Cutting to the Bone: When Proof of Use Narrows Protection

Opponents of CTMs know that the protection they rely on may be deemed narrower if they can only prove use for limited goods or services. The impact on a right-holder’s muscle may be substantial; broad specifications are the norm before OHIM and many national offices, and rare is the owner who can sustain an entire class heading with proof of use.

Earlier rights may be trimmed to the bone in opposition, invalidation and infringement proceedings, and it is therefore essential that right-holders be able to evaluate their sustainable scope of protection with a reasonable degree of certainty. How much protection a right-holder can sustain is a central question when asserting rights that are more than 5 years old.

 

ALADIN

This issue was considered in July 2005 by the Court of First Instance in Reckitt Benckiser (España) SL v OHIM (Case T-126/03, ALADIN ; see Make Your Mark, Spring 2006).

In that case, the opponent’s earlier registration claimed protection for “polish for metals” in Class 3. Evidence showed that the opponent had only used the mark in respect of “a product for polishing metal consisting of cotton impregnated with a polishing agent (magic cotton).” OHIM’s Board of Appeal had held that the earlier mark should only be deemed protected for that specific product.

Overturning the Board of Appeal, the CFI found that “polish for metals” was already sufficiently narrow and precise that it could not reasonably be sub-divided. For a broad specification to be cut down based on use for narrower goods or services, it must be “sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently.” If that were the case, use for part of those goods or services would result in deemed protection only for the sub-category or sub-categories to which they belonged. On the contrary, a specification that is “defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned” would not be trimmed, and the use would necessarily cover the entire category.

ALADIN left unanswered questions, however, as to how broad a category could be before it became so broad that it was possible to identify a number of sub-categories capable of being viewed independently within it. Largely this is likely to be a matter of degree that will depend on actual nature of goods and services claimed. However, in respect of pharmaceuticals at least, further guidance became available recently in Armour Pharmaceutical Co. v. OHIM (Case T-483/04) before the CFI.

 

Armour Polishes It Off

In Armour, an Israeli company, Teva Pharmaceutical Industries Ltd., applied to register GALZIN as a Community Trade Mark for “pharmaceutical preparations for the treatment of Wilson’s disease.” Armour opposed based on an earlier French registration for CALSYN for “pharmaceutical and medical preparations, more specifically calcium-based preparations.” OHIM’s Opposition Division upheld the opposition, but it was overturned by the Board of Appeal who regarded the marks as distinguishable.

A primary issue was whether OHIM had properly held the earlier mark to be protected for only “calcium-based pharmaceutical preparations.” It was common ground that the opponent had only proved use for such goods. However, the opponent asserted that its original specification was not so broad that it was possible to identify a number of different sub-categories within it, capable of being viewed independently. In particular, the opponent argued that restricting it to “calcium-based pharmaceutical preparations” amounted to confining its deemed protection to a specific type of product rather than a sub-category and was therefore disproportionately restrictive.

The CFI disagreed. In its view, it was manifest that the opponent’s specification could be sub-divided into different sub-categories, capable of being viewed independently. Indeed, the opponent had itself identified such a sub-category by specifically claiming calcium-based pharmaceutical preparations. Pharmaceutical preparations in general had myriad different therapeutic purposes, with different end users and channels of trade, some prescription-only and some sold over-the-counter, and such a broad claim permitted of many different sub-categories. A restriction to calcium-based pharmaceuticals was not a restriction to a specific product, but rather to a specific independent sub-category, and as such was hardly disproportionate in the CFI’s view.

 

Comment

Despite the unwelcome restriction of coverage, Armour still prevailed as the CFI went on to find a likelihood of confusion on the part of the average consumer in France.

Owners of pharmaceutical brands in Europe can also profit from the decision, which gives much-needed guidance on the extent to which trade mark protection for pharmaceuticals generally can be maintained by use for a single type of product.

The question of how broad is too broad for the evidence to sustain and how closely a claim may be cropped has wide-ranging implications for all brand owners. It is relevant not only in oppositions, invalidations, revocations and infringement actions throughout the E.U., but also at filing when specifications are drafted. OHIM has encouraged broad claims by regarding class headings as including all goods or services in the class. Uncertainty as to whether courts will share this view has led to many adopting the belt and braces approach of claiming class headings plus narrower, specific sub-categories to ensure that goods and services of interest are covered. As Armour found, claiming a sub-category is tantamount to acknowledging the divisibility of the broader claim. On the other hand, if a broader claim is so divisible, it is likely to be found so on other grounds.

Pharmaceutical preparations are an example of a specification that is likely to be cut down based on use for specific kinds of drugs. However, there remain many cases on the borderline, where the answer may turn on evidence of how consumers perceive the broad category of goods and specific products within it. Would a claim to “musical instruments,” for example, be sustained in its entirety by use for “guitars,” or would the specification be narrowed? If so, would the narrower category be regarded as “stringed instruments” or just “guitars”? Would a restriction to “guitars” amount to a disproportionate restriction to a specific product rather than sub-category? Is it relevant that “stringed instruments” conjures up a different, more orchestral image altogether?

Further guidance is needed on the factors relevant to answering such questions. When it comes, such guidance is perhaps unlikely to change the preference for broad filings; rights-holders are likely to enjoy and exploit their broad protection in the first 5 years, re-file to preserve their monopolies when they can, and take calculated decisions on when to rely on partially vulnerable rights.

Nonetheless, greater legal certainty will help in weighing the merits of cases where proof of use may be determinative. Those cases are only likely to increase.