Multinational pharmaceutical company Ferring B.V. sues Neurim Pharmaceuticals over a trademark

In 2011 Ferring, a multinational pharmaceutical company, requested international protection for the NOCDURNA trademark under the Madrid System for the international registration of marks. In 2015 it also requested extending the protection of its mark under the Madrid Protocol in a number of countries, including Moldova.

However, in July 2016 the Moldovan national intellectual property agency issued a preliminary refusal to grant protection for the NOCDURNA sign in the territory of Moldova. The reason for refusal was the fact that previously there was another trademark, NOCTURNO, registered by another pharmaceutical company, the Israeli-Swiss “Neurim Pharmaceuticals”. The level of similarity between the two was too high to allow both trademarks to be registered.

Responding to that Ferring claimed that under art. 20 of the Moldovan Trademark Protection Law, a mark, in order to benefit from protection, has to be put in effective use within 5 years from the moment of registration, which was not the case for the NOCTURNO mark.

The claimant affirmed that the NOCTURNO mark was not used in Moldova, hence it cannot benefit from the protection granted by law. Ferring further requested the court to establish the fact that Neurim Pharmaceuticals failed to effectively use its mark in Moldova.

Ferring lost the case in the first instance court and then in the Chisinau Court of Appeal. However, after examining the appeal for cassation, the Supreme Court reversed the decision of the Chisinau Court of Appeal and remanded the case back to the appeal court for re-examination.

The issue of the burden of proof

One of the arguments of Ferring was that under art. 20 of the Trademark Protection Law the burden of proving the effective use lay with the trademark’s owner. Moreover, the Agency for Medicines and Medical Devices informed them that it issued no certificates for any products with the name NOCTURNO. However, the Court of Appeal failed to consider this information.

On the issue of the burden of proof the Supreme Court stated that the Court of Appeal had to clarify the limits of applying two contradictory provisions of legislation. On the one hand, art. 118 of the Civil Procedure Code requires the claimant to present the evidence of non-usage of the trademark by the defendant. One the other hand, a special norm of art. 20 of the Trademarks Protection Law required the owner of the mark to present the proof of the use of its own mark. The Court of Appeal failed to determine which of these two contradicting norms had to be given priority.

What evidence of effective use could be submitted

Most importantly, the Supreme Court confirmed the list of potential evidence that could be presented in cases on proving the effective use/non-use of trademarks, among which are the following:

• information from the Centre for Applied Metrology and Certification on whether they conducted or were requested to conduct any certifications of products under the respective trademark;
• information from the Agency for Medicines and Medical Devices whether it issued a certificate of registration for medical products with the respective commercial name;
• information from the Moldovan Commerce and Industry Chamber whether there were any certificates of origin or any expertise/evaluation reports requested for the product with the respective name;
• information from the National Centre for Public Health regarding any endorsements for products with the disputed name;
• information from the Customs Service if there were any export/import operations carried out with products under the mark at issue;
• information from the National Intellectual Property Agency if there were any applications to register assignment, license, pledge or franchising contracts with regard to the respective trademark;
• information from the State Registration Chamber whether there were any companies or a branch offices having been registered under the same name as the trademark in dispute for the purposes of its use.

The Court of Appeal failed to request the parties to present any of the above information, thus failing to properly examine the case. Given these arguments, the Supreme Court considered that the case shall be remitted to the Court of Appeal for re-examination.