JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
12 January 2022 (*)
(EU trade mark – Revocation proceedings – Word mark APIRETAL – Declaration of revocation – No genuine use – No proper reasons for non-use – Article 58(1)(a) of Regulation (EU) 2017/1001)
In Case T‑160/21,
Laboratorios Ern, SA, established in Barcelona (Spain), represented by T. González Martínez, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ingrid Malpricht, residing in Ludwigshafen am Rhein (Germany), represented by M.‑C. Simon, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 January 2021 (Case R 1004/2020‑4), relating to revocation proceedings between Ms Malpricht and Laboratorios Ern,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli (Rapporteur), President, S. Frimodt Nielsen and C. Iliopoulos, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 March 2021,
having regard to EUIPO’s response lodged at the Court Registry on 15 June 2021,
having regard to the intervener’s response lodged at the Court Registry on 14 June 2021,
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 3 January 2006, the applicant, Laboratorios Ern, SA, 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        The mark in respect of which registration was sought, at issue in the present case, is the word sign APIRETAL.
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 and veterinary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; mouthwashes for medical purposes; material for stopping teeth, dental wax; disinfectants for medical purposes; preparations for destroying vermin; fungicides, herbicides’.
4        On 29 November 2017, the intervener, Ms Ingrid Malpricht, filed an application for revocation of the mark at issue on the basis of Article 58(1)(a) of Regulation 2017/1001 for all the goods in respect of which that mark was registered with the exception of pharmaceutical preparations, on the ground that that mark had not been put to genuine use in connection with the goods in question within a continuous period of five years preceding the date of that application.
5        By decision of 20 March 2020, the Cancellation Division upheld the application for revocation and revoked the applicant’s rights in respect of the mark at issue for all the goods in question, on the ground that no evidence of use had been submitted in respect of those goods and that no valid reason for non-use had been provided.
6        On 20 May 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision.
7        By decision of 20 January 2021, the Fourth Board of Appeal of EUIPO dismissed the appeal (‘the contested decision’). In particular, first, it rejected the applicant’s argument that the evidence produced before the Cancellation Division was relevant to all the goods in question, since it related exclusively to use of the mark at issue for pharmaceutical preparations for human use. Next, it found that the applicant had not shown that there were proper reasons for non-use of that mark. According to the Board of Appeal, legal restrictions did not constitute an obstacle to use of that mark for the goods in question which would justify the non-use of that mark for those goods. It therefore concluded that the applicant had not proved use of the mark at issue to the requisite standard and confirmed the revocation of that mark in respect of those goods from the filing date of the application for revocation.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        annul the Cancellation Division’s decision;
–        order EUIPO and the intervener to pay the costs.
9        EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
10      In view of the date on which the application for revocation was filed, namely 29 November 2017, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation 2017/1001 (see, by analogy, judgment of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraphs 3 and 25).
11      The applicant relies, in essence, on a single plea in law, alleging infringement of Article 58(1)(a) of Regulation 2017/1001, according to which the rights of the proprietor of the EU trade mark are to be declared to be revoked 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 was registered, and there are no proper reasons for non-use. That plea is divided into two parts, alleging, first, that the Board of Appeal erred in its interpretation of the concept of genuine use of an EU trade mark and, secondly, that the Board of Appeal erred in its assessment of the proper reasons for non-use relied on.
The first part, alleging that the Board of Appeal erred in its interpretation of the concept of genuine use
12      The applicant submits that the concept of genuine use contained in Article 58(1)(a) of Regulation 2017/1001 must be interpreted in the same way as that contained in Article 47(2) of that regulation.
13      According to the applicant, the use and reputation of the mark at issue for pharmaceutical preparations are sufficient for that mark to be regarded as also having been used in connection with the other goods in respect of which it was registered. Those other goods, it is argued, which are also in Class 5, have the same purpose as pharmaceutical preparations, namely to protect or cure humans and animals of diseases, with which they constitute a sufficiently restricted category, which cannot be divided other than in an arbitrary manner. Therefore, proof of genuine use of the mark at issue in connection with some of the goods in that category is sufficient for the application for revocation to be dismissed.
