62018TJ0279
JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
17 October 2019 (
*1
)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark AXICORP ALLIANCE — Earlier EU word and figurative marks ALLIANCE — Relative grounds for refusal — Article 8(1)(b) and (5) of Regulation (EU) 2017/1001 — Proof of genuine use of the earlier marks — Article 47(2) of Regulation 2017/1001 — Interpretation of the description of the goods reproduced in the alphabetical list accompanying the Nice Classification)
In Case T‑279/18,
Alliance Pharmaceuticals Limited, established in Chippenham (United Kingdom), represented by M. Edenborough QC,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
AxiCorp GmbH, established in Friedrichsdorf (Germany),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 7 February 2018 (Case R 1473/2017-5), relating to opposition proceedings between Alliance Pharmaceuticals and AxiCorp,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik-Bańczyk and C. Mac Eochaidh (Rapporteur), Judges,
Registrar: E. Hendrix, Administrator,
having regard to the application lodged at the Court Registry on 30 April 2018,
having regard to the response lodged at the Court Registry on 26 July 2018,
having regard to the measures of organisation of procedure of 31 January 2019,
further to the hearing on 28 March 2019,
gives the following
Judgment
Background to the dispute
1
On 17 January 2011, AxiCorp GmbH obtained international registration No 1072913 designating the European Union in respect of the word mark AXICORP ALLIANCE from the International Bureau of the World Intellectual Property Organisation (WIPO). That registration was notified to the European Union Intellectual Property Office (EUIPO) on 28 April 2011 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)).
2
The goods and services in respect of which protection was sought are in Classes 3, 5, 10 and 35 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: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;
–
Class 5: ‘Pharmaceutical and veterinary preparations, medicines; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; medicines’;
–
Class 10: ‘Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; applicators for pharmaceutical preparations; syringes for medical purposes; inhalers’;
–
Class 35: ‘Advertising; business management services; business administration; office functions; wholesaling and retailing of pharmaceutical preparations, cosmetics and medical products’.
3
The trade mark application was published in Community Trade Marks Bulletin No 2011/082 of 29 April 2011.
4
On 30 January 2012, the applicant, Alliance Pharmaceuticals Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 2 above.
5
The opposition was based on the following earlier rights:
–
the earlier EU word mark ALLIANCE, filed on 29 July 2002 and registered on 11 August 2006 under the number 2816098, and covering goods in Class 5 corresponding to the following description: ‘Pharmaceutical preparations but not including infants’ and invalids’ foods and chemical preparations for pharmaceutical purposes’;
–
the earlier EU figurative mark reproduced below, filed on 29 July 2002 and registered on 17 December 2003 under the number 2816064, and covering goods in Class 5 corresponding to the following description: ‘Pharmaceutical preparations but not including infants’ and invalids’ foods and chemical preparations for pharmaceutical purposes’:
–
the earlier unregistered trade mark ALLIANCE, used in the course of trade for ‘pharmaceutical preparations and substances’ in the United Kingdom.
6
The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009 (now Article 8(1)(b), (4) and (5) of Regulation 2017/1001).
7
The applicant filed an extract from the 2009 annual report of its parent company, Alliance Pharma plc, in support of the grounds for opposition set out in Article 8(4) and (5) of Regulation No 207/2009.
8
At AxiCorp’s request, EUIPO asked the applicant to furnish proof of use of its earlier marks, in accordance with Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001), in connection with the goods on which the opposition was based.
9
On 22 July 2016, the applicant provided evidence of use of its earlier marks within the time limit set by EUIPO.
10
On 11 May 2017, the Opposition Division rejected the opposition in its entirety on the grounds of lack of evidence of genuine use of the earlier EU trade marks and lack of evidence of use of the earlier unregistered mark in the course of trade.
11
On 7 July 2017, 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 Opposition Division.
12
By decision of 7 February 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO partially annulled the Opposition Division’s decision and remitted the case to the Opposition Division.
