Dermavita v EUIPO - Allergan Holdings France (JUVEDERM) (EU trade mark - Judgment) [2020] EUECJ T-104/19 (25 June 2020)

Judgment Background to the dispute On 3 April 2007, Allergan Inc., the predecessor in law to the intervener, Allergan Holdings France, 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 JUVÉDERM. 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 products administered by injection for use in moisturising skin and reducing wrinkles’. The trade mark application was published in Community Trade Marks Bulletin No 48/2007 of 3 September 2007 and, on 13 March 2008, the sign in question was registered as an EU trade mark under the number 5807169. On 1 April 2016, Dermavita Company (Limited Partnership) Parseghian & Partners, the predecessor in law to the applicant, Dermavita Co. Ltd., 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 4 May 2016 and subsequently, the intervener submitted evidence of use of the contested mark, which consisted of, inter alia, two witness statements, a selection of photographs of packaging bearing the mark JUVÉDERM, a selection of invoices, a large collection of marketing material for professionals and the general public, a montage of media coverage, screenshots of product websites from the ‘Internet Wayback Machine’ and various articles and reports. On 26 October 2017, the Cancellation Division dismissed the application for revocation in its entirety, on the ground that the evidence submitted by the proprietor of the contested mark was sufficient to prove genuine use of the mark in connection with the goods in respect of which it had been registered. On 13 December 2017, the applicant filed a notice of appeal before the Board of Appeal of EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision. By decision of 19 December 2018 in Case R 2630/2017-4 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal on the ground that the proprietor of the contested mark had proved genuine use of that mark during the relevant period in connection with the goods in respect of which the mark was registered, namely ‘pharmaceutical products administered by injection for use in moisturising skin and reducing wrinkles’. The Board of Appeal stated, inter alia, the following reasons for its decision: – the contested mark had been used by other entities in the Allergan group with the consent of the intervener, the proprietor of the mark; – the goods in connection with which use had been proved, although they were offered in pre-filled syringes, belonged to Class 5, because the purpose of buying the pre-filled syringes was the use of the product contained in them and not the use of the syringes and needles as such with other products; – the Nice Classification system was the only relevant system for trade mark classification purposes, irrespective of the application of Council Directive 93/42/EEC of 14 June 1993 concerning medical devices (OJ 1993 L 169, p. 1) and irrespective of the opinions of national agencies for medicinal products, ministries of health and professionals in the field, which the applicant relied on in its application for revocation. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. Law The applicant relies on a single plea in law alleging infringement of Article 15 of Regulation No 207/2009 (now Article 18 of Regulation 2017/1001) in that the Board of Appeal erred in finding that the contested mark: – first, had been put to genuine use in connection with the goods in respect of which it was registered; – secondly, had been used in the form in which it was registered; – thirdly, had been used by the intervener or on its behalf. EUIPO disputes the applicant’s arguments. The intervener does not, in essence concur with EUIPO’s arguments, but confines itself to submitting that the action is manifestly unfounded because the Board of Appeal made no error of law and there have been no procedural irregularities and that the applicant does not base its appeal on any errors of law or procedural irregularities, but simply challenges the Board of Appeal’s factual findings. It must be noted at the outset that those arguments manifestly lack any foundation in law, on the ground that they erroneously call into question the grounds on which an action before the General Court against a decision of a Board of Appeal, as set out in Article 72(2) of Regulation 2017/1001, may be brought. The first part of the single plea, alleging that the Board of Appeal erred in finding that the contested mark had been put to genuine use in connection with the goods in respect of which it was registered By the first part of its single plea, the applicant submits that the goods at issue, namely those in connection with which the mark has been used, are not the goods in respect of which the contested mark was registered. EUIPO disputes the applicant’s arguments. Under Article 51(1)(a) of Regulation No 207/2009 the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. It must be borne in mind that, according to the first subparagraph of Article 15(1) of Regulation No 207/2009 (now Article 18(1) of Regulation 