JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

25 October 2013 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark CARDIO MANAGER – Earlier national word mark CardioMessenger – Relative ground for refusal – No likelihood of confusion – No proof of genuine use of the earlier mark – Article 42(2) and (3) of Regulation (EC) No 207/2009)

In Case T‑416/11,

Biotronik SE & Co. KG, established in Berlin (Germany), represented by A. Reich, S. Pietzcker and R. Jacobs, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,

defendant,

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

Cardios Sistemas Comercial e Industrial Ltda, established in Sao Paulo (Brazil),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 27 May 2011 (Case R 1156/2010‑2) relating to opposition proceedings between Biotronik SE & Co. KG and Cardios Sistemas Comercial e Industrial Ltda,

THE GENERAL COURT (Sixth Chamber),

composed of H. Kanninen, President, G. Berardis and C. Wetter (Rapporteur), Judges,

Registrar: T. Weiler, Administrator,

having regard to the application lodged at the Court Registry on 29 July 2011,

having regard to the response lodged at the Court Registry on 9 February 2012,

further to the hearing on 11 July 2013,

gives the following

Judgment

 Background to the dispute

1        On 11 October 2006, Cardios Sistemas Comercial e Industrial Ltda (‘Cardios Sistemas’) filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 Community trade mark (OJ 2009 L 78, p. 1)).

2        The mark in respect of which registration was sought is the word sign CARDIO MANAGER.

3        The goods for which registration was sought fall within Classes 9 and 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, for each of those classes, to the following description:

–        Class 9: ‘Software for measuring, checking, medical, odontological and scientific apparatus; software for not invasive heart examination and heart apparatus’;

–        Class 10: ‘Multicardiographs, digital recorder for medical use, event recorder for medical use, ECG recorder, blood pressure and electrocardiographic analysers and blood pressure monitors’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 3/2008 of 21 January 2008.

5        On 26 March 2008, the applicant in the present proceedings – Biotronik SE & Co. KG (‘Biotronik’) – filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to the registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the earlier word mark CardioMessenger, registered in Germany on 28 November 2002 under number 30245124 and designating, inter alia, goods in Classes 9 and 10 and corresponding, for each of those classes, to the following description:

–        Class 9: ‘Electric and electronic apparatus and instruments for measuring, inputting, storing, displaying, analysing, processing, generating and transmitting data and signals; monitors, data processing equipment, computers, computer programs; parts for the aforesaid goods and attachments therefor, included in class 9; programming and testing equipment’;

–        Class 10: ‘Surgical and medical apparatus and instruments; medical apparatus for therapeutic purposes, electro-medical apparatus and parts therefor, in particular electronic apparatus for the electrostimulation of tissue and nerves; circulation relieving apparatus, diagnostic apparatus; testing apparatus for medical purposes; patient monitoring apparatus and medical measuring and regulating apparatus; artificial organs, endoprostheses, implants of artificial materials’.

7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8        On 23 October 2008, Cardios Sistemas made a request, in accordance with Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009), that Biotronik provide proof that the earlier trade mark had been put to genuine use.

9        By letter of 10 February 2009, OHIM asked Biotronik to provide such proof before 11 April 2009.

10      On 8 April 2009, as evidence produced in response to that letter, Biotronik submitted, inter alia, various extracts from newspapers and medical journals, instruction manuals for a device known as the ‘CardioMessenger’ and printouts from Biotronik’s Internet site, as well as examples of packaging dating from the relevant period, each of which bore the sign CardioMessenger.

11      By decision of 30 April 2010, the Opposition Division rejected the opposition in its entirety on the ground that Biotronik had not demonstrated to the requisite legal standard genuine use of the earlier trade mark.

12      On 23 June 2010, Biotronik filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. On 30 August 2010, it lodged written pleadings with OHIM, setting out the grounds of the appeal. Appended to the pleadings were two additional items of evidence intended to demonstrate genuine use of the earlier trade mark; that evidence consisted in a formal written statement made by one of Biotronik’s Vice-Presidents and a print-out from the Internet site of a digital newspaper confirming the date of publication of one of the annexes provided to the Opposition Division.

