Allergan Holdings France v EUIPO - Dermavita Company (JUVEDERM) (EU trade mark - Judgment) [2021] EUECJ T-397/20 (06 October 2021)

Judgment Background to the dispute On 18 April 2001, Allergan Inc., the predecessor in law to the applicant, Allergan Holdings France SAS, 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)). Registration as a mark was sought for the word sign JUVEDERM. The goods in respect of which registration was sought are in Class 10 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: ‘Medical and surgical apparatus and instruments, dermal implants, biocompatible substances for medical purposes for reducing wrinkles, artificial skin for surgical purposes, prostheses’. The trade mark application was published in Community Trade Marks Bulletin No 102/2001 of 26 November 2001 and, on 25 June 2002, the sign in question was registered as an EU trade mark under number 2196822. On 25 October 2016, Dermavita Co. Ltd. Parseghian & Partners, the predecessor in law to the intervener, Dermavita Company S.a.r.l., filed an application for revocation of the contested mark on the ground that that mark had not been put to genuine use for a continuous period of five years pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001). On 18 April, 15 June and 24 October 2017 and 30 May 2018, the proprietor of the contested mark submitted proof of use of that mark. On 4 April 2019, the Cancellation Division granted the application for revocation in its entirety and revoked the contested mark, on the ground that the goods in respect of which genuine use had been proved were in Class 5 and that there was no proof of its use in connection with the goods in Class 10 in respect of which it had been registered. On 18 April 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division. By decision of 14 April 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal as regards the ‘medical and surgical apparatus and instruments’, ‘dermal implants’, ‘artificial skin for surgical purposes’ and prostheses’, but upheld the appeal as regards ‘biocompatible substances for medical purposes for reducing wrinkles’. The revocation of the contested mark was therefore confirmed as regards, in particular, ‘dermal implants’. Forms of order sought The applicant claims that the Court should: – annul the contested decision in part, in so far as its appeal was dismissed for ‘dermal implants’; – order EUIPO and the intervener to pay the costs, including those incurred by the applicant before the Board of Appeal. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. In its response, the intervener contends that the Court should: – dismiss the action; – order the applicant to pay the costs, including those incurred by the intervener before the adjudicating bodies of EUIPO. In the plea of inadmissibility, the intervener claims that the Court should: – dismiss the action as inadmissible; – order the applicant to pay the costs, including those incurred by the intervener before the adjudicating bodies of EUIPO. In its observations on the plea of inadmissibility, the applicant contends, in essence, that the Court should: – reject the plea of inadmissibility; – order the intervener to pay the costs. Law Admissibility In the context of its plea of inadmissibility, the intervener disputes the admissibility of the action on the ground that the authority to act granted to the applicant’s representatives and lodged at the Registry was signed by a person who is not listed as the legal representative of the latter in the extract from the register of companies annexed to the application. According to the intervener, the applicant is not validly represented before the Court. The applicant disputes that reasoning. As a preliminary point, it should be noted, first, that, under Article 173(3) of the Rules of Procedure of the General Court, a party to the proceedings before the Board of Appeal, other than the applicant, who has become an intervener before the Court in accordance with paragraphs 1 and 2 of that article enjoys the same procedural rights as the main parties. That intervener may support the form of order sought by a main party and may apply for a form of order and put forward pleas in law independently of those applied for and put forward by the main parties. It follows that the intervener may also dispute the admissibility of the action by separate document, pursuant to Article 130(1) of the Rules of Procedure, applicable to disputes relating to intellectual property rights under Article 191 of those Rules. Second, under Article 51(3) of the Rules of Procedure, to which Article 177(5) thereof explicitly refers, lawyers are required, where the party they represent is a legal person governed by private law, to lodge at the Registry an authority to act given by that person. According to case-law, Article 51(3), unlike Article 44(5)(b) of the Rules of Procedure of the General Court of 2 May 1991, no longer requires proof that the authority granted to the lawyer was conferred on him or her by someone authorised for the purpose (see, to that effect, judgment of 19 December 2019, Amigüitos pets & life v EUIPO – Société des produits Nestlé (THE ONLY ONE by alphaspirit wild and perfect) , T‑40/19, not published, EU:T:2019:890 , paragraph 14 and the