JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
7 June 2023 (*)
(EU trade mark – Revocation proceedings – EU figurative mark medex – Genuine use of the mark – Article 18 and Article 58(1)(a) of Regulation (EU) 2017/1001 – Classification of the goods for which genuine use has been shown)
In Case T‑419/22,
Medex, živilska industrija, d.o.o., established in Ljubljana (Slovenia), represented by N. Čuden, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Gerrit Cornelis Johan Stein, residing in Elp (Netherlands),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse (Rapporteur) and I. Dimitrakopoulos, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action on the basis of Article 263 TFEU, the applicant, Medex, živilska industrija, d.o.o., seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 May 2022 (Case R 1361/2021-5) (‘the contested decision’).
Background to the dispute
2 On 3 October 2011, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark in respect of which registration was sought covered goods in Classes 3, 5 and 30 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 corresponding, as regards the goods at issue in the proceedings before the Board of Appeal, in respect of each of those classes, to the following description:
– Class 3: ‘Cosmetic products; dentifrices; cosmetic creams; skin care cosmetics; pomades for cosmetic use’;
– Class 5: ‘Vitamin preparations; food additives and supplements for human use, for medical and/or therapeutic purposes; nutritional food supplements, included in this class, including nutritional food supplements based on bee products and medicinal herbs; balms for medical purposes; propolis (for medical purposes); royal jelly (for medical purposes); candy, medicated; dietetic food for medical purposes; refined honey for medical and pharmaceutical purposes; ointments with added honey, for medical purposes; the above said products optionally containing starch and/or starch derivatives only as a filler or stabilizer’;
– Class 30: ‘Honey; honey containing dried fruits; honey containing nuts; pastry; confectionery; sweetmeats (candy); bee glue (propolis) for human consumption; royal jelly for human consumption; spreads based on honey; the above said products optionally containing starch and/or starch derivatives only as a filler or stabilizer’.
4 The mark was registered on 2 August 2012 as an EU trade mark.
5 On 25 June 2020, the other party to the proceedings before EUIPO filed an application for revocation of the contested mark, on the basis of Article 58(1)(a) 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), on the ground that that mark had not been put to genuine use in respect of the goods referred to in paragraph 3 above.
6 On 10, 11, 13 and 14 September 2020, the applicant submitted evidence of use of the contested mark to the Cancellation Division.
7 On 7 June 2021, the Cancellation Division upheld the application for revocation in part.
8 On 5 August 2021, the other party to the proceedings filed an appeal with EUIPO against the decision of the Cancellation Division. The scope of the appeal was limited to the part of the Cancellation Division’s decision that rejected the revocation application for certain goods in respect of which the contested mark was registered.
9 By the contested decision, the Fifth Board of Appeal of EUIPO upheld the appeal in part on the ground that genuine use of the contested mark had not been proved for some of the goods concerned; it revoked that mark with effect from 25 June 2020 for the goods in Classes 3, 5 and 30 corresponding to the following description:
– Class 3: ‘Dentifrices’;
– Class 5: ‘Ointments with added honey, for medical purposes; the above said products optionally containing starch and/or starch derivatives only as a filler or stabilizer’;
– Class 30: ‘Pastry except cookies; bee glue (propolis) for human consumption; royal jelly for human consumption; the above said products optionally containing starch and/or starch derivatives only as a filler or stabilizer’.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision in so far as it revoked the contested EU trade mark in respect of the goods in Classes 5 and 30 referred to in paragraph 9 above;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event of an oral hearing being convened.
Law
12 The applicant relies in substance on two pleas in law, alleging, first, infringement of Article 94(1) of Regulation 2017/1001 and, second, infringement of Article 58(1)(a) and (2) of that regulation.
