Sponsored post: Belmora LLC v Bayer Consumer Care AG et al

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Sponsored post: Belmora LLC v Bayer Consumer Care AG et al

Fitz_WeAre_stacked_oneline

In the first of a series of sponsored blog posts, Timothy Kelly and Giancarlo Scaccia of Fitzpatrick Cella Harper & Scinto discuss a recent trade mark decision in the Fourth Circuit

Scaccia, Giancarlo-300
Giancarlo Scaccia
Kelly, Timpthy-300
Timothy Kelly

The Fourth Circuit Court of Appeals has concluded in Belmora LLC v Bayer Consumer Care AG et al (March 23 2016) that a false advertising/false association claim under Lanham Act §43(a) need not be premised upon the ownership of a United States trade mark registration or even use of a mark in the US. Such a claim is available to “[a]ny person who believes that he is or will be damaged” as a result of a defendant’s activities. Belmora LLC markets an analgesic in the United States called Flanax, which, according to Bayer Consumer Care AG, Belmora packages and promotes in a manner allegedly designed to create an untrue association or affiliation with an analgesic long marketed under the name Flanax by Bayer in Mexico. Notwithstanding the fact that Bayer did not use the Flanax mark in the United States and did not own a US registration, Bayer petitioned to cancel Belmora’s US Flanax registration under Lanham Act §14(3) alleging that Belmora’s use of the mark “misrepresent[ed] the source of [Belmora’s] goods”. The Trademark Trial and Appeal Board cancelled Belmora’s registration, concluding that Bayer had standing to bring the cancellation action because it “lo[st] the ability to control its reputation and thus suffer[ed] damage.”

Belmora appealed the Board’s decision via a civil proceeding in the Eastern District of Virginia.  Meanwhile, Bayer filed suit in California alleging false association and false advertising under §43(a). The cases were consolidated in Virginia. Reversing the Board’s decision and dismissing Bayer’s false association/false advertising claims, the district court determined that Bayer lacked standing because it had never used or owned a registration for the Flanax mark in the US. Bayer appealed to the Fourth Circuit.

Focusing on the language of §43(a), the Fourth Circuit found that the statute does not require a plaintiff to possess a US registration or even to have used a trade mark in US commerce. Rather, in contrast to the trade mark infringement language of §32, Congress wrote §43(a) in terms of the putative defendant’s conduct, and did not include a plaintiff’s registration/use as a precondition. Thus, the district court had erred in reading such a requirement into the statute. 

The Court then analysed whether Bayer had properly alleged its false association/false advertising claims in light of the two-prong test established by the Supreme Court in Lexmark Int’l v Static Control. The Fourth Circuit framed the issues as: did the alleged acts of unfair competition fall within the Lanham Act’s protected zone of interests? And if so, had Bayer pled proximate causation of a cognizable injury?

As to false association, the Court found that that Bayer’s claim fell within the appropriate zone of interests because the complaint alleged that Belmora’s misleading association with Bayer’s Mexican product had caused customers to buy Belmora’s product in the United States instead of Bayer’s product in Mexico. These alleged lost customers, the court found, could reasonably translate to a cognizable injury in the form of lost sales revenue, satisfying Lexmark’s second prong.

Fitz_WeAre_stacked_oneline

Similarly, as to false advertising, Bayer’s claim fell within the Lanham Act’s zone of interests by “protecting persons engaged in commerce within the control of Congress against unfair competition”. Further, Bayer had sufficiently alleged that Belmora engaged in unfair competition by using deceptive advertisements that capitalized on Bayer’s goodwill, thus potentially causing Bayer to lose customers and demonstrating injury proximately caused by Belmora’s conduct. 

Although the decision appears to provide an avenue for foreign entities to reach into the US to stop a domestic trade mark use, the decision is premised upon whether Bayer had standing and whether its claims could survive a motion to dismiss. Whether Bayer (or any similarly positioned plaintiff) will ultimately prevail on the merits of its §43(a) claims remains to be seen. 



more from across site and SHARED ros bottom lb

More from across our site

A settlement between Philips and Transsion and a loss for AstraZeneca in the UK were also among the top talking points
Working with Harvey and Microsoft, the firm has been at the forefront of developing AI tools for its lawyers, and is now exploring new projects and business models
The Emotional Perception AI case, which centres on the patentability of an artificial neural network, will be heard next week
Developments included a court order related to InterDigital’s anti-anti-suit injunction against Disney, and clarification on recoverable costs
Partners at Foley Hoag examine how recent CJEU jurisprudence may serve as a catalyst for recalibrating US judicial reluctance to entertain foreign patent claims
International law firms have high hopes for their IP practices in Saudi Arabia, with many opening offices, but recruiting and retaining talent in the Kingdom presents unique challenges
Patrick Ogola joins us for our ‘Five minutes with’ series to discuss helping African entrepreneurs on the global stage, and explains why young lawyers should speak up
Heli Pihlajamaa, the EPO’s principal director for patent law and procedures, joins us to take stock of the unitary patent following its second anniversary
Kelly Thompson, chair of South African firm Adams & Adams, discusses self-belief, self-doubt, and the importance of saying yes
The renowned food brands were represented by a host of lawyers, including members of the firms’ IP teams
Gift this article