JUDGMENT OF THE GENERAL COURT (Third Chamber)
16 June 2021 (*)
(EU trade mark – Invalidity proceedings – International registration designating the European Union – Figurative mark Enterosgel – No bad faith – Article 51(1)(b) of Regulation (EC) No 40/94 (now Article 59(1)(b) of Regulation (EU) 2017/1001))
In Case T‑678/19,
Health Product Group sp. z o.o., established in Warsaw (Poland), represented by M. Kondrat, M. Stępień and A. Przytuła, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Bioline Pharmaceutical AG, established in Baar (Switzerland), represented by T. Grucelski, H. Gajek and M. Furmańska, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 8 August 2019 (Case R 482/2018-4), relating to invalidity proceedings between Health Product Group and Bioline Pharmaceutical,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, Z. Csehi (Rapporteur) and G. De Baere, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 4 October 2019,
having regard to the response of EUIPO lodged at the Court Registry on 9 January 2020,
having regard to the response of the intervener lodged at the Court Registry on 27 December 2019,
further to the hearing on 17 November 2020,
gives the following
Judgment
Background to the dispute
1        On 31 March 2006, TNK Silma, the predecessor in law to the intervener, Bioline Pharmaceutical AG, designated the European Union in respect of international registration No 896788.
2        That registration was notified to 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), 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)).
3        The mark covered by the international registration designating the European Union is the following figurative sign:
4        The goods in respect of which registration was sought are in Classes 1, 3 and 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, for each of those classes, to the following description:
–        Class 1: ‘Silicon organic compounds; siloxanes’;
–        Class 3: ‘Cosmetic preparations for skin care; beauty masks; cosmetic preparations for hair care; dentifrices’;
–        Class 5: ‘Medicines for human[s], namely preparation[s] used for treatment of intestinal disorders’.
5        The international registration designating the European Union was published in Community Trade Marks Bulletin
No 2006/042 of 16 October 2006.
6        On 14 June 2016, the applicant, Health Product Group sp. z o.o., filed an application for a declaration of invalidity based on Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001). The application for a declaration of invalidity was directed against all the goods covered by the contested mark.
7        In its application for a declaration of invalidity, the applicant claimed that TNK Silma, the predecessor in law to the intervener, had acted in bad faith when it designated the European Union in respect of the contested mark. It submitted that TNK Silma was aware that the Ukrainian company Kreoma-Pharm, that is to say, the licensor of the applicant, had developed the medicinal product named Enterosgel on the basis of a methyl-silicic acid hydrogel in the early 1990s and had obtained
the approval to use it for medical purposes in Russia, Ukraine and Moldova as well as patent protection for the invention. According to the application for a declaration of invalidity, large-scale production of the pharmaceutical product by the joint-stock company AO Silma, in which the Ukrainian company Kreoma-Pharm and the Russian company AO Silan were the main shareholders, had started in the 1990s. In June 2000, AO Silan sold its shares in AO Silma. The applicant stated that part of those shares was acquired by A and B, who were both employees of AO Silma at the time. The application for a declaration of invalidity also states that those two persons founded TNK Silma on 23 June 2002. The applicant further claimed that A and B illegally transferred the Enterosgel trade mark rights owned by AO Silma to TNK Silma and, on the basis of the Russian trade mark registration No 269 595 Enterosgel, filed the contested mark. The applicant submitted that TNK Silma was not allowed to do so because the pharmaceutical product Enterosgel had been developed by Kreoma-Pharm.
8        According to the application for a declaration of invalidity, on 6 February 2016, Kreoma-Pharm concluded a licence agreement with the applicant by which the applicant is authorised to use the technical documentation from the pharmacopoeia monograph for enterosgel – hydrogel of methyl-silicic acid.
9        On 28 February 2018, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
10      On 16 March 2018, 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.
11      By decision of 8 August 2019, the Fourth Board of Appeal of EUIPO dismissed the appeal.
12      The Board of Appeal summarised the applicant’s arguments as follows: first, TNK Silma, the predecessor in law to the intervener, was not allowed to designate the European Union in respect of the contested mark because it was not involved in the development of the product named Enterosgel which was invented by Kreoma-Pharm and produced in the 1990s by AO Silma and Kreoma-Pharm and, secondly, TNK Silma was not the first to apply for the trade mark Enterosgel because
Russian trade mark application No 219 832
ЄНТЕРОСГЕЛЬ, or ENTEROSGEL in Latin characters, had already been filed on 18 January 2002 by AO Silma, in which the Ukrainian company Kreoma-Pharm was the main shareholder. The Board of Appeal then rejected those arguments put forward by applicant, taking the view that they were not capable of showing that there was bad faith on the part of TNK Silma.
13      The Board of Appeal found, in essence, in paragraphs 29 and 30 of the contested decision, that no prior registration of the sign Enterosgel by Kreoma-Pharm had been established and that, on the contrary, it was TNK Silma that was the proprietor of all the Russian Enterosgel trade marks, namely Russian trade mark No 269 595 Enterosgel, which had been filed by TNK Silma on 6 November 2002 (or had, at least, been transferred to it shortly after the filing), and Russian trade mark No 219 832
ЄНТЕРОСГЕЛЬ, which had been filed on 18 January 2002 by AO Silma, then transferred to PR Cooperation on 27 October 2003 and transferred to TNK Silma on the next day. It took the view that the applicant had not submitted any evidence from which it could be inferred that the transfer of those marks to, or ownership of those marks by, TNK Silma was unlawful.