The first plea, alleging infringement of Article 94(1) of Regulation 2017/1001
13 The applicant claims that the Board of Appeal failed to fulfil its obligation to state reasons in finding, in particular in paragraph 94 of the contested decision, that ‘propolis’ and ‘royal jelly’ could not be regarded as products for human consumption falling within Class 30 where they were represented as having a specific medical purpose. According to the applicant, the Board of Appeal found incorrectly, in those circumstances, that those products were protected solely in Class 5. In addition, the applicant claims that it was not able to present its comments on that distinction before the contested decision was adopted.
14 EUIPO disputes the applicant’s arguments.
15 First, it must be borne in mind that, pursuant to the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based.
16 That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. It has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to address all relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgment of 7 June 2017, Mediterranean Premium Spirits v EUIPO – G-Star Raw (GINRAW), T‑258/16, not published, EU:T:2017:375, paragraph 88).
17 Second, the second sentence of Article 94(1) of Regulation 2017/1001 provides that the decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.
18 That provision affirms, in EU trade mark law, the general principle of protection of the rights of the defence. In accordance with that principle, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his or her point of view known. The right to be heard extends to all the factual and legal material which forms the basis for the decision, but not to the final position which the authority intends to adopt (see judgment of 20 October 2021, Square v EUIPO ($ Cash App), T‑211/20, not published, EU:T:2021:712, paragraph 34 and the case-law cited).
19 In the present case, it is apparent in particular from paragraph 94 of the contested decision that propolis and royal jelly may be protected in both Class 5 and Class 30 and that both goods are intended for human consumption. According to the Board of Appeal, the only difference between those two classes is that goods in Class 30 have no specific medical purpose.
20 In paragraph 95 of that decision, the Board of Appeal found, in that regard, that since the evidence provided by the applicant related to propolis and royal jelly as goods having medicinal or health properties, there was no proof of genuine use of the contested mark in relation to those two goods as food products, protected in Class 30.
21 It thus follows that the Board of Appeal set out the reasons why, in its view, genuine use of the contested mark for ‘propolis’ and ‘royal jelly’ for human consumption, as goods protected in Class 30, had not been demonstrated. As is apparent from paragraphs 61 to 69 below, the applicant has had the possibility to challenge that finding by the Board of Appeal and the Court has been able to carry out its review of legality. There has thus been no infringement with respect to the first sentence of Article 94(1) of Regulation 2017/1001.
22 Furthermore, since the applicant was able to adduce evidence of genuine use of the contested mark for the goods in respect of which it was registered and could respond to the arguments made by the other party to the proceedings before the Board of Appeal, it cannot be held that the applicant has not had the possibility to comment on that issue. The fact that it disagrees with the assessment of the evidence made by the Board of Appeal is a matter that concerns the examination of the case on the merits. Consequently, the Board of Appeal has likewise not infringed Article 94(1), second sentence, of Regulation 2017/1001.
23 The first plea must be rejected.
The second plea, alleging infringement of Article 58(1)(a) and (2) of Regulation 2017/1001
24 The second plea is divided into three parts, concerning genuine use of the contested mark for, first, ‘ointments with added honey, for medical purposes’; second, ‘pastry’, except ‘cookies’; and, third, ‘propolis for human consumption’ and ‘royal jelly for human consumption’.
25 It should be observed that Article 58(1)(a) of Regulation 2017/1001 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings 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.
26 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the 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, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
27 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 exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services 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 (judgment of 8 July 2004, Sunrider v OHIM – Espadafor (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
28 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
29 Under Article 10(3) and (4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), the proof of use of a mark must concern the place, time, extent and nature of use of the trade mark and is to be limited, in principal, to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 97(1)(f) of Regulation 2017/1001 (see, to that effect, judgments of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 37, and of 10 September 2008, Boston Scientific v OHIM – Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 27).
30 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was correct in finding that there had been no genuine use of the contested mark for the goods at issue during the relevant period.
