JUDGMENT OF THE GENERAL COURT (Third Chamber)
30 November 2022 (*)
(EU trade mark – Invalidity proceedings – EU word mark NATURCAPS – Earlier national word mark NATURKAPS – No genuine use of the earlier trade mark – Article 64(2) of Regulation (EU) 2017/1001 – Classification of pharmaceutical products and food supplements)
In Case T‑12/22,
Hasco TM sp. z o.o. sp.k., established in Wrocław (Poland), represented by M. Krekora, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Esi Srl, established in Albisola Superiore (Italy),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin (Rapporteur), President, I. Nõmm and G. Steinfatt, Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Hasco TM sp. z o.o. sp.k., seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 November 2021 (Case R 617/2021-4) (‘the contested decision’).
Background to the dispute
2        On 21 August 2019, the applicant filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed on 26 January 2017 for the word sign NATURCAPS.
3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Class 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded to the following description: ‘Tonics [medicines]; Dietary and nutritional supplements; Dietary supplements and dietetic preparations; Nutritional supplements; Mineral food supplements; Royal jelly dietary supplements; Anti-oxidant food supplements; Dietary supplements consisting of vitamins; Propolis dietary supplements; Pollen dietary supplements; Enzyme dietary supplements; Casein dietary supplements; Mineral dietary supplements for humans; Capsules for medicines; Extracts of medicinal herbs; Medicinal herbs; Medicinal herbs in dried or preserved form; Herbal extracts for medical purposes; Herbal compounds for medical use.’
4        The application for a declaration of invalidity was based on the earlier national word mark NATURKAPS, filed on 9 November 2000 in Poland, registered on 10 September 2004 and then duly renewed, for goods in Class 5 corresponding to the following description: ‘Pharmaceutical products’.
5        The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 60(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), read in conjunction with Article 8(1)(a) and (b) of that regulation.
6        Following the request made by Esi Srl, the proprietor of the mark, before the Board of Appeal and in accordance with Article 64(2) and (3) of Regulation 2017/1001, EUIPO invited the applicant to adduce proof of genuine use of the earlier mark relied on in support of the application for a declaration of invalidity. The applicant complied with that request within the prescribed period.
7        On 8 February 2021, the Cancellation Division rejected the application for a declaration of invalidity in its entirety on the ground that the applicant had not proved genuine use for the registered goods.
8        On 2 April 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
9        By the contested decision, the Board of Appeal dismissed the appeal.
10      The Board of Appeal found that, given that the applicant had not put forward any argument relating to the assessment of the proof of use, namely that evidence had actually been adduced for the use of ‘food supplements’, the sole issue raised before it was whether or not the use shown for food supplements could be classified as use for ‘pharmaceutical products’ in Class 5 covered by the earlier mark.
11      In that regard, the Board of Appeal found, like the Cancellation Division, that:
–        where a trade mark was registered for only part of the general indications listed in the class heading of a particular class, but it had been used only for goods or services which fell under another general indication in that same class, the mark could not be regarded as having been used for the registered goods or services;
–        the class headings of Class 5 made a clear distinction between pharmaceutical products, on the one hand, and dietetic substances, on the other hand, as separate indications;
–        the use of the earlier mark for food supplements could not be considered to be use for the registered goods or for a subcategory thereof;
–        the food supplements came under dietetic substances adapted for medical use and the goods for which genuine use had been demonstrated, namely dietary supplements, were distinct from pharmaceutical products.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant relies on two pleas in law.
15      The first plea alleges infringement of Article 64(2) of Regulation 2017/1001, in that the Board of Appeal erred in finding that the earlier mark was not used for the goods in respect of which it was registered, namely ‘pharmaceutical products’ in Class 5.
16      The second plea alleges infringement of Article 60(1) of Regulation 2017/1001 in that the contested mark should have been declared invalid on the basis of Article 8(1)(a) and (b) of that regulation.
The first plea in law, alleging infringement of Article 64(2) of Regulation 2017/1001
17      In the context of the first plea in law, the applicant criticises the Board of Appeal for having relied on an erroneous interpretation of the term ‘pharmaceutical products’, which cannot be equated with the term ‘medicinal products’ as defined in EU legislation.