2017/1001), ‘if, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use’. In that regard, it is settled case-law that there is ‘genuine use’ of a trade mark, within the meaning of that provision, where the mark is used in accordance with its essential function, which is to guarantee the identity of origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 8 June 2017, W. F. Gözze Frottierweberei and Gözze , C‑689/15, EU:C:2017:434 , paragraph 37 and the case-law cited). As regards individual marks, that essential function is to guarantee the identity of origin of the goods or services covered by the mark to the consumer or end user by enabling him, without any possibility of confusion, to distinguish those goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (see judgment of 8 June 2017, W. F. Gözze Frottierweberei and Gözze , C‑689/15, EU:C:2017:434 , paragraph 41 and the case-law cited). It is in the light of those principles that it must be examined whether the Board of Appeal was right in finding, on the basis of the evidence that the intervener had made available to it, that the contested mark had been put to genuine use in connection with the goods concerned. In essence, the applicant submits that the goods to which the evidence of use relates (‘the goods at issue’) are not ‘pharmaceuticals’, which are registered and authorised in accordance with Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to medicinal products for human use (OJ 2001 L 311, p. 67), but are, rather, injectable dermal fillers, which are regulated by Directive 93/42. It maintains that, even though they are in Class 5 of the Nice Classification, the goods at issue are not ‘pharmaceuticals’, that is to say ‘medicines’, but ‘other preparations for medical use’ within the meaning of that class, namely ‘injectable dermal fillers’. It claims that that interpretation is confirmed in the following items of evidence: – the rules applied by the regulatory authorities of the Member States; – the evidence provided by the intervener, namely the ‘EC’ declarations of conformity issued by the manufacturer of the goods at issue, the ‘EC’ certificate relating to the marketing of the goods at issue in the European Union and the intervener’s request for prior authorisation of advertising material regarding the goods at issue; – written opinions of national agencies for medicinal products or ministries of health in the European Union and written opinions of numerous doctors, clinics and pharmacies in the European Union, which have been provided by the applicant. First of all, it must be pointed out that the Board of Appeal did not err when it classified the goods at issue according to the Nice Classification, regardless of whether other rules with different objectives may apply to those goods. First, it is apparent, in essence, from Article 28(1) of Regulation No 207/2009 (now Article 33(1) of Regulation 2017/1001) that, for the purposes of the registration of an EU trade mark, goods and services are to be classified according to the Nice Classification. Secondly, as EUIPO submits, although the national and EU legislative measures referred to by the applicant are of primary importance for the sector as they safeguard the process of manufacture, labelling and distribution of medicinal products, they do not necessarily have an influence on the way in which the goods and services are classified in the Nice Classification. In that regard, the essential function of the mark should not be confused with the other functions that the mark may also fulfil, such as that of guaranteeing the quality of the goods in question (see, to that effect, judgment of 7 June 2018, Schmid v EUIPO — Landeskammer für Land- und Forstwirtschaft in Steiermark (Steirisches Kürbiskernöl) , T‑72/17, EU:T:2018:335 , paragraph 52 and the case-law cited). Consequently, the classification of goods according to other rules of European Union law, such as Directive 93/42, is not in principle decisive with regard to their classification for the purposes of the registration of an EU trade mark. Next, it must be stated that, in paragraphs 30 to 34 of the contested decision, the Board of Appeal did not make any error of assessment when it found that, for the purposes of the registration of EU trade marks, the goods at issue had to be classified in Class 5 of the Nice Classification and not in Class 10, as the applicant claimed. First, the purpose of purchasing pre-filled syringes is the use of the product contained in those syringes and, secondly, the goods to be injected contain hyaluronic acid, an acid that has several medical applications and is, inter alia, used as a dermal filler which is administered by injection by physicians and clinics. In its application, the applicant adds that, even if the goods at issue fell within Class 5, they would not be included in the category of ‘pharmaceuticals’, but in that of ‘other preparations for medical use’. In that regard, irrespective of whether that argument is admissible, it is sufficient to state that that distinction is irrelevant in the present case, since