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

JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

27 February 2018 (*)

(EU trade mark — Revocation proceedings — EU word mark MAGELLAN — Genuine use — Burden of proof — Article 15 and Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 18 and Article 58(1)(a) of Regulation (EU) 2017/1001) — Procedural irregularity committed by the Cancellation Division — Obligation to state reasons — Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001) — Oral proceedings — Article 77 of Regulation No 207/2009 (now Article 96 of Regulation 2017/1001))

In Case T‑222/16,

Hansen Medical, Inc., established in Mountain View, California (United States), represented by R. Kunze, G. Würtenberger and T. Wittmann, lawyers,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Covidien AG, established in Neuhausen am Rheinfall (Switzerland), represented by R. Ingerl and D. Wiedemann, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 3 February 2016 (Cases R 3092/2014-2 and R 3118/2014-2), relating to revocation proceedings between Hansen Medical, Inc. and Covidien AG,

THE GENERAL COURT (Fourth Chamber),

composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín (Rapporteur) and I. Reine, Judges,

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 11 May 2016,

having regard to the response of EUIPO lodged at the Court Registry on 15 August 2016,

having regard to the response of the intervener lodged at the Court Registry on 12 August 2016,

further to the hearing on 11 October 2017,

gives the following

Judgment

 Background to the dispute

1        On 3 November 2006, the intervener, Covidien AG, 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) (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)).

2        Registration as a mark was sought for the word sign MAGELLAN.

3        The goods and services in respect of which registration was sought are in Class 10 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 to the following description: ‘Surgical, medical, dental and veterinary apparatus and instruments, namely injection devices and their components for all manner of injection, collection and transfer of tissue and fluids’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 15/2007 of Monday, 16 April 2007 and was registered on 29 October 2007.

5        On 1 February 2013, the applicant, Hansen Medical Inc., filed an application for revocation, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1) of Regulation 2017/1001), of the registered mark, alleging that there had been no genuine use of the mark during a continuous period of five years.

6        On 10 July 2013, the intervener lodged documentary evidence with EUIPO intended to demonstrate the use of the contested mark.

7        On 26 March 2014, the applicant submitted observations in which it contested the validity of the evidence put forward to prove genuine use of the contested mark.

8        On 21 August 2014, in response to the applicant’s observations, the intervener lodged observations and provided additional evidence. The applicant was not invited to reply to those observations or take a position on such evidence.

9        By decision of 6 October 2014, the Cancellation Division dismissed the application for revocation in respect of ‘medical apparatus and instruments, namely injection devices and their components for all manner of injection, collection and transfer of tissue and fluids’. It held that use of the injection devices in the context of medical procedures was proved by the evidence filed by the intervener on 10 July 2013. It also found that the further evidence submitted on 21 August 2014 reinforced the probative nature of the evidence initially submitted by the intervener.

10      However, the Cancellation Division granted the revocation application for revocation in relation to the following goods: ‘surgical, dental and veterinary apparatus and instruments’. It held that none of the evidence provided by the intervener allowed it to be established that the injection devices in respect of which genuine use had been proved in the context of medical procedures had also been used in surgical, dental or veterinary procedures.

11      On 3 December 2014, the intervener filed a notice of appeal with 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, in so far as it had granted the revocation application.

12      On 4 December 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division, in so far as it had rejected the revocation application.

13      By decision of 3 February 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO joined the appeals brought by the applicant and the intervener, pursuant to Article 7(1) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of OHIM (OJ 1996 L 28, p. 11). It rejected the applicant’s request for oral proceedings, under Article 77(1) of Regulation No 207/2009 (now Article 96(1) of Regulation 2017/1001), and held that it had before it all the information needed to decide both cases. It upheld the intervener’s appeal and dismissed the applicant’s appeal, rejecting the application for revocation of the contested mark as regards all of the goods for which it had been registered.

14      Regarding the intervener’s appeal, the Board of Appeal held, at paragraphs 34 and 36 of the contested decision, that the contested mark did not cover ‘surgical, medical, dental and veterinary apparatus and instruments’ but was restricted to ‘injection devices and their components for all manner of injection, collection and transfer of tissue and fluids’. Thus, in paragraph 40 of that decision, it found that none of the evidence in the documents before the Court demonstrated that an injection device used in medical procedures was different from an injection device used in dental, surgical and veterinary procedures. In paragraph 41 of that decision, it concluded that the Cancellation Division had made an arbitrary separation of the goods into different sub-categories and, if the evidence were found to be sufficient, it had to be found that genuine use of the contested trade mark covered all the goods for which that mark had been registered in Class 10.

