Pharmaselect International v EUIPO - OmniActive Health Technologies (LUTAMAX) (EU trade mark - Judgment) [2023] EUECJ T-221/22 (20 December 2023)

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(EU trade mark – Revocation proceedings – EU word mark LUTAMAX – Genuine use of the mark – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) – Obligation to state reasons – Article 94(1) of Regulation 2017/1001)

Pharmaselect International Beteiligungs GmbH, established in Vienna (Austria), represented by S. Jackermeier, D. Wiedemann and M. Ringer, lawyers,

OmniActive Health Technologies Ltd, established in Mumbai (India), represented by M. Hawkins, T. Dolde and C. Zimmer, lawyers,

European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and D. Gája, acting as Agents,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court in Case T‑221/22, being

OmniActive Health Technologies, established in Mumbai, represented by M. Hawkins, T. Dolde and C. Zimmer, lawyers,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court in Case T‑242/22, being

Pharmaselect International Beteiligungs, established in Vienna, represented by S. Jackermeier, D. Wiedemann and M. Ringer, lawyers,

composed of A. Kornezov, President, K. Kecsmár (Rapporteur) and S. Kingston, Judges,

having regard to the written part of the procedure, in particular the decision of 24 February 2023 joining Cases T‑221/22 and T‑242/22 for the purposes of the oral procedure and of the decision closing the proceedings,

1 By their actions under Article 263 TFEU, Pharmaselect International Beteiligungs GmbH (‘PIB’), in Case T‑221/22, and OmniActive Health Technologies Ltd (‘OHT’), in Case T‑242/22, seek the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 February 2022 (Joined Cases R 524/2021-1 and R 649/2021-1) (‘the contested decision’).

2 On 13 May 2005, PIB obtained the registration of the EU trade mark in respect of the word sign LUTAMAX.

3 After a partial surrender, which was registered on 25 April 2016, the goods in respect of which the registration was retained were in Classes 5, 29 and 30 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 corresponded, for each of those classes, to the following description:

– Class 5: ‘Medicines for human and animal use, traditional plant remedies and treatments for human and animal use, dietetic substances adapted for medical use, dietary supplements adapted for medical or dietetic use, vitamin preparations adapted for medical or dietetic use, medicinal teas; eye care preparations (for pharmaceutical purposes), solutions and cleaning preparations for contact lenses; none of the aforesaid goods for veterinary purposes’;

– Class 29: ‘Dietetic foodstuffs and food supplements not adapted for medical use (included in class 29); milk, milk products and milk drinks (milk predominating); powdered milk for human consumption, in particular powdered full-cream milk, skimmed milk and buttermilk; whey, whey products, and whey beverages, whey predominating; preserved, dried and cooked fruits and vegetables; edible oils and fats’;

– Class 30: ‘Dietetic foodstuffs and food supplements not adapted for medical use (included in class 30)’.

4 On 16 March 2015, OHT filed an application for revocation pursuant to Article 51(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), on the ground that the contested mark had not been put to genuine use in the European Union in connection with the goods in respect of which it had been registered within a continuous period of five years.

5 By decision of 11 February 2021, the Cancellation Division maintained PIB’s rights in the contested mark solely in respect of the goods in Class 5 corresponding to the following description: ‘Dietary supplements adapted for medical or dietetic use for the treatment of age-related macular degeneration; eye care preparations (for pharmaceutical purposes) for the treatment of age-related macular degeneration; none of the aforesaid goods for veterinary purposes’. It declared that PIB’s rights in the contested mark were revoked as from 16 March 2015 with regard to all the other goods in respect of which it was registered.

6 On 23 March 2021, PIB filed a notice of appeal, an appeal which was registered under the number R 524/2021-1, against the Cancellation Division’s decision in so far as the contested mark had been partially revoked.

7 On 9 April 2021, OHT also filed a notice of appeal, an appeal which was registered under the number R 649/2021-1, in so far as its application for revocation had been partially rejected.

8 By the contested decision, the Board of Appeal partially annulled the Cancellation Division’s decision, to the extent that it had ordered that the contested mark remain on the register in respect of the goods which have been referred to in paragraph 5 above. First of all, the Board of Appeal ordered that the contested mark remain on the register in respect of the goods in Class 5 corresponding to the following description: ‘Dietary supplements adapted for medical or dietetic use for supporting eye health, none of the aforesaid goods for veterinary purposes’. Next, the Board of Appeal revoked, as from 16 March 2015, PIB’s rights in respect of the goods in Class 5 corresponding to the following description: ‘Eye care preparations (for pharmaceutical purposes), none of the aforesaid goods for veterinary purposes’. Lastly, the Board of Appeal dismissed the appeals as to the remainder.

