JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
17 November 2017 (*)
(EU trade mark — Revocation proceedings — EU word mark FEMIBION — Partial revocation — Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) — Proof of genuine use of the mark — Classification of the goods in respect of which genuine use has been shown)
In Case T‑802/16,
Endoceutics, Inc., established in Quebec (Canada), represented by M. Wahlin, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Vuijst and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Merck KGaA, established in Darmstadt (Germany), represented by M. Best, U. Pfleghar and S. Schäffner, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 July 2016 (Case R 1608/2015-1), concerning revocation proceedings between Endoceutics and Merck,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, I. Labucka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 8 November 2016,
having regard to the response of EUIPO lodged at the Court Registry on 8 February 2017,
having regard to the response of the intervener lodged at the Court Registry on 14 February 2017,
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
Background to the dispute
1        On 4 August 1998, the intervener, Merck KGaA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by 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)).
2        Registration as a mark was sought for the word sign FEMIBION.
3        The goods in respect of which registration was sought are 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 correspond to the following description: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 35/1999 of 3 May 1999 and the mark was registered on 3 January 2000.
5        On 26 March 2014, the applicant, Endoceutics, Inc., filed an application for revocation of the EU trade mark (‘the mark at issue’) pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001). That application was directed against all of the goods covered by the mark at issue.
6        The intervener submitted the following documents as evidence of the genuine use of the mark at issue:
–        printouts of pages from the website of a UK undertaking;
–        printouts of pages and screenshots from various websites using the term ‘femibion’ in their domain name;
–        invoices addressed to Merck Romania S.R.L.;
–        press proofs of packaging in Romanian;
–        an extract from the intervener’s website;
–        consumer and user comments on internet forums and a website;
–        planners, calendars, patient information, posters, congress information and consumer leaflets for Poland;
–        brochures, catalogues, packaging and invoices addressed to pharmacies in France;
–        a presentation on the use of the mark at issue in Germany;
–        brochures, posters, photographs of a conference stand, packaging and invoices addressed to the intervener for printing in Hungary.
7        By decision of 8 June 2015, the Cancellation Division found that genuine use of the mark at issue had been shown only for the ‘dietetic substances adapted for medical use’ in respect of which registration of the mark at issue had been maintained. However, it found that genuine use of the mark at issue had not been shown for ‘pharmaceutical, veterinary and sanitary preparations’, ‘food for babies’, ‘plasters’, ‘materials for dressings’ and ‘disinfectants’ and revoked that mark for those goods.
8        On 7 August 2015, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001) against the decision of the Cancellation Division.
9        By decision of 14 July 2016 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the action in part and annulled the Cancellation Division’s decision in part, in so far as it maintained registration of the mark at issue also for ‘pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition’. It concluded, in essence, that genuine use of the mark at issue had also been shown for those goods. It dismissed the action in respect of the other goods.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision in part;
–        revoke the mark at issue for ‘pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition’;
–        order the intervener to pay the costs incurred in the present action and in the course of the administrative proceedings before EUIPO.
11      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs;
Law
12      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009.
The single plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009
13      As its principal argument, the applicant claims that the mark at issue has not been put to genuine use for ‘pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition’, but only for dietetic substances adapted for medical use.
14      In the alternative, should the Court take the view that the mark at issue had been put to genuine use for the goods mentioned in paragraph 13 above, the applicant maintains that the evidence submitted does not contain indications concerning the place, time, extent and nature of use of the mark at issue, contrary to Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1).
15      EUIPO and the intervener dispute the applicant’s arguments.
16      Under Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of the EU trade mark are to be declared to be revoked, on application to EUIPO or on the basis of a counterclaim in infringement proceedings, if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
17      In accordance with Rule 22(3) and (4) of Regulation No 2868/95, which is applicable to revocation proceedings pursuant to Rule 40(5) of that regulation, the proof of use must concern the place, time, extent and nature of use of the mark and it is to be confined, in principle, to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001).