the contested mark has been put to genuine use in connection with the goods in respect of which it was registered, namely ‘pharmaceutical products administered by injection for use in moisturising skin and reducing wrinkles’. In addition, as EUIPO rightly states, such goods, which are administered by medical specialists and are intended to smooth facial wrinkles and add volume to areas of the face where the skin sags and therefore to restore certain qualities of the skin, by means of a dermal filler containing hyaluronic acid, have pharmacological effects on the skin. The applicant also adds that the goods at issue do not serve the purpose of ‘moisturising skin and reducing wrinkles’. In that regard, it is sufficient to point out that, as EUIPO states, in the context of the classification of the goods at issue in Class 5, there is no material difference between ‘filling cutaneous depressions and restoring volumes’, which is the action of the goods as used, and ‘reducing wrinkles’, which is the effect of the goods as registered. On the contrary, the use of the goods at issue for one of the two purposes above is sufficient to guarantee the essential function of the trade mark. It must therefore be held that the use of the contested mark, which the intervener has proved, does indeed relate to the goods in respect of which that mark was registered. Consequently, the first part of the single plea must be rejected. The second part of the single plea, alleging that the Board of Appeal erred in finding that the contested mark had been used in the form in which it was registered By the second part of its single plea, the applicant submits that the contested mark has not been used in the form in which it was registered, since the vast majority of the evidence provided in the course of the proceedings concerned goods registered under various other composite trade marks, namely JUVEDERM ULTRA, JUVEDERM VOLBELLA, JUVEDERM VOLUMA, JUVEDERM VOLIFT and JUVDERM VOLITE, and the marks used do not belong to a family of trade marks. EUIPO disputes the applicant’s arguments. It must be pointed out that, under point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001) use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor, constitutes use of the EU trade mark. According to the case-law, it follows directly from the wording of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 that the use of the trade mark in a form which differs from the form in which it was registered is regarded as use for the purposes of the first subparagraph of that article provided that the distinctive character of the mark in the form in which it was registered is not altered (see judgment of 11 October 2017, EUIPO v Cactus , C‑501/15 P, EU:C:2017:750 , paragraph 65 and the case-law cited). The purpose of that provision, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, with the result that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the registered trade mark may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgment of 27 February 2014, Lidl Stiftung v OHIM — Lídl Music (LIDL) , T‑226/12, not published, EU:T:2014:98, paragraph 49 and the case-law cited). Consequently, a finding that the distinctive character of the mark as registered has been altered requires an assessment of the distinctive and dominant character of the elements which have been added, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the various elements within the arrangement of the mark (see judgment of 10 June 2010, Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT) , T‑482/08, not published, EU:T:2010:229, paragraph 31 and the case-law cited). First of all, it must be stated, as EUIPO points out, that the Cancellation Division observed that the contested mark had not been used only as a word mark, but also in a figurative form and that both of the variants used did not alter the distinctive character of the contested mark as registered, a point which the applicant does not dispute. Next, it must be noted that it is clear from the case file that the use of combinations of words, such as JUVEDERM ULTRA or JUVEDERM VOLUMA, has been proved, a point which the applicant also does not dispute. In that regard, it must be stated that the word elements that were added are only minor additions in relation to the term ‘juvéderm’, which is the distinctive element in those combinations of words. As EUIPO points out, the words that were added, such as ‘ultra’ or ‘voluma’, are ancillary, because they refer to the characteristics of the goods, such as the extraordinary effects (ultra) or the volume (voluma). Furthermore, the applicant does not put forward any argument in that regard, because it confines itself to stating that ‘the word [“juvederm”] is never used alone for designating a product placed on the market’. Lastly, the applicant’s argument that the marks used do not belong to a family of trade marks, because they have been registered and used in the name of a third party, is closely linked to the arguments put forward in the context of the third part of the single plea, which