ORDER OF THE GENERAL COURT (Fifth Chamber)
18 January 2018 (*)
(EU trade mark — Invalidity proceedings — EU word mark HYALSTYLE — Bad faith — Article 52(1)(b) of Regulation (EC) No 207/2009 (now Article 59(1)(b) of Regulation (EU) 2017/1001) — Request for the hearing of witnesses — Article 75 of Regulation (EC) No 207/2009 (now Article 94(1) of Regulation (EU) 2017/1001) — Action in part manifestly inadmissible and in part manifestly unfounded in law)
In Case T‑178/17,
W&O medical esthetics GmbH, established in Oberursel (Germany), represented by A. Finkentey, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Söder, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Fidia farmaceutici SpA, established in Abano Terme (Italy), represented by R. Kunz-Hallstein and H. Kunz-Hallstein, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 17 January 2017 (Case R 872/2016-1), relating to invalidity proceedings between W&O medical esthetics and Fidia farmaceutici,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, I. Labucka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 21 March 2017,
having regard to the response of EUIPO lodged at the Court Registry on 29 May 2017,
having regard to the response of the intervener lodged at the Court Registry on 20 June 2017,
makes the following
Order
Background to the dispute
1        On 12 March 2013 the intervener, Fidia farmaceutici SpA, filed an application for registration of the word sign HYALSTYLE as an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)). That application was published in the Community Trade Marks Bulletin No 2/2014 of 8 April 2013 and the mark was registered on 16 July 2013.
2        The goods in respect of which registration was granted are in Classes 3 and 5 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended.
3        On 22 December 2014, the applicant, W&O medical esthetics GmbH, brought an application for a declaration of invalidity of the EU trade mark based, in particular, on Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001) for all of the goods covered by that trade mark. As regards that ground of invalidity, the applicant submitted that the application for registration of the contested mark had been filed in bad faith, because, at the time it was filed, the intervener should have been aware of the use of the sign ‘hyalstyle’ by the applicant which had developed and marketed a dermatological product under that sign before the application was filed.
4        On 16 March 2016, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. As regards the application for a declaration of invalidity based on Article 52(1)(b) of Regulation No 207/2009, it found, in essence, that the applicant had failed to establish that the application for registration of the contested mark had been filed in bad faith.
5        On 9 May 2016, the applicant filed a notice of appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001) against the decision of the Cancellation Division.
6        By decision of 17 January 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. As regards the application for a declaration of invalidity based on Article 52(1)(b) of Regulation No 207/2009, it took the view, as did the Cancellation Division, that it had not been established that the intervener had filed the application for registration of the contested mark in bad faith. In particular, the Board of Appeal found that the applicant had neither proven that its goods were known by the intervener nor that they were put on the market, advertised or presented in such a way that the intervener had to have knowledge of them. Furthermore, it endorsed the Cancellation Division’s decision not to initiate oral proceedings and not to summon the witnesses referred to by the applicant.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision and declare the contested mark invalid;
–        order EUIPO to pay the costs.
8        EUIPO and the intervener each contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
9        Under Article 126 of the Rules of Procedure of the Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a ruling by reasoned order without taking further steps in the proceedings.
10      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to that article, to give its decision without taking further steps in the proceedings.
11      In support of the application, the applicant advances a single plea alleging infringement of Article 76 of Regulation No 207/2009 (now Article 95 of Regulation No 2017/1001).
12      In essence, the applicant challenges the Board of Appeal’s decision in paragraph 27 of the contested decision that ‘the [applicant] has neither proven that its goods were known by the EU trade mark proprietor nor that they were put on the market, advertised or presented in exhibitions in such a way that the EU trade mark proprietor had to have knowledge of them’ on the ground that the Board of Appeal had not heard the witnesses that it had named during the administrative procedure for establishing those facts. Similarly, it challenges the Board of Appeal’s finding that its participation in trade fairs had also not been proved.
