JUDGMENT OF THE GENERAL COURT (Third Chamber)
6 October 2021 (*)
(EU trade mark – Revocation proceedings – EU word mark JUVEDERM – Genuine use of the mark – Use in connection with the goods in respect of which the mark is registered – Use with the consent of the proprietor – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001))
In Case T‑372/20,
Dermavita Company S.a.r.l., established in Beirut (Lebanon), represented by D. Todorov, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by K. Zajfert, J. Crespo Carrillo and V.J. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Allergan Holdings France SAS, established in Courbevoie (France), represented by J. Day, Solicitor, and T. de Haan, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 14 April 2020 (Case R 877/2019-4), relating to revocation proceedings between Dermavita Company and Allergan Holdings France,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, V. Kreuschitz and Z. Csehi (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 15 June 2020,
having regard to the response of EUIPO lodged at the Court Registry on 3 September 2020,
having regard to the response of the intervener lodged at the Court Registry on 2 September 2020,
having regard to the Court’s written questions to the parties and their replies to those questions lodged at the Court Registry on 30 March, 2 and 5 April 2021,
further to the hearing on 1 June 2021,
gives the following
Judgment
Background to the dispute
1        On 18 April 2001, Allergan Inc., the predecessor in law to the intervener, Allergan Holdings France SAS, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign JUVEDERM.
3        The goods in respect of which registration was sought are in Class 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 to the following description: ‘Medical and surgical apparatus and instruments, dermal implants, biocompatible substances for medical purposes for reducing wrinkles, artificial skin for surgical purposes, prostheses’.
4        The EU trade mark application was published in Community Trade Marks Bulletin
No 102/2001 of 26 November 2001 and, on 25 June 2002, the sign in question was registered as an EU trade mark under number 2196822.
5        On 25 October 2016, Dermavita Co. Ltd Parseghian & Partners, the predecessor in law to the applicant, Dermavita Company S.a.r.l., filed an application for revocation of the contested mark on the ground that that mark had not been put to genuine use for a continuous period of five years, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001).
6        On 18 April, 15 June and 24 October 2017 and on 30 May 2018, the proprietor of the contested mark submitted proof of use of that mark.
7        On 4 April 2019, the Cancellation Division granted the application for revocation in its entirety and revoked the contested mark, on the ground that the goods in respect of which genuine use had been proved were in Class 5 and that there was no proof of its use in connection with the goods in Class 10 in respect of which it had been registered.
8        On 18 April 2019, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
9        By decision of 14 April 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal as regards the ‘medical and surgical apparatus and instruments’, ‘dermal implants’, ‘artificial skin for surgical purposes’ and ‘prostheses’, but upheld the appeal as regards ‘biocompatible substances for medical purposes for reducing wrinkles’. The application for revocation was therefore rejected as regards the latter goods.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision in part, in so far as the application for revocation was rejected for ‘biocompatible substances for medical purposes for reducing wrinkles’;
–        order EUIPO and the intervener to pay the costs, including those incurred before the adjudicating bodies of EUIPO.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
12      The intervener contends, in essence, as it confirmed at the hearing, that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs, including those incurred by the intervener before the Board of Appeal.
Law
13      As a preliminary point, it should be noted that in view of the date of submission of the application for revocation at issue, that is to say 25 October 2016, which is decisive for the purpose of identifying the substantive law applicable, the present dispute is governed by the substantive provisions of Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), as amended (replaced by Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1), itself replaced by Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 and repealing Delegated Regulation 2017/1430 (OJ 2018 L 104, p. 1)) (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). Moreover, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
14      The applicant raises a single plea in law, alleging, in essence, infringement of Article 15 of Regulation No 207/2009 (now Article 18 of Regulation 2017/1001), divided into two parts. In the first part, it argues that the contested mark has not been used for the ‘biocompatible substances for medical purposes for reducing wrinkles’ in respect of which that mark had been registered as goods in Class 10. The second part alleges that there is no proof that the contested mark has been used by third parties with the consent of the proprietor of that mark.