case-law cited). In the present case, the applicant annexed proof of its existence in law to the application, as required by Article 177(4) of the Rules of Procedure. In addition, it attached to its application, in accordance with Article 51(3) of the Rules of Procedure, an authority to act for its representatives, Mr Day and Mr De Haan, signed by A in his capacity as the applicant’s president. The intervener contends that it is not apparent from the documents lodged with the application that the authority to act was signed by the applicant’s legal representative because, according to those documents, the role of President, who is empowered to legally bind the applicant in its relationships with third parties, is held by B. In that regard, it must be emphasised that, in accordance with the applicable rules (see paragraphs 18 and 19 above), the applicant was not required to produce in an annex to the application proof that the authority to act given to its representatives had been properly conferred by someone authorised for the purpose. As a result, the intervener cannot criticise the applicant for not adducing such proof at that time, so that the plea must be rejected. Moreover, the intervener points out that the extract from the register of companies and articles of association of the applicant annexed to the application are in French and a translation in the language of the case, in the present case English, was not produced, with the result that those documents are not in order. In that regard, it must be noted that, under Article 46(2) of the Rules of Procedure, any material produced or annexed that is expressed in another language must be accompanied by a translation into the language of the case. Paragraph 3 of that article provides, however, that, in the case of substantial material, translations may be confined to extracts. Moreover, it is apparent from point 99 of the Practice Rules for the Implementation of the Rules of Procedure of the General Court that, where material annexed to a procedural document is not accompanied by a translation into the language of the case, the Registrar is to require the party concerned to make good the irregularity if such a translation appears necessary for the purposes of the efficient conduct of the proceedings. In the present case, the intervener does not submit any arguments supporting the conclusion that the translation of the formal documents at issue, having regard, in particular, to their purpose, appears necessary for the purpose of the efficient conduct of the proceedings. In addition, the intervener was able, even without that translation, to submit arguments relating to those documents. In those circumstances, the plea of inadmissibility must be rejected. Substance As a preliminary point, it should be noted that in view of the date of submission of the application for revocation at issue, that is to say 25 October 2016, which is decisive for the purpose of identifying the substantive law applicable, the present dispute is governed by the substantive provisions of Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), as amended (replaced by Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation (EC) No 207/2009 and repealing Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1), itself replaced by Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)) (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO , C‑223/18 P, not published, EU:C:2019:471 , paragraph 2, and of 3 July 2019, Viridis Pharmaceutical v EUIPO , C‑668/17 P, EU:C:2019:557 , paragraph 3). The applicant raises a single plea in law, alleging, in essence, infringement of Article 51(1)(a) and Article 57(5) of Regulation No 207/2009 (now Article 58(1)(a) and Article 64(5) of Regulation 2017/1001), by which it disputes the Board of Appeal’s assessment that the contested mark has not been put to genuine use for ‘dermal implants’. That plea in law is divided into two parts. The first alleges that the Board of Appeal incorrectly assessed the factual circumstances and the second alleges that the Board of Appeal incorrectly applied the Nice Classification. It is appropriate to examine first of all the second part. The second part of the single plea in law, alleging incorrect application of the Nice Classification The applicant claims that the Board of Appeal interpreted the Nice Classification incorrectly and too narrowly, following which it carried out an incorrect assessment of the ‘dermal implants’ covered by the contested mark. According to the applicant, the Board of Appeal should have come to the same conclusion regarding the ‘dermal implants’ as that to which it came to regarding the ‘biocompatible substances for medical purposes for reducing wrinkles’. It specifies that, when registration of the contested mark was sought, ‘injectable dermal fillers’ did not yet appear in the alphabetical list of the Nice Classification and that goods that are potentially comparable to those products, namely medical implants and syringes, were in Class 10. It adds that the distinction between living tissue implants (Class 5) and artificial implants (Class 10) did not appear until the eighth Edition of the Nice Classification, which entered into force on 1 January 2002. The applicant also argues that, if