Since 2015, Bayer AG, the iconic German chemical powerhouse, has been battling a trademark lawsuit all the way to the Supreme Court against a drug company, Belmora LLC, over a foreign brand FLANAX being distributed in the United States. “Flanax” was registered by Bayer as its trademark in 1976 in Mexico. Flanax is a sodium based pain reliever. Despite its success in Mexico, Bayer never distributed nor protected the name Flanax in the U.S.
However, Bayer’s interest changed when in 2004, Belmora launched their own brand of pain relievers in the United States under the same name and had it trademarked by the United
States Patent and Trademark Office (USPTO). Starting in 2015, Belmora sued Bayer for selling their products under the Flanax name. Bayer claims that it was necessary to protect their use of the term “Flanax” in the US in order to prevent that Mexican immigrants in the U.S. get mixed-up with the origin of the drug. In its early release, Belmora’s Flanax packaging closely resembles the packaging of Bayer’s Flanax from Mexico in font size, color scheme, and style. Moreover, Belmora implies that the Flanax brand in Mexico is their same brand by showing a brochure of theirs stating phrases such as “the direct producers of Flanax in the US”, “very well-known medical product in the Latino American market”, and “sold successfully in Mexico”. Furthermore, the USA version has a website in Spanish http://www.flanaxusa.com/ apparently with the intention of harvesting Latino customers who may be familiar with the brand in Mexico.
As the lawsuit proceeded, Bayer petitioned with the trademark office USPTO to cancel Belmora’s registration trademarking the name “Flanax” as a “misrepresented source of goods” but was rejected. The main dispute revolved around the Lanham Act, also known as the Trademark Act of 1946, which administers trademarks and unfair business competition. The court favored Bayer’s affirmation of unfair competition due to a “misleading association” with Belmora’s Flanax. Although this is a high profile case due to the reputation of Bayer, this is a common problem that happens all the time with people in different countries appropriating relatively famous brands from other countries without the rightful owners realizing it. Thank you to Bhavini Mistry for her contributions to this article!
However, Bayer’s interest changed when in 2004, Belmora launched their own brand of pain relievers in the United States under the same name and had it trademarked by the United
States Patent and Trademark Office (USPTO). Starting in 2015, Belmora sued Bayer for selling their products under the Flanax name. Bayer claims that it was necessary to protect their use of the term “Flanax” in the US in order to prevent that Mexican immigrants in the U.S. get mixed-up with the origin of the drug. In its early release, Belmora’s Flanax packaging closely resembles the packaging of Bayer’s Flanax from Mexico in font size, color scheme, and style. Moreover, Belmora implies that the Flanax brand in Mexico is their same brand by showing a brochure of theirs stating phrases such as “the direct producers of Flanax in the US”, “very well-known medical product in the Latino American market”, and “sold successfully in Mexico”. Furthermore, the USA version has a website in Spanish http://www.flanaxusa.com/ apparently with the intention of harvesting Latino customers who may be familiar with the brand in Mexico.
As the lawsuit proceeded, Bayer petitioned with the trademark office USPTO to cancel Belmora’s registration trademarking the name “Flanax” as a “misrepresented source of goods” but was rejected. The main dispute revolved around the Lanham Act, also known as the Trademark Act of 1946, which administers trademarks and unfair business competition. The court favored Bayer’s affirmation of unfair competition due to a “misleading association” with Belmora’s Flanax. Although this is a high profile case due to the reputation of Bayer, this is a common problem that happens all the time with people in different countries appropriating relatively famous brands from other countries without the rightful owners realizing it. Thank you to Bhavini Mistry for her contributions to this article!