JUDGMENT OF THE GENERAL COURT (First Chamber)
14 March 2017 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark VACUP — Earlier EU word marks MINIVAC and V.A.C. — No genuine use of the earlier mark — Article 42(2) and (3) of Regulation (EC) No 207/2009)
In Case T‑741/14,
Hersill, SL, established in Móstoles (Spain), represented by M. Aznar Alonso and P. Koch Moreno, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervening before the General Court, being
KCI Licensing, Inc., established in San Antonio, Texas (United States), represented by S. Malynicz QC,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 14 August 2014 (Case R 1520/2013-2), relating to opposition proceedings between KCI Licensing and Hersill,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 27 October 2014,
having regard to the response of EUIPO lodged at the Court Registry on 18 September 2015,
having regard to the response of the intervener lodged at the Court Registry on 12 October 2015,
having regard to the reply of the applicant lodged at the Court Registry on 18 January 2016,
having regard to the order of 22 January 2015 staying the proceedings,
further to the hearing on 24 January 2017,
gives the following
Judgment
Background to the dispute
1        On 5 May 2011, the applicant, Hersill, SL, lodged an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the word sign VACUP.
3        The goods in respect of which registration was sought are in Class 10 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 correspond to the following description: ‘Manually-operated medical apparatus for suction of fluids in the surgical field or of emergency secretions’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 122/2011 of 1 July 2011.
5        On 29 September 2011, the intervener, KCI Licensing, Inc., filed a notice of opposition under Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based, inter alia, on the following earlier marks:
–        EU word mark MINIVAC filed on 16 June 1998 and registered on 4 October 1999 under No 850990, covering goods in Classes 5 and 10 and corresponding, for each of those classes, to the following description:
–        Class 5: ‘medical and surgical dressings’;
–        Class 10: ‘medical apparatus for treatment of wounds; medical and surgical drapes’;
–        EU word mark V.A.C. filed on 20 October 1998 and registered on 17 February 2000 under No 961771, covering goods in Classes 5 and 10 and corresponding, for each of those classes, to the following description:
–        Class 5: ‘bandages, in particular foam bandages’;
–        Class 10: ‘medical apparatus and instruments, in particular devices for treating wounds using negative pressure and consisting of foamed pads with integrated vacuum tubes for connecting to a vacuum source, and air-tight coverings for placing on the patient’s skin over the wound; devices for producing negative pressure (vacuum source) for medical purposes’.
7        The grounds relied on in support of the opposition were, in particular, those laid down in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.
8        On 18 April 2012, the applicant made a request under Article 42(2) and (3) of Regulation No 207/2009 to have the intervener furnish proof that the earlier trade marks had been put to genuine use.
9        By decision of 6 June 2013, the Opposition Division rejected the opposition on the ground that the intervener had failed to prove genuine use of the earlier trade marks.
10      On 5 August 2013, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
11      By decision of 14 August 2014 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the decision of the Opposition Division and upheld the opposition. In the first place, after stating that the period during which genuine use of the earlier marks had to be demonstrated (‘the relevant period’) ran from 1 July 2006 to 30 June 2011, the Board of Appeal evaluated the evidence of genuine use of those marks submitted by the intervener and held that such use had been proven in respect of the relevant period. In the second place, the Board of Appeal examined whether there was a likelihood of confusion between the opposing marks. In that connection, it essentially found that the relevant public was composed of both average consumers and healthcare professionals; that the goods at issue were identical or similar; and that the opposing signs were visually similar to a low degree, phonetically similar to a high degree and conceptually similar. The Board of Appeal also stated that the opposing signs did not have a particularly high degree of distinctiveness and, in particular, that the distinctive character of the mark V.A.C. was limited. It therefore concluded that there was a likelihood of confusion between the mark applied for and the mark V.A.C.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
13      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant essentially relies on three pleas in law, alleging (i) infringement of Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1); (ii) infringement of the principles of legal certainty and protection of legitimate expectations; and (iii) infringement of Article 8(1)(b) of Regulation No 207/2009.
15      In the context of its first plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) of Regulation No 2868/95, the applicant complains that the Board of Appeal wrongly found that the earlier marks had been put to genuine use notwithstanding, first, the lack of evidence in respect of the MINIVAC mark and, secondly, the inadequate probative value of the evidence of use of the mark V.A.C. furnished by the intervener, particularly of the statements given by healthcare professionals and patients intended to prove that goods bearing that mark had been put to use.