13      In addition, the applicant submits that, in so far as both the Cancellation Division and the Board of Appeal did not consider it necessary to hear the witnesses referred to by the applicant, either the facts alleged had to be presumed to be true or the applicant should have been invited to furnish evidence other than that provided.
14      As a preliminary matter, it should be noted that, by the arguments it advances in support of its single plea, the applicant alleges infringement of its right to be heard pursuant to the second sentence of Article 75 of Regulation No 207/2009 (now Article 94(1) of Regulation 2017/1001) and not infringement of Article 76 of that regulation, which relates EUIPO’s obligation to examine the facts of its own motion, albeit, in invalidity proceedings, its examination is restricted to the grounds and arguments submitted by the parties. The applicant does not claim that the Board of Appeal failed to examine the relevant facts of its own motion or failed to restrict its examination to the grounds and arguments submitted by the parties.
15      As regards the alleged infringement of the rights of the defence, it may be inferred from the application that, according to the applicant, such an infringement arose from the lack of a hearing of the witnesses that it had mentioned in the administrative procedure and the failure of EUIPO to invite it to provide further evidence.
16      In that regard, it must be borne in mind that, according to Article 78(1)(d) of Regulation No 207/2009 (now Article 97(1)(d) of Regulation 2017/1001), the hearing of witnesses is included in the means of giving or obtaining evidence in any proceedings before EUIPO.
17      It is clear from the case-law that, although it is indeed possible for the parties, in any proceedings before the adjudicating bodies of EUIPO, to request or propose the hearing of witnesses in order to prove facts relevant to the case at issue, neither Article 78(1)(b) of Regulation No 207/2009, nor Rule 57 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 51 of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)), applicable to the present action, places on the adjudicating bodies of EUIPO any obligation to adopt such a measure following a request by one of the parties in the proceedings before them (judgment of 4 May 2017, Kasztantowicz v EUIPO — Gbb Group (GEOTEK), T‑97/16, not published, EU:T:2017:298, paragraph 56). In particular, Rule 57(1) of Regulation No 2868/95 (now Article 51(1) of Delegated Regulation 2017/1430) specifies that where EUIPO considers it necessary to hear the parties it shall do so.
18      The adjudicating bodies of EUIPO enjoy broad discretion in deciding whether, in proceedings before them, the hearing of the parties or witnesses is relevant. Such a measure of investigation remains an option for EUIPO, to be taken by it only where it considers it to be justified and not automatically following a request made by a party to that effect (see judgment of 4 May 2017, GEOTEK, T‑97/16, not published, EU:T:2017:298, paragraph 57 and the case-law cited).
19      However, the fact that the Board of Appeal has a broad discretion to adopt the measure of investigation in question does not mean that an assessment of that discretion falls outside the scope of judicial review by the Court. That fact does, however, restrict judicial review on the merits to ascertaining that no manifest error of assessment or misuse of powers has occurred (see judgment of 4 May 2017, GEOTEK, T‑97/16, not published, EU:T:2017:298, paragraph 58 and the case-law cited).
20      It must therefore be examined whether the Board of Appeal was entitled to exercise its discretion by not hearing the persons mentioned by the applicant.
21      In the present case, the Board of Appeal found, in paragraph 31 of the contested decision, that the Cancellation Division had correctly held that oral proceedings were not expedient and that it was not required to summon the applicant’s witnesses. As to the Cancellation Division, it took the view that it was not necessary to resort to an oral procedure or to summon witnesses given that both parties had been able to present their legal and factual arguments in writing and that the applicant could have filed the testimonies of its witnesses in writing.
22      It follows that both the Board of Appeal and the Cancellation Division exercised their discretion in finding that it was not necessary to summon the witnesses proposed by the applicant.
23      As to the existence of a manifest error of appreciation or a misuse of powers, the Court notes that the applicant has not advanced any arguments to that effect. Furthermore, the applicant has also not explained, either in the course of the administrative procedure before EUIPO or the Court, why the oral testimonies of the persons mentioned would be more apt to attest the truth of the facts alleged or why it was not able to provide those testimonies in writing or any of the other forms of evidence as suggested by the Cancellation Division.
