February 23, 2017 – Hughes Hubbard obtained a resounding victory for medical device manufacturer C5 Medical Werks when the Paris Court of First Instance canceled rival CeramTec's three European Union trademarks covering the color pink and the shape of orthopedic implants.
On Feb. 22, the Court held that CeramTec acted in bad faith when it filed the trademarks by failing to disclose to the European Union Intellectual Property Office (EUIPO) that the color was the result of its patented technology. The decision paves the way for C5 to sell pink-colored hip implant components in Europe.
Based in Colorado, C5 Medical Werks is a subsidiary of technical ceramics manufacturer CoorsTek, owned by the prominent Coors brewing family. C5 supplies ceramic implantable components for many devices, including neurological sensors and stimulators, cochlear implants, cardio pacemakers and defibrillators, and spinal total disc replacement.
CeramTec has gained an 85 percent worldwide market share with its fourth-generation implants for orthopedic surgery made of a composite ceramic that includes chromium oxide, which renders the material pink. This composite ceramic material has nearly completely displaced earlier generations of ceramic materials and has taken market share from metal hip ball implants.
In December 2013, CeramTec sued C5 for trademark infringement in France and Germany after C5 began marketing hip ball implants made of a high-performance ceramic material that was in the public domain following the expiration of CeramTec's patent less than a month before it applied for the trademarks. The German infringement lawsuit is pending. In parallel U.S. proceedings, the District Court of Colorado canceled CeramTec's U.S. trademarks. CeramTec's appeal of the U.S. decision is pending.
In its ruling, the Paris court found that pink is the color of the composite ceramic material that CeramTec patented and could not function as a source identifier since it was perceived by the relevant public as a characteristic of the ceramic material and an indicator of its superior performance compared to earlier generations of ceramic materials used for medical implants.
The Court also found that CeramTec had failed to disclose to the EUIPO this information, which was relevant to the EUIPO's assessment of whether the marks were distinctive or could acquire distinctiveness through use. The Court held that the technical and scientific aspects of the case were well proven by C5 and rejected CeramTec's request to appoint an expert.
During the litigation, the Paris court and (in separate proceedings) the EUIPO rejected CeramTec's motions to stay the case or to remove the case back to the EUIPO. The Paris Court of Appeal and the EUIPO Board of Appeal confirmed the rejections. CeramTec appealed these decisions to the French Supreme Court and to the General Court of the Court of Justice of the European Union; those appeals are pending. The decision of February 22, may be appealed by the adverse party.
Stefan Naumann leads the Paris team, which includes Elsa Malaty and, in the course of the litigation, former associate Elodie Desgranges and former intern Jahnika Colmar.