JUDGMENT OF THE GENERAL COURT (Third Chamber)
12 July 2023 (*)
(EU trade mark – Revocation proceedings – EU word mark ARTRESAN – Genuine use of the mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001)
In Case T‑585/22,
Mariusz Trus, residing in Lublin (Poland), represented by W. Włodarczyk, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Unilab LP, established in Rockville, Maryland (United States), represented by M. Kondrat, lawyer,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, I. Nõmm (Rapporteur) and D. Kukovec, Judges,
Registrar: V. Di Bucci,
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 his action under Article 263 TFEU, the applicant, Mr Mariusz Trus, seeks the partial annulment and the alteration of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 July 2022 (Joined Cases R 1428/2020-1 and R 1481/2020-1) (‘the contested decision’).
Background to the dispute
2        On 23 February 2005, the intervener, Unilab LP, filed an application for registration of an EU trade mark with EUIPO in respect of the word sign ARTRESAN.
3        The goods and services in respect of which registration was sought were in Classes 3, 5 and 39 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, for each of those classes, to the following description:
–        Class 3: ‘Cosmetics and cosmetic preparations, cosmetic pastes, toothpaste, cleaning pastes, creams, cosmetic dyes, colour-brightening chemicals for household purposes, detergents, oils, greases for cosmetic purposes, cleaning preparations, sanitary preparations for toilet purposes, perfumery’;
–        Class 5: ‘Pharmaceutical preparations and other medical preparations, dietetic foods, food supplements for medical purposes, dietetic food preparations, medicinal infusions, food for babies, food supplements for medical purposes’;
–        Class 39: ‘Preparation of pharmaceuticals and cosmetics, foodstuffs, beverages, dietetic food preparations and food supplements for medical purposes’.
4        On 25 July 2008, the sign referred to in paragraph 2 above was registered as an EU trade mark under the number 4304937 (‘the contested mark’).
5        On 11 October 2018, the applicant filed an application for revocation of the contested mark with EUIPO on the basis of Article 58(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) in respect of all the goods and services referred to in paragraph 3 above.
6        On 19 May 2020, the Cancellation Division of EUIPO partially upheld the application for revocation. It revoked the contested mark in respect of the goods and services referred to in paragraph 3 above, with the exception of therapeutic creams for joints and food supplements for medical purposes, with regard to which the registration of that mark was maintained.
7        On 13 July 2020, the applicant filed a notice of appeal with EUIPO (Case R 1428/2020-1), pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision, seeking the annulment of that decision in so far as the application for revocation had been rejected. On 15 September 2020, he filed a statement of grounds for the appeal.
8        On 20 July 2020, the intervener filed a notice of appeal with EUIPO (Case R 1481/2020-1) against the Cancellation Division’s decision, seeking the annulment of that decision in so far as the application for revocation had been upheld in respect of cosmetics and cosmetic preparations, creams in Class 3. On 29 September 2020, it filed a statement of grounds for the appeal as well as an application for restitutio in integrum and requested that it be regarded as having complied with its time limit for filing the statement of grounds for the appeal.
9        By the contested decision, the Board of Appeal, first, granted the application for restitutio in integrum in Case R 1481/2020-1 and, secondly, dismissed both appeals. As regards the applicant’s appeal (Case R 1428/2020-1), it justified its decision on the following grounds:
–        the invoices submitted by the intervener demonstrated continuous sales of substantial quantities of Artresan products in Poland; the fact that English translations had been inserted and that not all the goods listed were mentioned in the invoices could not be considered to be an indication that the invoices were not genuine;
–        the contested mark had been used outwardly and publicly;
–        the use of the word mark ARTRESAN in a figurative form did not, for the purposes of Article 18(1) of Regulation 2017/1001, alter the distinctive character of that mark as registered. Furthermore, the use of the mark at issue with other elements was irrelevant for the purposes of assessing genuine use, since proof of that use did not require the sign to be used on its own;
–        use of the contested mark had occurred with the consent of the proprietor of the mark;
–        given that all of the evidence referred only to medical supplements to improve the condition of the joints or to a cream to be applied to the joints, the Cancellation Division had been right in finding that genuine use of the contested mark with regard to the goods in Class 5 had been proved only in relation to therapeutic creams for joints and food supplements for medical purposes.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision in so far as the registration of the contested mark was maintained with regard to the goods referred to in paragraph 6 above, namely therapeutic creams for joints and food supplements for medical purposes in Class 5;
–        ‘declare’ the contested mark to be revoked also with regard to those goods;
–        order EUIPO and the intervener to pay the costs incurred in the present action and in the proceedings before the Board of Appeal.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred in the event that a hearing is convened.