18      In interpreting the concept of genuine use, account should be taken of the fact that the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, in so far as there is no sound economic reason resulting from an actual function of the mark on the market. However, the purpose of Article 51(1)(a) of Regulation No 207/2009 is not to assess commercial success or to review the economic strategy of an undertaking, nor is it 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, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 32 and the case-law cited, and of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 53 and the case-law cited).
19      As is apparent from case-law, 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 and 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 (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 judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 26 and the case-law cited, and of 4 July 2014, Construcción, Promociones e Instalaciones v OHIM — Copisa Proyectos y Mantenimientos Industriales (CPI COPISA INDUSTRIAL), T‑345/13, not published, EU:T:2014:614, paragraph 21 and the case-law cited).
20      In the assessment of whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and 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 judgment of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 30 and the case-law cited).
21      Furthermore, 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 (see judgment of 23 September 2009, Cohausz v OHIM — Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 36 and the case-law cited). An overall assessment must be made which takes account of all the relevant factors in the particular case and which implies a certain interdependence between the factors taken into account (see judgment of 18 January 2011, Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, not published, EU:T:2011:9, paragraph 30 and the case-law cited).
22      Likewise, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong (see, to that effect, judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45, and of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23).
23      It is in the light of the foregoing that the present plea must be assessed.
24      It should be recalled that the Board of Appeal found that, in the present case, genuine use of the mark at issue had been shown for the following subcategory of pharmaceutical goods: ‘Pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition’.
25      That finding is, in particular, based on the considerations set out in paragraph 38 of the contested decision, according to which it was apparent from the evidence that the sign femibion was used for a range of preparations for women. The Board of Appeal noted that the product ‘Femibion@ Healthy Pregnancy’ was used for prenatal care, intended for mothers in order to aid normal development before and during pregnancy, the product ‘Femibion@ Energetic Mum’ for immune system support for health and vitality, the product ‘Femibion@ Balance’ for support for one’s wellbeing before and during menstruation, the product ‘Femibion@ Radiance’ for looking and feeling good and to support good health, and the product ‘Femibion@ Healthy Bones’ for helping to maintain healthy and strong bones when oestrogen levels plummet during menopause. It also noted that those products contained, in varying proportions, vitamins, minerals, Omega 3s, docosahexaenoic acid, probiotics and vitamins, and probiotics and Metafolin for folic acid levels.
26      Likewise, in paragraph 41 of the contested decision, the Board of Appeal stated that it was clear that the goods in respect of which the Cancellation Division had found genuine use of the mark at issue covered the therapeutic indications recalled in paragraph 24 above.
27      In this regard, the applicant maintains that the evidence submitted by the intervener shows that the goods covered by the mark at issue are dietetic substances and not pharmaceutical preparations. In particular, it refers to the evidence submitted by the intervener during the administrative proceedings in Appendix 1 to its observations of 12 September 2014 on the application for revocation, which were received by EUIPO on 15 September 2014, from which it was apparent that the goods bearing the mark at issue are food supplements. In its view, the fact that consumers and the intervener frequently refer to the goods covered by the mark at issue as ‘food supplements’, ‘nutritional support’, or ‘complements to a balanced and varied diet’ indicates clearly that those goods are dietetic substances adapted for medical use rather than pharmaceutical preparations in the subcategory defined by the Board of Appeal.
28      EUIPO and the intervener, for their part, contend that the Board of Appeal was fully entitled to find that the evidence submitted by the intervener concerned the pharmaceutical preparations set out in paragraph 24 above and not only dietetic substances adapted for medical use.
29      In the present case, it is necessary to examine whether the goods in respect of which use of the mark at issue was shown during the administrative proceedings are pharmaceutical preparations in the subcategory defined by the Board of Appeal. It should also be recalled that the applicant does not dispute that genuine use of the mark at issue has been proved in respect of dietetic substances adapted for medical use.
