Following the PTMG (Pharmaceutical Trade Marks Group) Spring Meeting in Munich, I took a closer look at the “GALENPHARMA“ decision presented there. Although some time has passed since then, the decision contains important insights into how trademarks can be used to maintain their legal validity, particularly in the pharmaceutical sector.
The EUIPO Board of Appeal decision (R 768/2023-2) regarding the mark “GALENPHARMA” provides vital guidance on how much variation is legally permissible.
The Case: The word mark “GALENPHARMA” was registered for pharmaceuticals. However, in practice, it was used almost exclusively in the shortened form “GALEN” (augmented with blue graphic elements and a red circle in the letter ‘A’). A competitor filed for revocation based on non-use.
The Core Decision: Why was the protection maintained?
- The “Core” Theory: According to Art. 18(1)(a) EUTMR, use is considered genuine even if it occurs in a form that does not alter the distinctive character of the mark.
- Descriptive Elements are Optional: The Board found that the suffix “PHARMA” is purely descriptive for medicinal products. Omitting it is perceived by the public as a permissible linguistic shortening that actually highlights the primary name “GALEN” more effectively.
- Decorative Additions: The added graphic design (colors, circles) was classified as purely decorative. It serves visual enhancement without affecting the distinctiveness of the verbal core.
- House Brands vs. Secondary Brands: Using “GALEN” alongside specific product names like “BetaGalen” or “TriamGalen” is legally harmless. Consumers are accustomed to the interplay between a house brand and individual product brands.
The Downside: The Risk of Product Specialization Although the use was affirmed, the owner lost protection for large parts of the registry. Since use was only proven for specific medications, the list of goods was narrowed from “pharmaceuticals” to the sub-category “anti-inflammatory medicines”.
Practical Tips for IP Managers:
- Identity Check: Regularly verify if your marketing department is still using the “distinctive core” of the mark. Omitting descriptive suffixes is usually safe changing the name itself is risky.
- Mind the Evidentiary Hierarchy: Statements from CEOs have lower evidentiary value before the EUIPO than neutral evidence. Document use thoroughly with invoices, promotional letters, and real-world packaging photos.
- Strategic Goods List: To maintain protection for a broad range (Class 5), you must demonstrate use for a representative selection of products; otherwise, you risk being restricted to niche categories.