The first part, concerning genuine use of the contested mark in respect of ‘ointments with added honey, for medical purposes’
31 The applicant submits that it proved to the requisite legal standard that there was genuine use of the contested mark for the goods ‘ointments with added honey, for medical purposes’ included in Class 5. It specifies that genuine use of the contested mark was proved in respect of a lip balm from the Elanosol range containing honey. First, the applicant states that that lip balm contains propolis as well as honey, propolis being an ingredient whose medical use was confirmed by the Board of Appeal in paragraph 96 of the contested decision; therefore, that balm is intended to be used for both medical and cosmetic purposes, which is confirmed, according to the applicant, by the presence of other ingredients from Class 5. Second, the applicant asserts that the words ‘ointment’ and ‘balm’ are synonyms. Third, it points to its sale of the product Elanosol SOS, which is a balm for cracked and damaged lips and which therefore, in its view, has a medical purpose. It thus submits that Elanosol lip balm is an ‘ointment with added honey for medical purposes’.
32 EUIPO disputes the applicant’s arguments.
33 The Board of Appeal found, in paragraph 85 of the contested decision, that the file did not contain evidence as regards genuine use of the contested mark for ‘ointments with added honey, for medical purposes’ in Class 5.
34 It must be held that the Board of Appeal did not err in its assessment in making such a finding and that the arguments put forward by the applicant are not such as to alter that conclusion.
35 The applicant submits, in essence, that it is possible to classify Elanosol lip balms as ‘ointments with added honey, for medical purposes’ in Class 5.
36 In that regard, it is important to point out that the applicant does not dispute the finding of the Board of Appeal that the lip balms in the Elanosol range fall within Class 3, given their use as cosmetic products that are intended more specifically to moisturise, nourish and protect the skin. However, the applicant submits that those balms, which, in its view, are equivalent to ointments, belong equally and at the same time to Class 5, having regard to their characteristics that are also medicinal.
37 However, the principle is that of the classification of a product in one class according to its function or purpose, whereas the specific situation is that of a multipurpose composite object, the latter, by way of exception to the aforementioned principle, being capable of being classified in a number of classes because of its various functions or intended purposes (judgment of 10 November 2021, Monster Energy v EUIPO – Frito-Lay Trading Company (MONSTER and MONSTER ENERGY), T‑758/20 and T‑759/20, not published, EU:T:2021:776, paragraph 38).
38 Furthermore, it has already been held that it is not sufficient that a product has properties beneficial to health in general in order to be classified as a ‘medicinal product’, but it must strictly speaking have the function of treating or preventing disease (judgment of 15 November 2007, Commission v Germany, C‑319/05, EU:C:2007:678, paragraph 64). Medicinal products are, by their nature, intended to be used exclusively for medical purposes, to the exclusion of products which may be used independently from any medical treatment, even though they may be intended to improve the consumer’s state of health and therefore serve a therapeutic purpose (see, to that effect, judgment of 5 October 2020, SBS Bilimsel Bio Çözümler v EUIPO – Laboratorios Ern (apiheal), T‑53/19, not published, EU:T:2020:469, paragraphs 52 and 62 and the case-law cited).
39 It follows that, contrary to what is in essence argued by the applicant, a cosmetic product in Class 3 intended to be used on lips, for protecting or maintaining them in good condition, cannot also be regarded as a medicinal product falling within Class 5 intended to be used exclusively for medical purposes.
40 Furthermore, it must be held, as observed by EUIPO, that the applicant has not shown that the Elanosol range of lip balms, including Elanosol SOS, which is intended for use, inter alia, on cracked or damaged lips, had any medical use, in terms of the case-law cited in paragraph 38 above. Evidence of genuine use of the contested mark in respect of those lip balms appears in particular in Annex 4, which was submitted by the applicant before the Cancellation Division. That evidence contains images of Elanosol lip balms, accompanied by a short text which states, inter alia, that those balms contain honey and bees wax, which nourish, moisturise and protect lips against the cold and A and B ultraviolet rays. In addition, the applicant itself describes the Elanosol lip balm as a cosmetic in its observations of 9 September 2020 before the Cancellation Division. In those same observations, the applicant presented the lip balm as a product falling within Class 3. The evidence adduced by the applicant and its own description of those balms therefore do not provide any indication to show that Elanosol lip balms, or one of them in particular, are intended to be used exclusively for medical purposes.
