Genuine trademarks’ use in clinical trials


1. European and Italian Patent and Trademark Attomey
2. Italian Trademark Attomey and IP documentation specialist

In 2019, a judgement of the European Court of Justice-EUCJ offered an interesting starting point for a discussion about the genuine use of registered trademarks in the pharmaceutical sector.

We refer to the sentence declared on 3rd July 2019, case C‑668/17 P Viridis Pharmaceutical Ltd vs European Union Intellectual Property Office-EUIPO and Hecht-Pharma GmbH (1), in which EUCJ had to decide about the genuine use of the word mark BOSWELAN (a medicinal product for the treatment of multiple sclerosis), avoiding its revocation due to non-use.

Viridis Pharmaceutical Ltd filed an appeal seeking the annulment of the European Union Tribunal’s judgement of 15 September 2017, confirming a previous (2) judgement about the revocation of rights on BOSWELAN registered trademark, due to non-use for a continuous period of five years.

In this regards, the EU legislation provides that: 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 mar ... ...