14      Furthermore, the Board of Appeal stated, in paragraphs 32 and 33 of the contested decision, that there was no evidence to substantiate the applicant’s argument that Kreoma-Pharm, as the Ukrainian shareholder in AO Silma, had contributed its intellectual property rights to AO Silma, thus rendering the application for registration of the Enterosgel trade marks filed by TNK Silma unlawful. It took the view that no documents had been provided that showed that Kreoma-Pharm either owned an earlier trade mark right Enterosgel or had used that name as a trade mark prior to the designation of the European Union in respect of the contested mark or that showed that TNK Silma was not allowed to file a trade mark registration for Enterosgel. It added that A and B were also shareholders in AO Silma, that it had not been established that they were not allowed to apply for the registration of a trade mark in respect of the sign Enterosgel and that, on contrary, the two earlier Russian trade marks No 269 595 Enterosgel and No 219 832
ЄНТЕРОСГЕЛЬ had both been filed by, or transferred shortly after application, to their company TNK Silma.
15      The Board of Appeal concluded that no prior rights in the sign Enterosgel on the part of Kreoma-Pharm, the applicant’s licensor, had been established and that a dishonest intention on the part of the intervener’s predecessor when designating the European Union in respect of the contested mark had not been proved.
Forms of order sought
16      The applicant claims that the Court should:
–        annul the contested decision by stating that the intervener was acting in bad faith on the date of the designation of the European Union in the application for the contested trade mark, and declare the contested mark invalid;
–        award the costs in the applicant’s favour.
17      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
18      The intervener contends that the Court should:
–        uphold the contested decision;
–        award the costs in the intervener’s favour.
Law
The issue of whether the further evidence offered by the applicant is admissible
19      By letters lodged at the Court Registry on 13 February and 11 May 2020, the applicant submitted further evidence pursuant to Article 85(3) of the Rules of Procedure of the General Court.
20      The documents lodged on 13 February 2020 are a decision of the Fifth Board of Appeal of EUIPO of 18 November 2019 (Case R 2537/2018-5) and a letter dated 14 October 2015 from the intervener’s lawyer, which was addressed to the applicant.
21      The document lodged on 11 May 2020 is an order dated 31 March 2020 of the Ukrainian Minister for Economic Development, Trade and Agriculture approving a decision of the ‘Chamber of Appeal’ of that ministry dated 28 November 2019, and the annex to that decision, a decision in which it was recognised that, on 1 January 2006, the trade mark ЕНТЕРОСГЕЛЬ was well
known in Ukraine in relation to the company Kreoma-Pharm for ‘pharmaceuticals, namely enterosorbents’ in Class 5.
22      EUIPO and the intervener submit that that evidence is inadmissible because it was belated or submitted for the first time before the General Court and because it is, in any event, irrelevant.
23      EUIPO’s decision of 18 November 2019, although produced for the first time before the Court, is not, strictly speaking, evidence, but relates to EUIPO’s decision-making practice, to which, even after the procedure before EUIPO is complete, a party has the right to refer (judgments of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 20, and of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 16). It is therefore admissible since it is not alleged that the Board of Appeal failed to take facts into account (see, to that effect, judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 70 and 71).
24      As regards the abovementioned order of 31 March 2020, it must be pointed out that it postdates the contested decision and serves the purpose of submitting a fact in the present case. That document, which was produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001). It is not therefore the Court’s function to review the facts in the light of documents produced for the first time before it. That document must therefore be excluded and there is no need to assess its probative value (see, to that effect, judgments of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited, and of 23 May 2019, Holzer y Cia v EUIPO – Annco (ANN TAYLOR and AT ANN TAYLOR), T‑3/18 and T‑4/18, EU:T:2019:357, paragraph 75).
25      As regards the letter from the intervener’s lawyer dated 14 October 2015, which was addressed to the applicant and gave the applicant notice to cease infringing the intervener’s intellectual property rights, it must be stated that that letter had, in any event, already been submitted before EUIPO in Annex 9 to the statement of grounds of appeal. It is therefore already part of EUIPO’s case file.
The single plea, alleging infringement of Article 59(1)(b) of Regulation 2017/1001
26      It should be noted at the outset that, given the date on which the application for registration of the contested mark was filed, namely 31 March 2006, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94, as amended by Council Regulation (EC) No 422/2004 of 19 February 2004 (OJ 2004 L 70, p. 1) (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Moreover, Article 51(1)(b) of Regulation No 40/94, as amended, was not subject to any amendment in Regulation 2017/1001.
Consequently, in the present case, the references to the provisions of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the applicant and EUIPO in their written pleadings must be understood as referring to the substantively identical provisions of Regulation No 40/94 as amended.
27      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 59(1)(b) of Regulation 2017/1001. Its arguments are divided, in essence, into four parts.
28      In the first place, it argues that the Board of Appeal erred when it stated that it had not been proved that Kreoma-Pharm was the owner of an exclusive earlier right in the contested sign or that that right had been transferred to AO Silma. In the second place, the applicant submits,
in essence, that the Board of Appeal erred in stating, first, that A and B, as minority shareholders in AO Silma, had a right to incorporate a company which was a competitor of AO Silma, namely TNK Silma, and in stating, secondly, that they were allowed to transfer the application for Russian trade mark No 219 832
ЄНТЕРОСГЕЛЬ in Cyrillic characters to TNK Silma and to file or transfer the application for Russian trade mark No 269 595 Enterosgel in Latin characters to TNK Silma despite the fact that Kreoma-Pharm owned all the intellectual property rights relating to the product named Enterosgel. In the third place, the applicant claims, in essence, that, at the time when they became minority shareholders in AO Silma, the founders of TNK Silma, A and B, already knew or must have known of the use by Kreoma-Pharm or AO Silma of the term ‘enterosgel’ or the ‘unregistered trade mark’ Enterosgel in Russia, Ukraine and Moldova with regard to goods that were identical or similar to those covered by the contested mark. In the fourth place, the applicant submits that there has been infringement of the principles of legitimate expectations and of legal certainty and also of the Universal Copyright Convention as revised at Paris on 24 July 1971.