12      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      It must be stated at the outset that, given the date on which the application for revocation in question was filed, namely 11 October 2018, which is decisive for the purposes of identifying the applicable substantive law, the present case is governed by the substantive provisions of Regulation 2017/1001 (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 2, and of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3).
The first head of claim
14      The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 58(1)(a) of Regulation 2017/1001 and, secondly, infringement of the first sentence of Article 94(1) of that regulation.
The second plea, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001
15      The applicant claims that the Board of Appeal infringed the obligation to state reasons for the purposes of the first sentence of Article 94(1) of Regulation 2017/1001, in that it did not specify the subcategories of the category ‘food supplements for medical purposes’ with regard to which genuine use of the contested mark had been proved. He submits that, in order to maintain the registration of that mark with regard to the category ‘food supplements for medical purposes’, the proprietor of that mark should have filed evidence in respect of all the subcategories of that category of goods, which was not the case here.
16      EUIPO and the intervener dispute the applicant’s arguments.
17      It must be borne in mind that the obligation to state reasons, an obligation which is incumbent on the Board of Appeal and which stems from, inter alia, the first sentence of Article 94(1) of Regulation 2017/1001, has two purposes: (i) to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and (ii) to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgment of 8 June 2022, Apple v EUIPO – Swatch (THINK DIFFERENT), T‑26/21 to T‑28/21, not published, EU:T:2022:350, paragraph 50 and the case-law cited).
18      The obligation to state reasons is an essential procedural requirement, which must be distinguished from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based (see judgment of 8 June 2022, THINK DIFFERENT, T‑26/21 to T‑28/21, not published, EU:T:2022:350, paragraph 51 and the case-law cited).
19      It must be pointed out that, in paragraphs 44 to 52 of the contested decision, the Board of Appeal provided the reasons on which the contested decision is based as regards the categories of goods in respect of which the registration of that mark was maintained, namely therapeutic creams for joints and food supplements for medical purposes.
20      However, if those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, and not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect. It follows that objections and arguments intended to establish that a contested measure is not well founded are irrelevant in the context of a plea in law alleging an inadequate statement of reasons or a lack of such a statement (see judgment of 8 June 2022, THINK DIFFERENT, T‑26/21 to T‑28/21, not published, EU:T:2022:350, paragraph 51 and the case-law cited).
21      In that regard, it must be stated that the question whether the Board of Appeal correctly defined the category of goods covered by the contested mark with regard to which genuine use of that mark had been proved and whether the intervener should, as the case may be, have provided proof of that genuine use in connection with each of the subcategories of the category ‘food supplements for medical purposes’, does not fall within the scope of the plea alleging infringement of the obligation to state reasons, but within the scope of the plea relating to the substantive legality of the contested decision.
22      Consequently, the applicant’s complaint is irrelevant in the context of the plea alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001 and will therefore be examined in the context of the first plea, alleging infringement of Article 58(1)(a) of that regulation.
23      It follows that the second plea must be rejected.
The first plea, alleging infringement of Article 58(1)(a) of Regulation 2017/1001
24      Article 58(1)(a) of Regulation 2017/1001 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO 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 its non-use.
25      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 those services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgment of 14 September 2022, Privatbrauerei Eichbaum v EUIPO – Anchor Brewing Company (STEAM), T‑609/21, not published, EU:T:2022:563, paragraph 46 and the case-law cited).
26      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 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 judgment of 7 December 2022, Borussia VfL 1900 Mönchengladbach v EUIPO – Neng (Fohlenelf), T‑747/21, not published, EU:T:2022:773, paragraph 31 and the case-law cited).
27      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 (see judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40 and the case-law cited).
28      Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (see judgment of 22 June 2022, Puma v EUIPO – V. Fraas (FRAAS), T‑329/21, not published, EU:T:2022:379, paragraph 26 and the case-law cited).
