Judgments nº T-279/18 of Tribunal General de la Unión Europea, October 17, 2019

• Resolution Date: October 17, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-279/18

(EU trade mark - Opposition proceedings - International registration designating the European Union - Word mark AXICORP ALLIANCE - Earlier EU word and figurative marks ALLIANCE - Relative grounds for refusal - Article 8(1)(b) and (5) of Regulation (EU) 2017/1001 - Proof of genuine use of the earlier marks - Article 47(2) of Regulation 2017/1001 - Interpretation of the description of the goods reproduced in the alphabetical list accompanying the Nice Classification)

In Case T-279/18,

Alliance Pharmaceuticals Limited, established in Chippenham (United Kingdom), represented by M. Edenborough QC,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

AxiCorp GmbH, established in Friedrichsdorf (Germany),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 7 February 2018 (Case R 1473/2017-5), relating to opposition proceedings between Alliance Pharmaceuticals and AxiCorp,

THE GENERAL COURT (Ninth Chamber),

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

Registrar: E. Hendrix, Administrator,

having regard to the application lodged at the Court Registry on 30 April 2018,

having regard to the response lodged at the Court Registry on 26 July 2018,

having regard to the measures of organisation of procedure of 31 January 2019,

further to the hearing on 28 March 2019,

gives the following

Judgment

Background to the dispute

1 On 17 January 2011, AxiCorp GmbH obtained international registration No 1072913 designating the European Union in respect of the word mark AXICORP ALLIANCE from the International Bureau of the World Intellectual Property Organisation (WIPO). That registration was notified to the European Union Intellectual Property Office (EUIPO) on 28 April 2011 pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (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 goods and services in respect of which protection was sought are in Classes 3, 5, 10 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 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;

- Class 5: ‘Pharmaceutical and veterinary preparations, medicines; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; medicines’;

- Class 10: ‘Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; applicators for pharmaceutical preparations; syringes for medical purposes; inhalers’;

- Class 35: ‘Advertising; business management services; business administration; office functions; wholesaling and retailing of pharmaceutical preparations, cosmetics and medical products’.

3 The trade mark application was published in Community Trade Marks Bulletin No 2011/082 of 29 April 2011.

4 On 30 January 2012, the applicant, Alliance Pharmaceuticals Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 2 above.

5 The opposition was based on the following earlier rights:

- the earlier EU word mark ALLIANCE, filed on 29 July 2002 and registered on 11 August 2006 under the number 2816098, and covering goods in Class 5 corresponding to the following description: ‘Pharmaceutical preparations but not including infants’ and invalids’ foods and chemical preparations for pharmaceutical purposes’;

- the earlier EU figurative mark reproduced below, filed on 29 July 2002 and registered on 17 December 2003 under the number 2816064, and covering goods in Class 5 corresponding to the following description: ‘Pharmaceutical preparations but not including infants’ and invalids’ foods and chemical preparations for pharmaceutical purposes’:

- the earlier unregistered trade mark ALLIANCE, used in the course of trade for ‘pharmaceutical preparations and substances’ in the United Kingdom.

6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009 (now Article 8(1)(b), (4) and (5) of Regulation 2017/1001).

7 The applicant filed an extract from the 2009 annual report of its parent company, Alliance Pharma plc, in support of the grounds for opposition set out in Article 8(4) and (5) of Regulation No 207/2009.

8 At AxiCorp’s request, EUIPO asked the applicant to furnish proof of use of its earlier marks, in accordance with Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001), in connection with the goods on which the opposition was based.

9 On 22 July 2016, the applicant provided evidence of use of its earlier marks within the time limit set by EUIPO.

10 On 11 May 2017, the Opposition Division rejected the opposition in its entirety on the grounds of lack of evidence of genuine use of the earlier EU trade marks and lack of evidence of use of the earlier unregistered mark in the course of trade.

11 On 7 July 2017, 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 Opposition Division.

12 By decision of 7 February 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO partially annulled the Opposition Division’s decision and remitted the case to the Opposition Division.

13 As regards the earlier EU trade marks, the Board of Appeal found that the opposition had rightly been rejected in so far as it was based on Article 8(1)(b) and (5) of Regulation 2017/1001. In this connection, it observed, first, that the specification of those marks, which refers to ‘pharmaceutical preparations but not including infants’ and invalids’ foods and chemical preparations for pharmaceutical purposes’ was not clear. Secondly, it found that it would be neither unreasonable nor contrary to grammatical rules to construe the specification as covering pharmaceutical products ‘except for those intended as food for invalids and infants and using pharmaceutical chemical preparations’. Thirdly, it took the view that, while the possibility of other interpretations could not be excluded, the goods and services had to be worded in the register with sufficient clarity and precision to enable the extent of the protection sought to be determined on that basis alone. Furthermore, according to the Board of Appeal, an ambiguous specification cannot be interpreted in a way favourable to the right holder. Consequently, it found that the Opposition Division had correctly interpreted the specification strictly, as excluding chemical preparations for pharmaceutical purposes. Moreover, it observed that, even if it were to be considered that the specification included certain pharmaceuticals of herbal origin, the applicant had not shown that the mark ALLIANCE had been used for such pharmaceuticals, given that the evidence of use submitted referred exclusively to synthetic components.

14 As regards the earlier unregistered mark and the ground for opposition set out in Article 8(4) of Regulation 2017/1001, the Board of Appeal found that the Opposition Division’s finding that the applicant had not submitted any evidence of use of that mark within the time limit given to substantiate the opposition was manifestly incorrect. It took the view that the case had to be remitted to the Opposition Division for a full re-examination of the abovementioned ground for opposition, taking into account all the evidence of use submitted by the applicant in the course of the proceedings, including that filed on 22 July 2016.

Forms of order sought

15 The applicant claims that the Court should:

- annul the contested decision;

- in the alternative, alter the contested decision by remitting the opposition to the Opposition Division for it to reconsider the opposition under Article 8(1)(b) and (5) of Regulation 2017/1001, in addition to reconsidering it under Article 8(4) of that regulation;

- order EUIPO to pay the costs relating to the present proceedings and those incurred in the proceedings before the Board of Appeal; in the alternative, if the other party before the Board of Appeal intervenes, order EUIPO and the intervener jointly and severally to pay the applicant’s costs.

16 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

The scope of the application for annulment of the contested decision

17 In reply to the questions put by the Court by way of measures of organisation of procedure, the parties confirmed, at the hearing, that the action brought by the applicant had to be understood as seeking partial annulment of the contested decision in so far as the Board of Appeal had dismissed the appeal brought before it as regards the grounds for opposition set out in Article 8(1)(b) and (5) of Regulation 2017/1001. Formal notice of this was taken in the minutes of the hearing. By contrast, the applicant is not requesting that the Court annul the contested decision in so far as the Board of Appeal remitted the case to the...