EU General Court Upholds L’Oréal’s trade mark - EPO Extend Definition of "Substance or Composition" in Medical Use Claims

EU General Court Upholds L’Oréal’s trade mark

In a recent judgment of 21 February 2024 (T-765/22), the General Court of the European Union dealt with a trade mark dispute between L'OREAL (UK) Limited and AZALEE COSMETICS.

'L’Oréal (UK) Limited, the well-known cosmetics company, opposed Azalee Cosmetics' application for registration of the EU figurative mark "LA CREME LIBRE" (with the word LIBRE appearing in a mirrored way under the word CRÈME”) on the basis of potential conflicts with L’Oréal's earlier trade marks, including its EU trade mark No. 17986471 “LIBRE”, registered for goods in Class 3 of the Nice Classification which includes cosmetic and toiletry products. The disputed mark was applied for cosmetic goods and services in Classes 3, 21, 35 and 44 covering a wide range of goods and services such as cosmetics products and utensils, beauty treatments and advice, hygiene, body aesthetics and make-up, among others. The EUIPO’s Opposition Division and Board of Appeal accepted L’Oréal’s opposition and had rejected Azalee’s trade mark application.

The key issues before the General Court were whether a likelihood of confusion between the conflicting marks could be established because of their similarity leading the relevant public to wrongly associate the goods or services of the parties.

Firstly, the Court held that even though all the goods and services included in classes 21, 35 and 44 for which the “LA CRÈME LIBRE” trade mark was applied were not covered specifically by L’Oréal’s earlier trade mark did not preclude a similarity between the goods and services. Indeed, it is well established that where goods and services are competing, complementary or have similar purposes, they can be found to be similar for the sake of identifying likelihood of confusion between two marks. In this sense, there was indeed similarity between the goods and services covered by the two marks since, for example, cosmetics utensils covered in Class 21 are complementary to cosmetic products covered in Class 3: you need the former to use the latter!

In relation to visual similarity between the signs, the Court held that there was a low degree of visual similarity between the conflicting marks. This conclusion was based on the absence of a dominant visual element in Azalee’s trade mark, which consists of three elements written in capital letters, which meant that there was visual similarity (even if to a low degree) between the two marks due to the use of the word LIBRE.

Second, the GC upheld the conclusion of the EUIPO Board of Appeal that the conflicting marks had a medium degree of phonetic similarity. The Court emphasised that, despite the differences in the pronunciation rhythm of the signs, the public would perceive the presence of the common term 'libre' in both marks identically, thus justifying the medium degree of phonetic similarity between them.

Regarding conceptual similarity, the Court rejected the appellant's arguments regarding the separate interpretation of the terms, pointing out that the expression "la crème libre" in the trade mark application forms a conceptual unit evoking the concept of freedom. Moreover, the Court noted that the addition of 'la crème' did not alter the meaning of 'libre' and confirmed that, although the expression as a whole might be meaningless, the common word 'libre' retained its meaning, leading to conceptual similarity.

As a result of all of the above, as regards the likelihood of confusion, the General Court stressed that, given the similarity between the two signs (even if not high), the similarity between the goods and services covered and the overall perception of the sign by the average consumer could lead the public to wrongly believe that the goods come from the same source, which may result in a likelihood of confusion with the commercial origin of the goods.

EPO Board of Appeal Extend Definition of "Substance or Composition" in Medical Use Claims

The recent decision of the EPO Board of Appeal in case T-1252/20 marks a significant shift, broadening the category of products eligible for medical second-use claims. This decision has considerable implications for the patentability of medical treatment-related products at the European Patent Office (EPO). While methods of treatment are not patentable at the EPO, Article 53(c) of the European Patent Convention (EPC) allows for the patentability of "substances or compositions for use" in methods of treatment, surgery or diagnosis.

To provide some context, the EPC defines a "substance or composition" as an "active ingredient" that provides a therapeutic effect in a medicinal product. However, past case law established that only those products that interact chemically with the body are considered "substances or compositions", while those whose therapeutic effect is based on a "three-dimensional structure formed by a composition once inside the body" (in other words, whose action is purely mechanical rather than chemical) are classified as devices. The distinction between a "substance or composition" and a medical device has been the subject of recent legal controversy. This is for a simple reason: while second-use claims are allowed for substances and compositions as per Articles 54(4) and (5) of the EPC, they are not allowed for devices.

The decision in case T-1252/20 represents a change in this interpretation by including any product defined by its chemical composition in the category of 'substance or composition', regardless of its mode of action in the body.

In this case, the Board of Appeal reviewed the decision of the Examination Division to reject patent EP 2919826, which covered a composition for reducing or eliminating cancer cells by blocking the blood supply to the tumour. The Examination Division argued that the peptide used in the composition had a physical mode of action by forming a hydrogel and therefore did not qualify as a "substance or composition" under Article 54(4) and (5) EPC. However, the Board of Appeal held, contrary to existing case law, that the peptide hydrogel should be classified as a "substance or composition" on the basis of its basic chemical properties.

The Board of Appeal held that even if the mode of action is physical, the product should still be considered a 'substance or composition' if its chemical composition is fundamental to its therapeutic effectiveness. As an example, consider a topical gel used to relieve muscle pain. Although its mode of action is physical in that it forms a layer on the skin that provides relief, the Appeals Board would argue that it should be classified as a 'substance or composition' if its chemical composition, such as the active analgesic ingredient, is essential to its therapeutic effectiveness.

In this context, the Appeals Board concluded that restricting the definition of "substance or composition" by mode of action would not adequately fulfil the legislative purpose of Article 54(4) and (5) EPC. In this case, the Board argued that the product should be considered a "substance or composition" for patentability purposes, as its chemical composition and physical properties are equally relevant to its therapeutic efficacy. Overall, the Board's approach would allow for a more flexible interpretation of patentability requirements for compositions with medical use.