The General Court has recently issued a decision which serves as a reminder to ensure that trade mark protection is reviewed and refreshed where necessary to ensure registered marks provide the correct protection.

Case background

In Case T-12/22, Polish company Hasco TM sp. Z o.o. sp.k sought to rely on their Polish national registration NATURKAPS to invalidate an EU registration for NATURCAPS in the name of Esi s.r.l.

Hasco's Polish registration was filed in November 2000 and covered 'pharmaceutical products' in class 5. Esi's EU registration was filed in January 2017 and covered a wide range of goods in class 5 including dietary, nutritional and food supplements and medicinal herbs.

During cancellation proceedings, Esi requested proof of use of Hasco's Polish registration which Hasco duly provided. However, Hasco provided proof of use of NATURKAPS in relation to food supplements and not 'pharmaceutical products' for which the mark was registered. As a result, the Cancellation Division deemed Hasco had not provided proof of use of the NATURKAPS trade mark as the nature of the use did not show use of the mark in relation to the goods for which it was registered.

The cancellation action was dismissed. Hasco subsequently appealed the decision, arguing that at the time their mark was filed in 2000, 'food supplements' was not a recognised term in Poland and the term did not exist within the Nice Classification. Hasco also made extensive arguments as to why 'food supplements' were reasonably encompassed within the term 'pharmaceutical products', including making references to Polish national laws surrounding defining pharmaceutical products in 2000.

In their decision, the Board of Appeal agreed with the Cancellation Division's assessment that 'pharmaceutical products' did not include 'food supplements', in particular noting that 'dietetic substances adapted for medical use' did form part of the Nice Classification at the time Hasco's application was filed and that goods of this type, which would include food supplements, were distinct from pharmaceutical products.

Hasco then appealed to the General Court. The General Court considered that Hasco's view that 'pharmaceutical products' was a generic term encompassing both medicinal products and food supplements, since all such products are designed to improve health, was unfounded. The General Court noted that although such an assessment may be relevant for a finding of likelihood of confusion, it was not relevant in assessing genuine use of a mark in relation to the goods for which it is registered.

The General Court agreed with the Board of Appeal, that overall Hasco had not provided proof of genuine use of its NATURKAPS mark for the goods for which that mark was registered.

Case comments

This is a frustrating outcome for Hasco. Although they were able to show extensive genuine use of their NATURKAPS mark, as such use was not in relation to the goods for which their trade mark was registered, they were ultimately unable to rely on their registered trade mark. As a result, they were unable to cancel a registration for a highly similar mark.

Whilst the key takeaway from this case is primarily that 'food supplements' are not 'pharmaceutical products' when it comes to proving genuine use, there is a wider warning within the outcome that trade mark owners must ensure that, when relying on older trade marks, the goods and services covered under those marks are still relevant and applicable to the actual use of the trade mark. Otherwise, trade mark owners risk being in a position of being unable to show genuine use and could ultimately have to rely on unregistered rights.

Existing trade mark rights, particularly those over five years old, should be reviewed to ensure that the coverage is appropriate. Where protection offered by the registered mark is insufficient or uncertain, the filing of a replacement application may be appropriate to provide the requisite level of protection.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.