The first part of the single plea, alleging that the Board of Appeal incorrectly found that the contested mark has been used for the ‘biocompatible substances for medical purposes for reducing wrinkles’ in respect of which that mark had been registered as goods in Class 10
15      The applicant submits that the Board of Appeal’s finding that the contested mark has been used for ‘biocompatible substances for medical purposes for reducing wrinkles’ is not sufficiently reasoned. Moreover, it claims that such a finding is incorrect.
The complaint alleging infringement of the obligation to state reasons
16      At the outset, it should be borne in mind that, under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons, which also derives from Article 296 TFEU, has been the subject of settled case-law according to which the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable, first, the persons concerned to exercise effectively their right to request judicial review of the contested decision and, second, the EU judicature to exercise its power to review the legality of the decision (see, to that effect, judgment of 29 June 2017, Cipriani v EUIPO – Hotel Cipriani (CIPRIANI), T‑343/14, EU:T:2017:458, paragraph 34 and the case-law cited). The question whether the statement of reasons meets those requirements must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 19 December 2019, Sony Interactive Entertainment Europe v EUIPO – Vieta Audio (Vita), T‑690/18, EU:T:2019:894, paragraph 47 and the case-law cited).
17      Moreover, the obligation to state reasons does not require the Board of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision. In addition, the reasoning may be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its review (see judgment of 12 mars 2020, Maternus v EUIPO – adp Gauselmann (Jokers WILD Casino), T‑321/19, not published, EU:T:2020:101, paragraphs 16 and 17 and the case-law cited).
18      In the present case, it is apparent from paragraph 34 of the contested decision that the evidence produced by the intervener showed that the contested mark was used as an umbrella mark for injectable gel fillers containing hyaluronic acid used to smooth facial wrinkles and to add volume to areas of the face where the skin sags (‘injectable dermal fillers’).
19      The Board of Appeal noted, in paragraph 62 of the contested decision, that the ‘biocompatible substances for medical purposes for reducing wrinkles’ in respect of which the contested mark had been registered correctly described the injectable dermal fillers for which that mark had been used.
20      Although paragraph 62 of the contested decision does not contain any other details in that regard, it follows from other paragraphs of that decision that the injectable dermal fillers in question are injectable pharmaceutical preparations consisting of an hyaluronic acid gel for filling wrinkles supplied in a pre-filled syringe (see paragraph 45 of the contested decision). Next, the explanations in paragraphs 43 and 60 of the contested decision make it possible to understand that, according to the Board of Appeal, the syringes in question are pre-filled syringes for medical purposes. In addition, it is apparent from the contested decision that the goods for which the contested mark has been used are not composed of artificial or synthetic materials but are soft-tissue injectable dermal fillers containing hyaluronic acid which is naturally produced (see paragraph 48 of the contested decision). On the basis of the evidence produced by the intervener, paragraph 49 of the contested decision refers to ‘biocompatibility’, to ‘thorough tissue integration’ and to a ‘biodegradable substance naturally present in the body’. Moreover, it is apparent from paragraph 35 of the contested decision that the use of the contested mark for the injectable dermal fillers was not the subject matter of the dispute between the parties before EUIPO.
21      Those details, taken as a whole, make it possible to understand the reasons why the Board of Appeal considered that the injectable dermal fillers for which that mark has been used are ‘biocompatible substances for medical purposes for reducing wrinkles’.
22      Moreover, the Board of Appeal found, in paragraph 62 of the contested decision, that the registration of the contested mark in respect of ‘biocompatible substances for medical purposes for reducing wrinkles’ in Class 10 instead of Class 5, was not a reason for granting the application for revocation in respect of those goods since the classification of the goods and services exclusively serves administrative purposes.
23      In those circumstances, the applicant was in a position to understand the reasons for the Board of Appeal’s rejection of the application for revocation in so far as it concerned ‘biocompatible substances for medical purposes for reducing wrinkles’ and to dispute the merits of those reasons before the Court. It follows that the complaint alleging infringement of the obligation to state reasons must be rejected as unfounded.
The merits of the Board of Appeal’s assessment
24      The applicant submits, in essence, that the contested mark has not been used for ‘biocompatible substances for medical purposes for reducing wrinkles’ and that that mark has not been used for goods in Class 10.
