As soon as the grace period during which
there is no obligation to put the mark to
use has expired, it is important to indeed
use trade marks in order to enforce them
successfully. For this purpose, all of the
goods or services registered must be put
to genuine use. Alternatively, there must
be proper reasons for non-use to avoid
the legal consequences of non-use, which
may lead to cancellation of the trade
mark in the worst case.
Trade marks for medical products are
regularly registered under the heading of
pharmaceutical preparations in
accordance with the Nice Classification.
They are commonly used for only one
specific indication, however. Thus the
question arises whether the trade mark
owner is restricted to only this one
specific product in its particular
composition, prescription status, etc or
whether he can be granted the broader
extent of protection of the Nice
Classification class heading. The German
Federal Patent Court is steering a middle
course on this matter. Where
pharmaceutical marks are concerned, it
uses the general indications of a list of
medicinal products that groups
pharmaceutical goods under 88 headings
(groups of indications or active
substances) in Germany (ROTE LISTE -
Red List).
One example: the trade mark Babix has
been registered for pharmaceutical
preparations and is used for a drug to
treat respiratory diseases with thick
phlegm. According to the Red List, this
drug is to be grouped under heading 24
of antitussives/expectorants. The German
Federal Patent Court held that the trade
mark was used in a way that rights were
preserved for antitussives/expectorants,
but not for any additional goods under
the general indication of pharmaceutical
preparations.
In principle, a trade mark must be used in
the form in which it was registered.
Differences that leave the distinctive
character of the trade mark unchanged
however, have no prejudicial effect under
Section 26(3) German Trade Mark Act.
Differences without prejudicial effect are
to be presumed where the relevant public
will perceive the registered and used
forms as the same trade mark from their
overall impressions.
It is often difficult to judge the addition of
new elements to the trade mark. If
another distinctive element is added to
the sign, it will often change the
distinctive character of the mark.
The German Federal Patent Court
therefore denied that rights were
preserved by using the trade mark
TIMOPTOL in the form of
CHIBRO-TIMOPTOL. The Court held
that CHIBRO-TIMOPTOL were two
words of equal distinctiveness standing
next to each other, connected by a
hyphen. The relevant public would not
consider this the use of a principal and a
secondary brand, so that the distinctive
character of the trade mark had been
changed.
In another case The German Supreme
Court denied that rights were preserved
by using the word mark PROTI by use of
designs.
The relevant public would regard the
form of use as PROTI 4-K as one uniform
sign rather than as two signs made up of
the components PROTI and 4-K The
same applies to the used form of
PROTIPLEX. This would not be changed
by adding the symbol ® after
PROTI"since due to the graphic
representation, the relevant public would
consider the symbol ® as part of the
form used in its entirety. If however, the
relevant public were to regard the forms
used to be one uniform sign, the
distinctive character of the trade mark
PROTI would be changed by the additions
4-K and PLEX, because these were not
merely descriptive.
If the symbol ® is added to a two-word
trade mark, this does not change the
distinctive character, in accordance with
case-law. Therefore the German Federal
Patent Court considered it as having no
prejudicial consequences that the trade
mark Diclac dolo was used as Diclac®
Dolo. There would be no indications that
merely Diclac, but not Diclac dolo was
understood as a trade mark. This all the
more since the symbol ® had no
distinctive character, but was rather an
indication independent of the trade mark.
The same applies to the addition of
merely descriptive and thus separable
indications, such as extra, forte, etc.
Accordingly, the German Federal Patent
Court held that the used form of
GYNODIAN® Depot was sufficient to
preserve the rights of the trade mark
GYNODIAN. The addition Depot was
held to be an indication to a
pharmaceutical preparation, which if
administered once was active for
prolonged release and effect periods, and
was thus a merely descriptive indication.
Comment
The addition of merely descriptive signs
usually has no prejudicial consequences
for maintaining a trade mark. It should be
made sure, however, that the trade mark
is not blended into a unity with the
addition, which would change the trade
mark's character. In this event, it can still
be denied that the trade mark owner
used the trade mark in a manner as to
preserve his rights.
German Case-law on use of trade
marks for Pharmaceutical Products
Margret Knitter, SKW Schwarz
2
Words from the
Chair
How can it possibly already be
the end of the year? Christmas
decorations have invaded the
streets and shops of London and
yet I feel as though it is still only
September!
This is the final edition of LL&P
in 2013 and I would like to take
the opportunity of this short
column to acknowledge the work
of two people; Vanessa Parker,
editor of LL&P and a long time
PTMG Committee Member and
James Thomas, founder and
partner of Thomas Trademark &
Copyright Legal Services. James
has done a fantastic job of
re-vamping the PTMG website
and his on-going support in
relation to this is invaluable.
From the PTMG Chair's point of
view, one could not dream of a
better editor than Vanessa. I am
sure all our regular LL&P
readers would agree with me
that Vanessa does an amazing job
and keeps us all interested with a
variety of articles in LL&P from
one issue to another.
So to both of them, I would like
to offer not only my gratitude
but also a big thank you from the
PTMG Committee and all LL&P
readers.
To all of you, your family and
friends, I wish you a merry
Christmas and a happy new year.
Sophie Bodet