Pantaprazol - a medicine against heartburn and other eructations of gastric juice - used to be patented by Nycomed till May 5, 2009 when the patent expired. From 1996 Nycomed has been the only producer who distributed the medicine Pantozol in the Netherlands based on pantoprazol. Until May 2009 Pantozol was only available on prescription. The Pantozol pills are available in two sizes and have an oval shape. The pills are yellow coloured and have a brown coloured imprint on them: 'P 20' or 'P 40" dependent on the quantity of active ingredients in the pill. Nycomed has registered several trade marks in the Benelux to protect not only the 'P 20' and 'P 40' signs, but also the shape and the colour of the pills. The shape/colour trade marks are described as yellow and brown and shape mark. Since the patent expired medicine based on pantoprazol may be distributed by other producers and no prescription is needed to sell such medicine. In view of this new market situation Nycomed's Pantozol will be sold in a blue package on which the pill is not depicted. The package encloses a cardboard strip for seven pills that are individually packed in a so called aluminium package, a non-transparent aluminium push through system. A similar medicine is produced and distributed by Sandoz, named Pantoprazol Sandoz. The Sandoz pill is also oval and yellow coloured. Furthermore the numbers 20 or 40 are imprinted on the pills in black colour, the weight in milligrams of the active ingredentiens in the pill. Nycomed accused Sandoz of trade mark infringement. The cease and desist letter had no effect at all and Nycomed started summary proceedings before the Presiding Judge of the District Court of Amsterdam (mr. Tonkens-Gerkema).

With a decision of July 28, 2009 the Presiding Judge refused Nycomed's claims and ordered Nycomed to pay the procedural costs of Sandoz (€ 72.000 and a nickle and a dime; Nycomed did not raise a defense against the cost amount). Sandoz raised an invalidity defense ('the trade marks are not distinctive'), but the Presiding Judge rejected this defense, because the trade marks had passed the distinctiveness test at the Benelux Office and the registrations have not been declared invalid in invalidity proceedings in the meantime. Accordingly the Presiding Judge decided that it can not be assumed that the trade mark are invalid within the framework of the summary proceedings.

With regard to the alleged trade mark infringement the Presiding Judge first of all assumed that the Nycomed trade marks are composed of several elements and that these trade marks are entitled to protection only in their specific form as registered by Nycomed, especially since Sandoz filed exhibits which showed that pills for which a receipt is needed are oval shaped, have imprints of a number on them, eventually with a letter and are yellow coloured. Accordingly the Presiding Judge concluded that Sandoz '20' and '40' can not be regarded as identical or similar signs, since Sandoz does not use the 'P', but only a number to indicate the quantity of active ingredients in the pills.

The Presiding Judge is not convinced by Nycomed's proposition that the brand Pantozol has gained distinctiveness by exetensive use, since Pantozol is already available since 14 years in this shape, has a large market share and can be divided from similar medicine, because Pantozol is a so called 'specialité'. To obtain more distinctiveness by use a trade mark needs the ability to identify goods for which the trade mark is used as originating from a particular undertaking. The relevant public, also for a medicine as Pantozol which is only available on prescription, is first of all the consumer who uses the pill for which the trade mark is registered. Nycomed has not shown that she has used the oval shape, yellow colour and imprints P20 or P40 to give these consumers a possibility to distinguish Pantozol pills from similar ones from other producers. On the contrary Nycomed argued that the public recognizes a medicine in tablet form with an oval shape and a yellow colour as a medicine against heartburn. Accordingly a consumer shall not directly distinguish the little, yellow and oval shaped tablet as originating from a particular producer for a specific medical complaint. The Presiding Judge concluded that Nycomed had not shown that the claimed signs have become trade marks by extensive use in the mind of the average consumer in the Benelux. The same applies for doctors and pharmacists who are acting as intermediaries in the distribution of Pantozol pills to consumers. Professional users apparently distinguish the origin of medicine on receipt by the trade mark or the name of the producer. The Presiding Judge is not convinced that these groups of professionals distinguish the origin of such medicine according to shape, colour and imprint of the pills, especially not since such elements are far from unique. On these grounds the Presiding Judge holds that the Pantozol shape and shape-colour trade marks do not have acquired a stronger distinctive character due to intensive use.

Since Nycomed did not substantiate that the Pantozol shape and shape-colour trade marks are well known the Presiding Judge decides that Nycomed’s position that Sandoz takes unfair advantage of the repute of the trade marks does not hold out. Nycomed’s statement that the good repute of the trade mark Pantozol might be damaged if the medicine in similar pills do not work properly or have negative side effects is disregarded by the Presiding Judge, because it has not been shown by Nycomed that Pantoprazol Sandoz is less effective or causes negative side effects. The fact that the packaging of Pantoprazol Sandoz contains a warning that the colour agent in the pills may cause an allergic reaction is regarded as positive for Sandoz: consumers who read the warning will withhold from purchasing Pantoprazol Sandoz. Accordingly the Presiding Judge concludes that there is no (proof of) detriment to the repute of the Pantozol brand.

And because the Pantozol pills will be freely available as from August 2009 in drugstores and pharmacies in a packaging which does not show the shape, colour and imprints of the pills the Presiding moreover finds that there is no risk of confusion: the shape and shape-colour trade marks are not used on the packaging to indentify the origin of the pills and accordingly the colour and shape do not indicate the origin of the pills to the consumer, because they are no perceptible when the consumer purchases the pills.