29      EUIPO disputes those arguments and contends, in essence, that the applicant has not established, first, that the entities related to the applicant (AO Silma, its director C and Kreoma-Pharm) were the owners of various prior exclusive rights in the contested sign before 31 March 2006 or, secondly, that the entities related to the intervener (TNK Silma, A and B) had infringed those rights.
30      According to the intervener, the arguments submitted by the applicant are mere assertions which are not substantiated by any relevant evidence and are insufficient to rebut the presumption of good faith under EU law.
31      It should be noted at the outset that the EU trade mark registration system is based on the ‘first-to-file’ principle laid down in Article 8(2) of Regulation 2017/1001. In accordance with that principle, a sign may be registered as an EU trade mark only in so far as this is not precluded by an earlier mark, whether an EU trade mark, a trade mark registered in a Member State or by the Benelux Office for Intellectual Property, a trade mark registered under international arrangements which have effect in a Member State or a trade mark registered under international arrangements which have effect in the European Union. On the other hand, without prejudice to the possible application of Article 8(4) of Regulation 2017/1001, the mere use by a third party of a non-registered mark does not preclude an identical or similar mark from being registered as an EU trade mark for identical or similar goods or services. The same applies, in principle, to third-party use of a mark registered outside of the European Union (see judgment of 28 January 2016, Davó Lledó v OHIM – Administradora y Franquicias América and Inversiones Ged (DoggiS), T‑335/14, EU:T:2016:39, paragraph 43 and the case-law cited).
32      That rule is qualified by, inter alia, Article 59(1)(b) of Regulation 2017/1001, under which an EU trade mark must be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings, where the applicant was acting in bad faith when he filed the application for the trade mark (judgment of 28 January 2016, DoggiS, T‑335/14, EU:T:2016:39, paragraph 44).
33      It is for the applicant for a declaration of invalidity who intends to rely on the ground set out in Article 59(1)(b) of Regulation 2017/1001 to establish the circumstances which make it possible to conclude that the proprietor of an EU trade mark was acting in bad faith when he filed the application for registration of that mark and there is a presumption of good faith until proof to the contrary is adduced (judgments of 13 December 2012, pelicantravel.com v OHIM – Pelikan (Pelikan), T‑136/11, not published, EU:T:2012:689, paragraph 21, and of 8 March 2017, Biernacka-Hoba v EUIPO – Formata Bogusław Hoba (Formata), T‑23/16, not published, EU:T:2017:149, paragraph 45).
34      The concept of bad faith referred to in Article 59(1)(b) of Regulation 2017/1001 is not defined, delimited or even described in any way in EU legislation (judgment of 28 January 2016, DoggiS, T‑335/14, EU:T:2016:39, paragraph 45).
35      According to the case-law, the concept of bad faith relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. It involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices
(judgment of 7 July 2016, Copernicus-Trademarks v EUIPO – Maquet (LUCEO), T‑82/14, EU:T:2016:396, paragraph 28).
36      Furthermore, in the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361, paragraph 53), the Court of Justice stated that, in order to determine whether the applicant is acting in bad faith, all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as an EU trade mark must be taken into consideration, in particular:
–        the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought;
–        the applicant’s intention to prevent that third party from continuing to use such a sign; and
–        the degree of protection enjoyed by the third party’s sign and by the sign for which registration is sought.
37      It is in the light of the foregoing considerations that the legality of the contested decision must be reviewed.
38      In the present case, the Board of Appeal stated, first of all, that the relevant time for assessing whether there was bad faith pursuant to Article 59(1)(b) of Regulation 2017/1001 was, according to the explicit wording of that provision, the time when the application to register the contested trade mark as an EU trade mark was filed. In the case of the international registration at issue, it took the view that that corresponded to the date on which the European Union was designated, namely 31 March 2006. Next, it found that, since, under that provision, only the conduct of the applicant for the EU trade mark when filing the contested mark was relevant, only TNK Silma, as the party which had designated the European Union in the international registration, had to be considered in the present case, and not its current proprietor, the intervener, which had only acquired the contested mark in 2013 as the result of a transfer. Those findings are not disputed.
The first part of the single plea
39      The applicant disputes, in essence, the Board of Appeal’s finding that it had not been proved that Kreoma-Pharm was the owner of an exclusive earlier right in the contested sign or that that right had been transferred to AO Silma.
40      EUIPO and the intervener dispute those arguments.
41      In the first place, the applicant claims that earlier Russian trade mark No 219 832
ЄНТЕРОСГЕЛЬ, namely ENTEROSGEL in Latin characters, was filed on 18 January 2002 by AO Silma, that is to say, by the Russian-Ukrainian company in which the main shareholder was the Ukrainian company Kreoma-Pharm. It was registered on 30 August 2002. It was then, according to the applicant, illegally transferred to PR Cooperation (the date of registration of the agreement being
27 October
2003) and then to TNK SILMA (Annex 2 to the statement of grounds of appeal).
