CJEU rejects Viridis TM plea over MS drug

The Court of Justice of the European Union (CJEU) has rejected a trademark appeal submitted by Virgin Islands-headquartered Viridis Pharmaceutical.

Today, July 3, Europe’s highest court dismissed Viridis’ appeal which had asked the court to reconsider a lower court’s decision in a case involving a Multiple Sclerosis drug.

In September 2003, Pharmasan (Viridis’ predecessor) applied to register ‘Bosewelan’ as a European trademark for pharmaceutical products and healthcare products in class 5. The mark was registered in April 2007.

However, in November 2013, Germany-based Hecht-Pharma filed an application to revoke the mark, on the ground that it hadn’t been put to genuine use.

The following year, in September, the European Union Intellectual Property Office’s (EUIPO’s) Cancellation Division allowed the application.

Viridis then appealed against the decision to the EUIPO’s Fifth Board of Appeal which, in February 2016, dismissed the appeal.

First, the appeal board wasn’t convinced by Viridis’ evidence of genuine use, finding that the evidence provided was connected to research purposes and was merely an internal preparatory act related to a clinical trial.

“This therefore involves firstly acts which are not outwardly directed and relate to the marketing or advertising of the product on the pharmaceuticals market, but rather which are internal in nature and take place outside of competition,” said the Fifth Board of Appeal.

Second, the appeal board also concluded that delays in the development of the medication are not proper reasons for non-use.

According to the board: “If the pharmaceuticals company decides to file an application for a trademark prior to beginning a clinical trial, and hence possibly many years prior to filing the authorisation request, the lack of use of the trademark on account of delays to the clinical study falls within its scope of responsibility.”

Viridis again appealed against the decision, but the EU General Court dismissed the action. Finally, Viridis appealed to Europe’s highest court, which today affirmed the General Court.

The Virgin Islands company contended that the General Court erred in holding that a trademark designating a medicinal product can only be used seriously if a market authorisation has been granted for this medicine and that use of the mark in the clinical trial didn’t constitute use.

The CJEU sided with the General Court, concluding that acts, which are undertaken before marketing of the goods or services, must be external and produce effects for the future public of those products or services to be considered genuine use.

Viridis also argued that the General Court had erred in excluding the implementation of a clinical trial as a just reason for the non-use of the contested mark.

“According to the court's case-law, only obstacles which have a sufficiently direct relationship with a mark rendering its use impossible or unreasonable and which are beyond the control of the proprietor of that mark may be qualified as 'just reasons',” said the CJEU.

Under article 19(1) of the TRIPs Agreement, the prescriptions of public authorities concerning products or services designated by that mark are examples of valid reasons justifying the non-use of the mark.

However, the General Court had found that it was not a legal obligation but Viridis’ own choice to register its own mark in 2003 when there was “considerable uncertainty as to the date and the possibility of marketing the product designated by that mark”.

The CJEU agreed, rejecting Viridis’s ground of appeal and consequently, dismissing the appeal in its entirety.

Viridis was ordered to pay its own costs and those incurred by the EUIPO and Hecht-Pharma.

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