# 62021TJ0346

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

11 January 2023 (
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(EU trade mark – Revocation proceedings – EU word mark Gufic – Genuine use of the mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Public and outward use – Extent of use – Nature and form of use – Use in connection with the goods in respect of which the mark was registered)

In Case T‐346/21,

Hecht Pharma GmbH, established in Bremervörde (Germany), represented by C. Sachs and J. Sachs, lawyers,

Hecht Pharma GmbH

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Schäfer, D. Hanf and A. Ringelhann, acting as Agents,

European Union Intellectual Property Office (EUIPO)

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Gufic BioSciences Ltd, established in Mumbai (India), represented by A. Wehlau and T. Uhlenhut, lawyers,

Gufic BioSciences Ltd

THE GENERAL COURT (Fifth Chamber),

composed, at the time of the deliberations, of D. Spielmann, President, M. Brkan and I. Gâlea (Rapporteur), Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the written part of the procedure,

further to the hearing on 13 July 2022,

gives the following

Judgment (
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Judgment (
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Law

Law

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The third complaint, alleging an error in the assessment of the use of the contested mark in connection with goods registered as ‘medicines’

The third complaint, alleging an error in the assessment of the use of the contested mark in connection with goods registered as ‘medicines’

...

| 94 | It must be borne in mind that the classification of goods and services under the Nice Agreement is, in essence, designed to reflect the needs of the market and not to impose an artificial segmentation of the goods. Consequently, the class headings contain ‘general indications’ relating to the sector within which the goods or services ‘in principle’ fall. Likewise, it must be borne in mind that the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes. The purpose of that classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. Moreover, the Nice Classification cannot determine, in itself, the nature and characteristics of the goods at issue (see judgment of 28 May 2020, Korporaciya Masternet v EUIPO – Stayer Ibérica (STAYER), T‐681/18, not published, EU:T:2020:222, paragraph 40 and the case-law cited). |
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94

It must be borne in mind that the classification of goods and services under the Nice Agreement is, in essence, designed to reflect the needs of the market and not to impose an artificial segmentation of the goods. Consequently, the class headings contain ‘general indications’ relating to the sector within which the goods or services ‘in principle’ fall. Likewise, it must be borne in mind that the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes. The purpose of that classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. Moreover, the Nice Classification cannot determine, in itself, the nature and characteristics of the goods at issue (see judgment of 28 May 2020, Korporaciya Masternet v EUIPO – Stayer Ibérica (STAYER), T‐681/18, not published, EU:T:2020:222, paragraph 40 and the case-law cited).

| 95 | Moreover, the classification of goods pursuant to other rules of EU law is, in principle, not decisive in respect of their classification for the purposes of the registration of an EU trade mark. First, it is apparent, in essence, from Article 33(1) of Regulation 2017/1001 that, for the purposes of the registration of an EU trade mark, goods and services are to be classified according to the Nice Classification. Second, although the EU legislative measures referred to by the applicant are of primary importance for the sector concerned, as they safeguard the process of manufacturing, labelling and distributing medicinal products, they do not necessarily have an influence on the way in which the goods and services are classified in the Nice Classification. In that regard, the essential function of the mark should not be confused with other functions that the mark may also fulfil, such as that of guaranteeing the quality of the goods in question. Consequently, the classification of goods pursuant to other rules of EU law, such as Directive 2001/83, is not, in principle, decisive in respect of their classification for the purposes of the registration of an EU trade mark (see judgment of 6 October 2021, Dermavita Company v EUIPO – Allergan Holdings France (JUVEDERM), T‐372/20, not published, EU:T:2021:652, paragraph 38 and the case-law cited). |
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95

Moreover, the classification of goods pursuant to other rules of EU law is, in principle, not decisive in respect of their classification for the purposes of the registration of an EU trade mark. First, it is apparent, in essence, from Article 33(1) of Regulation 2017/1001 that, for the purposes of the registration of an EU trade mark, goods and services are to be classified according to the Nice Classification. Second, although the EU legislative measures referred to by the applicant are of primary importance for the sector concerned, as they safeguard the process of manufacturing, labelling and distributing medicinal products, they do not necessarily have an influence on the way in which the goods and services are classified in the Nice Classification. In that regard, the essential function of the mark should not be confused with other functions that the mark may also fulfil, such as that of guaranteeing the quality of the goods in question. Consequently, the classification of goods pursuant to other rules of EU law, such as Directive 2001/83, is not, in principle, decisive in respect of their classification for the purposes of the registration of an EU trade mark (see judgment of 6 October 2021, Dermavita Company v EUIPO – Allergan Holdings France (JUVEDERM), T‐372/20, not published, EU:T:2021:652, paragraph 38 and the case-law cited).

