1 February 2012Jurisdiction reportsMichiel Rijsdijk

Dr Bach's remedies

Dr Edward Bach was a doctor and bacteriologist who died in 1936. He devoted the last part of his life to developing natural remedies that would keep patients emotionally, as well as physically, healthy. He believed anyone should be able to follow his methods, and through this idealism and his books many followers discovered the healing balance he propagated. Until 1991, that is.

In that year, there was a hitch in the flow of knowledge, when Bach Flower Remedies Limited (BFR) decided to monopolise Bach’s methods by registering the reference to the good doctor as a trademark. From 1998, Healing Herbs Limited (HH) challenged these registrations after being ordered to refrain from the use of references ‘Bach’, ‘rescue’ and ‘remedy(ie)’ by the Dutch court in 1991.

Both companies market Benelux products, developed using Dr Bach’s methods. Since BFR uses the reference ‘Bach’ on its marketed products, mostly in the shape of an ‘autograph’, the company is convinced consumers consider this mark an indication of the origin of its products.

HH disagrees and emphasises that this does not mean the description or any reference to Dr Bach can be trademarked by BFR, since it is a generic designation that stands only to indicate features of a product. HH started proceedings in Holland in 2001 and claimed BFR’s trademarks were invalid/must be revoked.

“BECAUSE THE DIRECTIVE DOES NOT CONTAIN A TRANSITIONAL PROVISION ON THE MATTER OF APPLICABILITY TO EARLIER REGISTERED TRADEMARKS, THE APPLICABLE LAW FOR DETERMINATION OF DISTINCTIVE CHARACTER IS UNCLEAR.”

First, the district court ruled that word marks ‘Bach’, ‘Bach Flower Remedies’ and figurative marks ‘Bach Flower Remedies Est. 1936’ and ‘Bach’ were invalid. However, the court of appeal was of a slightly different opinion and decided to declare invalid only the word marks ‘Bach’, ‘Bach Flower Remedies’ and ‘The Bach Remedies’ (added in cross-appeal).

It considered the figurative marks valid and did not please HH or the Supreme Court in adding that the degeneration of a registered mark to a generic designation in principle applies only to word marks.

This general rule deriving from Benelux Court of Justice judgment Beaphram v Nederma is now rendered useless by the Supreme Court. It considers the ruling based on Beaphram v Nederma an incorrect understanding of law and, referring to the wording of the trademark directive, wording of the Benelux Court of Intellectual Property and the Court of Justice of the EU judgment Levi Strauss v Casucci, it makes clear that figurative marks may definitely become commonplace and that this has even been ruled before. The Benelux will have to abandon Beaphram and adopt this new judgment.

The Supreme Court clarified things even further in this case, where registrations took place between 1983 and 1998. Because the directive does not contain a transitional provision on the matter of applicability to earlier registered trademarks, the applicable law for determination of distinctive character is unclear. Parties do not agree on assessment ex tunc or ex nunc, and in this case the Court of Appeal decided assessment entirely ex tunc.

Again, the Supreme Court overruled. Whether a trademark possesses distinctive character or has become customary, it said, should be judged according to the time of registration. The legal framework, however, is the current legislation.

Unfortunately, neither of these new considerations by the Supreme Court can change the rulings of the Court of Appeal in the remedies case. The court assessed that the figurative marks possess distinctive character and even though this is not what it dictated as a general rule, it reviewed distinctive character according to current legislation. For HH, therefore, the situation remains the same.

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