JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
16 May 2013 (*)
(Community trade mark – Revocation proceedings – Community word mark ALARIS – Genuine use of the mark – Article 51(1)(a) and (2) of Regulation (EC) No 207/2009)
In Case T‑353/12,
Aleris Holding AB, established in Stockholm (Sweden), represented by A. Kylhammar and K. Westerberg, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Carefusion 303, Inc., established in San Diego, California (United States),
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 11 May 2012 (Case R 334/2011-5) relating to revocation proceedings between Aleris Holding AB and Carefusion 303, Inc.,
THE GENERAL COURT (Fifth Chamber),
composed of S. Papasavvas (Rapporteur), President, V. Vadapalas and K. O’Higgins, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 6 August 2012,
having regard to the response lodged at the Court Registry on 22 November 2012,
having regard to the decision of 21 January 2013 refusing to authorise the lodging of a reply,
in the absence of a request to fix a hearing submitted by the parties within a period of one month from notification of closure of the written procedure, and having therefore decided, upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to rule without an oral procedure,
gives the following
Judgment
1        On 16 June 1997, ALARIS Medical Systems Inc., now Carefusion 303, Inc., filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 Community trade mark (OJ 2009 L 78, p. 1)).
2        The trade mark for which registration was sought was the word mark ALARIS.
3        The goods and services for which registration was sought fall within Classes 10, 37 and 42 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, in relation to each of those classes, to the following description:
–        Class 10: ‘Medical instruments and equipment, namely: infusion pumps and controllers, including volumetric infusion pumps, syringe pumps, programmable infusion pumps, programmable syringe pumps; clinical vital signs measurement instruments, namely, thermometers for medical use, disposable thermometer covers, blood pressure measurement instruments, pulse rate measurement instruments, blood pressure cuffs, pulse oximetry systems, respiration measurement instruments, and ecg instruments; medical fluid administration sets for the delivery of medical fluids, including drug delivery tubing clamps, flow control devices, drug infusion connectors, adapters, injection sites, needleless connectors, needleless ports, needleless injection sites, and medical valves; medical devices for the delivery of medical fluids, including drug delivery tubing, clamps, flow control devices, drug infusion connectors, adapters, injection sites, needleless connectors, needleless ports, needleless injection sites, and medical valves; patient care management systems; intravenous fluid containers, alarms, rate meters; sphygmomanometers; enteric infusion pumps and bags therefor; medical device stands, transport systems and medical equipment hanger devices; gastrointestinal feeding tubes; needle catheter jejunostomy kits; multiple specimen holders for medical use; cold and hot packs for chemically producing and absorbing heat for use in medical treatment and therapy in International Class 10’;
–        Class 37: ‘Service and repair of medical instruments, equipment and accessories in international Class 37’;
–        Class 42: ‘Leasing and rental of medical instruments, equipment, and accessories in international Class 42’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 57/1998 of 3 August 1998.
5        The Community trade mark was registered on 3 July 2001 under number 571521.
6        On 24 November 2008, the applicant, Aleris Holding AB, filed a request for revocation of that mark on the basis of Article 50(1)(a) of Regulation No 40/94 (now Article 51(1)(a) of Regulation No 207/2009).
7        By decision of 9 December 2010, the Cancellation Division rejected the request for revocation in relation to the goods in Class 10 and in respect of the services in Class 37 and granted it for the services in Class 42.
8        On 4 February 2011, the applicant filed a notice of appeal with OHIM, seeking annulment of that decision and requesting revocation of the mark at issue in respect of the goods in Class 10, except for volumetric infusion pumps and syringe pumps, and in respect of the services in Class 37.
9        By decision of 11 May 2012 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed that appeal. In essence, the Board of Appeal considered that the evidence submitted by Carefusion 303 showed that the mark in question had been the subject of genuine use in the European Union during the relevant period in relation to the goods in Class 10 and the services in Class 37.
Form of order sought by the parties
10      The applicant claims that the Court should:
–        annul the contested decision and section 2 of the decision of the Cancellation Division;
–        order OHIM to pay the costs, including those incurred in the proceedings before the Cancellation Division and the Board of Appeal.