goods such as ‘syringes for medical purposes’ or ‘medical implants’ are not goods that are comparable to the goods at issue, the applicant was compelled to apply the general principle of classification according to function or intended use and seek registration of the contested mark in respect of ‘dermal implants’, which correctly describes the goods at issue. The applicant emphasises that it should not be penalised for having used terms which, on account of the administrative changes made to the Nice Classification, now come within Class 5 or carry a different meaning in Class 10 to the one understood and intended by the applicant at the time when the application for registration was filed. EUIPO and the intervener dispute the applicant’s arguments. In paragraph 34 of the contested decision, the Board of Appeal found that the evidence submitted by the applicant showed that the contested mark was used as an umbrella mark for injectable gel fillers containing hyaluronic acid, used to smooth facial wrinkles and to add volume to areas of the face where the skin sags (‘injectable dermal fillers’). In addition, it considered, in paragraphs 45 and 46 of the contested decision, that these are goods in Class 5, not ‘dermal implants’ in Class 10. It also specified that those goods were not in Class 10 since, first, they are not apparatus, instruments, articles or devices for surgical implantation and, second, those goods are not composed of artificial or synthetic materials (see paragraphs 47 and 48 of the contested decision). It added that the injectable dermal fillers in question consisted of a gel composed of bonded molecules made of natural materials which temporarily activate an augmentation and reactivation of the natural structure of the skin in order to regain elasticity which decreases during the ageing process and that those goods cannot be defined as artificial implants in Class 10 (see paragraphs 49 and 50 of the contested decision). The arguments raised by the applicant in the second part of the single plea relate, in essence, to the nature of the ‘dermal implants’ in respect of which the contested mark was, inter alia, registered. More specifically, it must be determined whether the choice of Class 10 at the time when the application for registration of the contested mark was lodged impacts the interpretation of those terms and, as a result, the determination of the goods they cover. According to Rule 2(1) of Regulation No 2868/95 (now Article 33(1) of Regulation 2017/1001), the classification applied is the Nice Classification. In addition, under Rule 2(2) of that Regulation (reproduced, in essence, in Article 33(2) of Regulation 2017/1001), the list of goods and services must be worded in such a way as to indicate clearly the nature of the goods and services and to allow each item to be classified in only one class of the Nice Classification. It is apparent from case-law that, notwithstanding the fact that the Nice Classification was adopted for exclusively administrative purposes, the explanatory notes on the different classes of that classification are relevant in determining the nature and purpose of the goods and services in question. In particular, where the description of the goods or services for which a mark is registered is so general that it may cover very different goods or services, it is possible to take into account, for the purposes of interpretation or as a precise indication of the designation of the goods or services, the classes in the classification that the trade mark applicant has chosen (see, to that effect, judgment of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easystep) , T‑20/19, EU:T:2020:309 , paragraph 55 and the case-law cited). In the present case, the predecessor in law to the applicant chose to designate Class 10 for the ‘dermal implants’ covered by the contested mark. It is apparent from the wording of Class 10 of the Nice Classification, in its seventh edition from 1997, in force at the time of the application for registration of the contested mark, that that class includes ‘surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials’. According to the Explanatory Note to that edition, Class 10 includes mainly medical apparatus, instruments and articles. In addition, it should be noted that the alphabetical list of Class 10 in that edition of the Nice Classification includes ‘surgical implants’ (basic number 100208) and ‘syringes for medical purposes’ (basic number 100164). By contrast, also in the seventh edition of the Nice Classification, Class 5 is entitled ‘Pharmaceutical, veterinary and sanitary preparations; 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’. According to the Explanatory Note to that edition, Class 5 includes mainly pharmaceuticals and other preparations for medical purposes. Since, as EUIPO contends, goods described by the terms ‘dermal implants’ can be classified, according to the characteristics of the goods covered, either in Class 5 or in Class 10, the Board was required to interpret those terms in the light of the class chosen by the applicant at the time when the application for registration was lodged. Certainly, as emphasised in essence by the applicant, the distinction between ‘surgical implants [artificial materials]’ in