14      Furthermore, according to the applicant, the fact that it has used the mark at issue in connection with only some of the goods in Class 5 does not rule out future use for all the goods covered by that mark which are in Class 5, as has been the case with other marks owned by the applicant.
15      EUIPO and the intervener dispute those arguments.
16      In that regard, it should be borne in mind that the ratio legis of the requirement that a mark must have been put to genuine use in order to be protected under EU law is that EUIPO’s register cannot be regarded as a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 20 and the case-law cited).
17      An EU trade mark which is not used could obstruct competition by limiting the range of signs which can be registered as trade marks by others and by denying competitors the opportunity to use that trade mark or a similar one when putting onto the internal market goods or services which are identical or similar to those covered by the mark in question. Consequently, non-use of an EU trade mark also risks restricting the free movement of goods and services (see judgment of 13 April 2016, Facchinello v EUIPO – Olimpia Splendid (Synthesis), T‑81/15, not published, EU:T:2016:215, paragraph 36 and the case-law cited).
18      It is apparent from settled case-law that 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 (judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
19      In order to examine, in a particular case, whether a trade mark has been put to genuine use, an overall assessment of the evidence in the file must be carried out, taking into account all the relevant factors of the particular case. That assessment must have regard 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 (judgments of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37, and of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 29).
20      As regards, more specifically, the pharmaceutical sector, it has been held, first, 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, and, secondly, that the purpose and intended use of a therapeutic product are expressed in its therapeutic indication (judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraphs 29 and 30).
21      In addition, genuine use of a mark cannot be proved by means of probabilities or suppositions, 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 7 July 2016, Fruit of the Loom v EUIPO – Takko (FRUIT), T‑431/15, not published, EU:T:2016:395, paragraph 24 and the case-law cited).
22      It is in the light of those considerations that the applicant’s arguments under the first part must be examined.
23      At the outset, it should be noted that, as EUIPO correctly states, the applicant does not dispute that the evidence which it provided related only to use of the mark at issue in connection with a pharmaceutical product for human use, namely a paediatric antipyretic and analgesic. That evidence did not therefore relate to any of the goods covered by the application for revocation, namely veterinary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, mouthwashes for medical purposes, materials for stopping teeth, dental wax, disinfectants for medical purposes, preparations for destroying vermin, fungicides and herbicides.
24      First, some of the goods covered by the application for revocation do not appear such as to belong to the pharmaceutical preparations category. Secondly, and in any event, although some of the goods covered by the application for revocation may have similar attributes to pharmaceutical preparations in that they are intended to protect or cure humans or animals, they have a very wide and diversified range of defining characteristics. Thus, some are specifically intended for animals, others are dietetic substances, products intended for the physical treatment of wounds, products specifically intended for the treatment of a range of oral pathologies, disinfectants or products intended to destroy vermin, unwanted fungi or plants. It follows that their therapeutic indications or, at the very least, their purpose and intended use are substantially different, and that they form sufficiently autonomous categories, thus justifying the requirement of proof for each product protected in accordance with the case-law referred to in paragraph 19 above. Thus, contrary to what the applicant states, relying on the judgment of 16 July 2020, ACTC v EUIPO
(C‑714/18 P, EU:C:2020:573), the goods covered by the application for revocation are not defined so precisely and narrowly that it is not possible to make any significant subdivisions between their purposes, nor do they constitute conceivable variations of pharmaceutical preparations. Accordingly, the applicant is not justified in claiming that, as regards the requirement of proof of genuine use, the goods covered by the application for revocation form, together with pharmaceutical preparations, a homogeneous category of goods which cannot be divided other than in an arbitrary manner, and that proving genuine use of one pharmaceutical product may suffice to prove use of the mark at issue in connection with all the goods covered by the application for revocation.
25      Furthermore, it should be pointed out that the applicant’s argument as to the potential future use of the mark at issue in connection with the goods covered by the application for revocation is irrelevant to the present dispute, since genuine use of a mark in connection with a certain type of goods cannot be proved by the probability of future use, as set out in the case-law referred to in paragraph 21 above.
