ORDER OF THE GENERAL COURT (Sixth Chamber)
7 April 2022 (*)
(EU trade mark – Invalidity proceedings – International registration designating the European Union – Word mark Vagisan – Cross-claim – Subject matter of the action – No interest in bringing proceedings – Inadmissibility)
In Case T‑679/20,
Dr. August Wolff GmbH & Co. KG Arzneimittel, established in Bielefeld (Germany), represented by A. Thünken, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO),
represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Combe International LLC, established in New York, New York (United States), represented by B. Niemann Fadani, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 3 September 2020 (Case
R 2459/2019‑4), relating to invalidity proceedings between Combe International and Dr. August Wolff, and a CROSS-CLAIM brought against that decision,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen and C. Iliopoulos (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 13 November 2020,
having regard to the request for a stay of proceedings lodged at the Court Registry by EUIPO on 1 February 2021,
having regard to the response of EUIPO lodged at the Court Registry on 14 July 2021,
having regard to the response of the intervener lodged at the Court Registry on 3 March 2021,
having regard to the cross-claim of the intervener lodged at the Court Registry on 3 March 2021,
having regard to the plea of inadmissibility relating to the cross-claim, raised by EUIPO by document lodged at the Court Registry on 20 September 2021,
having regard to the response of the applicant to the cross-claim, lodged at the Court Registry on 24 September 2021,
having regard to the observations of the intervener on the plea of inadmissibility raised by EUIPO, lodged at the Court Registry on 6 December 2021,
makes the following
Order
Background to the dispute
1        On 18 November 2011, the applicant, Dr. August Wolff GmbH &
Co. KG Arzneimittel, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 10985168 designating the European Union in respect of the word mark Vagisan.
2        The goods in respect of which the mark was registered are, following the restriction made in the course of the proceedings before the European Union Intellectual Property Office (EUIPO), in Classes 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 3: ‘Soaps, perfumery, essential oils, cosmetics, hair lotions; all the aforementioned goods for personal hygiene in the intimate area, for vaginal dryness and to support the vaginal flora’;
–        Class 5: ‘Pharmaceutical products, sanitary products for medical purposes; dietetic substances for medical purposes; all the afore-mentioned goods for personal hygiene in the intimate area, for vaginal dryness and to support the vaginal flora’.
3        The international registration designating the European Union in respect of the word mark Vagisan was notified to EUIPO on 2 February 2012, published in Community Trade Marks Bulletin
No 2012/024 of 3 February 2012 and granted the same protection as that granted to an EU trade mark on 4 December 2012 (Community Trade Marks Bulletin
No 2012/231).
4        On 2 December 2017, the intervener, Combe International LLC, filed an application with EUIPO for a declaration of invalidity of the contested mark in respect of all the goods referred to in paragraph 2 above.
5        The application for a declaration of invalidity was based on, inter alia, the following earlier marks:
–        the UK word mark VAGISIL, filed and registered on 6 February 1985 under No 1235127 and renewed until 6 February 2026, covering goods in Class 3 and corresponding to the following description: ‘Non-medicated toilet preparations; soaps; deodorants for personal use; anti-perspirants; non-medicated preparations for the care of the skin and body; talcum powder for toilet use and cosmetic powders for the body’;
–        the UK word mark VAGISIL, filed on 24 February 2006, registered on 25 August 2006 under No 2414935 and renewed until 24 February 2026, covering goods in Class 5 and corresponding to the following description: ‘Medicated, pharmaceutical and sanitary preparations and substances; sanitary napkins, towels, towelletes, pads, tampons, panties and panty-liners, all for hygienic purposes; wipes, tissues and towelletes impregnated with pharmaceutical lotions; medicated feminine hygiene wipes’;
–        the Spanish word mark VAGISIL, filed on 4 November 2011 and registered on 13 February 2012 under No M3004707, covering goods in Class 3 and corresponding to the following description: ‘Cosmetic products for female intimate use, including shower [products] for female hygiene, other than for medical use, female deodorants, pre-moistened wipes for female hygiene, anti-itch creams for female hygiene and vaginal lubricants’;
–        the Portuguese word mark VAGISIL, filed on 19 July 2005 and registered on 30 June 2006 under No 392479
covering goods in Class 5 and corresponding to the following description: ‘Pharmaceutical and veterinary products; hygienic products
for medical purposes; non-prescription topical cream for irritated skin, lotions and wipes’;
–        the Polish word mark VAGISIL, filed on 1 February 2011 and registered on 14 September 2012 under No R.249418, covering goods in Classes 3 and 5 corresponding, for each of those classes, to the following description:
–        Class 3: ‘Cosmetic creams, foaming cleansers, lubricants and moisturisers for personal use, talcum powder for toilet use, pre-moistened wipes/wipes, deodorant spray, washing
preparations, all the aforementioned goods for women’;
–        Class 5: ‘Over-the-counter topical healing and itching creams for women and pre-moistened wipes/wipes for women for medical purposes’.
