JUDGMENT OF THE GENERAL COURT (Third Chamber)
15 May 2024 (*)
(EU trade mark – Invalidity proceedings – EU word mark JUVÉDERM – Absolute ground for invalidity – No bad faith – Article 51(1)(b) of Regulation (EC) No 40/94 (now Article 59(1)(b) of Regulation (EU) 2017/1001))
In Case T‑181/23,
Dermavita Company S.a.r.l., established in Beirut (Lebanon), represented by D. Todorov, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
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 T. de Haan and S. Vandezande, lawyers, and by J. Day, Solicitor,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, I. Nõmm (Rapporteur) and D. Kukovec, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 16 January 2024,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Dermavita Company S.a.r.l., seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 February 2023 (Case R 904/2022-4) (‘the contested decision’).
Background to the dispute
2 On 29 December 2020, the applicant filed an application for a declaration of invalidity with EUIPO in respect of the EU trade mark which had been registered following an application filed on 3 April 2007 by the intervener’s predecessor in law in respect of the word sign JUVÉDERM.
3 The goods covered by the contested mark in respect of which a declaration of invalidity was sought are in Class 5 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: ‘Pharmaceutical products administered by injection for use in moisturising skin and reducing wrinkles’.
4 The ground relied on in support of the application for a declaration of invalidity was that set out in Article 59(1)(b) 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).
5 On 29 March 2022, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
6 On 23 May 2022, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
7 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the intervener had not acted in bad faith at the time when the contested mark was filed. According to the Board of Appeal, the intervener’s honest business intentions were shown by the intensive use of that mark since 2000 in many jurisdictions throughout the world, by the French infringement proceedings brought by the intervener and by the multiple registrations of the sign JUVEDERM as a trade mark, which indicated the normal development of the intervener’s expansion on the market and the commercial rationale underlying the filing of its trade marks, including the contested mark. Furthermore it found that, although prior use of that sign had been attributed to the applicant in Lebanon, it was not apparent from the evidence provided that the intervener’s predecessor in law knew of such prior use and that, in any event, that alleged knowledge was not sufficient in itself to permit the conclusion that the intervener was acting in bad faith when it filed the contested mark in 2007.
Forms of order sought
8 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs incurred by the applicant at every stage of the ‘action for invalidation’, including those incurred before EUIPO and the Court.
9 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
10 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to bear its own costs and to pay the costs incurred by the intervener.
Law
11 The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 94(1) of Regulation 2017/1001 and of the principle of impartiality and, secondly, infringement of Article 51(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1).
12 It must be pointed out at the outset that, given the date on which the application for registration at issue was filed, namely 3 April 2007, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see order of 16 September 2021, H&H v EUIPO – Giuliani (Swisse), T‑486/20, not published, EU:T:2021:619, paragraph 17 and the case-law cited). Consequently, the applicant’s references to Article 59(1)(b) of Regulation 2017/1001 must be understood as referring to Article 51(1)(b) of Regulation No 40/94, the wording of which is substantively identical in Regulation 2017/1001 (see, to that effect, judgment of 16 June 2021, Health Product Group v EUIPO – Bioline Pharmaceutical (Enterosgel), T‑678/19, not published, EU:T:2021:364, paragraph 26).
13 Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.
14 It is appropriate to begin the examination of the present case by analysing the second plea.
The second plea, alleging infringement of Article 51(1)(b) of Regulation No 40/94
15 In essence, the applicant complains that the Board of Appeal did not correctly assess all the relevant facts and evidence in the case which would have made it possible to prove bad faith on the part of the intervener for the purposes of Article 51(1)(b) of Regulation No 40/94.
16 In particular, the applicant submits, first, that the contested mark was not created by the intervener, given that precedence of use of the word sign JUVEDERM had been recognised in the applicant’s favour, secondly, that, in view of the coexistence between its mark and those of the intervener’s predecessors in law on the Lebanese market from 2004 to 2007, the intervener knew of the applicant’s use of the sign at issue, thirdly, that the first French national word mark JUVEDERM No 3061345 was also filed in bad faith by the intervener’s predecessors in law and, fourthly, that the intervener engaged in an unacceptable business practice by registering numerous new trade marks with the aim of circumventing the legal consequences of judicial decisions which were not in its favour.
