The Falsified Medicines Directive (2011/62/EU) (FMD) was introduced in 2011 with the aim of safeguarding the public against medicinal products within the EU whose identity, history or source had been falsified. The FMD requires that the packaging of these products now bears certain safety features, such as a “unique identifier” verifying their authenticity and an…

Substantial evidence supported the Trademark Trial and Appeal Board’s finding that another company, and not the trademark holder, actually used the mark in commerce. The Trademark Trial and Appeal Board (TTAB) correctly determined that a Korean biopharmaceutical company did not use in commerce the mark for a nutritional product that purportedly improves brain performance, the…

Use of analogous state-law limitations period for Lanham Act Section 43(a) claims was “unsatisfactory”; summary judgment order finding Bayer’s false association and false advertising claims time-barred was vacated. Reasoning that a district court erred by reading a limitations period into the Lanham Act where none existed for Section 43(a) claims, the U.S. Court of Appeals…

On 20 May 2020, we received another decision in the long-running dispute between Merck KGgA (“Merck Global”) and their former US subsidiary (“Merck US”).  This case dealt with the following five issues remitted by the Court of Appeal: Further consideration of partial revocation of Merck Global’s registered marks; Whether the activities of Merck US constitute…

The concept of genuine use of a trademark should be the same for all sorts of products/services, but for pharmaceuticals this is not always the case. Given the particular regulatory regime which applies to pharmaceuticals, often many years pass before the marketing authorization to any given new pharmaceutical specialty is granted. During that time, do…

In the EU, any third party in possession of genuine goods put on the market in the European Economic Area (EEA) by the trade mark owner or with the trade mark owner’s consent is free to resell those goods within the EEA. This is because the EU imposes a system of “regional exhaustion”, which means…

The Fourth Board of Appeal (BoA) of the EUIPO has once again been told off by the General Court (GC). In its decision of 6 June 2018 (case T-803/16), the GC decided that the BoA was not competent to rule upon the question of genuine use of its own motion in inter partes proceedings if…

In yet another decision, the German Federal Supreme Court (BGH) has ruled on whether an injunction also obliged an infringer to take active steps to stop the distribution of infringing products through resellers (decision of the BGH of 11 October 2017 in Case I ZB 96/16). The case follows a series of earlier decisions by…

Three recent General Court judgments concerning oppositions between trademark in the pharmaceutical and cosmetic fields have caught our attention. In all three cases, the marks were found similar essentially on account of common rather descriptive elements. MUNDIPHARMA/MULTIPHARMA – T-144/16 of 7 November 2017: the EUTM application MULTIPHARMA in classes 5, 35, 42 was refused based…