OXAYDO, OXAYDON’T

A recent decision by the Cancellation Division at the EUIPO case serves as a reminder that even if the general public have a higher degree of attention with respect to pharmaceutical products, confusion will still be found when the goods are identical and neither mark has a particular meaning in at least one language of the EU. In making its decision, the Cancellation Division also departed from the recent willingness of the Boards of Appeal to allow requests for proof of use in respect of EU trade mark (EUTM) registrations which are within the 5 year use grace period if they are shown to be a later refilling of an identical EUTM registration which would be subject to use requirements.

On 8 March 2017 the Cancellation Division upheld an application for invalidity filed by Mundipharma AG against Acura Pharmaceuticals Inc’s EUTM registration for the mark OXAYDO. Acura’s registration covered “pharmaceutical preparations, namely, immediate-release Oxycodone hydrochloride for pain relief in tablet form”. Mundipharma based its invalidity application on its earlier EUTM rights in the mark OXYDOL, registered for “pharmaceutical preparations for human medical use, namely prescription analgesics”. In defending its registration from attack, Acura sought to force Mundipharma to prove use of its mark OXYDOL in the EU. Acura’s argument being that the registration on which Mundipharma was relying was merely a duplicate registration of an earlier EUTM registration for the same mark, filed in order to “artificially” extend the grace period for trade mark use in the EU.

The Boards of Appeal have recently been moving towards a purposive interpretation of the EU Trade Mark Regulation in allowing requests of proof of use for later refillings of older potentially vulnerable registration. It is surprising that in this case the Cancellation Division held that the existing case law was not sufficiently consistent to allow them to depart from the established practice of deeming requests for proof of use of EUTM registrations of less than 5 years old as inadmissible. Given the Cancellation Division’s reluctance to follow recent Boards of Appeal decisions on this point, this case would appear to be a good candidate for an appeal. It is hoped, that if not this case, another will soon reach the General Court for much needed clarification on the interplay between proof of use and the bad faith refilling of potentially vulnerable EUTM registrations.

Once it had dismissed Acura’s request for proof of use, the Cancellation Division proceeded to assess the likelihood of confusion between the two registrations. Having determined that the goods covered by the registrations were identical, it concluded that whilst the goods would be targeted at medical professionals, the general public would also be exposed to them. As such, confusion must be assessed from the point of view of the general public. Reminding the parties that an EUTM is a unitary right, it was acceptable to view confusion from the point of view of the general public from any part of the EU. Choosing Poland, because none of the elements of the contested signs had any meaning in the Polish language, a likelihood of confusion was found and the application for a declaration of invalidity was upheld.