Language of document : ECLI:EU:T:2018:282

Case T‑419/17

Mendes SA

v

European Union Intellectual Property Office

(EU trade mark — Revocation proceedings — EU word mark VSL#3 — Trade mark having become a common name in the trade for a product or service for which it is registered — Mark liable to mislead the public — Article 51(1)(b) and (c) of Regulation (EC) No 207/2009 (now Article 58(1)(b) and (c) of Regulation (EU) 2017/1001))

Summary — Judgment of the General Court (Fifth Chamber), 18 May 2018

1.      EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Re-evaluation of the facts in the light of evidence produced for the first time before it — Not included

(Council Regulation No 207/2009, Art. 65)

2.      EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Mark which has become, in consequence of acts or inactivity of its proprietor, a common name in the trade — Conditions

(Council Regulation No 207/2009, Art. 51(1)(b))

3.      EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Mark which has become, in consequence of acts or inactivity of its proprietor, a common name in the trade — Assessment in the light of the perception of the relevant circles

(Council Regulation No 207/2009, Art. 51(1)(b))

4.      EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Mark which has become, in consequence of acts or inactivity of its proprietor, a common name in the trade — Word mark VSL#3

(Council Regulation No 207/2009, Art. 51(1)(b))

5.      EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Mark liable to mislead the public — Conditions

(Council Regulation No 207/2009, Art. 51(1)(c))

6.      EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Mark liable to mislead the public — Word mark VSL#3

(Council Regulation No 207/2009, Art. 51(1)(c))

1.      See the text of the decision.

(see para. 15)

2.      It is apparent from the applicable case-law of the Court, by analogy, to Article 51(1)(b) of Regulation No 207/2009 on the European Union trade mark that that article addresses the situation where the mark is no longer capable of fulfilling its function of an indication of origin.

Among the various functions of a trade mark, that of an indication of origin plays an essential part. It serves to identify the goods or services covered by the mark as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. That undertaking is that under the control of which the goods or services are marketed.

That essential function of trade marks has been incorporated by the European Union legislature into Article 4 of Regulation No 207/2009, which provides that signs capable of being represented graphically may constitute a trade mark provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Thus, while Article 7 of Regulation No 207/2009 specifies circumstances in which the mark is from the outset incapable of fulfilling its function of an indication of origin,Article 51(1)(b) of that regulation concerns the situation in which the use of a mark has become so widespread that the sign constituting that mark has come to designate the kind, the type or the nature of the goods or services covered by the registration rather than the specific goods or services originating from a particular undertaking. The mark, having become the common name of a product, has therefore lost its distinctive character, with the result that it no longer fulfils that function.

The rights conferred on the proprietor of a mark under Article 9 of Regulation No 207/2009 may then be revoked provided, first, that that mark has become, in the trade, a common name for a product or service for which it is registered and, second, that that transformation is due to acts or inactivity of that proprietor. Those conditions are cumulative.

(see paras 22-26)

3.      According to the case-law, in cases where intermediaries participate in the distribution to the consumer or the end user of a product which is the subject of a registered trade mark, the relevant classes of persons whose views fall to be taken into account in determining whether that trade mark has become the common name in the trade for the product in question comprise all consumers and end users and, depending on the features of the market concerned, all those in the trade who deal with that product commercially.

The mark forms part of a process of communication between vendors and purchasers. That process produces its intended result and the trade mark fulfils the function justifying its existence only where both parties involved in the communication ‘understand’ the trade mark, in the sense that they are aware of its function of an indication of origin. If either party considers the trade mark to be a generic name, the information which the trade mark conveys is not transmitted.

Nevertheless, a trade mark may, even if the purchaser does not know that it is a trade mark, continue to perform its function of an indication of origin when an intermediary exerts decisive influence over the purchaser’s decision to purchase and the intermediary’s knowledge of the trade mark’s function as an indication of origin thus leads to the success of the communication process. That is the case when it is customary in the relevant market for the intermediary to give advice which has a decisive bearing on the decision to purchase or where the intermediary actually makes the decision for the consumer himself, as is the case with pharmacists and doctors in relation to medicinal products available only on prescription.

Thus, while the relevant circles include primarily consumers and end users, intermediaries playing a part in the assessment of the customary nature of the mark must also be taken into account.

It follows from that case-law that the relevant circles, whose point of view must be taken into account when it is assessed whether the contested mark has become, in the trade, the common name of the product marketed under it, must be defined in the light of the characteristics of that product’s market.

(see paras 31-35)

4.      See the text of the decision.

(see paras 36-50)

5.      It is apparent from the case-law that the ground of revocation covered by Article 51(1)(c) of Regulation No 207/2009 on the European Union trade mark presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived.

Whether or not Article 51(1)(c) of Regulation No 207/2009 is applicable depends on misleading use of the mark after its registration. Such misleading use must be duly proved by the applicant.

While, having regard to the wording of Article 51(1)(c) of Regulation No 207/2009, alterations to the composition of a product covered by a mark can lead to the latter being revoked, it will be revoked only if it conveys incorrect information concerning the nature, quality or geographical origin of that product.

(see paras 54, 55, 60)

6.      See the text of the decision.

(see paras 61, 62, 64-66)