42      In the present case, the Board of Appeal pointed out, in essence, in paragraphs 29, 30, 33 and 34 of the contested decision, that no prior registration of the contested sign by Kreoma-Pharm, the applicant’s licensor, had been established and that TNK Silma was the proprietor, at the time when the European Union was designated in respect of the contested mark, of all the earlier Russian marks, namely No 269 595 Enterosgel and No 219 832
ЄНТЕРОСГЕЛЬ.
43      That finding must be upheld.
44      As regards trade mark No 219 832
ЄНТЕРОСГЕЛЬ, which was applied for by AO Silma on 18 January 2002 and registered on 30 August 2002 by the Russian Federal Service for Intellectual Property (ROSPATENT) in respect of pharmaceutical and veterinary medicinal products in Class 5, goods in Class 16 and services in Classes 35 and 39, the Board of Appeal found that it did not constitute a prior right of Kreoma-Pharm’s, even though Kreoma-Pharm was a shareholder in AO Silma, since it had not been registered in its name.
45      It must be stated that the fact that Kreoma-Pharm was a shareholder in AO Silma was rightly considered to be irrelevant as regards the issue of the ownership of that mark. Furthermore, the Board of Appeal rightly pointed out, on the basis of the certificate of registration provided in Annex 2 to the statement of grounds of appeal, that that mark had been transferred to PR Cooperation, the date of the transfer agreement being 27 October 2003, and then to TNK Silma. The date of that latter transfer does not appear on the document, but the parties do not dispute the fact that it took place the next day, that is to say, on 28 October 2003.  Consequently, it must be held that, on the relevant date of 31 March 2006, that mark was indeed registered in Russia in the name of TNK Silma. The claims that that mark was illegally transferred to PR Cooperation and then to TNK Silma will be examined in the context of the second part of the plea.
46      The applicant’s first argument must therefore be rejected.
47      As regards Russian trade mark No 269 595 Enterosgel, which was applied for on 6 November 2002 and registered on 1 June 2004 in respect of goods in Classes 1, 3, and 5, and on the basis of which the contested mark was registered, the Board of Appeal pointed out that it was TNK Silma that had filed that mark, or, at least, that it had been transferred to it shortly after the filing. It stated that the filing of that trade mark had never been challenged by the applicant or by Kreoma-Pharm. It must be pointed out, after checking Annex 3 to the statement of grounds of appeal, that, as the Board of Appeal found, only the name of TNK Silma is mentioned on the certificate of registration provided by the applicant. It must be stated that the applicant has not adduced any evidence which is capable of casting doubt on that reasoning.
48      As regards the two marks registered in Ukraine to the company Medex, the first of which, ENTEROSGEL, was applied for on 15 July 2004 and registered on 15 May 2006 and the second of which, ENTEROSGELUM, was applied for on 22 November 2004 and registered on 16 January 2006 and which were both then transferred to Kreoma-Pharm in 2006, it is clear from Annex 11 to the application for a declaration of invalidity that those marks were filed after the applications for the abovementioned Russian marks and do not therefore, as the Board of Appeal rightly found in paragraph 31 of the contested decision, constitute earlier rights, in particular rights which are earlier than Russian trade mark No 269 595 which served as the basis for the contested mark.
49      Consequently, the Board of Appeal did not err in finding that the two earlier Russian marks Nos 269 595 and 219 832 had both been filed by, or transferred shortly after application, to TNK Silma.
50      In the second place, the applicant submits that
Kreoma-Pharm had contributed its exclusive intellectual property rights relating to the product Enterosgel to AO Silma and that only AO Silma and the President of its Management Board, C, were authorised to register the contested mark. In that regard, it argues that the amended statutes of AO Silma of 5 December 1996, which were attached to the application for a declaration of invalidity as Annex 9, prove that Kreoma-Pharma had contributed its intellectual property rights relating to Enterosgel to AO Silma and had allowed it to use them; however, AO Silma was only a licensee of those rights, without any possibility of transferring them to a third party. It submits that, contrary to what the Board of Appeal stated, none of AO Silma’s shareholders had a right to ‘do anything’ with its exclusive rights.
51      In the present case, the Board of Appeal found, in paragraph 32 of the contested decision, that there was no evidence to substantiate the applicant’s argument that Kreoma-Pharm, as the Ukrainian shareholder in AO Silma, had contributed its intellectual property rights to AO Silma, thus rendering the application for registration of the Enterosgel trade marks by TNK Silma unlawful. It stated that the agreement of 1 July 1991 between Kreoma-Pharm and its employees for the development of a pharmaceutical product, the authorisations to use the medicinal products Enterosgel or Enterosgelum in the name of Kreoma-Pharm in Russia, Ukraine and Moldova, dated 1994 and 1995, and the Ukrainian patent No 7472 for the methyl-silicic hydrogels Enterosgel Super which had been transferred to Kreoma-Pharm on 3 March 1999 indeed showed that the active ingredient of the medicinal product named Enterosgel had been developed by employees of Kreoma-Pharm and had obtained patent protection. However, it stated that no documents showed that Kreoma-Pharm either owned an earlier trade mark right in respect of the sign Enterosgel or had used that name as a trade mark prior to the designation of the European Union in respect of the contested mark, or showed that TNK Silma was not allowed to file a trade mark registration in respect of the sign Enterosgel. In paragraph 33 of the contested decision, the Board of Appeal examined the documents concerning the formation of the AO Silma (Annexes 8 and 9 to the application for a declaration of invalidity) and took the view that they did not establish that Kreoma-Pharm owned an earlier trade mark Enterosgel or that such rights had been transferred to AO Silma.