11      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Consideration of the application for annulment of the contested decision
12      In support of its action, the applicant relies, in essence, on two pleas in law alleging, first, infringement of Article 51(1)(a) and (2) of Regulation No 207/2009, in respect of goods in Class 10 and, second, Article 51(1)(a) of that regulation, in respect of services in Class 37.
The first plea in law, alleging infringement of Article 51(1)(a) and (2) of Regulation No 207/2009, in respect of the goods in Class 10
13      First, the applicant claims that the genuine use of ‘controllers’ has not been expressly proved and, furthermore, that it never acknowledged the existence of such use. Second, it argues that the Board of Appeal arbitrarily bundled all the goods falling within Class 10 into a single category and, by so doing, adopted reasoning which extended the protection conferred by registration of the Community trade mark to goods in respect of which genuine use had not been proved.
14      OHIM asserts, first, that, while it is true that the use of ‘controllers’ as such has not been proved, the Board of Appeal did use that term in order to define the disposable thermometers and thermometers the genuine use of which has incontestably been proved. Second, it maintains that it was not necessary to establish other sub-categories within the principal category ‘instruments and medical equipment’ because the products covered by the mark in question, forming the sub-category ‘infusion pumps and controllers’, were homogeneous in nature and had the same or an analogous intended use.
15      In that regard, it should be recalled that Article 51(1)(a) of Regulation No 207/2009 provides, in essence, that the rights of a proprietor of a Community trade mark are to be declared revoked, on application to OHIM, 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.
16      There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, Case C‑40/01 Ansul [2003] ECR I‑2439, paragraph 43). In addition, the condition of genuine use of the mark requires that that mark, as protected on the relevant territory, be used publicly and externally (judgment of the General Court of 10 September 2008 in Case T‑325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 29; see also, by analogy, Ansul, paragraph 37).
17      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 in order to maintain or create 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 CAPIO, paragraph 30 and case-law cited; see, by analogy, Ansul, paragraph 43).
18      Moreover, pursuant to the case-law, 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 sub-categories 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, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (Case T‑126/03 Reckitt Benckiser (España) v OHIM – Aladin (ALADIN) [2005] ECR II‑2861, paragraph 45, and Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 23).
19      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 the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he 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. In that regard, it should 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. Consequently, 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 sub-categories (ALADIN, paragraph 46).
20      As a preliminary point, it should be noted that the case-law cited in paragraphs 18 and 19 is applicable to revocation proceedings where the cause of the revocation relied upon is, on the basis of Article 51(1)(a) and (2) of Regulation No 207/2009, the absence of genuine use of part of the goods or services for which the mark was registered.
21      In the present case, it must be held that, while the Board of Appeal considered, correctly, that the category ‘instruments and medical equipment’ formed a category sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, it however considered that all of the goods covered by the mark at issue had the same nature and purpose and, consequently, identified only one single sub-category entitled ‘infusion pumps and controllers’ within the principal category ‘instruments and medical equipment’. Although the contested decision provides for bundling in various forms of the products covered by the mark at issue, the reasoning adopted by the Board of Appeal leads it to accept the existence of only one single sub-category, based on its understanding that those products are intrinsically related because they are necessarily used in conjunction with each other.
22      It should be observed that, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers do employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a sub-category of goods or services (RESPICUR, paragraph 29).
23      It must be held that the Board of Appeal did not correctly apply those case-law criteria when it bundled, within the same sub-category, goods which were admittedly complementary but the intended uses of which differed. First, in paragraph 30 of the contested decision, the Board of Appeal proceeded on the basis inter alia of the nature of the products in question to justify their re-bundling within the same sub-category even though such a criterion does not feature among the case-law criteria which would allow the formation of sub-categories. Second, the Board of Appeal considered, wrongly, in paragraph 30 of that decision, that the goods at issue were all used by anaesthesiologists and by professionals in the intensive care and palliative care units of clinics and hospitals. In so doing, the Board of Appeal, as claimed by the applicant, extended the protection conferred by the proof of genuine use of a part of the goods in respect of which the mark was registered beyond that provided not only by Regulation No 207/2009 but also by the case-law referred to in paragraph 18 above.
