CANCELLATION No 14 850 C (INVALIDITY)

Ioulia and Irene Tseti Pharmaceutical Laboratories S.A., Kalyftaki 27, Kifissia, 145 64 Athens, Greece (applicant), represented by Christos Chrissanthis & Partners Law Firm, 12 Solonos Street, 2nd floor, 06 73 Athens Greece (professional representative)

a g a i n s t

Fidia Farmaceutici S.P.A., Via Ponte della Fabbrica, 3/A, 35031 Abano Terme (PD), Italy (EUTM proprietor), represented by Dr. Kunz-Hallstein Rechtsanwälte, Postfach 22 11 17, 80501 München, Germany (professional representative).

On 04/02/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 2 430 221 is declared invalid for some of the contested goods, namely:

Class 1: Chemicals used in industry and science.

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; biomaterials.

3. The European Union trade mark remains registered for all the remaining goods, namely:

Class 1: Chemicals used in photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; perfumery, essential oils, hair lotions; dentifrices.

Class 5: Food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 2 430 221 HYAL (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; perfumery, essential oils, hair lotions; dentifrices.

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; biomaterials.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b)(c) and (d) EUTMR and Article 59(1)(b) EUTMR (bad faith).

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the term HYAL is descriptive, commonly used in trade and is devoid of distinctive character. There is evidence (Annexes 7-11) showing that HYAL is used both as a common vocabulary term, meaning "glassy” or "transparent", as well as a special terminology for medicine and pharmacists professionals meaning "made from hyaluronic acid", as well as an abbreviation for the technical term HYALURONIDASE (Annexes 2, 3 and 4). Terms like "glassy” or "transparent" are not merely allusive or suggestive; they are clearly descriptive for goods in class 1 (i.e. chemicals, etc.), as well as for goods in class 3 (like bleaching preparations, polishing preparations, perfumery, essential oils, hair lotions, dentifrice, etc.). The same applies as to pharmaceuticals and similar products in class 5. A descriptive term may have two or more meanings and may be used in two or more different contexts. The applicant also informs that it has applied for a national (Greek) trademark registration (filing number 2 287 391 for the mark HYAL FIX in classes 3 and 5 that has been opposed by the EUTM proprietor and proceedings are still pending.

In support of its observations, the applicant filed the following evidence:

• Annexe 1: WHO document dated 2011 titles “the use of stems in the selection of INN for pharmaceutical substances” the terms “HYALOSIDASE” and “HYALURONIDASE” are referred to as INNs.

• Annexe 2 to 4: Wikipedia search for HYAL dated 2017 showing that HYAL 1, HYAL 2 and HYAL 3 are used for abbreviations for HYALURONIDASE, an enzyme encoded by different genes in human body.

• Annexe 5 and 6: Search at www.wikigenes.org and www.genenames.org showing that HYAL 1, HYAL 2 and HYAL 3 are used as standard scientific abbreviations for “HYALUROGLUCOSAMIDASE” dated 2017.

• Annexe 7 to 11: Search in Collins English Dictionary, Dorland’s Medical Dictionary, Saunders Comprehensive Veterinary Dictionary, Merriam Webster Dictionary and Merriam Webster Medical Dictionary Medecine Plus dated 2017 showing that the terms HYAL and HYALO have a Greek etymology and mean “glassy” or “transparent” as in “hyaluronic acid”.

• Annexe 12: Affidavit by the pharmacist Mr. Lambros Prekas confirming HYAL is widely used as a descriptive term referring to HYALURONIC ACID.

• Annexe 13: Photos from packaging of pharmaceutical products incorporating the term HYALURONIC, undated.

• Annexe 14: Search result in EUIPO eSearch database for the word HYAL in classes 1, 3 or 5 showing 6 results, 5 of which are from third parties.

• Annexe 15: Search result in EUIPO TMView data base showing 28 trade marks incorporating HYAL in classes 1, 3 or 5.

• Annexe 16 and 17: Search result on the web site of the EUTM proprietor showing there is no use of HYAL as such but with the addition of other terms.

• Annexe 18: examples of trade marks of the EUTM proprietor with HYAL.

• Annexe 19: examples of oppositions before EUIPO based on the contested trade mark.

• Annexe 20 and 21: The contested registration is the basis of a pending opposition against the applicant in Greece.

