Language of document : ECLI:EU:T:2020:549

JUDGMENT OF THE GENERAL COURT (Third Chamber)

18 November 2020 (*)

(EU trade mark – Revocation proceedings – EU word mark JUVEDERM ULTRA – Genuine use of the mark – Use in connection with the goods in respect of which the mark was registered – Use in the form in which the mark was registered – Use with the proprietor’s consent – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001))

In Case T‑643/19,

Dermavita Co. Ltd, established in Beirut (Lebanon), represented by D. Todorov, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, V.J. Ruzek, and K. Zajfert, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Allergan Holdings France, established in Courbevoie (France), represented by J. Day, Solicitor, and T. de Haan, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 18 July 2019 (Joined Cases R 1655/2018‑4 and R 1723/2018‑4), relating to revocation proceedings between Dermavita Co. and Allergan Holdings France,

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins, President, V. Kreuschitz and Z. Csehi (Rapporteur), Judges,

Registrar: A. Juhász-Tóth,

having regard to the application lodged at the Court Registry on 26 September 2019,

having regard to the response of EUIPO lodged at the Court Registry on 18 December 2019,

having regard to the response of the intervener lodged at the Court Registry on 11 December 2019,

further to the hearing on 10 July 2020,

gives the following

Judgment

 Background to the dispute

1        On 20 September 2007, Allergan Inc., the predecessor in law to the intervener, Allergan Holdings France, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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        Registration as a mark was sought for the word sign JUVEDERM ULTRA.

3        The goods in respect of which registration was sought are in Classes 5 and 10 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 to the following description:

–        Class 5: ‘Pharmaceutical products administered by injection for use in moisturising skin and reducing wrinkles’;

–        Class 10: ‘Dermic implants, including visco-supplementation substances for medical use, intended for wrinkle filling or volume increasing’.

4        The trade mark application was published in Community Trade Marks Bulletin No 7/2008 of 11 February 2008 and, on 21 August 2008, the sign in question was registered as an EU trade mark under number 6 295 638.

5        On 8 March 2016, Dermavita Co. Ltd Parseghian & Partners, the predecessor in law to the applicant, Dermavita Co. Ltd, filed an application for revocation of the contested mark on the ground that that mark had not been put to genuine use for a continuous period of five years pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001).

6        On 19 and 22 August 2016, and on 21 April and 15 June 2017, the proprietor of the mark submitted proof of use of the contested mark.

7        On 31 July 2018, the Cancellation Division partially upheld the application for revocation by revoking the mark for the contested goods in Class 10 and dismissed the application for revocation for the contested goods in Class 5.

8        On 22 August 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division in so far as it upheld the application for revocation for the contested goods in Class 10.

9        On 3 September 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division in so far as it dismissed the application for revocation for the contested goods in Class 5.

10      By decision of 18 July 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO, inter alia, dismissed the applicant’s appeal on the ground that the intervener had established genuine use of the contested mark during the relevant period for the contested goods in Class 5.

11      The Board of Appeal stated, inter alia, the following reasons for its decision:

–        the goods to which the evidence of use related (‘the goods in question’) were not ‘pharmaceuticals’ but other preparations for medical use, and, more specifically, ‘injectable fillers’ and ‘pre-filled syringes for medical use’, with the result that they were correctly classified in Class 5;

–        the goods in question were classified as pharmaceutical products, not in the sense of medicinal products but as other preparations for medical use;

–        neither the fact that the European Conformity certificates for the goods in question referred to Council Directive 93/42/EEC of 14 June 1993 concerning medical devices (OJ 1993 L 169, p. 1), nor the other documents and the opinions of medical practitioners on how to define those goods changed anything in relation to the correct classification of the goods in question in Class 5 in accordance with the Nice Classification system, which was the only relevant system for the purposes of trade mark classification;

–        the contested mark had been used by other entities in the Allergan group with the consent of the intervener, the proprietor of that mark.

 Forms of order sought

12      The applicant claims that the Court should:

–        partially annul the contested decision, in so far as its appeal and its application for revocation have been dismissed;

–        order EUIPO and the intervener to pay the costs, including those incurred before EUIPO.

13      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

14      The applicant relies on a single plea in law alleging infringement of Article 15 of Regulation No 207/2009 (now Article 18 of Regulation 2017/1001), inasmuch as the Board of Appeal erred in finding that the contested mark, first, had been put to genuine use in connection with the goods in Class 5 in respect of which it had been registered and, second, had been used by the intervener or on its behalf.