24      In the present case, the Board of Appeal thus wrongly found that the category of ‘instruments and medical equipment’ contained only one single sub-category entitled ‘infusion pumps and controllers’. However, according to the criterion concerning the intended use of the goods, it must be held that it was correct, in paragraph 26 of the contested decision, to uphold the decision of the Cancellation Division in so far as it extended the proof of genuine use of infusion systems, syringe pumps and volumetric pumps to ‘controllers’. In that regard, it should be noted, first, that, contrary to what is contended by OHIM, the Board of Appeal did not use the term ‘controllers’ to define disposable thermometers and thermometers but did use it concerning infusion systems, syringe pumps and volumetric pumps and, second, that the applicant does not contest that genuine use has been proved in relation to infusion systems, syringe pumps and volumetric pumps. Consequently, the protection conferred by the Community trade mark must extend to the whole sub-category ‘infusion pumps and controllers’ in so far as it includes goods which have the same intended use and, in particular, ‘controllers’.
25      In those circumstances, the Board of Appeal was correct not to declare the rights of the proprietor of the Community trade mark at issue revoked in respect of ‘controllers’.
26      In addition, with regard to the other products covered by that mark, it must be noted that the applicant does not contest that genuine use of disposable thermometers and thermometers has been proved, as found by the Board of Appeal in the contested decision. Thus, genuine use must be considered as established for those goods.
27      By contrast, according to both the contested decision and OHIM’s response, genuine use has not been proved for the other goods covered by the mark in question falling within Class 10. Consequently, the Board of Appeal was wrong not to revoke the rights of the proprietor of the Community trade mark in respect of those goods.
28      It follows that the contested decision must be annulled in so far as it found that proof of genuine use was established in relation to goods covered by the mark in question falling within Class 10 other than those referred to in paragraphs 24 to 26 above.
The second plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009 in respect of the services in Class 37
29      First, the applicant claims that the Board of Appeal found that a single invoice was sufficient evidence to prove that the services in question were actually offered.
30      OHIM challenges that proposition.
31      In that regard, according to paragraph 22 of the contested decision, the Board of Appeal reached its finding that there had been genuine use of the services at issue after noting that those services were offered on the internet and after considering that the invoice provided by Carefusion 303 confirmed that they were being performed. It also took into account the fact that, for the type of goods concerned, service and repair were not frequently used because most of the repairs were done when the goods were still under warranty, relying in that regard on the Carefusion 303 repair invoices of 2002, 2004, 2005, 2006 and 2007 issued in the United Kingdom. Thus, the argument that the Board of Appeal found that a single invoice was sufficient proof of the actual offer of services is factually incorrect and must be rejected.
32      Second, the applicant claims that the evidence taken into account by the Board of Appeal, such as that referred to in the previous paragraph, does not make it possible to establish sufficient use of the mark with regard to the services falling within Class 37.
33      OHIM challenges that proposition.
34      As to the extent of the use to which the earlier trade 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 (Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraph 41, and Case T‑334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 35).
35      To examine, in a particular case, whether an earlier trade mark has been put to genuine use, a global assessment must be undertaken taking into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (VITAFRUIT, paragraph 42).
36      In addition, the turnover and the volume of sales of goods or services under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to qualify as genuine, on condition that it is deemed to be 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 (VITAFRUIT, paragraph 42, and HIPOVITON, paragraph 36; see, by way of analogy, the order of the Court of Justice of 27 January 2004 in Case C‑259/02 La Mer Technology [2004] ECR I‑1159, paragraph 21).
37      Moreover, it is not possible to prescribe a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use was genuine or not. In consequence, a de minimis rule, which would not allow OHIM – or, on appeal, the General Court – to appraise all the circumstances of the dispute before it, cannot be laid down. Thus, when it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use (Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 72).
38      In addition, 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 (Case T‑39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II‑5233, paragraph 47, and Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 28).
