In legal disputes about trade mark use, challenging the genuine use of the trade mark is a widely practiced defence and frequent subject of court decisions. The Hanseatic Court of Appeals in Hamburg recently examined the issue as well: In its judgment of 12 October 2023 (3 U 60/22), the CoA discusses the fundamental criteria of genuine use of an Indian pharmaceutical company’s medicinal product not having a marketing authorisation under Sec. 26(1) German Trade Mark Act (MarkenG).
Domiciled in India, the applicant sells an Ayurvedic herbal medicinal product based on Boswellia extract and is the proprietor of the German word mark “H 15”. The applicant distributes the medicinal product in an English language presentation using the name “H 15 Gufic”. The respondent maintains a warehouse in Germany, holding food supplements under the name “H 15”, “Hecht H 15 R” or “H15 Weihrauch” for exportation to other countries. Acting as manufacturer, the respondent also was offering these food supplements for sale in online pharmacies. The applicant sued the respondent to cease and desist from using the names “H 15”, “Hecht H 15” and/or “H15 Weihrauch” for food supplements, in particular from advertising, offering and/or importing or exporting the products under any of these names.
The Hamburg Court of Appeals confirmed genuine use of the trade mark under Sec. 26(1) MarkenG, concurring with the lower court’s view: For genuine use to be acknowledged, the trade mark has to be used in accordance with its essential function of guaranteeing the identity of the origin of the goods and services for which the trade mark is protected, so as to develop or secure a market for these products. The CoA held that, in the required case-by-case assessment, it must be considered that the product was refused a marketing authorisation due to serious adverse reactions and may only be sold to individuals in small quantities under the exemption provided by Sec. 73(3) German Medicinal Products Act (AMG). Next, the Court of Appeals rejected the respondent’s argument that genuine use of a medicinal product requires a marketing authorisation. A product may be categorised as a medicinal product as defined in Sec. 2(1) AMG regardless of a marketing authorisation: The product is intended for use in or on the human body and has properties for the curing and alleviating of diseases or disease symptoms. The absence of a marketing authorisation does not reclassify the medicinal product as a food supplement or food but only concerns its sale.
For the CoA, the sale of 250 packs per year in Germany was sufficient to confirm genuine use. The permission defined in Sec. 73(3) AMG does not allow higher sales volumes. Furthermore, the fact that the product packaging is not consistent with the trade mark as registered does not preclude genuine use. The different presentation does not alter the distinctive character of the trade mark, as consumers will associate the sign used with the registered trade mark despite perceiving the differences. Multiple labelling is common in the pharmaceutical sector. The combination of the packaging in dispute with the term “Gufic” and the product “H 15” makes it clear that “Gufic” is the manufacturer while “H 15” is the product.
Having acknowledged genuine use of the applicant’s trade mark, the court proceeded to determine a high level of similarity of goods between the applicant’s medicinal product and the respondent’s food supplement, resulting in a successful outcome for the cease and desist motion.