41 Nor does the fact that those balms contain ingredients which may also be included in goods in Class 5, as the applicant submits, suffice to demonstrate that they belong to that class. As is clear from the evidence referred to in point 40 above, the lips balms marketed by the applicant under the contested mark are principally intended to be placed in contact with the surface areas of the human body in order to care for them or beautify them, which is characteristic of cosmetic products (see, to that effect, judgment of 15 July 2015, Australian Gold v OHIM – Effect Management & Holding (HOT), T‑611/13, EU:T:2015:492, paragraph 46). By contrast, as is also apparent from paragraph 38 above, the goods for medical use in Class 5 are generally intended exclusively for the prevention or treatment of medical problems, for example skin problems, or for healthcare.
42 The applicant’s argument that the words ‘balm’ and ‘ointment’ are synonyms is not capable of calling the foregoing into question.
43 The Board of Appeal therefore did not err in its assessment in finding that the use of the contested mark for ‘ointments with added honey, for medical purposes’ had not been proved to the requisite legal standard.
44 It follows that this part of the second plea must be rejected.
The second part, concerning genuine use of the contested mark for ‘pastry’, with the exception of ‘cookies’ in Class 30
45 The applicant submits, in essence, that it proved genuine use of the contested mark for ‘cookies’ and that, as a result, it also proved genuine use in relation to the broader category of ‘pastry’ in Class 30.
46 EUIPO disputes the applicant’s arguments.
47 The Board of Appeal found in paragraph 90 of the contested decision that, as regards ‘pastry’, the only product in that category that had been identified by the evidence was ‘cookies’. It explained, in paragraph 93 of that decision, that there were many kinds of baked products made from flour, sugar, milk, butter, baking powder and eggs, which could all have another purpose or intended use. Furthermore, according to the definition adopted by the Board of Appeal, ‘pastry’ may be sweet or savoury. ‘Cookies’ are generally eaten as a snack any time of the day, often served with a warm beverage, while other types of ‘pastry’ may be served as a meal or as a dessert. Accordingly, in the view of the Board of Appeal, ‘cookies’ constitute a coherent subcategory within ‘pastry’ products.
48 It must be stated at the outset, as the parties have observed, that genuine use of the contested mark has been proved solely in respect of the product ‘cookies’, but not for the other goods included in the category of ‘pastry’. However, the applicant contests the finding of the Board of Appeal that ‘cookies’ constitute an independent subcategory of the broader category of ‘pastry’, such that genuine use of the contested mark for ‘cookies’ is not sufficient to establish genuine use of that mark in relation to ‘pastry’.
49 In that respect, it should be observed that according to the case-law, with regard to goods or services in a broad category of goods, which may be subdivided into several independent subcategories, it is necessary to require the proprietor of the mark to adduce proof of genuine use of that mark for each of those autonomous subcategories (see, to that effect, judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 43).
50 The criterion of the purpose or intended use is of fundamental importance in the definition of a subcategory of goods or services (judgments of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 29, and of 30 January 2015, Now Wireless v OHIM – Starbucks (HK) (now), T‑278/13, not published, EU:T:2015:57, paragraph 27).
51 In those circumstances, and having regard to the evidence adduced by the applicant, the Board of Appeal was fully entitled to find that genuine use of the contested mark had been proved for the goods ‘cookies’ as an autonomous subcategory of goods belonging to the broader category of ‘pastry’, on the ground that the intended use and purpose of ‘cookies’ could differ from those of other types of ‘pastry’.
52 The applicant’s arguments are not capable of calling the Board of Appeal’s finding into question.
53 First, the argument that ‘cookies’ have an inseparable link with the other goods in the category of ‘pastry’, since they are in competition with each other, have the same marketing channels and are produced from the same ingredients, cannot be accepted. The Court has already held in that regard that categories such as ‘pastry’, ‘cakes’ or ‘cookies’ are distinct despite their being manufactured from similar or identical ingredients (see, to that effect, judgment of 1 September 2021, Bimbo Donuts Iberia v EUIPO – Hijos de Antonio Juan (DONAS DULCESOL), T‑697/20, not published, EU:T:2021:526, paragraph 40).
