Swemac Innovation AB v European Union Intellectual Property Office (T-287/17)

Contents

Judgment of the General Court (Ninth Chamber)7 February 2019^note(EU trade mark — Invalidity proceedings — EU word mark SWEMAC — Earlier national company name or trade name SWEMAC Medical Appliances AB — Relative ground for refusal — Limitation in consequence of acquiescence — Article 53(1)(c) of Regulation (EC) No 207/2009 (now Article 60(1)(c) of Regulation (EU) 2017/1001) — Likelihood of confusion — Article 54(2) of Regulation No 207/2009 (now Article 61(2) of Regulation 2017/1001) — Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) — Evidence presented for the first time before the General Court)In Case T‑287/17,Swemac Innovation AB, established in Linköping (Sweden), represented by G. Nygren, lawyer,vEuropean Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, beingSWEMAC Medical Appliances AB, established in Täby (Sweden), represented by P. Jonsell, lawyer,THE GENERAL COURT (Ninth Chamber),composed of S. Gervasoni, President, K. Kowalik-Bańczyk and C. Mac Eochaidh (Rapporteur), Judges,Registrar: E. Coulon,having regard to the application lodged at the Registry of the General Court on 8 May 2017,having regard to the response of EUIPO lodged at the Court Registry on 17 August 2017,having regard to the response of the intervener lodged at the Court Registry on 17 October 2017,having regard to the decision of 28 November 2017 to stay the proceedings,having regard to the letter lodged by the applicant at the Court Registry on 2 March 2018,having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,gives the following

Judgment

Background to the dispute

1On 2 October 2007, the applicant, Swemac Innovation AB, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

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

3The goods and services in respect of which registration was sought are in, inter alia, Classes 10 and 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, for each of those classes, to the following description:– Class 10: ‘Surgical and medical apparatus and instruments’;– Class 42: ‘Research and development services relating to surgical and medical equipment, apparatus and instruments’.

4The trade mark application was published in Community Trade Marks Bulletin No 9/2008 of 25 February 2008 and the word sign SWEMAC was registered as an EU trade mark on 4 September 2008 under No 006326117 for, amongst others, the goods and services referred to in paragraph 3 above.

5On 3 September 2013, the intervener, SWEMAC Medical Appliances AB, filed an application for a declaration of partial invalidity of the mark at issue pursuant to Article 53(1)(c) of Regulation No 207/2009 (now Article 60(1)(c) of Regulation 2017/1001), read in conjunction with Article 8(4) of that regulation (now Article 8(4) of Regulation 2017/1001), in respect of all the goods and services referred to in paragraph 3 above.

6In support of its application for a declaration of invalidity, the intervener relied on the Swedish company name SWEMAC Medical Appliances AB (‘the earlier sign’), registered, as a business, on 12 December 1997 for the activities ‘Development, manufacture and sale of primarily medical apparatuses and thereto belonging equipment as well as business compatible therewith’ and, as a company name, on 10 February 1998. It argued that there was a likelihood of confusion. It submitted evidence seeking to prove use of the earlier sign in the course of trade.

7On 25 September 2014, the Cancellation Division rejected the application for a declaration of invalidity in its entirety, on the ground that the intervener had not proved that the use of the earlier sign in Sweden was of more than mere local significance at the time of filing of the application for a declaration of invalidity and that, therefore, one of the conditions provided for in Article 8(4) of Regulation No 207/2009 was not fulfilled.

8On 24 November 2014, the intervener filed a notice of appeal at EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division. As part of that appeal, it submitted additional evidence concerning the use of the earlier sign.

9By decision of 24 February 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the appeal, annulled the Cancellation Division’s decision and declared the mark at issue invalid for the goods and services referred to in paragraph 3 above.

10First, the Board of Appeal found that the intervener had demonstrated that it satisfied the conditions required under Article 8(4) of Regulation No 207/2009, read in conjunction with Swedish legislation.

11Second, the Board of Appeal considered that there was a likelihood of confusion. In that regard, it highlighted the high degree of similarity both between the goods and services at issue, these being either identical or highly similar, and between the earlier sign and the mark at issue, which shared the distinctive and dominant element ‘swemac’.

12Third, the Board of Appeal examined whether any coexistence of the signs at issue could reduce the likelihood of confusion found to exist and concluded that such a coexistence had not been established, in the absence of evidence of use of the mark at issue and of a coexistence based on the absence of a likelihood of confusion.

13Fourth, the Board of Appeal rejected the applicant’s argument based on limitation in consequence of acquiescence within the meaning of Article 54(2) of Regulation No 207/2009 (now Article 61(2) of Regulation 2017/1001).

Forms of order sought by the parties

14The applicant claims that the Court should:– annul the contested decision and reinstate the mark at issue to full validity, including for the goods and services at issue;– order the intervener to pay the applicant’s costs before EUIPO and before the Board of Appeal, namely, EUR 1000;– order EUIPO and the intervener to pay the applicant’s costs before the Court.

15EUIPO contends that the Court should:– dismiss the application;– order the applicant to pay the costs.

16The intervener contends that the Court should:– uphold the contested decision and declare the mark at issue invalid;– order the applicant to pay the costs incurred by the intervener in the proceedings before the Court and before EUIPO.