6        The ground relied on in support of the application for a declaration of invalidity was that referred to in Article 60(1)(a) of 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), read in conjunction with Article 8(1)(b) of that regulation.
7        Following the request made by the applicant, and in accordance with Article 64(2) and (3) of Regulation 2017/1001, EUIPO invited the intervener to furnish proof of genuine use of the earlier marks on which it based its application for a declaration of invalidity. The intervener complied with that request within the prescribed period.
8        By decision of 11 September 2019, the Cancellation Division upheld the application for a declaration of invalidity by declaring the contested mark invalid in respect of all the goods referred to in paragraph 2 above.
9        On 30 October 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
10      By decision of 3 September 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the decision of the Cancellation Division and dismissed the appeal. First, in following the approach of the Cancellation Division, it relied solely on the two earlier UK word marks VAGISIL, Nos 1235127 and 2414935 (‘the earlier UK word marks’), for the purposes of assessing whether there was a likelihood of confusion. It also stated that the intervener could rely on the earlier rights protected in the United Kingdom until the end of the transition period laid down in the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7) (paragraph 40 of the contested decision). Secondly, the Board of Appeal noted that the goods at issue were aimed at the female public and professionals, whose level of attention varied from above average to high (paragraph 58 of the contested decision). As regards the relevant territory for the assessment of the likelihood of confusion, the Board of Appeal found that it was that of the United Kingdom (paragraph 41 of the contested decision). Thirdly, the Board of Appeal found that the goods in Class 3 covered by the contested mark were identical to the goods covered by the earlier UK word marks and also that the goods in Class 5 covered by the contested mark were in part identical and in part similar to an average degree to those covered by the earlier UK marks (paragraphs 44 to 48 of the contested decision). Fourthly, as regards the comparison of the signs, the Board of Appeal took the view that they were visually and phonetically similar to an average degree and conceptually similar to a low degree (paragraphs 54 and 55 of the contested decision). Fifthly, taking into account the average degree of visual and phonetic similarity, the at least average degree of identity or similarity of the goods at issue and the normal degree of inherent distinctiveness of the earlier marks, it concluded that there was a likelihood of confusion on the part of the relevant public (paragraph 61 of the contested decision). Sixthly, the Board of Appeal stated that it was not necessary to examine either the other earlier rights or the other grounds relied on in support of the application for a declaration of invalidity.
Procedure and forms of order sought
11      By application lodged at the Court Registry on 13 November 2020, the applicant brought an action in the present case for annulment of the contested decision.
12      By document lodged at the Court Registry on 3 March 2021, the intervener brought a cross-claim pursuant to Article 182 of the Rules of Procedure of the General Court.
