To use on not to use: Attorney General Szpunar’s opinion on Viridis Pharmaceutical

Advocate General (‘AG’) Maciej Szpunar in the first trade mark opinion of 2019, looks into two issues surrounding what constitutes “genuine use” within the meaning of Art. 58 (1) (a) of the EUTMR.

Facts of the case

Viridis Pharmaceutical (a marketing, manufacturing and research company that deals with active ingredients for various industries) owned an EU trade mark (‘BOSWELAN’) registered in class 5 in 2007. Viridis Pharmaceutical filed a request to seek authorisation of a clinical trial of a medical product containing boswellic acid for the treatment of multiple sclerosis in Germany. Approximately 400,000 capsules branded with the word ‘BOSWELAN’ were delivered to a hospital for clinical trials. However, at the time of the Opinion given by AG Maciej Szpunar, there had been no marketing authorisation applied for or issued.

Hecht-Pharmacy Gmbh (A German Limited Company and pharmaceutical products wholesaler based in Bremervörde, Germany) filed an application of revocation (application to remove a trade mark from the UK/EU register because of lack of genuine use for 5 years) for the BOSWELAN trade mark. Hecht Pharmacy Gmbh claimed that Viridis Pharmaceutical lacked genuine use under Art. 58 (1) (a) EUTMR:

  1. “The rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:

(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use however, no person may claim that the proprietor’s rights in an EU trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed”[1]

Decision of the Court

The European Union Office of Intellectual Property (‘EUIPO’), the Board of Appeal and the General Court were unanimous in agreeing that the trade mark should be revoked.

It had been previously established in case law (reference to Case C?689/15- Gözze) that for a trade mark to be considered “genuine” it must adhere to the following criteria:

1)Â Â Â Â Â The use of the trade mark must be in relation to creating or preserving an outlet for the goods or services of which it is registered and

2)Â Â Â Â Â The mark is used in accordance with its essential function (to guarantee the identity of origin of the goods/ services for which the mark is registered against).

The above had to be assessed genuinely in relation to Art. 87 (1) of the Community Code Directive (it prohibited any advertising of a medicinal products where marketing authorisation has not been obtained).

AG Maciej Szpunar reasoned that although the different aspects of specific industries need to be considered, clinical trials cannot be regarded as preparatory acts of imminent marketing. This is because clinical trials are conducted to aid in the understanding of the effects of drugs (it assesses their effects). Furthermore, as many drugs involved in clinical trials never actually make it on the market, it cannot be seen as an act of “genuine use”.

The notion of Non- Use

The Court of Justice has established in case law (reference to C-246/05 – Häupl) that there can be a real reason why a trade mark is not in “genuine use” if the following occurs:

1)Â Â Â Â Â If a situation occurs independently of the will of the owner of the mark

2)Â Â Â Â Â It has a sufficiently direct relationship with the trade mark and

3)Â Â Â Â Â It makes the use of the mark impossible or unreasonable.

In reaching a judgment, AG Maciej Szpunar decided that the above first criterion should be interpreted in a narrow view. This is because any commercial activity needs to be carried out in line with any specific legal requirements of the member state. In regard to this case, Viridis Pharmaceutical had failed to refer to any specific circumstances that were independent of its own will e.g. why the trial could not be completed in a faster timeframe. AG Maciej Szpunar stated that if a change in commercial strategy could have assisted in alleviating the regulatory delay, then the situation could not be one that occurs independently of the will of the owner.

AG Maciej Szpunar appreciated that in practice drug manufacturers like to raise the awareness of their drugs as early on it the process as possible to brand the trade mark. As a result, the judgement seems to nod to the idea that some situations of “general use” may arise prior to applying for marketing authorisation. However, for the sake of consistency, AG Maciej Szpunar states that if marketing is prohibited under regulatory law, then the prohibited acts cannot count as marketing under trade mark law.


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