JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

20 March 2019 (*)

(EU trade mark — Invalidity proceedings — EU word mark PRIMED — Earlier national figurative marks PRIM S.A., PRiM, S.A. SUMINISTROS MEDICOS and GRUPO PRiM — Genuine use of the earlier marks — Article 57(2) and (3) of Regulation (EC) No 207/2009 (now Article 64(2) and (3) of Regulation (EU) 2017/1001) — Right to be heard — Second sentence of Article 75 of Regulation No 207/2009 (now second sentence of Article 94(1) of Regulation 2017/1001) — Submission of evidence for the first time before the Board of Appeal — Discretion of the Board of Appeal — Classification as new or additional evidence — Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001))

In Case T‑138/17,

Prim, SA, established in Móstoles (Spain), represented by L. Broschat García, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Primed Halberstadt Medizintechnik GmbH, established in Halberstadt (Germany), represented by D. Donath, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 19 December 2016 (Joined Cases R 2494/2015-4 and R 163/2016-4), relating to cancellation proceedings between Prim and Primed Halberstadt Medizintechnik,

THE GENERAL COURT (Seventh Chamber),

composed of V. Tomljenović, President, E. Bieliūnas and A. Marcoulli (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 28 February 2017,

having regard to the response of EUIPO lodged at the Court Registry on 21 August 2017,

having regard to the response of the intervener lodged at the Court Registry on 29 August 2017,

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

 Background to the dispute

1        On 6 June 2006, the intervener, Primed Halberstadt Medizintechnik GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced 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)).

2        Registration as a mark was sought for the word sign PRIMED.

3        The goods and services in respect of which registration was sought are in Classes 10, 21 and 35 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, for each of those classes, to the following description:

–        Class 10: ‘Nutritional probes; eye-wash bottles, bowls and tubs; basins for medical purposes; receptacles for applying medicines; dosing systems for medicines, dosing systems for cytostatics; drainage tubes for medical purposes, redon drainage devices, redon bottles, tube systems for medical drainage; expansion bellows for medical purposes; filters for medical purposes, filters for blood purifying and detoxification; bottle closures for medical purposes; appliances for washing body cavities; gloves for medical purposes; urethral probes; urethral syringes; syringes for injections; inhalers; injectors for medical purposes; cannulae; catheters; enema syringes; contrast agent containers for medical purposes; medicine spoons; medicine trays; breast pumps; oral spatulas; kidney bowls for medical purposes; ear picks, ear syringes; operating overshoes; pessaries; balling guns; pumps for medical purposes; feeding bottle receptacles; tube systems for medical purposes, tube connectors for use in the aforesaid tube systems, drainage tubes for medical purposes, medical connectors; probes for medical purposes; injectors for medical purposes, sputum containers; hygienic basins; sterile sheets; tracheostomy tubes; transfusion apparatus; trocars; droppers for medical purposes; drip chambers; lens tubes for medical purposes; urinals, bags for urine; vaginal syringes; vaporizers for medical purposes;’

–        Class 21: ‘Drinking vessels for invalid and geriatric care, namely bottles, cups, mugs, glasses, disposable bottles, disposable cups, disposable mugs, disposable glasses; tableware for invalid and geriatric care, namely plates, dishes, bowls, saucers, storage tins, disposable plates, disposable dishes, disposable bowls, disposable saucers, disposable storage tins;’