25      EUIPO and the intervener dispute the applicant’s arguments.
26      It is apparent from recital 10 of Regulation No 207/2009 (now recital 24 of Regulation 2017/1001) that the legislature considers that there is no justification for protecting a registered mark except where that mark is actually used. In accordance with that recital, Article 51(1)(a) of Regulation No 207/2009 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked, inter alia 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 non-use.
27      According to the first subparagraph of Article 15(1) of Regulation No 207/2009, ‘if, within a period of five years following registration, the proprietor has not put the [EU] trade mark to genuine use in the [European Union] in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the [EU] trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use’.
28      Rule 22(3) of Regulation No 2868/95, which is applicable mutatis mutandis in revocation proceedings pursuant to Rule 40(5) of that regulation (those provisions then being Article 10(3) and Article 19(1) of Delegated Regulation 2017/1430, respectively, and now Article 10(3) and Article 19(1) of Delegated Regulation 2018/625, respectively), provides that the indications and evidence for the furnishing of proof of use of the mark are to consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered. Moreover, according to Rule 40(5) of Regulation No 2868/95, in such proceedings EUIPO is to invite the proprietor of the EU trade mark to furnish proof of use of the mark, within such period as it may specify and, if the proof is not provided within the time limit set, that trade mark is to be revoked.
29      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. In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 4 April 2019, Hesse and Wedl & Hofmann v EUIPO (TESTA ROSSA), T‑910/16 and T‑911/16, EU:T:2019:221, paragraph 29 and the case-law cited).
30      It is in the light of those principles that it is appropriate to assess the applicant’s claims based on the nature of the use of the contested mark and seeking to call into question the Board of Appeal’s findings relating to the intervener’s proof of use of that mark in relation to the ‘biocompatible substances for medical purposes for reducing wrinkles’ in respect of which it was registered for goods in Class 10.
31      In the first place, it is appropriate to examine whether the injectable dermal fillers for which the contested mark has been used are ‘biocompatible substances for medical purposes for reducing wrinkles’ in respect of which it was registered. Next, in the second place, it is necessary to rule on the designation of such substances as goods in Class 10.
–       The use of the contested mark for ‘biocompatible substances for medical purposes for reducing wrinkles’
32      According to the applicant, first of all, the intervener’s final product, a dermal filler, is not a substance but a pre-filled syringe. Next, the contested mark has not been used for any substance for medical purposes. Last, the intervener has not provided proof relating to the biocompatible character of a substance and the expression ‘biocompatible substance’ does not clearly indicate the nature of the goods concerned.
33      As a preliminary matter, it must be stated that the applicant does not dispute that the contested mark has been used for injectable dermal fillers, which, moreover, is apparent from paragraph 35 of the contested decision. Neither does it dispute that those products are intended to reduce wrinkles.
34      Regarding, in the first place, the applicant’s arguments intended to establish that the goods for which the contested mark has been used are not ‘substances’, it must be borne in mind, as EUIPO submits, that the injectable dermal fillers in question come within the category of pharmaceutical products administered by injection for use in moisturising skin and reducing wrinkles and such products have pharmacological effects on the skin (see, to that effect, judgment of 25 June 2020, Dermavita v EUIPO – Allergan Holdings France (JUVÉDERM), T‑104/19, not published, EU:T:2020:283, paragraphs 29 and 30). In addition, as submitted by EUIPO, the fact that such products are sold in a container, in the present case in pre-filled syringes, does not mean, having regard to the nature of those products, that they are not ‘substances’. The purpose of purchasing the pre-filled syringes is the use of the product contained in those syringes (see, to that effect, judgment of 25 June 2020, JUVÉDERM, T‑104/19, not published, EU:T:2020:283, paragraph 29) which is, in the present case, an injectable gel containing hyaluronic acid.
35      Regarding, in the second place, arguments intended to establish that the contested mark is used for products that do not come within the definition of a substance for medical purposes, it should be borne in mind that it is apparent from the contested decision that the injectable dermal fillers in question are injectable pharmaceutical products consisting of an hyaluronic acid gel intended to fill wrinkles (see paragraph 45 of the contested decision) and pre-filled syringes for medical purposes (see paragraphs 43 and 60 of the contested decision).
36      The applicant’s arguments cannot call into question those findings, from which it is apparent that the contested mark has been used for substances for medical purposes.
