GC puts a deep wrinkle in Allergan’s derma filler, revoking its JUVEDERM ULTRA EUTM in class 10

Background

In March 2016, Dermavita filed an application for revocation alleging lack of genuine use of Allergan’s EUTM JUVEDERM ULTRA covering “Pharmaceutical products administered by injection for use in moisturising skin and reducing wrinkles” in class 5 and “Dermic implants, including visco-supplementation substances for medical use, intended for wrinkle filling or volume increasing” in class 10.

In July 2018, the EUIPO decided to revoke the mark for Class 10 goods but dismissed the action for Class 5 goods, as evidence of use was shown for prefilled syringes with a pharmaceutical preparation (a 3D hyaluronic acid matrix dermal filler with local anaesthetic, lidocaine) meant to be injected for enhancement of lip and perioral areas and reduction of fine lines, etc. The purpose of buying such prefilled syringes was the use of the pharmaceutical product within them and not the use of the syringes as such (which are Class 10 goods when sold/purchased empty). The pre-filled syringes in question are only meant to store the JUVEDERM dermal filler. The EUIPO concluded that all injectable dermal fillers fall with the scope of class 5 (and not class 10).

Both Allergan and Dermavita filed appeals, but both were dismissed and the BoA decision was then brought before the GC. The Court’s decision T643/19 Dermavita v Allergan simply confirms that the mark was used for goods in class 5 and that these were classified as pharmaceutical products, not in the sense of medicinal products but as other preparations for medical use. However, the GC decision in case T664/19 Allergan v Dermavita provides further clarification.

GC case T664/19 Allergan v Dermavita

Allergan alleged that the BoA erred in finding that the mark had not been put to genuine use in connection with the goods in class 10. However, the GC rejected this single plea in law and dismissed the action with the following reasoning.

• Composite good with dual function versus dual (Nice) classification of same product

Allergan claimed that the goods at issue have a dual function and fall within both the category of pharmaceutical products in Class 5 and the category of dermal fillers, a subcategory of artificial implants, in Class 10.

However, and in line with the EUIPO’s finding, the GC stated that Allergan did not refer to composite goods which have a dual function but seek to protect the same product under two different headings of the Nice Classification (which is not normally possible).

• Clarification of “artificial implants” in class 10

Allergan alleged that lidocaine (the pharmaceutical component of the goods at issue) is immediately absorbed after injection but hyaluronic acid gel expands and settles under the skin, thus forming a subcutaneous implant that remains under the skin for a long time, until it deteriorates. In sum, Allergan stated that hyaluronic acid gel, once injected, functions as a type of artificial implant.

The GC pointed out that implants in Class 10 are surgical implants, composed of artificial materials and it was not established that the goods in question had been used as artificial implants within the meaning of Class 10 but, rather, that they had been used as dermal fillers within the meaning of Class 5. Indeed, and as also stated by EUIPO, an implant is generally associated with surgery, whereas the goods in question are “injectable dermal fillers containing hyaluronic acid gel that are used to smooth facial wrinkles and to add volume to areas of the face where the skin sags” and cannot constitute an implant at the same time.

• Function of the goods in question

The GC stated that since the sole function of the goods at issue is that of filling wrinkles of the skin with hyaluronic acid gel, it must be concluded that “that function is specific to pharmaceuticals” (in Class 5) and “not medical devices, in a broad sense, and thus not specific to implants, which are classified in Class 10”.

Next steps

This Judgment evidences the importance of determining the function of a product (and/or the purpose of buying it) to understand exactly how the mark is used and exclude any further use of exactly same product for other goods in different Nice Class(es).

The battle between Allergan and Dermavita is however not limited to the cases discussed here as there are others involving the JUVEDERM brand which are still ongoing (e.g. partial cancellation of Allergan’s JUVEDERM ULTRA SMILE mark (by revoking it in cl. 10 and 44 but maintaining it in class 5) and Allergan’s JUVÉDERM VOLUMA mark (by revoking it in cl.10 but maintaining it in cl.5). The road ahead is therefore not wrinkle-free.

Authored by Paula Moreno