The EU General Court has overturned a decision of the Board of Appeal in relation to a revocation action for the mark FEMIBION.

Merck KGaA (“Merck“) applied to register the mark, FEMIBION, as an EU trade mark on 4 August 1998. The goods applied for in class 5 were “Pharmaceuticals, veterinary and sanitary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings and disinfectants”.

On 26 March 2014 Endoceutics, Inc (“Endoceutics“) filed an application to revoke the mark based on non-use. Merck submitted a range of evidence to support the genuine use of the FEMIBION mark including printouts of pages from its UK website, screenshots of various websites using the term “femibion” in their domain names, invoices and a range of brochures, catalogues and other documents.

Based on the evidence provided, the Cancellation Division found genuine use of the mark only for “dietetic substances adapted for medical use“. The Cancellation Division revoked the mark for all the other goods covered by the registration. Merck appealed the decision.

The First Board of Appeal upheld the Cancellation Division’s decision in part and annulled the decision in part in that it maintained registration of the mark for a subcategory of pharmaceutical goods namely “pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition“ as well as for “ dietetic substances adapted for medical use”

Endoceutics appealed the decision claiming that the mark had only been put to genuine use in relation to “dietetic substances adapted for medical use“.

In assessing whether genuine use had been made of the mark for the pharmaceutical goods subcategory defined by the Board of Appeal, the General Court analysed the evidence provided by Merck. This included evidence of a range of products incorporating the FEMIBION mark including “Femibion@ Health Pregnancy” and “Femibion@ Energetic Mum”, amongst other products. The Court noted that all these products contained a range of vitamins and minerals.

Based on the evidence provided, the Court concluded that the products in respect of which use of the FEMIBION mark was shown were not pharmaceutical preparations in the subcategory defined by the Board of Appeal but were instead dietetic substances.

There was some discussion about whether one of Merck’s products, a “Femibion Flore Intime vaginal gel”, amounted to a pharmaceutical product. The Board of Appeal had found that it was not a dietetic product and could be classed as a “preparation that may be applied topically“. Although the General Court found that the product was certainly not to be classified as a “food supplement“ or a “dietetic substance“, there was no evidence provided to support the fact it was a pharmaceutical preparation and that even if there was, Merck had not provided evidence to support the assertion that the use of the goods was genuine (Merck had provided two invoices showing the sale of 25 units of the Femibion Flore intime 28 gel and 12 units of the Femibion Vaginal gel).

As a result of the above the Board of Appeal’s decision was annulled and the revocation action was upheld in relation to all the goods covered by the registration except for “dietetic substances adapted for medical use“.

Case Ref: T-802/16