JUDGMENT OF THE COURT (Fourth Chamber)
3 July 2019 (*)
(Appeal – EU trade mark – Revocation proceedings – Word mark Boswelan – Genuine use – Absence – Use of the mark in the context of a clinical trial prior to the submission of an application for marketing authorisation for a medicinal product – Proper reason for non-use – Concept)
In Case C‑668/17 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 28 November 2017,
Viridis Pharmaceutical Ltd, established in Tortola, British Virgin Islands (United Kingdom), represented by C. Spintig, S. Pietzcker and M. Prasse, Rechtsanwälte,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO), represented by S. Hanne, acting as Agent,
defendant at first instance,
Hecht-Pharma GmbH, established in Hollnseth (Germany), represented by J. Sachs and C. Sachs, Rechtsanwälte,
intervener at first instance,
THE COURT (Fourth Chamber),
composed of M. Vilaras, President of the Chamber, K. Jürimäe (Rapporteur), D. Šváby, S. Rodin and N. Piçarra, Judges,
Advocate General: M. Szpunar,
Registrar: A. Calot Escobar,
having regard to the written procedure,
after hearing the Opinion of the Advocate General at the sitting on 9 January 2019,
gives the following
Judgment
1 By its appeal, Viridis Pharmaceutical Ltd (‘Viridis’) asks the Court to set aside the judgment of the General Court of the European Union of 15 September 2017, Viridis Pharmaceutical v EUIPO – Hecht-Pharma (Boswelan) (T‑276/16, not published, EU:T:2017:611) (‘the judgment under appeal’), by which the General Court dismissed its action for annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 February 2016 (Case R 2837/2014-5) relating to revocation proceedings between Hecht-Pharma GmbH and Viridis (‘the decision at issue’).
Legal context
International law
2 The Agreement on Trade-Related Aspects of Intellectual Property Rights, contained in Annex 1C to the Marrakesh Agreement Establishing the World Trade Organisation, was approved on behalf of the European Community by Council Decision 94/800/EC of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1) (‘the TRIPS Agreement’). Article 19(1) of that agreement states the following in relation to the requirement to use the registered trade mark:
‘If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. Circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognised as valid reasons for non-use.’
EU law
3 Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union trade mark] (OJ 2009 L 78, p. 1) was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), which entered into force on 23 March 2016. It was subsequently repealed and replaced, with effect from 1 October 2017, 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). However, given the date on which the application for revocation at issue was filed, namely 18 November 2013, which is decisive for the purposes of identifying the substantive law applicable, the present dispute is governed by the substantive provisions of Regulation No 207/2009.
4 Recital 10 of Regulation No 207/2009 reads as follows:
‘There is no justification for protecting [EU] trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used.’
5 Article 15 of Regulation No 207/2009, which is entitled ‘Use of [EU] trade marks’, provides in paragraph 1:
‘If, within a period of five years following registration, the proprietor has not put the [EU] trade mark to genuine use in the [Union] in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the [EU] trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.
The following shall also constitute use within the meaning of the first subparagraph:
(a) use of the [EU] trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;
…’
6 Article 51 of Regulation No 207/2009, which is entitled ‘Grounds for revocation’, provides in paragraph 1:
‘The rights of the proprietor of the [EU] trade mark shall be declared to be revoked on application to [EUIPO] or on the basis of a counterclaim in infringement proceedings:
(a) 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; however, no person may claim that the proprietor’s rights in [an EU] trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;
…’
7 Recital 24, Article 18 and Article 58 of Regulation 2017/1001 correspond, respectively, to recital 10, Article 15 and Article 51 of Regulation No 207/2009.
8 Recital 25 of Regulation 2017/1001, which has no equivalent in Regulation No 207/2009, reads as follows:
‘For reasons of equity and legal certainty, the use of an EU trade mark in a form that differs in elements which do not alter the distinctive character of that mark in the form in which it is registered should be sufficient to preserve the rights conferred regardless of whether the trade mark in the form as used is also registered.’
Background to the dispute
9 The background to the dispute and the essential elements of the decision at issue, as set out in paragraphs 1 to 11 of the judgment under appeal, may be summarised as follows for the purposes of the present case.
10 On 30 September 2003, Pharmasan GmbH Freiburg, the predecessor in title to Viridis, filed an application with EUIPO for registration of the word sign ‘Boswelan’ as an EU trade mark in respect of ‘pharmaceutical products and health-care products’ 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.
