JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

30 September 2016 (*)

(EU trade mark — Opposition proceedings — Application for EU word mark ASTEX — Earlier EU word mark ALPEX — No genuine use of the earlier mark — Article 42(2) of Regulation (EC) No 207/2009 — Article 75 of Regulation No 207/2009 — Article 76(1) of Regulation No 207/2009)

In Case T‑355/15,

Alpex Pharma SA, established in Mezzovico-Vira (Switzerland), represented by C. Bacchini, M. Mazzitelli and E. Rondinelli, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

defendant,

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

Astex Pharmaceuticals, Inc., established in Plesanton (United States),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 28 April 2015 (Case R 593/2014-2), relating to opposition proceedings between Alpex Pharma and Astex Pharmaceuticals,

THE GENERAL COURT (Seventh Chamber),

composed of M. van der Woude, President, I. Ulloa Rubio (Rapporteur) and A. Marcoulli, Judges,

Registrar: M. Marescaux, Administrator,

having regard to the application lodged at the Court Registry on 30 June 2015,

having regard to the response lodged at the Court Registry on 5 November 2015,

further to the hearing on 16 June 2016,

gives the following

Judgment

 Background to the dispute

1        On 13 April 2012, the other party to the proceedings before the Board of Appeal, Astex Pharmaceuticals Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2        Registration as a mark was sought for the word sign ASTEX.

3        The services in respect of which registration was sought are in Class 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 to the following description: ‘Drug discovery and development services; biotechnology research; scientific analysis; providing scientific information in the field of pharmaceuticals and clinical trials’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 110/2012 of 13 June 2012.

5        On 10 September 2012 the applicant, Alpex Pharma SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to the registration of the mark applied for in respect of the services referred to in paragraph 3 above.

6        The opposition was based on the earlier EU word mark ALPEX, filed on 2 August 2004 and registered on 20 June 2006 under number 003955283, covering inter alia services in Class 42 and corresponding to the following description: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services’.

7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8        Further to the request from the other party to the proceedings before the Board of Appeal, on 28 May 2013 the applicant submitted evidence in order to prove genuine use of the earlier mark for the purposes of Article 42(2) and (3) of Regulation No 207/2009.

9        On 23 December 2013, the Opposition Division rejected the opposition in its entirety on the ground that the applicant had not proved, to the requisite legal standard, genuine use of the earlier mark in respect of the services on which the opposition was based.

10      On 20 February 2014, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

11      By decision of 28 April 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. It considered that genuine use of the earlier mark, within the meaning of Article 42(2) of Regulation No 207/2009, had been proved for ‘pharmaceuticals and nutritional supplements’ in Class 5. It found, however, that genuine use had not been sufficiently demonstrated in respect of the services in Class 42. The Board of Appeal concluded that, as the opposition was not based on the goods in Class 5 covered by the earlier mark but rather on the services in Class 42 covered by that mark, the opposition could not succeed.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

13      EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

 The admissibility of evidence produced for the first time before the General Court

14      As observed by EUIPO, in the annex to the application the applicant produced a document before the Court which had not been produced in the proceedings before the Board of Appeal. That document is the Public Assessment Report of the UK Medicines and Healthcare Products Regulatory Agency submitted as Annex 11 to the application.

15      In that regard, it should be noted that it is settled case-law that the purpose of bringing an action before the Court is the review of the legality of the decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 and that, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it. To admit such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, which states that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal (see, by analogy, judgment of 22 January 2015, MIP Metro v OHIM — Holsten-Brauerei (H), T‑193/12, not published, EU:T:2015:44, paragraph 16 and the case-law cited).

16      Since that document was produced for the first time before the Court, it must be excluded as inadmissible, without its being necessary to assess its probative value.

17      Moreover, even if that document could be taken into consideration, it must be held that it is irrelevant in so far as it adds nothing new nor contains new evidence to prove the genuine use of the earlier mark for the services in Class 42.

 Substance

18      The applicant puts forward four pleas in law in support of its action. The first plea in law alleges infringement of Article 15 and Article 42(2) of Regulation No 207/2009 and of Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), in respect of proof of use. The second plea alleges infringement of Article 15 and Article 42(2) of Regulation No 207/2009 and of Rule 22(3) and (4) of Regulation No 2868/95, in respect of genuine use. The third plea alleges infringement of Article 75 of Regulation No 207/2009. The fourth plea alleges infringement of Article 76(1) of Regulation No 207/2009.

19      The Court considers that it is appropriate to deal with the first and second pleas together since the arguments raised by the applicant overlap.

