Pharmaceutical Companies: Beware Of Revocation Of EU Trade Marks For Lack Of ‘Genuine Use' During Clinical Trials

Author:Ms Colette R. Deamer
Profession:Arnold & Porter

A recent CJEU judgment serves as a useful reminder to pharmaceutical companies of the dangers of registering a trade mark prematurely in the development of pharmaceutical products.

Background of the case

On 28 November 2017, Viridis Pharmaceutical Ltd brought an appeal before the CJEU against the General Court's verdict to uphold the EUIPO's Board of Appeal decision to revoke Viridis's BOSWELAN trade mark for pharmaceutical products. The trade mark was originally revoked by the EUIPO following a claim by Hecht-Pharma GmbH that Viridis's trade mark had not been put to 'genuine use'.

Viridis appealed the General Court's decision before the CJEU on the following grounds:

The BOSWELAN trade mark had been put to 'genuine use' during the course of clinical trials; and There was a 'proper reason' for non-use of the trade mark which was sufficient for the purposes of avoiding revocation of the mark. What is the current position regarding 'genuine use' of a trademark?

The European Union Trademark Regulation 2007/1001 (EUTMR) provides that, if, within a period of 5 years following registration of a trade mark, the proprietor has not put an EU trade mark to 'genuine use' within the EU in connection with the goods or services for which it is registered, the EU trade mark will be subject to sanctions (Article 18 EUTMR).

Article 58 EUTMR further provides that, a EU trade mark may be revoked on application, if within a continuous period of 5 years, the trade mark has not been put to 'genuine use' within the EU in connection with the goods or services for which it is registered and no 'proper reasons' exist for non-use.

CJEU judgment

Genuine Use:

In response to Viridis's argument that the BOSWELAN trade mark had been put to 'genuine use', the CJEU found that use of a trade mark in a clinical trial did not demonstrate 'genuine use'.

Viridis's use of the BOSWELAN mark during the clinical trial was purely internal in nature. Use of the mark took place outside of the competitive market and without the aim of obtaining or maintaining a market share.

The CJEU also made clear that use of a trade mark must relate to (a) products already marketed or (b) products where marketing is 'imminent'. In the case of Viridis, no marketing authorisation...

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