11 That application was published in Community Trade Marks Bulletin No 31/2004 of 2 August 2004 and the mark (‘the contested mark’) was registered on 24 April 2007.
12 On 18 November 2013, Hecht-Pharma filed an application on the basis of Article 51(1)(a) of Regulation No 207/2009 for revocation of that mark in respect of all the goods for which it had been registered, on the ground that it had not been put to genuine use.
13 By a decision of 26 September 2014, the Cancellation Division of EUIPO revoked Viridis’s rights in respect of all the goods covered by the registration.
14 On 6 November 2014, Viridis filed a notice of appeal to the Board of Appeal of EUIPO under Articles 58 to 64 of Regulation No 207/2009 against the decision of the Cancellation Division.
15 By the decision at issue, the Fifth Board of Appeal of EUIPO (‘the Board of Appeal’) dismissed that appeal.
16 First, the Board of Appeal found that the evidence produced by Viridis was not capable of demonstrating genuine use of the contested mark within the European Union in respect of the goods covered by it over a continuous period of five years preceding the application for revocation. That evidence in fact related to acts which were purely internal in nature concerning a clinical trial. They took place significantly earlier than the marketing of the product and outside of competition. The acts in question were not outwardly directed, relating to the marketing or advertising of the goods at issue. Nor did they constitute a direct preparatory act or an act contributing to an imminent market launch.
17 Secondly, referring inter alia to the definition of a proper reason which follows from the wording of the TRIPS Agreement, the Board of Appeal found that, in the case in point, the conducting of a clinical trial was not on its own a reason independent of Viridis’s will which would justify non-use of the contested mark. The length of a clinical trial in fact depends on the financial resources which the proprietor of a trade mark decides to commit; that factor does not fall within the category of obstacles independent of the proprietor’s will. Responsibility for the duration of the procedure may be regarded as being transferred to an external authority only once an official marketing application has been filed. The protection afforded to EU trade marks by Regulation No 207/2009 does not appear necessary before such an official application is made and, if a pharmaceutical undertaking were nevertheless to decide to proceed with the registration of an EU trade mark many years prior to such an application, the delays to the clinical trial would fall within its responsibility.
The proceedings before the General Court and the judgment under appeal
18 By application lodged at the Registry of the General Court on 30 May 2016, Viridis brought an action for annulment of the decision at issue in so far as, by that decision, the Board of Appeal had dismissed its appeal against the decision of the Cancellation Division declaring its rights to be revoked in respect of medicinal products for the treatment of multiple sclerosis.
19 In support of its action, Viridis relied on three pleas in law. The first plea alleged infringement of Article 51(1)(a) of Regulation No 207/2009 in that the Board of Appeal had wrongly found that the facts and evidence adduced were not sufficient to demonstrate genuine use of the contested mark in respect of medicinal products for the treatment of multiple sclerosis. The second plea alleged infringement of the same provision in that the Board of Appeal had wrongly found the facts and evidence adduced were not sufficient to demonstrate a proper reason for non-use of that mark in respect of the same medicinal products. The third plea alleged infringement of Article 83 of Regulation No 207/2009 and, more specifically, of the principle of the protection of legitimate expectations.
20 The General Court rejected each of those pleas in law and, therefore, dismissed the action in its entirety.
Forms of order sought by the parties before the Court
21 By its appeal, Viridis claims that the Court should:
– set aside the judgment under appeal;
– refer the case back to the General Court; and
– order EUIPO to pay the costs or, in the alternative, reserve the costs.
22 EUIPO contends that the Court should:
– dismiss the appeal; and
– order Viridis to pay the costs.
23 Hecht-Pharma contends that the Court should:
– dismiss the appeal; and
– order Viridis to pay the costs.
The appeal
24 In support of its appeal, Viridis puts forward two grounds, alleging, first, infringement of Article 58(1)(a) of Regulation 2017/1001 in that the General Court wrongly found that there had been no genuine use of the contested mark and, second, infringement of the same provision in that the General Court wrongly found that there was no proper reason for non-use of that mark.
Preliminary observations
25 First, it should be observed that Viridis and Hecht-Pharma refer, in their pleadings, to the provisions of Regulation 2017/1001. However, since – as is clear from paragraphs 3 and 7 of the present judgment – Regulation No 207/2009 is applicable to the present case and Articles 18 and 58 of Regulation 2017/1001 correspond to Articles 15 and 51 of Regulation No 207/2009, the references made by the parties to the former articles must be understood as referring to the latter articles.
