No. 36
June 2014

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International Association for the Protection of Intellectual Property

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Cancellation petitioner prevails upon misrepresentation claim despite lack of U.S. trademark use or registration: Bayer v Belmora
(Article by Phillip Barengolts, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP[1] Chicago, Illinois, U.S.A.)
Bayer Consumer Care AG, a Swiss company, owns the registered trademark FLANAX in Mexico, and licenses its use for the top selling analgesic in Mexico. Bayer never used the FLANAX mark in the U.S., and it has never advertised FLANAX in the U.S.

In 2003, the U.S. company Belmora applied to register FLANAX in the U.S. and ultimately obtained a registration covering “orally ingestible tablets of Naproxen Sodium for use as an analgesic. ”Belmora started selling its FLANAX in the U.S. in 2004.

Bayer petitioned to cancel Belmora's registration of FLANAX in 2007. In the early stages of the case, the Trademark Trial and Appeal Board (the “Board”) rejected Bayer's claims under the Pan-American Convention and the Santiago Convention. The Board also held that Bayer could not assert a claim for likelihood of confusion because Bayer could not allege any authorized use of its FLANAX mark in the U.S. For similar reasons, Bayer could not assert a claim of fraud upon the U.S. Patent and Trademark Office. Finally, the Board held that Bayer could not assert a claim under Article 6 bis of the Paris Convention because the Paris Convention is not self-executing. Moreover, the Board found that when the U.S. Congress implemented portions of the Paris Convention it did not provide the owner of a famous foreign trademark “with an independent basis for cancellation in a Board proceeding, absent use of the mark in the United States. ” Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009).

The Board did, however, permit Bayer's claim of misrepresentation to proceed to trial. To prevail, Bayer had to prove its standing and that Belmora was using the FLANAX mark to deliberately misrepresent that Belmora's FLANAX goods originated from an entity other than Belmora.

Belmora contested Bayer's standing at every stage of the litigation on the grounds that Bayer had no goodwill in the FLANAX mark in the U.S. The Board held that Bayer had standing because it had a real interest in protecting the Mexican FLANAX mark when Belmora was using the FLANAX mark in the United States to misrepresent to U.S. consumers that the source of Belmora's products was the same as the source of Mexican FLANAX. That is, Belmora's own marketing efforts to U.S. consumers established the reputation of Bayer's FLANAX mark in the U.S., even though Bayer itself had not used the mark in the U.S.

On the merits of Bayer's misrepresentation claim, the Board found that, “although the facts before us present a matter of first impression, they do not present a close case.” The Board found that: 1) Belmora was aware of Bayer's use of the FLANAX mark in Mexico before adopting the mark in the U.S.; 2) Belmora's principal “repeatedly invoked the reputation of Bayer's FLANAX mark when marketing Belmora’s FLANAX product in the U.S.” and 3) Belmora had adopted Bayer's identical source-identifying mark and logo (left, below), and a highly similar package design (right, below).

Belmora argued its later packaging did not look as similar to Bayer's Mexican FLANAX packaging as Belmora's original packaging, but the Board rejected this argument because “[Belmora] built its business on this heritage of misrepresentation, and [Bayer] suffers damage today due to [Belmora's] continued use of the identical FLANAX mark on the same type of product, even though its packaging and marketing may have changed.”

Although a foreign trademark owner may not have a U.S. claim under Article 6bis, this decision gives the owner of a foreign mark that is not used in the U.S., but which has been registered by another party in the U.S., grounds to assert a claim for misrepresentation if the U.S. registrant uses the mark to suggest that the U.S. product comes from the same source as the foreign product sold under the mark.

  • The Firm was counsel for Petitioner, Bayer Consumer Care AG.

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