The EUTM proprietor argues that the evidence submitted (particularly dictionary listings dated 2017 and the WHO INN code dated 2011) does not relate to the date of the filing of the contested EUTM (i.e. 30/10/2001). The EUTM proprietor also argues that the contested EUTM enjoys seniority since 1983 and 1987. It then considers that HYAL1, HYAL2, HYAL3 are termini technici for genetics but not for pharmaceuticals. It supports the idea that HYAL may be allusive or suggestive, but not descriptive. It also considers that the terms HYALURONIC ACID, and HYALURONIDASE exclude themselves, because the former is a glycosaminoglycan, while the latter is an enzyme, and the terms are different in their nature and are used for different kinds of applications. As a result, the common stem HYAL is not descriptive. The EUTM proprietor adds that the common stem for HYALOSIDASE and HYALURONIDASE is not HYAL, but ASE. According to dictionaries HYALO means 'to be of-, relating to-, or resembling glass" or “glass, glassy, transparent". However, these concepts are not related to the products for which the contested EUTM is registered in classes 1, 3 and 5. The evidence shows a common and descriptive use of the term HYAL in connection to cosmetics but the contested EUTM does not claim protection for cosmetics. Moreover, cosmetics are distinct to pharmaceuticals. The term HYAL is only rarely used as a descriptive term and it is not listed in every dictionary. The EUTM informs that it is using the contested EUTM HYAL in the form of: (HYAL ACP, HYAL 04, HYAL DROP, HYAL FAMILY LINE, as well as a stem of a series of marks consisting of the term HYAL, accompanied by other terms, like, HYALGAN, HYALOSILVER, HYALART, HYALO GYN, etc. In this respect, the Owner argues that bad faith (consisting in lack of genuine intent to use the mark in the course of trade) cannot be established. The term ACP is descriptive and it is used as an abbreviation for "hyaluronic acid" hence, in the mark HYAL ACP, the part HYAL is the dominant, one, since ACP is descriptive and indistinctive.

In support of its observations, the EUTM proprietor filed the following evidence. As the EUTM proprietor requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

• 1 Extract HYAL in EUIPO eSearch database

• 2 Extract from Wikipedia on ‘Hyaluronic Acid’

• 3 Extracts from Wikipedia on ‘Hyaluronic Acid’ in English, Italia German and Spanish

• 4 Extract Genename

• 5 Collins Dictionary

• 6 Extract Cambridge

• 7 Extract National Library of Medicine

• 8 Certificate USPTO

• 9 Certificate HYAL-DROP

• 10 Certificate HYALOSS

• 11 Extracts PlU database

• 12 List of Ingredients Anthrostop Hyal

• 13 EUTM HYAL-JOINT

• 14 Lido-Hyal B Drug Information

• 15 List of marks in Italy

• 16 List of marks registered as International Registrations

• 17 List of marks at EUIPO

• 18 Declaration by Dr. Pizzocaro

• 19 Packaging and draft packaging of the product HYAL® ACP

• 20 Information leaflet on the product HYAL® ACP

• 21 Invoices relating to the sale of HYAL® ACP

• 22 Packaging and draft packaging of the product

• 23 Information leaflet on the product

• 24 Invoices relating to the sale of

• 25 Packaging and draft packaging of the product HYAL FAMILY LINE

• 26 Information leaflet on the product HYAL FAMILY LINE

• 27 Invoice relating to the sale of HYAL FAMILY LINE

• 28 Packaging and draft packaging of the product HYAL DROP / HYAL-DROP

• 29 Information leaflet on the product HYAL DROP/ HYAL-DROP

• 30 A packaging and a package insert for HYALISTIL

• 31 Packaging: and package insert: for HYALART

• 32 Packaging: and package insert: for HYALGAN

• 33 A packaging and a package insert for HYALO CYYN

• 34 Packaging: and package insert: for HYALUBR.IX

• 35 Packaging: and package inserts for HYALOFEMME

• 36 Packaging: and package insert: for HYALOSIL VER

• 37 Packaging: and package insert: for HYALONE

• 38 Invoice

• 39 Evidence that ACP is the abbreviation for hyaluronic acid in a print out from the Italian on-line edition of WIKIPEDIA. The term "Acido Ialuronico" (hyaluronic acid) is defined and ACP is proposed to be an alternative name for "Acido Ialuronico".

