Judgment of the General Court of 30 November 2022 — Hasco TM v EUIPO — Esi (NATURCAPS)

The use of a trademark for food supplements does not qualify as genuine use for pharmaceutical products according to the General Court (EU)

After a recent decision of the General Court of the European Union (T-12/22) brand owners will have to monitor their trademark portfolios more closely in the future in order to ensure adequate protection. The Court ruled in November, that the registered trademark protection of “NATURKAPS” for pharmaceutical products does not include food supplements. The Court upheld a decision by the EUIPO concerning a proceeding between the polish company Hasco and Esi Srl.

Hasco filed an application for a declaration of invalidity of the EU trademark “NATURCAPS” against Esi, which registered its trademark in 2017. The contested mark covered products of Class 5 of the Nice Agreement Concerning the International Classification of Goods and Services, in particular, “nutritional supplements”.

The filing was prompted by Hasco’s own word mark “NATURKAPS”, which had been filed in 2000 in Poland covering pharmaceutical products for goods in Class 5. Despite all similarities between both marks and the registration in Class 5, the essential question that arose in this instance was whether Hasco enjoyed trademark protection at all.

Use for food supplements does not prove use pharmaceutical products

Esi challenged Hasco to provide proof of genuine use for pharmaceutical products under their earlier mark in support of the application for a declaration of invalidity. Hasco met this request within the prescribed period. However, the Cancellation Division rejected Hasco’s application since it did not prove genuine use for the registered goods as pharmaceutical products. This assessment was also shared by the Board of Appeal, which found, that “where a trademark was registered for only part of the general indications listed in the class heading of a particular class, but it had been used only for goods or services which fell under another general indication in that same class, the mark could not be regarded as having been used for the registered goods or services.”

Pharmaceutical products as a generic term?

Hasco appealed to the General Court arguing that:

• “Pharmaceutical products” should be interpreted in light of Polish and not EU law. According to the applicant, food supplements were regulated pharmaceutical products under Polish law at the time of the filing, thus falling under the pharmaceutical product umbrella.
• Furthermore, Hasco stated that “food supplements” did not belong to any category of the Nice Classification or Polish law at the time of the filing. It had to therefore choose the closest category which at the time was “pharmaceutical products”.
• Lastly, the applicant claimed that there is no clear differentiation between medicinal and food supplements. If pharmacies sell both goods, food supplements, that improve the consumer’s health, must constitute pharmaceutical products. The term pharmaceutical products is in essence a generic term including both medicinal products as well as food supplements.

The Court did not follow the applicant’s line of reasoning and interpreted the Class 5 category under a stricter standard, than Hasco’s assessment.

• Firstly, the Court found that an interpretation of food supplements in accordance with Polish law is irrelevant to the application of the Nice Classification. Besides, the applicant did not present substantiated evidence proving the classification under Polish law.
• The relevant version of the Nice Classification contained the heading “Pharmaceutical, veterinary and sanitary preparations” as well as “dietetic substances adapted for medical use” thereby invalidating the applicants second argument. Moreover, while the proximity of both pharmaceutical products, as well as food supplements in relation to the broad field of health products, cannot be denied, the similarities may only be considered in the determination of the likelihood of confusion of both marks. The Court stressed, that this overlap does not affect the determination of genuine use of a trademark. Consequentially, no evidence eligible for consideration was presented that proved the use of pharmaceutical products by Hasco.
• The fact that food supplements, as well as pharmaceutical products, are sold in pharmacies neither has an effect on the classification of the latter. The Court referred to other case law substantiating this distinction.

Hasco could have avoided this situation

While the decision must have been a hard (vitamin) pill to swallow for Hasco, it is welcome with regard to legal clarity. A strict but clear distinction between both indications is necessary in order to identify the extent to which a trademark offers protection. While Hasco’s registered mark was solely national, the same standard of precision has to be applied when looking at another European mark. This has to apply for invalidity proceedings especially.

His decision should serve as a reminder for trademark owners to review their trademark portfolios. Especially Class 5 marks require attention when registering and reviewing since it is the second most commonly registered category accumulating 12.000 EU applications in 2022 alone. The number of applications grows every year. Meanwhile, it contains products like pharmaceuticals over dietetic food, food for babies, or dietary supplements for humans and animals to fungicides and herbicides. The vast differences between these products and the practical demand require attention when registering a trademark. The decision shows that an effort to determine the product class to the best of your abilities may not be enough in a court of law. That is why consultations with a professional trademark expert are necessary (not only for Class 5, but for all trademark applications) in order to guarantee protection. We will gladly assist you in achieving the best protection for your trademarks.