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Beware dormant marks in Europe

James Nurton, Berlin

When a search report tells you there are no conflicting marks for your brand in Europe, and that similar trademark registrations have not been used for more than five years, you might think you can breathe easily. But, as moderator Verena von Bomhard of Lovells said in a session on dormant marks in the EU yesterday, you need to ask lots of questions: “It should make you raise your eyebrows.”

Von Bomhard was playing the role of in-house counsel for Pharmagiant Inc, a fictitious US pharmaceutical company created by a recent merger, and was seeking advice from four European counsel from the firm Cariphisto IP Wizards LLP.

Von Bomhard said that, in her role as in-house counsel, she had commissioned search reports which showed that, though there were no earlier rights in Class 5 for the mark PHARMAGIANT in Europe, there was a Community trade mark for GIANT, as well as registrations in the UK and Italy for PHARMAGINT and in Germany and Switzerland for PHARMAGANT. All of these were registered before February 2003 and had not been used.

Advising her, Ekkehard Stolz of Lichtenstein Körner in Germany said this was not an uncommon situation: “We have many dormant marks both at OHIM and the national offices.”

The panelists advised on whether Pharmagiant would be able to register its name as a CTM and/or in national registries, whether it could attack any of the pre-existing rights for non-use and what would happen if any of the dormant marks were “kissed back to life”.

It emerged that the situation in each country is slightly different. From a UK perspective, Professor Jeremy Phillips warned: “If it transpires that these marks have been awakened, they could certainly cause you problems.” He also said that any goodwill in the dormant marks could be the basis for an action for passing off. His advice was simple: “Eradicate it!” In Italy, said Giovanni Francesco Casucci of Casucci Law Firm, the approach is broadly “Live and let die,” while Stolz said in Germany it is “Live and let live.”

Business approaches also varied, with Phillips counseling against writing friendly letters in the UK while Michael Ritscher of Meyer Lustenberger in Switzerland advised taking a softer approach and not making enemies: “Switzerland is a small country. People remember you.”

The practitioners also advised on what action Pharmagiant should take, including whether or not to seek coexistence agreements or file revocation actions, as well as the costs of taking any such action in each country. Von Bomhard estimated that the budget for taking the necessary action in every country would total $40,000. “I’m going to do it. And I’m going to be using you!” she told the lawyers of Cariphisto IP Wizards LLP.