PHARMACEUTICAL TRADEMARKS MAY BE DEFENDED FROM NON-USE CANCELLATION ACTIONS BASED ON THE EXISTENCE OF A PENDING HEALTH REGISTRATION
The Brazilian Superior Court of Justice issued a memorable decision upon ruling the special appeal in case Wyeth vs Farmoquímica No. 1.377.159 – RJ (2013/0092320-4), stating that pharmaceutical companies may defend their trademarks from non-use cancellation actions based on a pending health registration process before the National Health Surveillance Agency for the products under those trademarks.
The Court held that requesting a health registration clearly shows the company’s interest to use the trademark and introduce its products in the market. Therefore the lack of use is indisputably justified if the health registration is pending, since according to Brazilian law pharmaceutical products may only be sold after having obtained their corresponding health registrations. In fact, pharmaceutical products without health registrations cannot be advertised.
The ruling is of interest for pharmaceutical companies since health registration processes for pharmaceutical products may be lengthy and the trademarks under which they are intended to be commercialized may become open for non-use cancellation actions during that time.
However, it is important to start trademark use as soon as possible once the health registration is granted since it will no longer be possible to justify the lack of use.