13
As regards the earlier EU trade marks, the Board of Appeal found that the opposition had rightly been rejected in so far as it was based on Article 8(1)(b) and (5) of Regulation 2017/1001. In this connection, it observed, first, that the specification of those marks, which refers to ‘pharmaceutical preparations but not including infants’ and invalids’ foods and chemical preparations for pharmaceutical purposes’ was not clear. Secondly, it found that it would be neither unreasonable nor contrary to grammatical rules to construe the specification as covering pharmaceutical products ‘except for those intended as food for invalids and infants and using pharmaceutical chemical preparations’. Thirdly, it took the view that, while the possibility of other interpretations could not be excluded, the goods and services had to be worded in the register with sufficient clarity and precision to enable the extent of the protection sought to be determined on that basis alone. Furthermore, according to the Board of Appeal, an ambiguous specification cannot be interpreted in a way favourable to the right holder. Consequently, it found that the Opposition Division had correctly interpreted the specification strictly, as excluding chemical preparations for pharmaceutical purposes. Moreover, it observed that, even if it were to be considered that the specification included certain pharmaceuticals of herbal origin, the applicant had not shown that the mark ALLIANCE had been used for such pharmaceuticals, given that the evidence of use submitted referred exclusively to synthetic components.
14
As regards the earlier unregistered mark and the ground for opposition set out in Article 8(4) of Regulation 2017/1001, the Board of Appeal found that the Opposition Division’s finding that the applicant had not submitted any evidence of use of that mark within the time limit given to substantiate the opposition was manifestly incorrect. It took the view that the case had to be remitted to the Opposition Division for a full re-examination of the abovementioned ground for opposition, taking into account all the evidence of use submitted by the applicant in the course of the proceedings, including that filed on 22 July 2016.
Forms of order sought
15
The applicant claims that the Court should:
–
annul the contested decision;
–
in the alternative, alter the contested decision by remitting the opposition to the Opposition Division for it to reconsider the opposition under Article 8(1)(b) and (5) of Regulation 2017/1001, in addition to reconsidering it under Article 8(4) of that regulation;
–
order EUIPO to pay the costs relating to the present proceedings and those incurred in the proceedings before the Board of Appeal; in the alternative, if the other party before the Board of Appeal intervenes, order EUIPO and the intervener jointly and severally to pay the applicant’s costs.
16
EUIPO contends that the Court should:
–
dismiss the action;
–
order the applicant to pay the costs.
Law
The scope of the application for annulment of the contested decision
17
In reply to the questions put by the Court by way of measures of organisation of procedure, the parties confirmed, at the hearing, that the action brought by the applicant had to be understood as seeking partial annulment of the contested decision in so far as the Board of Appeal had dismissed the appeal brought before it as regards the grounds for opposition set out in Article 8(1)(b) and (5) of Regulation 2017/1001. Formal notice of this was taken in the minutes of the hearing. By contrast, the applicant is not requesting that the Court annul the contested decision in so far as the Board of Appeal remitted the case to the Opposition Division for a full re-examination of the ground for opposition set out in Article 8(4) of that regulation.
Substance
18
In support of the action, the applicant relies on a single plea in law, alleging that the Board of Appeal construed the specification of the earlier EU trade marks incorrectly, and thus concluded that the evidence of use submitted did not show genuine use of those marks in connection with the goods included in that specification. According to the applicant, this amounts, for the purposes of Article 72 of Regulation 2017/1001, to an infringement of an essential procedural requirement, an infringement of Regulation 2017/1001 or an infringement of a rule of law relating to its application.
19
In particular, the applicant disputes the Opposition Division’s narrow construction of the specification, a construction which was confirmed by the Board of Appeal, that ‘chemical preparations for pharmaceutical purposes’ were excluded from ‘pharmaceutical preparations’.
