France: Comparative advertising of a generic medicine

15 December 2009

Alain Gorny

It is not necessary within the meaning of Article L. 713-6  of the French Intellectual Property Code (“CPI”)  to mention the brand of the reference product in comparative advertising for a generic medicine, as the healthcare professionals to which the advertising is directed have other means (namely, the INN - international non-proprietary name) by which to identify the corresponding reference product.

G Gam, having obtained Marketing Authorisation for its generic Paroxétine G Gam 20mg, in May 2003, informed healthcare professionals via the specialist press of the “upcoming marketing of Paroxétine G Gam (generic of Deroxat (...)”. Beecham (owner of the Deroxat trade mark) and GSK (operator) brought an action against G Gam for trade mark infringement. On appeal, the Court confirmed the infringement on the grounds that the advertisement in question was not of the comparative advertising ‘type’, which might have allowed the G Gam to use the trade mark without Beecham’s consent (CA Paris, 3rd May 2006).

However, this decision was quashed by the Commercial Chamber, on the grounds that by presenting Paroxétine G Gam as the generic of Deroxat®, G Gam was only comparing  the “essential, pertinent, verifiable and representative” characteristics of these products (same composition, bioequivalence, etc.), which is permitted by the legislation governing comparative advertising (Cass. Com., 26 March 2008 n°03-18.366P).

On referral of the case, after the decision had been quashed, the Cour d’appel de Versailles, although carefully avoiding any questioning of the qualification of comparative advertising, nevertheless upheld that the generic producer may not avail itself of Article L. 713-6 of the CPI (under the terms of which, reference to another brand name must be necessary to indicate for whom the product is destined).

According to the Versailles court of appeal, it is not necessary to quote the trade mark Deroxat® in advertising for healthcare professionals – to whom the advertisement was solely destined – to be able to identify Paroxétine G Gam 20 mg as a generic of Deroxat® : “(…) although mentioning the brand name is a  convenient and easy solution, it is not however, necessary, since there exists for this [specialised group] other means  [the ICN] by which to identify those the generic is destined for (…)” [1].

Any decision of the Cour d’appel may still be quashed, so this may not be the final outcome.







[1] CA Versailles 17 September 2009 n°08/06287