uso efectivo de marca

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As we know, one of the principles of any trademark protection system is the use of the registered mark.  Failure to effectively use a trademark registered for products or services for five consecutive years is grounds for revocation (art. 58.1.a) EUTR).

The question of effective use of a trademark has been the subject of countless rulings that have examined the issue in a wide variety of areas, including clinical trials.

Pharmaceutical legislation makes the sale of medicines subject to obtaining prior authorization for sale, which in turn is subject to accrediting efficacy and safety through the appropriate clinical trials (in Spain, regulated by Royal Decree 1090/2015, of December 4). What is discussed at trademark level is whether the use of a trademark in clinical trials, i.e., before the medicines are marketed, is effective use of the trademark or, otherwise, whether failure to use it is justified under the above legal framework applicable to medicines. 

In a case on the use of a trademark for pharmaceutical products (Boswelan) in a clinical trial, in its judgment of July 3 of this year (Viridis Pharmaceutical vs. Hecht Pharma, Case C-668/17P) the Court of Justice (Fourth Chamber) upheld the judgment of the General Court and the prior decision of the Appeals Court, which revoked the trademark because of lack of effective use. The court indicated that effective use of the trademark means its use in products or services that are already marketed or soon to be marketed. Placing the trademark on products not intended for the market cannot be considered effective use, since the action is not designed to obtaining or maintaining a market share, and it does not contribute to distinguishing the product from other companies, in the interest of the consumer. Moreover, in this case, use in a clinical trial is not a preparatory act to imminent sale. 

Incidentally, the court indicates that performing a clinical trial can be grounds for lack of effective use of a trademark, although it rules out applying this argument in the specific case at hand because it finds it is not an impediment related to the trademark that is independent from the will of its holder. In particular, the court finds that the trademark’s application date, the start date of the clinical trial, its duration and the investment made for its quick performance are all factors that depend on the holder’s will.

The ruling confirms the restrictive stance of prior decisions of the EUIPO in this area (e.g., the recent Decision of Chamber Four of the Court of Appeals of February 11, 2019 in case R 652/2018-4, “remynd” trademark). Therefore, laboratories must carefully assess the best time to apply for a trademark registration to avoid that being used only in clinical trials could result in its subsequent revocation.

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jorge.llevat@cuatrecasas.com

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