As regards the ‘Guidelines – Clinical Use of Enterosgel’ mentioning CJSC Silma 2000, and the contract between AO Silma and Kreoma-Pharm of 18 October 1995 concerning the supply of Enterosgel by the latter (Annexes 7 and 8 to the statement of grounds of appeal), the Board of Appeal stated that they did not in any way refer to any trade mark rights in relation to that sign.
52      It is apparent from the extracts from the statutes of AO Silma of 5 December 1996 which were translated into the language of the case and which were attached to the application for a declaration of invalidity as Annex 9 that, according to Article 8 of those statutes, new shares in AO Silma were issued and were acquired by, inter alia, Kreoma-Pharm and C, and that Kreoma-Pharm and C paid for the acquisition of those new shares in AO Silma in the form of ‘intellectual property (part of the package of normative, technical and technology documentation, according to [the] valuation protocol of 11 October 1996) on the basis of [the] transfer protocol’ (Annex 9 to the application for a declaration of invalidity). However, it must be stated that the word ‘enterosgel’ itself is not even mentioned and that neither the valuation protocol of 11 October 1996 nor the transfer protocol, which are mentioned, was provided or translated into the language of the case.
53      The Board of Appeal did not therefore err in finding that it was apparent from Annex 9 that those rights related to technological and technical documentation without any reference being made to any trade mark registrations and that the evidence did not establish that Kreoma-Pharm owned an earlier trade mark named Enterosgel or that such rights had been transferred to AO Silma.
54      The applicant’s second argument must therefore be rejected.
55      In the third place, the applicant develops a line of argument relating to the Universal Copyright Convention as revised at Paris on 24 July 1971 and to the Ukrainian law and the Russian law on copyright, explaining, in essence, that, according to its interpretation of the Russian and Ukrainian laws, the term ‘enterosgel’ is protected under copyright in Ukraine and in Russia with priority over all trade mark applications in Russia or in the European Union. It claims, in particular, that Kreoma-Pharm, the Ukrainian shareholder in the Ukrainian-Russian entity AO Silma, was the owner of a copyright in the term ‘enterosgel’, which appears, in particular, in the Ukrainian patent No 7472 in respect of the methyl-silicic hydrogels Enterosgel Super which was transferred to Kreoma-Pharm on 3 March 1999 and in the authorisations for medical use under the relevant Russian and Ukrainian laws.
56      However, that constitutes a claim which is not substantiated by any evidence. Although the applicant refers, in a general manner, to some provisions of international law and of Ukrainian or Russian law, it confines itself to putting forward its personal interpretation as regards the application of those provisions to the term ‘enterosgel’ and does not provide any factual evidence of Kreoma-Pharm’s
ownership of such a copyright. Furthermore, the only piece of evidence which might be relevant was provided by the intervener and tends to prove the contrary. The intervener provided EUIPO with a decision of a Moscow Court of Arbitration of 19 June 2017 in a dispute between Kreoma-Pharm and TNK Silma in which the former sought to prohibit the use by TNK Silma of, inter alia, the term ‘enterosgel’ on the ground that it was subject to copyright. It is apparent from that decision that, on the contrary, Kreoma-Pharm did not succeed in proving that it was the owner of a copyright in that term, or that the term ‘enterosgel’ is not capable of being protected by copyright.
57      Consequently, the first part of the single plea must be rejected.
The second part of the single plea
58      In the first place, the applicant explains that, since 2003, TNK Silma has been producing a medicinal product in Russia under the name ‘Enterosgel’ without Kreoma-Pharm’s knowledge or permission.
It also submits that, contrary to what the Board of Appeal found, the incorporation of another company, TNK Silma, a competitor of AO Silma, without Kreoma-Pharm’s knowledge or permission, is incompatible with commercial company law. It stresses that A and B continued their unfair practices, including marketing activities for that product which were based on clinical research into the product Enterosgel which had been carried out at the request of Kreoma-Pharm. The applicant refers, in that regard, to its observations of 16 October 2017 and to the statement of grounds of appeal of 16 April 2018.
59      In the second place, the applicant states that the Board of Appeal erred in not taking into account the fact that AO Silma’s shareholders were required not to disclose commercial secrets. It argues that the Board of Appeal thus failed to take into account, in particular, paragraph 5.4.2 and Article 18 of the statutes of AO Silma, which state that AO Silma’s shareholders undertake not to disclose information relating to intellectual property rights and to commercial secrets (Annex 9 to the application for a declaration of invalidity). However, it claims that those shareholders contravened those obligations by transferring all the documents relating to the production of Enterosgel to TNK Silma and by unlawfully using them.
60      In the third place, it submits, in essence, that the Board of Appeal erred in finding that A and B, as minority shareholders in AO Silma, were allowed to transfer the application for Russian trade mark No 219 832
ЄНТЕРОСГЕЛЬ to TNK Silma. It also submits that the filing or the transfer by those two persons to TNK Silma of the application for Russian trade mark No 269 595 Enterosgel, on which the contested mark was based, was unlawful and illegal, since only AO Silma was authorised to file such a trade mark application.
61      In the fourth place, it criticises the Board of Appeal and the Cancellation Division for not finding out how TNK Silma became the proprietor of trade mark No 269 595 Enterosgel, on which the contested mark is based.
62      EUIPO and the intervener dispute those arguments.
63      It must be pointed out at the outset that the applicant cannot validly refer the Court generally to its observations of 16 October 2017 and its statement of grounds of appeal of 16 April 2018. It is not for the Court to take on the role of the parties by seeking to identify the relevant material in the documents to which they refer. It follows that the application, to the extent that it refers to the written submissions made to EUIPO, is inadmissible in so far as the general reference which it contains cannot be connected to pleas and arguments developed in that application (see judgment of 15 December 2016, Keil v EUIPO – NaturaFit Diätetische Lebensmittelproduktion (BasenCitrate), T‑330/15, not published, EU:T:2016:744, paragraph 13 and the case-law cited).