 The first and second pleas, alleging infringement of Article 15 and Article 42(2) of Regulation No 207/2009 and of Rule 22(3) and (4) of Regulation No 2868/95

20      The applicant maintains that the evidence it submitted before EUIPO demonstrates genuine use of the earlier mark for the services in Class 42 within the meaning of Articles 15 and 42(2) and (3) of Regulation No 207/2009 and Rule 22 of Regulation No 2868/95. It claims, in essence, that the Board of Appeal erred in its assessment of the material provided as evidence of genuine use.

21      EUIPO contests the applicant’s arguments.

22      It is apparent from Article 42(2) and (3) of Regulation No 207/2009 that, if the applicant so requests, the proprietor of an earlier EU trade mark or of an earlier national trade mark who has given notice of opposition must furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application, the earlier trade mark has been put to genuine use in the European Union, or in the Member State in which it is protected, in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use, provided the earlier trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition is to be rejected. If the earlier mark has been used in relation to only part of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered only in respect of that part of the goods or services.

23      According to settled case-law, the ratio legis for the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks unless there is a good commercial justification for the absence of genuine use of the earlier mark deriving from active functioning of the mark on the market (see, to that effect, judgments of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraphs 36 to 38 and the case-law cited, and of 30 November 2009, Esber v OHIM — Coloris Global Coloring Concept (COLORIS), T‑353/07, not published, EU:T:2009:475, paragraph 20 and the case-law cited).

24      Pursuant to Rule 22(3) of Regulation No 2868/95, proof of use must relate to the place, time, extent and nature of use of the earlier mark for the goods and services in respect of which it is registered and on which the opposition is based.

25      There is genuine use of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services, but genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

26      Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 39; see also, by analogy, judgment of 11 March 2003, Ansul, EU:C:2003:145, paragraph 37).

27      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

28      As for the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).

29      To examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case (judgment of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36).

30      In addition, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).

31      In addition, it must be noted that under the combined provisions of Article 15(1)(a) and Article 42(2) and (3) of Regulation No 207/2009, proof of genuine use of an earlier national or EU trade mark which forms the basis of an opposition to an EU trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (see judgment of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T;2005;438, paragraph 30 and the case-law cited).

32      It must be determined, in the light of those considerations, whether the Board of Appeal erred in its assessment in concluding that the evidence adduced by the applicant does not show genuine use of the earlier trade mark for the services in Class 42.

33      Since the application for a Community trade mark filed by the other party to the proceedings before the Board of Appeal of EUIPO was published on 13 June 2012, the period of five years referred to in Article 42(2) of Regulation No 207/2009 runs from 13 June 2007 to 12 June 2012, which the applicant does not contest.

34      In the present case, it is clear from the contested decision that the applicant produced, in the course of the proceedings before EUIPO, with a view to establishing genuine use of the earlier mark, the following documents:

–        seven invoices dating from 22 October 2007 to 12 March 2013 showing the sale of various pharmaceutical products and nutritional supplements and referring to Alpex Pharma;

–        ten samples of packaging for the pharmaceutical products ‘Trosicam’, ‘Oramellox’ and ‘Meloxicam’ stating that the producer is Alpex Pharma and dated 2010 or 2011;

–        three screenshots of the applicant’s website;

–        a document referring to ‘Alpex FP Profile’ dated 4 March 2005;

–        two brochures entitled ‘Quality Laboratories’ and ‘Analytical Laboratories’, dated respectively September 2007 and April 2011.

35      At the hearing, following a question from the Court, the applicant mentioned, as evidence proving genuine use of the earlier trade mark in respect of the services in Class 42, only the three screenshots of its website, from which it is apparent that it manufactures pharmaceutical and nutritional products and carries out activities in the field of development, and the two brochures entitled ‘Quality Laboratories’ and ‘Analytical Laboratories’, which contain a list of the equipment, tests, methods and procedures which it develops.

36      The applicant maintains that that evidence contains enough information on the research and development of pharmaceutical products and nutritional supplements which it conducts for third parties. It contends that the screenshots show the services which it offers and that the brochures constitute an offer of scientific and technological services for external clients and are therefore indirect evidence of use of the earlier trade mark for the services in Class 42.

