Trademarks descriptive of medical techniques: the “BOPT” case

15 Dec 2025

Court of Venice, 12 September 2025

In this case, the Court of Venice agreed with the invalidity raised by the respondent (though without res iudicata effect), despite the claimant’s request for a declaration of discontinuance of the dispute.
The Court confirmed that a trademark consisting exclusively of an acronym (in this case “BOPT” – Biologically Oriented Preparation Technique) should be found invalid due to lack of distinctive character, pursuant to Art. 7, par. 1, lett. c) and d) of EU Regulation no. 1001/2017 (as well as Art. 13 of the Italian Industrial Property Code), when the acronym is well-known and consistently used – even before registration – in the relevant sector and in scientific literature to designate a specific medical technique, rather than the commercial origin of a product or service.

Indeed, the legal system does not intend to grant exclusive rights over terms that have become common usage or are necessary to describe technical procedures, to allow their free use by all economic operators, as “an entrepreneur certainly cannot appropriate a scientific technique by registering a trademark corresponding to the name used to identify it.”
A further relevant aspect concerns the use of the sign. The Court clarified that the use by a third party of a sign corresponding to a registered trademark (in this specific case, the acronym of the medical technique and the name of its creator) does not constitute trademark infringement, nor an act of unfair competition, provided that such use does not perform a distinctive function for products or services but pursues exclusively descriptive, educational, or scientific purposes, aimed at illustrating the characteristics of the medical technique in brochures or scientific articles and mentioning its author within informational material.

Maria Vittoria Cardin