64      In the first place, the claim of acts of unfair competition and the claim that the incorporation of a company which was a competitor of AO Silma, namely TNK Silma, and the transfer to the latter of an Enterosgel trade mark application were contrary to commercial company law must be rejected on the ground that they are not even substantiated by a reference to the national legal provisions which were allegedly infringed. Likewise, the claims relating to TNK Silma’s unlawful use of research also do not appear to be substantiated.
65      In the second place, the applicant refers to A and B’s contractual obligations, when they became shareholders in AO Silma in 2000, not to disclose commercial secrets or intellectual property rights and even to the clauses preventing AO Silma or its individual shareholders from transferring or ‘do[ing] anything’ with the alleged intellectual property rights relating to the product Enterosgel which Kreoma-Pharm owned. In paragraph 27 of its application, the applicant refers specifically to paragraph 5.4.2(e) and Article 18 of the statutes of AO Silma, which were attached to the application for a declaration of invalidity as Annex 9. However, after carrying out a check, it must be stated that those provisions have not been translated into the language of the case. Furthermore, those statutes do not mention the trade mark right Enterosgel (Annexes 8 and 9 to the application for a declaration of invalidity).
66      In the third place, as regards the argument that the Board of Appeal erred in finding that A and B, as minority shareholders in AO Silma, were allowed to transfer the application for Russian trade mark No 219 832
ЄНТЕРОСГЕЛЬ to TNK Silma and to register Russian trade mark No 269 595 Enterosgel in spite of the fact that Kreoma-Pharm owned and had retained all the intellectual property rights relating to the product Enterosgel, since AO Silma was only a licensee, it must be pointed out that the Board of Appeal did not find that those shareholders were allowed to transfer the application for Russian trade mark No 219 832 to TNK Silma or to register Russian trade mark No 269 595. The Board of Appeal simply stated, in essence, in paragraphs 30, 32 and 33 of the contested decision that the applicant, which, it must be borne in mind, bears the onus of reversing the presumption of good faith referred to in paragraph 33 above, had not succeeded in establishing that those transfers or registrations regarding those two marks were unlawful.
67      In the fourth place, the applicant criticises the Board of Appeal and the Cancellation Division for not finding out how TNK Silma became the proprietor of Russian trade mark No 269 595 Enterosgel, on which the contested mark is based. That argument must be rejected on the ground that the applicant is again reversing the burden of proof, since there is a presumption of good faith until proof to the contrary is adduced.
68      Consequently, the second part of the single plea must be rejected.
The third part of the single plea
69      The applicant states that one of the factors which makes it possible to hold that there was bad faith is that the proprietor of the contested mark knew or ought to have known that a third party was using an identical or similar sign for an identical or similar product or service and that such knowledge exists, for example, where the parties have been in a business relationship with each other. It also refers to the presumption set out in paragraph 39 of the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361), of knowledge arising from general knowledge in the economic sector concerned of such use, knowledge which is capable of being inferred from, inter alia, the duration of such use.
It adds that the existence of a direct or indirect relationship between the parties prior to the filing of the contested mark, for example the existence of a pre-contractual, contractual or post-contractual relationship, can also be an indication of bad faith on the part of the proprietor of the contested mark.
70      The applicant claims, in essence, that the founders of TNK Silma, A and B, who were employees and, as from 7 June 2000, minority shareholders in AO Silma, knew or ought to have known of the use, by Kreoma-Pharm and AO Silma, of the term ‘enterosgel’ as an unregistered trade mark in Russia, Ukraine and Moldova.
71      In that regard, the applicant submits that it provided evidence of the use of an unregistered mark Enterosgel in the course of trade by Kreoma-Pharm and AO Silma in connection with a product which was approved by the competent authorities for medical use in Russia, Ukraine and Moldova. The applicant thus submits that, at the time when they became minority shareholders in AO Silma on 7 June 2000, A and B knew or ought to have known of, inter alia, the following facts and chronology:
–        the pharmacopoeia monograph for the medicinal product Enterosgel (Annex 1 to the application for a declaration of invalidity);
–        the agreement concluded between Kreoma-Pharm and its employees, dated 1 July 1991 (Annex 2 to the application for a declaration of invalidity);
–        the authorisations for medical use in respect of Enterosgel and Enterosgelum which were issued in 1993, 1994 and 1995 in Ukraine, Russia and Moldova respectively (Annexes 3, 4 and 5 to the application for a declaration of invalidity);
–        Ukrainian patent No 7472 for the methyl-silicic hydrogels Enterosgel Super with a priority date of 11 March 1994 in the name of several inventors, a patent which was transferred to Kreoma-Pharm on 3 March 1999 by one of the inventors (Annexes 6 and 7 to the application for a declaration of invalidity);
–        the contract of incorporation of AO Silma with AO Silan and Kreoma-Pharm as the main shareholders, dated 27 April 1993, and the statutes amended by the general assembly of shareholders of 5 December 1996 (Annexes 8 and 9 to the application for a declaration of invalidity).