The applicant answers that dictionary listings dated 2017 and the WHO INN code dated 2011 are reliable and persuasive evidence as to the situation in 2001 as well. A term, which was considered to be a descriptive common vocabulary term in 2017, would reasonably have been descriptive and commonly used in 2001 as weIl. A common and descriptive technical term, like an INN stem listed in WHO's INN code in 2011, would reasonably have been a common INN stem in 2001 as well. The applicant considers that perfumery, essential oils, hair lotions and dentifrices, as well as pharmaceuticals, are closely related and highly similar to cosmetics. Even a term which is only rarely used in a descriptive sense is not capable of being registered as a trademark. The Trademark Guidelines expressly provide that the argument that the term is not used or is only rarely used is irrelevant. In particular, the Guidelines provide that: "The fact that a descriptive use of the term applied for cannot be ascertained is irrelevant. Examination of Article 7(1)(c) EUTMR has to be made by means of prognostics (assuming that the mark will be used with respect to the goods or services claimed). It follows clearly from the text of Article 7(1)(c) EUTMR that it suffices if the mark 'may serve' to designate characteristics of the goods and services (judgment of 23/10/2003, C-191/01 P, Doublemint)". The applicant then adds that the mark "HYAL ACP' is a separate and distinct EUTM, which is registered under No. 7 255 854 by the EUTM proprietor. The fact that it filed and registered both "HYAL" and "HYAL ACP' as distinct marks proves that even itself considers the two marks to be different and distinct. The same applies in connection to the other marks invoked by the EUTM proprietor. ln addition, when bad faith is examined, a genuine intent to use a mark means ‘intent to use it in the course of trade as an indication of origin in connection to one or more specific products’ and it is considered that the EUTM proprietor has never used the mark HYAL as such. The only purpose of the contested registration is to be used against competitors in opposition proceedings so as to achieve a broader range of protection for other marks. Such a use, which is destined for opposition proceedings against competitors, is an illegitimate one, because it is destined to restrict competition and prohibit competitors from using a descriptive term, or a term which is at least of very limited distinctiveness; that is, a term that competitors would be otherwise entitled to use. Even accepting that in Italian language and the Italian market, there is no evidence that ACP is generally perceived as a descriptive term, or an abbreviation which stands for "hyaluronic acid". The general public certainly does not perceive ACP as an abbreviation for hyaluronic acid. Even medical professionals in Italy are more likely to be aware of scientific abbreviations that are internationally recognized and accepted, rather than of scientific abbreviations which are only of local significance. Scientists have a global and international approach to their subject-matter and they do not rely anymore on local terminology and local abbreviations. A family mark should be protected, even if it is not used as such in the course of trade, provided it is in itself distinctive. However, it would be contrary to freedom of competition to protect as a family mark an element, which is in itself descriptive and indistinctive. So long as HYAL, as such, is a common, descriptive and indistinctive term, it should not be regarded as a family mark, and its use as a component in other marks should not be regarded as use of the mark HYAL, as such. The applicant also draw the attention of the Cancellation division on the revocation for non-use it filed in parallel against the same trade mark (see 15 029 C).

It submits the following additional evidence:

Annexes 22 and 23: extracts from: L.R. Desousa, “Common Medical Abbreviations” and R. Heister, “Dictionary of Abbreviations in Medical Sciences”. In none of these books the term "ACP" is referred to as an abbreviation for "hyaluronic acid". On the contrary, it seems that ACP is sometimes used as an abbreviation for "acid phosphatase', which is a chemical.

The EUTM proprietor, in its rejoinder, considers that the answers of the applicant do not refute its initial arguments. The application for invalidity is not founded and should be dismissed as there is no evidence predating the date of filing of the contested trade mark. The list of INN is updated yearly and Dictionaries are updated frequently. In any event, also the INN list of 2001 does not prove the claim that HYAL was an INN. The Annex presented by the Applicant clearly refers to the classification of enzymes whereby these enzymes are identified by –ase (see applicant’s annex 3). The INN list does not show any INN or reference to an INN identified by HYAL. In 2001, there had been only 3 registrations with the element HYAL (see annex 9 of the applicant) and the EUTM proprietor has either agreement with their proprietor or the marks were not put in use. The seniorities are relevant and prove that in 2001 the mark has correctly been held distinctive by the EUIPO but also by nearly all IP offices of the EU. HYAL 1, HYAL 2 and HYAL 3 do not show any descriptiveness of the contested trade mark for the goods in question in 2001. HYAL is not descriptive of a gene. Genetics are not related to medicines, pharmaceuticals and even perfumery, essential oils and hair lotions. The elements HYALO is not used in the pharmaceutical field. The EUTM proprietor has never stated that HYAL was descriptive for cosmetics. The EUTM proprietor then considers that HYAL is used (in HYAL®ACP, and HYAL DROP). In addition, the sign HYAL is used as the common core of a full series of trade marks. The use of HYAL as a basis of the family of marks has been ascertained by the EUIPO (see 10 222 C of 16/03/2016 and R 872/2016-1 of 17/01/2017).