–        Class 35: ‘Wholesaling of the following goods in Class 10, being solely intended for use by medically trained personnel: aerosol dispensers for medical use; apparatus for artificial feeding, feeding tubes; eye-wash bottles, bowls and tubs; basins for medical purposes; receptacles for applying medicines; babies’ dummies; blood testing apparatus, blood glucose meters; blood pressure measuring apparatus; dosing systems for medicines, dosing systems for cytostatics; drainage tubes for medical purposes, redon drainage devices, redon bottles, tube systems for medical drainage; electrodes for medical use; expansion bellows for medical purposes; filters for medical purposes, filters for blood purifying and detoxification; finger guards for medical purposes; bottle closures for medical purposes; gastroscopes; uterine syringes; obstetric apparatus; appliances for washing body cavities; gloves for medical use; urethral probes; urethral syringes; syringes for injections; inhalers; injectors for medical purposes; cannulae; catheters; rectal syringes; condoms; contrast agent containers for medical purposes; medicine spoons; medicine trays; breast pumpers; oral spatulas; needles for medical use; kidney bowls for medical purposes; ear picks, ear syringes; operating overshoes; pessaries; balling guns; pumps for medical use; feeding bottles; tube systems for medical purposes, tube connectors for use in the aforesaid tube systems, medical tubes, medical connectors; cupping glasses; probes for medical use; syringes for medical purposes, insulin syringes; sputum containers; bed pans; sterile sheets; stethoscopes; thermometers for medical purposes; tracheostomy tubes; transfusion apparatus; trocars; drop counting phials for medical purposes; drip chambers; lens tubes for medical purposes; urinals, bags for urine; vaginal syringes; dental prosthesis containers; vaporisers for medical purposes; mail order retailing of the following goods in Class 10, being solely intended for use by medically trained personnel: aerosol dispensers for medical use; apparatus for use in medical analysis; apparatus for artificial feeding, feeding tubes; eye-wash bottles, bowls and tubs; basins for medical purposes; receptacles for applying medicines; blood testing apparatus, blood glucose meters; dosing systems for medicines, dosing systems for cytostatics; drainage tubes for medical purposes, redon drainage devices, redon bottles, tube systems for medical drainage; electrodes for medical use; expansion bellows for medical purposes; filters for medical purposes, filters for blood purifying and detoxification; finger guards for medical purposes; bottle closures for medical purposes; gastroscopes; uterine syringes; obstetric apparatus; appliances for washing body cavities; gloves for medical use; urethral probes; urethral syringes; syringes for injections; inhalers; injectors for medical purposes; cannulae; catheters; rectal syringes; condoms; contrast agent containers for medical purposes; medicine spoons; medicine trays; breast pumpers; oral spatulas; kidney bowls for medical purposes; ear picks, ear syringes; operating overshoes; pessaries; balling guns; pumps for medical use; feeding bottles; tube systems for medical purposes, tube connectors for use in the aforesaid tube systems, medical tubes, medical connectors; cupping glasses; probes for medical use; syringes for medical purposes, sputum containers; bed pans; sterile sheets; tracheostomy tubes; transfusion apparatus; trocars; droppers for medical purposes; drip chambers; lens tubes for medical purposes; urinals, bags for urine; urinary apparatus and instruments; vaginal syringes; dental prosthesis containers; vaporisers for medical purposes; retailing/wholesaling via the internet of the following goods in Class 10, being solely intended for use by medically trained personnel: aerosol dispensers for medical use; apparatus for use in medical analysis; apparatus for artificial feeding, feeding tubes; eye-wash bottles, bowls and tubs; basins for medical purposes; receptacles for applying medicines; babies’ dummies; blood testing apparatus, blood glucose meters; dosing systems for medicines, dosing systems for cytostatics; drainage tubes for medical purposes, redon drainage devices, redon bottles, tube systems for medical drainage; electrodes for medical use; expansion bellows for medical purposes; filters for medical purposes, filters for blood purifying and detoxification; finger guards for medical purposes; bottle closures for medical purposes; gastroscopes; uterine syringes; obstetric apparatus; appliances for washing body cavities; gloves for medical use; urethral probes; urethral syringes; syringes for injections; inhalers; injectors for medical purposes; cannulae; catheters; rectal syringes; condoms; contrast agent containers for medical purposes; medicine spoons; medicine trays; medical apparatus and instruments; knives for surgical purposes; breast pumpers; oral spatulas; kidney bowls for medical purposes; ear picks, ear syringes; operating overshoes; pessaries; balling guns; pumps for medical use; feeding bottles; tube systems for medical purposes, tube connectors for use in the aforesaid tube systems, medical tubes, medical connectors; probes for medical use; syringes for medical purposes, insulin syringes; sputum containers; bed pans; sterile sheets; stethoscopes; tracheostomy tubes; transfusion apparatus; trocars; droppers for medical purposes; drop counting phials for medical purposes; drip chambers; lens tubes for medical purposes; urinals, bags for urine; urinary apparatus and instruments; vaginal syringes; dental prosthesis containers; vaporisers for medical purposes.’

4        The EU trade mark application was published in Community Trade Marks Bulletin No 2007/17 of 30 April 2007.

5        On 20 January 2013, the word mark PRIMED was registered as an EU trade mark under number 5154182 in respect of all of the goods and services referred to in paragraph 3 above. The registration was published in Community Trade Marks Bulletin No 2013/015 of 22 January 2013.

