JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
6 June 2018 (*)
(EU trade mark — Invalidity proceedings — EU figurative mark SALMEX — Earlier three-dimensional national mark — Competence of the Board of Appeal to examine of its own motion whether the earlier mark had been put to genuine use — Article 64(1) and Article 76(1) of Regulation (EC) No 207/2009 (now Article 71(1) and Article 95(1) of Regulation (EU) 2017/1001))
In Case T‑803/16,
Glaxo Group Ltd, established in Brentford (United Kingdom), represented by S. Baran, T. St Quintin, S. Wickenden, Barristers, E. Morris and R. Jacob, Solicitors,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Celon Pharma S.A., established in Łomianki (Poland), represented by M. Krasiński, lawyer
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 31 August 2016 (Case R 2108/2015-4) relating to invalidity proceedings between Glaxo Group Ltd and Celon Pharma,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis, President, D. Spielmann (Rapporteur) and Z. Csehi, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 15 November 2016,
having regard to the response of EUIPO lodged at the Court Registry on 3 February 2017,
having regard to the response of the intervener lodged at the Court Registry on 1 March 2017,
having regard to the order of 22 February 2017 staying the proceedings,
having regard to the written question put by the Court to EUIPO and its answer to that question lodged at the Court Registry on 12 December 2017,
further to the hearing on 24 January 2018, in which the intervener did not participate,
gives the following
Judgment
Background to the dispute
1        On 29 March 2011, the intervener, Celon Pharma S.A., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (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 following figurative sign:
3        The goods in respect of which registration was sought are in Classes 5 and 10 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 5: ‘Inhalation products used for the treatment of asthma and chronic obstructive pulmonary disease.’
–        Class 10: ‘Inhalers.’
4        The mark was registered on 5 October 2011 under number 9849191.
5        On 4 April 2013, the applicant, Glaxo Group Ltd, filed an application for a declaration of invalidity against the mark at issue under Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read together with Article 8(1)(b) and Article 8(5) thereof (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001).
6        The application for a declaration of invalidity was based on several earlier national marks and, in particular, the following French mark No 97685112, registered on 1 July 1997:
7        The earlier marks were registered for goods in Class 10 for the purposes of the Nice Agreement and correspond to the description ‘inhalers’ and also, for certain goods, described as ‘medical and surgical apparatus and instruments’.
8        At the intervener’s request, the applicant submitted documents to establish the genuine use of its earlier marks.
9        On 7 September 2015, the Cancellation Division upheld the application for a declaration of invalidity filed by the applicant. For reasons of procedural economy, the Cancellation Division examined the application for a declaration of invalidity only in relation to the earlier French mark. It held that the applicant had established that there had been genuine use of that mark as far as inhalers were concerned and that there was a likelihood of confusion between the earlier mark examined and the contested mark.
10      On 20 October 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.
11      By decision of 31 August 2016 (‘the contested decision’) the Fourth Board of Appeal of EUIPO annulled the decision of the Cancellation Division. It examined of its own motion the issue of genuine use of the earlier marks, without putting questions to the parties in that regard, and held that the applicant had not furnished proof of such a use in accordance with Article 57(2) of Regulation No 207/2009 (now Article 64(2) of Regulation 2017/1001). The Board of Appeal stated essentially that the applicant’s goods were marketed by listing the various medicinal substances contained in the inhaler, each time in different colours, and it took the view that none of the forms used were similar to the form of the contested mark. It therefore held that the applicant had failed to establish genuine use of its earlier French mark in the form registered or in another form which did not alter its distinctive character. In addition, the Board of Appeal distinguished between medicinal products in Class 5 and the goods in Class 10, specifically inhalers. According to the contested decision, the applicant, which does not market inhalers without medicinal products, had failed to prove the use of its earlier French mark for the goods for which they were registered, namely inhalers, but only for the respective medicinal products that they contained. Finally, the Board of Appeal held that the applicant had also failed to prove genuine use of the other earlier marks relied on.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs, including those relating to the application for annulment and the appeal.
13      EUIPO contends that the Court should:
–        annul the contested decision;
–        declare that the second head of claim of the applicant is inadmissible in so far as it extends to the order that EUIPO pay the costs incurred in the proceedings before the Cancellation Division.