26      It follows from all of those considerations that the applicant has not proved genuine use of the mark at issue in connection with any of the goods covered by the application for revocation. The Board of Appeal was therefore right to reject the applicant’s argument, repeated in the present action, that the evidence relating to a single product in respect of which the mark at issue is registered is sufficient to prove genuine use of that mark in connection with all the other goods in the same class, namely Class 5, in respect of which revocation of that mark was sought.
27      The first part of the single plea in law must therefore be rejected.
The second part, alleging that the Board of Appeal erred in its assessment of the proper reasons for non-use
28      The applicant submits that there are legal reasons independent of its will which justify non-use in respect of the goods covered by the application for revocation, which stem from the numerous regulations to which the goods covered by the mark at issue are subject on account of the fact that they directly affect human and animal health. According to the applicant, the name of goods in Class 5 must comply with specific guidelines relating to the protection of human or animal health. In particular, it states that the marketing, under that mark, of a product in Class 5 other than a pharmaceutical product was refused by the competent Spanish authorities since there was already marketing authorisation for a medicinal product for human use with the same name.
29      EUIPO and the intervener dispute those arguments.
30      It is clear from case-law that, in order to be regarded as proper reasons, obstacles to the use of a mark must satisfy two cumulative conditions, namely, first, they must have a sufficiently direct relationship with a trade mark, making its use impossible or unreasonable, and, secondly, they must arise independently of the will of the proprietor of that mark (see judgment of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 96 and the case-law cited).
31      Furthermore, the concept of proper reasons must not be interpreted broadly, in order to ensure that registered trade marks are actually used and, if not used, are revoked (see, by analogy, judgment of 14 June 2007, Häupl, C‑246/05, EU:C:2007:340, paragraph 51).
32      In essence, the applicant claims that Spanish law prohibits it from using the mark at issue in connection with goods such as those covered by the application for revocation, since it has already marketed a pharmaceutical product under that mark. However, in accordance with case-law, the mere fact that an obstacle to the use of a trade mark exists, such as the requirement to comply with legislation in order to market the goods covered by that mark, does not suffice to justify the non-use of that mark (see, to that effect, judgment 8 June 2017, Kaane American International Tobacco v EUIPO – Global Tobacco (GOLD MOUNT), T‑294/16, not published, EU:T:2017:382, paragraph 42). More specifically, as the Board of Appeal correctly submits, complying with legislation is within the trade mark proprietor’s sphere of influence and responsibility, and does not constitute an obstacle independent of its will. It is clear that any commercial activity must be carried out in accordance with specific legislation. The applicant cannot therefore invoke the existence of a specific regulatory framework, the purpose of which is to protect consumers, in order to justify the non-use of a trade mark which it has consciously registered for a wide range of goods.
33      In that regard, it should also be noted that there is nothing in the file to support the conclusion that the applicant has taken steps to attempt to market, under the mark at issue, the goods covered by the application for revocation, either as pharmaceutical products or, as the case may be, by ceasing to market its pharmaceutical product. Furthermore, the applicant has not shown that there was any obstacle to use of that mark in connection with the goods covered by the application for revocation in Member States of the European Union other than the Kingdom of Spain. It refers only to Spanish legislation without proving that the prohibition on marketing applies to the entire territory of the European Union or even to that of other Member States in view of the applicable regulations and the potential marketing of its pharmaceutical product in those States.
34      Consequently, the conditions defined by case-law concerning the concept of proper reasons for non-use are not satisfied in the present case.
35      It follows that, contrary to the applicant’s claim, the Board of Appeal did not err in its assessment of the reasons for non-use relied on. The second part of the single plea in law must therefore be rejected.
36      In the light of all the foregoing considerations, the single plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
37      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.
38      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Laboratorios Ern, SA to pay the costs.
Marcoulli
Frimodt Nielsen
Iliopoulos
Delivered in open court in Luxembourg on 12 January 2022.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.