ORDER OF THE GENERAL COURT (Sixth Chamber)
19 February 2025 (*)
( EU trade mark – Invalidity proceedings – EU word mark EDUCTOR – Earlier non-registered mark EDUCTOR – Relative ground for invalidity – Article 53(1)(b) of Regulation (EC) No 207/2009 (now Article 60(1)(b) of Regulation (EU) 2017/1001) – Article 8(3) of Regulation No 207/2009 (now Article 8(3) of Regulation 2017/1001) – Infringement of essential procedural requirements – Principle of functional continuity – Article 72(1) of Regulation 2017/1001 – Error of law – Criteria for assessing the well-known character of a mark – Article 6bis of the Paris Convention – Distortion of the clear sense of the evidence produced – Action manifestly lacking any foundation in law )
In Case T‑102/24,
Qx World Kft., established in Budapest (Hungary), represented by Á. László and A. Cserny, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Mandelay Magyarország Kereskedelmi Kft. (Mandelay Kft.), established in Szigetszentmiklós (Hungary), represented by V. Łuszcz, C. Sár and É. Ulviczki, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira (Rapporteur), President, M. Kancheva and P. Zilgalvis, Judges,
Registrar: V. Di Bucci,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, QX World Kft., seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 December 2023 (Case R 8/2022-4) (‘the contested decision’).
Background to the dispute
2        On 6 November 2017, the applicant filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application lodged by the intervener, Mandelay Kft., on 24 October 2013 in respect of the word sign EDUCTOR.
3        The goods and services covered by the mark at issue in respect of which a declaration of invalidity was sought were in Classes 10, 35 and 44 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 corresponded, for each of those classes, to the following description:
–        Class 10: ‘Medical and veterinary instruments and devices, medical instruments and diagnostic devices based on bioresonance’;
–        Class 35: ‘Commercial services relating to medical instruments and devices; and to instruments and diagnostic devices operating based on bioresonance’;
–        Class 44: ‘Therapeutic and diagnostic medical services based on bioresonance’.
4        The ground for invalidity relied on in support of that application was that referred to in Article 60(1)(b) 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(3) of that regulation.
5        The application for a declaration of invalidity was based on the non-registered mark EDUCTOR, protected in Hungary, Germany, Bulgaria, Belgium, Austria, Cyprus, Denmark, Greece, Spain, Finland, France, the United Kingdom, Italy, the Netherlands, Portugal, Romania and Sweden in respect of the following goods and services: ‘scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services’.
6        By decision of 16 April 2019, the Cancellation Division dismissed the application for a declaration of invalidity, on the ground that the applicant had failed to establish the existence of the earlier non-registered trade mark EDUCTOR for the purposes of Article 8(3) of Regulation 2017/1001.
7        On 14 June 2019, the applicant filed an appeal with EUIPO against the Cancellation Division’s decision.
8        By decision of 2 December 2019, the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, it considered that the applicant’s contention that the earlier mark was well known, within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (‘the Paris Convention’), constituted a new ground for invalidity, which, in accordance with the case-law, could not be added in the course of opposition proceedings or subsequent appeal proceedings.
9        By application lodged at the Registry of the General Court on 13 February 2020, the applicant brought an action for annulment of the decision of the Fifth Board of Appeal of EUIPO.
10      By judgment of 8 September 2021, Qx World v EUIPO – Mandelay (EDUCTOR) (T‑85/20, not published, EU:T:2021:556), the General Court upheld the applicant’s action and annulled the decision of the Fifth Board of Appeal of EUIPO. More specifically, it considered that that Board of Appeal had erred in law in finding that the applicant’s contention that the earlier mark was also well known constituted a new ground for invalidity which, as such, could not be relied on in the course of the proceedings (judgment of 8 September 2021, EDUCTOR, T‑85/20, not published, EU:T:2021:556, paragraph 64).
