Trademarks can have a makeover without affecting their distinctiveness or genuine use
This article first appeared on WTR Daily, part of World Trademark Review, in July 2020. For further information, please go to www.worldtrademarkreview.com.
Dermavita filed an action for the cancellation of Allergan’s JUVÉDERM mark in Class 5 on the ground of non-use
Allergan submitted proof of use and the action was rejected; on appeal, Dermavita argued that the mark was being used for goods and services for which it was not registered.
The General Court held that the mark (and its various forms) had been used in line with its registration.
Allergan Inc registered the sign JUVÉDERM on 13 March 2008 for “pharmaceutical products administered by injection for the use in moisturising skin and reducing wrinkles” in Class 5.
On 1 April 2016 Dermavita filed a cancellation action on the ground of non-use. In response, Allergan submitted evidence of use, which the Cancellation Division considered sufficient and the action was dismissed. However, Dermavita then formed an appeal on the basis that the evidence of use did not concern the products for which the sign was registered. This was dismissed by the Fourth Board of Appeal of the EUIPO. Undeterred, and on the basis of the same argument, Dermavita filed an appeal against this decision.
Dermavita formed the appeal on the basis of three pleas. In the first, it stated that the mark was not used for the goods for which is was registered. The court recalled the principal of genuine use “where the mark is used in accordance with its essential function, which is to guarantee the identity of origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services”.
In the present case, the mark was registered for the abovementioned goods. However, the proof of use that was provided concerned injectable dermal fillers, which Dermavita claimed are not “pharmaceuticals”, but rather “other preparations for medical use”, based on the EU Convention declarations of conformity and opinions of health authorities. However, the court recalled (as did the EUIPO) that the goods are classed as per the Nice Classification – not EU legislative measures. The product is the same as those covered in the same general category of “pharmaceutical preparations” as per the Nice Classification, has medical effects on the skin and must be administered by physicians and clinics. Consequently, the General Court confirmed that the use of the mark was demonstrated for the registered goods.
In the second plea, Dermavita claimed that the form in which the mark was used differed from the form in which it was registered. For example, the sign was used as JUVEDERM ULTRA, JUVEDERM VOLBELLA, JUVEDERM VOLUMA, JUVEDERM VOLIFT and JUVEDERM VOLITE. The court recalled Article 15(1) of Regulation 207/2009, according to which “the use of the trademark in a form which differs from the form in which it was registered is regarded as use for the purposes of the first subparagraph of that article provided that the distinctive character of the mark in the form in which it was registered is not altered”.
The court confirmed that the terms used in association with JUVEDERM were descriptive and did not alter the distinctive character of the sign, which remained dominant, and therefore rejected the second plea. It is interesting to note that Allergan had deemed it useful to file each one of the above declinations. This perhaps implies that it considered these terms of importance as a whole. Moreover, this suggests that it wished to develop a family of marks around JUVEDERM, although this was not developed in the arguments of the decision.
In the third plea, Dermavita claimed that the evidence did not demonstrate that the trademark was used by its registered owner. The court referred to Article 15(2) of Regulation 207/2009, in which “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”. In this case, the owner demonstrated through the proof submitted that an economic link existed between the entities and that use was carried out with the owner’s consent. This third plea was equally rejected.
The decision was handed down in accordance with established case law. It shows that it is crucial that owners use their marks in line with the principle of genuine use and maintain their distinctiveness. The present case highlights the importance of consistently gathering proof of use, especially when this concerns use between economically-linked entities within the same group.
In addition, this decision must also be kept in mind in situations where applicants file applications for restricted wordings, but intend to use the mark for other goods or for a more general category of products. In this case, Allergan had used an adapted strategy in forming its wording of the goods – while the wording was restricted to its field of activity, Allergan maintained a wording that was large enough to encompass the use carried out. Applicants should therefore be cautious of using a wording that is too limited or restrictive.