Proof of use in trademarks that protect medicated products. Prior authorization of the ANMAT.

Apr 26, 2017

Proof of use in trademarks that protect medicated products. Prior authorization of the ANMAT.

When we are faced with a possible tradeamark’s cancellation action on grounds of no use, we are urged to contact the Customer in order to request proof of use and thus be able to avoid the extinction of the property right acquired through the registration granted by the National Institute of Industrial Property.

In general, gathering this type of evidence is not difficult, since if the product – or service – is in the market, the Customer will hold invoices, brochures, packaging, labels, advertising material. However, the scene complicates when the product – or service – is not available to the public. In relation to pharmaceutical products, it is often the case that the laboratories obtain the registration of the trademark and the time for the sign to be applied to a specific product begins, otherwise a third party with a legitimate interest may request its cancellation (art. 26 of the Trademark Law).

In this regard, it is important to mention that Courtroom II has considered that the authorization issued by the National Administration of Medicines, Food and Medical Technology (ANMAT) constitutes “a beginning of use that enjoys sufficient virtuality in order to maintain the validity of the trademark right until its definite approval “(CCCF, Courtroom II,” Bagó Group SA c / Laboratorios Montserrat and Eclair SA “, Case No. 5,823 / 2012, ruling of August 12, 2016).

In this case, our judges have understood that although this procedure would not be “use” in the strict sense, it would not be logical to think that a laboratory that has proceeded with the approval procedures presenting formulas, catalogs, leaflets, packaging, has no real intention to use the mark in the market.

However, it is worth mentioning, that although the current precedent has confered the prior administrative approval the character of “sufficient proof of use”, it is highly recommended to begin using the registered trademark as soon as possible, in order to avoid any possible cancellation action from third parties.