Language of document : ECLI:EU:T:2020:547

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 – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001))

In Case T‑664/19,

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

Dermavita Co. Ltd, established in Beirut (Lebanon), represented by D. Todorov, 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 30 September 2019,

having regard to the response of EUIPO lodged at the Court Registry on 14 January 2020,

having regard to the response of the intervener lodged at the Court Registry on 10 January 2020,

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 applicant, 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 a European Union trade mark, under number 6 295 638.

5        On 8 March 2016, Dermavita Co. Ltd Parseghian & Partners, the predecessor in law to the intervener, 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 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 upheld the application for revocation for the contested goods in Class 10.

9        On 3 September 2018, the intervener also 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 it had not established genuine use of the contested mark during the relevant period for the goods in Class 10.

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

–        the conclusion that use of the contested mark in connection with the registered goods in Class 5 has been proved precludes the same applying in respect of the registered goods in Class 10, since a product does not, in principle, belong to two classes;

–        references to situations in which the same product had been registered in Classes 5 and 10 were irrelevant, since the goods to which the evidence of use relates (‘the goods in question’) were not in Class 10, because they were not ‘dermic implants’, that is to say surgical implants composed of artificial material and implanted into the body;

–        references, first, to a Wikipedia extract and, second, to other registrations, were irrelevant, the former because the Nice Classification system is the only relevant system for trade mark classification purposes, and the latter because each case is assessed on an individual basis;

–        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 it revokes the contested mark for the goods in Class 10;

–        order EUIPO and the intervener to pay the costs.

13      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

14      The applicant raises a single plea in law alleging infringement of Article 58(1)(a) and Article 64(5) of Regulation 2017/1001, provisions whose content is identical to that of Article 51(1)(a) and Article 57(5) of Regulation No 207/2009, applicable ratione temporis to this dispute, taking account of the date on which the application for revocation was filed (see, to that effect, judgment of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3). The applicant alleges that the Board of Appeal erred in finding that the contested mark had not been put to genuine use in connection with the goods in Class 10. The goods in question have a dual function and fall within both the category of pharmaceutical products in Class 5 and the category of dermal fillers, a subcategory of artificial implants, in Class 10.

15      It should be noted that, as is argued by EUIPO, in the present case, the applicant does not refer to composite goods which have a dual function but seeks to protect the same product under two different headings of the Nice Classification. Moreover, as EUIPO has also observed, a dual classification of the same product is not normally possible in the light of the wording of 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), applicable ratione temporis to the present case.

16      The applicant also claims that lidocaine, the pharmaceutical component of the goods in question, is immediately absorbed after injection, whereas hyaluronic acid gel expands and settles under the skin, thus forming a subcutaneous implant which remains under the skin for a long time, until it deteriorates. In other words, hyaluronic acid gel, once injected, functions as a type of artificial implant.

17      In that regard, the Board of Appeal observed, in paragraph 41 of the contested decision, that, according to the Nice Classification, the implants in Class 10 were surgical implants, composed of artificial materials, which is not disputed by the parties. As the Cancellation Division had already observed, the Board of Appeal confirmed that it was not established that the goods in question had been used as artificial implants within the meaning of Class 10 but, rather, that they had been used as dermal fillers within the meaning of Class 5.

18      As a preliminary point, it should be borne in mind that, as regards the burden of proof, in proceedings for the revocation of a mark, as a rule, it is for the proprietor of the mark to establish genuine use of that mark (see, to that effect, judgment of 23 January 2019, Klement v EUIPO, C‑698/17 P, not published, EU:C:2019:48, paragraph 57).

19      In the present case, it should be noted that since the only function of the goods in question is that of filling wrinkles of the skin with hyaluronic acid gel, it must be concluded that that function is specific to pharmaceuticals, in a broad sense, which are in Class 5, and not medical devices, in a broad sense, and thus implants, which are in Class 10. Although those goods correspond to the goods which are currently classified as ‘injectable dermal fillers’ in Class 5, which is not disputed by the parties, the applicant has not established that a dermal filler constitutes an implant in Class 10 at the same time. As is argued by EUIPO, an implant is generally associated with surgery, whereas the goods in question, as is argued by the applicant, are ‘injectable dermal fillers containing hyaluronic acid gel that are used to smooth facial wrinkles and to add volume to areas of the face where the skin sags’ and cannot constitute an implant at the same time.

20      The single plea in law must therefore be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

21      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 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 (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Allergan Holdings France to pay the 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.