Judgments nº T-419/17 of Tribunal General de la Unión Europea, May 18, 2018

• Resolution Date: May 18, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-419/17

(EU trade mark - Revocation proceedings - EU word mark VSL#3 - Trade mark having become a common name in the trade for a product or service for which it is registered - Mark liable to mislead the public - Article 51(1)(b) and (c) of Regulation (EC) No 207/2009 (now Article 58(1)(b) and (c) of Regulation (EU) 2017/1001))

In Case T-419/17,

Mendes SA, established in Lugano (Switzerland), represented by G. Carpineti, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,

defendant,

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

Actial Farmaceutica Srl, established in Rome (Italy), represented by S. Giudici, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 3 May 2017 (Case R 1306/2016-2), relating to revocation proceedings between Mendes and Actial Farmaceutica,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, A. Dittrich and P.G. Xuereb (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 4 July 2017,

having regard to the response of EUIPO lodged at the Court Registry 27 September 2017,

having regard to the response of the intervener lodged at the Court Registry on 11 October 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 23 December 1999, Mendes s.u.r.l. 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 The mark for which registration was sought was the word sign VSL#3.

3 The goods for 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 goods; dietetic substances adapted for medical use, food for babies; nutraceuticals; dietary supplements’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 2000/059 of 24 July 2000 and the mark was registered on 5 July 2001.

5 On 1 April 2004, EUIPO registered the transfer by Mendes s.u.r.l. of the contested mark toActial Farmacêutica Lda.

6 On 2 December 2016, EUIPO registered the transfer of the contested mark by Actial Farmacêutica Lda to the intervener, Actial Farmaceutica Srl.

7 On 8 September 2014, the applicant, Mendes SA, filed an application for revocation of the contested mark for all the goods for which it was registered, pursuant to Article 51(1)(b) and (c) of Regulation No 207/2009 (now Article 58(1)(b) and (c) of Regulation 2017/1001), on the ground that, first, that mark had become, in consequence of acts or inactivity of the intervener, the common name in the trade for the products at issue and, second, that that mark misleads the public because of its use.

8 By decision of 2 June 2016, the Cancellation Division rejected the application for revocation.

9 On 19 July 2016, the applicant 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.

10 By decision of 3 May 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In the first place, the Board of Appeal considered, in essence, that the evidence submitted by the applicant did not make it possible to establish that the contested mark had become the common name in the trade for the products for which it was registered. In the second place, the Board of Appeal considered, in essence, that the misleading use of the contested mark had not been duly substantiated by the applicant.

Forms of order sought

11 The applicant claims that the Court should:

- annul the contested decision;

- order that the applicant be reimbursed the costs relating to the proceedings in full, or at least that each party is to bear its own costs in full.

12 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

Admissibility of the documents produced for the first time before the Court

13 EUIPO claims that Annexes A.9, A.36 and A.39 to the application, concerning the guidelines of the World Gastroenterology Organisation (Annex A.9), the content of the website ‘www.vsl3.co.uk’ (Annex A.36) and the packaging of the product at issue distributed with a modified formulation (Annex A.39) are produced for the first time before the Court and are, therefore, inadmissible.

14 In the circumstances, it should be pointed out that Annexes A.9, A.36 and A.39 to the application did not form part of the administrative file submitted by the applicant to the Board of Appeal of EUIPO.

15 In that regard, it should be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so that it is not the Court’s function to review the facts in the light of documents produced for the first time before it.

16 The documents referred to above must therefore be rejected, without it being necessary to examine their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM - LTJ Diffusion (ARTHUR ET FELICIE), T-346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

Substance

17 In support of its action, the applicant puts forward two pleas in law. The first alleges infringement of Article 51(1)(b) of Regulation No 207/2009. The second alleges infringement of Article 51(1)(c) of Regulation No 207/2009.

The first plea in law, alleging infringement of Article 51(1)(b) of Regulation No 207/2009

18 In the context of the first plea, alleging infringement of Article 51(1)(b) of Regulation No 207/2009, the applicant claims, first of all, that the Board of Appeal erred in defining the relevant circles and their perception of the contested mark. The applicant states, in addition, that the transformation of the contested mark into the common name in the trade for the product for which it is registered is attributable to its proprietor.

19 EUIPO and the intervener dispute the applicant’s arguments.

20 Under Article 51(1)(b) of Regulation No 207/2009, the rights of the proprietor of the EU trade mark are to be declared to be revoked, on application to EUIPO or on the basis of a counterclaim in infringement proceedings, if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered.

21 It must be noted that there is no case-law relating to the application of Article 51(1)(b) of Regulation No 207/2009. Nevertheless, the Court of Justice, in the cases giving rise to the judgments of 29 April 2004...