39      The applicant claims that the market for medical services is widely diversified and that, in those circumstances, nothing justifies limited use. It also disputes the Board of Appeal’s argument that, taking into account the nature of the goods concerned, service and repair is not a frequently used service since most of the repairs are carried out while the product is under warranty. The applicant considers that such arguments do not take into consideration the secondary market purchasers of such goods, who also require the service and repair services but are not covered by the warranty offered by the proprietor of the mark.
40      However, the applicant fails to adduce any evidence which would substantiate its claims. Thus, it does not explain how the evidence submitted by Carefusion 303 and accepted by the Cancellation Division and then by the Board of Appeal establishes only limited use of the services at issue in the light of the aforementioned case-law requirements. In addition, it does not put forward any evidence regarding the wider diversification of the market in medical services and the secondary market purchasers to which it refers.
41      In addition, the applicant does not contest the probative character of the evidence submitted by Carefusion 303 to the Board of Appeal. In that regard, it should be noted that, in order to establish genuine use of the mark at issue, Carefusion 303 submitted print-outs from an internet site proposing technical support for users of the mark ALARIS plus a written statement from the chairman (international, sales and marketing) of its parent company, annexed to which were various repair invoices issued in the United Kingdom during the relevant period which runs from 24 November 2003 to 24 November 2008, the date on which the applicant lodged its application for revocation. That evidence, which shows inter alia very regular use of the trade mark in relation to the services in question, was sufficient to enable the Board of Appeal to consider that the genuine use of those services was proved in relation to the relevant period. Accordingly, the second plea in law must be rejected.
42      It follows from the foregoing that the contested decision must be annulled in so far as it rejects the application for revocation in relation to the products covered by the Community trade mark falling within Class 10 other than those belonging to the sub-categories referred to in paragraphs 24 to 26 above. The remainder of the annulment claim must be rejected.
Consideration of the application seeking alteration of the contested decision
43      In the present case, the applicant also seeks annulment of section 2 of the decision of the Cancellation Division. The purpose of that application is to have the General Court adopt the decision which, according to the applicant, the Board of Appeal should have adopted as a matter of law when the appeal lodged with OHIM was brought before it. Under the second sentence of Article 64(1) of Regulation No 207/2009, the Board of Appeal may annul the decision of the section of OHIM which ruled at first instance. Such annulment therefore falls within the measures which may be taken by the General Court in the exercise of its power to alter decisions, as provided for in Article 65(3) of Regulation No 207/94 (see, to that effect, in relation to an application that a case be referred back to the examiner, the judgment in Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑743, paragraph 19, upheld by the order of the Court of Justice in Case C‑150/02 P Streamserve v OHIM [2004] ECR I‑1461).
44      However, it must be recalled that the power to alter decisions does not have the effect of conferring on the General Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that 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 General Court, after reviewing the assessment made by the Board of Appeal, 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 (Case C‑263/09 P Edwin v OHIM [2011] ECR I‑0000, paragraph 72).
45      In that regard, according to paragraph 23 above, the Board of Appeal erred, in its analysis of the question of the genuine use of the products in question, by not identifying, within the category of ‘instruments and medical equipment’, various sub-categories capable of being viewed independently.
46      In those circumstances, it is not for the Court to carry out that analysis in the context of the examination of the application brought by the applicant seeking alteration of the contested decision.
47      That application must therefore be dismissed.
Costs
48      Under Article 87(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the Court may order that the costs be shared or that each party bear its own costs.
49      In the light of those considerations, the parties must be ordered to bear their own costs.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 11 May 2002 (Case R 334/2011-5) in so far as it rejects the application for revocation of the trade mark ALARIS in respect of the goods falling within Class 10 other than infusion systems, syringe pumps, volumetric pumps, controllers, thermometers and disposable thermometers;
2.      Dismisses the action as to the remainder;
3.      Orders each party to bear its own costs.
Papasavvas
Vadapalas
O’Higgins
Delivered in open court in Luxembourg on 16 May 2013.
[Signatures]
* Language of the case: English.