6        On 19 February 2014, the applicant, Prim, SA, filed an application for a declaration of invalidity of the EU trade mark PRIMED for all of the goods and services in respect of which it had been registered, on the basis of Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

7        The application for a declaration of invalidity was, in particular, based on the following earlier marks:

–        the Spanish figurative mark reproduced below, following the merger, on 22 February 2005, of the Spanish marks M 772 138, filed on 25 November 1974 and registered on 21 November 1977, and M 772 139, filed on 25 November 1974 and registered on 7 December 1976, registered under Number 2637432 for ‘external applications, bandages, threads and fabrics for pharmaceutical and medical use; bandage material; material for tooth filling and dental care’, in Class 5, and ‘surgical, medical, dental and veterinary apparatus and instruments’, in Class 10:

Image not found

–        the Spanish figurative mark reproduced below, filed on 8 October 1990 and registered on 5 October 1994 under Number 1591986, renewed on 12 August 2010, covering, inter alia, ‘surgical and medical apparatus and instruments; artificial limbs; orthopaedic articles’, in Class 10:

Image not found

–        the Spanish figurative mark reproduced below, filed on 3 July 2000 and registered on 5 March 2001 under Number 2329544, renewed on 12 August 2010, covering, inter alia, ‘surgical and medical apparatus and instruments; artificial limbs; orthopaedic articles’, in Class 10:

Image not found

8        At the request of the intervener, the proprietor of the contested mark, the applicant was invited by EUIPO to furnish proof of genuine use of all of the earlier marks upon which it based its application, in accordance with Article 57(2) and (3) of Regulation No 207/2009 (now Article 64(2) and (3) of Regulation 2017/1001).

9        By decision of 25 November 2015, the Cancellation Division declared the contested mark invalid in respect of some of the goods in Class 10. First, it took the view that the scope of protection of the earlier Spanish mark No 2637432 had not been demonstrated. Next, it took the view that genuine use of the earlier Spanish marks No 1591986 and No 2329544, to the extent to which they covered ‘surgical and medical apparatus and instruments’ and ‘orthopaedic articles’, had been established in Spain over the periods from 19 February 2009 to 18 February 2014 and from 22 January 2008 to 21 February 2013. Finally, it rejected the application for a declaration of invalidity of the contested mark to the extent to which it covered, on the one hand, ‘breast pumps’ and ‘feeding bottle receptacles’ in Class 10 and, on the other hand, the goods and services in Classes 21 and 35 on the ground that they were different or slightly similar to the goods covered by the earlier marks No 1591986 and No 2329544 and that, therefore, there was no likelihood of confusion. However, it took the view that, to the extent to which the contested mark covered the other goods in Class 10, there was a likelihood of confusion with those two earlier marks.

10      On 15 December 2015, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division in so far as it upheld the application for a declaration of invalidity of the contested mark in respect of some of the goods in Class 10. In its appeal, the intervener submitted that the applicant had not proven genuine use of the earlier national marks.

11      On 25 January 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division in so far as the latter had rejected the application for a declaration of invalidity of the contested mark in respect of the goods and services in Classes 21 and 35. The applicant submitted, in particular, that those goods and services were similar to the goods covered by the earlier marks.

12      By decision of 19 December 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal brought by the applicant and upheld in its entirety the appeal brought by the intervener. It thus annulled the decision of the Cancellation Division in so far as it had declared the contested mark invalid in respect of some of the goods covered. In essence, the Board of Appeal found that the Cancellation Division had erred in the determination of one of the periods for which proof of genuine use of the earlier national marks had to be furnished. Thus, if that use had to be proven during a first period, running from 19 February 2009 to 18 February 2014 (‘the first relevant period’), the second period would cover the five years preceding the date of publication of the application for an EU trade mark, namely 30 April 2007, and not 22 January 2013, as the Cancellation Division incorrectly held, since the latter date corresponds to the date of publication of the registration of the contested mark. The Board of Appeal then went on to find that the applicant, the proprietor of the earlier national marks, had not submitted any proof of genuine use for the period from 30 April 2002 to 29 April 2007 (‘the second relevant period’). It also found that EUIPO was not required to point out to the applicant the deficiencies in the documentation submitted, nor to invite the applicant to submit particular evidence. It concluded from this that the applicant had not established genuine use of the earlier national marks and that, therefore, the application for a declaration of invalidity had to be rejected.

 Forms of order sought

13      The applicant claims, in essence, that the Court should:

–        annul the contested decision and uphold, in its entirety, the application for a declaration of invalidity which the applicant brought against the contested mark;

–        in the alternative, declare that the applicant has furnished proof of use of the earlier national marks during the relevant period and refer the case back to the Fourth Board of Appeal for a determination as to the proof of use of those marks during the second relevant period;

–        in the further alternative, refer the case in its entirety back to the Fourth Board of Appeal for it, in turn, to refer the case back to the Cancellation Division in order for the latter to issue a decision as to whether the application for a declaration of invalidity is well founded in the light of the proof of genuine use of the earlier national marks;

–        order EUIPO and the intervener to pay the costs.

14      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

15      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs, including those incurred before the Board of Appeal and the Cancellation Division.