37      First, the applicant submits that the products in question are not medicinal products within the meaning of Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to medicinal products for human use (OJ 2001 L 311, p. 67) and Regulation (EC) No 726/2004 of the European Parliament and of the Council of 31 March 2004 laying down Community procedures for the authorisation and supervision of medicinal products for human and veterinary use and establishing a European Medicines Agency (OJ 2004 L 136, p. 1). According to the applicant, those products are instead governed by Council Directive 93/42/EEC of 14 June 1993 concerning medical devices (OJ 1993 L 169, p. 1) and defined as products not for medical purposes in Regulation (EU) 2017/745 of the European Parliament and of the Council of 5 April 2017 on medical devices, amending Directive 2001/83/EC, Regulation (EC) No 178/2002 and Regulation (EC) No 1223/2009 and repealing Council Directives 90/385/EEC and 93/42/EEC (OJ 2017 L 117, p. 1).
38      In that regard, it must be stated that the classification of a product pursuant to other rules of EU law is, in principle, not decisive in respect of its classification for the purposes of the registration of an EU trade mark. First, it is apparent, in essence, from Article 28(1) of Regulation No 207/2009 (now Article 33(1) of Regulation 2017/1001) that, for the purposes of the registration of an EU trade mark, goods and services are to be classified according to the Nice Classification. Second, although the EU legislative measures referred to by the applicant are of primary importance for the sector as they safeguard the process of manufacturing, labelling and distributing medicinal products, they do not necessarily have an influence on the way in which the goods and services are classified in the Nice Classification. In that regard, the essential function of the mark should not be confused with the other functions that the mark may also fulfil, such as that of guaranteeing the quality of the goods in question (judgments of 25 June 2020, JUVÉDERM, T‑104/19, not published, EU:T:2020:283, paragraphs 26 to 28, and of 18 November 2020, Dermavita v EUIPO – Allergan Holdings France (JUVEDERM ULTRA), T‑643/19, not published, EU:T:2020:549, paragraphs 26 to 28).
39      Second, in so far as the applicant argues that the injectable dermal fillers in question are for aesthetic use only and are advertised as products for cosmetic and aesthetic purposes, it should be borne in mind that those products contain hyaluronic acid and have pharmacological effects on the skin (see, to that effect, judgment of 25 June 2020, JUVÉDERM, T‑104/19, not published, EU:T:2020:283, paragraph 30). In addition, it must be noted that hyaluronic acid has several medical applications and is, inter alia, used as a dermal filler which is administered by injection by medical practitioners and clinics (see, to that effect, judgments of 25 June 2020, JUVÉDERM, T‑104/19, not published, EU:T:2020:283, paragraph 29, and of 18 November 2020, JUVEDERM ULTRA, T‑643/19, not published, EU:T:2020:549, paragraph 32). Last, the products in question are pharmaceuticals in Class 5 (see, to that effect, judgments of 25 June 2020, JUVÉDERM, T‑104/19, not published, EU:T:2020:283, paragraphs 29 and 30, and of 18 November 2020, JUVEDERM ULTRA, T‑643/19, not published, EU:T:2020:549, paragraph 32). Moreover, in its observations produced before the Board of Appeal, the applicant expressly agreed with the Cancellation Division’s assessment that the purpose of purchasing the goods in question is the use of a pharmaceutical product contained in a syringe.
40      Third, the applicant submits, referring to emails produced as Annex 9 to the application, that the injectable dermal fillers in question are not regarded by doctors as medicinal products, and therefore products for medical purposes. However, the classification of a product pursuant to other rules of EU law is, in principle, not decisive in respect of its classification for the purposes of the registration of an EU trade mark (see paragraph 38 above). Therefore, the fact that several doctors or other persons state that the goods in question are not medicinal products for the purpose of their regulatory or tax classification cannot of itself call into question the Board of Appeal’s findings.