Class 10 and ‘surgical implants [living tissues]’ in Class 5 appears only in the alphabetical list of the eighth edition of the Nice Classification, which was published in 2001 and entered into force on 1 January 2002, that is, after the application for registration of the contested mark was lodged. In addition, ‘pre-filled syringes for medical purposes’ and ‘injectable dermal fillers’ are listed in Class 5 only in the alphabetical list of the eleventh edition of the Nice Classification. Nonetheless, the headings of Classes 5 and 10 of the seventh edition of the Nice Classification, as recalled in paragraphs 37 and 38 above, were already worded in a broadly equivalent manner to those of later versions, and this was the case as from the fourth edition of the Nice Classification, as pointed out by EUIPO. Thus, the difference between pharmaceutical products and other goods for medical use in Class 5 and the medical apparatus, instruments and articles in Class 10 was sufficiently clear and well established at the time when the contested mark was filed. In addition, as previously noted, the alphabetical list of Class 10 in force at the time when the application for registration of the contested mark was lodged already included ‘surgical implants’. There is nothing to indicate that the meaning of that term has evolved significantly over time. In addition, as emphasised by EUIPO, the addition of the terms ‘artificial materials’ to ‘surgical implants’ in 2001, and therefore before the contested mark was registered, merely confirms the underlying reason for the distinction between implants in Class 10 and those composed of living tissues in Class 5. Accordingly, the Board of Appeal correctly interpreted the nature of the ‘dermal implants’ in the light of Class 10 within which they came in accordance with the application on the basis of which the contested mark was registered. It also follows that the Board of Appeal cannot be criticised for not taking the same approach, regarding the ‘dermal implants’, as that followed for ‘biocompatible substances for medical purposes for reducing wrinkles’. In that regard, it must be noted that the Board of Appeal considered, in paragraph 62 of the contested decision, first, that ‘biocompatible substances for medical purposes for reducing wrinkles’, in respect of which the contested mark was registered, correctly described the injectable gel fillers for which the contested mark has been used and, second, that the registration of the contested mark for such substances as goods in Class 10 instead of Class 5 was not a reason for granting the application for revocation in respect of those goods on the ground that the classification of goods and services serves exclusively administrative purposes. As EUIPO contends, that approach cannot be applied to ‘dermal implants’, because those goods can be classified, according to their characteristics, either in Class 5 or in Class 10, while ‘biocompatible substances for medical purposes for reducing wrinkles’ can only come within Class 5. Having regard to the foregoing, the second part of the single plea in law must be rejected as unfounded. The first part of the single plea in law, alleging that the Board of Appeal incorrectly assessed the factual circumstances The applicant claims that the Board of Appeal erred in its assessment by finding that injectable dermal fillers are not dermal implants. It argues that it is apparent from the evidence produced that consumers view injectable dermal fillers as a type of dermal implant. It is also apparent from the evidence that consumers perceive those goods to be a type of artificial implant. It adds that dermal fillers are a type of dermal implant on account of their function and intended use. EUIPO and the intervener dispute the applicant’s arguments. As previously observed in paragraph 32 above, the Board of Appeal found that goods for which the contested mark has been used are injectable dermal fillers in Class 5, not ‘dermal implants’ in Class 10. In addition, the Board of Appeal found that the goods in Class 10 are apparatus, instruments, articles or devices for surgical implantation composed of artificial or synthetic materials (see paragraphs 47, 48 and 50 of the contested decision), which is not the case for the injectable dermal fillers for which the contested mark has been used. The applicant’s arguments cannot call into question those findings. First, it should be noted that the only function of the goods in question is that of filling wrinkles of the skin with hyaluronic acid gel and that function is specific to pharmaceuticals, in a broad sense, which are in Class 5, and not medical devices, in a broad sense, and thus implants, which are in Class 10 (see, to that effect, judgment of 18 November 2020, Allergan Holdings France v EUIPO – Dermavita (JUVEDERM ULTRA) , T‑664/19, not published, EU:T:2020:547, paragraph 19). Second, the Board of Appeal did not err in finding, in essence, that implants in Class 10 were surgical implants composed of artificial or synthetic materials. An implant in Class 10 is generally associated with surgery (see, to that effect, judgment of 18 November 2020, JUVEDERM ULTRA , T‑664/19, not published, EU:T:2020:547, paragraph 19), which was not disputed by the applicant