20
First, the applicant submits that the narrow construction of the specification that was adopted is incorrect in that it is contrary to EUIPO’s examination guidelines and, more specifically, to how exclusions are to be worded in specifications. It maintains that if the intention is to exclude types of goods, the conjunction to use is the disjunctive conjunction ‘or’ and not the coordinating conjunction ‘and’. It argues that, consequently, in the present case, the words ‘but not including infants’ and invalids’ food and chemical preparations for pharmaceutical purposes’ should be construed as excluding only the first category of goods, namely foods for infants and invalids, and as including the second category of goods, namely chemical preparations for pharmaceutical purposes. The applicant maintains that, if that construction had been applied, then the evidence that it had submitted to show genuine use of the earlier EU trade marks in connection with ‘chemical preparations for pharmaceutical purposes’ would have been accepted. In its submission, the case should therefore be remitted to the Opposition Division in order for it also to examine the opposition under the grounds for opposition set out in Article 8(1)(b) and (5) of Regulation 2017/1001. Furthermore, the applicant observes that AxiCorp made no submissions at all on the scope of the specification prior to the Opposition Division’s decision.
21
Secondly, the applicant submits that the narrow construction of the specification adopted is incorrect in that it results in a specification that makes no commercial sense, which is contrary to the normal canons of construction of legal texts. In the alternative, it submits that if ‘chemical preparations for pharmaceutical purposes’ are excluded, then they should be narrowly construed, as meaning only the pure, synthetic, chemical precursors that may be combined together for pharmaceutical purposes, namely to form the final pharmaceutical preparations themselves. The pure component parts of the pharmaceutical preparation would thus be excluded from the scope of the registration, whereas the resultant combination, which forms the final pharmaceutical preparation itself, would be included. It maintains that the evidence of use submitted is therefore sufficient to prove genuine use of the earlier EU trade marks.
22
EUIPO disputes the applicant’s arguments. First, EUIPO submits that an example of the drafting of an exclusion taken from EUIPO’s examination guidelines cannot provide the basis for a rule determining the conjunction which should be used when drafting an exclusion in a specification. It maintains that it is the responsibility of the applicant for an EU trade mark to draft clearly and precisely the specification of the goods and services in respect of which protection is sought. Secondly, EUIPO submits that the specification is ambiguous. It argues that the way in which the Opposition Division and the Board of Appeal interpreted the specification is neither unreasonable nor contrary to grammatical rules, even though other interpretations cannot be excluded. Thirdly, EUIPO states that the extent of the protection sought must be capable of being determined on the basis of the register alone. It maintains that, where the designation of goods or services lacks clarity and precision, the scope of the mark must be interpreted narrowly because the proprietor of the trade mark should not gain from the infringement of its obligation to draw up the list of goods and services with clarity and precision.
Preliminary observations
23
As the applicant confirmed at the hearing, it must be held that the applicant is, in essence, implicitly complaining that the Board of Appeal infringed Article 47(2) of Regulation 2017/1001.
24
In this connection, it must be pointed out that, once raised by the applicant for the trade mark, the issue of genuine use of the earlier mark must be settled before a ruling is given on the opposition proper (see judgment of 22 March 2007, Saint-Gobain Pam v OHIM — Propamsa (PAM PLUVIAL), T‑364/05, EU:T:2007:96, paragraph 37 and the case-law cited).
25
The onus was therefore on the applicant, before EUIPO examined the grounds for opposition set out in Article 8(1)(b) and (5) of Regulation 2017/1001, to furnish proof of genuine use of the earlier EU trade marks and, in accordance with Article 47(2) of that regulation, in the absence of that proof, the opposition had to be rejected. Moreover, that use had to relate to the goods in respect of which the earlier EU trade marks were registered and on which the opposition was based, namely the goods in Class 5 referred to in paragraph 5 above. If the earlier EU trade marks had been used in relation to only part of the goods for which they were registered, they ought, in accordance with Article 47(2) of that regulation, to have been deemed to be registered in respect of that part of the goods only, for the purposes of the examination of the opposition.