16      It is apparent from recital 10 in the preamble to Regulation No 207/2009 that the legislature considered that there was no justification for protecting an earlier trade mark, unless it had actually been used. In keeping with that recital, Article 42(2) and (3) of Regulation No 207/2009 provides that an applicant for an EU trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the five years preceding the date of publication of the EU trade mark application against which notice of opposition has been given.
17      Under Rule 22(3) of No 2868/95, evidence of use must concern the place, time, extent and nature of use of the earlier trade mark.
18      In the interpretation of the notion of genuine use, the requirement that the earlier mark must have been put to genuine use is not intended to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgments of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 38 and the case-law cited, and 27 February 2015, LS Fashion v OHIM — Gestión de Activos Isorana (L’Wren Scott), T‑41/12, not published, EU:T:2015:125, paragraph 20 and the case-law cited).
19      There is genuine use of a mark where it 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, but genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 27 February 2015, L’Wren Scott, T‑41/12, not published, EU:T:2015:125, paragraph 21 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
20      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances necessary to establish that the commercial exploitation of the mark is real and, in particular, to usages regarded as warranted in the economic sector concerned as a means of maintaining or creating a share in the market 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 (see judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 34 and the case-law cited, and 27 February 2015, L’Wren Scott, T‑41/12, not published, EU:T:2015:125, paragraph 22 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
21      As to the extent of the use to which the earlier mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 35, and 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41; see, also, judgment of 27 February 2015, L’Wren Scott, T‑41/12, not published, EU:T:2015:125, paragraph 23 and the case-law cited).
22      Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgment of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47; see, also, judgment of 27 February 2015, L’Wren Scott, T‑41/12, not published, EU:T:2015:125, paragraph 26 and the case-law cited).
23      Lastly, it is possible that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (judgment of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 36, and 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 34). In that respect, even if the probative value of an item of evidence is limited to the extent that, individually, it does not show with certainty whether, and how, the goods concerned were placed on the market, and although that item of evidence is therefore not in itself decisive, it may nevertheless be taken into account in the overall assessment as to whether the use is genuine. That is also the case, for example, where that evidence corroborates the other relevant factors of the present case (see judgment of 6 March 2014, Anapurna v OHIM — Annapurna (ANNAPURNA), T‑71/13, not published, EU:T:2014:105, paragraph 45 and the case-law cited).
24      It is in the light of those considerations that it must be examined whether the Board of Appeal rightly found that the earlier marks had been put to genuine use during the relevant period.
25      The Board of Appeal correctly considered that the relevant period for the purpose of establishing the genuine use of the earlier marks was the period from 1 July 2006 to 30 June 2011, and the parties do not dispute this.
26      However, it must be noted that the Board of Appeal did not examine the genuine use of the mark MINIVAC, only that of the mark V.A.C. As EUIPO correctly submits, the Board of Appeal did not refer to any evidence concerning the mark MINIVAC.
27      For the purpose of examining the genuine use of the mark V.A.C., the Board of Appeal relied on the following evidence produced by the intervener, as described in the contested decision:
–        100 invoices dated between 1994 and 1997;
–        an affidavit by the intervener’s Intellectual Property Officer dated 2012 (‘the affidavit’);
–        Advertisements, catalogues, brochures, booklets and case studies;
–        37 pre-formulated declarations completed by patients, physicians, nurses and hospital staff, dated 2010, drawn up in relation to cancellation proceedings concerning the mark V.A.C. (‘the pre-formulated declarations’).
28      In the first place, the Board of Appeal rightly found that the invoices submitted by the intervener were irrelevant, since their dates were outside the relevant period, which the parties do not dispute.
29      In the second place, as regards the affidavit, the Board of Appeal noted that, in that document, the intervener’s Intellectual Property Officer provided information on the line of products bearing the mark V.A.C. and their use and that he explained that that mark was an acronym for ‘vacuum assisted closure’. In addition, he stated that the mark V.A.C. had been used for the first time in 1994 and that it was used in Belgium, Denmark, Germany, Ireland, Spain, France, Italy, the Netherlands, Austria, Sweden and the United Kingdom as a trade mark, as opposed to a product denomination. The Board of Appeal added that he then referred to documents, annexed to his affidavit, indicating the sales figures and approximate advertising expenditures for the European Union, broken down by country. The sales figures for the products in question showed a total revenue of 1 850 464 484 United States dollars (USD) from 1994 to 2011 and advertising expenditures of USD 31 750 500 from 2003 to 2011.
30      In that respect, it follows from the case-law that a sworn statement, made in the interests of its author, must, in order to have probative value, be corroborated by other evidence (see, to that effect, judgments of 23 September 2009, Cohausz v OHIM — Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 57, and 13 January 2011, Park v OHIM — Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 68). Since that affidavit was made by an employee of the intervener, the Board of Appeal rightly considered that that affidavit had to be corroborated by other evidence.