– Class 5: ‘Medicines for human and animal use; dietetic substances adapted for medical use; dietary supplements adapted for medical or dietetic use; vitamin preparations adapted for medical or dietetic use; eye care preparations (for pharmaceutical purposes); none of the aforesaid goods for veterinary purposes’;

– Class 29: ‘Dietetic foodstuffs and foods supplements not adapted for medical use (included in Class 29); edible oils and fats’;

– Class 30: ‘Dietetic foodstuffs and food supplements not adapted for medical use (included in Class 30)’.

– order PIB, in Case T‑221/22, and OHT, in Case T‑242/22, to pay the costs incurred by EUIPO in the event that the parties are summoned to attend a hearing.

A. The issue of whether certain of PIB’s heads of claim in Cases T‑221/22 and T‑242/22 are admissible

14 It must be pointed out at the outset that, given that ‘upholding’ the contested decision is tantamount to dismissing the action, PIB’s first head of claim in Case T‑242/22 must be understood as seeking, in essence, the dismissal of the action (see judgment of 13 December 2016, Apax Partners v EUIPO – Apax Partners Midmarket (APAX), T‑58/16, not published, EU:T:2016:724, paragraph 15 and the case-law cited).

15 In the first place, EUIPO submits that, since the Board of Appeal partially upheld PIB’s appeal, the part of the contested decision ordering that the contested mark remain registered for some of the goods in Class 5 does not adversely affect PIB, which therefore has no interest in bringing proceedings in that regard. It contends that, consequently, PIB’s first head of claim in Case T‑221/22 is, with respect to the part of the contested decision which does not adversely affect it, inadmissible.

16 In the second place, OHT submits that, by its second head of claim in Case T‑221/22, PIB is seeking a declaration that the contested mark is to remain registered for various goods in Classes 5, 29 and 30. It contends that the Court has, however, no jurisdiction to deliver declaratory judgments and that PIB’s second head of claim in Case T‑221/22 must therefore be rejected as inadmissible.

17 In that regard, it must be stated that, in the light of the principle that heads of claim must be interpreted in a purposive manner (see, to that effect, judgment of 14 November 2017, Alfamicro v Commission, T‑831/14, not published, EU:T:2017:804, paragraph 50, and order of 13 March 2020, Aurora v CPVO – SESVanderhave (M 02205), T‑278/19, not published, EU:T:2020:113, paragraph 48) and in the light of the plea in law and arguments relied on by PIB in Case T‑221/22, PIB’s first two heads of claim in that case must be read in conjunction with one another, as its representative confirmed at the hearing, and must be interpreted as seeking, in essence, the annulment of the contested decision in so far as the Board of Appeal declared PIB’s rights in the contested mark to be partially revoked.

18 Consequently, PIB’s first and second heads of claim in Case T‑221/22 must be held to be admissible.

19 In Case T‑221/22, PIB relies on a single plea in law, which alleges infringement of Article 58(1)(a) of Regulation 2017/1001 and consists of six parts.

20 In Case T‑242/22, OHT relies on three pleas in law, the first of which alleges infringement of the obligation to state reasons contained in Article 94(1) of Regulation 2017/1001, the second of which alleges infringement of Article 58(1)(a) of that regulation and the third of which alleges infringement of Article 58(2) of that regulation.

21 It must be pointed out at the outset that PIB, OHT and EUIPO, in their respective written pleadings, and the Board of Appeal, in the contested decision, refer to the provisions of 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). However, given the date on which the application for revocation in question was filed, namely 16 March 2015, which is decisive for the purposes of identifying the applicable substantive law, the present case is governed by the substantive provisions of Regulation No 207/2009, in the version applicable on that date. Since the provisions of Article 58(1)(a) of Regulation 2017/1001 are identical to those of Article 51(1)(a) of Regulation No 207/2009, the references to the former article must be understood as referring to the latter article (see, to that effect, judgments of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraphs 3 and 25, and of 12 January 2022, Laboratorios Ern v EUIPO – Malpricht (APIRETAL), T‑160/21, not published, EU:T:2022:2, paragraph 10).

22 Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.

23 Lastly, it is common ground that the contested mark has been used only in connection with a single product, which comes in capsule form at a dosage of 10 mg or 20 mg of lutein to be ingested on a daily basis, as part of a balanced diet, is intended for the dietetic treatment of age-related macular degeneration (AMD), a specific eye disease, and is also recommended before and after cataract operations or as a general precautionary measure to prevent the onset of AMD (‘the product at issue’).

24 OHT submits that the contested decision infringes the obligation to state reasons contained in Article 94(1) of Regulation 2017/1001. It argues that that decision does not make it possible to determine the reasons why the Board of Appeal considered that the product at issue was a ‘dietary supplement adapted for medical or dietetic use’ and not a ‘dietetic food for special medical purposes’.