Law

Admissibility of documents filed for the first time before the General Court

17EUIPO disputes the admissibility of Annexes A.2, A.3, A.9, A.10, A.11, A.12, A.13 and A.14 to the application. Those documents were not submitted at any stage of the proceedings before EUIPO. The annexes at issue were submitted by the applicant in order to prove that it had established ‘a right to the contested trademark’ before filing the application for the registration thereof (Annexes A.2 and A.3), the uninterrupted use of the mark at issue between 2009 and 2016 for surgical and medical apparatus and instruments (Annex A.9), the reason for the delay in the registration of the new company name of its subsidiary (Annex A.11), and the coexistence of the signs at issue (Annexes A.12, A.13 and A.14). Last, Annex A.10 was submitted to support the applicant’s position that there was no likelihood of confusion.

18It should be pointed out that, having regard to the purpose of the action provided for in Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), it is not the Court’s function, in the context of such an action, to review the facts in the light of documents produced for the first time before it (see judgment of 9 February 2017, International Gaming Projects v EUIPO — adp Gauselmann (TRIPLE EVOLUTION), T‑82/16, not published, EU:T:2017:66, paragraph 16 and the case-law cited).

19In the case at hand, the documents mentioned in paragraph 17 above have been submitted for the first time in the action before the Court. Those documents must therefore be excluded as inadmissible, with the exception of Annex A.10, without it being necessary to assess their probative value.

20Annex A.10 contains a decision of the Marknadsdomstolen (Commercial Court, Sweden). The Court notes that a paragraph of that decision is translated in paragraph 28 of the application in accordance with Article 46(2) of the Rules of Procedure of the General Court. It should be recalled that neither the parties nor the Court itself can be precluded from drawing on national case-law for the purposes of interpreting EU law. That possibility of referring to national decisions is not covered by the case-law according to which the purpose of actions brought before the Court is to review the legality of decisions of the Boards of Appeal in the light of the evidence submitted by the parties before the latter, since it is not alleged that the Boards of Appeal failed to take the factual aspects of a specific national decision into account, but rather to cite decisions in support of a plea alleging that the Boards of Appeal infringed a provision of Regulation No 207/2009 (see, to that effect, judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 70 and 71).

21To the extent that the applicant, in paragraph 28 of the application, relies on a single paragraph of the decision of the national court referred to in paragraph 20 above to reason by analogy in the present case, that decision may not regarded as evidence in the narrow sense (see, to that effect, judgments of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 20, and of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 16). Thus, in accordance with the case-law set out in paragraph 20 above and in the present paragraph, Annex A.10 is admissible.

Substance

22In support of the action, the applicant relies on two pleas in law, alleging, in essence (i) infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof as well as with Swedish trade mark legislation and (ii) infringement of Article 54(2) of Regulation No 207/2009, read in conjunction with Article 8(4) of the same regulation.

First plea in law: infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof as well as with Swedish trade mark legislation

23Under its first plea, the applicant argues, in essence, that the condition set out in Article 8(4)(b) of Regulation No 207/1009, that ‘that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark’, has not been met and that, therefore, the application for a declaration of invalidity, based on Article 53(1)(c) of that regulation, could not succeed. The Board of Appeal wrongly concluded that there was a likelihood of confusion on account of the applicant’s earlier rights, the long coexistence between the mark at issue and the earlier sign and the intervener’s awareness of the applicant’s use of those earlier rights, which it classifies in various ways in the application as a company name, a non-registered trade mark, a trade mark, a sign, a trade name or a trade sign.

24In the first place, the applicant argues that, even though the intervener had acquired a right to the earlier sign before the registration of the mark at issue, the applicant had established an even earlier right to the company name Swemac Orthopaedics AB, which incorporated the distinctive element of the mark at issue, as well as to a non-registered trade mark SWEMAC.

25In that regard, first, it states in the application that it acquired the company name Swemac Orthopaedics AB under a contract concluded between its wholly owned subsidiary and a company by that name signed on 11 February 1998, but which entered into effect on 30 December 1997. By that contract, its subsidiary acquired the business assets of the transferring company as well as its company name. Therefore, according to the applicant, it may claim the right to that company name from the date on which the transferring company had first registered it, on 22 December 1995. The applicant argues that it used its company name without interruption at least since the date of the first registration of ‘its present company name’ in 1995 and that the swemac name has been used by it and its predecessor since 1991.

26Second, the applicant states that, at the date the application for registration of the mark at issue was filed, on 2 October 2007, it had been using the ‘contested trademark’ in the course of its trade since at least December 1998, the time of the acquisition of the company name and the business assets referred to in paragraph 25 above. It claims an unbroken chain of use as well as rights to ‘the trademark’ since 1995 and that it has used ‘its trademark/name’ both in a non-registered (prior to the filing of the application for an EU trade mark) and a registered capacity, since at least 2001, which enabled it to establish, 13 years before the application for a declaration of invalidity, ‘its co-existence of the trademark on the relevant market and with the relevant public’. It also argues that it was already using its SWEMAC mark from at least 2004.

27In the second place, the applicant argues that, even if the intervener were the proprietor of an earlier right, quod non, the latter would not hold any right to prohibit the use of the mark at issue under Articles 7 and 8 of Chapter 1 of the Swedish Trade Mark Act 2010, concerning rights established through use, and under Article 15 of the same chapter of that act, on passivity.

