In 2019, the Court of the European Union dealt with a case concerning an opposition to the registration of the trademark INTAS EUTM-014153811 by the Indian company INTAS Pharmaceuticals Limited. The case began when the company, on May 26, 2015, applied to the European Union Intellectual Property Office (EUIPO) for the registration of the aforementioned trademark in classes 5 and 10, i.e., for the designation of, among other things, pharmaceuticals and injection instruments.
The opposition to the application for the registration of the disputed trademark was filed by the Spanish company Laboratorios Indas SA. In its justification, the opposing company referred to earlier trademarks named INDAS, for which it had previously held protective rights. Similar to the INTAS EUTM-014153811 trademark, the earlier applications also concerned classes 5 and 10, which included pharmaceuticals and sanitary products used in various types of medical procedures.
EUIPO and subsequently the Board of Appeal (after the appeal by the Indian company) upheld and confirmed the opposition of the Spanish company, indicating that the INTAS and INDAS trademarks are highly similar, which in turn may mislead potential consumers, even if they show a high level of interest and attention.
INTAS Pharmaceuticals Limited filed a complaint against the decision of the Board of Appeal, in which it accused the body of focusing on the use of the earlier trademarks only in Spain, while in another case (case ONEL/OMEL, case no. C-149/11), the Court of Justice stated that a trademark, in order to be recognized as used in the European Union, must be used in an area larger than one member state, and only in certain exceptional and specific circumstances can the use of a trademark in only one state have the same effect.
The Court of the European Union, in considering the complaint filed by the Indian company, stated that the judgment of the Court of Justice cited in the reasoning actually emphasizes that the situation in which a given trademark is used in at least one Member State or city is sufficient to recognize it as being used throughout the European Union. The territoriality criterion is only one of many factors that should be taken into account when assessing each case. According to the Court, an important element is also demonstrating the significant impact of a given trademark on the internal market. The Spanish company presented various documents in Spanish as evidence, including invoices, price lists, and advertisements, which were addressed, among others, to pharmacies in many Spanish cities. Although no evidence confirmed the use of the earlier INDAS trademarks outside of Spain, the Court of the European Union held that the use of the trademarks was sufficient to establish and/or maintain a presence in a specific market, and also to indicate the presence of products bearing such trademarks in that market.
As a result, in the judgment of November 7, 2019 (case no. T-380/18), the Court of the European Union dismissed the complaint, while upholding the decisions of the previous authorities regarding the recognition of the opposition as valid.
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