29      It is in the light of those considerations that the present plea must be examined.
–       The first part, alleging that some of the evidence is inadmissible
30      The applicant complains that the Board of Appeal took into account the intervener’s letter of 21 December 2018, which the Cancellation Division had received on 8 January 2019, even though that letter had been declared inadmissible by EUIPO on 23 January 2019 on account of its having been submitted out of time. He submits that, consequently, the contested decision is based, as regards therapeutic creams for joints and food supplements for medical purposes, on evidence which should not have been taken into account.
31      EUIPO and the intervener dispute the applicant’s arguments.
32      Furthermore, EUIPO contends that such a complaint against the admissibility of evidence, which was not made before the Board of Appeal, does not fall within the subject matter of the present action. In that regard, it must be stated that it is apparent from EUIPO’s case file that the applicant did not put that complaint forward in the statement of grounds for his appeal before the Board of Appeal, although the evidence submitted out of time had been examined by the Cancellation Division. Accordingly, it is first of all necessary to examine whether that complaint is admissible before the Court.
33      It must be borne in mind that the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. Pursuant to Article 95 of that regulation, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal. Furthermore, according to Article 188 of the Rules of Procedure of the General Court, the parties’ pleadings may not change the subject matter of the proceedings before the Board of Appeal (see judgment of 23 September 2020, Polfarmex v EUIPO – Kaminski (SYRENA), T‑677/19, not published, EU:T:2020:424, paragraph 120 and the case-law cited).
34      Consequently, it is necessary to assess whether, in disputing the admissibility of the intervener’s letter of 21 December 2018 for the first time before the Court, the applicant has changed the subject matter of the proceedings which were brought before the Board of Appeal.
35      In that regard, it must be pointed out that, in revocation proceedings based on Article 58(1)(a) of Regulation 2017/1001, it is for the Board of Appeal to assess whether genuine use of the contested mark has been proved by the evidence provided by the proprietor of the mark. Consequently, the complaint relating to the admissibility of the evidence of genuine use of the contested mark does not go beyond the context of the dispute brought before the Board of Appeal. Indeed, the applicant merely calls into question that adjudicating body’s findings and its reasoning in that regard. It follows that the applicant has not changed the subject matter of the proceedings by that complaint and that it is therefore admissible before the Court (see, to that effect, judgment of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 124 and the case-law cited).
36      The first part of the first plea is therefore admissible.
37      As regards the belated submission before the Cancellation Division of the evidence which is disputed by the applicant, it must be pointed out that Article 95(2) of Regulation 2017/1001 provides that EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’.
38      It follows from the wording of Article 95(2) of Regulation 2017/1001 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of that regulation, and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see judgment of 23 November 2022, Zeta Farmaceutici v EUIPO – Specchiasol (EUPHYTOS), T‑515/21, not published, EU:T:2022:722, paragraph 79 and the case-law cited).
39      However, it is also apparent from the wording of Article 95(2) of Regulation 2017/1001 that the fact that a party has submitted or produced facts and evidence out of time does not confer on it an unconditional right to have those facts and that evidence taken into consideration by EUIPO. In stating that EUIPO ‘may’ decide to disregard such evidence, that provision grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take it into account (see judgment of 23 November 2022, EUPHYTOS, T‑515/21, not published, EU:T:2022:722, paragraph 80 and the case-law cited).
40      It is true that, under Regulation 2017/1001, if no proof of genuine use of the mark concerned is submitted within the time limit set by EUIPO, EUIPO must revoke the mark. However, such a conclusion cannot be drawn if evidence of that use has indeed been submitted within that time limit. In that regard, it has been held that it is possible for the proprietor of a contested mark to submit additional evidence outside the time limit set by the department of EUIPO adjudicating on the matter at first instance, if that evidence is not the initial and only proof of use, but rather evidence additional to relevant proof which was submitted within the time limit set (see judgment of 3 October 2019, 6Minutes Media v EUIPO – ad pepper media International (ADPepper), T‑668/18, not published, EU:T:2019:719, paragraph 21 and the case-law cited).
41      In the present case, it is apparent from EUIPO’s case file that most of the evidence was submitted by the intervener on 23 December 2018, that is to say, within the time limit, which expired on the same day. After the expiry of that time limit, the Cancellation Division received, on 8 January 2019, the intervener’s letter containing additional items of evidence.
42      The Cancellation Division justified its decision to take the evidence provided by the intervener on 8 January 2019 into account on the ground that it was additional evidence which was limited in scope and could not change the Cancellation Division’s decision. Furthermore, it stated that the evidence provided within the time limit set was already sufficient to prove genuine use of the contested mark.
