The revocation for non-use of the trademark of a medicinal product
(An Italian version is also published on Diritto 24 – Il Sole 24 Ore)
On 21 April the Court of Milan declared the revocation for non-use of the trademark “Venolen” held by the company Società Prodotti Antibiotici s.p.a. (decision no. 4825/15). The ruling granted the claim brought by the company Pharma Line s.r.l., the 1998 owner of the marketing authorisation for a drug with the identical name “Venolen”, which it markets throughout Italy.
The judges, belonging to Business Chamber “A” of the Milan court, first confirmed the locus standi of Pharma Line, “in light of the fact that it may be hampered in its own economic activity not only theoretically but also in practice” by the defendant’s trademark, “as it has been using an identical trademark on its pharmaceutical products since 1998“.
The Board went on to state that the plaintiff had “fulfilled its obligations to demonstrate, albeit indirectly being it a negative fact, the non-use” of the trademark by the defendant. In particular, Pharma Line had provided the following evidence:
the 1995 Pharmaceutical Representative Yearbook and the 2006 Pharmaceutical Formulary, in which the only product bearing the “Venolen” trademark was that of Pharma Line;
an extract from the defendant’s website containing a list of products launched from 1947 to 2007, where that sign did not appear;
the defendant’s 2006 and 2013 price lists, where no “Venolen” branded product was present;
the results of a keyword search on Google, which did not return any pharmaceutical product of the defendant under the “Venolen” trademark;
excerpts from the website www.archive.org, which showed that the website of the defendant, in the years 2001, 2002, 2007 and 2010, did not indicate “Venolen” amongst its products.
In light of the foregoing, the Court concluded that “the evidence collected allow it to be inferred, on the basis of sound, precise and consistent evidence, the failure to use the disputed trademark, from the beginning or subsequently, both before and after the start of the use of the same sign by the plaintiff“. It would be up to the defendant, the judges noted, to prove the contrary; but it had not joined the court proceedings nor replied to the previous warning letter from the plaintiff.
The Court therefore declared the revocation of the trademark as of five years following its initial registration, and ordered the defendant to pay the costs of litigation.