11      On 3 January 2022, the case was reassigned to the Fourth Board of Appeal of EUIPO.
12      By the contested decision, the Fourth Board of Appeal of EUIPO dismissed the appeal brought against the Cancellation Division’s decision on the ground that the evidence submitted by the applicant was insufficient clearly, convincingly and effectively to show that the earlier mark was well known, within the meaning of Article 6bis of the Paris Convention, in one of the Member States referred to in paragraph 5 above, to designate, at the time when the application for registration of the contested mark was filed (24 October 2013) and on the filing date of the application for a declaration of invalidity (6 November 2017), biofeedback systems or any other goods. It concluded that the application for a declaration of invalidity based on the ground set out in Article 60(1)(b) of Regulation 2017/1001, read in conjunction with Article 8(3) of that regulation, allegedly also based on that earlier well-known mark, had to be dismissed on that ground from the outset, without it being necessary to assess whether any other requirements were fulfilled.
Forms of order sought
13      The applicant claims, in essence, that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
14      EUIPO contends that Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
15      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred in the present proceedings and the proceedings before the Board of Appeal.
Law
16      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
17      In the present case, the Court considers that it has been sufficiently informed by the documents in the file and decides, in accordance with Article 126 of the Rules of Procedure, to give judgment without taking further steps in the proceedings.
18      In view of the date on which the application for registration of the contested mark was filed, namely 24 October 2013, which is decisive for the purpose of identifying the applicable substantive law, the facts of the present case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark) (OJ 2017 L 154, p. 1)) (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). Furthermore, according to settled case-law, procedural rules are generally deemed 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).
19      Consequently, in the present case, first, as regards the substantive rules, the references made by the parties in their written pleadings to the provisions of Regulation 2017/1001 must be understood as referring to the provisions of No 207/2009, which are identical in content.
20      Secondly, with regard to the procedural rules, the dispute is governed by the provisions of Regulation 2017/1001 and those of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).
21      In support of the action, the applicant relies, in essence, on three pleas in law, alleging (i) infringement of an essential procedural requirement and the breach of the rights to good administration and to an effective remedy, (ii) a defect in the statement of reasons of the Cancellation Division’s decision and (iii) an error of law and the distortion of the evidence.
The first plea in law, alleging the infringement of an essential procedural requirement and the breach of the rights to good administration and to an effective remedy
22      The applicant argues, in essence, that, since the Cancellation Division did not examine the ground relating to the existence of the well-known character of the earlier mark, within the meaning of Article 6bis of the Paris Convention, the Board of Appeal was not empowered to rule on that ground instead of the Cancellation Division. The devolutive effect of the appeal procedure cannot confer such a possibility on that Board of Appeal. The applicant therefore submits that, by doing so, that Board of Appeal infringed an essential procedural requirement and breached its rights to good administration and to an effective remedy, as provided for in Articles 41 and 47 of the Charter of Fundamental Rights of the European Union.
23      EUIPO and the intervener dispute the applicant’s arguments.
24      In that regard, it is important to recall that, according to settled case-law, there is functional continuity between the various departments of EUIPO on the one hand, and the Boards of Appeal on the other. It follows from that functional continuity that, in the review of decisions taken by the departments of EUIPO hearing the application at first instance which the Boards of Appeal must undertake, the Boards of Appeal are required to base their decision on all the matters of fact and of law which the parties concerned introduced either in the proceedings before the department which heard the application at first instance or in the appeal. The review undertaken by the Boards of Appeal is not limited to the lawfulness of the contested decision, but, by virtue of the devolutive effect of the appeal proceedings, it requires a reappraisal of the dispute as a whole, since the Boards of Appeal must re-examine in full the initial application and take into account evidence produced in due time. Thus, it follows from Article 71(1) of Regulation 2017/1001 that, through the effect of the appeal before it, the Board of Appeal is called upon to carry out a full re-examination of the merits of the opposition, in both law and fact (see, to that effect, judgment of 17 April 2024, Insider v EUIPO – Alaj (in Insajderi), T‑119/23, EU:T:2024:253, paragraph 16 and the case-law cited).
25      In the present case, it follows from paragraph 20 of the contested decision that the issue concerning the Cancellation Division’s alleged failure to draw a conclusion on the ground relating to the existence of the well-known character of the earlier mark had been put forward by the applicant in its statement setting out the grounds of appeal before the Board of Appeal, with the result that that issue was part of the matters of fact and law which the Board of Appeal was, in any event, required to examine, by virtue of the principle of functional continuity.