28In that regard, it highlights its earlier right to the company name referred to in paragraphs 24 and 25 above and to a non-registered mark in Sweden, the long-term prior use of that non-registered mark and the long period of passivity shown by the intervener in relation to the applicant’s use of ‘its trade symbol/mark’. It claims that it has been conducting its business since at least 1998 and that it and the intervener worked on the same premises from 1998 to 2008. The intervener must therefore be presumed to have been aware of the use ‘of the trademark’ by the applicant ‘since day one’, in particular since the two companies are the result of a split of the original company Swemac Orthopaedics and operate in a similar commercial segment in Sweden, which is a relatively small market. Thus, there is no basis for the intervener claiming ignorance of the applicant’s use of ‘its trademark/sign’.

29Moreover, the applicant notes that, even though, at the time, it had not sought registration of its mark, the intervener never disputed before EUIPO the long standing coexistence between the signs at issue or the fact that the applicant had actively operated on the market concerned and used its company name and the non-registered mark SWEMAC; nor did it raise the issue of any likelihood of confusion until the date on which it filed its application for a declaration of invalidity.

30In the third place, the applicant argues that there is no likelihood of confusion.

31In that regard, first of all, it highlights a number of factors. First, the relevant public comprises highly skilled surgeons and informed users who demonstrate an exceptional level of attention when choosing suppliers. Second, the goods and services at issue are purchased by hospitals and medical institutions. Third, the goods concerned are expensive, costing between EUR 100000 and 150000, and are accompanied by education and training services that are provided prior to sale, and prior to delivery and use of the goods, as well as follow-up services and maintenance. Fourth, the goods are never sold over the counter or to uninitiated third parties or customers, but are purchased following calls for tender in the context of public procurement procedures.

32Next, the applicant notes that prior peaceful coexistence may contribute to diminishing the likelihood of confusion. It argues that two other factors should also be taken into account and ‘allow for a future co-existence’. First, the purchasers of the goods and services at issue are highly skilled, informed and specialised persons with insight into the market and the companies active thereupon. Second, the applicant has a long standing presence on the market, being known and having established long-term relationships on it. It considers that it has proved beyond any doubt that it was already using its mark SWEMAC from at least 2004. It claims that it and the intervener have been aware of each other’s existence and respective business ventures since 1998, which should further remove any doubt as to whether the intervener had given its ‘informed consent’, or omitted to act since 1998, despite being aware of the applicant’s existence and business activities, including its use of ‘swemac’ as a trade mark or company name.

33EUIPO and the intervener dispute the applicant’s arguments.

–Preliminary observations

34Under Article 53(1)(c) of Regulation No 207/2009, an EU trade mark is to be declared invalid on application to EUIPO where there is an earlier right as referred to in Article 8(4) of that regulation and the conditions set out in the latter paragraph are satisfied.

35Pursuant to those provisions, the proprietor of a non-registered mark or of another sign may apply for a declaration that an EU trade mark is invalid if that sign satisfies all of the following four conditions: (i) the sign must be used in the course of trade, (ii) it must be of more than mere local significance, (iii) the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of filing of the application for registration of the EU trade mark and (iv) the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Thus, where a sign does not satisfy one of those conditions, the application for a declaration of invalidity based on the existence of a sign other than a trade mark used in the course of trade, within the meaning of Article 8(4) of Regulation No 207/2009 cannot be successful (see, to that effect, judgments of 24 March 2009, Moreira da Fonseca v OHIM — General Óptica (GENERAL OPTICA), T‑318/06 to T‑321/06, EU:T:2009:77, paragraphs 32 and 47, and of 21 September 2017, Repsol YPF v EUIPO — basic (BASIC), T‑609/15, EU:T:2017:640, paragraph 25).

36The first two conditions, namely those relating to the use of the sign relied on and its significance, which must be more than merely local, are apparent from the wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (judgments of 24 March 2009, GENERAL OPTICA, T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 33, and of 21 September 2017, BASIC, T‑609/15, EU:T:2017:640, paragraph 26).

37By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to ... the law of the Member State governing that sign’, that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the preceding conditions, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is justified given that Regulation No 207/2009 makes it possible for signs which fall outside the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark (judgments of 24 March 2009, GENERAL OPTICA, T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 34, and of 21 September 2017, BASIC, T‑609/15, EU:T:2017:640, paragraph 27).

38For the application of the fourth condition referred to in Article 8(4)(b) of Regulation No 207/2009, regard must be had, in particular, to the national rules advanced and to the judicial decisions delivered in the Member State concerned. On that basis, the proprietor of the earlier sign must establish that the sign concerned falls within the scope of the law of the Member State relied on and that it would allow the use of a subsequent trade mark to be prohibited (judgments of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraphs 189 and 190; of 18 April 2013, Peek & Cloppenburg v OHIM — Peek & Cloppenburg (Peek & Cloppenburg), T‑507/11, EU:T:2013:198, paragraph 21; and of 28 January 2016, Gugler France v OHIM — Gugler (GUGLER), T‑674/13, not published, EU:T:2016:44, paragraph 37). The proprietor of the earlier sign is required, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, to provide EUIPO with, not only particulars showing that he satisfies the necessary conditions under the national law which he seeks to have applied, but also particulars establishing the content of that law (see, to that effect, judgment of 5 April 2017, EUIPO v Szajner, C‑598/14 P, EU:C:2017:265, paragraph 35 and the case-law cited).