41      Regarding, in the third place, the submissions based on the biocompatible character of the goods for which the contested mark has been used, it must be borne in mind that it is apparent from the contested decision that the injectable dermal fillers in question are not composed of artificial or synthetic materials but are soft-tissue injectable dermal fillers containing hyaluronic acid which is naturally produced (see paragraph 48 of the contested decision). In addition, as stated above, in paragraph 49 of the contested decision, the Board of Appeal, on the basis of the evidence produced by the intervener, considered that the biocompatibility of hyaluronic acid gel contained in the injectable dermal fillers was similar to that of the hyaluronic acid present in human dermis. In the same paragraph, the Board of Appeal referred to the advertising materials produced by the intervener, which contained references to ‘thorough tissue integration’ and ‘a biodegradable substance naturally present in the body’.
42      According to the applicant, the intervener has not established what the biocompatible character of a substance is, as the expression ‘biocompatible substance’ does not clearly indicate the nature of the products concerned. Therefore, the intervener has not proved genuine use of the contested mark in connection with such substances.
43      Those arguments cannot succeed.
44      First, as EUIPO essentially submits, the concept of ‘biocompatible substance’ is sufficiently clear and refers to a substance compatible with a living organism. This is apparent, at least implicitly, from paragraphs 48 and 49 of the contested decision, where the characteristics of the hyaluronic acid contained in the injectable dermal fillers in question are described. Second, the applicant cannot validly claim that the nature of those goods in that respect has not been shown. In paragraph 49 of the contested decision, the Board of Appeal expressly mentioned evidence produced by the intervener referring to the biocompatible character of the hyaluronic acid contained in the injectable dermal fillers; that evidence has not, in any event, been called into question by the applicant specifically.
45      Having regard to all the foregoing, the applicant’s arguments seeking to establish that the contested mark has not been used for ‘biocompatible substances for medical purposes for reducing wrinkles’ must be rejected.
–       The designation of ‘biocompatible substances for medical purposes for reducing wrinkles’ as goods in Class 10
46      The applicant submits that the goods for which use of the contested mark has been shown are not covered by the goods in Class 10 in respect of which that mark had been registered. It states that EUIPO erred in applying the criteria for classifying goods according to the Nice Classification. It claims that the alphabetical list of that classification includes injectable dermal fillers such as those for which the contested mark has been used and that those goods are classified in Class 5, while that mark was registered in respect of different goods as goods in Class 10.
47      At the outset, it must be borne in mind (see paragraphs 19 and 22 above) that the Board of Appeal found, in paragraph 62 of the contested decision that, first, the ‘biocompatible substances for medical purposes for reducing wrinkles’ in respect of which the contested mark had been registered correctly describe the injectable dermal fillers for which that mark had been used and, second, that the registration of the contested mark in respect of such substances as goods in Class 10 instead of Class 5 was not a reason for granting the application for revocation in respect of those goods, since the classification of the goods and services exclusively serves administrative purposes.
48      In addition, it is apparent from paragraphs 40 to 45 of the contested decision that the goods for which the contested mark has been used correspond to goods in the alphabetical list of the Nice Classification relating to Class 5, namely ‘injectable dermal fillers’ (code 050489) and ‘pre-filled syringes for medical purposes’ (code 050462), which, according to the Board of Appeal, prevents them from being classified in another class, and that, moreover, those goods have a clear and single function and intended purpose.
49      It follows that the Board of Appeal considered that the contested mark has been used for ‘biocompatible substances for medical purposes for reducing wrinkles’, that those substances were in Class 5 and that the registration of that mark in respect of such substances as goods in Class 10 was incorrect, without this error being sufficient to declare that mark revoked in respect of those goods.
50      In that regard, it must be noted that it is apparent from the heading of Class 10 of the seventh edition of the Nice Classification, published in 1997 and in force at the time of the application for registration of the contested mark, that that class includes ‘surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials’. According to the Explanatory Note to that edition, Class 10 includes mainly medical apparatus, instruments and articles. By contrast, Class 5, in the same edition of the Nice Classification, is entitled ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.’ According to the Explanatory Note to that edition, Class 5 includes mainly pharmaceuticals and other preparations for medical purposes.