26      It follows from the foregoing that, contrary to what the applicant maintains, the Board of Appeal, in deciding to examine the ground relating to the existence of the well-known character of the earlier mark, clearly neither infringed an essential procedural requirement nor breached the applicant’s rights to good administration and to an effective remedy.
27      The present plea in law must therefore be rejected as being manifestly unfounded.
The second plea in law, alleging a defect in the statement of reasons of the Cancellation Division’s decision
28      The applicant submits, in essence, that the Cancellation Division’s decision is vitiated by a failure to state reasons, in so far as it does not contain any statement of reasons concerning the well-known character of the earlier mark.
29      EUIPO and the intervener dispute the applicant’s arguments.
30      In that regard, it is sufficient to recall that the legality of the Board of Appeal’s decision must not be assessed in the light of the legality of the Cancellation Division’s decision, but solely on the basis of the factual and legal findings in the contested decision and the adequacy of its statement of reasons. In accordance with Article 72(1) of Regulation 2017/1001, actions may be brought before the General Court only against decisions of the Boards of Appeal, with the result that, in the case of such an action, only pleas directed against those decisions are admissible (see judgment of 8 September 2021, EDUCTOR, T‑85/20, not published, EU:T:2021:556, paragraph 31 and the case-law cited).
31      The present plea in law must therefore be rejected as manifestly inadmissible.
The third plea in law, alleging an error of law and the distortion of the evidence
32      The present plea is divided into two parts. The first part relates to the incorrect application to the facts of the present case of the criteria for assessing the well-known nature of a mark. The second part relates to the distortion of the evidence submitted by the applicant.
The first part, relating to the incorrect application of the assessment criteria of the well-known character of a mark
33      The applicant submits, in essence, that, although, for the purposes of assessing the well-known character of the earlier mark, the Board of Appeal correctly identified the assessment criteria, it disregarded the most decisive assessment criteria in its analysis. According to the applicant, first, that Board of Appeal failed to assess the evidence relating to the duration, extent and geographical area of use of the earlier mark. Secondly, the case-law does not require proof that the mark is known to a given proportion of the relevant public, contrary to what that Board of Appeal required in the contested decision. Thirdly, that Board of Appeal incorrectly considered proof of the market share held by the earlier mark or proof of the size of the investment made for the purposes of its promotion to be a mandatory condition for the assessment of its well-known character.
34      EUIPO and the intervener dispute the applicant’s arguments.
35      In that regard, it should be borne in mind that, under Article 2 of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, adopted by the Assembly of the Paris Union and the General Assembly of the World Intellectual Property Organization (WIPO) at the 34th series of meetings of the assemblies of the Member States of WIPO (20 to 29 September 1999), in determining whether a mark is a well-known mark within the meaning of the Paris Convention, the competent authority can take into account any circumstances from which it may be inferred that the mark is well known, including: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of any use of the mark; the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent to which they reflect use or recognition of the mark; the record of successful enforcement of rights in the mark, in particular, the extent to which the mark has been recognised as well known by competent authorities; the value associated with the mark (see judgment of 10 June 2020, B.D. v EUIPO – Philicon-97 (PHILIBON), T‑717/18, not published, EU:T:2020:256, paragraph 25 and the case-law cited).
36      Article 2(1)(c) of the joint recommendation referred to in paragraph 35 above states that those factors are ‘guidelines to assist the competent authority to determine whether the mark is a well-known mark [and] are not pre-conditions for reaching that determination’, that ‘the determination in each case will depend upon the particular circumstances of that case’, that, ‘in some cases all of the factors may be relevant’, ‘in still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not listed in [that paragraph]’, and that ‘such additional factors may be relevant, alone, or in combination with one or more of the factors listed in [that paragraph]’.
37      Furthermore, since the Court of Justice held, in the judgment of 22 November 2007, Nieto Nuño (C‑328/06, EU:C:2007:704, paragraph 17), that well-known status is a kindred concept to that of reputation, regard must be had to the assessment criteria relating to that concept, which is referred to in Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) (see judgment of 10 June 2020, PHILIBON, T‑717/18, not published, EU:T:2020:256, paragraph 27 and the case-law cited).