–        the fact that A himself, as an employee of AO Silma, publicly stated in 1994, during a presentation of a new product to a medical audience, that all the intellectual property rights relating to Enterosgel belonged to ‘Kreoma’ (Annexes 5 and 6 to the statement of grounds of appeal);
–        the ‘Guidelines relating to the clinical use of Enterosgel’ referring to ‘CJSC Silma 2000’, and a representation of the packaging of that product (Annex 7 to the statement of grounds of appeal);
–        the contract between AO Silma and Kreoma-Pharm of 18 October 1995 relating to the supply of Enterosgel (Annex 8 to the statement of grounds of appeal).
72      EUIPO and the intervener dispute those arguments.
73      First of all, EUIPO is right in stating that it was not mandatory for the applicant to invoke and substantiate any prior right in the contested mark, but that, given that the applicant had based its arguments relating to bad faith on the alleged existence of prior exclusive interests and rights in the contested sign, the Cancellation Division and the Board of Appeal correctly examined whether or not those arguments were well-founded. In that regard, it is clear from the case-law referred to in paragraph 33 above that it is the applicant for a declaration of invalidity, namely the applicant in the present case, which bears the burden of proving bad faith, since there is a presumption of good faith until proof to the contrary is adduced.
74      It is necessary, in this connection, to refer to paragraph 28 of the contested decision, according to which the applicant’s arguments before the Board of Appeal with regard to the question of whether TNK Silma acted in bad faith can be summarised as follows: TNK Silma was not allowed to designate the European Union in respect of the contested mark because it was not involved in the development of the product Enterosgel which was invented by Kreoma-Pharm and produced in the 1990s by AO Silma and Kreoma-Pharm; moreover, TNK Silma was not the first to apply for the trade mark Enterosgel since Russian trade mark application No 219 832
ЄНТЕРОСГЕЛЬ had already been filed on 18 January 2002 by AO Silma, in which the Ukrainian company Kreoma-Pharm was the main shareholder. That delimitation of the applicant’s arguments before EUIPO has not been disputed in the application.
75      In any event, even if it had to be held that an argument
had also been put forward during the administrative proceedings that there was, within the meaning of the case-law cited in paragraph 36 above, knowledge of the use of a sign that was identical or similar to the contested sign for identical or similar goods, it would be sufficient to point out that the Cancellation Division and then the Board of Appeal both verified whether the evidence provided by the applicant proved that Kreoma-Pharm or AO Silma had used the sign Enterosgel as a trade mark, before 31 March 2006, outside or within the European Union. They found, however, that such a use of the sign as a trade mark had not been proved to the requisite legal standard.
76      The Board of Appeal thus found, in paragraph 32 of the contested decision, which has been referred to in paragraph 51 above, that the applicant had not proved to the requisite legal standard that the contested sign had been used as a trade mark prior to the designation of the European Union in respect of the contested mark. It found that, although the agreement of 1 July 1991 between Kreoma-Pharm and its employees for the development of a pharmaceutical product, the authorisations to use the medicinal products Enterosgel or Enterosgelum in the name of Kreoma-Pharm in Russia, Ukraine and Moldova, dated 1994 and 1995, and the Ukrainian patent No 7472 for Enterosgel Super which had been transferred to Kreoma-Pharm on 3 March 1999 indeed showed that the active ingredient of the medicinal product named ‘Enterosgel’ had been developed by employees of Kreoma-Pharm and had obtained patent protection, no documents had, however, been provided that showed that Kreoma-Pharm had used that name as a trade mark prior to the designation of the European Union in respect of the contested mark. In paragraph 33 of the contested decision, the Board of Appeal examined the contract of incorporation of AO Silma of 27 April 1993 and its statutes of 5 December 1996, which had been attached to the application for a declaration of invalidity as Annexes 8 and 9, and the ‘Guidelines – Clinical Use of Enterosgel’ referring to CJSC Silma 2000, and the contract between AO Silma and Kreoma-Pharm dated 18 October 1995 concerning the supply of Enterosgel, which had been attached to the statement of grounds of appeal as Annexes 7 and 8. However, the Board of Appeal found, in essence, that those documents did not in any way refer to any trade mark rights in relation to the sign at issue.
77      It must also be borne in mind that the Cancellation Division’s decision, which the Board of Appeal upheld in its entirety, also concluded that the evidence provided did not show that AO Silma had actually used the sign Enterosgel on the Ukrainian, Russian or EU markets at the time when the contested mark was registered.
78      While, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must also be understood in the context of trade mark law, which is that of the course of trade. In that regard, Regulations No 40/94, No 207/2009 and 2017/1001, which were adopted successively, have the same objective, namely the establishment and functioning of the internal market (see, as regards Regulation No 207/2009, judgment of 27 June 2013, Malaysia Dairy Industries, C‑320/12, EU:C:2013:435, paragraph 35). The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers through the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45).
79      Consequently, the use of a sign as a trade mark must be understood as use which enables the consumer, without any possibility of confusion, to distinguish the goods of one entity from others which have a different origin.
80      However, the Board of Appeal was right in finding, in paragraphs 32 and 33 of the contested decision, that the evidence submitted was not sufficient to establish that either Kreoma-Pharm or AO Silma had actually used the contested sign as a trade mark. As EUIPO and the intervener rightly pointed out at the hearing, it establishes at most only that there were preparations with a view to the marketing of a medicinal product or that there was internal use of the sign, but not that there was actual use of the sign Enterosgel as a trade mark on the market. For the sake of completeness, it must be stated that the application is confused as regards the entity which supposedly used that sign as a trade mark, referring sometimes to Kreoma-Pharm and sometimes to AO Silma.