51      It is common ground between the applicant and EUIPO that the injectable dermal fillers for which the contested mark has been used are in Class 5. In addition, the Court has previously held that the only function of the injectable dermal fillers in question is that of filling wrinkles of the skin with hyaluronic acid gel and that that function is specific to pharmaceuticals, in a broad sense, which are in Class 5, and not medical devices, in a broad sense, which are in Class 10 (see, to that effect, judgment of 18 November 2020, Allergan Holdings France v EUIPO – Dermavita (JUVEDERM ULTRA), T‑664/19, not published, EU:T:2020:547, paragraph 19).
52      However, the applicant and EUIPO continue to disagree, first, regarding whether the injectable dermal fillers for which the contested mark has been used can be classified as ‘biocompatible substances for medical purposes for reducing wrinkles’ and, second, regarding the consequences of the registration of the contested mark in respect of such goods as goods in Class 10.
53      Regarding the first point, it is sufficient to refer to the analysis in paragraphs 32 to 45above, which concludes that the applicant has not succeeded in calling into question the Board of Appeal’s assessment that the contested mark had been used for ‘biocompatible substances for medical purposes for reducing wrinkles’.
54      Regarding the second point, it must be noted that, according to Rule 2(2) of Regulation No 2868/95 (reproduced, in essence, in Article 33(2) of Regulation 2017/1001), the list of goods and services must be worded in such a way as to indicate clearly the nature of the goods and services and to allow each item to be classified in only one class of the Nice Classification. According to Rule 2(4) of Regulation No 2868/95 (now Article 33(7) of Regulation 2017/1001), the classification of goods and services exclusively serves administrative purposes, with the result that goods and services may not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification, and goods and services may not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification. The purpose of that classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. Moreover, the Nice Classification cannot determine, in itself, the nature and characteristics of the goods at issue (see judgment of 28 May 2020, Korporaciya “Masternet” v EUIPO – Stayer Ibérica (STAYER), T‑681/18, not published, EU:T:2020:222, paragraph 40 and the case-law cited).
55      In those circumstances, particularly having regard to the aims pursued by the Nice Classification, the mere fact that the contested mark was registered in respect of ‘biocompatible substances for medical purposes for reducing wrinkles’ designated incorrectly as goods in Class 10 instead of Class 5 cannot lead to the revocation of that mark in respect of such goods if that mark has been actually used for those goods, which is the case here.
56      In addition, according to case-law it is for the person requesting registration of a sign as an EU mark to set out in the application a list of the goods in respect of which registration is sought and to provide, for each of those goods, a description clearly indicating their nature. While Article 26(1)(c) of Regulation No 40/94 (then Article 26(1)(c) of Regulation No 207/2009 and now Article 31(1)(c) of Regulation 2017/1001) and Rule 2(2) of Regulation No 2868/95, applicable at the time when the application for registration of the contested mark was lodged, require the goods in respect of which protection of the EU trade mark is sought to be identified by the person requesting registration with sufficient clarity and precision, that is in order to enable EUIPO and economic operators, on that basis alone, to determine the extent of the protection sought (see judgment of 28 April 2016, Zehnder Group International v EUIPO – Stiebel Eltron (comfotherm), T‑267/14, not published, EU:T:2016:252, paragraph 34 and the case-law cited).
57      In the present case, nothing supports the conclusion that the phrase ‘biocompatible substances for medical purposes for reducing wrinkles’, describing the goods for which the contested mark has been used, is not sufficiently clear.
58      With regard to the applicant’s argument that injectable dermal fillers are expressly referred to in the alphabetical list of the Nice Classification relating to Class 5 under code 050489, it must be stated that the alphabetical list of the seventh edition of the Nice Classification relating to Class 5, in force on the date of the application for registration of the contested mark, does not include such goods, as confirmed by the EUIPO and the intervener in their replies to a written question put by the Court. As a result, the intervener cannot be criticised for its choice of different wording to designate the goods in question at the time when the application for registration of the contested mark was lodged.
59      Moreover, in so far as the applicant refers to several Board of Appeal and Opposition Division decisions, it must be noted that the applicant does not put forward solid arguments based on these decisions from which it can be understood how, on the basis of those decisions, the findings in the contested decision or the principles applied by the Board of Appeal in the latter decision are incorrect.
60      In any event, although, in the light of the principles of equal treatment and sound administration, EUIPO is required to take into account the decisions already taken and to consider with especial care whether it should decide in the same way or not, the application of those principles must be reconciled with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Thus, that examination must be undertaken in each individual case (see, to that effect and by analogy, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77).
