Opinion of the Advocate General — ECLI:EU:C:2018:725
Date: 2018-09-13
Language of the case: German
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible
Origin: Germany

summary classification by the General Court would deprive the appellant of any possibility of using his mark in accordance with its essential function, for the purposes of Article 51(1)(a) and (2) of Regulation No 207/2009. 75 In that regard, first, it is argued that the General Court ought to have verified whether the appellant had used the mark at issue for ‘food supplements not for medical purposes’ in the form in which it had been registered or in a form which might differ by reason of factors which do not alter its distinctive character. 76 Secondly, the appellant submits that the General Court should have examined whether the mark at issue had been used in accordance with its essential function, which was to indicate commercial origin. He argues that that mark was used in accordance with that function, since the consumer is accustomed to goods bearing, in addition to the principal mark, secondary marks which are also understood as indicative of the origin of the goods. 77 Thirdly, the appellant submits that the relevant public will consider the sign Cystus as a trade mark for the food supplements marketed, since that mark is also used for the cistus plant, which is sold as a finished product. Consequently, designating the goods concerned with the sign Cystus amounts to use of the mark in the sense that it indicates that the manufacturer of one of the essential elements of the product is also responsible for the food supplements concerned as a whole. 78 As regards ‘food supplements not for medical purposes’ which contain cistus plant extracts as their main active ingredient, it is argued that the appellant would be, de facto, deprived of the possibility of using his mark in accordance with its function. 79 By the second part of his second ground of appeal, the appellant submits that the General Court infringed the obligation to state reasons in the context of its finding that the mark at issue had not been put to genuine use, within the meaning of Article 51(1)(a) and (2) of Regulation No 207/2009, for ‘food supplements not for medical purposes’. 80 The appellant submits in this regard that the assessment made by the General Court in paragraphs 43 and 46 of the judgment under appeal is contradictory, since, on the one hand, it summarily stated that the spelling of the word ‘cystus’ with the letter ‘y’ is not sufficient to show use as a trade mark. However, on the other hand, the General Court maintained that the Board of Appeal, on the basis of that argument, did not err in holding that the relevant public would perceive the term ‘cystus’ as a descriptive indication referring to the name of the cistus plant and not as an EU trade mark. 81 The appellant argues that the reasoning adopted by the General Court is, moreover, insufficient, since it does not state the reasons why the specific nature of the use of the mark at issue does not meet the requirements set out in Article 51(1)(a) and (2) of Regulation No 207/2009. Given that that mark was registered, in particular, for ‘food supplements not for medical purposes’ in Class 30 of the Nice Agreement, it should be assumed that it is distinctive and non-descriptive for those goods. 82 EUIPO and LR Health & Beauty Systems contend that the second ground of appeal must be rejected. Findings of the Court 83 As regards the first part of the second ground of appeal, it must be recalled that there is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgments of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43, and of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 56). 84 As regards individual marks, the essential function is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (judgment of 8 June 2017, W. F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraph 41 and the case-law cited). 85 It follows that the condition of genuine use in accordance with its essential function is not fulfilled where the mark affixed to an item does not contribute to creating an outlet for that item or to distinguishing, in the interest of the consumer, the item from the goods of other undertakings (see, to that effect, judgment of 15 January 2009, Silberquelle, C‑495/07, EU:C:2009:10, paragraph 21). 86 In the present case, it must be held that the appellant’s arguments are based on a misreading of the judgment under appeal. 87 In that connection, the General Court stated, in paragraph 43 of the judgment under appeal, that ‘in view of its context’, the use of the term ‘cystus’ on the packaging of the products Pilots Friend Immunizer®, Immun44® Saft and Immun44® Kapseln would be perceived by the public as descriptive of the main ingredient of those goods and not as identifying their commercial origin. 88 In addition, in paragraph 46 of the judgment under appeal, the General Court added that the Board of Appeal did not err in finding that the relevant public would perceive the term ‘cystus’ as a descriptive indication referring to the name of the cistus plant and not as an EU trade mark. 89 Furthermore, in paragraph 47 of the judgment under appeal, the General Court stated that the element ‘cystus’ had a ‘weak distinctive character’. 90 Accordingly, as the Advocate General observes in point 59 of her Opinion, the General Court did not find that the mark at issue was descriptive. 91 Indeed, the General Court distinguished between (i) the use of the mark at issue and (ii) the use of the term ‘cystus’, perceived by the public as descriptive of the main ingredient of the products Pilots Friend Immunizer®, Immun44® Saft and Immun44® Kapseln. In the light of the case-law cited in paragraphs 83 to 85 of the present judgment, the General Court could make such a distinction, since a trade mark is not always used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it has been registered. 92 The General Court therefore found, in essence, after an assessment of the facts and evidence, that in the circumstances of the present case, the Board of Appeal had rightly held that the appellant had not made use of the mark at issue in accordance with its essential function. Rather than the mark at issue, the appellant had thus used the term ‘cystus’ as a description of the main ingredient of the goods concerned. 93 Moreover, the question whether the appellant used the mark at issue in accordance with the function of indicating origin or whether he used the term ‘cystus’ on the packaging of the goods concerned is a factual assessment and can be the subject of an appeal only where there has been a distortion of those facts, in accordance with the case-law cited in paragraph 51 of the present judgment. However, in the context of the first part of his second ground of appeal, the appellant does not claim that the General Court distorted the facts and the evidence submitted to it for assessment. 