6.6.11 Trademark

The very detailed decision T 842/14 concerned a chemical composition of a product designated by a trademark (see also T 270/11 and T 623/91). According to T 667/94, T 325/13, and T 1383/10, when the products designated by trademarks are essential for carrying out the invention, the requirements of Art. 83 EPC are fulfilled if these products are available to the skilled person not only at the priority and filing dates of the patent but also during its whole lifetime (in T 842/14 no certainty that the composition would remain unchanged). In this regard, the board in T 1714/15, referred, in this case in relation to a device that was now unavailable, to the previous passage as a confirmation of the fact that a patent has to be enabled throughout its whole lifetime, especially when the feature under consideration is a product which is marketed under a trademark. Note that T 842/14 contains extensive reasoning on the distinction between the requirements of Art. 83 EPC and those of Art. 54 EPC (especially in view of G 1/92, OJ 1993, 277).

In the more recent ex parte case T 872/20 the appellant contested the examinings division’s finding that the added feature would contravene Art. 83 EPC because it would relate to a trademark. Apart from the fact that the appellant relied on a website printout with no date, the board pointed out that the products and their composition may evolve over time while the corresponding trademark remains unchanged. Hence, using a trademark induces de facto a lack of clarity in the claimed subject-matter, which has to remain unchanged for legal certainty (Art. 84 EPC).