Good news for Allergan as General Court confirms genuine use of JUVEDERM ULTRA in Class 5
This article first appeared on WTR Daily, part of World Trademark Review, in December 2020. For further information, please go to www.worldtrademarkreview.com.
Dermavita sought the revocation of Allergan’s mark JUVEDERM ULTRA on the ground of non-use
The EUIPO found that there had been genuine use of the mark in relation to goods in Class 5
The General Court rejected Dermavita’s argument that those goods did not fall within the scope of Directive 2001/83 as pharmaceuticals
On 18 November 2020 the General Court issued its decision in Dermavita Co Ltd v European Union Intellectual Property Office (EUIPO) (Case T‑643/19).
On 20 September 2007 Allergan Inc filed a trademark application for JUVEDERM ULTRA for the following products:
Class 5: “Pharmaceutical products administered by injection for use in moisturising skin and reducing wrinkles”; and
Class 10: “Dermic implants, including visco-supplementation substances for medical use, intended for wrinkle filling or volume increasing”.
On 8 March 2016 Dermavita Co Ltd filed an action for revocation of the mark on the ground of non-use. This was partially dismissed, as the Cancellation Division of the EUIPO upheld the action only for the goods in Class 10. The parties formed an appeal against this decision, which was dismissed by the Fourth Board of Appeal of the EUIPO. Following this, Dermavita appealed against the finding that there had been genuine use of the mark in relation to the products in Class 5.
Dermavita relied on a single plea in law split into two parts.
In the first part of the plea, Dermavita argued that the use made by Allergan was not in line with the wording of the goods in Class 5 for which the mark was registered: the sign was used to designate dermal fillers, but had been registered for “pharmaceutical products”. Dermavita considered that dermal fillers were not pharmaceutical products as defined by Directive 2001/83, as they are products used for beauty purposes, rather than to ‘treat or prevent disease’.
The General Court rejected this argument, recalling that the primary function of a trademark is to guarantee the commercial origin of the goods, rather than guaranteeing their quality. Even if the products at issue do not have the characteristics of pharmaceutical products within the meaning of the directive, this did not change the fact that they were registered as dermal fillers and used as such. Therefore, use of the mark was confirmed for these goods.
In the second part of the plea, Dermavita argued that use of the mark was not made with the consent of the trademark owner: as it was not the listed owner who exploited the mark, such use could not be recognised.
As Allergan had participated in the action and provided proof of use, the court held that use by one of Allergan’s entities was made with its consent. Further, the court recalled that, according to established case law:
The use of a trademark by a company which is economically linked to the proprietor of the mark is presumed to be use of that mark with the consent of the proprietor and is therefore to be deemed to constitute use by the proprietor.
Consequently, the court rejected the second part of the plea and dismissed the appeal.
In accordance with a previous decision concerning the same parties and the trademark JUVEDERM (Case T-104/19), the court maintained the same line of reasoning and confirmed that the description of the goods/services as filed and the use made of the mark must be coherent. Applicants must thus proceed with caution and ensure that the wording of the description corresponds to the intended use of the sign.