Case T‑293/21

Ulrike Muschaweck

v

European Union Intellectual Property Office

Judgment of the General Court (Sixth Chamber), 8 June 2022

(EU trade mark – Revocation proceedings – EU word mark UM – Genuine use of the mark – Use with the consent of the proprietor – Use in the form in which the mark was registered – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) – Representation by the proprietor of the trade mark – Evidence of use submitted within the time limit set)

EU trade mark – Proceedings before the Office authorities – Directives of the Office – Scope – Rules on the extension to an extendable time limit established by the Office – Account taken of evidence submitted between a second request for an extension and a response of the Office

(see paragraphs 38-44)

Résumé

In 2010, MSM medical company ( 1 ) filed an application for registration of the word sign UM as an EU trade mark for medical services. In 2015, that company became subject to insolvency proceedings and an insolvency administrator was appointed.

The applicant, Ms Ulrike Muschaweck, then filed, in 2017, an application for revocation of the contested mark on the ground of lack of genuine use of that mark. ( 2 ) After the declaration of bankruptcy of MSM medical company, the same year, that mark was transferred to HUMJC medical practice, ( 3 ) and, one year later, relisted in the name of Mr Joachim Conze, legal successor of that medical practice.

The Cancellation Division of the European Union Intellectual Property Office (EUIPO) upheld the applicant’s application in part, revoking the contested mark in respect of all the goods and services registered, with the exception of medical services in the field of hernia surgery. That decision was the subject of an appeal which was dismissed by the Second Board of Appeal of EUIPO.

Hearing an action for annulment of those two decisions, the General Court interprets for the first time the EUIPO Guidelines for Examination of European Union trade marks ( 4 ) and, in so doing, provides clarification on the extension of a time limit in the event of a second request for an extension of an extendable time limit. Accordingly, the Court dismisses the action and holds that the contested mark has in fact been put to genuine use in connection with medical services in the field of hernia surgery.

Findings of the Court

In the first place, the General Court considers that Mr Conze was entitled to authorise, of his own volition and without the applicant’s agreement, in his capacity as partner of HUMJC medical practice, the law firm which represented the latter before the Cancellation Division. If the applicant had had to approve the decision relating to that representation, there would have been a high risk that she would not approve it, given her status as cancellation applicant in respect of the contested mark. Such a situation would undermine HUMJC medical practice’s right to effective judicial protection. ( 5 )

In the second place, the Court rejects the plea relating to the late submission, before the Cancellation Division, of the evidence of use of the contested mark by HUMJC medical practice.

The Court recalls that the EUIPO examination guidelines are a consolidated set of rules setting out the line of conduct which EUIPO itself proposes to adopt and that, provided that those rules are consistent with provisions of a superior rule of law, EUIPO must comply with those rules. Although those guidelines lack binding force, they are nevertheless a source of reference on EUIPO’s practice in relation to trade marks. According to the EUIPO examination guidelines, where a request is filed for an extension to an extendable time limit before this time limit expires and is not accepted, the party concerned will be granted at least one day to meet the deadline, even if the request for an extension arrives on the last day before the expiry of the time limit. ( 6 ) In order to preserve the practical effect of those guidelines, the Court holds that that new time limit will be granted from the date on which the adjudicating body of EUIPO before which the request for an extension of a time limit is brought provides its response. In addition, a second request for an extension of the same time period must be refused unless the party requesting it can explain and properly justify the ‘exceptional circumstances’ which prevented it from carrying out the required action during the previous two time periods. ( 7 )

In the present case, the Court finds, first, that the time limit for submitting evidence of use of the contested mark, the extension of which was requested for a second time by HUMJC medical practice, is an extendable time limit and that that medical practice submitted that request on the last day before the expiry of that time limit. Second, it observes that the fact of granting, essentially on the grounds of fairness, at least one additional day of extension following a request for an extension of a time limit filed on the last day of that period does not infringe a provision of a superior rule of law. Consequently, the Cancellation Division could not have merely dismissed the second request for an extension of the time limit of HUMJC medical practice, without granting further time running from the date of the communication of its response. Therefore, the evidence produced between the submission of that second request for an extension of the time limit and the Cancellation Division’s response cannot be regarded as having been submitted out of time and must be taken into account for the purposes of examining the use of the contested mark.

In the third and last place, the Court confirms the existence of genuine use of the contested mark for medical services in the field of hernia surgery. First of all, the Court states that the period to be taken into consideration for the evidence of genuine use of the contested mark is comprised of the five years preceding the date of introduction of the application for revocation, even if that period coincides in part with the grace period. ( 8 ) Next, the Court holds that the contested mark had been used by HUMJC medical practice with the consent of MSM medical company, proprietor of that mark during the period at issue. More specifically, implicit consent of use of the contested mark had been given, for a number of years, by the insolvency administrator of that company. Finally, ruling on the territorial use of the contested mark, the Court finds that the evidence shows that HUMJC medical practice was active not only in Munich, but also throughout Germany and in London.

( 1 ) Medizinische Systeme Dr Muschaweck GmbH (‘MSM medical company’).

( 2 ) Under Article 51(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

( 3 ) Hernienzentrum medical practice Dr Ulrike Muschaweck und PD Dr Joachim Conze PartG.

( 4 ) Hereinafter ‘the EUIPO examination guidelines’. They may be consulted on EUIPO’s website.

( 5 ) In accordance with Article 47 of the Charter of Fundamental Rights of the European Union.

( 6 ) Paragraph 4.3 of the EUIPO examination guidelines, relating to the extension of time limits set by EUIPO.

( 7 ) Idem.

( 8 ) Under the first subparagraph of Article 15(1) and Article 51(1)(a) of Regulation No 207/2009, that grace period covers the period of five years following the date of registration of the EU trade mark. During that period, the rights of the proprietor cannot be declared to be revoked.