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

No legitimate expectations

The registration of a European Union trade mark cannot give rise to a legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings, since the applicable rules expressly allow for that registration to be challenged subsequently in an application for a declaration of invalidity or a counterclaim in infringement proceedings (19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 25).

Otherwise, challenging the registration of an EUTM in the context of invalidity proceedings would, where the subject-matter and the grounds were the same, be deprived of any practical effect, even though such a challenge is permitted under the EUTMR (22/11/2011, T‑275/10, Mpay24, EU:T:2011:683, § 18).

Relevant date

As correctly stated by the EUTM proprietor, the question whether a trade mark should be registered or should be declared invalid must be assessed on the basis of the situation at the date of its application and not of its registration (GC, 03/062009, T-189/07, Flugbörse). In the present case, the contested trade mark was filed on 30/10/2001 under seniorities in Ireland, Greece, United Kingdom, Finland, Italy, Benelux, Portugal, Germany and Austria.

Although these facts and arguments must date from the period when the European Union trade mark application was filed or its date of priority, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

As to seniorities, as correctly argued by the applicant, the issue is different compared to priority. Contrary to what the EUTM proprietor contends, the various seniority dates of the EUTM are not relevant for the point in time to be assessed as regards absolute grounds for refusal. The European Union trade mark constitutes a right in itself, which is not dependent on the national rights from which seniority is claimed. An application for a European Union trade mark, therefore, calls for an independent assessment of the absolute grounds for refusal under Article 7 EUTMR, regardless of prior national registrations. In this respect, the relevant date in the application proceedings and likewise in the cancellation proceedings is the date of the application for the EUTM or its date of priority. Nothing in the EUTMR indicates a different date for a European Union trade mark application that claims seniority. Rather, Article 39(3) EUTMR confines the effects of seniority under the EUTMR to the assumption that the proprietor of a European Union trade mark is deemed to continue to have the same rights as it would have had if an earlier national trade mark that has been surrendered or has lapsed had continued to be registered, a matter of no relevance for these proceedings.

Descriptiveness – Article 7(1)(c) EUTMR

Firstly, pursuant to Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ shall not be registered.

Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the categories of goods or services in respect of which registration is applied for may be freely used by all. The provision therefore prevents such signs or indications from being reserved to one undertaking alone because they have been registered as trade marks (15/10/2003, T-295/01, Oldenburger, EU:T:2003:267, § 29; 04/05/1999, C-108/97 and C- 109/97, Chiemsee, EU:C:1999:230, § 25).

Relevant public and degree of attention

Distinctive and non-descriptive character, within the meaning of Article 7(1)(b) and (c) EUTMR must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the relevant public’s perception of the mark (cited above, 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34 and the case-law cited).

The contested goods in Class 1 are:

Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

The contested goods in Class 3 are:

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; perfumery, essential oils, hair lotions; dentifrices.

The contested goods in Class 5 are:

Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; biomaterials.

As regards the chemical products in Class 1, the targeted professional public is likely to have a higher than average level of attention.

In the present case, the remaining contested goods in class 3 and 5 are goods both for everyday use and for professionals and are aimed both at the public at large (e.g. bleaching preparations) and professionals (e.g. biomaterials). Taking into account the nature of the goods in question, the awareness of the relevant public will vary from average to higher.

Finally, HYAL has a Greek root, which is also the language of medical terms (medicine being also closely linked to chemistry) and is likely to be understood not only by the English-speaking territories but at least by part of the public which is specialised either in chemistry or in medicine throughout the European Union. Part of the relevant public consists of specialists for whom certain technical terms in another EU Member State’s official language are understood.