15      EUIPO disputes the applicant’s arguments.

16      The intervener does not concur with EUIPO’s arguments, but confines itself to asserting, in essence, that the action is manifestly unfounded because the Board of Appeal made no error of law and there have been no procedural irregularities and that the applicant does not base its action on any errors of law or procedural irregularities, but simply challenges the Board of Appeal’s factual findings. It should be noted at the outset that, under Article 72(2) of Regulation 2017/1001, an action before the Court may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the TFEU, infringement of the Regulation on the European Union trade mark or of any rule of law relating to their application or misuse of power. Such an infringement of the Regulation on the European Union trade mark may also consist of an error made by the Board of Appeal in the assessment of the facts, which therefore does fall within the review to be carried out by the Court.

 The first part of the single plea, alleging that the Board of Appeal erred in finding that the contested mark had been put to genuine use in connection with the goods in Class 5 in respect of which the contested mark was registered

17      By the first part of its single plea, the applicant submits that the goods in connection with which the contested mark was used, namely injectable dermal fillers containing hyaluronic acid, are not the goods in respect of which that mark was registered, namely pharmaceuticals.

18      EUIPO disputes the applicant’s arguments.

19      Under Article 51(1)(a) of Regulation No 207/2009 the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

20      It must be borne in mind that, according to the first subparagraph of Article 15(1) of Regulation No 207/2009 (now the first subparagraph of Article 18(1) of Regulation 2017/1001), ‘if, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use’.

21      In that regard, it is settled case-law that there is ‘genuine use’ of a trade mark, within the meaning of that provision, where the mark is used in accordance with its essential function, which is to guarantee the identity of origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 8 June 2017, W.F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraph 37 and the case-law cited).

22      As regards individual marks, the essential function is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (see judgment of 8 June 2017, W.F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraph 41 and the case-law cited).

23      It is in the light of those principles that it must be examined whether the Board of Appeal was right in finding, on the basis of the evidence that the intervener had made available to it, that the contested mark had been put to genuine use in connection with the goods in question.

24      In essence, the applicant submits that, irrespective of whether they belong to Class 5, which it does not dispute, the goods in question are not ‘pharmaceuticals’, registered and authorised in accordance with Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to medicinal products for human use (OJ 2001 L 311, p. 67), as confirmed by the opinions of national agencies for medicinal products, of the ministries of health of several Member States of the European Union, and of medical practitioners, but are, rather, injectable dermal fillers, which are regulated by Directive 93/42. Those goods have no medical purpose intended to ‘treat or prevent disease’, but are simply intended to be used for beauty purposes.

25      As a preliminary point, it must be observed that the Board of Appeal did not err when it found that the goods in question should be classified in accordance with the Nice Classification system, irrespective of whether other rules with different objectives might apply to those goods.

26      First, it is apparent, in essence, from Article 28(1) of Regulation No 207/2009 (now Article 33(1) of Regulation 2017/1001) that, for the purposes of the registration of an EU trade mark, goods and services are to be classified according to the Nice Classification.

27      Second, as is argued by EUIPO, although the national and EU legislative measures referred to by the applicant are of primary importance for the sector as they safeguard the process of manufacturing, labelling and distributing medicinal products, they do not necessarily have an influence on the way in which the goods and services are classified in the Nice Classification. In that regard, the essential function of the mark should not be confused with the other functions that the mark may also fulfil, such as that of guaranteeing the quality of the goods in question (see judgment of 7 June 2018, Schmid v EUIPO – Landeskammer für Land- und Forstwirtschaft in Steiermark (Steirisches Kürbiskernöl), T‑72/17, EU:T:2018:335, paragraph 52 and the case-law cited).

28      Consequently, the classification of goods according to other rules of EU law, such as Directive 93/42, is not in principle decisive with regard to their classification for the purposes of the registration of an EU trade mark.

29      Next, as the applicant correctly notes, the relevant question is whether the goods in connection with which the mark is used, namely the goods in question, are the same goods in respect of which the mark was registered in Class 5. In addition, the applicant does not dispute the fact that the goods in question are in Class 5.

30      The goods in question were registered in Class 5 as ‘pharmaceutical products administered by injection for use in moisturising skin and reducing wrinkles’. Irrespective of the use of the word ‘pharmaceutical’ which is merely a choice made by the proprietor at the time of registration, it is obvious that the goods in connection with which the mark was used are the same goods as those in respect of which the mark was registered. In that regard, the fact, even if it were established, that those goods are not pharmaceuticals within the meaning of Directive 2001/83 does not alter the fact that those goods were registered, in essence, as dermal fillers and used as such, which is not disputed by the applicant. Accordingly, the applicant’s argument alleging that those goods do not fall within the scope of Directive 2001/83 as pharmaceuticals cannot succeed.