54 It is true that the factors referred to by the applicant, namely the nature, the competitive situation, or the distribution channels of ‘cookies’ and of other types of ‘pastry’, are relevant for assessing the similarity of goods in the context of reviewing the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 (see, to that effect, judgment of 15 December 2010, Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 30 and the case-law cited). However, that is not the situation in the present case.
55 Second, as the applicant submits, as regards the purpose of the goods, ‘cookies’ may also be consumed as a dessert. However, it must be held that the Board of Appeal was correct in finding, in paragraph 93 of the contested decision, that ‘cookies’ are, in general, eaten as a snack at any time of the day, often served with beverages such as milk, coffee or tea, unlike other types of ‘pastry’ products, which may be served as a meal in itself or mainly as desserts after a meal.
56 Third, the applicant submits that there is a separate entry in the EUIPO Harmonised Database showing the product ‘pastries’ and that the Board of Appeal was precluded from dividing goods into subcategories if there was a separate entry in that database. In that regard it should be observed that, according to EUIPO’s website, screenshots of which were submitted by the applicant in Annex C.11 to the application, that database ‘contains more than 70 000 terms from which … users can select the goods and services for which they seek protection in their trade mark applications’. It must be found that that is a purely practical and administrative tool, providing the names of products already accepted by the competent authorities of the Member States and allowing for the acceleration of the procedure of applying for registration of a trade mark. That tool is of no relevance to the issue of whether the product ‘cookies’ constitutes a subcategory of the category ‘pastry’, in terms of the case-law cited in paragraph 49 above.
57 Consequently, the second part of the second plea must be rejected.
The third part, concerning genuine use of the contested mark in respect of ‘propolis for human consumption’ and ‘royal jelly for human consumption’
58 The applicant argues that the Board of Appeal erred in its assessment by finding that genuine use of the mark had not been proved to the requisite legal standard in respect of either ‘propolis for human consumption’ or ‘royal jelly for human consumption’ in Class 30. It submits that its edible products containing propolis and royal jelly may fall within Class 5 or Class 30, when they do not have a medical purpose.
59 EUIPO disputes the applicant’s arguments.
60 The Board of Appeal found in paragraphs 94 and 95 of the contested decision that ‘bee glue (propolis) for human consumption’ and ‘royal jelly for human consumption’ are protected in both Class 5 and Class 30. It stated that propolis and royal jelly, whether protected in Class 5 or 30, are evidently for human consumption, the only difference being that propolis and royal jelly in Class 30 have no specific medical purpose. It found that there was no evidence of genuine use of the contested mark for ‘propolis’ and ‘royal jelly’ as pure food products. The evidence on file related only to propolis or royal jelly containing vitamins and other ingredients with medicinal or health properties, available as lozenges, drops, sprays, capsules or ampoules, which, according to the applicant’s own indications, are recommended in order to strengthen health or to treat medical problems.
61 It should first be observed that the explanatory notes to the Nice Classification state that, ‘Class 30 includes mainly foodstuffs of plant origin, except fruits and vegetables, prepared or preserved for consumption, as well as auxiliaries intended for the improvement of the flavour of food’. However, ‘this Class does not include, in particular … dietary supplements’. The explanatory notes also state that Class 5 ‘includes mainly pharmaceuticals and other preparations for medical or veterinary use’; it covers, inter alia, ‘dietary supplements intended to supplement a normal diet or to have health benefits’.
62 It must be held that the Board of Appeal did not err in its assessment in drawing the conclusion set out in paragraph 60 above and that the arguments and evidence put forward by the applicant do not suffice to call that finding into question.