For example, the GC has held that certain English terms in the medical field (judgment of 29/03/2012, T-242/11, 3D eXam, EU:T:2012:179, § 26) will be understood by the relevant professionals throughout the European Union, as English is the commonly used professional language in these areas.

The word element ‘HYAL’ is a term that is understood throughout Europe. It is not necessary to have recourse to Article 7(2) EUTMR, under which there is sufficient reason for a refusal if the sign applied for is not eligible for registration in part of the EU.

Definition

Annexes 2, 3 and 4 filed by the applicant show that HYAL1, in addition to be a human gene (the HYAL1 gene), is used as an abbreviation of HYALURONIDASE, another enzyme, which is of pharmaceutical use, at least in 2017. Although part of the evidence is from Wikipedia, a free encyclopaedia that anyone can edit and is not fully reliable, there are also dictionary quotes and official sources in order to corroborate the information given in “Wikipedia”.

The evidence states: “Associations of HYAL1 with chemical compounds; Expression of tumor markers hyaluronic acid and hyaluronidase (HYAL 1)” or "Hyaluronidase-1 is an enzyme that in human is encoded by the HYAL-1 gene" (see Annex 1). The same applies mutatis mutandis in connection to HYAL2, HYAL3, and HYAL4. In addition, in the Medical Dictionary, it is mentioned that HYAL or HYALO is a prefix of Greek origin, meaning glassy and because of that meaning, it can be found in hyaline, hyaluronic acid and hyalogen (see annexes 7 to 11).

As previously mentioned, HYAL 1 is used as the abbreviation of HYALURONIDASE which is an INN for an enzyme. Abbreviations of descriptive terms are in themselves descriptive if they are used in that way, and the relevant public, in the present case specialised for both chemicals and pharmaceuticals, recognises them as being identical to the full descriptive meaning.

The contested trade mark HYAL covers in particular chemicals used in industry and science in class 1 that are designed for professionals and therefore it will be understood as an abbreviation of a chemical by the relevant public which level of attention is higher than average. The missing number following HYAL does not affect this finding since the word mark is identical and is the first element in common in HYAL 1, HYAL 2, HYAL 3, etc.

Even if the documents provided are not dated within the relevant period, it is reasonable to consider that in 2001, HYAL was already mentioned as an abbreviation in official sources such as the one provided by the applicant even with a much later date (2011 and 2017). Without reversing the burden of evidence which lies on the applicant, it is worth noting that the EUTM proprietor has not illustrated how the mark was initially created. It also does not contradict the fact that in 2001, HYAL existed as an abbreviation.

As correctly mentioned by the applicant, dictionary listings dated 2017 can be reliable and persuasive evidence as to the situation in 2001 as well. A term, which was considered to be a descriptive common vocabulary term in 2017, would reasonably have been descriptive and commonly used in 2001 as weIl. Indeed, the EUIPO Trademark Guidelines provide that "facts subsequent to the date of [the EUTM] application can nevertheless be taken into account where and to the extent that they allow conclusions to be drawn regarding the situation at the date of application for the EUTM. This might be the case, for example, with dictionary extracts that post-date the application date. Unless rapid development of linguistic usage or living conditions (in the sense of social or technical 'trends) has taken place after the date of application, words will usually only be listed in dictionaries if their actual use and meaning has been established over a considerable period of time judgment of 25/11/2015,T-223l14,Yent Roll, EU: T: 2OI5:879, S 39)". In addition, a common and descriptive technical term would reasonably have been a common in 2001 as well. If the substance was known in 2001, whether or not an abbreviation was in the dictionary at that time is less relevant.

Hence, the Cancellation division can make a reasonable conclusion that the contested EUTM was descriptive by that time, for part of the goods.

In addition, the fact that a descriptive use of the term applied for cannot be ascertained at the date of filing is not necessarily relevant. Examination of Article 7(1)(c) EUTMR has to be made by means of prognostics (assuming that the mark will be used with respect to the goods or services claimed). It follows clearly from the text of Article 7(1)(c) EUTMR that it suffices if the mark 'may serve' to designate characteristics of the goods and services (judgment of 23lLOl2OO3, C-19ll01 P, Doublemint, EU:C:2003:579, S 33)"

It is not necessary for the applicant to prove that the word is the subject of a dictionary entry in order to refuse a sign. What matters is the ordinary and plain meaning. In addition, terms used as specialised terminology to designate the respective relevant characteristics of the goods and services are to be considered descriptive. In these cases it is not required to demonstrate that the meaning of the term is immediately apparent to the relevant consumers to which the goods and services are addressed. It suffices that the term is meant to be used, or could be understood by part of the relevant public, as a description of the goods or services for which protection is sought, or a characteristic of the goods and services (judgments of 17/09/2008, T-226/07, Pranahaus, EU:T:2008:381, § 36, and of 18/11/2015, T-558/14, TRILOBULAR, EU:T:2015:858, § 50).