 Law

 The head of claim seeking annulment of the contested decision

16      The applicant relies on three pleas in law alleging, first, infringement of the right to be heard and of Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001), the second alleging infringement of the principle prohibiting reformatio in peius, and the third alleging infringement of Article 57(2) and (3) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation (now Article 47(2) and (3) of Regulation 2017/1001) and with Article 15 of that regulation (now Article 18 of Regulation 2017/1001).

17      The first plea must be examined by taking into account all of the related arguments, including some which were submitted as part of the second plea in law.

18      By its first plea in law, the applicant submits that the Board of Appeal seriously infringed its rights of defence by rejecting the application for a declaration of invalidity which the applicant had brought on the basis of a completely new argument. In that regard, the applicant notes that the Board of Appeal established the error made by the Cancellation Division as regards the determination of the second relevant period and that it nevertheless issued a decision on the existence of genuine use having regard only to the evidence submitted by the applicant, without putting the applicant in a position to submit evidence relating to that second period. According to the applicant, since the Cancellation Division’s error had not been detected by the parties, the Board of Appeal should have annulled the Cancellation Division’s decision and referred the case back to it.

19      In the context of its second plea in law, the applicant submits in particular that the Board of Appeal issued a decision on an issue relating to proof of genuine use of the earlier national marks during the second relevant period even though that issue had never been debated by the parties. It submits that, if the Cancellation Division had not erred when setting the relevant periods, the applicant could have submitted additional proof of genuine use relating to the second relevant period. In that regard, the applicant submits that, according to the case-law, when, within the time limit prescribed, evidence has been submitted seeking to establish genuine use of a mark and EUIPO regards that evidence as relevant, EUIPO may take into consideration additional evidence of such a use which has been submitted after the time limit has passed.

20      EUIPO points out that the Cancellation Division invited the applicant to submit evidence of genuine use of the earlier national marks without specifying the periods in respect of which proof of use had to be furnished. It adds that it was for the applicant to determine those periods by reference to the applicable texts. EUIPO submits that, both before the Cancellation Division and before the Board of Appeal, the applicant had every opportunity to submit evidence of genuine use and that the contested decision is not based on a new fact or plea in law.

21      EUIPO adds that it must remain neutral in invalidity proceedings and that, although it may take into account evidence submitted late, it is not for EUIPO explicitly to invite a party to submit such evidence. It also submits that the evidence which the applicant claims that it could have submitted to the Board of Appeal would not have been additional evidence, but new evidence, when, within the time limit, no evidence was submitted relating to the second relevant period. Therefore, according to EUIPO, the Board of Appeal would not have had the discretion to accept such evidence. EUIPO concludes from this that it is not established that the proceedings could have had a different outcome if there had been no alleged infringement of the right to be heard.

22      The intervener submits that the applicant had the opportunity to submit its observations regarding genuine use of the earlier national marks. It adds that the Board of Appeal was bound, not by the decision adopted by the Cancellation Division, but by the legal provisions regarding genuine use, and that it was for the applicant, assisted by its advisers, correctly to identify the relevant periods, and that EUIPO cannot be held to blame for the applicant’s error.

23      The intervener also submits that the applicant’s statement that it could have submitted other evidence of genuine use of the earlier national marks is not substantiated and that the only evidence submitted to the Board of Appeal referring to the second relevant period was insufficient. Furthermore, according to the intervener, the issue of whether EUIPO would have accepted the submission of other evidence remains open.

24      It should be noted that, in essence, the applicant alleges an infringement of the second sentence of Article 75 of Regulation No 207/2009 (now the second sentence of Article 94(1) of Regulation 2017/1001), according to which decisions of EUIPO are to be based only on reasons or evidence on which the parties have had an opportunity to present their comments.

25      The second sentence of Article 75 of Regulation No 207/2009 lays down, in the context of the law on EU trade marks, the general principle of protection of the rights of defence. That principle includes the right to be heard, which is set out in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union.

26      Under that principle, any person adversely affected by a decision of a national authority must have been afforded the opportunity to make known its views before the adoption of that decision. The right to be heard extends to all the matters of fact or of law which form the basis of the decision, but not to the final position which the authority intends to adopt (see judgment of 1 June 2016, Grupo Bimbo v EUIPO (Form of a bar with four circles), T‑240/15, not published, EU:T:2016:327, paragraph 61 and the case-law cited).

27      EUIPO is under an obligation, in proceedings pending before its departments, to afford the parties the opportunity to express their point of view on all matters which form the basis of the decisions of those departments (see, to that effect, judgment of 13 June 2012, XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), T‑542/10, not published EU:T:2012:294, paragraph 72).