25 OHT claims that the ‘dietary supplements adapted for medical or dietetic use’, for which the contested mark is registered, and the ‘dietetic food for special medical purposes’, for which the contested mark is, in its view, used, have different meanings, because, in the relevant field of business, the terms refer to distinct product groups. It thus submits that the former are governed by Directive 2002/46/EC of the European Parliament and of the Council of 10 June 2002 on the approximation of the laws of the Member States relating to food supplements (OJ 2002 L 183, p. 51), whereas the latter was subject to Commission Directive 1999/21/EC of 25 March 1999 on dietary foods for special medical purposes (OJ 1999 L 91, p. 29). It argues that the Board of Appeal erred in rejecting the relevance of those directives, thereby misinterpreting Article 33(5) of Regulation 2017/1001, without explaining why the product at issue has to be regarded as a ‘dietary supplement adapted for medical or dietetic use’. Furthermore, it contends that the Board of Appeal stated that the product is aimed at the dietary treatment of AMD, whereas dietary supplements, such as the product at issue, are not meant to treat diseases, which also follows from Directive 2002/46. In addition, it submits that, except in the rare case of multi-purpose goods, the use of a trade mark in relation to a particular product can constitute genuine use only for one category of goods and it is thus necessary to focus on the main purpose of the product at issue. Lastly, it claims that the Board of Appeal did not clearly establish that the evidence shows use of the contested mark for ‘dietary supplements adapted for medical or dietetic use’, because paragraph 46 of the contested decision found that there had been use in connection with ‘dietary supplements with a medical or dietetic purpose’.

27 In that regard, it must be borne in mind that the obligation to state reasons, an obligation which is incumbent on the Board of Appeal and which stems from, inter alia, Article 94(1) of Regulation 2017/1001, has two purposes: (i) to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and (ii) to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgment of 19 December 2019, Currency One v EUIPO – Cinkciarz.pl (CINKCIARZ), T‑501/18, EU:T:2019:879, paragraph 67 and the case-law cited).

28 That obligation to state reasons, which also derives from Article 296 TFEU, has been the subject of settled case-law according to which the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question. The question whether the statement of reasons for a decision satisfies those requirements must be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see, to that effect, judgment of 6 October 2021, Dermavita Company v EUIPO – Allergan Holdings France (JUVEDERM), T‑372/20, not published, EU:T:2021:652, paragraph 16 and the case-law cited).

29 Furthermore, the obligation to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision. In addition, the reasoning may be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its review (see, to that effect, judgment of 6 October 2021, JUVEDERM, T‑372/20, not published, EU:T:2021:652, paragraph 17 and the case-law cited).

30 Moreover, the obligation to state reasons is an essential procedural requirement, which must be distinguished from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect. It follows that objections and arguments intended to establish that a contested measure is not well founded are irrelevant in the context of a plea in law alleging an inadequate statement of reasons or a lack of such a statement (see judgment of 8 June 2022, Apple v EUIPO – Swatch (THINK DIFFERENT), T‑26/21 to T‑28/21, not published, EU:T:2022:350, paragraph 51 and the case-law cited).

31 In the present case, contrary to what OHT claims, the contested decision sets out to the requisite legal standard the reasons why the Board of Appeal took the view that the product at issue had to be regarded as falling within the category of ‘dietary supplements adapted for medical or dietetic use’ in Class 5 in connection with which genuine use had been claimed.

32 The Board of Appeal found that, since the product at issue served to supplement a human diet and had a medical or dietetic purpose, namely, inter alia, the dietary treatment of AMD, it fell within the category of ‘dietary supplements adapted for medical or dietetic use’ in Class 5 as registered. In that regard, it rejected OHT’s arguments based on Directive 1999/21 and Directive 2002/46, stating that those directives were not pertinent with regard to whether PIB had proved genuine use of the contested mark in connection with ‘dietary supplements adapted for medical or dietetic use’. It also found that the fact that the product at issue was designated as ‘dietetic food for special medical purposes’ in Austria, Germany, the Czech Republic and Slovakia did not preclude it from being regarded as a ‘dietary supplement adapted for medical or dietetic use’ in accordance with Class 5, since it was clear from the evidence submitted by PIB that that product was also described on the packaging as being a dietary supplement with a medical or dietetic purpose.

33 It must therefore be held that OHT’s arguments, which have been set out in paragraphs 24 and 25 above, are, in actual fact, indissociable from the criticisms regarding the merits of the reasoning in the contested decision, criticisms which are, moreover, the subject of the second and third pleas put forward by OHT in Case T‑242/22. No infringement of the obligation to state reasons can therefore be held to exist in that regard.

34 In addition, it must be pointed out that, in the context of the contested decision, the terms ‘use’ and ‘purpose’ were used by the Board of Appeal, in essence, as synonyms. Although, in paragraph 46 of the contested decision, the Board of Appeal referred to the words ‘for medical purposes’ appearing on the packaging of the product at issue, it found in the same paragraph that those words did not preclude that product from being regarded as a ‘dietary supplement adapted for medical or dietetic use’, in respect of which the contested mark was registered. Accordingly, the statement of reasons for the contested decision cannot be vitiated by any inconsistency in that regard.

