The mark “Gufic” was used in different forms:

In 2017, Hecht Pharma GmbH (Hecht) filed a non-use revocation action against the Gufic mark. The Cancellation Division revoked the mark in its entirety. Gufic appealed the decision and submitted further evidence of use, including invoices showing sales to German pharmacies.

The Board of Appeal partially overturned the decision and found the Gufic mark to have been genuinely used for “medicines” in class 5.

Hecht appealed this decision to the General Court raising the following claims:

1. Extent of use: there was insufficient public and external use of the mark. In particular, Hecht criticised that Gufic’s distribution model was illegal under German law and, thus Gufic should have shown sales from pharmacies to end consumers in order to prove genuine use. There was also no advertising of the goods under the Gufic mark; though such advertising would have been prohibited under German law.
2. Nature of use: the mark was not used as a trade mark, but as a part of company name, and/or not used as registered (as shown above).
3. Nature of use: the mark was not used for the registered goods, ithat is, “medicines”. The goods have been incorrectly classified in class 5 by the Board of Appeal.

The decision of the General Court

The General Court rejected the appeal in its entirety and commented on all the above-mentioned ground.

Regarding point 1 (extent of use)

The General Court rejected Hecht’s arguments finding that:

• Genuine use does not require showing sales to end consumers, in particular the intermediaries involved could be considered third parties;
• For the question of genuine use it is irrelevant if the distribution model is prohibited under national laws, in particular as the EUIPO is not authorised to decide on compliance with these national laws and, in any event, it would not change the fact that there has been use; and
• Lack of advertising does not prevent a finding of genuine use, especially if advertising for the goods would be illegal under the applicable laws.

Regarding point 2 (use as a trade mark)

The General Court stated that:

• It is common practice in the pharmaceutical sector for medicinal products to bear multiple marks on their packaging, namely the product mark and the manufacturer’s name. Therefore, the fact that Gufic is also the company name does not prevent the public from recognising it as a trade mark;
• The distinctive character of the sign Gufic was not impaired through the use in conjunction with other elements (as shown above left).

Regarding point 3 (goods covered)

The General Court concluded that although it previously held that sale of goods exclusively in pharmacies does not mean that they are medicinal products (see T 802/16 - Endoceutics/EUIPO – Merck), the fact that a product is sold only in pharmacies is a relevant factor when classifying a product as medicinal. In this case, the Gufic goods were sold exclusively through pharmacies and only upon presentation of a doctor’s prescription. Furthermore, the products contained information and warnings on the packaging that enabled the relevant public to perceive the products as medicinal. Therefore, the relevant public would view the goods sold under the Gufic mark as medicinal, and the goods were correctly classified.

In short

This decision provides useful guidance in relation to genuine use of trade marks in the pharmaceutical sector, in particular:

• unlawful use of a mark;
• use of the mark together with a company name and/or other signs on the packaging; and
• classification of goods as medicinal.

Useful link

• Judgment of the General Court in Endoceutics, Inc v EUIPO, 17 November 2017: dycip.com/endoceuticsveuipo