Judgments nº T-802/16 of Tribunal General de la Unión Europea, November 17, 2017

• Resolution Date: November 17, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-802/16

In Case T-802/16,

Endoceutics, Inc., established in Quebec (Canada), represented by M. Wahlin, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Vuijst and A. Folliard-Monguiral, acting as Agents,

defendant,

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

Merck KGaA, established in Darmstadt (Germany), represented by M. Best, U. Pfleghar and S. Schäffner, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 July 2016 (Case R 1608/2015-1), concerning revocation proceedings between Endoceutics and Merck,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, I. Labucka (Rapporteur) and I. Ulloa Rubio, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 8 November 2016,

having regard to the response of EUIPO lodged at the Court Registry on 8 February 2017,

having regard to the response of the intervener lodged at the Court Registry on 14 February 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 4 August 1998, the intervener, Merck KGaA, 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 FEMIBION.

3 The goods in respect of which registration was sought are in Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 35/1999 of 3 May 1999 and the mark was registered on 3 January 2000.

5 On 26 March 2014, the applicant, Endoceutics, Inc., filed an application for revocation of the EU trade mark (‘the mark at issue’) pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001). That application was directed against all of the goods covered by the mark at issue.

6 The intervener submitted the following documents as evidence of the genuine use of the mark at issue:

- printouts of pages from the website of a UK undertaking;

- printouts of pages and screenshots from various websites using the term ‘femibion’ in their domain name;

- invoices addressed to Merck Romania S.R.L.;

- press proofs of packaging in Romanian;

- an extract from the intervener’s website;

- consumer and user comments on internet forums and a website;

- planners, calendars, patient information, posters, congress information and consumer leaflets for Poland;

- brochures, catalogues, packaging and invoices addressed to pharmacies in France;

- a presentation on the use of the mark at issue in Germany;

- brochures, posters, photographs of a conference stand, packaging and invoices addressed to the intervener for printing in Hungary.

7 By decision of 8 June 2015, the Cancellation Division found that genuine use of the mark at issue had been shown only for the ‘dietetic substances adapted for medical use’ in respect of which registration of the mark at issue had been maintained. However, it found that genuine use of the mark at issue had not been shown for ‘pharmaceutical, veterinary and sanitary preparations’, ‘food for babies’, ‘plasters’, ‘materials for dressings’ and ‘disinfectants’ and revoked that mark for those goods.

8 On 7 August 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.

9 By decision of 14 July 2016 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the action in part and annulled the Cancellation Division’s decision in part, in so far as it maintained registration of the mark at issue also for ‘pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition’. It concluded, in essence, that genuine use of the mark at issue had also been shown for those goods. It dismissed the action in respect of the other goods.

Forms of order sought

10 The applicant claims that the Court should:

- annul the contested decision in part;

- revoke the mark at issue for ‘pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition’;

- order the intervener to pay the costs incurred in the present action and in the course of the administrative proceedings before EUIPO.

11 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs;

Law

12 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009.

The single...