35 It follows that, contrary to what OHT claims, the Board of Appeal explained to the requisite legal standard in the contested decision the reasons why the product at issue had to be regarded as falling within the category of ‘dietary supplements adapted for medical or dietetic use’ in Class 5 with regard to which genuine use had been claimed by the proprietor of the contested mark.

36 Consequently, the first plea in Case T‑242/22 must be rejected as unfounded.

37 OHT submits that, pursuant to Article 51(1)(a) of Regulation No 207/2009, the Board of Appeal should have found that the terms ‘dietary supplements adapted for medical or dietetic use’ and ‘dietetic food for special medical purposes’ were not synonymous and that they belonged to different product groups governed by different legislative acts. It takes the view that, contrary to what the Board of Appeal found, the differences between those categories of goods do not merely concern marketing and labelling requirements, but rather their nature and purpose. It contends that only ‘dietetic food for special medical purposes’ can be legitimately presented as having beneficial properties in relation to diseases, such as AMD. Furthermore, it submits that none of the items of evidence submitted by PIB designates the product at issue solely as a food supplement. It argues that, while an incorrect designation does not change the nature of that product, there is nothing to indicate that it must be considered to be a ‘food supplement’, whereas it must clearly be designated as being a ‘dietetic food for special medical purposes’. It submits that, since that latter term is not included in the list of goods in respect of which the contested mark is registered, the Board of Appeal should have concluded that that mark had not been put to genuine use.

39 In the present case, the Board of Appeal rejected OHT’s argument that the goods in connection with which genuine used had been shown were, at best, ‘dietetic food for special medical purposes’, for the purposes of Directive 1999/21, and not ‘dietary supplements for medical use’ governed by Directive 2002/46. The Board of Appeal found, inter alia, that the aforementioned directives were not pertinent for the purposes of examining the question of which were the goods in connection with which the contested mark had actually been used.

40 In that regard, it must be borne in mind that, in accordance with the case-law of the Court of Justice, it is not appropriate generally to exclude from the assessment of genuine use of a trade mark, within the meaning of Article 15 of Regulation No 207/2009, the taking into consideration of provisions of EU law concerning both the goods in respect of which that mark was registered and the goods in respect of which it is actually used, for the purposes of ascertaining whether these are the same. According to the Court of Justice, such provisions may, regard being had to the particular circumstances of the case at hand, be decisive for the classification of those goods (see, to that effect, order of 3 December 2020, Dermavita v EUIPO, C‑400/20 P, not published, EU:C:2020:997, paragraph 17).

41 Consequently, it must be held, as OHT submits in Case T‑242/22, that the Board of Appeal erred in law in finding, in essence, in paragraphs 44 and 45 of the contested decision, that the abovementioned directives were ‘not pertinent’ for the purposes of ascertaining the goods in connection with which the contested mark had been put to genuine use.

42 That finding is not called into question by EUIPO’s argument that, for the purposes of the registration of an EU trade mark, goods and services must be classified in accordance with the Nice Classification.

43 It is indeed true that, according to Rule 2(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 33(1) of Regulation 2017/1001), the classification to be applied for the purposes of the registration of a trade mark is the Nice Classification. Furthermore, under Rule 2(2) of that regulation (reproduced, in essence, in Article 33(2) of Regulation 2017/1001), the list of goods and services is to 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.

44 It follows that, in particular, the classification of a product according to other rules of EU law is not in principle decisive with regard to its classification for the purposes of the registration of an EU trade mark. The Court has already held that, although the EU legislative measures referred to by the applicant are of primary importance for the sector concerned, they do not, however, necessarily have an influence on the way in which 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 6 October 2021, JUVEDERM, T‑372/20, not published, EU:T:2021:652, paragraph 38 and the case-law cited).

45 However, it must be borne in mind that the classification of goods and services under the Nice Agreement is, in essence, designed to reflect the needs of the market and not to impose any artificial segmentation of the goods. Consequently, the class headings contain ‘general indications’ relating to the sector within which the goods or services ‘in principle’ fall. Likewise, it must be borne in mind that the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes. The purpose of that classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. Moreover, the Nice Classification cannot determine, in itself, the nature and characteristics of the goods at issue (see judgment of 11 January 2023, Hecht Pharma v EUIPO – Gufic BioSciences (Gufic), T‑346/21, EU:T:2023:2, paragraph 94 and the case-law cited).

46 The relevant question in the present case, for the purposes of assessing genuine use under trade mark law, is whether the goods in connection with which the mark is used are the same as the goods in respect of which the mark was registered (see judgment of 11 January 2023, Gufic, T‑346/21, EU:T:2023:2, paragraph 98 and the case-law cited).

