances adapted for medical use and the goods for which genuine use had been demonstrated, namely dietary supplements, were distinct from pharmaceutical products.
HASCO pursuing its claim filed an appeal before the General Court alleging that its earlier mark was used for the goods in respect of which it was registered, namely pharmaceutical products in Class 5.
The General Court first considered that as HASCO did not dispute the Board of Appeal’s finding that the goods for which the earlier mark was used were food supplements only, just the finding that food supplements are not covered by the broad specification pharmaceutical products was subject to its assessment.
In this regard, the Court stated that the list of goods and services for which an earlier mark is registered and in respect of which proof of genuine use has been requested must be interpreted in the most coherent manner, in the light not only of its literal meaning and its grammatical construction, but also, if there is a risk of an absurd result, of its context and the actual intention of the mark’s proprietor as regards its scope.
The Court asserted that all the goods in Class 5 relate in one way or another to health but at the same time indicates that the heading of Class 5 made a clear distinction between pharmaceutical products, on the one hand, and dietetic substances, on the other hand, but did not yet include a separate category for food supplements.
It is understood by the Court in accordance with the Board of Appeal that the category of pharmaceutical products, for which the earlier mark was registered, covers goods resulting from pharmacy, that is to say the art of creating, preparing, preserving and dispensing or administering medicinal products, intended for the treatment or prevention of illnesses whereas the food supplements marketed by HASCO under the earlier mark are goods which are concentrated sources of nutrients. According to a literal meaning, their purpose is to supplement the nutritional value of the normal diet of a human being and their main purpose is not the treatment or prevention of illnesses, although they are generally also used to improve the health of a patient.
Therefore, that definition indicates that food supplements do not come under the pharmaceutical products category in Class 5, covered by the earlier mark, and makes them more likely to fall under the category of dietetic substances adapted for medical use, which are intended for the treatment of a specific nutritional deficiency.
The Court also affirms that it is for the applicant, as proprietor of the earlier mark, to ensure that the definition of the goods in respect of which it claims protection of its mark is clear; it cannot rely in its favour on any doubt or any overlap between the headings of the Nice Classification.
The Court claims that, dietetic substances adapted for medical use, unlike pharmaceutical products, share the same specific purpose as food supplements.
The Court also rejects the argument based on the fact that food supplements are sold in pharmacies. The sale of certain goods in pharmacies does not mean that they are pharmaceutical products. So, there it is, the answer to the question we have raised at the beginning of this article.
This decision highlights once again the importance of prior to initiating any action against any third parties’ mark(s), one has to be sure that its own (earlier) right can be supported by (genuine) evidence which is related to the category o subcategory for which the mark is registered. Otherwise, your action will be rejected, and needless to say, you could also put your earlier mark at the risk precisely on this basis.
The requirement to prove use is no easy task. In fact, failure to provide adequate evidence could have a devastating impact on a case: Just as well you can entrust CURELL SUÑOL to deal with this struggle and, most of all, seek a preliminary assessment from us to register your marks for the right list of goods and services. We know how to do it, it is our job!
Author: Isabela Robledo McClymont, Lawyer
If you want to access the full text of the decision, you will find it in the following link: https://curia.europa.eu/juris/document/document.jsf?text=&docid=268206&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=31358