Source: EURLEX
Language: en
Format: md

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| 22.5.2023 | EN | Official Journal of the European Union | C 179/16 |

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Appeal brought on 8 March 2023 by Hecht Pharma GmbH against the judgment of the General Court (Fifth Chamber) delivered on 11 January 2023 in Case T-346/21, Hecht Pharma GmbH v European Union Intellectual Property Office

(Case C-142/23 P)

(2023/C 179/26)

Language of the case: German

Parties

Appellant: Hecht Pharma GmbH (represented by: C. Sachs, Rechtsanwältin, and J. Sachs, Rechtsanwalt)

Other parties to the proceedings: European Union Intellectual Property Office, Gufic BioSciences Ltd.

Form of order sought

Should the appeal be allowed to proceed, the appellant claims that the Court should:

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| — | set aside in its entirety the judgment of the General Court of the European Union of 11 January 2023, Hecht Pharma GmbH v EUIPO — Gufic BioSciences (Gufic), T-346/21, EU:T:2023:2, due to a distortion of the facts; |

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| — | annul the decision of the Second Board of Appeal of 3 June 2021 in Case R 2738/2019-2 and declare EU trade mark No 8 613 044 ‘Gufic’ to be revoked also in respect of the goods ‘medicines’ in Class 5; |

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| — | refrain from ruling on the action without a hearing; |

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| — | order the European Union Intellectual Property Office (EUIPO) and the intervener before the General Court, Gufic BioSciences, to pay the costs of the appeal proceedings and the previous sets of proceedings. |

Grounds of appeal and main arguments

The appellant submits that the appeal relates to procedural errors and matters which, with respect to the interpretation of Article 18(1) of Regulation 2017/1001, [(1)](#ntr1-C_2023179EN.01001601-E0001) taking into account recital 28 thereof and in relation to the goods ‘medicines’ in Class 5, go beyond the decision at issue and raise issues of principle.

It maintains that, according to the literal meaning of the term ‘medicine’, the public expects a product capable of preventing, alleviating and curing a human disease.

According to the appellant, the General Court did not base its assessment on the significance of the particular ‘Ayurvedic Medicine’ on the packaging, but merely considered the term ‘Medicine’ to mean ‘medicinal product’ and therefore failed to take into account all the facts and circumstances.

The General Court concluded that the product is a medicinal product by presentation on the basis of the particulars on the packaging (Ayurvedic Medicine and its indications). However, the appellant argues that it would not in that case be a medicinal product according to the literal meaning, but is merely presented as such. The Court of Justice has held that medicinal products by presentation do not have the effect which consumers are entitled to expect. On the basis of their lack of effect, the Court’s intention is to protect consumers from medicinal products by presentation (judgment of 15 January 2009, Hecht-Pharma, C-140/07, EU:C:2009:5, paragraph 25; judgment of 15 November 2007, Commission v Germany, C-319/05, EU:C:2007:678, paragraph 61). The appellant submits that use which preserves rights is therefore excluded in the case of a medicinal product by presentation since, in accordance with Article 87 of Directive 2001/83/EC, [(2)](#ntr2-C_2023179EN.01001601-E0002) that product may not be advertised.

The appellant maintains that, for any category of goods, a product which only appears to belong to that category of goods may not, in principle, give rise to use which preserves rights. If it is merely presented as such by means of particulars on the packaging, while the product itself does not correspond to the characteristics of the category of goods, it fails to comply with the requirements under recital 28 and Article 18(1) of Regulation 2017/1001.

According to the appellant, when assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the medicinal products protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark.

Furthermore, it submits that genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.

Under recital 28 and Article 18(1) of Regulation 2017/1001, the use of general terms includes only goods clearly covered by the literal meaning of the general term.

According to the appellant, what is indicated on the packaging is not the term ‘medicinal product’, but rather ‘Ayurvedic Medicine’. The documents submitted by the intervener designated the goods as ‘Ayurvedic Medicine’ and not as medicines. The appellant maintains that the General Court simply interpreted the term ‘Medicine’ as meaning ‘medicinal product’, thereby making a mere presumption, but did not interpret the actual particular ‘Ayurvedic Medicine’.

The appellant asserts that it not only referred to the laws in India, the country of origin of the product, but also provided evidence, obtained through questioning of an instructed representative of the Indian federal authority, that, even in India, a distinction is made between medicinal products and ‘Ayurvedic Medicine’.

The General Court stated that the relevant judicial and administrative decisions designated the product in question as a ‘non-harmful medicine’. It failed to take into account documents submitted by the appellant according to which the product was denied authorisation in Germany on account of significant toxicological effects and according to which subsequent judicial proceedings had confirmed that decision as final.

In Germany, an opinion of an administrative official cannot overturn a final judgment. However, the General Court took the opposite view.

The General Court stated that a medical prescription is evidence of a medicine, which the appellant also did not dispute. The appellant submits that this is untrue. At the hearing, the appellant’s representative expressly stated that, due to therapeutic freedom in Germany, doctors are even permitted to prescribe food. The General Court presumed that consumers would perceive the product as a medicinal product on account of its presentation. It did not take into account the knowledge of specialised circles which would very likely be aware that ‘Ayurvedic Medicine’ products are ineffective and that the product in question was denied authorisation.

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