13      In the cross-claim, in the final version of the form of order sought, the intervener contends that the Court should:
–        amend the contested decision so that the cancellation of the contested mark is also based on the other earlier marks, namely the Spanish word mark VAGISIL No M3004707, the Polish word mark VAGISIL No R.249418 and the Portuguese word mark VAGISIL No 392479;
–        in the alternative, confirm the contested decision and remit the case back to the Board of Appeal of EUIPO so that it can issue a decision based also on the other earlier marks, namely the Spanish word mark VAGISIL No M3004707, the Polish word mark VAGISIL No R.249418 and the Portuguese word mark VAGISIL No 392479;
–        order the applicant and EUIPO to bear the costs in these proceedings.
14      In its plea of inadmissibility, EUIPO contends that the Court should:
–        dismiss the cross-claim as inadmissible;
–        order the intervener to pay the costs relating to the cross-claim.
15      In its response to the cross-claim, the applicant contends that the Court should dismiss the cross-claim.
Law
The cross-claim
16      In accordance with Article 191 of the Rules of Procedure, subject to the special provisions of Title IV thereof concerning proceedings relating to intellectual property rights, the provisions of Title III apply also to the proceedings referred to in Title IV. That applies, in particular, to Article 130(1) of those rules (see order of 16 September 2021, H&H v EUIPO – Giuliani (Swisse), T‑486/20, not published, EU:T:2021:619, paragraph 29 and the case-law cited).
17      Under Article 130(1) of the Rules of Procedure, if a defendant so requests, the Court may rule on a plea of inadmissibility without going to the substance of the case. In the present case, EUIPO has raised a plea of inadmissibility in respect of the cross-claim submitted by the intervener. Since the Court considers that it has sufficient information from the documents in the file, it is not necessary to open the oral part of the procedure.
18      By its plea of inadmissibility, EUIPO disputes the admissibility of the cross-claim. In particular, it submits that the head of claim seeking amendment of the contested decision is inadmissible on the ground that the intervener is not in a situation in which its claims have been adversely affected by the contested decision and that amendment of that decision would imply that the Court should carry out an examination which had not been carried out by the Board of Appeal.
The first head of claim in the cross-claim
19      By the first head of claim in the cross-claim, the intervener asks the Court, principally, to amend the contested decision so that the cancellation of the contested mark is also based on the other earlier marks relied on in support of the application for a declaration of invalidity.
20      As a preliminary point, the first head of claim in the cross-claim must be understood as seeking confirmation of the approach adopted in the contested decision, by having the Court amend the reasoning of that decision.
21      In that regard, it should be observed that the provisions of Article 72(4) of Regulation 2017/1001 provide that an action before the Court against a decision of a Board of Appeal of EUIPO is to be ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’. Moreover, according to settled case-law, an applicant’s interest in bringing proceedings is an essential prerequisite for any legal proceeding and must, in the light of the purpose of the action, exist at the time when the action is brought, failing which the action will be inadmissible. The legal interest in bringing proceedings presupposes that the action must be liable, if successful, to procure an advantage to the party bringing it (see judgment of 25 September 2015, Copernicus-Trademarks v OHIM – Bolloré (BLUECO), T‑684/13, EU:T:2015:699, paragraph 27 and the case-law cited).
22      A decision of a Board of Appeal must be regarded as having upheld the claims of one of the parties before that Board when it grants the application of that party on the basis of one of the grounds for refusal of registration or for invalidity of a mark or, more generally, of only part of the arguments put forward by that party, even where it does not examine, or where it dismisses, the other grounds or arguments raised by that party (see judgment of 25 September 2015, BLUECO, T‑684/13, EU:T:2015:699, paragraph 28 and the case-law cited).
23      In the present case, it must be stated that the Board of Appeal dismissed the appeal brought by the applicant against the decision of the Cancellation Division, which had granted the application for a declaration of invalidity filed by the intervener and declared the contested mark invalid. Thus, even though it examined the application for a declaration of invalidity solely on the basis of the earlier UK word marks, the Board of Appeal upheld the intervener’s claims in their entirety.