either in its written submissions or at the hearing. Regarding the artificial nature of implants in Class 10, it must be noted that that aspect is not called into question by the applicant, in so far as the applicant itself submits that the goods for which the contested mark has been used are artificial implants on the ground that they are derived from a laboratory-made synthetic preparation. Neither does the term ‘dermal’ added by the applicant to the term ‘implants’ make it possible to arrive at a different finding as regards the characteristics of the implants in Class 10 to that referred to in paragraph 52 above. That adjective merely specifies that it is a product inserted in or under the skin, as stated by the applicant in the application. Third, even if the injectable dermal fillers in question were to be regarded as artificial, as argued by the applicant, it would still be appropriate to note that the hyaluronic acid gel is intended to be injected. Contrary to the applicant’s claim, such administration of the goods in question does not amount to surgery, nor can it be assimilated thereto. Moreover, it is not apparent from the file that the goods in question can be administered only by surgeons. In addition, even if consumers were to perceive the goods in question as a type of dermal implant, as the applicant claims, this cannot establish that they are goods in respect of which the contested mark was registered as goods in Class 10. As emphasised by EUIPO, by choosing to register the contested mark in respect of dermal implants in that class, the applicant gave the description of those goods a specific meaning, which cannot be extended to injectable dermal fillers for which the mark is being used. Moreover, as for the applicant’s arguments based on a decision of a French court handed down in the context of infringement proceedings brought by the applicant against several companies, including the intervener, those arguments must be rejected. According to case-law, the European Union trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and applies independently of any national system, and the legality of decisions of the Boards of Appeal of EUIPO must be evaluated solely on the basis of Regulation No 207/2009, as it is interpreted by the EU Courts (see, to that effect, judgment of 17 July 2014, Reber Holding v OHIM , C‑141/13 P, not published, EU:C:2014:2089 , paragraph 36). In those circumstances, the first part of the single plea in law must also be rejected as unfounded and, as a result, the action must be dismissed in its entirety. Costs Under Article 134(1) of the Rules of Procedure, 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(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads of claim, each party bears its own costs. However, if it appears justified in the circumstances of the case, the Court may order that one party, in addition to bearing their own costs, pay a proportion of the costs of the other party. In the present case, having regard to all the circumstances of the dispute, in particular to the fact that the intervener has been unsuccessful as regards the plea of inadmissibility it raised and the applicant has been unsuccessful on the substance, it is appropriate to order the applicant to bear, in addition to its own costs, the costs incurred by EUIPO and two-thirds of the costs incurred by the intervener in the present proceedings, with the intervener bearing a third of its own costs relating to the present proceedings. In so far as the forms of order sought by the applicant and the intervener concern costs incurred before the Board of Appeal, it is sufficient to note that those costs continue to be governed by the contested decision (see, to that effect, judgments of 10 November 2016, Polo Club v EUIPO – Lifestyle Equities (POLO CLUB SAINT-TROPEZ HARAS DE GASSIN ), T‑67/15, not published, EU:T:2016:657, paragraph 120, and of 21 April 2021, Chanel v EUIPO – Huawei Technologies (Representation of a circle containing two interlaced curves) , T‑44/20, not published, EU:T:2021:207 , paragraph 57), in which the Board of Appeal ordered each party to bear its own costs. In so far as the intervener also refers to the costs it incurred in the proceedings before the Cancellation Division, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Cancellation Division. As a result, the intervener’s form of order seeking that the applicant be ordered to pay the costs of the administrative proceedings before EUIPO cannot, in any event, be upheld regarding the costs incurred by the intervener for the purposes of the proceedings before the Cancellation Division. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Rejects the plea of inadmissibility; 2. Dismisses the action; 3. Orders Allergan Holdings France SAS to bear, in addition to its own costs, the costs incurred by the European Union Intellectual Property Office (EUIPO) and two-thirds of the costs incurred by Dermavita Company S.a.r.l. relating to the present proceedings; 4. Orders Dermavita Company S.a.r.l. to bear a third of its own costs relating to the present proceedings. Collins Kreuschitz Csehi Delivered in open court in Luxembourg on 6 October 2021. E. Coulon A. M. Collins Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII