Pharma trade marks: 2024 EU case law round up

The pharmaceutical industry continues to face evolving challenges in trade mark law. 2024 brought interesting case law developments in the EU that impact brand protection and market strategies. Building on our 2022 and 2023 round-ups, this EU case-law round-up highlights key trends shaping the sector and provides practical guidance for navigating trade mark strategies in an increasingly competitive and innovative environment. For more interesting decisions in the pharmaceuticals space, please also see our 2024 UK case-law round-up!

Unilab LP v EUIPO – Cofares, Sociedad Cooperativa Farmaceutica Española (Healthily)

[General Court, Case T-288/23, 17 April 2024]

When brand owners file for trade mark protection, they often have to compete with registered trade marks that are similar. However, when two brands overlap in descriptive elements, the European Union Intellectual Property Office (EUIPO) is often required to consider what the exact scope of protection for a descriptive or allusive sign is.

In this case, Unilab sought to register an EU figurative mark (Healthily) (in Classes 3, 5, and 10, covering products such as cosmetics, dietary supplements, and medical and veterinary instruments). Cofares opposed this, citing its earlier EU figurative mark (Healthies) (with protection in Classes 5 and 44), claiming likelihood of confusion due to an overlap in goods and the similarity between “HEALTHILY” and “HEALTHIES.”

On appeal, the General Court confirmed a decision finding that there is a likelihood of confusion between the two figurative marks despite the allusiveness of both. Although many consumers in the EU have a basic English vocabulary, it is not for the EUIPO or the Court to assume that a certain word belongs to this vocabulary. In the case at hand, the Court considered that Unilab had failed to prove that the term “HEALTH” was part of a basic vocabulary, and also that relevant publics in, for example, Hungary, Italy and Spain will not readily establish a link between the word “HEALTH” and local equivalents. For these publics, “HEALTH” is not descriptive.

Upholding the Board of Appeal’s finding, the General Court held that the strong overlap in the initial sequence (“HEALTHI”) and the overall impression of the marks made confusion likely, even for an attentive public. The opposition was thus successful.

Implications and Takeaways 

• Descriptive claims require proof: A party cannot merely assert a word is “basic English” and thus descriptive. Courts will consider translations, local language proficiency, and whether there is strong evidence of the term’s widespread understanding.
• Registry evidence vs. market evidence: Simply citing trade marks on the registry that include a similar term does not necessarily prove that term is diluted. Actual use, commercial coexistence, and consumer-facing evidence typically hold more weight.

Fidia farmaceutici SpA v EUIPO – Vorwarts Pharma sp. z o.o.

[General Court, Case T-497/23, 18 September 2024]

In another similar dispute, we saw Fidia’s appeal to the General Court regarding Vorwarts Pharma’s application for the EU word mark “HYALERA” covering “pharmaceutical, dietetic, and medical preparations” in class 5. Fidia had previously opposed the application based on its earlier Italian mark HYAL (with protection in Class 5).

Unlike in the Unilab case, the relevant territory in this case was Italy, where the earlier mark (HYAL) was registered, and not the entire EU. The EUIPO and Board of Appeal were put to consider whether the Italian public perceives “HYAL” as referencing hyaluronic acid – thus weakening its distinctiveness – or whether it sees “HYAL” as inherently distinctive.

The Board of Appeal had initially concluded that “HYAL” was understood by the Italian public as referring to hyaluronic acid and thus had weak – or even descriptive – distinctiveness. The General Court, however, reviewed the evidence and found it insufficient to establish that a non-negligible segment of Italian consumers would automatically connect “HYAL” with hyaluronic acid. Fidia was not able to adduce evidence to the contrary. Since the mark “HYAL” was therefore not necessarily descriptive for all consumers, its distinctiveness was deemed average for at least a significant segment of the Italian public.

With “HYAL” having at least normal distinctiveness, HYALERA was more likely to be confused with HYAL. The Court found that the Board of Appeal’s flawed premise (that HYAL was weakly distinctive) led to an incorrect conclusion on likelihood of confusion and that, indeed, no likelihood of confusion existed for the relevant Italian public.

Implications and Takeaways 

• Partial overlap can tip the scale: When marks share certain elements and cover identical or very similar goods, proper assessment of each element’s distinctiveness can be decisive in a likelihood-of-confusion analysis.

Cellphenomics GmbH v EUIPO

[General Court, Case T-512/23, 15 May 2024]

Context and Background

The descriptiveness of a trade mark is not only relevant in the context of oppositions, but also when filing for protection. When Cellphenomics’ applied to register “CellCompDx” for a broad range of goods and services in Classes 1, 5, 9, 41, 42, and 44, encompassing chemical and biological products, medical research, and diagnostic services, the EUIPO found that the mark was descriptive and lacked distinctiveness, and had to be refused protection. The Board of Appeal upheld this refusal, which was, in turn, appealed to the General Court. The central legal question was whether “CellCompDx” would be understood by the relevant English-speaking public as describing a characteristic of the claimed goods and services—for instance, “cell composition diagnosis.”

Under EU case law, a mark is considered descriptive if, in at least one plausible interpretation, it indicates a characteristic (such as the intended purpose or nature) of the goods or services.

In the case at hand, the Court found that because the mark consists of English terms (“cell,” “comp,” and “dx”), it was acceptable to focus on the perception of the English-speaking public in Ireland, Malta, and Cyprus. Previously, the Board of Appeal concluded that professionals and informed consumers would break down “CellCompDx” into “Cell,” “Comp(osition),” and “Dx (diagnosis)”, directly describing the goods and services in biotechnology, diagnostics, and pharmaceuticals. Cellphenomics’ arguments that the mark had multiple potential meanings and could not simultaneously describe both goods (e.g., biological samples) and services (e.g., medical testing) could not convince the Court, which noted that goods and services in this domain are often interdependent, and a single term can readily apply to both. Because one clear interpretation of “CellCompDx” is descriptive – regardless of potential alternative meanings – the mark is not registrable.