31      The documents intended to establish the accuracy of the contents of the affidavit were annexed to that affidavit.
32      The Board of Appeal found that the pre-formulated declarations, as well as the catalogues, the information concerning the intervener’s products and the advertisements annexed to the affidavit corroborated the latter and established the genuine use of the mark V.A.C. during the relevant period.
33      First, it is apparent from the pre-formulated declarations, all dated February 2010, that doctors, specialists, nurses, hospital managers, surgeons, a pharmacist and patients stated that they, as appropriate, treated patients or were treated with the negative pressure wound treatment devices and bandages of the mark V.A.C.
34      Accordingly, those statements describe the use, by health professionals, of products covered by the mark V.A.C. on patients for therapeutic purposes. They therefore describe the use of those products by the relevant public, but not the use of that mark by the intervener, its proprietor, on the market in order to create or preserve a share in the market for the products protected by that mark and to create or preserve an outlet for those products, within the meaning of the case-law cited in paragraphs 19 and 20 above, during the relevant period. Consequently, they cannot establish, by themselves, the use of the mark V.A.C. by the intervener during that period.
35      Moreover, it is necessary to reject the intervener’s allegation that it could be inferred from the fact that patients stated in their declarations that they had been treated during the relevant period, from the number of patients that the health professionals stated they had treated with the products in question and from the fact that the hospitals had to replenish their stock of bandages regularly that the mark V.A.C. had been used extensively and regularly during the relevant period. While it is indeed likely that the intervener made some use of the mark V.A.C. during the relevant period, the intervener’s allegation is, nevertheless, based on the pre-formulated declarations alone and it is not supported by any evidence, such as invoices or purchase orders issued during the relevant period, capable of establishing whether the mark V.A.C. was actually used and, consequently, of establishing the duration, extent and regularity of that use.
36      Secondly, as regards the catalogues, the information concerning the intervener’s products and the advertisements annexed to the affidavit, the author of that affidavit stated that those documents were distributed to the public and to customers at conferences, trade shows or office visits.
37      In that respect, it must be pointed out that, as the Board of Appeal noted, without being challenged on that point by the intervener, a large number of those documents show that the mark V.A.C. was used with additional word elements liable to alter the distinctive character of that mark, with the result that they did not make it possible for the genuine use of that mark to be established.
38      In addition, the parties do not call into question the Board of Appeal’s findings that, among those documents, 11 were not dated, 21 bore a date before the relevant period and only 20 bore a date within the relevant period. Moreover, as the applicant rightly submits, the dates of numerous advertisements annexed to the affidavit cannot be identified and some of those advertisements appeared in publications in 1996, 2002 and 2003, that is to say outside the relevant period.
39      It is true that the fact that items of evidence are not dated or bear a date which is not within the relevant period does not deprive them of all probative value, in view of the case-law cited in paragraph 23 above. However, for the purpose of establishing the genuine use of the mark V.A.C. during that period, their probative value is weak.
40      In that respect, some undated documents do indeed refer to scientific publications dated between 1997 and 2011, with the result that it is possible that those documents date from the relevant period. However, it must be held that those items of evidence are not capable of corroborating to the requisite legal standard the content of the affidavit as regards the genuine use of the mark V.A.C.
41      It follows that the set of indicia composed of the items of evidence referred to in paragraph 27 above was insufficient to allow the Board of Appeal to consider that the mark V.A.C. had been put to genuine use during the relevant period, within the meaning of Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) of Regulation No 2868/95, as interpreted by the case-law cited in paragraphs 17 to 23 above. It follows that the Board of Appeal, by concluding that that mark and the mark MINIVAC, the genuine use of which it did not examine on the basis of the identified items of evidence, had been put to genuine use during the relevant period, infringed those provisions.
42      The first plea in law must therefore be upheld and, accordingly, the contested decision must be annulled, and the remaining pleas need not be examined.
Costs
43      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. In the present case, EUIPO and the intervener have been unsuccessful. Consequently, first, EUIPO must be ordered to bear its own costs and also to pay the costs of the applicant, in accordance with the form of order sought by the latter. Secondly, since the intervener has been unsuccessful, it must bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 August 2014 (Case R 1520/2013-2);
2.      Orders EUIPO to bear its own costs and to pay those incurred by Hersill, SL;
3.      Orders KCI Licensing, Inc. to bear its own costs.
Pelikánová
Valančius
Öberg
Delivered in open court in Luxembourg on 14 March 2017.
E. Coulon
I.Pelikánová
Registrar
President
* Language of the case: English.