18      In that regard, it submits that the term ‘pharmaceutical products’ must be interpreted in accordance with Polish law and not with EU law. Furthermore, leaving aside the fact that, at the time of the filing of the earlier mark, Poland was not a Member State of the European Union and was therefore not bound by EU law, the term ‘food supplements’ did not exist at that time, either in the Nice Classification (seventh edition), or under Polish law. Accordingly, the goods for which the earlier mark had been used can be classified only as pharmaceutical products.
19      The applicant also claims that there is, even nowadays, no clear boundary between medicinal products and food supplements, with the result that all those goods must be classified as pharmaceutical products because they are sold in pharmacies and are intended to improve human or animal health.
20      EUIPO disputes the applicant’s arguments.
21      At the outset, it should be noted that, as EUIPO correctly points out, the applicant does not dispute the Board of Appeal’s finding that the goods for which the earlier mark was used were food supplements. Thus, only the finding that food supplements are not covered by the broad specification ‘pharmaceutical products’ is subject to the Court’s assessment in the context of the present dispute.
22      In that regard, it should be borne in mind that the list of goods and services for which an earlier mark is registered and in respect of which proof of genuine use has been requested must be interpreted, in order to ascertain the extent of the protection of that mark and to settle the issue of its genuine use, in the most coherent manner, in the light not only of its literal meaning and its grammatical construction, but also, if there is a risk of an absurd result, of its context and the actual intention of the mark’s proprietor as regards its scope (see, to that effect, judgment of 17 October 2019, Alliance Pharmaceuticals v EUIPO – AxiCorp (AXICORP ALLIANCE), T‑279/18, EU:T:2019:752, paragraph 50).
23      Moreover, while it is true that the Nice Classification is purely administrative, it is still necessary to refer to it in order to determine, where necessary, the range or the meaning of the goods in respect of which a mark has been registered (judgment of 10 September 2014, DTM Ricambi v OHIM – STAR (STAR), T‑199/13, not published, EU:T:2014:761, paragraph 35).
24      It is in the light of those principles that the first plea should be examined.
25      In that regard, the applicant’s point of view amounts, in essence, to considering that the term ‘pharmaceutical products’ is a generic term which includes both medicinal products and food supplements since all those products are intended to improve health.
26      That point of view cannot be maintained.
27      In the first place, it is true that pharmaceutical products and food supplements fall within the field of health, as do dietetic substances adapted for medical use or nutritional or dietary supplements. However, while such a finding may be relevant in the context of the comparison of those goods for the purposes of Article 8(1)(b) of Regulation 2017/1001, it is not so in the context of the examination for the purposes of Article 64(2) of Regulation 2017/1001, read in conjunction with Article 47(2) of that regulation, relating to the genuine use of the mark for the goods or services for which it was registered.
28      Moreover, all the goods in Class 5 relate in one way or another to health, as is apparent from the explanatory note concerning that class.
29      In the second place, it must be noted that, in Class 5, in accordance with the version of the Nice Classification in force at the time of the filing of the earlier mark, namely the seventh edition, the class heading was the following: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’.
30      It follows that the heading of Class 5 made a clear distinction between pharmaceutical products, on the one hand, and dietetic substances, on the other hand, but did not yet include a separate category for food supplements.
31      In that regard, it should be noted, as the Board of Appeal did in the contested decision, that the category of ‘pharmaceutical products’, for which the earlier mark was registered, covers goods resulting from pharmacy, that is to say the art of creating, preparing, preserving and dispensing or administering medicinal products, intended for the treatment or prevention of illnesses. Furthermore, that description corresponds to the definition of the term ‘pharmacy’ given in the online dictionary Merriam-Webster to which the applicant referred during the administrative procedure.
32      The food supplements marketed by the applicant under the earlier mark are goods which are concentrated sources of nutrients. According to a literal meaning, their purpose is to supplement the nutritional value of the normal diet of a human being and their main purpose is not the treatment or prevention of illnesses, although they are generally also used to improve the health of a patient. Therefore, that definition indicates that food supplements do not come under the ‘pharmaceutical products’ category in Class 5, covered by the earlier mark, and makes them more likely to fall under the category of ‘dietetic substances adapted for medical use’, which are intended for the treatment of a specific nutritional deficiency.
33      Therefore, the Board of Appeal was fully entitled to conclude that the goods marketed by the applicant, namely goods containing active ingredients such as vitamin B3, co-enzyme Q10, lecithin, beta-carotene and L-carnitine, at the time of the facts, came under the ‘dietetic substances adapted for medical use’ category.