81      First, as regards the agreement of 1 July 1991 (Annex 2 to the application for a declaration of invalidity), it must be stated that there is no reference either to trade mark rights or to the term ‘enterosgel’. Secondly, it must be held that the ownership of a patent for a medicinal product named Enterosgel Super shows that an invention is protected but not that there is any actual use of a sign that is identical or similar to the contested sign, which enables the consumer, without any possibility of confusion, to distinguish
on the Ukrainian market
those goods or services from others which have a different origin. Thirdly, as regards the authorisations for medical use issued by the competent authorities in Ukraine, Moldova and Russia, it must be stated that, although they are also part of the idea of preparations with a view to the production and commercial exploitation of a medicinal product, they are also insufficient to establish that there was actual use of the sign Enterosgel or of a similar sign as a trade mark on the markets concerned. Those findings also apply to the very fragmentary extracts from the pharmacopoeia monograph which were translated into the language of the case (Annex 1 to the application for a declaration of invalidity). Fourthly, as regards the video and its retranscription of a workshop dated 29 June 1995 (Annexes 5 and 6 to the statement of grounds of appeal), it is sufficient to state that the term ‘enterosgel’, like the term ‘trade mark’, are not even mentioned in them.
82      Fifthly, the Board of Appeal’s finding in paragraph 33 of the contested decision regarding the extracts from the documents concerning the formation of AO Silma which were translated into the language of the case (Annexes 8 and 9 to the application for a declaration of invalidity) must also be upheld, as there was no reference to a trade mark.
83      Sixthly, as regards the ‘Guidelines – Clinical Use of Enterosgel’ (Annex 7 to the statement of grounds of appeal), it must be stated that they reproduce the photograph of a box for a medicinal product bearing the name ЄНТЕРОСГЕЛЬ, that is to say, ENTEROSGEL in Latin characters, and mention that CJSC Silma is responsible for the development, production and marketing of a medicinal product (Annex 7 to the statement of grounds of appeal). However, that evidence is not, on its own, sufficient to prove that that sign was actually used as a trade mark in the context of any actual marketing on the market.
84      Seventhly, as regards the supply contract dated 18 October 1995 under which Kreoma-Pharm undertook to supply AO Silma with ‘methyl-silicic acid hydrogel (Enterosgel)’ (Annex 8 to the statement of grounds of appeal), it is true that it expressly mentions the term ‘enterosgel’, but it is, at most, capable of showing that there has been internal use of that sign. Furthermore, it does not refer to a trade mark. The applicant thus errs in submitting that that document proves that Kreoma-Pharm and its related companies have shown that they were involved in the use, sale, marketing and promotion of the product bearing the trade mark Enterosgel before TNK Silma and its founders.
85      Since the use of the sign Enterosgel or a similar sign as a trade mark prior to 31 March 2006 has not been established, it was not necessary for the Board of Appeal to examine the question of whether TNK Silma or its shareholders had any knowledge of such (non-) use, as EUIPO points out in its reply to the Court’s measure of organisation of procedure.
86      Lastly, as regards the applicant’s reference to EUIPO’s decision of 18 November 2019, which has been referred to in paragraph 20 above, it is apparent from settled case-law that the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 71). In any event, it must be pointed out that the reasoning in that decision is not capable of being applied to the present case as the facts are different.
87      It follows from the foregoing that the third part of the single plea must be rejected.
The fourth part of the single plea
88      In paragraph 50 of the application, the applicant states that the Board of Appeal infringed the principles of legitimate expectations and of legal certainty as well as the provisions of international law set out in the Universal Copyright Convention as revised at Paris on 24 July 1971.
89      As regards the alleged infringement of the principles of legitimate expectations and of legal certainty, it must be stated that that alleged infringement has in no way been presented by the applicant as a plea in support of its application for annulment of the contested decision. Whilst it should be acknowledged that the statement of pleas in the application need not conform with the terminology and layout of the Rules of Procedure and may be expressed in terms of their substance rather than of their legal classification, the application must nonetheless set out those pleas with sufficient clarity. In those circumstances, the lack of clarity as to the nature of that argument did not allow EUIPO to prepare its defence, which is borne out, in particular, by the absence, in EUIPO’s written submissions, of a reply to that argument. Therefore, even if the applicant intended to raise that argument as a plea in its application for annulment, it must be held that the requirements for clarity and precision arising out of Article 76(d) of the Rules of Procedure are clearly infringed (see, to that effect and by analogy, judgment of 9 November 2016, Smarter Travel Media v EUIPO (SMARTER TRAVEL), T‑290/15, not published, EU:T:2016:651, paragraphs 89 to 91).
90      As regards the argument relating to the Board of Appeal’s alleged infringement of the provisions of international law set out in the Universal Copyright Convention as revised at Paris on 24 July 1971, it must be pointed out that that argument has already been rejected in paragraphs 55 and 56 above.
91      The fourth part of the single plea must thus be rejected and the action must therefore be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s claim seeking to have the Court ‘stat[e] that [the applicant for registration was acting in] bad faith on the date of the designation of the European Union in [the] International trademark application [for the contested trade mark,] and [declare the contested] trademark [invalid]’.
92      Lastly, as regards the intervener’s contention
that the contested decision should be upheld, it must be stated that that head of claim is tantamount to requesting the dismissal of the action (see, to that effect, judgment of 17 January 2018, Deichmann v EUIPO – Munich (Representation of a cross on the side of a sports shoe), T‑68/16, EU:T:2018:7, paragraph 21 and the case-law cited).
Costs
93      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.
94      Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO and the intervener, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Health Product Group sp. z o.o. to pay the costs.
Collins
Csehi
De Baere
Delivered in open court in Luxembourg on 16 June 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.