28      However, while the person who alleges infringement of the rights of defence is not required to show that the contested decision would have been different in content if there had been no deficiency, he must prove that such a possibility cannot be totally ruled out (see, to that effect, judgment of 24 October 2018, RQ v Commission, T‑29/17, under appeal, EU:T:2018:717, paragraph 76 and the case-law cited).

29      It should also be noted that, as follows from recital 10 of Regulation No 207/2009 (now recital 24 of Regulation 2017/1001), the legislature considered that there was no justification for protecting the earlier mark unless that mark was actually being used. In accordance with that recital, Article 57(2) and (3) of Regulation No 207/2009, in its applicable version before its modification by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Regulation No 40/94, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), provides that the proprietor of an EU trade mark may request proof that the earlier mark has been put to genuine use in the territory in which it is protected, during, first, the period of five years preceding the date of the application for a declaration of invalidity and, second, the period of five years preceding the date of publication of the application for registration of the contested mark.

30      If such a request is made, Rule 40(6) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 19(2) 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)), provides that EUIPO is to request the proprietor of the earlier mark to furnish proof of use of the mark or proof that there are proper reasons for non-use during the period which it specifies. If proof of use of the mark is not furnished within the period thus specified by EUIPO, the application for a declaration of invalidity is to be rejected.

31      It is on the basis of those considerations that it is necessary to examine whether, in the circumstances of the present case, the Board of Appeal infringed the second sentence of Article 75 of Regulation No 207/2009.

32      In the first place, with regard to the question of whether the Board of Appeal based the contested decision on a matter on which the applicant had no opportunity to present its comments, it should be recalled that, following the applicant’s application for a declaration of invalidity of the contested mark, the intervener requested that the applicant furnish proof of genuine use of all the opposing earlier national marks. By letter of 15 July 2014, the Cancellation Division invited the applicant to furnish such proof, with a deadline of 20 October 2014. It did not specify the period or periods during which genuine use of the earlier national marks had to be demonstrated under Article 57(2) and (3) of Regulation No 207/2009 (‘the relevant periods’).

33      In that regard, it should be recalled that neither Article 57(2) and (3) of Regulation No 207/2009 nor Rule 40(6) of Regulation No 2868/95 requires the Cancellation Division to determine the relevant periods for the proof of use and to inform the applicant of them.

34      In response to the Cancellation Division’s request, the applicant, by letter of 20 October 2014, sent various items of evidence which, according to the applicant, establish the genuine use of the earlier national marks during the period from 20 March 2009 to 20 March 2014.

35      Referring to the provisions of Article 57(2) and (3) of Regulation No 207/2009, the Cancellation Division indicated that it was its role to assess whether the evidence submitted by the applicant established genuine use of the earlier national marks during the first relevant period of five years preceding the date of the application for a declaration of invalidity, namely from 19 February 2009 to 18 February 2014, and during the second relevant period of five years preceding the date of publication of the application for an EU trade mark. However, the Cancellation Division erred in the determination of the second relevant period by taking into account, not the date of publication of the application for that mark, namely 30 April 2007, but the date of publication of its registration, namely 22 January 2013. It then wrongly assessed the evidence of genuine use with regard to a second period from 22 January 2008 to 21 January 2013, which thus partially covered the first relevant period. The Cancellation Division considered that genuine use of two of the earlier national marks had been established.

36      Both the applicant and the intervener brought appeals before the Board of Appeal against the Cancellation Division’s decision of 25 November 2015. In particular, the intervener alleged that the Cancellation Division had wrongly taken the view that the applicant had furnished proof of genuine use of two of the earlier marks in Spain in respect of certain goods and services, but did not point out the Cancellation Division’s error regarding the determination of the second relevant period. The Board of Appeal invited the applicant to submit its observations on the appeal brought by the intervener.

37      By the contested decision, the Board of Appeal determined the relevant periods and established the error made by the Cancellation Division in the determination of the second relevant period. The Board of Appeal then noted that the applicant had not submitted any evidence in respect of that second period.

38      As EUIPO points out, it was, admittedly, for the applicant to determine the relevant periods in respect of proof of genuine use, under Article 57(2) of Regulation No 207/2009. Thus, due to the error which the applicant made in that process, it submitted evidence of genuine use of the earlier national marks relating to the period from 20 March 2009 to 20 March 2014. However, that first error was followed by a second error on the part of the Cancellation Division as a result of confusion between the date of publication of the application for an EU trade mark, namely 30 April 2007, and the date of publication of the registration of that mark, namely 22 January 2013, an error not detected by the parties, which, as a result, based their arguments before the Board of Appeal on the basis of the relevant periods accepted by the Cancellation Division.