17 EUIPO and the intervener dispute the applicant’s arguments.
18 Article 51(1)(b) of Regulation No 40/94 provides that an EU trade mark is to be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he filed the application for the trade mark.
19 It must be noted that the concept of bad faith referred to in Article 51(1)(b) of Regulation No 40/94 is not defined, delimited or even described in any way in the legislation (see, to that effect, judgment of 28 April 2021, France Agro v EUIPO – Chafay (Choumicha Saveurs), T‑311/20, not published, EU:T:2021:219, paragraph 21 and the case-law cited).
20 In interpreting the concept of bad faith, the Court of Justice has had occasion to state that, while, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must also be understood in the context of trade mark law, which is that of the course of trade. In that regard, Regulation No 40/94, Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) and Regulation 2017/1001, which were adopted successively, have the same objective, namely the establishment and functioning of the internal market. The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers through the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see judgments of 28 April 2021, Choumicha Saveurs, T‑311/20, not published, EU:T:2021:219, paragraph 22 and the case-law cited, and of 13 July 2022, Gugler France v EUIPO – Gugler (GUGLER), T‑147/21, not published, EU:T:2022:444, paragraph 22 and the case-law cited).
21 Consequently, the absolute ground for invalidity set out in Article 51(1)(b) of Regulation No 40/94 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark (see judgment of 13 July 2022, GUGLER, T‑147/21, not published, EU:T:2022:444, paragraph 23 and the case-law cited).
22 The intention of an applicant for a trade mark is a subjective factor which must, however, be determined objectively by the competent administrative and judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case. It is only in that manner that a claim of bad faith can be assessed objectively (see judgment of 13 July 2022, GUGLER, T‑147/21, not published, EU:T:2022:444, paragraph 24 and the case-law cited).
23 To that end, it is necessary to take into consideration, in particular, (i) the fact that the trade mark applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product or service capable of being confused with the sign for which registration is sought; (ii) the trade mark applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought (see judgment of 25 January 2023, Zielonogórski Klub Żużlowy Sportowa v EUIPO – Falubaz Polska (FALUBAZ), T‑703/21, not published, EU:T:2023:19, paragraph 61 and the case-law cited).
24 However, the factors listed in the preceding paragraph are only examples drawn from a number of factors which can be taken into account in order to decide whether an applicant for registration was acting in bad faith at the time when he or she filed the application for the trade mark (see judgment of 25 January 2023, FALUBAZ, T‑703/21, not published, EU:T:2023:19, paragraph 62 and the case-law cited). Accordingly, it must be held that, in the context of the overall analysis undertaken pursuant to Article 51(1)(b) of Regulation No 40/94, account may also be taken of the origin of the contested sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing (see judgment of 13 July 2022, GUGLER, T‑147/21, not published, EU:T:2022:444, paragraph 25 and the case-law cited).
25 Lastly, it is for the applicant for a declaration of invalidity who intends to rely on Article 51(1)(b) of Regulation No 40/94 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark applicant being presumed until proven otherwise (see judgment of 13 July 2022, GUGLER, T‑147/21, not published, EU:T:2022:444, paragraph 26 and the case-law cited).
26 It is in the light of the foregoing considerations that it must be examined whether the intervener was acting in bad faith when it filed the application for the trade mark.
The intervener’s alleged knowledge of the applicant’s prior use of the sign at issue
27 In paragraphs 36 to 39 of the contested decision, the Board of Appeal acknowledged that prior use of the sign JUVEDERM in Lebanon had been attributed to the applicant by the decision of 23 June 2011 of the First Instance Court, Beirut, and by decision No 169 of 29 January 2015 of the Civil Court of Appeal, Beirut, which latter court had held that the first invoice regarding ‘Juvederm’ products had been issued by the applicant’s predecessors in law on 22 November 1999, whereas the intervener’s predecessors in law had authorised a person to start marketing the ‘Juvederm’ products in Lebanon on 15 March 2001, and had therefore attributed precedence of use of the sign JUVEDERM in Lebanon to the applicant.