39Commission 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) [replaced by Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)], and, more specifically, Rule 37(b)(ii) of Regulation No 2868/95 [now Article 12(2)(a) of Regulation 2018/625], provides that an application for a declaration of invalidity of an EU trade mark, filed with EUIPO pursuant to Article 56 of Regulation No 207/2009 (now Article 63 of Regulation 2017/1001), is to include, where it is an application made under Article 53(1)(c) of Regulation No 207/2009, as regards the grounds relied on in the application, particulars of the right on which the application for a declaration of invalidity is based, and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity. In order to satisfy the requirements of that rule, it is not sufficient for a party relying on rights flowing from Article 8(4) of Regulation No 207/2009 merely to set out or indicate, in abstracto, the conditions for the application of national provisions, but on the contrary that party is required to show, in concreto, in the instant case, that it satisfies those conditions of application (see, to that effect, judgment of 29 June 2016, Universal Protein Supplements v EUIPO — H Young Holdings (animal), T‑727/14 and T‑728/14, not published, EU:T:2016:372, paragraphs 26 and 38).

40However, it must be pointed out that the proprietor of the earlier sign must establish only that he has the right to prohibit the use of a subsequent trade mark and he cannot be required to establish that that right has been exercised, in the sense that he has actually been able to prohibit such use (judgments of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 191; of 18 April 2013, Peek & Cloppenburg, T‑507/11, not published, EU:T:2013:198, paragraph 22; and of 28 January 2016, GUGLER, T‑674/13, not published, EU:T:2016:44, paragraph 38).

41Since the decision of the competent EUIPO bodies may have the effect of depriving the proprietor of the trade mark of a right that has been granted to him, the scope of such a decision necessarily implies that the authority which takes it is not limited to the role of mere validation of the national law as submitted by the applicant for a declaration of invalidity (judgments of 27 mars 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 43, and of 5 April 2017, EUIPO v Szajner, C‑598/14 P, EU:C:2017:265, paragraph 36). Moreover, as regards, more specifically, EUIPO’s obligations, the Court has held that, where an application for an EU trade mark to be declared invalid was based on an earlier right protected by a rule of national law, the competent EUIPO bodies first had to assess the authority and scope of the particulars submitted by the applicant in order to establish the content of that rule (judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 51, and of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 35).

42Next, in accordance with Article 65(1) and (2) of Regulation No 207/2009 (now Article 72(1) and (2) of Regulation 2017/1001), the General Court has jurisdiction to conduct a full review of the legality of EUIPO’s assessment of the particulars submitted by an applicant in order to establish the content of the national law whose protection he claims (see judgment of 5 April 2017, EUIPO v Szajner, C‑598/14 P, EU:C:2017:265, paragraph 37 and the case-law cited).

43Furthermore, the Court of Justice has held that, in so far as the application of national law, in the procedural context in question, could have the effect of depriving the proprietor of an EU trade mark of his right, it was essential that the General Court not be deprived, notwithstanding possible lacunae in the documents submitted as evidence of the applicable national law, of the real possibility of carrying out an effective review. To that end, it must therefore be able to confirm, beyond the documents submitted, the content, the conditions of application and the scope of the rules of law relied upon by the applicant for a declaration of invalidity. Consequently, the judicial review conducted by the General Court must meet the requirements of the principle of effective judicial protection (judgments of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 44, and of 5 April 2017, EUIPO v Szajner, C‑598/14 P, EU:C:2017:265, paragraph 38).

44It is in the light of the considerations above that the legality of the contested decision must be examined inasmuch as the Board of Appeal decided that the intervener had demonstrated that it satisfied the conditions required under Article 8(4)(b) of Regulation No 207/2009, read in conjunction with Swedish legislation and, accordingly, declared the mark at issue invalid.

45In the case at hand, the Board of Appeal noted, in paragraph 39 of the contested decision, that Swedish law protected non-registered marks and other established signs used in the course of trade in Sweden against identical or similar signs used for identical or similar goods or services if there was a likelihood of confusion. First, Article 8 of Chapter 1 of the Swedish Trade Mark Act provides that the proprietor of a trade name or another trade sign has exclusive rights in the trade name or trade sign as a trade symbol. Second, point 2 of the first paragraph of Article 8 of Chapter 2 of that act provides that a trade mark will be refused registration if it is identical or similar to an earlier trade symbol for identical or similar goods or services, if there exists a likelihood of confusion, including the likelihood of association between the user of the trade mark and the proprietor of the trade symbol as a result of the trade mark use. Last, point 1 of Article 9 of Chapter 2 of that act states that the grounds for refusal of registration of trade marks pursuant to points 1 to 3 of the first paragraph of Article 8 apply equally to a registered trade name which is being used in the course of trade.

46The Board of Appeal considered that although point 1 of Article 9 of Chapter 2 of the Swedish Trade Mark Act refers to the refusal of a registration of a trade mark on the basis of a registered trade name, that provision could be used by way of analogy also to prohibit the use of that mark. In that connection, it cited paragraph 37 of the judgment of 21 October 2014, Szajner v OHIM — Forge de Laguiole (LAGUIOLE) (T‑453/11, EU:T:2014:901).

47The Board of Appeal thus examined whether there was a likelihood of confusion in Sweden within the meaning of point 2 of the first paragraph of Article 8 of Chapter 2 of the Swedish Trade Mark Act, and concluded that there was such a likelihood. Next, it examined whether, as the applicant had asserted a coexistence between the signs at issue in the case at hand could diminish the likelihood of confusion and whether the expiry of the period of limitation in consequence of acquiescence provided for in Article 54(2) of Regulation No 207/2009 applied to the intervener. Last, the Board of Appeal found that it could not conclude that the signs coexisted and found that the applicant could not rely on Article 54(2) of Regulation No 207/2009.