39      It follows that the Board of Appeal found that there was no genuine use of the earlier national marks in respect of a period which was never discussed by the parties and on which they therefore had no opportunity to comment nor, consequently, to submit evidence at any stage of the proceedings before EUIPO. Therefore, in the circumstances of this case, the applicant is justified in claiming that the Board of Appeal infringed its right to be heard by failing to invite the applicant to submit its comments on an item of evidence upon which the Board of Appeal based its decision.

40      The other arguments put forward by EUIPO and the intervener cannot call that assessment into question.

41      Thus, first, the fact that the applicant would have had the opportunity to submit before the Cancellation Division evidence of genuine use of the earlier national marks if it had not made a mistake has no bearing on the finding that the Board of Appeal based the contested decision on evidence on which the parties did not have an opportunity to present their comments.

42      In that regard, it should be recalled that, although the Board of Appeal is not required to inform the parties in advance regarding the manner in which it intends to apply the law, it is required, under the second sentence of Article 75 of Regulation No 207/2009, to hear the parties on all the elements of fact or law which constitute the basis of the contested decision. Furthermore, it is for the Board of Appeal to ensure that there has been compliance with the conditions laid down by that provision (see judgment of 16 March 2017, Capella v EUIPO — Abus (APUS), T‑473/15, not published, EU:T:2017:174, paragraph 59 and the case-law cited).

43      Second, as EUIPO submits, the question of genuine use of the earlier national marks was, admittedly, part of the dispute before the Board of Appeal and the applicant had the opportunity, both before the Cancellation Division and before the Board of Appeal, to present its arguments regarding that genuine use and to submit evidence of such use. However, it must be noted that, in the light of the particular circumstances of the case, linked, in particular, to the successive errors regarding the determination of the second relevant period, the applicant did not have the opportunity to present its comments on genuine use of the earlier national marks during that period, as determined by the Board of Appeal.

44      Third, in so far as EUIPO submits that the right to be heard must be aligned with its obligation to remain neutral in invalidity proceedings and that it cannot be required explicitly to request a party to submit evidence, it should be recalled that it was for the Board of Appeal to ensure that the conditions laid down by the second sentence of Article 75 of Regulation No 207/2009 had been complied with, something which did not occur in the present case. Thus, the impartiality of the Board of Appeal cannot prevent it from being required, in a case such as the present, to permit the applicant to present its comments on genuine use of the earlier national marks in respect of a period not debated during the proceedings (see, by analogy, judgment of 16 March 2017, APUS, T‑473/15, not published, EU:T:2017:174, paragraph 72).

45      In the second place, as regards the question of whether there was absolutely no possibility that the contested decision would have been different in content if there had been no infringement of the second sentence of Article 75 of Regulation No 207/2009, the parties disagree as to whether the Board of Appeal would have been able to take into account any evidence of genuine use relating to the second relevant period which the applicant might have submitted.

46      In that regard, it should be recalled that Article 76(2) of Regulation No 207/2009 (now 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 from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the periods to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time (see judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 48 and the case-law cited).

47      By stating that EUIPO ‘may’ decide to disregard such facts and evidence, Article 76(2) of Regulation No 207/2009 grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 49 and the case-law cited).

48      Furthermore, it follows from the case-law that no reason of principle related to the nature of the proceedings under way before the Board of Appeal or to the jurisdiction of that department precludes it, for the purpose of giving judgment on the appeal before it, from taking into account facts and evidence produced for the first time at the appeal stage (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 49).

49      As regards, more specifically, the submission of proof of genuine use of the earlier mark pursuant to Article 57(2) or (3) of Regulation No 207/2009, in the context of invalidity proceedings brought on the basis of Article 53(1)(a) of that regulation, it should be recalled that Rule 40(6) of Regulation No 2868/95 provides that EUIPO is to invite the proprietor of the earlier mark to prove use of that mark during a period which EUIPO is to specify.

50      Although it follows from the wording of that rule that, when no proof of use of the mark concerned is produced within the period set by EUIPO, the application for a declaration of invalidity must be rejected by EUIPO of its own motion, such a conclusion does not, however, pertain where some evidence intended to show that use has been produced within that period (see judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 53 and the case-law cited).

51      In such a case, and unless it emerges that the evidence intended to demonstrate use of the mark in question is entirely irrelevant for the purpose of establishing genuine use of the mark, the proceedings must take their course. EUIPO must, inter alia, as provided for by Article 57(1) of Regulation No 207/2009 (now Article 64(1) of Regulation 2017/1001), invite the parties, as often as necessary, to file observations on communications from the other parties or issued by EUIPO itself. In such a context, if the application for a declaration of invalidity is rejected on the ground that the earlier mark concerned was not subject to genuine use, that rejection does not proceed from application of Rule 40(6) of Regulation No 2868/95, which is an essentially procedural provision, but solely from application of the substantive provisions in Article 57(2) or (3) of Regulation No 207/2009 (see judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 54 and the case-law cited).