| 96 | In that connection, the Court clarified that it follows from the words ‘in principle’ used by the General Court that that court does not generally exclude, and accepts, that provisions of EU law may be taken into account when assessing genuine use of a mark for the purposes of Article 18 of Regulation 2017/1001, and may, regard being had to the particular circumstances of the case at hand, be decisive in respect of the classification of the goods in question (see, to that effect, order of 3 December 2020, Dermavita v EUIPO, C‐400/20 P, not published, EU:C:2020:997, paragraph 17, and of 4 May 2021, Dermavita v EUIPO, C‐26/21 P, not published, EU:C:2021:355, paragraph 17). |
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96

In that connection, the Court clarified that it follows from the words ‘in principle’ used by the General Court that that court does not generally exclude, and accepts, that provisions of EU law may be taken into account when assessing genuine use of a mark for the purposes of Article 18 of Regulation 2017/1001, and may, regard being had to the particular circumstances of the case at hand, be decisive in respect of the classification of the goods in question (see, to that effect, order of 3 December 2020, Dermavita v EUIPO, C‐400/20 P, not published, EU:C:2020:997, paragraph 17, and of 4 May 2021, Dermavita v EUIPO, C‐26/21 P, not published, EU:C:2021:355, paragraph 17).

| 97 | However, merely asserting that the goods in question are ‘medicines’ in Class 5 is not sufficient (see, by analogy, judgment of 14 February 2017, Pandalis v EUIPO – LR Health & Beauty Systems (Cystus), T‐15/16, not published, EU:T:2017:75, paragraph 57). |
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97

However, merely asserting that the goods in question are ‘medicines’ in Class 5 is not sufficient (see, by analogy, judgment of 14 February 2017, Pandalis v EUIPO – LR Health & Beauty Systems (Cystus), T‐15/16, not published, EU:T:2017:75, paragraph 57).

| 98 | The relevant question in the present case for the purposes of assessing genuine use under trade mark law is whether the goods in connection with which the mark is used, namely the goods in question, are the same as the goods in respect of which the mark was registered in Class 5 (see, by analogy, judgment of 18 November 2020, Dermavita v EUIPO – Allergan Holdings France (JUVEDERM ULTRA), T‐643/19, not published, EU:T:2020:549, paragraph 29). |
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98

The relevant question in the present case for the purposes of assessing genuine use under trade mark law is whether the goods in connection with which the mark is used, namely the goods in question, are the same as the goods in respect of which the mark was registered in Class 5 (see, by analogy, judgment of 18 November 2020, Dermavita v EUIPO – Allergan Holdings France (JUVEDERM ULTRA), T‐643/19, not published, EU:T:2020:549, paragraph 29).

| 99 | With regard to the category of goods under trade mark law, the visual appearance of the goods in question, for example through the packaging or labelling, is indeed important. This is because appearance is crucial in determining the category of goods in which consumers classify the product (Opinion of Advocate General Kokott in Pandalis v EUIPO, C‐194/17 P, EU:C:2018:725, paragraph 33). |
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99

With regard to the category of goods under trade mark law, the visual appearance of the goods in question, for example through the packaging or labelling, is indeed important. This is because appearance is crucial in determining the category of goods in which consumers classify the product (Opinion of Advocate General Kokott in Pandalis v EUIPO, C‐194/17 P, EU:C:2018:725, paragraph 33).

| 100 | It therefore follows that the relevant public’s perception of the goods in respect of which the contested mark was registered is crucial in assessing genuine use of that mark. |
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100

It therefore follows that the relevant public’s perception of the goods in respect of which the contested mark was registered is crucial in assessing genuine use of that mark.

| 101 | Furthermore, the Court has previously held, regarding, inter alia, the relevant public’s perception of the medicinal product covered by Directive 2001/83, that account must be taken of the attitude of a reasonably well-informed consumer in whom the form given to a product may inspire particular confidence similar to that normally inspired in him or her by medicines, having regard to the safeguards normally associated with their manufacture and marketing. Although the external form given to the product may serve as strong evidence of its classification as a medicinal product by presentation, the ‘form’ must be taken to mean not only the form of the product itself but also that of its packaging, which may, for reasons of marketing policy, tend to make it resemble a medicinal product (see judgment of 15 November 2007, Commission v Germany, C‐319/05, EU:C:2007:678, paragraph 47 and the case-law cited). |
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101

