Breaking news – Can clinical trials constitute a genuine trademark use according to the ECJ?

fish-oil-1915423_960_720The European Court has ruled in case C–668/17 P, Viridis Pharmaceutical Ltd v EUIPO, Hecht-Pharma GmbH. The case concerns:

On 30 September 2003, Viridis filed an EU trademark application to the EUIPO for registration of the word sign ‘Boswelan’ for ‘pharmaceuticals and health care products’ in Class 5.

On 18 November 2013, Hecht-Pharma requested revocation of that mark for all goods in pursuant to Article 51 (1) (a) of Regulation No 207/2009 because it was not genuinely used.

By decision of 26 September 2014, the Cancellation Division of EUIPO revoked Viridis’ trademark for all goods.

On 6 November 2014, Viridis brought an appeal before the Board of Appeal of EUIPO against the decision of the Cancellation Division. However, the Fifth Appeal Chamber of EUIPO dismissed that appeal.

The Board of Appeal held that the evidence produced by Viridis was not capable of proving the genuine use of the mark at issue for the goods mentioned in the application. The provided evidence regarded only acts of a purely internal nature which relate to a clinical trial. These acts don’t concern any activities that are of commercial nature or that are visible for the market. In addition, they are not a direct preparatory action or an action contributing to the forthcoming real market use of the mark at hand.

Secondly, referring in particular to the definition of a reasonable cause for non-use which follows from the text of the TRIPs Agreement, the Board of Appeal found that, in the present case, the conduct of a clinical trial in itself was not independent of Viridis’s will, to justify the non-use of the disputed mark. Since the duration of the clinical trial depends on the funds the proprietor of the mark decides to use, that circumstance does not fall within the category of obstacles beyond his control. Liability for the length of proceedings can be assumed to have been transferred to an external body only from the time when an official application for a market distribution was made. The protection of European Union marks by Regulation No 207/2009 does not appear to be necessary before such an application is made and if a pharmaceutical company nevertheless decides to register a European Union trademark many years before that application, it would be responsible for the delay associated with the clinical trial.

The European Court of Justice confirmed this EUIPO decision. According to the court, the fact that clinical trials are carried out can not be a ground for non-use of the mark. Preparatory actions can only be considered as a reason for non-use only if they have a commercial nature and are visible to the market. In this case, clinical tests do not guarantee that the product will enter the market, there is no request for commercialization of the product. Furthermore, these tests were started a long after the trademark had been filed. In summary, this can not be an objective reason for the non-use of the trademark because this use depends entirely on the applicant’s strategy and financial capacity.

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