26 Second, as the Advocate General has observed in points 32 and 33 of his Opinion, the two grounds of appeal, alleging, in essence, infringements of Article 51(1)(a) of Regulation No 207/2009, raise questions of law relating to the interpretation of the concepts of ‘genuine use’ and ‘proper reason for non-use’ within the meaning of Regulation No 207/2009. Consequently, and contrary to Hecht-Pharma’s submissions, those grounds of appeal, which do not seek a fresh assessment of the facts and circumstances of the case, are admissible.
First ground of appeal
Arguments of the parties
27 By its first ground of appeal, Viridis alleges, in essence, that the General Court infringed Article 51(1)(a) of Regulation No 207/2009 because the assessment of the genuine use of the contested mark was vitiated by two errors of law.
28 In the first place, Viridis criticises paragraph 36 of the judgment under appeal, in which the General Court laid down the principle that a trade mark covering a medicinal product can be put to genuine use only where a marketing authorisation has been granted for that medicinal product.
29 According to Viridis, that principle is based on a restrictive interpretation of the concept of ‘genuine use’ which is not justified since the acts of use examined by the General Court in the present instance were not unlawful.
30 Viridis submits that that interpretation is also contrary to the case-law of the Court of Justice and of the General Court. According to that case-law, genuine use must be assessed on a case-by-case basis. Even minimal use and a sale to a single customer may be regarded as sufficient where those acts are commercially justified. Outward use does not mean that the use must necessarily be aimed at end consumers.
31 It follows that genuine use cannot be excluded on the ground that the product at issue can neither be marketed nor advertised to the public.
32 On the contrary, account must be taken of the interests of the pharmaceutical industry and it must be found that lawful acts of use of the mark, such as those carried out by Viridis when the clinical trial at issue was performed, may constitute genuine use where they appear sufficient in the context of the case-by-case assessment. The five-year period prescribed in Article 51(1)(a) of Regulation No 207/2009 is insufficient vis-à-vis the specific characteristics of the pharmaceutical industry, given the restricted circle of purchasers and the limited number of participants in clinical trials.
33 In the second place, Viridis disputes the finding by the General Court in the first sentence of paragraph 39 of the judgment under appeal that the use of the contested mark in the context of a clinical trial vis-à-vis third parties cannot be equated with placement on the market or even with a direct preparatory act because it falls within the scope of internal use.
34 According to Viridis, by holding that the use of a trade mark in the context of a clinical trial constitutes internal use and by ruling out the possibility of such use constituting genuine use, the General Court failed to have regard to the case-law in accordance with which there may be genuine use where marketing is in preparation and imminent. On the basis of that case-law, the view can be taken that use may be genuine even where it does not involve a significant number of addressees.
35 Viridis adds that the requirement that a registered trade mark must be used is not an end in itself and that that requirement of use is intended to prevent the register from being burdened with unused marks. The concept of ‘use’ must thus be interpreted with a degree of flexibility, as is shown by the fact that point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 and recital 25 of Regulation 2017/1001 allow the use of a trade mark in a different form from that in which it was registered.
36 EUIPO and, in the alternative, Hecht-Pharma dispute the merits of the first ground of appeal
Findings of the Court
37 By its first ground of appeal, Viridis submits that the General Court’s assessment of genuine use of the contested mark is vitiated by errors of law. According to Viridis, the General Court was wrong, first, in paragraph 36 of the judgment under appeal, to lay down the principle that use capable of maintaining rights in respect of a medicinal product can exist only where a marketing authorisation has been granted for that medicinal product and, second, in paragraph 39 of that judgment, to rule out the possibility of use of the trade mark in the context of a clinical trial constituting genuine use.
38 According to settled case-law, there is genuine use of a trade mark, within the meaning of Article 51(1)(a) of Regulation No 207/2009, 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 (judgments of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43, and of 8 June 2017, W. F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraph 37 and the case-law cited).