61      It is clear that the assessment of the genuine use of the contested mark was carried out taking into account the circumstances of the present case. In addition, it is not apparent from the analysis above that the Board of Appeal’s approach in the present case is contrary to the applicable law. Therefore, the applicant cannot usefully rely on the Board of Appeal and Opposition Division decisions to which it refers.
62      Having regard to the foregoing, it must be held that the Board of Appeal did not err in finding that the contested mark has been used for ‘biocompatible substances for medical purposes for reducing wrinkles’ and that the incorrect registration of that mark in respect of such substances as goods in Class 10 instead of Class 5 was not a reason for granting the application for revocation in respect of those goods. It follows that the first part of the applicant’s single plea must be rejected as unfounded.
The second part of the single plea, alleging that there is no proof that the contested mark has been used by third parties with the consent of the proprietor of that mark
63      The applicant submits that the Board of Appeal failed to take account of its claim relating to the lack of proof of use of the contested mark by third parties with the consent of the proprietor of that mark. Moreover, according to the applicant, the evidence in that regard, whether express or implicit, is not sufficient.
64      EUIPO and the intervener dispute the applicant’s arguments.
65      Under Article 15(2) of Regulation No 207/2009 (now Article 18(2) of Regulation 2017/1001), use of the EU trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.
66      In addition, if the use of the contested mark was without the proprietor’s consent and therefore in breach of trade mark law, it would have been in the interests of the entities that used it not to disclose evidence of such use to the proprietor (see, to that effect and by analogy, judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 25). It is also unlikely that those documents would have been available to the proprietor of the contested mark for submission as proof of use of the contested mark if that use had taken place against its wishes (see, to that effect and by analogy, judgment of 22 March 2017, Windrush Aka v EUIPO – Dammers (The Specials), T‑336/15, EU:T:2017:197, paragraph 56).
67      In the present case, it must be noted that the question of the intervener’s consent was not addressed in the contested decision. However, that argument was not raised by the applicant during the proceedings before the Board of Appeal, which it confirmed during the hearing. Therefore, and bearing in mind also the fact that the contested mark has been used by companies belonging to the same group as the intervener, as EUIPO submits, the Board of Appeal cannot be criticised for failing to examine that question in the contested decision, since it is settled case-law that the use of a trade mark by a company which is economically linked to the proprietor of the mark is presumed to be use of that mark with the consent of the proprietor and is therefore deemed to constitute use by the proprietor, in accordance with Article 15(2) of Regulation No 207/2009 (see, to that effect, judgment of 30 January 2015, Now Wireless v OHIM – Starbucks (HK) (now), T‑278/13, not published, EU:T:2015:57, paragraph 38 and the case-law cited).
68      In so far as the applicant seeks to call into question the evidentiary value of the two witness statements produced by the intervener, it is sufficient to state that the applicant does not put forward any argument, or even a circumstantial factor, which would cast doubt on the authenticity of the information contained therein.
69      In those circumstances, the second part of the single plea must also be rejected as unfounded and, as a result, the action must be dismissed in its entirety.
Costs
70      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.
71      Since the applicant has been unsuccessful, it must be ordered to pay the costs of the present proceedings, in accordance with the forms of order sought by EUIPO and the intervener.
72      As regards the intervener’s form of order relating to the costs before the Board of Appeal, it is sufficient to note that those costs continue to be governed by the contested decision (see, to that effect, judgments of 10 November 2016, Polo Club v EUIPO – Lifestyle Equities (POLO CLUB SAINT-TROPEZ HARAS DE GASSIN), T‑67/15, not published, EU:T:2016:657, paragraph 120, and of 21 April 2021, Chanel v EUIPO – Huawei Technologies (Representation of a circle containing two interlaced curves), T‑44/20, not published, EU:T:2021:207, paragraph 57), in which the Board of Appeal ordered each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Dermavita Company S.a.r.l. to pay the costs of the present proceedings.
Collins
Kreuschitz
Csehi
Delivered in open court in Luxembourg on 6 October 2021.
E. Coulon
A. M. Collins
Registrar
President
*      Language of the case: English.