52      It follows from this that it remains possible to submit evidence of use of the earlier mark concerned, in addition to the evidence adduced within the period set by EUIPO, under Rule 40(6) of Regulation No 2868/95, after the expiry of that period, and that EUIPO is in no way prohibited from taking account of additional evidence which is submitted after that period pursuant to the discretion conferred upon it under Article 76(2) of Regulation No 207/2009 (see judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 55 and the case-law cited).

53      As regards the appeal procedure, the Court of Justice has already held that it follows from Article 63(2) of Regulation No 207/2009 (now Article 70(2) of Regulation 2017/1001), read in conjunction with Article 78 of that regulation (now Article 97 of Regulation 2017/1001), that, for the purposes of the examination of the merits of the appeal brought before it, the Board of Appeal is not only to invite the parties, as often as necessary, to file observations, within a period to be fixed by it, on notifications which it has sent to them, but may also decide on measures of inquiry, including the production of factual or evidential material. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before EUIPO (see judgment of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraph 38 and the case-law cited).

54      In the present case, EUIPO submits that the evidence of genuine use of the earlier national marks in respect of the second relevant period, which the applicant could have submitted before the Board of Appeal, even if such evidence exists, would not have been additional evidence, but new evidence which the Board of Appeal could not have taken into consideration, since no evidence relating to that period had been submitted within the set time limits. According to EUIPO, evidence of genuine use relating to the first relevant period cannot be regarded as initial evidence which would be supplemented by new evidence relating to the second relevant period because the two periods at issue do not overlap and are not close.

55      In that regard, first, it must be noted that the case-law cited in paragraphs 50 and 51 above does not draw a distinction between the relevant periods to which the evidence of genuine use of the earlier marks relates. Thus, provided that evidence which is not irrelevant has been submitted within the time limits, the proceedings may take their course and the Board of Appeal has discretion as to whether or not to take into consideration evidence submitted late.

56      Next, the submission of evidence relating to one or other of the relevant periods is part of the same process, consisting of proving that the earlier marks which form the basis of the application for a declaration of invalidity have actually been used for the goods and services in respect of which they were registered and that, therefore, they must be protected. As part of that process, the failure to submit such evidence is penalised by a single finding, set out in Article 57(2) of Regulation No 207/2009, namely the rejection of the application for a declaration of invalidity. Thus, when genuine use must be established with regard to two relevant periods, it should be considered that the evidence relating to one of the relevant periods, even if it is submitted late, is in addition to the initial evidence forwarded within the time limits, relating to the other relevant period.

57      In that regard, EUIPO cannot validly rely on the case-law, cited in paragraph 34 of its response, according to which evidence submitted late, relating to genuine use of an earlier mark in so far as the mark covers goods or services other than those in respect of which initial evidence has been submitted within the time limit, is regarded as new evidence. In such a case, evidence submitted late, if it relates to other goods or services, cannot be regarded as supplementing the initial evidence and, under the last sentence of Article 57(2) of Regulation No 207/2009 (now the last sentence of Article 64(2) of Regulation 2017/1001), the earlier mark is to be deemed to be registered, for the purposes of the examination of the application for a declaration of invalidity, only for the part of the goods or services in respect of which genuine use has been shown.

58      Finally, EUIPO cannot rely on the provisions of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1) which is not applicable ratione temporis to the contested decision. In any event, it should be stated that, under the provisions of Article 10(3) and (7) of that regulation, relating to proof of use in opposition proceedings, applicable mutatis mutandis to invalidity proceedings, under Article 19(1) of that regulation, where, after the expiry of the period, the opposing party submits indications or evidence that supplement relevant indications or evidence already submitted before expiry of that period and relate to the same requirement of place, time, extent and nature of use, EUIPO is to decide, in the exercise of its discretion, whether or not to accept those supplementary indications or evidence. In the present case, contrary to what EUIPO claims, the fact that the evidence of genuine use which the applicant allegedly could have submitted would relate to a relevant period different to that in respect of which the initial evidence had been submitted does not mean that it would concern a different requirement, in breach of the abovementioned provisions of Regulation 2017/1430.

59      It follows that EUIPO has no grounds on which to claim that the evidence of genuine use relating to the second relevant period which the applicant allegedly could have submitted would have been new evidence which the Board of Appeal would have been required not to take into consideration.

60      Therefore, contrary to EUIPO’s argument, the possibility cannot be entirely discounted that, in the absence of the deficiency relied on, the contested decision would have been different in content.