43      Consequently, contrary to what the applicant claims, the evidence submitted on 8 January 2019 was not the initial or only evidence of genuine use of the contested mark, but constitutes evidence additional to proof which was submitted within the time limit set. In that regard, it must also be pointed out that the applicant does not dispute the supplementary nature of that evidence.
44      In view of the broad discretion conferred on EUIPO by Article 95(2) of Regulation 2017/1001 and the supplementary nature of the evidence submitted on 8 January 2019, it follows that the Board of Appeal was fully entitled to take that evidence into consideration.
45      The first part of the first plea must therefore be rejected.
–       The second part, alleging that some of the evidence does not have any evidential value and is not authentic
46      The applicant calls into question the authenticity and evidential value of the evidence submitted in Annexes 3, 12 and 15 to the intervener’s letter of 23 December 2018. First, he submits that, contrary to what the Board of Appeal found, the items of evidence concerned are not invoices, but redacted documents, in which English translations have been inserted. Secondly, he claims that the fact that the Board of Appeal found that documents containing different product names, such as Artresan EFEKT or Artresan OPTIMA, constituted sufficient proof of use is contrary to everyday life experiences and commercial practice. According to the applicant, the Board of Appeal thus failed to apply the standard of proof required by Article 58(1)(a) of Regulation 2017/1001.
47      EUIPO and the intervener dispute the applicant’s arguments.
48      As regards the authenticity of the evidence, it must be stated that the applicant confines himself to claiming that Annexes 3, 12 and 15 to the intervener’s letter of 23 December 2018 are an ‘agglomeration of … texts’ freely redacted by the intervener itself and that the fact that the intervener did not request that the Cancellation Division keep those items of evidence confidential indicates that they do not have any evidential value as invoices. In addition, the applicant claims that the Board of Appeal, by treating those annexes as evidence of genuine use of the contested mark, infringed his right to be informed of the content of the evidence submitted.
49      First, it should be noted that the evidential value of evidence is not in any way subject to its confidentiality or, contrary to what the applicant claims, to any lack of confidentiality. Whether or not evidence is confidential has no bearing on whether it contributes towards proving genuine use of the mark on the market concerned.
50      Secondly, since a full copy of the intervener’s letter of 23 December 2018 and of those annexes was duly sent by the Cancellation Division to the applicant by letter of 7 January 2019, the applicant must be regarded as having been informed of the content of that evidence.
51      Thirdly, the applicant has not put forward any justification as regards the ‘redacted’ nature of Annexes 3, 12 and 15 to the intervener’s letter of 23 December 2018. In that regard, it must be stated that, although a party may rely, before the Court, on the existence of evidence which is capable of calling into question the accuracy of the content or the evidential value of evidence which was taken into account by the adjudicating bodies of EUIPO, in such a case the party must explain in detail the reasons why the content of the evidence taken into account by EUIPO does not, in its view, correspond to reality or the reasons why it takes the view that the evidential value of that evidence has not been established (see, to that effect, judgment of 29 September 2021, Univers Agro v EUIPO – Shandong Hengfeng Rubber & Plastic (AGATE), T‑592/20, not published, EU:T:2021:633, paragraph 51). It follows that, in the absence of any other justification on the part of the applicant, that complaint cannot call into question the authenticity or the evidential value of those annexes.
52      As regards the Board of Appeal’s alleged error concerning the taking into account of documents mentioning the contested mark in conjunction with other terms or marks, it must be borne in mind that there is no rule in the EU trade mark system that requires use of a mark on its own, independently of any other mark, to be proved. Two or more trade marks may therefore be used jointly and autonomously without the distinctive character of that mark being altered (see, to that effect, judgment of 26 March 2020, Armani v EUIPO – Asunción (le Sac 11), T‑654/18, not published, EU:T:2020:122, paragraph 59 and the case-law cited).
53      In the present case, in which the contested mark is simply juxtaposed with terms or marks such as ‘optima’ and ‘efekt’, that mark is not used in a form that differs from the form in which it was registered, as a number of signs are used simultaneously without altering the distinctive character of the contested mark. Thus, the contested mark may be used jointly and autonomously with the other terms or marks (see, to that effect, judgment of 18 July 2017, Savant Systems v EUIPO – Savant Group (SAVANT), T‑110/16, not published, EU:T:2017:521, paragraph 32 and the case-law cited).
