Source: EURLEX
Language: en
Format: md

Case T‑279/18

Alliance Pharmaceuticals Ltd

v

European Union Intellectual Property Office

Judgment of the General Court (Ninth Chamber), 17 October 2019

(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)

1. EU trade mark — Lodging of application for EU trade mark — Identification of the goods or services concerned by the trade mark — Requirements of clarity and precision — Determination, by the competent authorities and the economic operators, of the extent of the protection conferred by the trade mark

   (Council Regulation No 40/94, Art. 26(1)(c); Commission Regulation No 2868/95, Art. 1, Rule 2(2))

   (see paragraphs 29-31)
2. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Identification of the goods or services concerned by the trade mark — Requirements of clarity and precision — Determination, by the competent authorities and the economic operators, of the extent of the protection conferred by the trade mark — Limits — Observance of the principles of predictability and of legal certainty — Inadmissibility of an interpretation leading to an absurd result

   (European Parliament and Council Regulation 2017/1001, Art. 47(2))

   (see paragraphs 44, 47, 49-51, 60)

Résumé

By the judgment in Alliance Pharmaceuticals v EUIPO — AxiCorp (AXICORP ALLIANCE) (T‑279/18), delivered on 17 October 2019, the General Court partially annulled the decision of the Board of Appeal of the European Union Intellectual Property Office (EUIPO) and ruled on the question of the interpretation of the specification of an EU trade mark where it may give rise to two possible literal interpretations.

In the present case, AxiCorp filed an application for registration of the word mark AXICORP ALLIANCE. The opposition brought by Alliance Pharmaceuticals (‘the applicant’) was rejected in so far as it was based on the earlier trade marks ALLIANCE, registered for goods in Class 5, (
[1](#t-ECR_62018TJ0279_RES_EN_01-E0001)
) on the grounds of lack of evidence of genuine use of those marks. The evidence of use submitted referred exclusively to synthetic components. EUIPO interpreted the specification of the earlier marks strictly, namely as excluding ‘chemical preparations for pharmaceutical purposes’ from the category of goods ‘pharmaceutical preparations’ and, therefore, as excluding chemical preparations containing chemical substances or synthetic components.

In support of its action, the applicant submitted that EUIPO’s interpretation of the specification is incorrect in that it results in a specification that makes no commercial sense.

First of all, the General Court observed that the wording of the specification in English, the language in which the applications for registration of the earlier marks were filed, may give rise to two possible literal interpretations: either, as interpreted by EUIPO, that ‘chemical preparations for pharmaceutical purposes’ are covered by the restriction ‘but not including’, or that ‘chemical preparations for pharmaceutical purposes’ are not excluded from the specification. That second possibility was acknowledged by EUIPO at the hearing, and it was only at the stage of the appeal before the Board of Appeal of EUIPO 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.

Next, the General Court noted that, although the interpretation of the specification given by the Board of Appeal is possible in view of the wording of that specification, that interpretation did not take into consideration other essential factors, 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. If the approach adopted by the Board of Appeal were correct, the registrations of the earlier marks would cover only goods which were not contemplated by the applicant and which were not expressly referred to in the specification of those marks. According to the General Court, such a situation is incompatible with the requirements of predictability and legal certainty.

Consequently, the General Court held that EUIPO must interpret the wording of the list of goods and services covered by an earlier mark 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.

The General Court thus concluded that, in the context of determining the extent of the protection of an earlier mark and assessing the evidence of genuine use of that mark, (
[2](#t-ECR_62018TJ0279_RES_EN_01-E0002)
) if two possible literal interpretations of the specification of that mark exist, but one of them would lead to an absurd result, EUIPO must opt for the most plausible and predictable interpretation of that specification. 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 marks.

Moreover, the General Court clarified that it is only if both possible literal interpretations of the list of goods and services designated by an earlier mark are each equally plausible and predictable that it is appropriate to apply the principle derived from the judgment in Nanu-Nana Joachim Hoepp v EUIPO — Fink (NANA FINK) (T‑39/16), (
[3](#t-ECR_62018TJ0279_RES_EN_01-E0003)
) that the proprietor of a trade mark should not gain from the infringement of its obligation to indicate the goods and services with clarity and precision.

---

(
[1](#c-ECR_62018TJ0279_RES_EN_01-E0001)
) The specification covered ‘pharmaceutical preparations but not including infants’ and invalids’ foods and chemical preparations for pharmaceutical purposes’.

(
[2](#c-ECR_62018TJ0279_RES_EN_01-E0002)
) In the context of the application of Article 47(2) 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](./../../../legal-content/EN/AUTO/?uri=OJ:L:2017:154:TOC))).

(
[3](#c-ECR_62018TJ0279_RES_EN_01-E0003)
) Judgment of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO – Fink (NANA FINK) ([T‑39/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A263&locale=en), [EU:T:2017:263](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A263), paragraph [48](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A263&anchor=#point48)).

[Top](#document1)