30      In the first place, as regards the products ‘Femibion@ Healthy Pregnancy’, ‘Femibion@ Energetic Mum’, ‘Femibion@ Balance’, ‘Femibion@ Radiance’ and ‘Femibion@ Healthy Bones’ sold by the intervener, it must be noted, as the applicant claims, that, as is apparent from the case file, these are nutritional supplements. First of all, in the website printouts, as attached in Appendix 1 to the intervener’s observations of 12 September 2014, all of those goods are described as being nutritional supplements. Next, the Board of Appeal itself noted that those goods contained vitamins, minerals, Omega 3s, docosahexaenoic acid, probiotics and vitamins, probiotics and Metafolin for folic acid levels (see paragraph 38 of the contested decision).
31      Finally, when it held, in paragraph 43 of the contested decision, that the use of the mark at issue also concerned the product ‘Femibion Flore Intime vaginal gel’, the Board of Appeal took the view that the use of the mark at issue was not solely for ‘dietetic preparations in the sense that they [supplemented] dietary needs’. It should be noted that, in doing so, the Board of Appeal implicitly acknowledged that the other goods in respect of which genuine use had been shown were ‘dietetic’ goods.
32      As regards the question whether those goods may be considered to be pharmaceutical preparations in the subcategory defined by the Board of Appeal, it should be noted that the evidence to which the Board of Appeal referred in the contested decision does not support such a conclusion. Not a single item of evidence contains specific information to that effect.
33      In that regard, the fact that the definitions of ‘food supplements’ and ‘medicinal products’, as reflected in acts of secondary EU law, may, as EUIPO maintains, overlap (see, to that effect, judgment of 15 November 2007, Commission v Germany, C‑319/05, EU:C:2007:678, paragraph 37) is irrelevant, because the evidence submitted in the present case does not support the conclusion that the goods are not only food supplements but also pharmaceutical preparations.
34      Furthermore, it may be inferred from the definition of food supplements put forward by EUIPO that the goods in question are dietetic substances adapted for medical use and not pharmaceutical preparations. As is apparent from the case-law referred to by EUIPO, nutritional or food supplements included in Class 5 are not intended to serve as ordinary food, but are consumed to prevent or cure medical problems in the broadest sense or to balance nutritional deficiencies (see judgment of 26 November 2015, Bionecs v OHIM — Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 26 and the case-law cited). Likewise, the Court held, in paragraph 26 of that judgment, that dietetic food adapted for medical use was intended to treat certain health problems, as the detail concerning ‘medical use’ indicated.
35      In the present case, the goods mentioned in paragraph 25 above correspond to that definition, in particular if the Board of Appeal’s findings relating to the symptoms experienced by women, set out in paragraph 37 of the contested decision, are taken into account.
36      In paragraph 37 of the contested decision, the Board of Appeal noted a certain number of physical symptoms resulting from hormonal changes frequently experienced by women, such as those associated with the transition to menopause, during menstruation or in times of stress. It found that there were certain essential nutrients that the human body required but which it could not produce on its own, and that it was sometimes necessary to supplement the diet with specific products providing essential nutrients.
37      Furthermore, as is apparent from the evidence to which the Board of Appeal referred, the goods in respect of which, in the Cancellation Division’s view, genuine use had been shown are not intended to treat or prevent a disease, but to address nutritional deficiencies resulting from normal physiological processes.
38      As regards EUIPO’s argument that it noted that the goods in question were sold exclusively in pharmacies, this must be rejected because it arises from an incorrect assessment of the evidence, in so far as the reference to the exclusive nature of the sale is for promotional purposes. The fact that those goods are available in pharmacies does not mean, however, that they cannot be available in other sales outlets. In any event, the sale, even the exclusive sale, of certain goods in pharmacies does not mean that they are necessarily pharmaceutical preparations or medicinal products.
39      Accordingly, in the light of the evidence analysed by the Board of Appeal, there was no basis on which it could conclude that the goods in respect of which the Cancellation Division had found genuine use were to be regarded as pharmaceutical preparations belonging to the subcategory that it had defined.