37      First, concerning the screenshots of the applicant’s website, it should be observed that it is true that that evidence is capable of showing that the applicant conducts research on pharmaceutical products or nutritional supplements which are on the market or that it develops such products. Nevertheless, that evidence is insufficient to prove that the applicant has actually conducted research in the field of pharmaceuticals for external clients and, if it has done so, to what extent. It is not unusual for undertakings which manufacture pharmaceutical products to conduct research in that field. However, those services are not necessarily offered independently to third parties and are connected to the main objective which is the production of pharmaceutical products. As EUIPO rightly pointed out at the hearing, to conduct research in the field of pharmaceuticals in order to develop an undertaking’s own drugs does not constitute an external service for third parties. In that regard, that evidence does not state particulars concerning the nature, place, duration and extent of the external use of the earlier trade mark for the services in Class 42. The applicant has not provided supplementary evidence to prove external use of the earlier mark for services in Class 42 referring to the time, place, duration, extent and the territory of the supply of those services, such as statements from the applicant’s customers or service order forms. Moreover, as EUIPO maintained at the hearing, a service is generally supplied for an economic consideration yet the volume of service provision or the turnover linked to the external supply of those services are also not mentioned. In those circumstances, that evidence cannot in itself constitute sufficient proof of genuine use of the earlier trade mark for the services in Class 42.

38      Secondly, the same is true for the two brochures entitled ‘Quality Laboratories’ and ‘Analytical Laboratories’, which contain lists of equipment, tests and methods. In that regard, it should be noted that it is not clear whether those lists form part of offers sent to third parties and are used for commercial purposes, or whether they are simply a presentation of the applicant’s laboratories in the internal context of its pharmaceutical business. It is not possible to infer from those lists useful evidence to establish genuine use, such as the place of service provision, the quantities, the price, the volume of service provision, the market share or the turnover linked to service provision. As to the applicant’s argument that it is possible to infer from the contact details that the brochures offer services which also include a list of equipment available for the provision of services, it should be noted, as was pointed out in paragraph 30 above, that it is not sufficient that the use of the mark appears probable or credible; actual proof of that use must be given (see, to that effect, judgment of 6 October 2004, VITAKRAFT, T‑356/02, EU:T:2004:292, paragraph 33). Therefore, there is no evidence that those services were conducted on a commercial basis and that the earlier trade mark was used publicly and outwardly in respect of the services in Class 42.

39      For the sake of completeness, concerning the evidential value of the invoices for various pharmaceutical products and nutritional supplements and samples of the pharmaceutical products ‘Trosicam’, ‘Oramellox’ and ‘Meloxicam’, the applicant challenges the Board of Appeal’s assessment that that evidence establishes only that there was genuine use of the earlier mark in respect of pharmaceutical products and nutritional supplements in Class 5. The applicant submits that those items of evidence also show genuine use of the earlier trade mark for services in Class 42, given that the pharmaceutical products and nutritional supplements are the final result of scientific, technological and research services carried out by the applicant.

40      In that regard, it should be held, as the Board of Appeal rightly stated, that that evidence refers expressly to the sale or marketing of pharmaceutical products or nutritional supplements and not to the supply of services including the design, development or research of pharmaceutical products or nutritional supplements for external customers. The applicant has produced no evidence that the customers named in the invoices requested it to develop pharmaceutical products for their specific needs or that it actually supplied such services to them. It is true that that evidence contains information as to the place, date, price and the amount of pharmaceutical products or nutritional supplements sold; however, there is no information as to the cost, price, nature and the extent of the supply of those services. Therefore, it must be held that such evidence is not in itself capable of showing use of the earlier trade mark for the services which it designates, that is to say ‘scientific and technological services and research and design relating thereto; industry analysis and research services; design and development of computer hardware and software; legal services’, in Class 42.

41      Lastly, concerning the document referring to ‘Alpex FP Profile’, it should be noted that that document is dated 4 March 2005, that being two years before the beginning of the period from 13 June 2007 to 12 June 2012, and therefore that evidence must be disregarded.

42      Therefore, the Board of Appeal was entitled to conclude that the evidence produced in the present case was insufficient to establish genuine use of the earlier trade mark for the services in Class 42. Consequently, the first and second pleas must be rejected as unfounded.

 The third plea in law, alleging infringement of Article 75 of Regulation No 207/2009

43      The applicant submits that the Board of Appeal infringed the obligation to state reasons by failing to state, first, why the clinical trials, bioequivalence studies, laboratory analyses or tests conducted by the applicant and connected with the earlier trade mark did not prove that the applicant had used its mark for the services in Class 42 and, secondly, why the genuine use proved for the goods in Class 5 covered by the earlier mark was not relevant for proving use of that trade mark for the services in Class 42.