39 Genuine use of the mark thus entails use of the mark on the market for the goods and services protected by that mark and not just internal use by the undertaking concerned. Use of the mark must relate to goods or services already marketed or which are about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (see, to that effect, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
40 On the other hand, the affixing of a mark to goods which are not distributed in any way with the aim of penetrating the market for the goods covered by the registration of the mark cannot be classified as genuine use of that mark, since such affixing of a mark does not contribute to creating an outlet for the goods or to distinguishing, in the interest of the consumer, those goods from the goods of other undertakings (see, to that effect, judgment of 15 January 2009, Silberquelle, C‑495/07, EU:C:2009:10, paragraph 21).
41 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 use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares 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 (judgments of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43, and of 31 January 2019, Pandalis v EUIPO, C‑194/17 P, EU:C:2019:80, paragraph 83).
42 In the present instance, in paragraph 36 of the judgment under appeal the General Court stated that, on the basis of the evidence adduced by Viridis before EUIPO for the purposes of establishing the genuine use of the contested mark, as referred to in paragraph 35 of that judgment, it could be found that Viridis had undertaken preparatory acts, consisting in the implementation of a clinical trial procedure carried out with a view to submitting an application for marketing authorisation and including certain acts of a promotional nature in relation to that trial.
43 However, in paragraph 36, the General Court stated that ‘[that] mark could be put to outward public use only if a marketing authorisation were obtained from the competent authorities’, since the legislation on medicinal products prohibits advertising of medicinal products which have not yet been granted marketing authorisation and, therefore, any act of communication intended to obtain or preserve a market share.
44 In paragraphs 37 and 38 of the judgment under appeal, the General Court added that, although there may be genuine use before any marketing of the goods covered by a mark, this is the case only if the marketing is imminent. However, in the case in point, in the General Court’s view, Viridis had not shown that the marketing of a medicinal product covered by the contested mark that was intended for the treatment of multiple sclerosis was imminent, since it had failed to adduce evidence to support the finding that the clinical trial was about to conclude.
45 Lastly, in response to certain arguments put forward by Viridis, in paragraph 39 of the judgment under appeal the General Court assessed the specific circumstances of the use of the contested mark in the context of the clinical trial at issue and found, in essence, that that use fell within the scope of internal use and that it was not established that the scale of that internal use was significant in the pharmaceutical industry.
46 In the first place, it is thus apparent from the considerations set out by the General Court in the judgment under appeal that, in accordance with the case-law recalled in paragraphs 38 to 41 of the present judgment, the General Court carried out a specific assessment of all the facts and circumstances of the present case with a view to determining whether the acts of use relied on by Viridis could reflect use of the contested mark consistent with its function of indicating the origin of the goods covered and with its commercial raison d’être, namely to create or preserve an outlet for the goods in respect of which it had been registered.
47 With regard to Viridis’s argument that, in paragraph 36 of the judgment under appeal, the General Court laid down the principle that a trade mark registered for a medicinal product can be put to genuine use only where a marketing authorisation has been granted for that medicinal product, it should be noted that, as part of its specific assessment, the General Court simply drew the appropriate conclusions from its finding that, in accordance with the applicable legislation, a medicinal product for which marketing authorisation has not yet been granted cannot even form the subject of advertising intended to obtain or preserve a market share. It is therefore impossible to use a mark covering such a medicinal product on the market concerned, contrary to the requirement laid down in the case-law cited in paragraph 39 of the present judgment.
48 It should be added that the fact, assuming it to be established, that the acts of use relied on by Viridis were, as Viridis submits, consistent with the applicable legal requirements cannot be sufficient to establish the genuine nature, within the meaning of Article 51(1)(a) of Regulation No 207/2009, of that use, since such use is assessed, in specific terms, in the light of all the facts and circumstances of the case in question and cannot depend exclusively on the lawfulness of the acts of use. The present instance did not concern use on the market for the goods protected by the contested mark.
49 In so far as Viridis relies on the alleged insufficiency, in the case of the pharmaceutical industry, of the five-year period provided for in Article 51(1)(a) of Regulation No 207/2009, it should be observed, as the Advocate General has noted in point 45 of his Opinion, that that period applies regardless of the economic sector within which the goods or services for which the mark at issue is registered fall. This argument is therefore ineffective.
50 In the second place, in response to certain arguments put forward by Viridis, the General Court stated, in paragraph 39 of the judgment under appeal, to which reference is made in paragraph 45 of the present judgment, that the use of the contested mark in the context of a clinical trial could not be equated with placement on the market or even with a direct preparatory act, but was to be regarded as being internal in nature, since it had taken place outside of competition, within a restricted circle of participants, and without being designed to obtain or preserve market shares.