47 Consequently, although the directives in question do not necessarily have an influence on the manner in which the product is classified in the Nice Classification, they may be relevant, or even decisive, as regards the question of which is the type of goods in connection with which the contested mark has actually been used.

48 Moreover, the error in law which has been established in paragraph 41 above is not capable of leading to the annulment of the contested decision since it had no effect on the conclusion which the Board of Appeal reached regarding the definition of the product in connection with which genuine use had been proved (see, to that effect, judgment of 3 June 2015, Giovanni Cosmetics v OHIM – Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraph 135 (not published) and the case-law cited).

49 Article 1(2) of Directive 1999/21 defines ‘dietary foods for special medical purposes’ as ‘a category of foods for particular nutritional uses specially processed or formulated and intended for the dietary management of patients and to be used under medical supervision. They are intended for the exclusive or partial feeding of patients with a limited, impaired or disturbed capacity to take, digest, absorb, metabolise or excrete ordinary foodstuffs or certain nutrients contained therein or metabolites, or with other medically determined nutrient requirements, whose dietary management cannot be achieved only by modification of the normal diet, by other foods for particular nutritional uses, or by a combination of the two’.

50 As regards ‘food supplements’, they are defined in Article 2(a) of Directive 2002/46 as ‘foodstuffs the purpose of which is to supplement the normal diet and which are concentrated sources of nutrients or other substances with a nutritional or physiological effect, alone or in combination, marketed in dose form, namely forms such as capsules, pastilles, tablets, pills and other similar forms, sachets of powder, ampoules of liquids, drop dispensing bottles, and other similar forms of liquids and powders designed to be taken in measured small unit quantities’.

51 In paragraph 43 of the contested decision, the Board of Appeal found that ‘dietary supplements’ were substances that might or might not be nutritional, such as proteins, vitamins, trace elements, herbs, dietary fibres, glucose and enzymes, in the form of pills, capsules, tablets, powders or liquids. It added that dietary supplements could be used to supplement a normal diet or just because they were considered beneficial for the health.

52 It follows that the Board of Appeal, in essence, relied on a definition of the concept of ‘dietary supplements’ which was very similar to that resulting from Directive 2002/46.

53 In the present case, it is common ground between the parties that the product at issue is a product which has a medical or dietetic purpose and is used to supplement a human diet and that it is marketed in capsule form. In addition, it is stated on the packaging of that product that it does not replace a balanced diet and that it is not suitable as a sole source of nutrition (supplement for a balanced diet). What is more, it is not apparent from the evidence that it is intended for patients with a limited, impaired or disturbed capacity to take, digest, absorb, metabolise or excrete ordinary foodstuffs, a point which was, moreover, confirmed by PIB at the hearing.

54 The product at issue therefore corresponds, in essence, to the definition of ‘food supplements’ resulting from Directive 2002/45 and not to that of ‘dietary foods for special medical purposes’ resulting from Directive 1999/21.

55 Consequently, it must be held that the error in law which has been established in paragraph 41 above has no bearing on the merits of the conclusion reached by the Board of Appeal, namely that the product at issue had to be regarded as falling within the category of ‘dietary supplements adapted for medical or dietetic use’, as registered.

3. The first part of the single plea in Case T‑221/22 and the third plea in Case T‑242/22

57 In Case T‑221/22, PIB criticises the Board of Appeal for finding that it had proved genuine use, within Class 5, in connection with ‘dietary supplements adapted for medical or dietetic use for supporting eye health’ and not in connection with the whole category of ‘dietary supplements adapted for medical or dietetic use’. It submits that, in so doing, the Board of Appeal failed to have regard to, inter alia, the case-law according to which the use of a sign with regard to a product which is capable of falling within a broader category is sufficient to presume use for the whole of that category of goods. It argues that the proprietor of the contested mark also has a legitimate interest in expanding its range of goods or services for which its mark was registered. Furthermore, PIB contends that the Board of Appeal erred in applying by analogy the case-law relating to pharmaceutical products to the product at issue.

58 In Case T‑242/22, OHT submits that the Board of Appeal infringed Article 51(2) of Regulation No 207/2009 in finding that the therapeutic indication of the product at issue was not limited to the treatment of AMD. Accordingly, it takes the view that ‘cataract surgeries’ are thus mentioned only in one item of evidence, which PIB has not proved has been used in trade. It contends that, in any event, the use before and after cataract surgeries does not constitute the main purpose of the product at issue, but, at most, a subsidiary purpose.

59 EUIPO and OHT dispute PIB’s arguments in Case T‑221/22 and EUIPO and PIB dispute OHT’s arguments in Case T‑242/22.

60 In that regard, it must be borne in mind that Article 51(2) of Regulation No 207/2009 provides that, where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor are to be declared to be revoked in respect of those goods or services only.

