Exciting news for trademark law! In a recent ruling (I ZB 37/25), the German Federal Court of Justice (BGH) addressed the question of the conditions under which a trademark for medicinal products is used “in a manner that preserves its rights– particularly when the product does not (yet) have German marketing authorisation.
In the context of appeal proceedingsconcerning a lack of a legal hearing, the Federal Court of Justice also commented on the substantive considerations of the German Federal Patent Court. The present case concerned opposition proceedings between two word marks “H 15”. The proprietor of the earlier trade mark used it for an Ayurvedic product imported from India as “H 15 Gufic” and distributed in Germany via pharmacies in accordance with § 73 Section 3 of the German Medicinal Products Act (AMG). The opposing party disputed that there was genuine use.
The 3 key takeaways on “use” from the ruling:
1️⃣ Authorisation does not equate to use: The BGH confirms that a domestic marketing authorisation under pharmaceutical law is not strictly necessary for use as a “medicinal product” to preserve rights.
The decisive factor is that the product appears as a so-called ‘presentation medicinal product’ – i.e. it is perceived by the public as a remedy due to its presentation and indication (e.g. anti-inflammatory).
2️⃣ Distribution via importers is sufficient: For use t preserves trademark rights, it is sufficient for the trademark owner to supply the product to a domestic importer so that the latter resells it to pharmacies.
The fact that the importer may have sold fewer goods than they purchased from the owner is irrelevant – what matters is the trademark owner’s action.
3️⃣ No obligation to advertise: Advertising is not a necessary prerequisite for genuine use.
Even if a product is subject to an advertising ban (as in the case of individual imports under § 73 Sec. 3 of the AMG), the trade mark can still be effectively preserved through distribution alone.
Practical conclusion: The ruling strengthens the position of trademark owners in the pharmaceutical and healthcare sectors. It emphasizes that the concept of use under trademark law must be interpreted broadly and must not be unduly restricted by regulatory hurdles under pharmaceutical law (such as the lack of a marketing authorisation). Furthermore, the lack of advertising for the products is not a sufficient argument for a lack of use.