54      It follows that the presence of the other terms or marks alongside the contested mark is not sufficient to call into question the evidential value of the evidence.
55      It is clear from the foregoing that the second part of the first plea must be rejected.
–       The third part, alleging that the definition of the category of goods covered by the contested mark is incorrect
56      In essence, the applicant submits that the goods marketed by the intervener and the evidence which it submitted do not cover the whole of the category of ‘food supplements for medical purposes’. According to the applicant, the category of ‘food supplements for medical purposes’ is very broad and products to improve the condition of the joints, to which the evidence refers, are merely a subcategory of that category.
57      EUIPO and the intervener dispute the applicant’s arguments. Furthermore, it is apparent from EUIPO’s case file that the applicant did not put that complaint forward in the statement of grounds for the appeal before the Board of Appeal. In those circumstances, EUIPO takes the view that that complaint is inadmissible.
58      First, it is necessary to examine whether that complaint is admissible.
59      In that regard, in the light of the case-law which has been referred to in paragraph 33 above, it is necessary to assess whether, by disputing for the first time before the Court the finding that genuine use of the contested mark has been proved in connection with food supplements for medical purposes, although the evidence related, according to the applicant, only to products to improve the condition of the joints, the applicant has changed the subject matter of the proceedings which were brought before the Board of Appeal.
60      In the present case, it must be pointed out that the dispute before the Board of Appeal consisted of the applicant’s application for revocation of the contested mark owing to that mark not having been put to genuine use pursuant to Article 58(1)(a) of Regulation 2017/1001. In accordance with Article 58(2) of that regulation, if there has been partial use of the contested mark, the rights of the proprietor of that mark are to be declared to be revoked only in respect of the goods concerned. It follows that, in the context of the examination of genuine use of the contested mark, it was for the Board of Appeal to assess whether the contested mark had been put to genuine use in connection with the goods in respect of which it had been registered and, if there was partial use, to identify independent subcategories of goods (see judgment of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 122 and the case-law cited).
61      The fact that the applicant did not dispute the Cancellation Division’s findings in that regard before the Board of Appeal does not, moreover, deprive the applicant of his right to challenge, within the limits of the factual and legal context of the dispute before the Board of Appeal, the findings of that adjudicating body on this point (see judgment of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 123 and the case-law cited).
62      Consequently, it must be held that the complaint which the applicant has put forward before the Court, relating to genuine use of the contested mark in connection with the category of ‘food supplements for medical purposes’ does not go beyond the context of the dispute which was brought before the Board of Appeal. The applicant merely calls into question that adjudicating body’s findings and its reasoning in that regard. It follows that the applicant has not changed the subject matter of the proceedings by that complaint and that it is therefore admissible before the Court (see, to that effect, judgment of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 124 and the case-law cited).
63      Secondly, it is necessary to examine whether the Board of Appeal erred in finding that genuine use of the contested mark had been proved in connection with food supplements for medical purposes, although, according to the applicant, the evidence related only to products to improve the condition of the joints.
64      It must be borne in mind that Article 58(2) of Regulation 2017/1001 provides that, where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor are to be declared to be revoked in respect of those goods or services only.
65      Furthermore, according to the case-law, the provisions of Article 47(2) of Regulation 2017/1001 allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use of the mark has been established (i) are a limitation on the rights which the proprietor of the earlier trade mark gains from his or her registration and (ii) must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his or her range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him or her. The same considerations apply by analogy to the provisions of Article 58(2) of that regulation, relating to partial revocation (see judgment of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 112 and the case-law cited).
66      However, although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of that trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he or she has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. It must, in that regard, be observed that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Accordingly, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (see judgment of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 115 and the case-law cited).
67      Consequently, 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. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category (see judgment of 1 February 2023, Brobet v EUIPO – Efbet Partners (efbet), T‑772/21, not published, EU:T:2023:36, paragraph 59 and the case-law cited).
68      As regards the criteria to be applied with a view to identifying a coherent subcategory of goods or services capable of being viewed independently, it is apparent from the case-law that the criterion of the purpose and intended use of the goods or services at issue is an essential criterion for the purposes of defining an independent subcategory of goods or services (see judgment of 1 February 2023, efbet, T‑772/21, not published, EU:T:2023:36, paragraph 61 and the case-law cited). By contrast, the nature of the goods at issue and their characteristics are not, as such, relevant with regard to the definition of subcategories of goods or services (see judgment of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 116 and the case-law cited).