Furthermore, the Court has previously held, regarding, inter alia, the relevant public’s perception of the medicinal product covered by Directive 2001/83, that account must be taken of the attitude of a reasonably well-informed consumer in whom the form given to a product may inspire particular confidence similar to that normally inspired in him or her by medicines, having regard to the safeguards normally associated with their manufacture and marketing. Although the external form given to the product may serve as strong evidence of its classification as a medicinal product by presentation, the ‘form’ must be taken to mean not only the form of the product itself but also that of its packaging, which may, for reasons of marketing policy, tend to make it resemble a medicinal product (see judgment of 15 November 2007, Commission v Germany, C‐319/05, EU:C:2007:678, paragraph 47 and the case-law cited).

| 102 | It that connection, it should be noted that the parties agree in their written observations and at the hearing that the assessment of whether use is genuine for the goods in respect of which the contested mark was registered must be based on the perception of the relevant public which, in the present case, is composed of end consumers and specialists. |
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102

It that connection, it should be noted that the parties agree in their written observations and at the hearing that the assessment of whether use is genuine for the goods in respect of which the contested mark was registered must be based on the perception of the relevant public which, in the present case, is composed of end consumers and specialists.

| 103 | It is appropriate to determine in the light of those principles whether, in the present case, the relevant public will perceive the goods in question as ‘medicines’ in Class 5, in connection with which the contested mark was used. |
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103

It is appropriate to determine in the light of those principles whether, in the present case, the relevant public will perceive the goods in question as ‘medicines’ in Class 5, in connection with which the contested mark was used.

| 104 | Admittedly, the General Court has previously held that the sale, even the exclusive sale, of goods in pharmacies does not mean that they are necessarily medicines (see, to that effect, judgment of 17 November 2017, Endoceutics v EUIPO – Merck (FEMIBION), T‐802/16, not published, EU:T:2017:818, paragraph 38). However, the fact, which is not disputed by the applicant, that a product is only dispensed in a pharmacy upon presentation of a medical prescription is a relevant factor to be taken into account for the purposes of defining goods as medicines. |
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104

Admittedly, the General Court has previously held that the sale, even the exclusive sale, of goods in pharmacies does not mean that they are necessarily medicines (see, to that effect, judgment of 17 November 2017, Endoceutics v EUIPO – Merck (FEMIBION), T‐802/16, not published, EU:T:2017:818, paragraph 38). However, the fact, which is not disputed by the applicant, that a product is only dispensed in a pharmacy upon presentation of a medical prescription is a relevant factor to be taken into account for the purposes of defining goods as medicines.

| 105 | Furthermore, in order to find that the contested mark was used in connection with medicines in Class 5, the Board of Appeal based its finding on judicial and administrative decisions in Annexes AG 11, AG 13, AG 14, AG 23 and AG 24, which state, in essence, that the goods in question constitute ‘non-harmful’ medicines and that the contested mark had been deemed to be used in connection with medicines within the meaning of that class. In that connection, it is apparent, more specifically, from the judgments of the Oberlandesgericht München (Higher Regional Court, Munich) of 24 February 2011 and of 16 May 2013 (Annexes AG 11 and AG 14) that the goods in question must be classified as medicinal products by presentation for the purposes of Article 1(2) of Directive 2001/83 on the grounds that, first, the packaging includes the words ‘ayurvedic medicine’ and a reference to inflammatory diseases that the goods are intended to treat and, second, owing to the requirement of a prescription, consumers would have had the impression that the goods were a remedy for the treatment of human illnesses and therefore a medicinal product. |
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105

Furthermore, in order to find that the contested mark was used in connection with medicines in Class 5, the Board of Appeal based its finding on judicial and administrative decisions in Annexes AG 11, AG 13, AG 14, AG 23 and AG 24, which state, in essence, that the goods in question constitute ‘non-harmful’ medicines and that the contested mark had been deemed to be used in connection with medicines within the meaning of that class. In that connection, it is apparent, more specifically, from the judgments of the Oberlandesgericht München (Higher Regional Court, Munich) of 24 February 2011 and of 16 May 2013 (Annexes AG 11 and AG 14) that the goods in question must be classified as medicinal products by presentation for the purposes of Article 1(2) of Directive 2001/83 on the grounds that, first, the packaging includes the words ‘ayurvedic medicine’ and a reference to inflammatory diseases that the goods are intended to treat and, second, owing to the requirement of a prescription, consumers would have had the impression that the goods were a remedy for the treatment of human illnesses and therefore a medicinal product.