28 In that regard, the applicant claims that the intervener’s predecessors in law, and thus the intervener itself, knew of the prior use of the sign JUVEDERM in Lebanon, which serves to prove, first, the intervener’s bad faith as from the registration of the first French national word mark JUVEDERM No 3061345, which was filed on 30 October 2000, and, subsequently, the intervener’s bad faith when it filed the contested mark on 3 April 2007.
29 The applicant submits that that knowledge can be established by the following circumstances: first, the precedence of use of the sign JUVEDERM in Lebanon was recognised in favour of the applicant by the decisions referred to in paragraph 27 above; secondly, the lack of any plausible explanation as to how the intervener’s predecessor in law invented the term ‘juvederm’, which does not exist in any language, approximately one year after the applicant began to use the sign JUVEDERM; and, thirdly, a letter of 21 April 2000 requesting that the sign JUVEDERM cease to be used, which it sent to an intermediary of the intervener’s predecessor in law.
30 First, as regards the decisions referred to in paragraph 27 above, it is necessary to uphold the Board of Appeal’s assessment that it cannot be deduced from the translations of those decisions that the intervener knew of the applicant’s prior use of the sign JUVEDERM. Although those decisions confirmed that the applicant had been using the sign at issue in Lebanon since 1999, it is not apparent from those translations that the Lebanese courts assessed the question of whether the intervener actually knew of such use, since the mere use of a sign does not make it possible to conclude that third parties automatically know of that use.
31 Furthermore, it is apparent from the translation of decision No 169 of 29 January 2015 of the Civil Court of Appeal, Beirut, that the applicant began to use the sign at issue a relatively short time before the intervener did, since the first invoice provided by the applicant is dated 22 November 1999, that is to say, less than a year before the intervener filed its first French national word mark JUVEDERM No 3061345, which was filed on 30 October 2000.
32 Secondly, as regards the creation of the sign JUVEDERM, as is apparent from decision No 169 of 29 January 2015 of the Civil Court of Appeal, Beirut, the applicant chose the sign JUVEDERM in the light of the nature of the goods that it was marketing. Moreover, the applicant stated that the term ‘derm’ derived from the English word ‘dermatology’ (‘dermatologie’ in French) and that the term ‘juve’ derived from the English word ‘juvenile’ (‘juvénile’ in French), which meant youth or young age, and that that sign referred to the freshness of the skin. Furthermore, it stated that those terms were related to the nature of the products and their purpose of use and that any fast search on the web for cosmetic skin care products would make hundreds and thousands of names including the same or similar terms appear.
33 In that regard, it must be stated that the term ‘derm’, which is derived from the word ‘dermatology’, is descriptive of ‘pharmaceutical products administered by injection for use in moisturising skin and reducing wrinkles’ in Class 5, since those products are intended for skin care (see, to that effect and by analogy, judgment of 21 February 2013, Laboratoire Bioderma v OHIM – Cabinet Continental (BIODERMA), T‑427/11, not published, EU:T:2013:92, paragraphs 44 and 51). As regards the term ‘juve’, it is derived from the word ‘juvenile’, which also has a connection with those goods at issue, the purpose of which is to reduce wrinkles in order to give a more youthful appearance. The terms ‘juve’ and ‘derm’ are therefore, to a certain extent, descriptive of the nature or purpose of the goods at issue. Furthermore, in the light of the fact that, as the applicant has itself suggested and as is apparent from the decision cited in paragraph 32 above, those terms are widespread on the market in order to designate products intended for skin care, the intervener’s choice of those terms ought to be even less surprising. Consequently, the use of those terms together cannot prove that the intervener actually knew of the applicant’s prior use of the sign at issue.
34 Thirdly, as regards the letter of 21 April 2000 requesting the cessation of use of the sign JUVEDERM, which was sent by the applicant to an intermediary of the intervener’s predecessor in law, it must be stated that, first, the applicant has not provided any evidence as regards whether that letter was actually received, as that intermediary was absent at the time when it was delivered and the letter was received by the concierge on 24 April 2000. Secondly, the alleged relationship between that intermediary and the intervener’s predecessor in law at that time has not in any way been proved, in view of the fact that it was only on 15 March 2001 that the contract authorising that intermediary to introduce and market the ‘Juvederm’ products in Lebanon was concluded between them.