26
According to the case-law developed in the context of the interpretation of the terms that make up the headings of the classes of goods and services, the scope of the application for registration must be assessed as at the date on which it was filed (see, to that effect, judgment of 7 December 2018, Edison v EUIPO (EDISON), T‑471/17, not published, under appeal, EU:T:2018:887, paragraph 34; see also, to that effect and by analogy, judgment of 11 October 2017, EUIPO v Cactus, C‑501/15 P, EU:C:2017:750, paragraphs 44 to 49).
27
In the present case, the applications for registration of the earlier EU trade marks were filed by the applicant and registered at a time when Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (replaced by Regulation No 207/2009, itself replaced by Regulation 2017/1001) still applied (see paragraph 5 above). Regulation No 40/94 did not contain provisions as detailed as those set out in Article 33(2) and (5) of Regulation 2017/1001, in force at the time when the contested decision was adopted.
28
However, Article 26(1)(c) of Regulation No 40/94, as applicable at the date on which the trade mark applications relating to the earlier EU trade marks were filed and at the date on which they were registered, provided that an application for a trade mark had to contain a list of the goods or services in respect of which the registration was requested. Furthermore, Rule 2(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (reproduced in essence in Article 33(2) of Regulation 2017/1001), which was applicable at that time, provided that the list of goods and services had to be worded in such a way as, inter alia, ‘to indicate clearly the nature of the goods and services’.
29
It is clear from the abovementioned provisions that it was for the person requesting registration of a sign as a trade mark to provide, in the application, a list of the goods or services in respect of which the registration was requested and to provide, for each of those goods or services, a description clearly indicating its nature (judgment of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 23).
30
According to the case-law, while those provisions require the goods in respect of which protection is sought to be identified by the applicant with sufficient clarity and precision, that is in order to enable EUIPO and economic operators, on that basis alone, to determine the extent of the protection sought (judgment of 3 June 2015, Lithomex v OHIM — Glaubrecht Stingel (LITHOFIX), T‑273/14, not published, EU:T:2015:352, paragraph 27; see also, by analogy, judgments of 12 December 2002, Sieckmann, C‑273/00, EU:C:2002:748, paragraphs 49 to 51, and of 19 June 2012, Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraph 49).
31
Furthermore, it must be pointed out that, in order to be able to examine whether the goods and services at issue are similar or identical, the adjudicating bodies of EUIPO must always determine which goods and services are covered by the marks at issue and, in that context, they must, where appropriate, interpret the list of goods and services for which a mark is registered (see judgment of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO — Fink (NANA FINK), T‑39/16, EU:T:2017:263, paragraph 26 and the case-law cited).
32
It is in the light of the above considerations that it must be examined whether the Board of Appeal infringed Article 47(2) of Regulation 2017/1001 in finding that the Opposition Division had correctly interpreted the list of goods covered by the earlier EU trade marks strictly, as excluding chemical preparations for pharmaceutical purposes, namely pharmaceutical products using pharmaceutical chemical preparations (paragraphs 19 and 22 of the contested decision), and in finding that the opposition had rightly been rejected in so far as it was based on Article 8(1)(b) and (5) of Regulation 2017/1001, for want of evidence of genuine use of those marks (paragraphs 23 and 24 of the contested decision).
The relevance of EUIPO’s examination guidelines
33
It must be noted at the outset that the line of argument by which the applicant submits, in order to show that the provisions of Regulation 2017/1001 may have been infringed, that the narrow construction of the specification that was adopted by the Board of Appeal is incorrect inasmuch as it is contrary to EUIPO’s examination guidelines must be rejected as ineffective.
34
EUIPO’s examination guidelines are not binding legal acts for the purpose of interpreting provisions of European Union law (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48). The provisions in EUIPO’s examination guidelines cannot, as such, either be deemed to be of a higher order than the provisions of Regulation 2017/1001 and 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), or indeed influence the interpretation of those provisions by the Courts of the European Union. On the contrary, they are designed to be read in accordance with the provisions of those regulations (see, to that effect, judgment of 27 June 2012, Interkobo v OHIM — XXXLutz Marken (my baby), T‑523/10, EU:T:2012:326, paragraph 29).