| 106 | It follows that, in view of the importance of visual appearance in the relevant public’s perception of the goods in question, as set out in paragraph 99 above, the Board of Appeal, basing its finding on the judgments of the Oberlandesgericht München (Higher Regional Court, Munich) referred to in paragraph 105 above and taking into account, as a whole, the fact that those goods were sold only in pharmacies upon presentation of a medical prescription and that the particulars and information on the packaging allowed the relevant public to easily perceive the goods as medicinal products, was entitled to find that those goods had to be classified as medicines within the meaning of Class 5 of the Nice Classification. |
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106

It follows that, in view of the importance of visual appearance in the relevant public’s perception of the goods in question, as set out in paragraph 99 above, the Board of Appeal, basing its finding on the judgments of the Oberlandesgericht München (Higher Regional Court, Munich) referred to in paragraph 105 above and taking into account, as a whole, the fact that those goods were sold only in pharmacies upon presentation of a medical prescription and that the particulars and information on the packaging allowed the relevant public to easily perceive the goods as medicinal products, was entitled to find that those goods had to be classified as medicines within the meaning of Class 5 of the Nice Classification.

| 107 | The applicant’s arguments cannot call that finding into question. |
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107

The applicant’s arguments cannot call that finding into question.

| 108 | The applicant’s argument that only medicines by function, which possess a pharmacological action, can be considered medicines within the meaning of Class 5 must be rejected. As recalled in paragraph 101 above, the relevant public’s perception is crucial as far as concerns medicines covered by Directive 2001/83. It follows that goods which, due to their presentation, are likely to be perceived by consumers as medicinal products are also likely to be classified as medicines within the meaning of Class 5. |
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108

The applicant’s argument that only medicines by function, which possess a pharmacological action, can be considered medicines within the meaning of Class 5 must be rejected. As recalled in paragraph 101 above, the relevant public’s perception is crucial as far as concerns medicines covered by Directive 2001/83. It follows that goods which, due to their presentation, are likely to be perceived by consumers as medicinal products are also likely to be classified as medicines within the meaning of Class 5.

| 109 | Consequently, the applicant’s other arguments that the goods in question did not have marketing authorisation in the Member State of importation (Germany) or in the State of origin (India) must also be rejected. The absence of marketing authorisation, that is, a fact of which consumers are not necessarily aware, is not capable of calling into question the finding that, in the light of the elements referred to in paragraph 106 above, the relevant public will be able easily to perceive those goods as medicines. |
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109

Consequently, the applicant’s other arguments that the goods in question did not have marketing authorisation in the Member State of importation (Germany) or in the State of origin (India) must also be rejected. The absence of marketing authorisation, that is, a fact of which consumers are not necessarily aware, is not capable of calling into question the finding that, in the light of the elements referred to in paragraph 106 above, the relevant public will be able easily to perceive those goods as medicines.

| 110 | In the light of the foregoing, the applicant has not shown that the Board of Appeal committed an error of assessment by taking into account the evidence submitted by the intervener and taken as a whole in order to find, in paragraph 76 of the contested decision, that, on the basis of the relevant public’s perception, the contested mark was used in connection with ‘medicines’ in Class 5 and, in paragraph 78 of that decision, that the infringement of the right was, in any event, irrelevant in the context of the examination of genuine use of that mark. Accordingly, the third complaint must be rejected as unfounded.
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110

In the light of the foregoing, the applicant has not shown that the Board of Appeal committed an error of assessment by taking into account the evidence submitted by the intervener and taken as a whole in order to find, in paragraph 76 of the contested decision, that, on the basis of the relevant public’s perception, the contested mark was used in connection with ‘medicines’ in Class 5 and, in paragraph 78 of that decision, that the infringement of the right was, in any event, irrelevant in the context of the examination of genuine use of that mark. Accordingly, the third complaint must be rejected as unfounded.

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| | On those grounds,
  THE GENERAL COURT (Fifth Chamber)
  hereby: |
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On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

| | 1. | Dismisses the action; |
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1.

1.

Dismisses the action;

Dismisses the action;

| | 2. | Orders Hecht Pharma GmbH to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO); |
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2.

2.

Orders Hecht Pharma GmbH to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);

Orders Hecht Pharma GmbH to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);

| | 3. | Orders Gufic BioSciences Ltd to bear its own costs. |
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3.

3.

Orders Gufic BioSciences Ltd to bear its own costs.

Orders Gufic BioSciences Ltd to bear its own costs.

| | Spielmann


  Brkan


  Gâlea


  Delivered in open court in Luxembourg on 11 January 2023.
  [Signatures] |
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Spielmann

Brkan

Gâlea

Delivered in open court in Luxembourg on 11 January 2023.

[Signatures]

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  )	Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.

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