35 In the light of the foregoing, it must be held that it has not been proved that the intervener knew of the applicant’s prior use of the sign JUVEDERM in Lebanon from the time when the first French national word mark JUVEDERM No 3061345 was filed in 2001 and that the intervener also knew of that prior use when it filed all the other JUVÉDERM marks, including the contested mark.
36 Furthermore, the applicant submits that the intervener knew of the applicant’s use of the sign JUVEDERM when it filed the contested mark, given that, on the one hand, both companies were present in Lebanon from 2004 to 2007 and, on the other hand, on 23 August 2004, it sent a letter requesting the cessation of use of the sign JUVEDERM to A and to the company B, which was owned and managed by A, as well as to LEADERM, the intervener’s predecessor in law.
37 In that regard, first, it must be stated that the applicant has not provided any evidence as regards whether its letter of 23 August 2004 was actually received by the addressees, as they were not there when that letter was delivered and it was left with an employee who refused to accept it, sign it and identify himself. Secondly, it must be pointed out that the applicant has not explained or substantiated by means of other evidence how the presence of both companies in Lebanon from 2004 to 2007 could prove that the intervener knew of the applicant’s use of the sign JUVEDERM when it filed the contested mark.
38 In the present case, it cannot therefore be deduced from the applicant’s letter of 23 August 2004 and from the mere presence of both companies in Lebanon from 2004 to 2007 that the intervener actually knew of the applicant’s use of the sign JUVEDERM when it filed the contested mark.
39 In any event, prior use of the sign at issue by a third party is not a condition laid down by Article 51(1)(b) of Regulation No 40/94. Consequently, the question of whether the intervener had or ought to have had knowledge of such use is only one relevant factor among others to be taken into consideration and is not sufficient, on its own, to establish that there was bad faith on the part of the intervener (see, to that effect, judgments of 28 October 2020, Target Ventures Group v EUIPO – Target Partners (TARGET VENTURES), T‑273/19, EU:T:2020:510, paragraph 30 and the case-law cited, and of 13 September 2023, mataharispaclub v EUIPO – Rouha (SpaClubMatahari), T‑552/22, not published, EU:T:2023:544, paragraph 45 and the case-law cited).
40 In view of the foregoing, the complaints relating to the intervener’s actual knowledge of the applicant’s prior use of the sign must be rejected as unfounded.
The intervener’s alleged dishonest business intentions
41 The applicant claims that the intervener was engaged in dishonest business practices, given that, first, it was only after the registration of the Lebanese national word mark No 110205 by the applicant, which was filed on 14 March 2007, that the intervener filed the contested mark and the Lebanese national word mark No 111139, secondly, the intervener registered a number of trade marks with the aim of circumventing the direct negative legal consequences which the judicial decisions delivered in Lebanon had for it, and, thirdly, the intervener filed a number of trade marks while the judicial proceedings between the parties were ongoing.
42 As regards the chronology of the filing of the applicant’s Lebanese national word mark No 110205, the contested mark and the intervener’s Lebanese national word mark No 111139, it must be stated that, at the time when the contested mark was filed, namely on 3 April 2007, the intervener was already the proprietor of numerous JUVEDERM trade marks, including the French national word mark JUVEDERM No 3061345 and the international word mark JUVEDERM No 810018 covering a number of Member States of the European Union, which explains the intervener’s legitimate interest in protecting its own marks and in also owning the EU trade mark at issue. Furthermore, the intervener also had a legitimate interest in the Lebanese market, since it had been marketing its goods in Lebanon since 2001. Consequently, the Board of Appeal was right in finding that the registration of the subsequent trade marks indicated the normal development of the intervener’s expansion on the market and the commercial logic underlying the filing of its marks, including the contested mark.