38      As regards that last point, it must be inferred from the judgment of 14 September 1999, General Motors (C‑375/97, EU:C:1999:408), that a trade mark cannot be required to be known by a given percentage of the defined public. In examining the degree of knowledge required in respect of a well-known trade mark or a trade mark which has acquired a reputation, all the relevant facts of the case must be taken into consideration, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. Furthermore, a trade mark cannot be required to have a reputation or well-known status ‘throughout’ the territory of the Member State. It is sufficient for it to exist in a substantial part of it (see judgment of 10 June 2020, PHILIBON, T‑717/18, not published, EU:T:2020:256, paragraph 28 and the case-law cited).
39      In the present case, in paragraph 127 of the contested decision, the Board of Appeal found that, in fact, the evidence filed showed, at best, that genuine use of the earlier mark has been made in the course of trade prior to the filing of the cancellation application, but that it failed to establish that that mark was well known in any territory at all.
40      In paragraph 128 of the contested decision, the Board of Appeal explained, to that effect, that while the evidence filed, in particular the sales invoices filed by both parties, attested to the use of the earlier mark for a product described as a ‘complete energy medicine device’ used to supposedly diagnose and treat diseases, which is a ‘biofeedback system’ consisting of hardware and software, claimed to be a better way to help others than traditional medicine and drugs, there was no evidence which proved that the marks were well known in any particular Member State at all for any goods or services.
41      In paragraph 131 of the contested decision, the Board of Appeal also explained that the printout of Google search results for the term ‘SCIO biofeedback’ dated 19 December 2017 provided no objective confirmation as to the earlier mark being a well-known trade mark in any particular country at all. It further stated that the evidence produced containing a variety of photographs of W.N./D.D. taken at various events did not prove the claimed well-known character either.
42      In paragraph 129 of the contested decision, the Board of Appeal stressed that the applicant had filed no direct evidence, objective or otherwise, as concerns the market share held by the earlier mark, the size of the investment made by the undertaking in promoting it or the proportion of the relevant section of the public which identified the relevant goods as originating from a particular undertaking thanks to that mark.
43      In paragraph 132 of the contested decision, the Board of Appeal also stressed that no evidence had been filed by way of, for example, declarations from independent third parties, press clippings attesting to the well-known nature of the claimed marks to designate any goods or services at all, survey evidence, national or international prizes from renowned bodies or even statements from trade associations or chambers of commerce to support the assertion that the claimed non-registered trade mark was well known in any country at all.
44      In paragraph 130 of the contested decision, the Board of Appeal further stated that that evidence also did not constitute indirect evidence that allowed any conclusions in that regard.
45      In paragraph 133 of the contested decision, the Board of Appeal therefore concluded that that evidence was insufficient for the purpose of finding that the applicant had clearly, convincingly and effectively shown that the earlier mark was well known in any of the claimed Member States within the meaning of Article 6bis of the Paris Convention to designate biofeedback systems or any other goods at the time when the application for registration of the contested mark was filed (17 September 2012) and on the filing date of the application for a declaration of invalidity.
46      It therefore follows from the foregoing that, in the contested decision, first, the Board of Appeal only found that the evidence produced consisted, in essence, of sales invoices, printouts of Google search results for the term ‘SCIO biofeedback’ and photographs of W.N./D.D. taken at conferences, and was insufficient in itself clearly, convincingly and effectively to show that the earlier mark was well known in any of the claimed Member States to designate biofeedback systems or any other goods at the time when the application for registration of the contested mark was filed.
47      With regard more specifically to the sales invoices, the Board of Appeal found that, although they attested to the sales of goods covered by the earlier mark from 2009 to 2017 in several Member States of the European Union, they could not, however, support the well-known character of the earlier mark in those countries. As argued by EUIPO, the invoices are not, in any event, the most relevant evidence for the purposes of establishing awareness of the earlier mark, except for comparing the value of sales with the size of the market concerned, data which have not been provided by the applicant. Although invoices do allow the conclusion that an earlier mark has been put to genuine use, they do not in themselves allow the conclusion that such a mark was well known within the meaning of Article 6bis of the Paris Convention (see, by analogy, judgment of 19 September 2019, NHS v EUIPO – HLC SB Distribution (CRUZADE), T‑378/18, not published, EU:T:2019:620, paragraph 42).
