Legal & Regulatory > Luxembourg > Patents & Trademarks

Patents and trademarks of drugs in Luxembourg – an overview. Prepared in association with Wildgen, a leading global law firm, this is an extract from The Pharma Legal Handbook: Luxembourg, available to purchase here for USD 99.

1. What are the basic requirements to obtain patent and trademark protection?

i. The main legislations for patent and trademark protection in Luxembourg are the followings:

•  the law of 20 July 1992 amending the patent regime as amended;
• the Benelux Convention on Intellectual Property (trademarks and designs) as amended.

ii. The basic requirements to obtain patent protection are the followings:

• the invention must be new;
• the invention must involve an inventive activity;
• the invention must be capable of being made or used in industry.

iii. The basic requirements to obtain trademark protection are the followings:

– For the registration of a trademark, the sign must:

•  be distinctive;
• not descriptive;
• not generic;
• not deceptive.

– any sign that can be represented graphically and that serve to distinguish the goods or services of a company can be registered, and
– the trademark shall fulfill the condition of availability, that is to say the trademark had not been registered before by a third-party.

2. What agencies or bodies regulate patents and trademarks?

i. Patents

National patents are under the jurisdiction of the Office of Intellectual Property (“OPI”) of the Ministry of the Economy.

ii. Trademarks

There is no national trademark. The first level of protection consists of a Benelux trademark, covering the three territories of Belgium, Netherlands and Luxembourg.
The Benelux Office for Intellectual Property (BOIP) is in charge of the supervision of Benelux trademarks.

3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?

i. Patents

Pursuant to the law of 20 July 1992 on the modifications of patents regime as amended, any invention which meet the requirements mentioned in question 1 can be protected by patents except, among others:

•  discoveries, scientific theories and mathematical methods;
• purely aesthetic creations;
• plans, principles and methods in the course of intellectual activities, in the field of games or in the field of economic activities as well as computer programs;
• information presentations;
• methods of medical treatment for humans or animals (in contrast to medical products).

ii. Trademarks

Pursuant to the Benelux Convention on Intellectual Property as amended, any sign that can be represented graphically may be registered as a trademark. A trademark may therefore consist of one or a combination of characters, letters, words (including slogans) or figures. A trademark may consist of designs, symbols, and three-dimensional signs such as the shape or packaging of the product, sound marks such as musical or vocal sounds, scents or colors.

However, ideas, concepts and scents cannot be registered as trademarks.

4. How can patents and trademarks be revoked?

i. Patents

According to article 73 of the law of 20 July 1992 on the modifications of patents regime as amended, a patent can be revoked by the Court of the patent owner’s elected domicile, following the request of any interested party based on one of the reasons below:

1.  the subject matter of the patent is not patentable;
2.  the patent does not expose the invention in a sufficient clearly and complete way so that a person skilled in the art can execute it;
3. the subject matter of the patent extends beyond the content of the patent’s application filed or, where the patent was issued on the basis of a divisional application or a new patent application filed, the subject-matter of the patent extends beyond the content of the original application filed;
4.  the protection conferred by the patent has been extended;
5.  the patentee is not entitled to obtain it.

ii. Trademark:

According to articles 2.26 and 2.27 of the Benelux Convention on Intellectual Property as amended, any interested party may invoke revocation of the right in a trademark before the competent court in the following cases:

1.  within a continuous period of five years, it has not been put to genuine use on Benelux territory in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; in the event of litigation, the courts may place all or part of the burden of proof on the holder of the trademark;
2. in consequence of acts or inactivity of the holder, the trademark has become the common name in the trade for a product or service in respect of which it is registered;
3. in consequence of the use made of it by the holder of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

5. Are foreign patents and trademarks recognized and under what circumstances?

i. Patents:

No, foreign patents do not have any legal effect in Luxembourg as it is.

However, Luxembourg is a signatory country of the European Patent Convention and it also signed the Patent Cooperation Treaty (“PCT”), so a European/international patent can be recognized provided the following conditions are fulfilled:

• European patents: an application covering Luxembourg for a European patent has been submitted to the European Patent Office (“EPO”) and validated. The European patent issued will have the same legal status as a national patent.
• International patents: an application for an international patent covering Luxembourg has been submitted to the World Intellectual Property Organization in the context of the Patent Cooperation Treaty and the national stage of the PCT application has been completed in Luxembourg.

ii. Trademarks:

There is no national trademark. The first level of protection consists of a Benelux trademark, covering the three territories of Belgium, Netherlands and Luxembourg.

EU trademarks duly registered benefit from full protection in the European Union.

Regarding international trademarks, Luxembourg is a signatory country of the Madrid Agreement concerning the International Registration of Marks, so an international trademark can be recognized in Luxembourg if the applicant has designated Luxembourg when applying for the trademark.

6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?

Within the framework of the relation between a reference medicinal product and its generic medicinal product, such barriers consist of the administrative protection of data relating to pharmaceutical, preclinical and clinical trials submitted in support of the marketing authorization of a reference medicinal product and the protection against the filing of a marketing authorization for a generic medicinal product, according to article 1-1 of the Grand-Ducal regulation of 15 December 1992 relating to the marketing of medicinal products as amended.

Pursuant to the above mentioned article, the applicant for a marketing authorization related to a generic medicinal product may be exempted from providing the results of pharmaceutical, preclinical and clinical trials if it can prove that the concerned medicinal product is actually a generic medicinal product deriving from a reference medicinal product that has been authorized for at least 8 years in a Member State of the European Union

This means that the results of pharmaceutical, preclinical and clinical trials undertaken by the holder of a marketing authorization for a reference medicinal product is protected during 8 years from a transfer of such results to a competitor wishing to market a generic medicinal product deriving from said reference medicinal product.

Furthermore, no generic medicinal products can be marketed for a period of 10 years (11 years in specific cases) starting from the date of grant of the marketing authorization of the reference medicinal product from which it derives.

7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?

There is no particular restriction on the types of medicinal products or devices that can be granted patent and trademark protection provided that they fulfill relevant legal requirements.

8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?

The Luxembourgish law doesn’t make a difference between a national licensor and a foreign licensor, and there is no approval requirement about a patent or trademark license agreement.

Below are some legal requirements related to a patent or trademark license:

i. Patent

License agreement should be written in order to be valid and should be registered before the Office of Intellectual Property of the Ministry of the Economy in order to be enforceable against third parties, in accordance with articles 53 and 55 of the law of 20 July 1992 amending the patent regime as amended.

ii. Trademark

The license is effective against third parties only after the publication of a specific mention in the BOIP’s Trademarks Register, in the forms prescribed by regulations and against payment of the due, in accordance with article 2.33 of Benelux Convention on Intellectual Property as amended.