63 The applicant fails to persuade with its main argument, that the goods which it markets for which genuine use of the contested mark has been proved contained propolis or royal jelly and were in part medicinal and in part intended for human consumption as food. It is true that EUIPO accepts that propolis and royal jelly may, in principle, have different applications and be used for medical purposes or as pure food items. Those goods must nevertheless, depending on their intended use, be included in either Class 5, when intended to be used for medical purposes or dietary supplements, or in Class 30, when they are intended to be used as foodstuffs.
64 However, the applicant has not established that its goods containing propolis or royal jelly could be regarded as ‘foodstuffs’ falling within Class 30 of the Nice Classification.
65 As regards propolis, the applicant merely asserts that ‘propolis in alcohol solution, drops’ (submitted in Annex C.3 to the application) contains no vitamins or other ingredients with medicinal or health properties, but is simply a bottle containing a solution of propolis in alcohol with a drop applicator. The Board of Appeal found in paragraph 81 of the contested decision that those drops were ‘propolis for medical purposes’, falling within Class 5. It was from that perspective that the Board of Appeal examined the evidence adduced by the applicant and found that genuine use of the contested mark had been proved in respect of that product. The applicant appears to dispute that finding by arguing that it did not claim any medical properties for that product, which must be regarded as ‘propolis for human consumption’ in Class 30.
66 However, propolis is not generally consumed for its taste, which is particularly bitter, and it is primarily used on account of its therapeutic and healing properties. Products containing propolis may be used as anti-infection agents, on account of their antibacterial, antiviral and antifungal properties, as anti-inflammatories, or as products that encourage the healing and cleansing of wounds when used for dermatological purposes (see, to that effect, judgment of 5 October 2020, SBS Bilimsel Bio Çözümler v EUIPO – Laboratorios Ern (apiheal), T‑53/19, not published, EU:T:2020:469, paragraph 52).
67 Even assuming, as contended by the applicant, that its product, ‘propolis in alcohol solution, drops’ does not contain any ingredient with medicinal properties, it cannot be regarded as a product intended for use as a food, in the light of the considerations set out in paragraph 61 above. In fact, in so far as the applicant itself describes that product (a product that does not contain pure propolis but results from processing) as a food supplement (see Annex C.3 to the application), it rather constitutes a ‘dietary supplement’ within Class 5 than a foodstuff in Class 30. Furthermore, the applicant recommends propolis (see Annex A.10 submitted before the Cancellation Division) for preventing and healing inflammation of the mucus membrane and gums, and for treating throat infections.
68 As regards royal jelly, the applicant states that baby royal jelly and fresh royal jelly in its pure state are food products marketed in non-medicinal forms. However, the applicant confirms the finding made by the Board of Appeal that those goods are recommended for strengthening the immune system and it itself describes them as food supplements (see Annex C.3 to the application), which implies that they are goods falling within Class 5 rather than foods in Class 30 (see paragraph 61 above). In fact, the applicant acknowledges that the properties and functions of those goods may have the effect of placing them in Class 5 (see paragraph 83 of the application).
69 In so far as the applicant argues that the goods in question may fall in both Classes 5 and 30, it should be observed that, as stated in paragraph 37 above, the principle is that goods are to be classified in one class. The applicant has not succeeded in establishing an exception to that rule in relation to the goods at issue, having regard to their having multiple uses and particular characteristics.
70 Consequently, it has not been demonstrated that the Board of Appeal erred in its assessment in finding that there was no proof of use of the contested EU trade mark in respect of the goods ‘propolis for human consumption’ and ‘royal jelly for human consumption’ in Class 30.
71 It follows from the foregoing that the third part of the second plea is unfounded and that, therefore, the second plea must be rejected in its entirety.
72 It follows from all the foregoing that the action must be dismissed.
Costs
73 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. Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event of a summons to an oral hearing. Since no hearing was held, it is appropriate to decide to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders each party to bear its own costs.
Kowalik-Bańczyk | Hesse | Dimitrakopoulos |
Delivered in open court in Luxembourg on 7 June 2023.
V. Di Bucci | | M. van der Woude |