48The Court finds that, in the present action, the applicant does not dispute the conclusions of the Board of Appeal that the earlier sign has been used in the course of trade, that the scope of that sign was not merely local, and that the right to the earlier sign was acquired before the date of filing of the application for registration of the mark at issue. Nor does it dispute the conclusion drawn by the Board of Appeal in paragraph 40 of the contested decision that point 1 of Article 9 of Chapter 2 of the Swedish Trade Mark Act may be used by analogy to prohibit the use of a later mark on the basis of a registered trade name.

49It follows that the debate centres, first, on the question of whether, as the applicant argues, the circumstance that it could rely on a right older than the earlier sign would mean that the intervener would not be entitled to prohibit the use of a later EU trade mark, such that the condition set in Article 8(4)(b) of Regulation No 207/2009 would not be fulfilled, and, second, on the existence of a likelihood of confusion between the earlier sign and the mark at issue.

–The earlier right

50Whereas EUIPO is required in invalidity proceedings to satisfy itself as to the existence of the earlier right on which the application for a declaration of invalidity is based, none of the provisions of Regulation No 207/2009 provides that EUIPO itself is to carry out an incidental assessment of the grounds for invalidity or revocation which may invalidate that right (see judgment of 25 May 2005, TeleTech Holdings v OHIM — Teletech International (TELETECH GLOBAL VENTURES), T‑288/03, EU:T:2005:177, paragraph 29).

51In addition, Regulation No 207/2009 does not provide that the existence in the same territory of a trade mark with an earlier priority date than that of the earlier trade mark on which the application for a declaration of invalidity is based and which is identical to the contested EU trade mark can validate the latter even if there is a relative ground for cancellation of that EU trade mark (judgment of 25 May 2005, TELETECH GLOBAL VENTURES, T‑288/03, EU:T:2005:177, paragraph 29).

52Moreover, it must be noted that where the proprietor of the contested EU trade mark has an earlier right capable of invalidating an earlier mark on which an application for a declaration of invalidity is based, it is for him to contact the competent authority or national court, as the case may be, to secure the cancellation of that mark, if required (judgment of 25 May 2005, TELETECH GLOBAL VENTURES, T‑288/03, EU:T:2005:177, paragraph 33).

53According to the case-law established in the context of opposition proceedings, the fact that the proprietor of a contested trade mark is the proprietor of an even earlier national trade mark does not in itself have any bearing in so far as opposition proceedings at EU level are not intended to regulate conflicts at national level (see, to that effect, judgments of 21 April 2005, PepsiCo v OHIM — Intersnack Knabber-Gebäck (RUFFLES), T‑269/02, EU:T:2005:138, paragraphs 26 and 28, and of 12 December 2014, Comptoir d’Épicure v OHIM — A-Rosa Akademie (da rosa), T‑405/13, not published, EU:T:2014:1072, paragraph 45).

54The validity of a national trade mark may not be called in question in proceedings for registration of an EU trade mark, but only in cancellation proceedings brought in the Member State concerned (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 55). Furthermore, although it is for EUIPO to ascertain, on the basis of evidence which it is up to the opponent to produce, the existence of the national mark relied on in support of the opposition, it is not for it to rule on a conflict between that mark and another mark at national level, such a conflict falling within the competence of the national authorities (judgment of 21 April 2005, RUFFLES, T‑269/02, EU:T:2005:138, paragraph 26; see also, to that effect, judgments of 25 May 2005, TELETECH GLOBAL VENTURES, T‑288/03, EU:T:2005:177, paragraph 29, and of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 36).

55Therefore, as long as the earlier national mark is in fact protected, the existence of a national registration or another right predating that former mark is irrelevant in the context of opposition to an EU trade mark application, even if the EU trade mark applied for is the same as a national trade mark held by the applicant or another right predating the national mark on which the opposition is based (see, to that effect, judgment of 1 March 2005, Fusco v OHIM — Fusco International (ENZO FUSCO), T‑185/03, EU:T:2005:73, paragraph 63).

56Thus, the Court has already had occasion to hold that, even if rights over earlier domain names may be treated in the same way as an earlier national registration, in any event, it is not for it to rule on a conflict between an earlier national trade mark and rights over earlier domain names, as such a conflict does not come within the jurisdiction of the Court (judgment of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 37).

57The case-law cited in paragraphs 50 to 56 above must be applied by analogy to the case at hand. Notwithstanding the obligations to which EUIPO is subject recalled in paragraph 41 above and the role of the Court as recalled in paragraphs 42 and 43 above, it must be stated that it is neither for EUIPO nor for the Court to settle a conflict between the earlier sign and another company name or non-registered national trade mark in invalidity proceedings against an EU trade mark.

58It follows that the issue of the earlier right is examined by reference to the registration of the contested EU trade mark, and not by reference to the alleged earlier rights that the proprietor of the contested EU trade mark — in this case, the applicant — might have in respect of the intervener, as EUIPO and the intervener have noted, rightly, in their responses. Therefore, the only earlier right to be taken into consideration for the resolution of the present dispute is the earlier sign.

59That conclusion is not invalidated by the applicant’s argument based on Articles 7, 8 and 15 of Chapter 1 of the Swedish Trade Mark Act.