43 As regards the intervener’s alleged dishonest intentions in that it filed other JUVÉDERM marks after the beginning of, or during, the judicial proceedings between the applicant and the intervener, it must be pointed out that, first, the applicant refers generally to all the marks registered by the intervener after the beginning of, or during, the judicial proceedings in question, referring to more than 40 marks or sub-brands, without distinguishing between the intentions underlying those registrations. Secondly, it must be borne in mind that, in accordance with the case-law cited in paragraph 25 above, it is for the applicant to prove the circumstances which make it possible to conclude that the contested mark was filed in bad faith.
44 In the present case, it must be stated that the applicant has not adduced any evidence which makes it possible to conclude that all those registrations do not form part of the normal development of the intervener’s expansion on the market, but were made with the aim of circumventing the legal consequences of the judicial decisions delivered in Lebanon. It cannot therefore be held that the intervener’s intention was dishonest.
45 In the light of the foregoing, the complaints relating to the intervener’s alleged dishonest business intentions must be rejected as unfounded and, consequently, the present plea must be rejected as unfounded in its entirety.
The first plea, alleging infringement of Article 94(1) of Regulation 2017/1001 and infringement of the principle of impartiality
46 The first plea is divided into three parts. The first concerns the alleged lack of examination in the reasons for the contested decision of arguments submitted by the applicant. The second relates to evidence on which the parties concerned did not have the opportunity to comment in the context of the administrative proceedings. The third concerns the Board of Appeal’s alleged lack of impartiality, in so far as the applicant submits that the considerations set out in paragraphs 75, 76, 78, 84 and 90 of the contested decision have no factual basis or are not substantiated by evidence.
47 EUIPO and the intervener dispute the applicant’s arguments.
48 It must be stated at the outset that, although the applicant relies on Article 95(1), Article 97(1) and Article 107 of Regulation 2017/1001 in support of the abovementioned complaints, the fact remains that those complaints relate, in essence, to the infringement of Article 94(1) of that regulation and of the principle of impartiality.
49 As regards the first part, it must be borne in mind that the first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation has the same scope as that under the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning of the author of the act, without it being necessary for that reasoning to address all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, 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 (see judgment of 28 June 2018, EUIPO v PUMA, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
50 In the present case, the applicant complains, in essence, that the Board of Appeal did not take into account most of the events which occurred during the period from 1999 to 2007 and the applicant’s arguments relating to that period.
51 In that regard, it is sufficient to state that the adjudicating bodies of EUIPO are not obliged to express a view on every argument submitted by the parties. It is sufficient for them to set out the facts and the legal considerations having decisive importance in the context of the decision (see judgment of 25 October 2023, Contorno Textil v EUIPO – Harmont & Blaine (GILBERT TECKEL), T‑773/22, not published, EU:T:2023:674, paragraph 51 and the case-law cited).
52 Furthermore, it is clear from the contested decision that the Board of Appeal duly stated the reasons for its decision in paragraphs 55 to 70 and 80 to 90, by also referring to the events which occurred during the years 1999 to 2007.
53 Consequently, the present part must be rejected.
54 In the context of the second part, the applicant complains that the Board of Appeal drew some conclusions from evidence, namely the evidence referred to by that Board of Appeal in paragraphs 58 and 59 of the contested decision, on which the parties concerned did not have an opportunity to present their comments and in which that Board of Appeal had stated that the intervener and its legal predecessors had used the sign JUVEDERM intensively, which was apparent from the evidence provided during the various revocation proceedings for non-use regarding the mark JUVEDERM or its sub-brands, which the applicant had brought against the intervener.
55 In that regard, it must be borne in mind that the second sentence of Article 94(1) of Regulation No 2017/1001 provides that decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity present their comments.
56 In the present case, first, it must be pointed out, as observed by EUIPO and the intervener, that the alleged ‘evidence’ referred to in paragraphs 58 and 59 of the contested decision consists, in actual fact, of references to the operative parts and reasoning stemming from the judicial and administrative proceedings before the Courts of the European Union and before EUIPO, to which the applicant was a party. What is involved are therefore case-law and decision-making practices which are known to the applicant and to which the Board of Appeal could refer in the contested decision without first seeking the applicant’s view.
57 Secondly, it must be stated that, in the light of the principles of equal treatment and sound administration, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. The same case-law states that the way in which those principles are applied must nevertheless be consistent with respect for the principle of legality (see judgment of 19 September 2019, Showroom v EUIPO – E-Gab (SHOWROOM), T‑679/18, not published, EU:T:2019:631, paragraph 98 and the case-law cited).