94 Accordingly, the first part of the second ground of appeal must be dismissed as unfounded. 95 As regards the second part of the second ground of appeal, concerning the obligation to state reasons, it is based on the premiss that the General Court considered that the mark at issue was descriptive as regards the goods concerned. However, as is apparent from the examination of the first part of that ground of appeal, that premiss is incorrect. 96 In addition, the General Court explained, in paragraphs 39 to 49 of the judgment under appeal, the reasons why it considered that the mark at issue had not been put to genuine use in the European Union, within the meaning of Article 51(1)(a) and (2) of Regulation No 207/2009, for the products Pilots Friend Immunizer®, Immun44® Saft and Immun44® Kapseln. 97 Accordingly, the second part of the second ground of appeal must be rejected as unfounded and, consequently, the second ground of appeal must be rejected in its entirety. The third ground of appeal Arguments of the parties 98 The appellant refers to paragraphs 23 to 25 of the judgment under appeal and submits that the General Court erred in law in the interpretation of the second sentence of Article 75 of Regulation No 207/2009, in that the Board of Appeal ruled on the existence of an absolute ground for refusal of registration by finding the mark at issue to be descriptive, as can be seen from paragraphs 32 and 34 of the decision at issue. Contrary to what is stated by the General Court, the Board of Appeal made that assessment in the opening statement of the decision at issue and not during its assessment of the specific nature of the use of the mark at issue. 99 The appellant submits that he did not have the opportunity to present his comments on the finding of the descriptive character of the mark at issue during the proceedings before the Board of Appeal. The General Court ought therefore to have annulled the decision at issue on the ground of an infringement of the right to a fair hearing. 100 EUIPO and LR Health & Beauty Systems contend that the arguments put forward by the appellant are unfounded. Findings of the Court 101 In paragraphs 23 to 25 of the judgment under appeal, the General Court examined and rejected the second limb of the appellant’s first plea in law in the action at first instance, which alleged infringement of his right to a fair hearing, as laid down in the second sentence of Article 75 of Regulation No 207/2009. In that regard, the General Court held that, contrary to the appellant’s contention, the Board of Appeal did not make any statement on the existence of absolute grounds for refusal of registration, nor did it call into question the distinctive character of the mark at issue and that, in any event, the appellant had had the opportunity during the proceedings to present his comments on the genuine use of that mark, including necessarily the nature of that use, in respect of all of the goods concerned. 102 The appellant criticises the General Court, in essence, for an erroneous reading of the decision at issue. He submits that the Board of Appeal did rule on an absolute ground for refusal of registration within the meaning of Article 7(1)(c) of Regulation No 207/2009, which is a point on which he did not have an opportunity to present his comments. In that regard, the appellant refers to paragraphs 32 and 34 of the decision at issue. 103 In paragraph 32 of that decision, the Board of Appeal stated that the ‘the scientific generic name of a plant does not just constitute the name of the plant genus, (and is therefore in the broader sense a product name or descriptive indication within the meaning of Article 7(1)(c) of Regulation No 207/2009), but also describes goods whose essential ingredient is produced from plants of this genus’ and that that finding was not affected by the switching of ‘i’ and ‘y’, as those letters are often used interchangeably in words of Latin origin. 104 Admittedly, those statements could lead to confusion if read in isolation. Nevertheless, it is apparent from paragraph 29 of the decision at issue that the Board of Appeal noted that the dispute between LR Health & Beauty Systems and the appellant concerned the question of whether the latter had actually used the mark at issue in accordance with the function of indicating origin or if he had rather used the term ‘cystus’ as a descriptive indication of the main ingredient of the goods concerned. 105 Consequently, the Board of Appeal did not consider that generally the appellant could not make use of the mark at issue. It concluded, after an assessment of the facts and evidence, that, in the present case, the term ‘cystus’ was used by the appellant as a descriptive indication which refers to the name of the cistus plant. 106 It follows that, contrary to what is claimed by the appellant, paragraph 32 of the decision at issue cannot be understood as an assertion by the Board of Appeal whereby it ruled on the existence of an absolute ground for refusal of registration. 107 Furthermore, in paragraphs 33 and 34 of the decision at issue, the Board of Appeal stated that adding the symbol ‘®’ would probably be understood as meaning that the appellant’s advertising ultimately communicates the fact that he had acquired a trade-mark right in a descriptive indication. 108 In that regard, as the Advocate General observes in point 85 of her Opinion, those statements do not amount to a finding by the Board of Appeal itself that the term ‘cystus’ constitutes, generally, a descriptive indication, but an interpretation of what the appellant communicated by the use of the symbol ‘®’. 109 Accordingly, it must be held that, in considering that the Board of Appeal did not make any statement on the existence of an absolute ground for refusal of registration under Article 7(1)(c) of Regulation No 207/2009, the General Court has not erred in its reading of the decision at issue. 110 Consequently, the third ground of appeal cannot succeed. 111 It follows from all of the foregoing considerations that the appeal must be dismissed in its entirety. Costs 112 In accordance with Article 184(2) of the Rules of Procedure of the Court of Justice, where the appeal is unfounded, the Court is to make a decision as to the costs. Under Article 138(1) of those rules, which is applicable to appeal proceedings by virtue of Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 113 Since EUIPO and LR Health & Beauty Systems have applied for costs and the appellant has been unsuccessful, he must be ordered to pay the costs. On those grounds, the Court (Third Chamber) hereby: 1. Dismisses the appeal; 2. Orders Mr Georgios Pandalis to pay the costs. [Signatures] * Language of the case: German.