60The Court notes that Article 7, entitled ‘Exclusive rights by establishment on the market’, of Chapter 1 of the Swedish Trade Mark Act, provides, in its first paragraph, that exclusive rights in a trade symbol may, without registration, be acquired by establishment on the market. The second paragraph of that article provides that a trade symbol is deemed established on the market if it is known, in that country, by a significant part of the relevant public as an indication for the goods or services which are being offered under it. Article 15, entitled ‘Consequence of passivity (trade symbols established on the market)’, of Chapter 1 of the Swedish Trade Mark Act, provides, for its part, that the rights in a trade symbol which has been established on the market are to coexist with earlier rights in a trade symbol which is identical or similar in the way provided for in Article 10, if the proprietor of the earlier rights has not, within a reasonable time, taken action to prevent the use of the later symbol.

61Although the applicant claims to be able to rely on an unbroken chain of use and on rights to ‘the trademark’ and on a company name containing an element ‘swemac’ dating back to various times before the registration of the earlier sign (1991, 1995, December 1998, 2001, 2004), it has not provided any evidence to that effect. As the Board of Appeal held in paragraphs 62 and 64 of the contested decision, and as, in essence, EUIPO and the intervener note, the applicant has not submitted before the bodies of EUIPO any evidence proving the use of the mark at issue or of any other sign containing the element ‘swemac’. The documents it has produced for the first time before the Court cannot, as has been mentioned in paragraph 19 above, be taken into consideration. The applicant has therefore in no way shown, in concreto, that it satisfied the conditions of application of the provisions of Chapter 1 of the Swedish Trade Mark Act, on which it was relying. More specifically, it has in no way shown that its alleged earlier right would fall within the scope of Articles 7 and 15 of Chapter 1 of the Swedish Trade Mark Act, namely, that it was established on the market, or known by a significant part of the relevant public as an indication for the relevant goods or services, before or after the registration of the earlier sign.

62Moreover, the Court notes that the applicant has not provided any clarification on the interaction between the provisions on which it relies and those applied by the Board of Appeal. Furthermore, no clarification is provided regarding its assertion that it may claim the right to the company name Swemac Orthopaedics AB from the date on which the transferring company had first registered it, namely, 22 December 1995. Last, assuming that the applicant and the intervener both arose out of the split of the company Swemac Orthopaedics, the applicant has not explained how Swedish law would accord it legal seniority over the element ‘swemac’ either.

63Consequently, the applicant’s arguments that, in essence, Articles 7, 8 and 15 of Chapter 1 of the Swedish Trade Mark Act mean that the intervener does not have the right to prohibit the use of the mark at issue, must be rejected.

64Moreover, the applicant has not disputed the conclusion drawn by the Board of Appeal in paragraph 40 of the contested decision that point 1 of Article 9 of Chapter 2 of the Swedish Trade Mark Act could be used by analogy to prohibit the use of a later mark on the basis of a registered trade name.

65In any event, the applicant has not explained how Articles 7, 8 and 15 of Chapter 1 of the Swedish Trade Mark Act would invalidate the implicit interim conclusion of the Board of Appeal, in paragraphs 40 and 41 of the contested decision, that the earlier sign would enable the registration and, by analogy, the use of a more recent mark to be prohibited, if there was a likelihood of confusion.

66It follows that the implicit interim conclusion of the Board of Appeal, in paragraphs 40 and 41 of the contested decision, that Swedish law would protect the earlier sign against identical or similar signs used for similar or identical goods or services if there was a likelihood of confusion, must be approved.

–The likelihood of confusion

67The Court notes that the applicant does not dispute the approach of the Board of Appeal whereby it examined whether there was, in Sweden, a likelihood of confusion within the meaning of point 2 of the first paragraph of Article 8 of Chapter 2 of the Swedish Trade Mark Act. Nor does it dispute the conclusions of that board that the relevant public consists of medical professionals whose level of attention will be high, in particular given the nature of the goods and services in question and the fact that they are expensive. Likewise, it does not dispute, as the intervener notes, that the contested mark and the earlier sign are similar to a high degree and that the goods and services concerned are either identical or similar to a high degree. That approach and those conclusions, which have not moreover been disputed, must be endorsed.

68On the other hand, the applicant claims that a coexistence of the marks, its long standing presence on the market and the fact that the relevant public is made up of highly skilled, informed and specialised persons and that the goods and services at issue are purchased in the context of public procurement procedures would diminish the likelihood of confusion.

69According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

70Even if it is not disputed that the goods and services referred to in paragraph 3 above are marketed following calls for tender in the context of public procurement procedures, such a circumstance does not enable all likelihood of confusion to be excluded. Use of the mark at issue is not limited to situations where the goods and services at issue are being marketed, but may extend also to other situations where the relevant public makes oral or written reference to those goods and services, for example when using them or discussing their use and, in particular, when referring to the benefits and drawbacks of those goods and services (see, to that effect, judgment of 26 September 2014, Koscher + Würtz v OHIM — Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, EU:T:2014:829, paragraph 80).

71In the case at hand, as has been noted in paragraph 67 above, it is not disputed that the goods and services covered by the signs at issue are either identical or similar to a high degree. It is also not disputed that the mark at issue and the earlier sign are similar to a high degree. Therefore, and as the intervener argues, it is not possible to exclude the existence of a likelihood of confusion, even taking into account the high degree of attention of the relevant public (see, to that effect, judgment of 22 May 2012, Retractable Technologies v OHIM — Abbott Laboratories (RT), T‑371/09, not published, EU:T:2012:244, paragraph 43).

