Genuine Use of a Trademark – Always relevant, always worth a Reminder

Genuine Use of a Trademark – Always relevant, always worth a Reminder

In our series of blog articles, genuine use of a trademark has already been an issue. But since the topic is very important and can even lead to loss of trademark rights, awareness raising cannot be rated high enough. We therefore chose the “LUTAMAX” decision of the General Court of the European Union (Joined Cases T-221/22 and T-242/22) to bring the topic to your attention once again.

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BACKGROUND

If you are the owner of a registered trademark, you are allowed to take action against somebody else using a younger identical or similar mark for goods and services that are identical or similar to the ones for which your trademark is registered. However, the scope of protection of your trademark is not only defined by the mark and the list of goods and services, but also by the actual use of the mark for the registered goods and services. While the owner of a European Union trademark is privileged during the first five (5) years after registration, a trademark might lose its enforceability against third parties after those first five (5) years if it is not used for all registered goods and services. Defining the actual scope of protection of your registered trademark is therefore essential when taking action against somebody else. Unfortunately, the scope is not easy to determine as it is strongly influenced by the specific circumstances in each case and even different judicial instances may come to different conclusions.

In the “LUTAMAX” case concerning a revocation proceeding against EU Trademark No. 003472974 “LUTAMAX” (word mark), the contested mark was, inter alia, registered in Class 5 for

• “Dietary supplements adapted for medical or dietetic use; none of the aforesaid goods for veterinary purposes”.

Actual use of the trademark had been for a capsule of lutein to be ingested on a daily basis, as part of a balanced diet, intended for the dietetic treatment of age-related macular degeneration (AMD), a specific eye disease.

The Cancellation Division of the EUIPO held that such use was use of the contested mark for

• “Dietary supplements adapted for medical or dietetic use for the treatment of age-related macular degeneration; eye care preparations (for pharmaceutical purposes) for the treatment of age-related macular degeneration; none of the aforesaid goods for veterinary purposes”.

Upon appeal, the EUIPO’s Board of Appeal amended the wording and confirmed use of the mark “LUTAMAX” for

• “Dietary supplements adapted for medical or dietetic use for supporting eye health, none of the aforesaid goods for veterinary purposes”.

Upon further appeal, the General Court decided that EU Trademark No. 003472974 “LUTAMAX” (word mark) had been used for

• “Dietary supplements adapted for medical or dietetic use; none of the aforesaid goods for veterinary purposes”.

Same case – three instances – three different decisions.

DECISION OF THE GENERAL COURT

Based on the evidence presented by the trademark owner, the General Court first had to decide whether use for a capsule of lutein was use for dietetic food (as the revocation applicant claimed and for which the trademark was not registered) or for dietary supplements (as registered). Most consumers rarely think about the difference between these two terms as it is more of an administrative difference than one that really effects consumers. However, for a trademark owner, the difference can become crucial when its trademark rights are at stake.

Regarding the “LUTAMAX” product, the General Court held that

• To determine whether a product was a “dietary supplement” or a “dietetic food”, it was necessary to refer to norms of EU law for guidance. In particular case, Directive 1999/21/EC of 25 March 1999 on dietary foods for special medical purposes and Directive 2002/46/EC of the European Parliament and of the Council of 10 June 2002 on the approximation of the laws of the Member States relating to food supplements needed to be taken into account.
• Based on the Directives, the trademark owner’s lutein product fell into the definition of “food supplements” and, more precisely, into the category of “dietary supplements adapted for medical or dietetic use”.
• The category of “dietary supplements adapted for medical or dietetic use” was sufficiently clear in itself and did not require a division into a subcategory specifying the therapeutic indication of supporting eye health as held by the Board of Appeal.

“Dietary supplements adapted for medical or dietetic use” already constitute a subcategory in Class 5 of the Nice Agreement. Unlike “pharmaceutical preparations” in Class 5, “dietary supplements adapted for medical or dietetic use” do not necessarily have a precise and specific therapeutic indication. The systematic identification of coherent subcategories within this category of goods based on their therapeutic indication would, inter alia, excessively limit the rights of the trademark proprietor in the legitimate interest in expanding the range of goods or services for which the trademark is registered and must therefore be ruled out.

Three different decision making bodies, three different decisions. As you can see, maintaining registered trademark rights based on actual use is not always a clear-cut case. Thank you to the General Court for further guidance regarding Class 5 goods.

Should you have a similar issues with the list of goods and services of your trademark(s), you are welcome to contact us by phone at 089 55 879 870 or by email at