35
In any event, the EUIPO examination guidelines relied on by the applicant did not specify, in order for ‘chemical preparations for pharmaceutical purposes’ to be capable of being regarded as included in the scope of protection, the formulation of the specification used in the present case, namely a category of goods for which protection is sought, followed by a category of goods that are excluded preceded by the expression ‘but not including’, followed — without punctuation — by the conjunction ‘and’ and a category of goods that are supposed to be included.
The interpretation of the specification of the earlier EU trade marks
36
In the present case, it must be stated that the wording of the specification in English, the language in which the applications for registration of the earlier EU trade marks were filed, may give rise to two possible literal interpretations.
37
Thus, in the absence of punctuation, in particular of a semi-colon separating “infants’ and invalids’ foods” from ‘chemical preparations for pharmaceutical purposes’, or additional information, one possible literal meaning of the specification suggests that both “infants’ and invalids’ foods” and ‘chemical preparations for pharmaceutical purposes’ are covered by the restriction ‘but not including’. It is that interpretation which was adopted by the Opposition Division and the Board of Appeal.
38
However, another possible literal interpretation, suggested by the applicant, does not exclude ‘chemical preparations for pharmaceutical purposes’ from the specification.
39
In this connection, first, it must be pointed out that that possibility was acknowledged by EUIPO at the hearing. Furthermore, the Board of Appeal admitted, in paragraphs 19 and 20 of the contested decision, that interpretations other than that which it had adopted were possible.
40
Secondly, the Court points out that, as the applicant has observed, it is clear from EUIPO’s case file and, in particular, from AxiCorp’s observations of 16 March and 20 October 2016 and 10 November 2017, that it was only at the stage of the appeal before the Board of Appeal that AxiCorp contended that the specification did not cover ‘chemical preparations for pharmaceutical purposes’ and that the applicant had not provided proof of genuine use of its marks in connection with pharmaceutical or chemical preparations per se.
41
As has been stated in paragraph 30 above, the purpose of the register is, inter alia, to inform economic operators, including actual or potential competitors of trade mark proprietors or applicants, about the rights of third parties.
42
It is therefore significant that AxiCorp did not interpret the specification restrictively before the Opposition Division. Since AxiCorp did not express any doubts regarding the interpretation to be given to the specification, the scope of the categories of goods covered by the earlier EU trade marks or the alleged shortcomings of the evidence of use in this connection before that division, it may be held, first, that it was not at all obvious that the specification would be interpreted in the way in which it ultimately was by the Opposition Division and that that interpretation would subsequently be confirmed by the Board of Appeal and, secondly, that the requirement for clarity and precision referred to in paragraph 30 above was complied with.
43
Thirdly, it must be pointed out that, although the interpretation of the specification given by the Board of Appeal, according to which ‘chemical preparations for pharmaceutical purposes’ are excluded, is possible in view of the wording of that specification, that interpretation did not duly take into consideration other factors that are essential for the purpose of understanding the scope of that specification, namely the actual intention of the proprietor of the marks concerned and the need to give an appropriate scope to that wording, one that precludes a reading leading to an absurd result for the proprietor.
44
Accordingly, first of all, the Court observes that, according to the case-law, the actual intention of the applicant for registration of an EU trade mark is not irrelevant. Indeed, and although the observation was made in the context of the analysis of the extent of the protection of a national mark when all the general indications in a class heading are used, the Court of Justice has observed that a situation in which the extent of the protection conferred by a trade mark depends on the approach to interpretation adopted by the competent authority and not on the actual intention of the applicant runs the risk of undermining legal certainty both for the applicant and for third party economic operators (judgment of 19 June 2012, Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraph 60).