72Last, the paragraph of the decision of the Marknadsdomstolen (Commercial Court), contained in Annex A.10 and relied on by the applicant, is not such as to invalidate the conclusion referred to in paragraph 71 above or the contested decision. In that paragraph, that court notes that ‘it has been found that the current products [were] exclusively marketed through public procurement’ and that ‘in such a purchase situation, it appear[ed] that there [could] be no misleading commercial origin’. It is true that, for the application of the fourth condition referred to in Article 8(4)(b) of Regulation No 207/2009, regard must be had to the judicial decisions delivered in the Member State concerned, as has been recalled in paragraph 38 above. However, first, it should be noted that that paragraph is presented without any details on its factual and procedural context. The Court is not, therefore, in a position to assess whether the guidance to be taken from that paragraph extends to the factual and procedural context of the case at hand. Second, it should be noted that that paragraph cannot call into question the Board of Appeal’s factual findings, or prove the relevant public’s awareness of the mark at issue. Last, it cannot prove any coexistence of the signs at issue or that the Swedish public does not confuse the commercial origin of the goods and services covered by those signs when it is faced with them.

73Therefore, it is not established that the Board of Appeal erred in considering, in paragraph 58 of the contested decision, that there was a likelihood of confusion as to the commercial origin of the goods and services at issue.

74Regarding the applicant’s argument based on the supposed coexistence of the signs at issue in Sweden, it should be observed that, according to the case-law, while it is not precluded that the coexistence of earlier marks on the market might reduce the likelihood of confusion between two marks at issue, the fact nonetheless remains that such a possibility can be taken into consideration only if, during the procedure before EUIPO, the proprietor of the contested EU trade mark has duly demonstrated that such coexistence was based upon the absence of a likelihood of confusion on the part of the relevant public between the earlier mark on which it relies and the earlier mark on which the application for a declaration of invalidity is based, and provided that the earlier marks concerned and the marks at issue are identical (see, to that effect, judgments of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 82; of 11 May 2005, Grupo Sada v OHIM — Sadia (GRUPO SADA), T‑31/03, EU:T:2005:169, paragraph 86; and of 10 April 2013, Höganäs v OHIM — Haynes (ASTALOY), T‑505/10, not published, EU:T:2013:160, paragraph 48 and the case-law cited). In addition, inasmuch as, according to the case-law, the coexistence of trade marks must be sufficiently long to be capable of influencing the perception of the relevant public, the duration of the coexistence also constitutes an essential factor (see judgment of 30 June 2015, La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 80 and the case-law cited).

75In the present case, as has been found in paragraph 61 above, the applicant has not submitted before the bodies of EUIPO any evidence proving the use of the mark at issue or of a sign containing the element ‘swemac’. The documents produced by the applicant for the first time before the Court in order to demonstrate its presence on the market and the use of a mark, a company name or signage containing the element ‘swemac’ cannot, as has been mentioned in paragraph 19 above, be taken into consideration. Nor has the applicant submitted evidence attesting to the awareness of the mark at issue or of a sign containing the element ‘swemac’ on the part of the relevant public, such as opinion polls, declarations of consumers or other evidence, when it was open to it to advance such a body of evidence to that effect (see, to that effect, judgments of 30 June 2015, VIÑA ALBERDI, T‑489/13, EU:T:2015:446, paragraph 80, and of 13 July 2017, AIA v EUIPO — Casa Montorsi (MONTORSI F. & F.), T‑389/16, EU:T:2017:492, paragraph 71; see also, to that effect and by analogy, judgment of 25 May 2005, TELETECH GLOBAL VENTURES, T‑288/03, EU:T:2005:177, paragraph 100).

76The Board of Appeal was therefore right to consider, in paragraphs 62 and 64 of the contested decision, that the applicant had not proved any coexistence of the signs at issue or that the Swedish public did not confuse those signs when it was faced with them.

77Accordingly, the applicant’s argument based on an alleged coexistence of the signs at issue must be rejected as unfounded.

78It follows that the first plea, alleging infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof as well as with Swedish trade mark legislation, must be rejected as unfounded.

Second plea in law: infringement of Article 54(2) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof

79By its second plea, the applicant argues that the Board of Appeal erred in its assessment of limitation in consequence of acquiescence, as this ought to be assessed not in relation to the date of the registration of the mark at issue, but in relation to the intervener’s ‘implied informed consent’ in view of the applicant’s use of ‘its trademark/sign’ on the market.

80EUIPO and the intervener dispute the applicant’s arguments.

81In the first place, as has been stated in paragraph 58 above, the only rights to be taken into consideration for the resolution of the dispute are the earlier sign and the mark at issue. Since the mark at issue is an EU trade mark, the provision applicable to possible limitation in consequence of acquiescence is, therefore, Article 54(2) of Regulation No 207/2009.

82According to Article 54(2) of Regulation No 207/2009, the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) who has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.

83In the second place, it should be noted that, in accordance with the case-law, four conditions must be satisfied before the period of limitation in consequence of acquiescence starts running if there is use of a later trade mark identical or confusingly similar to the earlier trade mark. First, the later trade mark must be registered; second, the application must have been made in good faith by its proprietor; third, the later trade mark must be used in the Member State where the earlier trade mark is protected; and fourth, the proprietor of the earlier trade mark must be aware of the use of that trade mark after its registration (see judgment of 20 April 2016, Tronios Group International v EUIPO — Sky (SkyTec), T‑77/15, EU:T:2016:226, paragraph 30 and the case-law cited).