Pharmaceuticals in Class 5 are intended for a very broad segment of the public (patients). The contested mark is likely to have another meaning which per se is not an argument that weight in favour of non-descriptiveness. If a term has several meanings, it suffices for a refusal under Article 7(1)(c) EUTMR if at least one of the possible meanings of the term is descriptive in relation to the relevant goods and services (judgment of 23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32; confirmed by judgment of 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 97). A fortiori if several meanings of a term are descriptive of different goods and service, the mark shall be refused.

It is possible that the general public does not know that HYAL(O) is used in relation with ‘hyaluronic acid’ but the professional public does because of its etymology. ‘Medical terminology often uses words created using prefixes and suffixes in Latin and Ancient Greek. In medicine, their meanings, and their etymology, are informed by the language of origin. Prefixes and suffixes, primarily in Greek—but also in Latin, have a dropable -o-‘ (see https://en.wikipedia.org/wiki/Medical_terminology).

HYAL can give an indication that the products contain ‘hyaluronic acid’, which is an ingredient that describes the goods’ and, from the perspective of the relevant consumers, indicates a desirable property of these goods. It is of little significance whether end consumers know the INN or stem of hyaluronic acid which is not HYAL but HA. This could even be difficult for most of the expert public (e.g. nurses, expert sales staff in pharmacies) targeted in Class 5 (decision of 14/02/2017, R 1450/2017-4, Hyaluron, § 17). As shown in the Wikipedia article on hyaluronic acid, also mentioned by the EUTM proprietor in annex 2, ‘Hyaluronic acid is derived from ‘hyalos’ (Greek for vitreous) and ‘uronic’ acid because it was first isolated from the vitreous humour and possesses a high uronic acid content’.(https://en.wikipedia.org/wiki/Hyaluronic_acid). Hyaluronic acid 'modern era' began in the 1970s in medicine. Therefore in 2001, it is no speculation to consider that the use of HYAL for medicines containing ‘hyaluronic acid’ was likely to become descriptive.

Therefore, it appears to the Cancellation Division that there may be grounds for considering that the potentially descriptive meaning of HYAL also applies to part of the goods applied for in class 5. The notion at issue may be found as indicating the desirable kind and quality of part of the goods applied for.

This element will be understood by the relevant public throughout the European Union since the word HYAL refers to ‘HYALURONIC’ which is very close to the equivalent words in the official languages of the Member States in the relevant territory (e.g. ‘hyaluronique’ in French, ‘hialurónico’ in Spanish, ‘hyaluron’ in German, Danish and Swedish,‘hyaluronová’ in Czech, ‘hialuronska’ in Slovenian, ‘hialuronowy’ in Polish, ‘hialurono’ in Lithuanian etc.).

As regards part of the goods in Class 5, namely pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; biomaterials, the contested mark filed on 2001 is only composed of a sole verbal element ‘HYAL’ which has a Greek etymology and conveys the notion ‘hyaluronic acid’. Use of Greek prefixes is common in the medical area and in the related veterinary and sanitary ones as well (see also 05/04/2006, T‑202/04, Echinaid, EU:T:2006:106, § 44 and 45).

As to dietetic substances, hyaluronic acid can be taken in a tablet form, hence the sign at stake will also describe the content of the ‘dietary supplements and dietetic preparations’, in particular known as beauty capsules (decision of 14/02/2017, R 1450/2017-4, Hyaluron, § 19).

As to biomaterials, they are, according to the Collins dictionary ‘a synthetic material used in prostheses or the replacement of natural body tissue’ (see https://www.collinsdictionary.com/dictionary/english/biomaterial) and are related to medical use of hyaluronic acid.