40      In the second place, as regards the product entitled ‘Femibion Flore Intime vaginal gel’, the Board of Appeal held, in paragraph 43 of the contested decision, that use of the mark at issue had been shown not only for ‘dietetic’ goods, but also for ‘preparations that may be applied topically’. In that regard, it should be noted that, even though that product clearly could not be classified as a ‘food supplement’ or a ‘dietetic substance’, it nevertheless cannot be classified as a ‘pharmaceutical preparation’ in the subcategory defined by the Board of Appeal. As is apparent from the case file, it is a preparation ‘on the basis of specific prebiotics and red clover extract which improves the moisture level of the vaginal mucosa and provides a favourable environment for bacterial microflora’ available on ‘intimate hygiene’ shelves. However, that information is insufficient to thus classify that product.
41      Even if it were a ‘pharmaceutical preparation’ contained in the subcategory defined by the Board of Appeal, its use, as shown in the present case, cannot be classified as genuine. Among the invoices addressed to pharmacies in France, referred to by the Board of Appeal in paragraph 43 of the contested decision, the only two relevant items of evidence are two invoices of 28 December 2012 evidencing, respectively, the sale of 25 units of the product ‘Femibion Flore intime 28 gel’ and 12 units of the product ‘Femibion Vaginal gel’.
42      There was therefore no basis on which the Board of Appeal could conclude that the evidence relating to the product ‘Femibion Vaginal gel’ showed genuine use of the mark at issue for the subcategory of pharmaceutical preparations that it had defined.
43      It follows that the single plea in law must be upheld, without there being any need to examine the complaint raised in the alternative.
The second head of claim
44      The applicant requests that the Court revoke the mark at issue for ‘pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition’.
45      In this regard, it should be noted that the applicant is, in essence, requesting the Court to adopt the decision which, according to the applicant, EUIPO ought to have taken, namely a decision holding that the registration of the mark at issue should not be maintained for the subcategory of pharmaceutical preparations defined by the Board of Appeal.
46      It must be borne in mind that the power of the General Court to alter decisions pursuant to Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001) does not have the effect of conferring on the Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72; see also judgment of 28 January 2016, Gugler France v OHIM — Gugler (GUGLER), T‑674/13, not published, EU:T:2016:44, paragraph 100 and the case-law cited).
47      In the present case, in view of the circumstances of this case and, in particular, on the assumption that the Board of Appeal did not analyse all of the evidence submitted in the course of the administrative proceedings, the Court takes the view that the application to alter the contested decision cannot be granted, since that would imply, in substance, the exercise of administrative and investigatory functions specific to EUIPO and would therefore upset the institutional balance on which the division of jurisdiction between EUIPO and the Court is based (see, to that effect, judgment of 14 May 2009, Fiorucci v OHIM — Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 67 and the case-law cited).
Costs
48      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 addition, under Article 134(2) of those rules, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared.
49      In the present case, although EUIPO and the intervener have been unsuccessful, the applicant has claimed only that the intervener should be ordered to pay the costs.
50      In this regard, it should be recalled that, under Article 135(1) of the Rules of Procedure, the Court may decide, if equity so requires, that an unsuccessful party is to pay only a proportion of the costs of the other party in addition to bearing its own, or even that it is not to be ordered to pay any costs. Therefore, in the present case, in addition to its own costs, the intervener must be ordered to pay half of the costs incurred by the applicant before the General Court. The applicant is to bear half of its own costs. EUIPO shall bear its own costs.
51      The applicant has also claimed that the intervener should be ordered to pay the costs incurred in the proceedings before EUIPO. In this regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Cancellation Division. Accordingly, the intervener must be ordered to pay the costs incurred by the applicant before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 July 2016 (Case R 1608/2015-1), in so far as it maintained registration of the EU trade mark for ‘pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition’;
2.      Dismisses the action as to the remainder;
3.      Orders Merck KGaA to pay, in addition to its own costs, half of the costs incurred by Endoceutics Inc. before the General Court and the costs incurred by Endoceutics before the Board of Appeal;
4.      Orders Endoceutics to bear half of its own costs;
5.      Orders EUIPO to bear its own costs.
Gratsias
Labucka
Ulloa Rubio
Delivered in open court in Luxembourg on 17 November 2017.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.