45
In this case, if the approach adopted by the Board of Appeal were correct and the registrations of the earlier EU trade marks covered pharmaceutical products except for those ‘using pharmaceutical chemical preparations’, that is to say they covered only ‘natural’ preparations or preparations ‘of herbal origin’ which do not contain chemical substances or synthetic components, those registrations would cover only goods which were not contemplated by the applicant and which were not expressly referred to in the specification of those marks. As is apparent from paragraph 44 above, such a situation is incompatible with the requirements of predictability and legal certainty.
46
Next, although it is true that the literal interpretation of the specification of a mark is that which is to be preferred, that principle is not of much use in a case in which two literal interpretations are equally possible.
47
In such a situation, it is the interpretation which, among a number of possible interpretations of EU legal instruments, is the one which does not lead to an absurd result that must be preferred. It is true that the interpretation of EU law provisions is based first and foremost on the text, since that approach reflects the core principles of predictability and legal certainty. However, if the text is ambiguous or the literal meaning would lead to a nonsensical result, that meaning may be reappraised after being placed in its context and interpreted in the light of the provision of EU law as a whole, regard being had to the objectives thereof and to its state of evolution at the date on which the provision in question is to be applied (Opinion of Advocate General Bobek in European Federation for Cosmetic Ingredients, C‑592/14, EU:C:2016:179, paragraphs 36 and 37; see also, to that effect, Opinion of Advocate General Mayras in Fellinger, 67/79, not published, EU:C:1980:23, p. 550).
48
Thus, the Court of Justice has already had occasion to exclude interpretations of provisions of EU law which would lead to an absurd result (see, to that effect, in the context of freedom of movement for workers, judgment of 10 December 2009, Peśla, C‑345/08, EU:C:2009:771, paragraphs 46 and 48, and, in the context of designs, judgment of 21 September 2017, Easy Sanitary Solutions and EUIPO v Group Nivelles, C‑361/15 P and C‑405/15 P, EU:C:2017:720, paragraph 96).
49
The General Court takes the view that the considerations in paragraphs 46 to 48 above must be applied, by analogy, to a case such as this one, which relates to the interpretation of the specification of an earlier EU trade mark.
50
The Opposition Division and, as the case may be, the Board of Appeal must interpret the list of goods and services in respect of which an earlier EU trade mark is registered and with regard to which proof of genuine use has been requested, in order to ascertain the extent of the protection of that mark and to settle the issue of its genuine use, before a ruling is given on the opposition proper. However, in so doing, they must interpret the wording of the list of goods and services covered in the most coherent manner, in the light not only of its literal meaning and its grammatical construction, but also, if there is a risk of an absurd result, of its context and the actual intention of the mark’s proprietor as regards its scope.
51
The Court thus finds that, in the context of Article 47(2) of Regulation 2017/1001 and of determining the extent of the protection of an earlier EU trade mark and assessing the evidence of genuine use of that mark, if two possible literal interpretations of the specification of that mark exist, but one of them would lead to an absurd result as regards the extent of the protection of the mark, the Board of Appeal must resolve the difficulty by opting for the most plausible and predictable interpretation of that specification. The Court holds that it would be absurd to adopt an interpretation of the specification which would have the effect of excluding all of the applicant’s goods, leaving only goods in respect of which it has not sought trade mark protection as goods protected by the earlier EU trade marks.
52
In the present case, the Board of Appeal, in essence, equated ‘chemical preparations for pharmaceutical purposes’ with final pharmaceutical chemical or synthetic preparations. In consequence, all the evidence of use of the earlier EU trade marks was rejected, in spite of the fact that the applicant’s main business activity is the marketing of pharmaceutical preparations and those marks were registered in respect of ‘pharmaceutical preparations’. As the applicant submits, it would be absurd to assume that it intended to seek registration of an EU trade mark in respect of a category of goods which it then restricted by a broadly equivalent category of goods.