14      The intervener claims that the Court of First Instance should dismiss the action.
Law
15      In support of its action, the applicant puts forward two pleas in law. By its first plea, it submits that the Board of Appeal wrongly found, on its own initiative, that the genuine use of the earlier French mark was not an acceptable form of use for the purposes of Article 15(1)(a) of Regulation 207/2009 (now Article 18(1)(a) of Regulation 2017/1001). By its second plea, it contests the assessment of the Board of Appeal that its earlier French mark had not been put to genuine use in connection with inhalers.
16      In its observations on whether to hold a hearing, the applicant supports the position of EUIPO that the Board of Appeal lacked competence to examine the question relating to the proof of genuine use.
17      EUIPO, for its part, primarily submits that the issue of the genuine use of the earlier mark is a specific and preliminary question which is outside the scope of the examination of the application for a declaration of invalidity and which, in the strict sense, is based on a likelihood of confusion. It submits that by ruling on the issue of genuine use, even though that issue was not raised before it, the Board of Appeal infringed Article 64(1) of Regulation No 207/2009 (now Article 71(1) of Regulation 2017/1001) and that the Board of Appeal’s lack of competence must be raised of its own motion by the General Court.
18      In the alternative, EUIPO claims that the Court should dismiss the action as regards its substance. According to EUIPO, contrary to the finding of the Board of Appeal, the applicant demonstrated that the earlier marks had been put to use under the form in which they were registered. However, it submits that the Board of Appeal correctly found that the use of the earlier marks had not been proven for the goods covered by those marks, namely inhalers.
19      The intervener makes no observations on the lack of competence of the Board of Appeal. As regards the substance, it submits that it has not been shown that the earlier marks were put to use under the form in which they were registered and that the evidence of that use has not been adduced for inhalers.
20      First of all, the Court points out that, in actions concerning a European Union trade mark, brought against a decision of a Board of Appeal, nothing precludes EUIPO from endorsing the heads of claim of the applicant, while putting forward all the arguments that it considers appropriate, in performance of its task relating to the administration of European Union trade mark law and the functional independence which the Boards of Appeal are granted in the exercise of their duties (judgments of 30 June 2004, GE Betz v OHIM — Atofina Chemicals (BIOMATE), T‑107/02, EU:T:2004:196, paragraphs 32 to 36, and of 17 March 2009, Laytoncrest v OHIM — Erico (TRENTON), T‑171/06, EU:T:2009:70, paragraph 27).
21      In the present case, the form of order sought by EUIPO, as that of the applicant, seeks the annulment of the contested decision. Furthermore, even if, contrary to EUIPO, the applicant has not raised in its application the lack of competence of the Board of Appeal to rule as it did, the plea raised by EUIPO alleging the lack of competence of the Board of Appeal is a matter of public policy and must be raised by the Court of its own motion (see, to that effect, judgment of 29 February 2012, Certmedica International and Lehning entreprise v OHIM — Lehning entreprise and Certmedica International (L 112), T‑77/10 and T‑78/10, not published, EU:T:2012:95, paragraph 91).
22      Accordingly, it should be determined whether the Board of Appeal was competent, in this case, to rule on the genuine use of the earlier mark.
23      Under Article 64(1) of Regulation 207/2009, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal and may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.
24      Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001) provides that, during proceedings, EUIPO is to examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.
25      It should be noted that an application for a declaration of invalidity based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 does not necessarily bring the issue of genuine use of the earlier mark before EUIPO. Genuine use is a preliminary issue which leads to a determination of whether, for the purposes of the examination of the application for a declaration of invalidity, the earlier trade mark can be deemed to be registered in respect of the goods or services in question. It is therefore outside the scope of the examination of the application for a declaration of invalidity in the strict sense, based on a likelihood of confusion with that mark (see, to that effect, and by analogy, judgment of 13 September 2010, Inditex v OHIM — Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraphs 30, 31 and 33).
26      The request for proof of genuine use of the earlier mark adds that preliminary issue to the invalidity proceedings and in that sense changes their content, in so far as it constitutes a new, specific claim linked to factual and legal considerations which are separate from those which gave rise to the opposition to the application for a declaration of invalidity (see, to that effect, judgments of 13 September 2010, OFTEN, T‑292/08, EU:T:2010:399, paragraph 32, and of 8 March 2013, MayerNaman v OHIM — Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraphs 35 and 36).