84It is apparent from that case-law that the purpose of Article 54(2) of Regulation No 207/2009 is to deprive the proprietors of earlier marks who have acquiesced in the use of a later EU trade mark registered for a period of five successive years, while being aware of such a use, of the possibility of bringing actions for a declaration of invalidity or opposition proceedings in respect of that trade mark. That provision is intended to strike a balance between the interests of the proprietor of a mark in safeguarding its essential function and the interests of other economic operators in having signs capable of denoting their goods and services. That objective implies that, in order to safeguard that essential function, the proprietor of an earlier trade mark must be in a position to oppose the use of a later mark identical or similar to his own. Indeed, it is only once the proprietor of the earlier trade mark becomes aware of the use of the later EU trade mark that it has the option of not acquiescing in its use and, therefore, opposing it or seeking a declaration of invalidity of the later trade mark and that, consequently, the period of limitation in consequence of acquiescence starts running (see judgment of 20 April 2016, SkyTec, T‑77/15, EU:T:2016:226, paragraph 31 and the case-law cited).

85Accordingly, it is from the time when the proprietor of the earlier trade mark is made aware of the use of the later EU trade mark after its registration that the period of limitation in consequence of acquiescence starts running (see judgment of 20 April 2016, SkyTec, T‑77/15, EU:T:2016:226, paragraph 32 and the case-law cited).

86The case-law cited in paragraphs 83 and 85 above must be applied by analogy to the case at hand, which relates to an earlier national sign other than a mark.

87The Court notes that, in the case at hand, it is not disputed that the mark at issue was registered on 4 September 2008, and that the application for a declaration of invalidity was filed on 3 September 2013, less than five years after registration.

88It follows, as EUIPO and the intervener argue, first, that use of the mark at issue could take place only as from the date of registration of that trade mark. Second, the period of possible limitation resulting from acquiescence could not have started running until the intervener, the proprietor of the earlier sign, became aware of the use of the earlier EU trade mark, namely, the mark at issue, after its registration. The period of limitation thus could not start running from a possible use of a non-registered mark or the applicant’s company name.

89Therefore, the Board of Appeal was right to conclude, in paragraph 71 of the contested decision, that the applicant could not rely on limitation in consequence of acquiescence as provided for in Article 54(2) of Regulation No 207/2009.

90In the third place, and in any event, it should be noted, as the Board of Appeal indicated, essentially, in paragraphs 72 and 73 of the contested decision, and as the intervener argues, that, according to the case-law, the proprietor of a later trade mark must submit evidence of an actual awareness of the use of that mark by the proprietor of the earlier mark, failing which the latter would not be able to oppose the use of the later mark (judgment of 20 April 2016, SkyTec, T‑77/15, EU:T:2016:226, paragraph 33; see also, to that effect, judgment of 22 September 2011, Budějovický Budvar, C‑482/09, EU:C:2011:605, paragraphs 46 and 47, and Opinion of Advocate General Trstenjak in Budějovický Budvar, C‑482/09, EU:C:2011:46, point 82).

91It should be noted, moreover, that the claim of limitation in consequence of acquiescence is applicable where the proprietor of the earlier trade mark ‘has knowingly tolerated the use for a substantial length of time’, which means ‘intentionally’ or ‘in full knowledge of the facts’ (judgment of 20 April 2016, SkyTec, T‑77/15, EU:T:2016:226, paragraph 33; see also, to that effect, judgment of 22 September 2011, Budějovický Budvar, C‑482/09, EU:C:2011:605, paragraphs 46 and 47, and Opinion of Advocate General Trstenjak in Budějovický Budvar, C‑482/09, EU:C:2011:46, point 82).

92In the case at hand, as has been found in paragraph 61 above, as the Board of Appeal indicates, rightly, in paragraphs 62 and 73 of the contested decision, and as EUIPO and the intervener argue, the applicant has demonstrated neither use of the mark at issue in Sweden nor that the intervener was aware of that alleged use.

93It follows from all the foregoing that the Board of Appeal did not infringe Article 54(2) of Regulation No 207/2009 in considering, in paragraphs 71 and 73 of the contested decision, that the applicant could not rely on that provision.

94Consequently, the second plea must be rejected as unfounded.

95Since neither of the pleas in law relied on by the applicant is well founded, the action must be dismissed in its entirety.

Costs

96Under 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.

97In the present case, EUIPO and the intervener have applied for the applicant to be ordered to pay the costs of the present proceedings. Since the applicant has been unsuccessful, the forms of order sought by EUIPO and the intervener must be granted and the applicant must be ordered to pay the costs incurred by EUIPO and the intervener in the proceedings before the Court.

98The intervener has also claimed that the applicant should be ordered to pay the costs incurred by the intervener in the administrative proceedings before EUIPO. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Cancellation Division. Accordingly, the intervener’s request that the applicant, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before EUIPO can be allowed only as regards the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal (see, to that effect, judgments of 10 February 2015, Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraph 98 and the case-law cited, and of 30 March 2017, Apax Partners UK v EUIPO — Apax Partners Midmarket (APAX PARTNERS), T‑209/16, not published, EU:T:2017:240, paragraph 49).

Operative part

On those grounds,THE GENERAL COURT (Ninth Chamber)hereby:

1.Dismisses the action;

2.Orders Swemac Innovation AB to pay the costs, including those necessarily incurred by SWEMAC Medical Appliances AB for the purposes of the proceedings before the Board of Appeal of the European Union Intellectual Property Office (EUIPO).

Delivered in open court in Luxembourg on 7 February 2019.