48      It follows that, contrary to what the applicant maintains, the Board of Appeal duly took into account the criteria for assessing the well-known character concerning the duration, extent and geographical area of use of the earlier mark and, without making any error, assessed the evidence in the light of those criteria.
49      Secondly, the Board of Appeal neither required that the earlier mark be known to a given proportion of the relevant public nor considered that proof of the market share held by that mark or of the size of investment made for the purposes of its promotion was a mandatory condition for the assessment of its well-known character. In paragraph 129 of the contested decision, it merely found that the applicant had filed no evidence concerning the proportion of the relevant section of the public which identified the relevant goods as originating from the undertaking concerned thanks to that mark or as to the market share held by that mark or the size of the investments made by the undertaking in promoting them. Contrary to what the applicant maintains, that finding by that Board of Appeal cannot be interpreted as imposing an unreasonable requirement of proof or a mandatory condition for demonstrating the well-known character of the mark at issue, since, as follows from paragraphs 39 to 45 above, that Board of Appeal did not conclude, in the contested decision, that there was no proof of the well-known character of the mark concerned on the ground that that evidence was lacking, but because the evidence produced by the applicant was insufficient clearly, convincingly and effectively to show that character.
50      Thirdly, while it is true that, in accordance with the case-law referred to in paragraph 122 of the contested decision, proof cannot be required that an earlier mark is known to a specific proportion of the relevant public, it nevertheless follows from that case-law that the requirement of a certain degree of knowledge of that mark among the public results from the general scheme and purpose of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). The extent of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark (judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraphs 20 to 26). It follows that, in the present case, the Board of Appeal did not err in finding in paragraph 129 of that decision that the applicant had not filed evidence showing that the proportion of the relevant section of the public identified the relevant goods as originating from a particular undertaking thanks to the earlier mark.
51      It must therefore be found that the applicant’s complaints are based, in part, on an erroneous reading of the contested decision and, in part, on an erroneous interpretation of the case-law.
52      The present part must therefore be rejected as manifestly unfounded.
The second part, relating to the distortion of the evidence produced by the applicant
53      The applicant claims that, in addition to failing to take into account the relevant assessment criteria, the Board of Appeal distorted its evidence in the contested decision. According to the applicant, that Board of Appeal incorrectly suggested that it had relied solely on the results of a Google search and on simple statements to establish the well-known character of the earlier mark, whereas it had in fact produced hundreds of invoices, accounting documents and sales reports.
54      EUIPO disputes the applicant’s arguments.
55      In the present case, it is sufficient to find, as follows from paragraphs 39 to 45 above, that the Board of Appeal, in the contested decision, based its conclusion concerning the lack of proof of the well-known character of the earlier mark not on the ground that the applicant had relied solely on Google search results and on simple statements, but on the fact that the evidence produced, including the invoices, accounting documents and sales reports, was insufficient clearly, convincingly and effectively to show the well-known character of that earlier mark.
56      In any event, since the applicant does not dispute, in the present part, the reasons set out in the contested decision, recalled in paragraphs 39 to 45 above, for which the Board of Appeal considered that the evidence submitted, in particular the sales invoices, was insufficient clearly, convincingly and effectively to show the well-known character of the earlier mark, and does not demonstrate, as EUIPO correctly emphasises, how that evidence supported such a character, its complaint cannot be upheld.
57      The present part must therefore be rejected as manifestly unfounded.
58      In the light of all of the foregoing, the action must be dismissed as partly manifestly inadmissible and, for the remainder, as manifestly lacking any foundation in law, without it being necessary to rule on the admissibility of the evidence produced after the close of the written part of the procedure.
Costs
59      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.
60      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter.
61      By contrast, since EUIPO has requested that the applicant be ordered to pay the costs only in the event that a hearing is convened, it must be held, in the absence of a hearing, that EUIPO is to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby orders:
1.      The action is dismissed.
2.      QX World Kft. is to bear its own costs and to pay those incurred by Mandelay Kft.
3.      The European Union Intellectual Property Office (EUIPO) is to bear its own costs.
Luxembourg, 19 February 2025.
V. Di Bucci
M.J. Costeira
Registrar
President
*      Language of the case: English.