Implications and Takeaways 

• Multi-part abbreviations can be descriptive: Even when marks use abbreviations, hyphenations, or combined terms, if the target public readily perceives a descriptive message, refusal on the grounds of descriptiveness is likely.
• A single likely interpretation is enough: Multiple possible meanings do not save a mark from descriptiveness if just one dominant meaning describes the nature or purpose of the goods/services.
• English remains pivotal post-Brexit: English is still an official language in various Member States. Any English-language term in a proposed EU trade mark will be scrutinized for descriptiveness from the perspective of English-speaking consumers. 

Dermavita Company S.a.r.l. v EUIPO – Allergan Holdings France (JUVÉDERM)

[General Court, Case T-181/23, 15 May 2024]

Context and Background

In 2016, Dermavita Company S.a.r.l.’s predecessor unsuccessfully sought to revoke the EU trade mark registration JUVÉDERM (and variations thereof) in Class 5 for non-use (see inter alia, Case T-397/20). Subsequently, Dermavita filed an application for invalidity, alleging that Allergan’s predecessor (the original registrant) had acted in bad faith when filing the application. 

Key Issue: Bad Faith and Knowledge of Prior Use

Under the EU trade mark regulation, an EU trade mark must be declared invalid if the applicant was acting in bad faith when filing the trade mark. Assessing bad faith involves considering whether the applicant’s intention or state of mind was dishonest, bearing in mind the usual meaning of “bad faith” in everyday language and its specific implications in trade mark law.

Dermavita’s Allegations

Over the course of the proceedings, Dermavita alleged that:

• Dermavita had used an identical or highly similar sign (JUVEDERM, without an accent) in Lebanon since as early as 1999. Hence, Allergan or its predecessors “must have known” of this prior use when registering JUVÉDERM in the EU.
• Allergan’s predecessor could not have independently invented the JUVÉDERM mark.
• A cease-and-desist letter was allegedly sent to Allergan’s predecessor in April 2000, before the trade mark application was filed.
• Both companies operated in Lebanon between 2004 and 2007, and Dermavita sent further cease-and-desist letters to third parties in August 2004. Dermavita claimed Allergan’s predecessors must have been aware of its use.
• Allergan and its predecessors engaged in dishonest business practices, seeking to file new trade marks to avoid legal consequences.

Court’s Analysis: Honest Commercial Intent

The Court held that despite plausible use of JUVEDERM in Lebanon since 1999 by Dermavita, there was insufficient proof that Allergan (or its predecessor) knew of that use when filing in 2007. Key factors included:

• The prefix “derm” (relating to “dermatology”) and “juve” (suggesting “juvenile”) could readily be conceived of by various companies as allusive or descriptive of cosmetic or dermatological functions (e.g., anti-wrinkle treatments).
• Dermavita failed to prove that the letter sent in April 2000 was received by Allergan’s predecessor.
• There was no evidence connecting mere presence in the same market or the 2004 letters to Allergan’s predecessor’s knowledge of Dermavita’s use of the sign JUVEDERM.
• The Court concluded that Allergan’s practice of filing new trade marks to expand its product lines or territories did not, on its own, prove any dishonest intent.

Outcome

The General Court ultimately concluded that Dermavita had failed to provide sufficient evidence to prove Allergan or its predecessors knowingly copied or sought to monopolize Dermavita’s sign JUVEDERM. The Court was equally unpersuaded by allegations of dishonest motives in Allergan’s filing strategy. Dermavita’s action was dismissed, and JUVÉDERM’s validity as an EU trade mark was upheld.

Implications and Takeaways 

• Bad faith requires concrete evidence: Demonstrating that a trade mark applicant “must have known” of prior use elsewhere is not enough on its own. An invalidity applicant must present robust, objective evidence of actual knowledge or dishonest intent.
• Descriptive elements do not preclude independent creation: Many brand owners use allusive or descriptive components in their marks. Where such elements are common in the industry, others can arrive at similar names independently.

Conclusion

The recent General Court decisions confirm a continuity of well-established EU trade mark principles while highlighting an increasingly nuanced application – particularly in the pharmaceutical sector. Moving forward, we can expect the following trends to intensify:

• Localised Perception: EU courts will continue to scrutinize how different linguistic communities understand ostensibly “basic” English words. This segmentation of the consumer base underscores the need for brand owners to tailor evidence to specific national or language groups within the EU and to think outside the English-speaking box.
• Technical and Scientific Terminology: As the pharmaceutical and biotech sectors continue to innovate, abbreviations or composite words – often drawn from scientific terminology – will receive careful examination. Even if a term can have multiple meanings, courts will refuse it if just one reading is descriptive for a substantial portion of the public.
• Bad Faith as an Extraordinary Tool: While parties can allege bad faith to remove conflicting marks, the courts require compelling proof that an EU applicant intended to “poach” a competitor’s existing sign. Expect this strict approach to persist – particularly for disputes over global brands or emerging markets outside the EU.

Taken together, these cases reflect both a deepening of prior doctrinal rules and a practical shift toward ever-more fact-specific assessments within the EU’s multi-lingual, multi-jurisdictional setting. Going forward, pharmaceutical brand owners should be prepared to build stronger evidentiary records when registering and defending marks – especially if they rely on suggestive or allusive elements. By staying alert to linguistic nuances, scientific references, and the high bar for bad faith, companies will be better positioned to protect their trade marks.