58 It is true that the proceedings referred to in paragraph 59 of the contested decision, which all concern revocation proceedings for non-use, are of a different nature from that of bad faith. However, in the light of the case-law cited in paragraph 24 above, it must be pointed out that the concept of bad faith, within the meaning of Article 51(1)(b) of Regulation No 40/94, cannot be confined to a limited category of specific circumstances. The public interest objective of that provision, which is that of preventing trade mark registrations that are abusive or contrary to honest commercial and business practices, would be compromised if bad faith could be established only in exhaustively listed circumstances (see judgment of 21 April 2021, Hasbro v EUIPO – Kreativni Dogadaji (MONOPOLY), T‑663/19, EU:T:2021:211, paragraph 37 and the case-law cited). Consequently, it cannot be ruled out that the proceedings relating to non-use of the contested mark or its sub-brands may contribute towards showing whether the intentions of the proprietor of the contested mark are honest or dishonest, since the actual use of the mark could serve to prove the trade mark proprietor’s intention of engaging fairly in competition.
59 In any event, as is apparent from paragraphs 57 to 70 of the contested decision, those previous decisions are not the only items of evidence on which the Board of Appeal relied in order to demonstrate the intervener’s honest business intentions, with the result that they cannot cast doubt on the Board of Appeal’s finding in that regard.
60 In view of the foregoing, the present part must be rejected.
61 As regards the third part, it must be stated that, as regards the Board of Appeal’s assessments in paragraphs 75, 76 and 78 of the contested decision, the applicant does not put forward any argument explaining how those paragraphs are an indication of an infringement of the principle of impartiality or how an infringement of that principle would be capable of affecting the legality of the contested decision. Furthermore, the fact that that Board of Appeal queried the applicant’s conduct in the light of its interactions with the intervener in order to determine whether the intervener had acted in bad faith does not in any way indicate that that Board of Appeal failed to comply with its duty of impartiality. On the contrary, that shows that the Board of Appeal in question carried out a comprehensive examination in a manner consistent with the case-law cited in paragraph 22 above, according to which bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case. The applicant’s conduct may indeed constitute a relevant fact even though the application for a declaration of invalidity on the ground of bad faith is not directed against the applicant.
62 As regards paragraph 84 of the contested decision, which relates to the interpretation of the decisions which have been referred to in paragraph 27 above, the applicant disputes the Board of Appeal’s assessment that it is apparent from those decisions that the applicant’s prior use of the sign JUVEDERM was minimal and that it appeared to be a difficult exercise for the applicant to finally establish and prove that minimal use. The applicant complains that the Board of Appeal did not mention the part of those decisions from which that assessment stems.
63 In that regard, it must be pointed out that it is not clear from the contested decision from which precise part of the decisions referred to in paragraph 27 above the Board of Appeal’s assessment that the applicant’s prior use of the sign at issue was minimal stems. However, that is not sufficient, on its own, to show that the Board of Appeal failed to comply with its duty of impartiality.
64 As regards paragraph 90 of the contested decision, which concerns the belated evidence which was not allowed by the Board of Appeal, it must be borne in mind that Article 95(2) of Regulation 2017/1001 provides that EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’. It follows that the fact that a party has submitted facts or evidence out of time does not confer on it an unconditional right to have those facts or that evidence taken into consideration by EUIPO. In stating that EUIPO ‘may’ decide to disregard such evidence, that provision grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take it into account (see judgment of 12 July 2023, Trus v EUIPO – Unilab (ARTRESAN), T‑585/22, not published, EU:T:2023:392, paragraph 39 and the case-law cited). Consequently, the refusal to allow the belated evidence, for which reasons were duly stated in that paragraph, cannot indicate any partiality on the part of the Board of Appeal.
65 In the light of the foregoing, the present part of the plea and the first plea must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
66 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.
67 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 Dermavita Company S.a.r.l. to pay the costs.
Delivered in open court in Luxembourg on 15 May 2024.
V. Di Bucci | | M. van der Woude |