51 In so doing, the General Court did not disregard the case-law cited in paragraph 39 of the present judgment and relied on by Viridis stating that there may be genuine use of an EU trade mark when the goods covered are not yet being marketed. On the contrary, the General Court correctly observed, in paragraph 37 of the judgment under appeal, that a mark can be found to be put to such use only if the marketing of the goods at issue is imminent, and held, in paragraphs 38 and 39 of that judgment, that Viridis had not proved that that was the case here.
52 In particular, by examining whether the alleged use of the contested mark was made in relation to third parties and whether the volume of use was sufficiently significant in the light of the contingencies specific to the pharmaceutical industry, the General Court examined, in accordance with the case-law of the Court of Justice, whether that use was genuine.
53 In the light of the case-law cited in paragraphs 38 to 41 of the present judgment and as the Advocate General has observed, in essence, in points 57, 59 and 61 to 63 of his Opinion, the view should be taken that, inasmuch as the genuine use of an EU trade mark cannot be established by acts of use related to a stage prior to the marketing of the goods or services covered unless the marketing is imminent, the acts of use capable of establishing such genuine use must be external in nature and produce effects for the future public of those goods or services, even in such a pre-marketing phase.
54 Finally, contrary to Viridis’s submissions, a more flexible interpretation of the concept of ‘genuine use’ cannot be inferred from point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009.
55 Under that provision, use of the trade mark in a form which differs from the form in which it was registered is regarded as use within the meaning of the first subparagraph of Article 15(1) of Regulation No 207/2009 provided that the distinctive character of the mark in the form in which it was registered is not altered (judgment of 11 October 2017, EUIPO v Cactus, C‑501/15 P, EU:C:2017:750, paragraph 65).
56 Thus, in so far as it does not impose strict conformity between the form in which the trade mark is used and the form in which the mark was registered, the purpose of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 is to allow its proprietor, when it is commercially exploited, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (judgment of 11 October 2017, EUIPO v Cactus, C‑501/15 P, EU:C:2017:750, paragraph 66).
57 Whilst point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 thus introduces a degree of flexibility as to the form in which an EU trade mark is used, the fact remains that that provision does not have any effect at all on the assessment of the genuineness of that use, which must be carried out in accordance with the criteria established by the case-law recalled in paragraphs 38 to 41 of the present judgment.
58 It follows that the first ground of appeal must be rejected as being, in part, ineffective and, in part, unfounded.
Second ground of appeal
Arguments of the parties
59 By its second ground of appeal, Viridis submits, in essence, that the General Court infringed Article 51(1)(a) of Regulation No 207/2009 by ruling out the existence of a proper reason for non-use of the contested mark.
60 In essence, when assessing the justification for non-use, the General Court criticised it for having registered the contested mark prematurely. Accordingly, the General Court ruled out the possibility of justifying non-use in a situation in which the mark is used in the context of a clinical trial for the purposes of preparing an application for marketing authorisation under the legislation on pharmaceutical products where the application relating to that trial is submitted long after the registration of the mark or where the financial resources committed were insufficient to conclude the clinical trial as soon as possible.
61 In the first place, by stressing the passage of time, the General Court rendered the five-year period referred to in the first subparagraph of Article 15(1) and in Article 51(1)(a) of Regulation No 207/2009 meaningless. A medicinal product trade mark in relation to which that period is about to expire or has already expired becomes, de facto, unusable because non-use can be justified only if an application for marketing authorisation is submitted. The period of three months provided for at the end of Article 51(1)(a) of Regulation No 207/2009 is insufficient in that regard because it does not allow a clinical trial to be concluded.
62 In the second place, in so far as account is taken of the financial resources committed, the General Court’s argument means that financially strong undertakings will have greater opportunities of securing adequate protection under trade mark law for their investments than financially weaker undertakings. In any event, the General Court cannot take as a basis the abstract assumption that increased investment would have enabled the clinical trial at issue in the present instance to be conducted more quickly.
63 EUIPO and, in the alternative, Hecht-Pharma take the view that the second ground of appeal is unfounded.
Findings of the Court
64 By its second ground of appeal, Viridis submits, in essence, that the General Court infringed Article 51(1)(a) of Regulation No 207/2009 by finding that the performance of a clinical trial could not constitute a proper reason for non-use of the contested mark.
