Judgments nº T-287/17 of Tribunal General de la Unión Europea, February 07, 2019

• Resolution Date: February 07, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-287/17

(EU trade mark - Invalidity proceedings - EU word mark SWEMAC - Earlier national company name or trade name SWEMAC Medical Appliances AB - Relative ground for refusal - Limitation in consequence of acquiescence - Article 53(1)(c) of Regulation (EC) No 207/2009 (now Article 60(1)(c) of Regulation (EU) 2017/1001) - Likelihood of confusion - Article 54(2) of Regulation No 207/2009 (now Article 61(2) of Regulation 2017/1001) - Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) - Evidence presented for the first time before the General Court)

In Case T-287/17,

Swemac Innovation AB, established in Linköping (Sweden), represented by G. Nygren, 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, intervener before the General Court, being

SWEMAC Medical Appliances AB, established in Täby (Sweden), represented by P. Jonsell, lawyer,

APPLICATION brought against the decision of the Fifth Board of Appeal of EUIPO of 24 February 2017 (Case R 3000/2014-5) relating to invalidity proceedings between Swemac Innovation and SWEMAC Medical Appliances,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, K. Kowalik-Bańczyk and C. Mac Eochaidh (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 8 May 2017,

having regard to the response of EUIPO lodged at the Court Registry on 17 August 2017,

having regard to the response of the intervener lodged at the Court Registry on 17 October 2017,

having regard to the decision of 28 November 2017 to stay the proceedings,

having regard to the letter lodged by the applicant at the Court Registry on 2 March 2018,

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 2 October 2007, the applicant, Swemac Innovation AB, 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 in respect of which registration was sought is the word sign SWEMAC.

3 The goods and services in respect of which registration was sought are in, inter alia, Classes 10 and 42 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: ‘Surgical and medical apparatus and instruments’;

- Class 42: ‘Research and development services relating to surgical and medical equipment, apparatus and instruments’.

4 The trade mark application was published in Community Trade Marks Bulletin No 9/2008 of 25 February 2008 and the word sign SWEMAC was registered as an EU trade mark on 4 September 2008 under No 006326117 for, amongst others, the goods and services referred to in paragraph 3 above.

5 On 3 September 2013, the intervener, SWEMAC Medical Appliances AB, filed an application for a declaration of partial invalidity of the mark at issue pursuant to Article 53(1)(c) of Regulation No 207/2009 (now Article 60(1)(c) of Regulation 2017/1001), read in conjunction with Article 8(4) of that regulation (now Article 8(4) of Regulation 2017/1001), in respect of all the goods and services referred to in paragraph 3 above.

6 In support of its application for a declaration of invalidity, the intervener relied on the Swedish company name SWEMAC Medical Appliances AB (‘the earlier sign’), registered, as a business, on 12 December 1997 for the activities ‘Development, manufacture and sale of primarily medical apparatuses and thereto belonging equipment as well as business compatible therewith’ and, as a company name, on 10 February 1998. It argued that there was a likelihood of confusion. It submitted evidence seeking to prove use of the earlier sign in the course of trade.

7 On 25 September 2014, the Cancellation Division rejected the application for a declaration of invalidity in its entirety, on the ground that the intervener had not proved that the use of the earlier sign in Sweden was of more than mere local significance at the time of filing of the application for a declaration of invalidity and that, therefore, one of the conditions provided for in Article 8(4) of Regulation No 207/2009 was not fulfilled.

8 On 24 November 2014, the intervener filed a notice of appeal at 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. As part of that appeal, it submitted additional evidence concerning the use of the earlier sign.

9 By decision of 24 February 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the appeal, annulled the Cancellation Division’s decision and declared the mark at issue invalid for the goods and services referred to in paragraph 3 above.

10 First, the Board of Appeal found that the intervener had demonstrated that it satisfied the conditions required under Article 8(4) of Regulation No 207/2009, read in conjunction with Swedish legislation.

11 Second, the Board of Appeal considered that there was a likelihood of confusion. In that regard, it highlighted the high degree of similarity both between the goods and services at issue, these being either identical or highly similar, and between the earlier sign and the mark at issue, which shared the distinctive and dominant element ‘swemac’.

12 Third, the Board of Appeal examined whether any coexistence of the signs at issue could reduce the likelihood of confusion found to exist and concluded that such a coexistence had not been established, in the absence of evidence of use of the mark at issue and of a coexistence based on the absence of a likelihood of confusion.

13 Fourth, the Board of Appeal rejected the applicant’s argument based on limitation in consequence of acquiescence within the meaning of Article 54(2) of Regulation No 207/2009 (now Article 61(2) of Regulation 2017/1001).

Forms of order sought by the parties

14 The applicant claims that the Court should:

- annul the contested decision and reinstate the mark at issue to full validity, including for the goods and services at issue;

- order the intervener to pay the applicant’s costs before EUIPO and before the Board of Appeal, namely, EUR 1 000;

- order EUIPO and the intervener to pay the applicant’s costs before the Court.

15 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

16 The intervener contends that the Court should:

- uphold the contested decision and declare the mark at issue invalid;

- order the applicant to pay the costs incurred by the intervener in the proceedings before the Court and before EUIPO.

Law

Admissibility of documents filed for the first time before the General Court

17 EUIPO disputes the admissibility of Annexes A.2, A.3, A.9, A.10, A.11, A.12, A.13 and A.14 to the application. Those documents were not submitted at any stage of the proceedings before EUIPO. The annexes at issue were submitted by the applicant in order to prove that it had established ‘a right to the contested trademark’ before filing the application for the registration thereof (Annexes A.2 and A.3), the uninterrupted use of the mark at issue between 2009 and 2016 for surgical and medical apparatus and instruments (Annex A.9), the reason for the delay in the registration of the new company name of its subsidiary (Annex A.11), and the coexistence of the signs at issue (Annexes A.12, A.13 and A.14). Last, Annex A.10 was submitted to support the applicant’s position that there was no likelihood of confusion.

18 It should be pointed out that, having regard to the purpose of the action provided for in Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), it is not the Court’s function, in the context of such an action, to review the facts in the light of documents produced for the first time before it (see judgment of 9 February 2017, International Gaming Projects v EUIPO - adp Gauselmann (TRIPLE EVOLUTION), T-82/16, not published, EU:T:2017:66, paragraph 16 and the case-law cited).

19 In the case at hand, the documents mentioned in paragraph 17 above have been submitted for the first time in the action before the Court. Those documents must therefore be excluded as inadmissible, with the exception of Annex A.10, without it being necessary to assess their probative value.

20 Annex A.10 contains a decision of the Marknadsdomstolen (Commercial Court, Sweden). The Court notes that a paragraph of that decision is translated in paragraph 28 of the application in accordance with Article 46(2) of the Rules of Procedure of the General Court. It should be recalled that neither the parties nor the Court itself can be precluded from drawing on national case-law for the purposes of interpreting EU law. That possibility of referring to national decisions is not covered by the case-law according to which the purpose of actions brought before the Court is to review the legality of decisions of the Boards of Appeal in...