24      It is also necessary to examine the intervener’s argument that the fact that the Board of Appeal did not examine its earlier national trade marks obtained in Spain, Poland and Portugal had adverse consequences for it in so far as it allowed the applicant, at the end of the transition period, to be the proprietor of a UK right corresponding to the contested international registration, provided for in the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community.
25      However, the adverse consequences referred to by the intervener are independent of the decisions of EUIPO, which upheld the intervener’s claims by declaring the contested mark invalid and then dismissed the appeal brought against that decision. Those adverse consequences thus derive not from those decisions, but from the suspension of one of them, namely the contested decision, pursuant to Article 71(3) of Regulation 2017/1001, by reason of the bringing of an action against that decision. Therefore, it does not follow from the adverse consequences relied on by the intervener that the contested decision did not uphold its claims.
26      Accordingly, it must be concluded that the intervener has no interest in the present case in seeking amendment of the contested decision.
27      In any event, it should be borne in mind, for the sake of completeness, that the power of the General Court under Article 72(3) of Regulation 2017/1001 to alter decisions does not have the effect of conferring on it the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72, and of 21 July 2016, Apple and Pear Australia and Star Fruits Diffusion v EUIPO, C‑226/15 P, EU:C:2016:582, paragraph 67).
28      In the present case, it is apparent from paragraphs 40 and 64 of the contested decision that, in the same way as the Cancellation Division and for reasons of procedural economy, the Board of Appeal examined the application for a declaration of invalidity solely in relation to the earlier UK word marks, even though that application was based on several marks.
29      Therefore, it must be held that, as EUIPO correctly submits in its plea of inadmissibility, the first head of claim in the cross-claim seeks to have the Court rule on an aspect which was not examined in the contested decision. The Court, however, in accordance with the case-law referred to in paragraph 27 above, cannot examine, for the first time, an issue on which the Board of Appeal has not adopted a position.
30      It follows that the first head of claim in the cross-claim must be rejected as being inadmissible.
The second head of claim in the cross-claim
31      By the second head of claim in the cross-claim, the intervener asks the Court, in the alternative, to confirm the contested decision and to remit the case back to EUIPO so that it may issue a decision based on the other earlier marks relied on in support of the application for a declaration of invalidity.
32      EUIPO takes the view that the contested decision upholds the intervener’s claims and that annulment of that decision is not therefore capable of procuring any advantage for it. Consequently, EUIPO argues, the intervener has no interest in bringing proceedings in the present case.
33      As a preliminary point, the second head of claim in the cross-claim must be understood as seeking confirmation of the approach adopted in the contested decision, on
grounds to be amended by the Board of Appeal, following a referral back to it.
34      In the light of the arguments set out in paragraphs 21 to 23 above, it must be held that the contested decision upholds the intervener’s claims and that, accordingly, the intervener has no interest in challenging it.
35      Consequently, the second head of claim must also be rejected as being inadmissible.
36      It follows from all of the foregoing that the intervener’s cross-claim must be dismissed as being inadmissible.
Costs
37      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.
38      Since the intervener has been unsuccessful in its cross-claim, it must be ordered to bear its own costs and to pay those incurred by EUIPO relating to those proceedings, in accordance with the form of order sought by EUIPO. Since the applicant has not set out a form of order in that regard, it must bear its own costs of the proceedings relating to the cross-claim.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby orders:
1.      The cross-claim is dismissed as being inadmissible.
2.      Combe International LLC shall bear its own costs and pay those incurred by the European Union Intellectual Property Office (EUIPO) in the proceedings relating to the cross-claim.
3.      Dr. August Wolff GmbH & Co. KG Arzneimittel shall bear its own costs of the proceedings relating to the cross-claim.
Luxembourg, 7 April 2022.
E. Coulon
A. Marcoulli
Registrar
President
*      Language of the case: English.