65 In that regard, it should be recalled that, pursuant to Article 51(1)(a) of Regulation No 207/2009, proper reasons for non-use may preclude the revocation of an EU trade mark for lack of genuine use in the circumstances laid down in that provision.
66 According to the case-law of the Court, only obstacles having a sufficiently direct relationship with a trade mark making its use impossible or unreasonable, and which arise independently of the will of the proprietor of that mark, may be described as ‘proper reasons’ for non-use of that mark. It must be assessed on a case-by-case basis whether a change in the strategy of the undertaking to circumvent the obstacle under consideration would make use of that mark unreasonable (judgments of 14 June 2007, Häupl, C‑246/05, EU:C:2007:340, paragraph 54, and of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 96).
67 In addition, it must be made clear that Article 19(1) of the TRIPS Agreement, to which the European Union is a party and account of which was taken by the Court in the case-law set out in the previous paragraph, cites, amongst the examples of valid reasons justifying non-use of a trade mark, government requirements for goods or services covered by that mark.
68 In the present instance, it was on the basis of that case-law, recalled in essence in paragraph 53 of the judgment under appeal, that the General Court held, in paragraph 61 of that judgment, that, although the performance of a clinical trial may constitute a reason for non-use of a trade mark, the acts and events to which Viridis refers in this instance and which were assessed by the General Court in paragraphs 55 to 60 of the judgment were within its field of influence and area of responsibility, so that they could not be regarded as being obstacles independent of its will.
69 In particular, it is clear, in essence, from paragraphs 55 to 60 of the judgment under appeal that, first, the General Court found that it was on account of its own choice, and not of a legal obligation, that Viridis applied for the registration of the contested mark as early as 2003, even though there was great uncertainty as to both the date and the possibility of the marketing of the product covered by that mark since that product was at the clinical trial stage. Secondly, the General Court took account of the fact that the alleged difficulties experienced in the course of the clinical trial at issue, the completion date of which moreover remained uncertain, related back to the insufficient investment committed by Viridis in the light of the specific characteristics of the industry concerned. Thirdly, the General Court observed that Viridis’s application to conduct a clinical trial was made more than three years after the contested mark was registered.
70 Thus, contrary to what Viridis suggests in the context of the present appeal, the General Court by no means ruled out the possibility of a clinical trial being capable of constituting a proper reason for non-use of a mark. On the contrary, the General Court applied the case-law of the Court of Justice cited in paragraph 66 of the present judgment in conducting a specific assessment of the facts alleged before it.
71 Nor did the General Court err in law where it found that the passage of time between, on the one hand, the dates of the application for and registration of the contested mark and, on the other, the date on which the clinical trial was launched, as well as the duration of that trial and the financial resources committed for the purposes of its rapid completion, fell, in principle, within the responsibility of the proprietor of that mark and could not therefore be regarded as obstacles independent of that proprietor’s will.
72 Furthermore, contrary to Viridis’s submissions, the approach adopted by the General Court does not effectively render the five-year period referred to in Article 51(1)(a) of Regulation No 207/2009 meaningless. The existence of that period does not mean that the proprietor of the mark concerned does not have to complete in good time all the necessary preparations in order to be able to put the mark to genuine use once that period has expired.
73 Indeed, it is apparent, in the light of recital 10 of Regulation No 207/2009, that it would be contrary to the broad logic of Article 51(1)(a) of that regulation to confer too broad a scope on the concept of ‘proper reasons for non-use of a mark’ (see, by analogy, judgment of 14 June 2007, Häupl, C‑246/05, EU:C:2007:340, paragraph 51).
74 In the light of the foregoing, the second ground of appeal must be rejected as unfounded and, therefore, the appeal must be dismissed in its entirety.
Costs
75 In accordance with Article 184(2) of the Rules of Procedure, where the appeal is unfounded, the Court is to make a decision as to the costs. Article 138(1) of those rules, which is applicable to appeal proceedings by virtue of Article 184(1) thereof, provides that the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
76 Since EUIPO and Hecht-Pharma have applied for costs and Viridis has been unsuccessful in its appeal, Viridis must be ordered to bear its own costs and to pay those incurred by EUIPO and by Hecht-Pharma.
On those grounds, the Court (Fourth Chamber) hereby:
1. Dismisses the appeal;
2. Orders Viridis Pharmaceutical Ltd to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Hecht-Pharma GmbH.
[Signatures]