61 The Court has already held that the provisions of Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001) allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use of the mark has been established (i) are a limitation on the rights which the proprietor of the earlier trade mark gains from his or her registration and (ii) must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his or her range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him or her. The same considerations also apply by analogy to the provisions of Article 51(2) of Regulation No 207/2009, relating to partial revocation (see judgment of 23 September 2020, Polfarmex v EUIPO – Kaminski (SYRENA), T‑677/19, not published, EU:T:2020:424, paragraph 112 and the case-law cited).

62 However, although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of that trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he or she has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. It must, in that regard, be observed that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (see judgment of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 115 and the case-law cited).

63 It is also apparent from the case-law that, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category (see judgment of 1 February 2023, Brobet v EUIPO – Efbet Partners (efbet), T‑772/21, not published, EU:T:2023:36, paragraph 59 and the case-law cited).

64 As regards the question whether goods are part of a coherent subcategory which is capable of being viewed independently, it is apparent from the case-law that, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. By contrast, the nature of the goods at issue and their characteristics are not, as such, relevant with regard to the definition of subcategories of goods or services (see judgment of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 116 and the case-law cited).

65 In that regard, the relevant question is whether a consumer who wishes to purchase a product or service falling within the category of goods or services covered by the trade mark in question will associate all the goods or services belonging to that category with that mark (judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 43).

66 In the present case, on the basis of the evidence submitted, the Board of Appeal pointed out that the purpose and intended use of the product at issue were not limited to the dietetic treatment of AMD, but that that product was also recommended before and after cataract surgeries as well as as a general precautionary measure to prevent the onset of AMD. Consequently, applying by analogy the case-law relating to the pharmaceutical sector, which takes into account the therapeutic indication of the goods, the Board of Appeal concluded that there was, among the goods in Class 5, an independent subcategory in respect of ‘dietary supplements adapted for medical or dietetic use for supporting eye health’, having regard to the case-law cited in paragraph 61 above.

67 In the light of the case-law which has been referred to above, it is important to assess whether the goods ‘Dietary supplements adapted for medical or dietetic use for supporting eye health’ constitute an independent subcategory in relation to the category of ‘dietary supplements adapted for medical or dietetic use’, so as to link the goods in connection with which, according to the Board of Appeal, genuine use of the mark has been proved to the category of goods covered by the registration of that mark (see, by analogy, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 41 and the case-law cited).

68 Accordingly, it is necessary to take into consideration the purpose and intended use of the product at issue. In that regard, it must be pointed out that, according to the Nice Agreement, which has been referred to in paragraph 3 above, dietary supplements adapted for medical or dietetic use are intended to supplement a normal diet and to improve human health. Similarly, the product at issue, which is intended for the dietetic treatment of AMD and is recommended before and after cataract operations, as well as as a general precautionary measure to prevent the onset of AMD, is intended to improve human health and, more specifically, the condition of the eyes, points which the parties do not call into question. Consequently, it must be observed that the purpose and intended use of ‘dietary supplements adapted for medical or dietetic use’ in Class 5 and the purpose and intended use of the product at issue are not essentially different.

69 Furthermore, since the aim of the criterion of the purpose and intended use of the goods in question is not to provide an abstract or artificial definition of subcategories of goods, that criterion must be applied coherently and specifically (see, to that effect, judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 50 and the case-law cited).

70 Accordingly, if the goods, such as dietary supplements adapted for medical or dietetic use, have several purposes and intended uses, determining whether a separate subcategory of goods exists by considering in isolation each of the purposes that those goods may have will not, contrary to what the Board of Appeal found, be possible. Indeed, such an approach would not enable independent subcategories to be identified coherently and would have the effect of limiting excessively the rights of the proprietor of the mark, inter alia in that his or her legitimate interest in expanding his or her range of goods or services for which his or her trade mark is registered would not sufficiently be taken into consideration (see, to that effect, judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 51 and the case-law cited).

71 As PIB submits, it is common that manufacturers of dietary supplements do not limit themselves to the production or distribution of a single product and that they might have a legitimate interest in being able to expand their range of goods by including dietary supplements relating to other aspects of human health. Accordingly, the relevant public wishing to purchase a product falling within the category of dietary supplements adapted for medical or dietetic use, which is covered by the contested mark, will associate all the goods or services belonging to that category with that mark within the meaning of the case-law cited in paragraph 65 above.

72 Furthermore, it must be pointed out that dietary supplements adapted for medical or dietetic use already constitute a subcategory in Class 5 of the Nice Agreement, which has been referred to in paragraph 3 above, a class which includes mainly pharmaceuticals and other preparations for medical or veterinary purposes.