The Cancellation Division notes that ‘hyaluronic acid’ is used to a significant degree in pharmaceutical and cosmetic applications and has a skin-smoothing, wrinkleredacting effect (decision of 14/2/2017, R 1450/2016-4, Hyaluron, § 16). The same was confirmed by the applicant, in its arguments and evidence, namely the screenshots of the various beauty and medicinal products containing hyaluronic acid (Annex 13) showing products with the hyaluronic acid as main ingredient) proving that the substance is known to be a ‘rejuvenation agent’, with intense hydrating and moisturising effect, used in anti-wrinkles creams, useful for removing scars, acne; and also as a dietary supplement. Nevertheless, none of the goods covered in class 3 are cosmetics therefore the term is distinctive for these goods as well as the remaining chemicals in class 1 and for the remaining goods in class 5.

Family of marks

The EUTM proprietor argues that it is using HYAL as a common element of many trade marks and that the EUIPO has recognised that it has a family of marks around this common element:

The EUIPO has stated in decision N° 10 222 C of 16/03/2016 that “Firstly, the EUTM proprietor demonstrated (although not required) that the contested EUTM forms part of a list of registrations in its name that all have in common the prefix HYAL, which is a so called family of ‘Hyal’ marks. In the present proceedings the EUTM proprietor was not required to show use of such family of marks; however it filed some documents in order to prove that at least some of the trade marks are present on the market and that the Office has acknowledged (although in quite older proceedings) the existence of such family of ‘Hyal’ marks”.

The Board of Appeal confirmed this decision in R 872/2016-1 of 17/01/2017 and considered that “By contrast, the EUTM proprietor – although under no obligation to do so – has established (by submitting sample invoices, labels and product inserts) that it sold products with the element ‘HYAL’ long before 2010, i.e. even before the year in which the cancellation applicant was established”.

It is true that an assumption of a family of marks on the part of the public requires that the common denominator of the contested application and the earlier family of marks must have a distinctive character, either per se or acquired through use, to allow a direct association between all of these signs. Likewise, there will be no assumption of a family of marks where the further components of the earlier signs have a greater impact in the overall impression of those signs.

Nevertheless, even if HYAL had been considered distinctive in previous opposition decisions and as the core element of a family of marks, this would not have an impact on the present decision as even the registration of a European Union trade mark cannot give rise to a legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings (see above).

The applicant on the opposite considers that it would be contrary to freedom of competition to protect as a family mark an element, which is in itself descriptive and indistinctive. So long as HYAL, as such, is a common, descriptive and indistinctive term, it should not be regarded as a family mark, and its use as a component in other marks should not be regarded as use of the mark HYAL. As such, there is no use of HYAL.

In so far as both parties refer to the use of the contested mark ‘HYAL’, this is not subject of the current proceedings. The cancellation applicant has started cancellation proceedings under Article 58(1)(a) EUTMR for non-use and this will be examined in  15  029 C .

Conclusion

As a conclusion, the element ‘HYAL’ is descriptive of the characteristics of part of the goods in Classes 1 and 5, namely

Class 1: Chemicals used in industry and science.

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; biomaterials.

because it evokes HYAL genes or the concept of ‘hyaluronic acid’, a substance used as an ingredient in a wide array of chemicals and pharmaceutical products. It could be argued that being confronted with the contested mark the relevant public may immediately think that the goods, or at least some of them, offered by the EUTM proprietor contain ‘hyaluronic acid’. In that case the sign would describe those goods as an indication of kind and quality.

For theses goods, there is no need to assess the remaining grounds. The decision continues with the remaining goods, namely:

Class 1: Chemicals used in photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; perfumery, essential oils, hair lotions; dentifrices.

Class 5: Food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Non-distinctiveness – Article 7(1)(b) EUTMR

For the rest of the goods, the non-distinctiveness arguments of the applicant are only based on the assumption that the mark is descriptive for them, which, as seen above, is not the case and since there are no other arguments, Article 7 (b) EUTMR is also rejected for them.

Customary character – Article 7(1)(d) EUTMR

Article 7(1)(d) EUTMR excludes from registration signs that consist exclusively of words or indications that have become customary in the current language or in the bona fide and established practices of the trade at the relevant point in time. In this context, the customary nature of the sign usually refers to something other than the properties or characteristics of the goods or services themselves.