34      That finding cannot be called into question by the applicant’s other arguments.
35      The applicant merely put forward, without however providing any evidence in that regard, that, on the filing date of the earlier mark, food supplements were classified as medicinal products under Polish law. It also claims that the Board of Appeal disregarded the provisions of the Accession Treaty according to which transitional measures were introduced with regard to the marketing authorisations for pharmaceutical products granted before Poland’s accession to the European Union. However, those arguments are irrelevant in the present case, since it is apparent from the case-law that national and EU legislative acts relating to pharmaceutical products or food supplements do not affect the way in which goods and services are classified in the Nice Classification (see, to that effect, judgment of 18 November 2020, Dermavita v EUIPO – Allergan Holdings France (JUVEDERM ULTRA), T‑643/19, not published, EU:T:2020:549, paragraph 27 and the case-law cited).
36      According to Article 33(2) of Regulation 2017/1001, the goods and services for which the protection of the trade mark is sought are to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought. According to paragraph 3 of that article, for the purposes of paragraph 2, the general indications included in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision set out in that article. It is true that the earlier mark is not an EU trade mark, but a national mark. However, in so far as the applicant relies on its national mark in invalidity proceedings brought against an EU mark, those principles of clarity and precision must be applied. Therefore, it is for the applicant, as proprietor of the earlier mark, to ensure that the definition of the goods in respect of which it claims protection of its mark is clear; furthermore, it cannot rely in its favour on any doubt or any overlap between the headings of the Nice Classification. That is the logic behind the last sentence of paragraph 31 of the contested decision, in which the Board of Appeal stated that the applicant had not adequately explained ‘why registration for food supplements or another suitably qualified term or terms was not sought at the time of filing if there was a doubt about the applicability of dietetic supplements’. That principle has also applied to the renewals of the applicant’s earlier mark since its registration in Poland in 2004.
37      Furthermore, the applicant maintains that food supplements could not be covered, in Class 5 of the seventh edition of the Nice Classification, by the term ‘dietetic substances adapted for medical use’ since the term ‘substance’ refers back to an ingredient of an unfinished product, whereas food supplements are finished products. According to the applicant, it is therefore necessary to take into account criteria such as the function, purpose or even the material of which the product is made or its mode of operation in order to classify food supplements. However, it must be stated that the applicant’s argument that ‘dietetic substances adapted for medical use’ do not include finished products is not substantiated by any evidence and that, in any event, as is apparent from paragraphs 29 to 33 above, ‘dietetic substances adapted for medical use’, unlike ‘pharmaceutical products’, share the same specific purpose as food supplements.
38      Similarly, the argument based on the fact that food supplements are sold in pharmacies must be rejected. The sale of certain goods in pharmacies does not mean that they are pharmaceutical products (see, to that effect, judgments of 17 November 2017, Endoceutics v EUIPO – Merck (FEMIBION), T‑802/16, not published, EU:T:2017:818, paragraph 38, and of 1 September 2021, Bimbo Donuts Iberia v EUIPO – Hijos de Antonio Juan (DONAS DULCESOL), T‑697/20, not published, EU:T:2021:526, paragraphs 40 to 42).
39      It follows from the foregoing that the Board of Appeal did not err in finding that the applicant had not proved genuine use of the earlier mark for the goods for which that mark had been registered.
The second plea in law, alleging infringement of Article 60(1) of Regulation 2017/1001, read in conjunction with Article 8(1)(a) and (b) of that regulation
40      In the context of the second plea, the applicant claims that the marks at issue are identical and registered for identical or similar goods. Accordingly, on the basis of Article 60(1) of Regulation 2017/1001, read in conjunction with Article 8(1) of that regulation, the contested mark should have been declared invalid by the Board of Appeal.
41      The second plea in law must be rejected as unfounded given that it is apparent from the examination of the first plea that it has not been shown that the earlier mark had been put to genuine use, with the result that it cannot serve as a basis for a declaration of invalidity of the contested mark.
Costs
42      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
43      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Hasco TM sp. z o.o. sp.k. to pay the costs.
Schalin
Nõmm
Steinfatt
Delivered in open court in Luxembourg on 30 November 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.