73 Accordingly, it must be held that ‘dietary supplements adapted for medical or dietetic use’ constitute in themselves a sufficiently clear category which does not require division into subcategories (judgment of 12 July 2023, Trus v EUIPO – Unilab (ARTRESAN), T‑585/22, not published, EU:T:2023:392, paragraph 75). Consequently, the Board of Appeal’s finding that genuine use of the contested mark had been proved for ‘dietary supplements adapted for medical or dietetic use for supporting eye health’ is vitiated by an error in law which leads to the annulment of the contested decision in that regard.

74 That finding is not called into question by the Board of Appeal’s analogy, in paragraph 48 of the contested decision, with the pharmaceutical sector. It must be stated that it has already been held that dietary supplements may be consumed in order to prevent or cure medical conditions in the broad sense of the term or in order to balance nutritional deficiencies (see, to that effect, judgments of 23 January 2014, Sunrider v OHIM – Nannerl (SUN FRESH), T‑221/12, not published, EU:T:2014:25, paragraph 38, and of 5 October 2020, SBS Bilimsel Bio Çözümler v EUIPO – Laboratorios Ern (apiheal), T‑53/19, not published, EU:T:2020:469, paragraph 61). It must therefore be pointed out that, unlike pharmaceutical preparations, dietary supplements adapted for medical or dietetic use do not necessarily have a precise and specific therapeutic indication. The systematic identification of coherent subcategories within the category of ‘dietary supplements adapted for medical or dietetic use’ on the basis of their therapeutic indication must therefore be ruled out, since that type of product does not necessarily have such an indication.

75 Consequently, the first part of the single plea in Case T‑221/22 must be upheld and it must be held that the Board of Appeal infringed Article 51(2) of Regulation No 207/2009 in so far as it maintained the registration of the contested mark in respect of ‘dietary supplements adapted for medical or dietetic use, none of the aforesaid goods for veterinary purposes’ in Class 5 only with regard to the subcategory ‘For supporting eye health’.

76 By contrast, it is necessary to reject OHT’s line of argument, on which the third plea in Case T‑242/22 is based, that the Board of Appeal should have found that the therapeutic indication of the product at issue was limited to the treatment of AMD and, therefore, have maintained the rights of the proprietor of the contested mark only in respect of dietary supplements for that therapeutic indication alone. For the reasons set out in paragraphs 67 to 72 above, the third plea in Case T‑242/22 must be rejected.

77 Consequently, since the third plea in Case T‑242/22 has, like the other pleas which OHT has put forward in that case, been rejected, the action must be dismissed in its entirety.

4. The third, fourth and fifth parts of the single plea in Case T‑221/22

78 In the context of the third, fourth and fifth parts of its single plea in Case T‑221/22, first, PIB submits that the Board of Appeal erred in finding that ‘eye care preparations (for pharmaceutical purposes)’ were substances directly applied to the eye in the form of liquids or creams for the purposes of protection and maintenance. PIB also points out that, since the trade mark application was filed in German, the term ‘Mittel’, in the expression ‘Mittel zur Augenpflege (für pharmazeutische Zwecke)’, is a much broader term than the English term ‘preparation’, which was chosen by EUIPO, and should more appropriately be translated by the English term ‘product’. Moreover, it argues that ‘eye care preparations’ are goods which can be classified in the broad category of dietary supplements or, at least, partially overlap with it.

79 Secondly, PIB submits that the same arguments apply to ‘medicines for human and animals use’ and ‘dietetic substances for medical use’, in respect of which the Board of Appeal ruled out any genuine use. In that regard, it argues that the English version of the latter expression, ‘dietetic substances for medical use’, does not correspond to the German wording of the list of goods, which is ‘diätetische Erzeugnisse für medizinische Zwecke’. It contends that the German term ‘Erzeugnisse’ means ‘products’ and not ‘substances’, with the result that a correct translation would be ‘dietetic products adapted for medical use’, which would cover ‘dietetic foodstuffs adapted for medical use’.

80 Thirdly, PIB submits that, for the same reasons, it is wrong that its rights in the contested mark were revoked in respect of ‘vitamin preparations adapted for medical or dietetic use’. It also states that Lutamax products are considered to be vitamin preparations in some Member States of the European Union. It argues that the fact that the goods contain vitamins proves that there has been genuine use in connection with those goods.

82 In the present case, the Board of Appeal ruled out any genuine use of the contested mark, within Class 5, in connection with ‘eye care preparations (for pharmaceutical purposes), none of the aforesaid goods for veterinary purposes’, ‘medicines for human and animal use’, ‘dietetic substances adapted for medical use’ and ‘vitamin preparations adapted for medical or dietetic use’.