69      In the light of the case-law cited above, it is important to assess whether products to improve the condition of the joints constitute an independent subcategory in relation to the category ‘food supplements for medical purposes’ so as to link the goods in connection with which genuine use of the mark has, according to the applicant, been proved to the category of goods covered by the registration of that mark (see, by analogy, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 41 and the case-law cited).
70      Accordingly, it is necessary to take into consideration the purpose and intended use of the goods in question. In that regard, it must be pointed out that, according to the Nice Agreement, which has been referred to in paragraph 3 above, food supplements for medical purposes are intended to supplement a normal diet and to improve human health. Similarly, products to improve the condition of the joints are intended to improve human health and, more specifically, the condition of the joints. The fact that the name of the category ‘food supplements for medical purposes’ does not include any specific information regarding the condition of the joints does not mean that they cannot contribute towards, inter alia, improving the condition of the joints, which is part of human health. Consequently, the purpose and intended use of food supplements for medical purposes and of products to improve the condition of the joints are not essentially different.
71      Furthermore, since the aim of the criterion of the purpose and intended use of the goods in question is not to provide an abstract or artificial definition of subcategories of goods, that criterion must be applied coherently and specifically (see, to that effect, judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 50 and the case-law cited).
72      Accordingly, if, as in the present case, the goods, such as food supplements for medical purposes, have several purposes and intended uses, determining whether a separate subcategory of goods exists by considering in isolation each of the purposes that those goods may have will not, contrary to what the applicant claims, be possible. Indeed, such an approach would not enable independent subcategories to be identified coherently and would have the effect of limiting excessively the rights of the proprietor of the mark, inter alia in that his or her legitimate interest in expanding his or her range of goods or services for which his or her trade mark is registered would not sufficiently be taken into consideration (see, to that effect, judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 51 and the case-law cited).
73      Furthermore, contrary to what the applicant claims, it must be borne in mind that food supplements for medical purposes do not constitute a general category, but a subcategory in Class 5 of the Nice Agreement, which has been referred to in paragraph 3 above, a class which includes mainly pharmaceuticals and other preparations for medical or veterinary purposes.
74      In addition, it must be pointed out that the category ‘food supplements for medical purposes’ provides a clear indication of the type of goods in question, namely food supplements, whereas the category of products to improve the condition of the joints does not in any way specify the type of goods in question.
75      Accordingly, it must be held that food supplements for medical purposes constitute in themselves a sufficiently clear category which does not require division into subcategories. Consequently, the Board of Appeal’s finding that genuine use of the contested mark had been proved for the whole of the category ‘food supplements for medical purposes’ is correct.
76      It follows from the foregoing that the third part of the first plea must be rejected and the first plea must therefore be rejected in its entirety.
The second head of claim
77      As regards the applicant’s second head of claim, it must be pointed out that that head of claim formally requests that the Court declare the contested mark to be revoked with regard to the goods ‘therapeutic creams for joints; food supplements for medical purposes’ in Class 5.
78      However, it must be held that that head of claim requests, in essence, that the Court exercise its power to alter decisions for the purposes of Article 72(3) of Regulation 2017/1001 in order to uphold the application for revocation in respect of all the goods and services to which it refers, thus adopting the decision which, according to the applicant, the Board of Appeal should have taken regarding the application for revocation (see, to that effect, judgments of 29 April 2020, Cimpress Schweiz v EUIPO – Impress Media (CIMPRESS), T‑37/19, not published, EU:T:2020:164, paragraph 97, and of 2 December 2020, Monster Energy v EUIPO – Nanjing aisiyou Clothing (Representation of a scratch), T‑35/20, not published, EU:T:2020:579, paragraph 90).
79      Since the pleas put forward in support of the application for annulment have, however, been rejected, the second head of claim must, as a result, be rejected.
80      It follows from all of the foregoing that the action must be dismissed in its entirety.
Costs
81      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
82      Since the applicant has been unsuccessful, he must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, it must, since no hearing has been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Mr Mariusz Trus to bear his own costs and to pay those incurred by Unilab LP;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Schalin
Nõmm
Kukovec
Delivered in open court in Luxembourg on 12 July 2023.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.