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HYAL decision highlights importance of relevant public in assessing registrability

Jude Antony
08/09/2021

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United Kingdom

The following is an article by Jude Antony and Kristina Holm on the EU General Court's decision in Fidia farmaceutici v EUIPO concerning a cancellation action for the EU trade mark HYAL.

  • Ioulia and Irene Tseti Pharmaceutical Laboratories sought the cancellation of Fidia farmaceutici's mark HYAL for all goods covered by that mark
  • The General Court upheld the Board of Appeal's finding that the mark was partially invalid for specific goods in Classes 1 and 5
  • HYAL was descriptive of the goods found invalid in Class 1 and capable of designating the properties of the goods found invalid in Class 5
In Fidia farmaceutici v European Union Intellectual Property Office (EUIPO) (Case T-215/20), the General Court has confirmed a decision by the Fifth Board of Appeal of the EUIPO that Fidia farmaceutici's EU trademark (EUTM) HYAL was partially invalid for goods in Classes 1 and 5 due to the mark being descriptive and capable of designating the properties of the goods.

Background

In 2001 Fidia farmaceutici (‘the applicant’) filed an application to register the word mark HYAL as an EUTM for goods in Classes 1, 3 and 5. In 2017 Ioulia and Irene Tseti Pharmaceutical Laboratories (‘the intervener’) filed an application with the EUIPO for a declaration of invalidity of the EUTM for all goods on the basis the mark was descriptive.

The Cancellation Division declared the EUTM invalid for "chemicals used in industry and science" in Class 1 and “pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; biomaterials" in Class 5. The applicant appealed.

The Board of Appeal of the EUIPO found that the relevant public was composed of professionals for the Class 1 goods, and of professionals and the general public for the Class 5 goods. It noted that the sign HYAL had two possible meanings:

  • an abbreviation used in scientific publications for 'hyaluronidase', an enzyme encoded by the human genes HYAL 1, HYAL 2, HYAL 3, HYAL 4 and HYAL 5 - the board noted that HYAL refers to both those genes and to the enzyme itself.

  • a prefix that means 'glassy' or 'transparent' - the board considered that this could be understood by the relevant public as a direct reference to hyaluronic acid, which has a glassy or transparent effect and is an ingredient widely used in pharmaceutical and cosmetic preparations.

Taking these meanings into account, the board agreed with the Cancellation Division that the EUTM was descriptive of the Class 1 goods and capable of designating the nature of Class 5 goods, at least for the professional public, and dismissed the applicant's appeal.

Appeal to the General Court

The applicant appealed to the General Court on multiple grounds, most significantly disputing the finding of the board that HYAL was descriptive and capable of designating the nature of the goods as at the application date.

The General Court upheld the board's decision, finding that the Board of Appeal did not err in holding that the relevant public was likely, at the date of the application, to establish a sufficiently direct and specific relationship between HYAL and the goods in question in Classes 1 and 5. Although much of the evidence of descriptiveness filed by the intervener post-dated the application, it referred back to earlier descriptive use of HYAL and was therefore capable of establishing descriptiveness as at the relevant date.

Comment

This case is a reminder of the importance of the relevant public in analysing registrability of a trademark. Because HYAL was held to be descriptive in the understanding of professionals, who were the relevant public, the mark was declared invalid. The result may have been different if it were the understanding of the general public only under consideration. The case also shows that evidence from outside the relevant period can still be relevant where it nevertheless sheds light on the situation as at the relevant date.

This article first appeared on WTR Daily, part of the Word Trademark Review, in July 2021.  Further further information, please go to www.worldtrademarkreview.com.

 

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