Pfizer and BioNtech countersue Moderna – Advocate General’s Opinion in case C-686/21

PFIZER AND BIONTECH COUNTERSUE MODERNA 

As we reported back in September, Moderna Inc filed a lawsuit in the U.S and in Germany against Pfizer Inc and BioNtech SE, alleging patent infringement over its Covid-19 vaccine, specifically over its mRNA technology, which triggers an immune response against the virus without introducing any weakened virus, as traditional vaccines did. 

In its lawsuit, Moderna sought for damages – i.e., a share of Pfizer’s revenues over the vaccine-rather than seeking for an injunction to prevent Pfizer and BioNtech from selling the vaccine, as is often the case in patent infringement claims. Moderna alleged that its researchers developed the mRNA structure years before and that Pfizer and BioNtech then applied it to their own vaccines. 

Earlier this month, Pfizer and BioNtech sought to dismiss the lawsuit in Boston Court and filed a counterclaim against Moderna. Both companies claimed that the mRNA structure and the lipids used in their vaccines were different from those developed by Moderna, so they argued that Moderna's patents were invalid and asked the Court to revoke them.

We look forward to the Court’s decision! 

ADVOCATE GENERAL’S OPINION IN CASE “LEGEA, C-686/21”

Last week, Advocate General (AG) Campos issued an opinion as regards the referral for a preliminary ruling made by the Italian Supreme Court (Corte di Cassazione) to the Court of Justice of the European Union (CJEU). 

In 1990, a group of joint owners registered the word mark “Legea” as an Italian trade mark for sports goods. 

Three years later, the joint owners granted a licence to use the trade mark to the company Legea Srl, for an indefinite period and free of charge.

In 2006, one of the joint owners withdrew his consent to use the licence and sought to unilaterally terminate the contract. 

The Court of Naples ruled in 2014 that Legea Srl lawfully used the licensed trade mark as long as all the joint owners agreed to the contract, but after the withdrawal of consent from one joint owner, Legea Srl should have stopped using the trade mark.

An appeal was lodged by the other joint owners against the first instance decision, and the Court of Appeal of Naples declared that the use of the trade mark was valid even after the withdrawal of the joint owner’s consent. 

A subsequent appeal was lodged by the joint owner before the Italian Supreme Court (Corte di Cassazione) against this decision. The Court held that Italian law, and more precisely the Italian Civil Code, envisaged the joint ownership of intellectual property rights, including trade marks, as well as the withdrawal of a joint owner from a contract. 

However, the Court considered that these questions should be interpreted in accordance with the provisions of European trade mark law. Therefore, the Supreme Court referred this case to the CJEU for a preliminary ruling, seeking for some guidance with regard to:

-        Whether a favourable majority of joint owners was sufficient to consent the licencing of a trade mark or if a unanimous consent from all joint owners was required to adopt this decision. 

-        Whether the licence could be revoked unilaterally if one of the joint owners withdrew the consent. 

In this context, the Advocate General Campos considered that pursuant to the current European Union Trade Mark Regulation (EUTMR) and EUTM Directive (EUTMD), joint ownership of trade marks is allowed. However, those texts do not envisage the common consent required from joint owners, either unanimous or by a majority of them, to license the use of a trade mark. 

Furthermore, the AG held that the EUTMD recognised the revocation of a licence in case of withdrawal of consent by one of the joint owners. However, “EU law is silent on how the decision to revoke or withdraw the licence to use a mark is to be adopted in the case of trade marks that are jointly owned”. 

On the basis of those considerations, the AG concluded that the CJEU should answer to the Italian Supreme Court that EU law does not lay down neither the conditions for the adoption of common consent to grant a licence to use a trade mark, nor for the termination of the above mentioned licence for trade marks that are jointly owned. Thus the provisions of national law on the subject will apply.  

We will be waiting for the CJEU’s decision!