44      EUIPO contests the applicant’s arguments.

45      It must be borne in mind that the first sentence of Article 75 of Regulation No 207/2009 provides that decisions of EUIPO are to state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the court having jurisdiction to exercise its power of review (judgments of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65; of 15 November 2011, Abbott Laboratories v OHIM (RESTORE), T‑363/10, not published, EU:T:2011:662, paragraph 73; and of 23 January 2014, Novartis v OHIM (CARE TO CARE), T‑68/13, not published, EU:T:2014:29, paragraph 27). Furthermore, it should be observed that, in accordance with settled case-law, the obligation to state reasons is an essential procedural requirement and distinct from the question of whether the reasons given are correct. The fact that a statement of reasons may be incorrect does not mean that there is no statement of reasons (judgments of 17 May 2011, Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), T‑7/10, EU:T:2011:221, paragraph 59, and of 12 September 2012 in Duscholux Ibérica v OHIM — Duschprodukter i Skandinavien (duschy), T‑295/11, EU:T:2012;420, paragraph 41).

46      First, it is apparent from paragraph 32 of the contested decision that the Board of Appeal found that obtaining marketing authorisation for pharmaceutical products or nutritional supplements for the purposes of sale to external customers was part of the process of placing those products on the market but that clinical trials in respect of obtaining marketing authorisation for pharmaceutical products or nutritional supplements did not establish that the applicant had supplied the services in Class 42 covered by the earlier mark to third parties.

47      Secondly, it is apparent from the contested decision that the Board of Appeal demonstrated to the required legal standard the reasons why it found that proof of genuine use of the earlier trade mark for the products in Class 5 was not sufficient to establish genuine use of the earlier mark for the services in Class 42. The Board of Appeal noted, in paragraph 32 of the contested decision, that the invoices or the packaging submitted by the applicant to prove genuine use of the earlier mark referred explicitly to goods in Class 5 but that there was no reference to services in Class 42 in that evidence. Furthermore, in paragraph 35 of the contested decision, the Board of Appeal stated, concerning the brochures, that the fact that the earlier mark was mentioned was not sufficient to regard the brochures as offering the services in Class 42. Lastly, in paragraph 36 of the contested decision, the Board of Appeal noted that the evidence presented by the applicant to prove genuine use of the earlier mark, considered as a whole, might show that that applicant had carried out research on pharmaceutical products or nutritional supplements or that it had developed such products or supplements. However, that evidence is not sufficient to prove that the applicant has actually carried out research in the field of pharmaceuticals or nutritional supplements on behalf of third parties and if it has done so, to what extent.

48      It follows that the Board of Appeal did not breach the obligation to state reasons. Consequently, the third ground of appeal must be rejected as unfounded.

 The fourth plea in law, alleging infringement of Article 76(1) of Regulation No 207/2009

49      The applicant maintains that the Board of Appeal infringed Article 76 of Regulation No 207/2009 by failing to take into account certain evidence. In particular, it considers that the Board of Appeal did not consider pharmaceuticals research and development services and the services published by the regulatory agency after the granting of the marketing authorisation.

50      EUIPO contests the applicant’s arguments.

51      It is clear from the case-law that Article 76(1) of Regulation No 207/2009 is a statement of the duty of diligence, under which the relevant institution is required to examine carefully and impartially all the relevant factual and legal aspects of the case in question (see judgment of 21 February 2013, Laboratoire Bioderma v OHIM — Cabinet Continental (BIODERMA), T‑427/11, not published, EU:T:2013:92, paragraph 24 and the case-law cited).

52      It should be observed, as is apparent from paragraphs 28, 29 and 32 to 35 of the contested decision, that the Board of Appeal has examined all the facts, evidence and arguments submitted to it, that is to say all the packaging samples, invoices, screenshots and brochures, including those concerning the invoices in respect of pharmaceutical products which, according to the applicant, establish the use of the earlier trade mark for services in Class 42. In that regard, the Board of Appeal concluded, in paragraphs 36 and 37 of the contested decision, that whilst the evidence submitted by the applicant considered as a whole tended to show that the applicant had conducted research on pharmaceutical products or nutritional supplements or that it had developed such products or supplements, that evidence was, however, insufficient to prove external use of the earlier mark for development or research services in Class 42.

53      Consequently, the fourth plea must be rejected and therefore the action must be dismissed in its entirety.

 Costs

54      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.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Alpex Pharma, SA, to pay the costs.

Van der Woude

Ulloa Rubio

Marcoulli

Delivered in open court in Luxembourg on 30th September 2016.

[Signatures]