24      It follows that, in so far as it having not been established in the present case that a manifest error of assessment or misuse of powers occurred on the part of the Cancellation Division or the Board of Appeal when they decided not to summon the witnesses mentioned by the applicant, the Board of Appeal was entitled not to hear the persons referred to by the applicant as witnesses.
25      As regards the applicant’s argument that, where insufficient evidence has been provided, it should be requested to provide further evidence, that argument must be rejected. First, as the Board of Appeal also found in paragraph 31 of the contested decision, Rule 39(3) of Regulation No 2868/95 (now Article 15(4) of Delegated Regulation 2017/1430), according to which the EUIPO is to invite the applicant for a declaration of invalidity to remedy the application where it does not comply with Rule 37 of that regulation (now Article 12 of Delegated Regulation 2017/1430), is not applicable to the present case. The applicant’s application for a declaration of invalidity satisfied the conditions for admissibility contained in Rule 37 of Regulation No 2868/95. Second, the Court notes, as did EUIPO, that the Cancellation Division referred in its decision to the lack of evidence, which accordingly could have been remedied by the applicant at the stage of its appeal before the Board of Appeal.
26      It follows that the Board of Appeal did not infringe the applicant’s right to be heard.
27      As far as concerns, lastly, the applicant’s line of argument that it cannot be assumed, in so far as the intervener worked in a small professional environment and had registered a large number of trade marks incorporating the element ‘hyal’, that the intervener did not know of the applicant’s goods and business, the fact remains that the applicant relies solely on general assertions, and does not specifically call into question the findings of the Board of Appeal concerning the knowledge which the proprietor of the contested mark had of its goods. It follows that those arguments are not set out in a sufficiently precise and intelligible manner such as to enable the General Court to carry out a review and must therefore be rejected as inadmissible pursuant to Article 177(1)(d) of the Rules of Procedure.
28      In any event, in order to ascertain whether the proprietor of a contested mark is acting in bad faith at the time of filing an application for registration of that mark, as stated by the Board of Appeal, account must be taken of all the factors relevant to the particular case which pertained at the time of filing the application and, in particular, first, the fact that the applicant knows or must know that a third party is using an identical or similar sign for identical or similar goods or services capable of being confused with the sign for which registration is sought, second, the applicant’s intention to prevent that third party from continuing to use such a sign and, third, the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought (see, to that effect, judgments of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraphs 37 and 53, and of 27 June 2013, Malaysia Dairy Industries, C‑320/12, EU:C:2013:435, paragraphs 36 and 37).
29      In that regard, it must in particular be noted that the fact that the applicant knows or must know that a third party has long been using an identical or similar sign for identical or similar goods, which could give rise to confusion with the sign for which registration is sought, is not sufficient in itself to permit the conclusion that the applicant was acting in bad faith (see judgment of 5 May 2017, PayPal v EUIPO — Hub Culture (VENMO), T‑132/16, not published, EU:T:2017:316, paragraph 38 and the case-law cited).
30      It follows that, in so far as the only arguments of the applicant relating to bad faith at the time the application for registration of the contested mark was filed concerned the intervener’s knowledge of those goods, that fact, supposing it to be proven, would, in any event, be insufficient to prove bad faith on the part of the intervener at the time the application for registration of the contested mark was filed.
31      In the light of all of the foregoing, the single plea must be dismissed, and, accordingly, the action in its entirety, as being in part manifestly inadmissible and in part manifestly unfounded in law.
Costs
32      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby orders:
1.      The action is dismissed.
2.      W&O medical esthetics GmbH shall bear its own costs and those of the European Union Intellectual Property Office (EUIPO) and of Fidia farmaceutici SpA.
Luxembourg, 18 January 2018.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.