Although there is a clear overlap between the scope of Article 7(1)(d) and Article 7(1)(c) EUTMR, signs covered by Article 7(1)(d) EUTMR are excluded from registration not because they are descriptive, but on the basis of their current usage in trade sectors covering the goods or services for which the mark is applied for (judgment of 04/10/2001, C-517/99, Bravo, EU:C:2001:510, § 35). This ground for refusal also covers certain abbreviations that have entered informal or jargon usage and have thereby become customary in trade.

In the present case, the applicant has not proven that the mark had become customary in trade at the filing date of the EUTM application for any of the goods for which the mark has been found distinctive and not descriptive.

The decision shall continue on the remaining grounds.

Article 59 (1)(b) EUTMR – Bad Faith

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 37).

Where the applicant for a declaration of invalidity seeks to rely on bad faith, it is for that party to prove the circumstances which substantiate a finding that the EU trade mark proprietor had been acting in bad faith when it filed the application for registration of that mark (judgement of 14/02/2012, T-33/11, ‘BIGAB’, para 17).

Bad faith might be applicable when the parties involved have or have had any kind of relationship, such as (pre-/post-) contractual relationships, giving rise to mutual obligations and a duty of fair play in relation to the legitimate interests and expectations of the other party (13/11/2007, R 336/2007‑2, CLAIRE FISHER / CLAIRE FISHER, § 24).

In view of the foregoing, the Cancellation Divisions notes that the applicant has failed to submit any evidence to prove that the application for the registration of the contested mark was made in bad faith. The applicant limited itself to considering that the EUTM proprietor has never used the mark HYAL as such and that the only purpose of the contested registration is to be used against competitors in opposition proceedings so as to achieve a broader range of protection for other marks. It considers that such a use, which is destined for opposition proceedings against competitors, is an illegitimate one, because it is destined to restrict competition and prohibit competitors from using a descriptive term, or a term which is at least of very limited distinctiveness; that is, a term that competitors would be otherwise entitled to use.

The Cancellation Division does not consider this as a valid argument for finding a bad faith in the EUTM proprietor’s actions. As regards the EUTM system, this does not require an intention to use the EUTM at the time of filing. Neither the EUTMR contains any obligation for a Community trade mark applicant to confine its application to goods and services which form part of its actual or future commercial activities. The Office has no competency in evaluating commercial activities of applicants in this respect. The principle means, in balancing the public interest in the availability of EUTM which are not put to genuine use, rest on the provisions in the EUTMR concerning, as the case may be, the required genuine use in opposition and revocation proceedings. Thus, absence of intent to use is not a ground for establishing bad faith.

The same applies for the registrations which the applicant claims are not used by the EUTM proprietor. In such a case, the applicant has at its disposition legal actions to revoke the rights of the EUTM proprietor in respect of the trade marks it does not use. Non use of the EUTM proprietor’s previous registrations does not imply automatically that by filing a new application for registration the EUTM proprietor should be considered falling short of the standards of acceptable commercial behaviour.

As stated above, for a finding of bad faith, there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is no evidence that could reflect such a situation.

As previously mentioned, the Cancellation Divisions notes that the applicant has failed to submit evidence to prove that the application for the registration of the contested mark was made in bad faith. The applicant limited itself to submitting some arguments and to replying further to the evidence filed by the EUTM proprietor, although the latter was under no obligation to provide evidence of use of its trade mark. It has to be highlighted again that it is not up to the proprietor to prove a negative point; indeed the burden of proof is with the applicant, who has to submit evidence to prove its assertions. In addition, the EUTM proprietor has a legitimate interest in filing the contested trade mark. Extending the protection of a national mark by registering it as an EUTM falls within a company’s normal commercial strategy (judgment of 14/02/2012, T-33/11, Bigab, EU:T:2012:77, § 23; judgment of 01/02/2012, T-291/09, Pollo Tropical chicken on the grill, EU:T:2012:39, § 58).

Consequently, the claim under Article 59(1)(b) EUTMR is rejected as unfounded as the applicant did not file any evidence to proof the EUTM proprietor’s bad faith.

In the light of the above, the Cancellation Division concludes that the application should

be rejected on the ground of bad faith for the goods for which the mark was found not descriptive and distinctive.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is partially successful and the European Union trade mark should be declared invalid for part of the contested goods, namely:

Class 1: Chemicals used in industry and science.

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; biomaterials.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Janja FELC

Jessica LEWIS

Michaela SIMANDLOVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.