61      In the light of all of the foregoing, the first plea in law alleging infringement of the second sentence of Article 75 of Regulation No 207/2009 must be upheld and, therefore, the contested decision must be annulled in its entirety, without there being any need to consider the other pleas in the application.

 The other heads of claim in the action

62      In the first place, in so far as the applicant requests the Court to uphold in its entirety its application for a declaration of invalidity, the application must be regarded as requesting, in essence, that the Court alter the contested decision, on the basis of Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001), and adopt the decision which, according to the applicant, the Board of Decision ought to have taken, namely a decision finding that the requirements for declaring the contested mark invalid had been met.

63      In that regard, it must be remembered that the power of the Court to alter decisions does not have the effect of conferring on it the power to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must, therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (see judgment of 25 March 2015, Apple and Pear Australia and Star Fruits Diffusion v OHIM — Carolus C. (English pink), T‑378/13, EU:T:2015:186, paragraph 56 and the case-law cited).

64      In the present case, it is clear that the requirements necessary for the Court to be able to exercise its power to alter decisions have not been met. The Board of Appeal did not examine the alleged relative ground for invalidity based on Article 8(1)(b) of Regulation No 207/2009, but it rejected the application for a declaration of invalidity on the ground that there was no proof of genuine use of the earlier national marks. Consequently, the Court is not in a position to determine the decision that the Board of Appeal was required to take and thus cannot exercise its power to alter decisions.

65      It follows that the head of claim seeking alteration of the contested decision must be rejected.

66      In the second place, since the main heads of claim in the application have been upheld in so far as they seek annulment of the contested decision, it is not necessary to rule on the heads of claim submitted in the alternative by the applicant.

67      Moreover, assuming that the applicant must be regarded as having submitted those heads of claim in the event of the Court not upholding the claim for alteration, it must be noted that, first, in so far as the applicant requests the Court to declare that it furnished proof of use of the earlier national marks during the relevant period, such claims seek to obtain a declaratory judgment from the Court. In that regard, it follows from Article 65(2) of Regulation No 207/2009 (now Article 72(2) of Regulation 2017/1001) and from Article 65(3) of that regulation that the purpose of bringing actions before the Court is to have the lawfulness of decisions of the Boards of Appeal examined and to obtain, as the case may be, the annulment or alteration of those decisions; such an action cannot therefore have the objective of obtaining declaratory judgments in respect of those decisions (see, to that effect, judgment of 28 September 2016, Intesa Sanpaolo v EUIPO (WAVE 2 PAY and WAVE TO PAY), T‑129/15 and T‑130/15, not published, EU:T:2016:575, paragraph 14). Consequently, the plea of inadmissibility raised by EUIPO against that head of claim in the application must be upheld and that head of claim must be rejected on that ground.

68      In so far as the applicant requests the Court to refer the case back to the Fourth Board of Appeal for a determination on proof of use of the earlier marks during the second relevant period, or for the Board of Appeal, in turn, to refer the case back to the Cancellation Division in order for the latter to issue a decision as to whether the application for a declaration of invalidity was well founded in the light of the proof of genuine use of the earlier national marks, suffice it to recall that it follows from settled case-law that, in an action before the Courts of the European Union against the decision of a Board of Appeal of EUIPO, the latter is required, under Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001), to take the necessary measures to comply with judgments of the Courts of the European Union. It is therefore not for the Court to issue directions to EUIPO; rather, it is for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the Courts of the European Union (see judgment of 19 January 2017, Morgan & Morgan v EUIPO — Grupo Morgan & Morgan (Morgan & Morgan), T‑399/15, not published, EU:T:2017:17, paragraph 16 and the case-law cited). Consequently, the plea of inadmissibility raised by EUIPO against those heads of claim in the application must be upheld and those heads of claim must be rejected on that ground.

 Costs

69      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. Under Article 134(2) of those rules, where there is more than one unsuccessful party, the Court is to decide how the costs are to be shared.

70      In the present case, since EUIPO and the intervener have been unsuccessful in their main heads of claim, they must each be ordered, in addition to bearing their own costs, to pay half of the costs incurred by the applicant.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 December 2016 (Joined Cases R 2494/2015-4 and R 163/2016-4);

2.      Dismisses the action as to the remainder;

3.      Orders EUIPO to bear its own costs and to pay half of those incurred by Prim, SA;

4.      Orders Primed Halberstadt Medizintechnik GmbH to bear its own costs and to pay half of those incurred by Prim.

Tomljenović

Bieliūnas

Marcoulli

Delivered in open court in Luxembourg on 20 March 2019.


E. Coulon

 

       V. Tomljenović

Registrar

 

      President


*      Language of the case: English.