83 In that regard, it must be pointed out that, in the present case, PIB does not refer to composite goods which have a dual function but seeks to protect the same product under two different headings of the Nice Classification. However, a dual classification of the same product is not normally possible under Rule 2(2) of Regulation No 2868/95 (reproduced, in essence, in Article 33(2) of Regulation 2017/1001) (judgment of 18 November 2020, Allergan Holdings France v EUIPO – Dermavita (JUVEDERM ULTRA), T‑664/19, not published, EU:T:2020:547, paragraph 15).

84 In the present case, it must be pointed that the sole function of the product at issue is to supplement the diet of persons who suffer from eye disorders such as AMD or wish to prevent them and persons who have undergone cataract operations, a point which is not disputed by PIB. Furthermore, it is apparent from examining the previous arguments that the evidence of use was furnished with regard to ‘dietary supplements adapted for medical or dietetic use’ in Class 5. In the light, in particular, of the case-law which has been referred to in paragraphs 61 and 63 above, the Board of Appeal did not therefore have to find that that product fell within another category within Class 5, although proof of genuine use of the contested mark in connection with that category had not been furnished by the proprietor of the contested mark.

85 Accordingly, it must be held that the Board of Appeal did not err in ruling out any genuine use in connection with the categories in question, even taking into account the language in which the trade mark application had been filed, in accordance with Article 120(3) of Regulation No 207/2009.

86 Consequently, the third, fourth and fifth parts of the single plea in Case T‑221/22 must be rejected as unfounded.

87 First, PIB criticises the Board of Appeal for finding that the contested mark had not been used in connection with ‘dietetic foodstuffs and food supplements not adapted for medical use’ in Classes 29 and 30. It submits that the Board of Appeal erred in assuming that the product at issue cannot be a foodstuff because it has a medical purpose and does not constitute a sole source of nutrition. PIB states that it is legally required, in several countries in the European Union, to label its products with the term ‘foodstuff’ or its synonym ‘food’ and that reasons of legal certainty militate in favour of recognising that there has been use of the contested mark as such.

88 Secondly, as regards the goods in Class 29, PIB complains that the Board of Appeal did not take into account that the goods in connection with which use of the mark was shown contain relevant quantities of thistle oil and fat.

90 In the present case, the Board of Appeal found that no genuine use had been proved in connection with the goods in Classes 29 and 30.

91 In that regard, it must be borne in mind that, according to Rule 2(1) of Regulation No 2868/95 (now Article 33(1) of Regulation 2017/1001), the classification to be applied is the Nice Classification. Furthermore, pursuant to Rule 2(2) of that regulation (reproduced, in essence, in Article 33(2) of Regulation 2017/1001), the list of goods and services is to 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.

92 Consequently, it must be held that the Board of Appeal did not err in finding that the product at issue, in connection with which genuine use as ‘Dietary supplements adapted for medical or dietetic use’ had been proved, could not also fall within Class 29 or Class 30.

93 In those circumstances, the second and sixth parts of the single plea in Case T‑221/22 must be rejected as unfounded.

94 It follows from all of the foregoing that, since the first part of the single plea in Case T‑221/22 is well founded, point 2 of the operative part of the contested decision must be annulled in so far as the Board of Appeal maintained the registration of the contested mark in respect of ‘dietary supplements adapted for medical or dietetic use, none of the aforesaid goods for veterinary purposes’ in Class 5 only with regard to the subcategory ‘For supporting eye health’. It is also necessary to dismiss the remainder of the action in Case T‑221/22 and the action in Case T‑242/22.

95 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Article 134(2) of those rules provides that where there is more than one unsuccessful party the Court is to decide how the costs are to be shared. In accordance with Article 134(3) of those rules, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.

96 In the present proceedings, in Case T‑221/22, PIB has applied for EUIPO to be ordered to pay the costs, but has not, however, applied for the intervener be ordered to pay the costs. Furthermore, although one part of PIB’s action has been upheld, the remainder of the action has been dismissed. Consequently, it is appropriate to order each party to bear its own costs.

97 In Case T‑242/22, since EUIPO and PIB have applied for the applicant to be ordered to pay the costs, OHT must be ordered to bear its own costs and to pay the costs incurred by EUIPO and by PIB.

1. Annuls point 2 of the operative part of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 February 2022 (Joined Cases R 524/2021-1 and R 649/2021-1);

4. Orders Pharmaselect International Beteiligungs GmbH, EUIPO and OmniActive Health Technologies Ltd to bear their own respective costs in Case T‑221/22;

5. Orders, in Case T‑242/22, OmniActive Health Technologies to bear its own costs and to pay the costs incurred by EUIPO and by Pharmaselect International Beteiligungs.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Pharmaselect International v EUIPO - OmniActive Health Technologies (LUTAMAX) (EU trade mark - Judgment) [2023] EUECJ T-221/22 (20 December 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T22122.html Cite as: ECLI:EU:T:2023:858, EU:T:2023:858, [2023] EUECJ T-221/22

Court of Justice of the European Communities (including Court of First Instance Decisions)