13      By decision of 27 May 2011 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the decision of the Opposition Division and dismissed the appeal.

14      Having established that, as the Opposition Division had found, the period in respect of which Biotronik had to prove genuine use of the earlier trade mark ran from 21 January 2003 to 20 January 2008, the Board of Appeal found, inter alia, that the evidence submitted by Biotronik, whether assessed on an individual basis or as a whole, could not be regarded as proof of genuine use of the earlier trade mark. The Board of Appeal also found that, even though Biotronik had shown that it had manufactured, and to some extent marketed, a device known as the ‘CardioMessenger’ that can be used by patients suffering from heart conditions, it had not produced – in relation to Germany, the country of reference – solid evidence concerning, in particular, turnover or advertising, or the nature and extent of the use. It had been open to Biotronik to provide evidence in various forms, such as invoices, price lists, catalogues or other such items, which it had failed to do. Lastly, the Board of Appeal found that the statement which Biotronik had submitted, for the first time, before the Board of Appeal did not sufficiently compensate for the lack of evidence of genuine use of the earlier trade mark.

15      The Second Board of Appeal accordingly held that Biotronik had not established to the requisite legal standard genuine use of the earlier trade mark in Germany during the relevant period, and dismissed the appeal.

 Forms of order sought

16      Biotronik claims that the Court should:

–        annul the contested decision;

–        uphold the opposition or, in the alternative, refer the case back to OHIM for further consideration;

–        order OHIM to pay the costs.

17      OHIM contends that the Court should:

–        dismiss the action;

–        order Biotronik to pay the costs.

 Law

 Admissibility of the documents produced for the first time before the Court

18      OHIM contends that Annexes K.26 and K.27 to the application – that is, the sales figures and the invoices, respectively – must be declared inadmissible as they were not submitted during the administrative procedure before OHIM.

19      According to settled case-law, the purpose of bringing an action before the Court is to secure review of the legality of the decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009. It follows from that provision that facts not submitted by the parties before the adjudicatory bodies of OHIM cannot be submitted at the stage of the action before the Court and that the Court cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision (see Case C‑214/05 P Rossi v OHIM [2006] ECR I‑7057, paragraphs 50 to 52, and Case C‑16/06 P Les Éditions Albert René v OHIM [2008] ECR I‑10053, paragraphs 136 to 138).

20      In the circumstances, the abovementioned annexes, produced for the first time before the Court, must consequently be declared inadmissible.

 Admissibility of the second plea in law

21      In support of its application, Biotronik relies on two pleas in law. It is appropriate first to examine the admissibility of the second plea in law. By this plea, Biotronik alleges infringement of Article 41(1)(a) and Article 8(1)(b) of Regulation No 207/2009, in so far as there is a likelihood of confusion between the earlier trade mark and the trade mark applied for.

22      It is to be noted in this connection that, given the lack of proof of genuine use of the earlier trade mark, the Board of Appeal did not address the question whether there was a likelihood of confusion between the earlier trade mark and the trade mark applied for. In the context of the present proceedings, therefore, the second plea in law is not admissible.

 Substance

23      By its first plea in law, Biotronik alleges infringement of Article 42(2) and (3) of Regulation No 207/2009, read in conjunction with 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), as amended.

24      Biotronik claims, in essence, that the Board of Appeal erred in its assessment of the material provided as evidence of genuine use.

25      OHIM disputes those arguments.

26      Under Article 42(2) of Regulation No 207/2009, if the applicant for registration of a trade mark so requests, the proprietor of an earlier Community trade mark – or, under Article 42(3), the proprietor 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 Community trade mark application, the earlier trade mark has been put to genuine use in the Community 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 he cites as justification for his opposition, or that there are proper reasons for non-use, provided that the earlier trade mark has at that date been registered for not less than five years. In the absence of proof to that effect, the opposition is to be rejected. If the earlier trade mark has been used in relation to part only of the goods or services for which it is registered, it is to be deemed, for the purposes of the examination of the opposition, to be registered in respect only of that part of the goods or services.

