Food-pharma industry convergence is not a new development. In 2013, a study of the patent citation data of 274 published European patents by 5 EU Medical Nutrition companies revealed the blurring of lines between conventional food and pharmaceuticals and concluded that pharmaceutical technologies were driving medical nutrition innovation[1].<\/p>\n
Fast forward almost a decade and the traditional silos are being disrupted at pace. In 2021, the UK\u2019s Taskforce on Innovation, Growth and Regulatory Reform (\u201cTIGRR\u201d) laid down its recommendations for new regulatory regime to bridge pharma and food regulation for the emerging \u2018nutraceutical\u2019 sector[2].<\/p>\n
Trade mark conflicts will undoubtedly continue to rise as pharma and food companies battle it out to dominate the sector. However, there remains inconsistency in the findings of the courts and registries about just how close the sectors are in purpose and in the eyes of the consumer, leading to a degree of unpredictability in proceedings concerning pharma v food goods.<\/p>\n
Here, we take a look at court\/registry interpretation of the scope of protection for products classified in class 5 (pharmaceutical products, dietetic substances for medical use) versus those found elsewhere and the case for delimiting the goods by their main purpose.<\/p>\n
The Explanatory Notes to the Nice Classification are a good place to start. The Explanatory Note to Class 5 says: \u201cClass 5 includes mainly pharmaceuticals and other preparations for medical or veterinary purposes<\/em>\u201d. This includes \u201cmeal replacements and dietetic food and beverages adapted for medical use<\/strong><\/em>\u201d. However, it \u201cdoes not include, in particular\u2026 meal replacements and dietetic food and beverages not specified as being for medical\u2026 use, which should be classified in the appropriate food or beverage classes<\/em>\u201d.<\/p>\n The Notes to Classes 29, 30 and 32 expressly exclude \u201cdietetic food and substances adapted for medical use<\/strong><\/em>\u201d (cl.29 and 30), and \u201cdietetic beverages adapted for medical purposes<\/strong><\/em>\u201d.<\/p>\n This sees some functional foods and drinks being classified elsewhere such as protein drinks (cl.32), nutritionally fortified beverages<\/em> (cl.32), protein bars<\/em> (cl.30), even dietetic foodstuffs not<\/strong> for medical purposes, and therein, it seems, lies the crux. How should a class 5 specification be interpreted? How far does \u201cadapted for medical use\u201d reach?<\/p>\n In Case T25\/17, EUIPO v. Compagnie lait\u00e9re europ\u00e9enne SA, the General Court set out distinguishing features of products in class 5, specifically pharmaceutical preparations, dietetic substances for medical purposes, dietetic preparations, dietary supplements, pharmaceutical products, all for medical purposes<\/em> versus class 32, protein preparations in powder form for beverages supplemented with vitamins or minerals as well as with carbohydrates<\/em> as follows:-<\/p>\n The Board of Appeal took the same approach in Case R 22\/2019-4 MULTI-FOOD Produktions- und Handelsgesellschaft mbH v SAMI S.R.L, considering whether evidence of use on protein preparations with nutritional purposes proved use in respect of dietetic products for medical purposes<\/em>. The BoA held not; the goods were essentially muscle building and protecting preparations. It said:<\/p>\n Taking account of Nice classifications, their explanatory notes and the findings of the courts and registries, it is apparent that class 5, particularly adapted for medical use\/purposes<\/em> is to be afforded a narrow interpretation, being goods to treat a deficiency or medical need, a specialised form of nutrition, which is different to products with exclusively nutritional purposes. It is the main purpose that decides. A liquid Vitamin B complex in class 5 can therefore be distinguished from a class 32 vitamin B fortified water \u2013 a court or registry may render them dissimilar \u2013 but the desire for a pharma company to be able to enforce against the latter use is understandable given the increasing convergence of industries.<\/p>\n Yet, there appears to be an inconsistency of outcomes. In R 397\/2021-5, Verla-Pharm, Arzneimittel GmbH & Co. KG v. Polski Koncern Naftowy ORLEN S.A, comparing protein and energy bars<\/em> with class 5 dietetic and pharmaceutical preparations, the Board took a somewhat looser approach to assessing \u2018purpose\u2019, holding:<\/p>\n \u201c\u2026while [energy bars; protein bars] are not specifically aimed at treating, alleviating or curing illness, it is nevertheless true that they also contribute\u2026 to promoting health and that they can be administered and used, in a combined or supplementary manner, to different therapeutic ends. They are designed to respond to special dietary needs, with the aim of treating or preventing illnesses or of strengthening the organism\u201d.<\/p>\n It went on at [33] to say that the conflicting goods, whether or not for medical use, are generally produced by the same pharmaceutical companies. Is this true yet or is it still the exception rather than the norm as the lines blur?<\/p>\n As pharma and food move out of their silos, one would expect the number of findings of similarity to increase between pharma and food categories, at least for those food\/beverages drafted to \u2018call out\u2019 their nutritive benefits. As market realities develop and consumers become accustomed to pharma-food companies collaborating or becoming one through acquisition and investment, and to how functional foods and nutraceuticals are marketed and sold, it is right that the global assessment in trade mark law should shift with consumer perception. However, one anticipates that a narrow approach will (and should) remain when interpreting \u201cfor medical purposes\u201d in the context of proof of use in opposition and cancellation proceedings.<\/p>\n For now, those interested in functional foods and nutraceuticals might consider:<\/p>\n\u201cFor medical purposes\u201d \u2013 a narrow interpretation<\/h5>\n
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Inconsistent outcomes<\/h5>\n
For the future<\/h5>\n