Case T‑346/21
(Publication in extract form)
Hecht Pharma GmbH
v
European Union Intellectual Property Office (EUIPO)
Judgment of the General Court (Fifth Chamber), 11 January 2023
(EU trade mark – Revocation proceedings – EU word mark Gufic – Genuine use of the mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Public and outward use – Extent of use – Nature and form of use – Use in connection with the goods in respect of which the mark was registered)
1. EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Proof of use – Genuine use – Meaning – Criteria for assessment – Requirement of solid and objective evidence
(European Parliament and Council Regulation 2017/1001, Arts 18(1)(a) and 58(1)(a))
(see paragraphs 22-24, 41, 54, 60, 61)
2. EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Use of the mark in a form differing in elements which do not alter the distinctive character of the mark – Subject matter and scope of Article 18(1)(a) of Regulation 2017/1001 – Examination of alteration of distinctive character
(European Parliament and Council Regulation 2017/1001, Arts 18(1)(a) and 58(1)(a))
(see paragraphs 62-64)
3. EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Proof of use – Genuine use – Meaning – Criteria for assessment – Company name, commercial name or trade name
(European Parliament and Council Regulation 2017/1001, Arts 18(1)(a) and 58(1)(a))
(see paragraphs 71, 72)
4. EU trade mark – Lodging of application for EU trade mark – Identification of the goods or services concerned by the trade mark – Use of the general indications in the headings of the classes of the Nice classification – Scope
(Commission Regulation 2868/95, Art 1, Rule 2(4))
(see paragraph 94)
5. EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Use in connection with the goods in respect of which the contested mark was registered – Relevant public’s perception of those goods – Word mark Gufic
(European Parliament and Council Regulation 2017/1001, Arts 18(1)(a) and 58(1)(a))
(see paragraphs 95-108)
Résumé
Gufic BioSciences Ltd is the proprietor of the EU word mark Gufic registered in Classes 3, 5 and 29 in respect of cosmeceuticals, medicines and medical products and in respect of food supplements.(1)
On 9 October 2017, Hecht Pharma GmbH filed an application for revocation of the mark for all the goods with the European Union Intellectual Property Office (EUIPO).(2) The Cancellation Division revoked the mark in its entirety, on the ground that extent of use had not been demonstrated sufficiently.
The Board of Appeal of EUIPO upheld the appeal against the Cancellation Division’s decision in part in relation to ‘medicines’ in Class 5 and revoked the contested mark for the remaining goods in Classes 3, 5 and 29.
The applicant brought an action against that decision before the General Court; the Court dismisses that action and provides details on the classification of the goods, in the present case ‘medicines’, in relation to their classification under the Nice Agreement, in the light of trade mark law and, more specifically, the case-law of the Court of Justice and the General Court in Dermavita. (3)
Findings of the Court
First of all, the General Court recalls that the classification of goods and services under the Nice Agreement is, in essence, designed to reflect the needs of the market and not to impose an artificial segmentation of the goods. Consequently, the class headings contain ‘general indications’ relating to the sector within which the goods or services ‘in principle’ fall. Likewise, that classification is intended to serve exclusively administrative purposes. Furthermore, the Nice Classification cannot determine, in itself, the nature and characteristics of the goods at issue.
Moreover, the classification of goods according to other rules of EU law, such as the Community Code relating to medicinal products for human use, (4) is, in principle, not decisive in respect of their classification for the purposes of the registration of an EU trade mark. First, goods and services are to be classified according to the Nice Classification. Second, although the EU legislative measures referred to by the applicant are of primary importance for the sector concerned, 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.
Next, the Court emphasises that for the purposes of assessing genuine use of the contested mark, it is necessary to ask whether the goods in connection with which the mark is used are the same as the goods in respect of which the mark was registered in Class 5. Likewise, the relevant public’s perception of the goods in respect of which the contested mark was registered is decisive.
However, the fact that a product is only dispensed in a pharmacy upon presentation of a medical prescription is a relevant factor to be taken into account for the purposes of defining goods as medicines.
Consequently, in view of the importance of visual appearance in the relevant public’s perception of the goods in question, and taking into account, as a whole, the fact that those goods were sold only in pharmacies upon presentation of a medical prescription and that the particulars and information on the packaging allowed the relevant public to easily perceive the goods as medicinal products, it is reasonable to conclude that those goods had to be classified as medicines within the meaning of Class 5.
Finally, the Court makes it clear that goods which, due to their presentation, are likely to be perceived by consumers as medicinal products are also likely to be classified as medicines within the meaning of Class 5, in the same way as medicinal products by function which have a pharmacological action. Moreover, the absence of marketing authorisation for the goods in question, that is, a fact of which consumers are not necessarily aware, is not capable of calling into question the finding that the relevant public will be able easily to perceive those goods as medicines.