53
That finding is not in any way invalidated by the case-law referred to in paragraph 21 of the contested decision and the case-law referred to by EUIPO in paragraph 28 of the response and at the hearing, in support, first, of the rejection of an interpretation of the specification favourable to the applicant and, secondly, of the necessity of applying a strict interpretation to that specification, namely paragraph 67 of the order of 6 February 2014, El Corte Inglés v OHIM (C‑301/13 P, not published, EU:C:2014:235), paragraph 31 of the judgment of 11 November 2009, Frag Comercio Internacional v OHIM — Tinkerbell Modas (GREEN by missako) (T‑162/08, not published, EU:T:2009:432), paragraph 62 of the judgment of 6 April 2017, NANA FINK (T‑39/16, EU:T:2017:263), and paragraph 62 of the judgment of 18 October 2018, Next design+produktion v EUIPO — Nanu-Nana Joachim Hoepp (nuuna) (T‑533/17, not published, EU:T:2018:698).
54
In this connection, it is true, first, as regards the case-law referred to in paragraph 21 of the contested decision, that the Courts of the European Union have recognised, in the context of opposition proceedings and the comparison of the goods and services, that it is possible that the description of the goods and services covered by an earlier mark does not allow them to be compared with those designated by a mark that has been applied for (see, to that effect, order of 6 February 2014, El Corte Inglés v OHIM, C‑301/13 P, not published, EU:C:2014:235, paragraph 67, and judgment of 11 November 2009, GREEN by missako, T‑162/08, not published, EU:T:2009:432, paragraph 31). It is true, secondly, as regards the case-law referred to by EUIPO in paragraph 28 of the response and at the hearing, that the General Court has observed that the proprietor of an EU trade mark should not gain from the infringement of its obligation to indicate the goods or services with clarity and precision (see, to that effect, judgments of 6 April 2017, NANA FINK, T‑39/16, EU:T:2017:263, paragraph 48, and of 18 October 2018, nuuna, T‑533/17, not published, EU:T:2018:698, paragraph 62).
55
However, the factual context and the stage of the proceedings in the abovementioned cases differ from those in the present case.
56
In the first place, in the case which gave rise to the order of 6 February 2014, El Corte Inglés v OHIM (C‑301/13 P, not published, EU:C:2014:235), first, neither the wording of the description of the services designated by the earlier mark at issue in that case nor the evidence that the applicant had submitted in the course of the proceedings before EUIPO indicated that the protection of that mark extended to goods or services other than those in Class 35 of the Nice Agreement. Secondly, the arguments and evidence regarding the specific features of national law which would allegedly have made it possible to clarify the meaning of the description of the services designated by the earlier mark at issue in that case could not be taken into consideration because they had been submitted for the first time before the General Court. It was therefore in those specific circumstances that the Court of Justice held that the General Court had been right in finding that the description of the services designated by the earlier mark at issue in that case did not allow those services to be compared with the goods designated by the mark in respect of which registration had been sought.
57
In the second place, in the case which gave rise to the judgment of 11 November 2009, GREEN by missako (T‑162/08, not published, EU:T:2009:432), although the services covered by the earlier mark at issue in that case were too vague to enable a proper comparison to be made with those covered by the mark applied for in question, the differences between the signs at issue were sufficient grounds for finding that there was no likelihood of confusion in spite of the fact that some of the goods covered by the marks at issue were identical or similar.
58
In the third place, in the case which gave rise to the judgment of 6 April 2017, NANA FINK (T‑39/16, EU:T:2017:263), although the descriptions of some of the goods covered by the earlier mark at issue in that case could be understood in two different ways (either as covering only finished goods made of leather and of imitations of leather or as also covering ‘imitations of leather’), the two interpretations were equally plausible and did not lead to an absurd specification.
59
In the fourth place, in the case which gave rise to the judgment of 18 October 2018, nuuna (T‑533/17, not published, EU:T:2018:698), the General Court pointed out that the goods covered by the earlier marks at issue had been specified to some extent, a point disregarded by the Board of Appeal, and that it was able to compare them with the goods covered by the mark applied for in that case. That case did not therefore concern either a failure to comply with the obligation of clarity and precision or any absurdity in the specification of the goods at issue.