27      According to settled case-law, the ratio legis of the requirement that the earlier mark must have been put to genuine use – failing which there must be a proper economic reason relating to its actual function on the market – if it is to be capable of being relied upon in opposition to a Community trade mark application is to restrict the number of conflicts that could arise between two marks (see, to that effect, Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraph 38, and judgment of 30 November 2009 in Case T‑353/07 Esber v OHIM – Coloris Global Coloring Concept (COLORIS), not published in the ECR, paragraph 20).

28      Under Rule 22(3) of Regulation No 2868/95, proof of use must relate to ‘the place, time, extent and nature of use of the opposing trade mark’.

29      There is ‘genuine use’ of a trade 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; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, Case C‑40/01 Ansul [2003] ECR I‑2439, paragraph 43).

30      In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (VITAFRUIT, paragraph 39; see also, to that effect and by analogy, Ansul, paragraph 37). Moreover, a sign is of more than mere local significance where its impact is not confined to a small part of the territory in which it is protected under the applicable national law (judgment of 30 September 2010 in Case T‑534/08 Granuband v OHIM – Granuflex (GRANUflex), not published in the ECR, paragraph 19).

31      For the purposes of assessing whether use of the earlier 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 (VITAFRUIT, paragraph 40; see also, by analogy, Ansul, paragraph 43).

32      Although the concept of genuine use excludes all minimal and insufficient use as the basis for a finding that a mark is being put to real and effective use on a given market, the requirement of genuine use nevertheless does not entail the need to assess an undertaking’s commercial success or review its economic strategy; nor is it intended to restrict trade mark protection to cases where large-scale commercial use has been made of the marks (see, to that effect, Case T‑194/03 Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II‑445, paragraph 32).

33      In order to examine whether use of an earlier trade mark is genuine, an overall assessment must be carried out which takes account of all the relevant factors in the particular case. Genuine use of a trade mark, it is true, cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (see, to that effect, COLORIS, paragraph 24). However, it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, considered in isolation, would be insufficient to constitute proof of the accuracy of those facts (see, to that effect, judgment of 17 April 2008 in Case C‑108/07 P Ferrero Deutschland v OHIM, not published in the ECR, paragraph 36).

34      The question whether the Board of Appeal was right in considering that the evidence adduced by Biotronik does not show genuine use of the CardioMessenger mark for the goods referred to in paragraph 5 above must be assessed in the light of those considerations.

35      In the present case, the Board of Appeal found, in paragraph 19 of the contested decision, upholding the decision of the Opposition Division, that the evidence adduced by Biotronik, whether assessed on an individual basis or as a whole, could not be regarded as solid and reliable proof of use of the earlier trade mark.

36      That conclusion must be upheld.

37      In this connection, it should be observed that, as can be seen from paragraphs 20 to 25 and 28 of the contested decision, the items of evidence provided by Biotronik concerning the use of the trade mark CardioMessenger in Germany, for the period between 21 January 2003 and 20 January 2008, are the following:

–        a presentation entitled ‘Product Roadmap Health Services 2003’, written by Mr Hans-Jürgen Wildau, one of Biotronik’s Vice-Presidents;

–        scientific publications referring in places to the ‘CardioMessenger’ device;

–        extracts from an instruction manual for the ‘CardioMessenger’ product;

–        a number of Internet pages;

–        packaging for products intended for a ‘CardioMessenger’ kit;

–        a formal statement giving the number of patients worldwide (39 481) who were provided between 2000 and 2009 with the ‘CardioMessenger’ product as an integral part of a ‘Home Monitoring’ system, of whom 17% were in Germany (6 700 patients).