31      As noted in the case-law cited in paragraph 21 above, use of the contested mark for dermal fillers is in accordance with its essential function of guaranteeing the identity of origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods, not including token use. The fact that the intervener described those goods as pharmaceutical at the time when the mark was registered does not affect that function, nor, as the applicant accepts, does it affect the fact that the goods belong to Class 5, since that class includes a much wider range of goods than merely ‘pharmaceuticals’ sensu stricto.

32      Moreover, it must be stated that, in paragraphs 35 and 36 of the contested decision, the Board of Appeal did not make any error of assessment when it found that, for the purposes of the registration of EU trade marks, the goods in question had to be classified in Class 5 of the Nice Classification as ‘pharmaceutical products’. The goods to be injected contain hyaluronic acid; an acid that has several medical applications and is, inter alia, used as a dermal filler which is administered by injection by medical practitioners and clinics.

33      It must therefore be held that the use of the contested mark, which the intervener has proved, relates to the goods in respect of which that mark was registered and, consequently, the first part of the single plea must be rejected.

 The second part of the single plea, alleging that the Board of Appeal erred in finding that the contested mark was used on behalf of the proprietor

34      By the second part of its single plea, the applicant submits that the contested mark was not used with the prior – express or implied – consent of the intervener, the proprietor of the mark.

35      EUIPO disputes the applicant’s arguments.

36      Under Article 15(2) of Regulation No 207/2009 (now Article 18(2) of Regulation 2017/1001), use of the EU trade mark with the consent of the proprietor is to be deemed to constitute use by the proprietor.

37      It must be borne in mind that the Board of Appeal, in paragraphs 45 and 46 of the contested decision, rejected the applicant’s argument on the ground that the mark had been used by other entities in the Allergan group with the consent of the intervener, the proprietor of that mark (see paragraph 11 above).

38      First of all, as the Board of Appeal observes in paragraph 46 of the contested decision, if the contested mark had been used without the proprietor’s consent and in breach of trade mark rights, it would have been in the interests of the entities using it not to disclose evidence of such use to that proprietor (see, to that effect, judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 25). It is also unlikely that the intervener could have had those documents and submitted them as proof of use of the contested mark if that use had taken place against its wishes (see, by analogy, judgment of 16 April 2015, Matratzen Concord v OHIM – KBT (ARKTIS), T‑258/13, not published, EU:T:2015:207, paragraph 43 and the case-law cited).

39      Next, it must be borne in mind that, according to settled case-law, the use of a trade mark by a company which is economically linked to the proprietor of the mark is presumed to be use of that mark with the consent of the proprietor and is therefore to be deemed to constitute use by the proprietor, in accordance with Article 15(2) of Regulation No 207/2009 (see judgment of 30 January 2015, Now Wireless v OHIM – Starbucks (HK) (now), T‑278/13, not published, EU:T:2015:57, paragraph 38 and the case-law cited).

40      In this respect, it should be observed that, in paragraph 45 of the contested decision, the Board of Appeal correctly held that the proprietor of the mark belonged to a group of companies linked to Allergan. It is apparent from the two witness statements that the intervener and the companies which have used the contested mark belong to the same group of companies. Furthermore, the applicant merely observes that the witness statements do not have a strong probative value, since they are, inter alia, subsequent to the date of the application for revocation and were issued by the proprietor of the contested mark and not by independent persons, without, however, submitting arguments, or at the very least indicia, that would cast doubt on the authenticity of the information contained therein; information which bears out the Court’s assessments set out in paragraph 38 above.

41      The second part of the single plea must therefore be rejected and consequently the single plea must be rejected and the action must be dismissed in its entirety.

 Costs

42      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 form of order sought by EUIPO.

43      Pursuant to Article 135(1) of the Rules of Procedure, exceptionally, if equity so requires, the General Court may decide that an unsuccessful party is not to be ordered to pay any of the costs of the other party. In view of the fact that the arguments put forward by the intervener manifestly lacked any foundation in law (see paragraph 16 above), the Court takes the view that it is not appropriate to order the applicant to pay the costs incurred by the intervener.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Dermavita Co. Ltd to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);

3.      Orders Allergan Holdings France to bear its own costs.


Collins

Kreuschitz

Csehi

Delivered in open court in Luxembourg on 18 November 2020.


E. Coulon

 

M. van der Woude

Registrar

 

President


*      Language of the case: English.