60
Accordingly, the Court holds that it is only if both possible literal interpretations of the list of goods and services designated by an earlier EU trade mark are each equally plausible and predictable that, in determining the extent of the protection of that mark and assessing the evidence of genuine use that has been adduced, it is appropriate to apply the principle derived from paragraph 48 of the judgment of 6 April 2017, NANA FINK (T‑39/16, EU:T:2017:263), that the proprietor of an EU trade mark should not gain from the infringement of its obligation to indicate the goods and services with clarity and precision.
61
Moreover, that finding is not invalidated by EUIPO’s argument that there is still a whole range of goods in the specification once synthetic chemical products have been excluded, such as herbal remedies. Such an approach presents the same difficulties as those referred to in paragraph 45 above, namely that the registrations of the earlier EU trade marks would, consequently, cover only goods that have not been contemplated by the applicant and have not been expressly referred to in the specification, which would be incompatible with the requirements of predictability and legal certainty.
62
In the light of the foregoing considerations, it must be held that, in finding that the specification had to be construed as meaning that ‘chemical preparations for pharmaceutical purposes’ were excluded and that the earlier EU trade marks thus covered pharmaceutical products except for those ‘using pharmaceutical chemical preparations’, the Board of Appeal incorrectly interpreted that specification. That specification was indeed capable of being interpreted as including, first, ‘pharmaceutical preparations’ and, secondly, ‘chemical preparations for pharmaceutical purposes’, namely the pure, synthetic, chemical precursors that can be combined for pharmaceutical purposes, namely to form the final pharmaceutical preparations themselves.
63
It follows that the single plea in law, alleging infringement of Article 47(2) of Regulation 2017/1001, must be upheld and the contested decision must be annulled in so far as the Board of Appeal dismissed the appeal brought before it as regards the grounds for opposition set out in Article 8(1)(b) and (5) of Regulation 2017/1001.
64
As regards the applicant’s second head of claim, which is set out in the alternative and by which the applicant requests, in essence, that the Court exercise the power to alter decisions conferred upon it by Article 72(3) of Regulation 2017/1001, it must be borne in mind that that power does not have the effect of conferring on the Court the power to carry out an assessment on which the 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 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 (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
65
It must be stated that the Board of Appeal erred in not examining all the evidence submitted in order to prove genuine use of the earlier marks.
66
It is not for the Court to examine the abovementioned evidence, for the first time, in the course of the examination of the request for alteration of the contested decision that the applicant has, in essence, made in its second head of claim.
67
It will therefore be for the Board of Appeal to rule in that regard, in order to make the decision which it falls to it to give on the appeal that is still pending before it (see, to that effect, judgment of 11 December 2014, CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraphs 101 and 102 and the case-law cited).
68
As the Court is not able to exercise its power to alter the contested decision, the second head of claim must be rejected.
Costs
69
Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has essentially been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
70
The applicant has also claimed that EUIPO should be ordered to pay the costs incurred by the applicant in the proceedings before the Board of Appeal of EUIPO. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Consequently, EUIPO must also be ordered to pay the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.
Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 February 2018 (Case R 1473/2017–5), relating to opposition proceedings between Alliance Pharmaceuticals Ltd and AxiCorp GmbH, in so far as the Board of Appeal dismissed the appeal brought before it as regards the grounds for opposition set out in Article 8(1)(b) and (5) of Regulation 2017/1001;
2.
Dismisses the action as to the remainder;
3.
Orders EUIPO to pay the costs, including the costs necessarily incurred by Alliance Pharmaceuticals for the purposes of the proceedings before the Board of Appeal of EUIPO.
Gervasoni
Kowalik-Bańczyk
Mac Eochaidh
Delivered in open court in Luxembourg on 17 October 2019.
E. Coulon
Registrar
S. Gervasoni
President
(
*1
)	Language of the case: English.