Judgment of the General Court (Fifth Chamber) of 17 November 2017.Endoceutics, Inc. v European Union Intellectual Property Office.EU trade mark — Revocation proceedings — EU word mark FEMIBION — Partial revocation — Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) — Proof of genuine use of the mark — Classification of the goods in respect of which genuine use has been shown.Case T-802/16.

Judgment // 17/11/2017 // 2 min read
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Judgment of the General Court (Fifth Chamber) of 17 November 2017 – Endoceutics v EUIPO – Merck (FEMIBION)

(Case T-802/16)

(EU trade mark — Revocation proceedings — EU word mark FEMIBION — Partial revocation — Article 51 (1) (a) of Regulation (EC) No 207/2009 (now Article 58 (1) (a) of Regulation (EU) 2017/1001) — Proof of genuine use of the mark — Classification of the goods in respect of which genuine use has been shown)

  1. EU trade mark–Surrender, revocation and invalidity–Causes of revocation–Absence of genuine use of a trade mark–Proof of use of the earlier mark–Genuine use–Meaning–Criteria for assessment

[Council Regulation No 207/2009, Arts 15 (1) and 51 (1) (a); Commission Regulation No 2868/95, Art. 1, Rules 22(3) and (4) and 40(5))

(see paras 18-20)

  1. EU trade mark–Surrender, revocation and invalidity–Causes of revocation–Absence of genuine use of a trade mark–Proof of use of the earlier mark–Partial use–Effect–Concept of (part of the goods or services) covered by the registration

(Council Regulation No 207/2009, Arts 15 (1) (a) and 51 (2))

(see para 22)

  1. EU trade mark–Appeals procedure–Action before the EU judicature–Power of the General Court to alter the contested decision–Limits

(Council Regulation No 207/2009, Art. 65(3))

(see paras 46, 47)

Re:

ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 July 2016 (Case R 1608/2015-1), concerning revocation proceedings between Endoceutics and Merck.

Operative part

The Court:

  1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 July 2016 (Case R 1608/2015-1), in so far as it maintained registration of the EU trade mark for ‘pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition’;

  2. Dismisses the action as to the remainder;

  3. Orders Merck KGaA to pay, in addition to its own costs, half of the costs incurred by Endoceutics Inc. before the General Court and the costs incurred by Endoceutics before the Board of Appeal;

  4. Orders Endoceutics to bear half of its own costs;

  5. Orders EUIPO to bear its own costs.

Trade marks