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Viridis: a valid reason not to use the trademark?

A trademark owner must start using the trademark normally within five years after registration, otherwise the registration can be cancelled. This is a problem for Viridis Pharmaceutical, because the clinical trials for its medicine have not yet been completed. And so she can’t use its trademark VIRIDIS yet. Is this a valid reason for the non-use, so that the trademark is still maintained?

Viridis goes all the way to the Court of Justice. Viridis is catching flounder everywhere, the five-year period applies to all brands. Also in the pharmaceutical sector. However, it is difficult: a medicine may only be traded or promoted if its efficacy has been proven in clinical trials. And it is forbidden by law to use the trademark for the drug during the testing phase. Is that prohibition a valid reason for non-use?

The Court of Justice, like the Court of First Instance in the previous instance, will not go along with that. In theory, the clinical testing phase may be a valid reason why the brand is not used. But there must be something special going on. In any event, the circumstances must be beyond the control of the trade mark proprietor. As a result, the case for Viridis broke down: Viridis had only started the test phase three years after registration. Moreover, it had only invested to a limited extent in that phase, making it all more expensive. Its trademark continues to be revoked.

Why doesn’t Viridis just re-register the same brand, you wonder? Why all the fuss? There may be some good reasons to keep the first registration above water. For example, a competitor may have registered a conflicting trademark in the meantime (say: VIRIDAS). That competitor can then prohibit the use of VIRIDIS. Then Viridis will have no use for it. But there is another complicating factor for such a ‘repeat filing’: a trademark may well be considered to have been applied for in bad faith (and is therefore invalid) if it circumvents the duty of use. See also the discussion of the MONOPOLY case later in this newsletter.

Whatever the case, it is very important for brand owners to actually use the brand (normally) after five years. But if you can’t prove its use, you’re still empty-handed. This, too, often turns out to be a fundamental problem in practice. So make sure that proof of use is kept in a structural manner. We’re happy to help.

Maarten Haak

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