will be dealt with in paragraphs 45 to 52 below, and must be rejected as a result of the rejection of that part of the plea. The second part of the single plea must therefore be rejected. The third part of the single plea, alleging that the Board of Appeal erred in upholding the Cancellation Division’s finding that the contested mark had been used on behalf of the proprietor By the third part of its single plea, the applicant submits that the contested mark was not used with the prior and implicit consent of the intervener, the proprietor of the mark. EUIPO disputes the applicant’s arguments. Article 15(2) of Regulation No 207/2009 (now Article 18(2) of Regulation 2017/1001) provides that use of the EU trade mark with the consent of the proprietor is to be deemed to constitute use by the proprietor. It must be borne in mind that the Board of Appeal, in paragraphs 24 to 26 of the contested decision, rejected the applicant’s argument on the ground that the mark had been used by other entities in the Allergan group with the consent of the intervener, the proprietor of the mark (see paragraph 10 above). First of all, it must be pointed out that, as the Board of Appeal noted in paragraph 26 of the contested decision, if the use of the contested mark had been without the proprietor’s consent and in breach of the proprietor’s trade mark right, it would have been in the interests of the entities using it not to disclose evidence of such use to that proprietor (see, to that effect, judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT) , T‑203/02, EU:T:2004:225, paragraph 25). It is also unlikely that the intervener could have had those documents and submitted them as proof of use of the contested mark if that use had taken place against its wishes (see, by analogy, judgment of 16 April 2015, Matratzen Concord v OHIM — KBT (ARKTIS) , T‑258/13, not published, EU:T:2015:207 , paragraph 43 and the case-law cited). Next, it must be borne in mind that, according to settled case-law, the use of a trade mark by a company which is economically linked to the proprietor of the mark is presumed to be use of that mark with the consent of the proprietor and is therefore to be deemed to constitute use by the proprietor, in accordance with Article 15(2) of Regulation No 207/2009 (see judgment of 30 January 2015, Now Wireless v OHIM — Starbucks (HK) (now) , T‑278/13, not published, EU:T:2015:57 , paragraph 38 and the case-law cited). In that regard, it must be pointed out that, in paragraphs 24 and 25 of the contested decision, the Board of Appeal was right in finding that the proprietor of the trade mark belonged to a group of companies linked to Allergan Inc. It is apparent from the two witness statements that the intervener and the companies which used the contested mark belong to the same group of companies. Furthermore, the applicant confines itself to pointing out that the witness statements do not have a strong probative value, since they are, inter alia, subsequent to the date of the application for revocation and were issued by the proprietor of the contested mark and not by independent persons, without, however, submitting arguments, or at the very least indicia, that would cast doubt on the authenticity of the information contained therein, information which bears out the Court’s assessment in paragraph 49 above. Lastly, the judgment of 13 January 2011, Park v OHIM — Bae (PINE TREE) (T‑28/09, not published, EU:T:2011:7), on which the applicant relies as regards the conditions for implicit consent to the use of the mark, is not relevant in the present case. In that judgment, the Court found, inter alia, that a sworn statement provided by the proprietor of the trade mark could not, on its own, constitute sufficient proof of that proprietor’s consent to the use of that mark, which is not the case here, since the fact that the intervener had the evidence in question and could submit it as proof of use is sufficient, in the absence of evidence to the contrary produced by the applicant, to prove that such consent existed. The third part of the single plea must therefore be rejected and consequently 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO. Pursuant to Article 135(1) of the Rules of Procedure, exceptionally, if equity so requires, the General Court may decide that an unsuccessful party is not to be ordered to pay any of the costs of the other party. In view of the fact that the arguments put forward by the intervener manifestly lacked any foundation in law (see paragraph 15 above), the Court takes the view that it is not appropriate to order the applicant to pay the costs incurred by the intervener. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Dismisses the action; 2. Orders Dermavita Co. Ltd to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO); 3. Orders Allergan Holdings France to bear its own costs. Collins Kreuschitz Csehi Delivered in open court in Luxembourg on 25 June 2020. E. Coulon S. Papasavvas Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. 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