The interpretation of trade mark goods and services: what about that definition in the regulation?

Kat friend Marcel Pemsel, who will shortly publish as a full-fledged Guest Kat, already shares his thoughts on a recent trademark decision by the General Court concerning that favorite of trade mark questions: what does the specification of goods and services cover?

Interpreting the list of goods and services in trade mark law can be a tricky task. Many terms have a clear and precise meaning. Others may be fuzzy around the edges. And there are some terms that have been defined by the legislator.

In the EU, examples are ‘medicinal product’ (Art. 1 of Directive 2001/83/EC) and ‘food supplements’ (Art. 2(a) of Directive 2002/46/EC). In its judgment Hasco TM v EUIPO - Esi (NATURCAPS), the General Court dealt with the question whether such regulatory definitions play a role in interpreting the meaning of a term in the list of goods and services.

Background

The applicant (Hasco) filed for a declaration of invalidity against the EU trade mark ‘NATURCAPS’, which had been registered in the name of Esi for various dietetic goods, food supplements and medicinal herbs in class 5. Hasco asserted a likelihood of confusion with its earlier national Polish trade mark ‘NATURKAPS’, filed on 9 November 2000 and registered on 10 September 2004 for ‘pharmaceutical products’ in class 5.

As a defense to the invalidity action, the owner of the earlier trade mark, Esi, requested that Hasco prove genuine use of its Polish trade mark. Hasco could show use of its trade mark ‘NATURKAPS’, but only for food supplements containing active ingredients such as vitamin B3, co-enzyme Q10, lecithin, beta-carotene and L-carnitine.

So the question arose whether food supplements fall under the term ‘pharmaceutical products’ for which the earlier trade mark is registered. EUIPO and the Board of Appeal said ‘no’ and rejected the invalidity application. Hasco filed an appeal to the General Court.

The General Court’s decision

Hasco argued that the term ‘pharmaceutical products’ must be interpreted in accordance with Polish law at the time of the filing of the earlier mark in 2000. Back then, Poland was not a Member State of the EU (it joined in 2004) and was therefore not bound by EU law. Polish law classified food supplements as medicinal products. Further, the term ‘food supplements’ did not exist at that time in the Nice Classification (seventh edition).

Hasco also contended that nowadays there is no clear boundary between medicinal products and food supplements. They are both sold in pharmacies and intended to improve human or animal health. Accordingly, the goods for which the earlier mark had been used should be classified as pharmaceutical products.

The General Court disagreed. In order to decide this issue, the judges remind us ---

...that the list of goods and services for which an earlier mark is registered and in respect of which proof of genuine use has been requested must be interpreted, in order to ascertain the extent of the protection of that mark and to settle the issue of its genuine use, in the most coherent manner, in the light not only of its literal meaning and its grammatical construction, but also, if there is a risk of an absurd result, of its context and the actual intention of the mark’s proprietor as regards its scope […].
Moreover, while it is true that the Nice Classification is purely administrative, it is still necessary to refer to it in order to determine, where necessary, the range or the meaning of the goods in respect of which a mark has been registered […] (paras. 22 and 23).

                           This Kat has her eyes squarely on the interpretation of  the goods and services

The Court found the fact that pharmaceutical products and food supplements fall within the field of health may be relevant in the assessment of the likelihood of confusion. However, it was not considered relevant as to genuine use and the interpretation of terms in the list of goods and services. All goods in Class 5 relate in one way or another to health.

The judges also pointed out that the class headings of the seventh edition of the Nice Classification (applicable to the earlier Polish trade mark) made a clear distinction between pharmaceutical products, on the one hand, and dietetic substances, on the other, but it did not include a separate category for food supplements.

Referring to the Merriam-Webster online dictionary, the Court held that ‘pharmaceutical products’ cover “goods resulting from pharmacy, that is to say the art of creating, preparing, preserving and dispensing or administering medicinal products, intended for the treatment or prevention of illnesses”. Food supplements, on the other hand, are goods which are concentrated sources of nutrients. Their purpose is to supplement the nutritional value of the normal diet of a human being but not the treatment or prevention of illnesses.

Consequently, food supplements are found not to be part of the broader category of ‘pharmaceutical products’. Instead, the Court considered them as falling under ‘dietetic substances adapted for medical use’, which are intended for the treatment of a specific nutritional deficiency.

Hasco’s argument, based on the classification of ‘food supplements’ under Polish law in 2000, was considered irrelevant. National and EU law relating to pharmaceutical products or food supplements do not affect the way in which goods and services are classified under the Nice Classification. The scope of protection of a trade mark must be determined solely by reference to the wording of the goods and services as they are registered, and not by reference to any statute.

Hasco’s argument that food supplements are sold in pharmacies was also rejected because the sale of certain goods in pharmacies does not mean that they are pharmaceutical products.

Comment

The General Court’s decision is a double-edged sword. From the point of view of Hasco (and probably other companies with older national trade marks), it was reasonable to assume that food supplements should be classified as ‘pharmaceutical products’. Still, all other market players, especially those who are not familiar with Polish pharmaceutical law from the 2000s, must be able to rely on the wording of the goods as registered in order to determine the scope of protection.

For the purposes of the public trade mark register, this author believes that the interests of the public should prevail. Legal certainty would be in jeopardy, were the terms to be interpreted in accordance with legal provisions at the time of filing the application. This would also complicate trade mark clearance searches.

What the decision does not show are the potential consequences of misinterpreting a term when applying for trade mark protection. In this case, ‘only’ the invalidity application was rejected. However, the result is more far-reaching. Hasco may not only lose its national Polish trade mark due to non-use in the case of a revocation application, but also face Esi's objection to the use of Hasco’s trade mark, once its EU trade mark is registered.

Perhaps the ultimate moral of this story: check not only whether new products are covered by the list of goods and services in one's registered marks, but also whether ‘old’ ones still fall under the terms in the specification. If in doubt, apply for a new trade mark.

Picture is by Krysten Merriman and is used under licensing terms of Pexels.