27      It follows that the Board of Appeal can examine the issue of genuine use of the earlier mark only if a party raises it specifically before it (see, to that effect, judgment of 24 September 2015, Rintisch v OHIM — Compagnie laitière européenne (PROTICURD), T‑382/14, not published, EU:T:2015:686, paragraph 24 and the case-law cited). In other words, when the issue of genuine use of the earlier mark is not specifically raised before the Board of Appeal, it must be considered as not being part of the subject matter of the proceedings before the Board of Appeal (see, to that effect, judgment of 12 March 2014, El Corte Inglés v OHIM — Technisynthese (BTS), T‑592/10, not published in the ECR, EU:T:2014:117, paragraph 21).
28      In the present case, the issue of genuine use of the earlier marks was raised by the intervener before the Cancellation Division and was examined by the latter before it made an assessment of the merits of the application for a declaration of invalidity.
29      However, it is apparent from the case-file that the issue was not raised by the parties before the Board of Appeal; the intervener merely disputed the assessment of the Cancellation Division relating to the existence of a likelihood of confusion and the applicant did not have a legal interest in challenging the assessment of the Cancellation Division which was favourable to it.
30      Therefore, the issue of the genuine use of the earlier marks was not debated in any way by the parties before the Board of Appeal. It therefore made a ruling of its own motion on that issue. Furthermore, it did not afford the parties the opportunity to state their views in that respect since it is apparent from the case-file that it did not ask them questions on that issue.
31      Since, in the present case, the issue of the genuine use of the earlier marks had not been raised before the Board of Appeal, according to case-law referred to at paragraph 27 above, it did not have competence to make a ruling of its own motion on that issue, as it was no longer the subject matter of the proceedings.
32      Such a finding is not contrary to the principle of continuity in terms of functions between the various divisions of EUIPO, as stated in the case-law of the Court of Justice and the General Court. If that continuity in terms of functions implies a re-examination of the case by the Board of Appeal, it does not in any way imply an examination by the Board of Appeal of a case which is different from the one submitted to the Cancellation Division, namely a case whose scope would have been extended by the addition of the preliminary issue of the genuine use of the earlier mark (see, by analogy, judgments of 18 October 2007, AMS v OHIM — American Medical Systems (AMS Advanced MedicalServices), T‑425/03, EU:T:2007:311, paragraph 113, and of 8 March 2013, David Mayer, T‑498/10, not published, EU:T:2013:117, paragraph 36).
33      In light of the foregoing, the contested decision must be annulled in its entirety and it is not necessary to rule on the pleas in law raised by the applicant seeking to challenge the Board of Appeal’s assessment of the genuine use of the earlier marks.
Costs
34      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.
35      Since EUIPO has been unsuccessful, in so far as the contested decision is annulled, it must be ordered to bear its own costs as well as those of the applicant incurred in the course of the proceedings before the General Court, in accordance with the applicant’s claims, notwithstanding EUIPO’s claim that the action be upheld.
36      Since the intervener has been unsuccessful, it must bear its own costs relating to the proceedings before the General Court.
37      In addition, in so far as the applicant has also applied for costs incurred in the course of the proceedings before EUIPO, it should 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.
38      Consequently, the applicant’s claim regarding the costs relating to the proceedings before the Cancellation Division, which do not constitute recoverable costs, is inadmissible.
39      With regard to the applicant’s claim relating to the costs of the proceedings before the Board of Appeal, it will be for the Board of Appeal to decide, in the light of the present judgment, on the costs relating to those proceedings (see, by analogy, judgment of 5 December 2012, Consorzio vino Chianti Classico v OHIM — FFR (F.F.R.), T‑143/11, not published, EU:T:2012:645 paragraph 74).
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 August 2016 (Case R 2108/2015-4);
2.      Orders EUIPO to bear its own costs and those incurred by Glaxo Group Ltd during the proceedings before the General Court;
3.      Orders Celon Pharma S.A. to bear its own costs relating to the proceedings before the General Court.
Berardis
Spielmann
Csehi
Delivered in open court in Luxembourg on 6 June 2018.
E. Coulon
G. Berardis
Registrar
President
*      Language of the case: English.