38      As regards the training or presentation document written by Mr Hans-Jürgen Wildau and dating from 2003, it is apparent that Biotronik does not contest the finding made by the Board of Appeal that that document was intended for in-house purposes only. In any event, as the Board of Appeal stated, the document provides no information concerning the fact that the ‘CardioMessenger’ device was placed on the market in Germany in 2003.

39      Similarly, as regards the scientific publications in the journal Das Krankenhaus (published in 2003), and in a number of specialist journals – Kardiotechnik (published in 2003), MT-Info Medizintechnik (published in 2004), Journal of Electrocardiology (published in 2004) and Zeitschrift für Kardiologie (published in 2005) – as well as the article which appeared in the Berliner Morgenpost newspaper (in 2005), these establish the existence and function of a device called ‘CardioMessenger’, but do not provide any indication as to the extent of use. Admittedly, the publications mention a new method of remote cardiac monitoring, including Biotronik’s ‘Home Monitoring’ system; they describe how such a system operates; they describe a pilot phase; and they mention the fact that, in 2003, 1 500 patients worldwide already had a device which made remote monitoring possible and that research had shown the positive experience felt by those patients (sense of security). However, those publications do not really refer to the CardioMessenger trade mark itself. Furthermore, even if it is true that in 2003 there were already 1 500 patients worldwide using a remote monitoring system, the number of patients established solely in Germany, the relevant country, is not given. Nor is it stated in that context that the 1 500 patients in question were using Biotronik’s system. Similarly, the only information to emerge from the article published in the journal Ärzte Zeitung in 2005 is that 14 000 implanted devices existing in Germany are defined as having a ‘Telemonitoring-Funktion’, there being no express reference to the device known under the trade mark CardioMessenger; nor is there any express reference to the extent and nature of use. The documents mentioned above thus contain no specific details regarding the volume of sales, advertising or the extent of use.

40      The same is true of the extracts from an instruction manual for the CardioMessenger product, the Internet pages and the product packaging. In this connection, it should be noted that that manual relates only to the way in which the patient is to use the product and that it does not provide any additional solid evidence of use of the trade mark. It is not possible to extract from the manual the information necessary for verifying that use, such as the place of sale, the sales systems and the quantities of goods sold. That finding applies also to the product packaging for the CardioMessenger kit and to the Internet pages.

41      Lastly, as regards the formal statement referred to in paragraph 28 of the contested decision, it should be observed that that statement does indeed indicate the number of patients worldwide who, between 2000 and 2009, were provided with the ‘CardioMessenger’ device as an integral part of a ‘Home Monitoring’ system and the percentage of those patients who were in Germany. However, as the Board of Appeal noted, that formal statement fails to set out essential information such as the market price for the devices, the nature of the distributors, the market share of the product, sales and advertising turnover, the sales outlets in Germany or the existence of customers. In any case, it should be borne in mind that the value of a statement from the applicant, such as the statement under consideration, is lower than the value of a statement from an independent source and the information contained in it must be borne out by other information, which is not the position in the present case (see, to that effect, Case T‑303/03 Lidl Stiftung v OHIM – REWE–Zentral (Salvita) [2005] ECR II‑1917, paragraph 45).

42      It follows from the above, therefore, that the Board of Appeal was right in finding that proof of use of the trade mark CardioMessenger had not been produced. Consequently, the first plea in law must be rejected as unfounded.

43      It follows from all the foregoing that the action must be dismissed in its entirety, without it being necessary to rule on the second head of claim that the opposition be upheld or that the case be referred back to OHIM for further consideration (see, to that effect, judgment of 8 December 2011 in Case T‑586/10 Aktieselskabet af 21. november 2001 v OHIM – Parfums Givenchy (only givenchy), not published in the ECR, paragraph 67 and the case-law cited).

 Costs

44      Under Article 87(2) of the Rules of Procedure of the Court, 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 OHIM.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Biotronik SE & Co. KG to pay the costs.

Kanninen

Berardis

Wetter

Delivered in open court in Luxembourg on 25 October 2013.

[Signatures]