15      With regard to the action brought by the applicant, the Board of Appeal found, in paragraph 46 of the contested decision, that, in the light of Article 57(1) of Regulation No 207/2009 (now Article 64 of Regulation No 2017/1001), by failing to invite the applicant to submit observations on the evidence of use and the additional comments submitted by the intervener on 21 August 2014, the Cancellation Division had committed a procedural irregularity. Nonetheless, it referred to the case-law under which a procedural irregularity can entail the annulment of a decision only if it is shown that, had it not been for that irregularity, the decision might have been substantively different (see judgment of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM — Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 79 and the case-law cited). It concluded that in the present case the lack of an opportunity to submit observations on the additional evidence and observations filed by the intervener on 21 August 2014 had not affected the outcome of the proceedings before the Cancellation Division.

16      Taking account of all of those considerations, the Board of Appeal annulled the Cancellation Division’s decision in part, in so far as it revoked the contested mark for ‘surgical, dental and veterinary apparatus and instruments’.

 Forms of order sought

17      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

18      EUIPO contends that the Court should:

–        dismiss the action for annulment in its entirety;

–        order the applicant to pay the costs incurred by EUIPO.

19      The intervener contends that the Court should:

–        uphold the contested decision;

–        order the applicant to pay the costs.

 Law

20      The form of order sought by the intervener, requesting that the Court uphold the contested decision, must be understood as inviting the Court to dismiss the applicant’s action (see, to that effect, judgment of 23 February 2010, Özdemir v OHIM — Aktieselskabet af 21. november 2001 (James Jones), T‑11/09, not published, EU:T:2010:47, paragraph 14).

21      The applicant puts forward five pleas in law in support of the action. The first plea alleges infringement of Articles 15 and 51(1)(a) of Regulation No 207/2009 (now Articles 18 and 58(1)(a) of Regulation 2017/1001). The second plea alleges infringement of Article 57(1) of Regulation No 207/2009 (now Article 64(1) of Regulation 2017/1001), of Article 63(2) of Regulation No 207/2009 (now Article 70(2) of Regulation 2017/1001), of Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001) and of Article 76(2) Regulation No 207/2009 (now Article 95 of Regulation 2017/1001), as well as of Rule 40(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1). The third plea alleges infringement of the second sentence of Article 64(1) of Regulation No 207/2009 (now Article 71 of Regulation 2017/1001). The fourth plea alleges infringement of Article 75 of Regulation No 207/2009. The fifth plea alleges infringement of Article 77 of Regulation No 207/2009 (now Article 96 of Regulation 2017/1001).

 The first plea, alleging infringement of Articles 15 and 51(1)(a) of Regulation No 207/2009

22      The applicant argues that by disregarding the scope of protection granted by the contested mark and the ‘concept of the class headings’ of the Nice Classification, the Board of Appeal infringed Articles 15 and 51(1)(a) of Regulation No 207/2009.

23      First, the applicant submits that evidence of the use of the contested mark for ‘medical apparatus and instruments, namely injection devices and their components for all manner of injection, collection and transfer of tissue and fluids’ is not capable of proving the use of the mark for ‘surgical, dental and veterinary apparatus and instruments’.

24      Second, the applicant claims that, when the intervener applied for registration of the contested mark, it decided that it was to cover the various class headings of Class 10 of the Nice Classification. In that regard, the applicant submits that the contested mark does not relate to ‘injection devices and their components for all manner of injection, collection and transfer of tissue and fluids in the form of surgical, medical, dental and veterinary apparatus and instruments’, but to four different general class indications belonging to that class, namely ‘surgical apparatus and instruments’, ‘medical apparatus and instruments’, ‘dental apparatus and instruments’ and ‘veterinary apparatus and instruments’. Moreover, the specification differentiates between ‘instruments’ as opposed to ‘apparatus’, these being classified as different product categories.

25      It must be stated that, as the Board of Appeal noted in paragraph 37 of the contested decision, according to case-law, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (see judgment of 10 December 2015, Sony Computer Entertainment Europe v OHIM — Marpefa (Vieta), T‑690/14, not published, EU:T:2015:950, paragraph 61 and the case-law cited).

26      However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category (see, to that effect, judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45, and of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23).

27      As the Board of Appeal noted in paragraph 38 of the contested decision, although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of such a trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. It must be observed in that regard that, in practice, it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘some of the goods or services’ within the meaning of Article 51(2) of Regulation No 207/2009, cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories (judgments of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 46; of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 24, and of 10 December 2015, Vieta, T‑690/14, not published, EU:T:2015:950, paragraph 62).

28      In that regard, it must be observed that, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers do employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a sub-category of goods or services (judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 29).

29      In addition, the provisions of Article 42 of Regulation No 207/2009 (now Article 47 of Regulation 2017/1001) allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use of the mark has been established, on the one hand, are a limitation on the rights which the proprietor of the earlier trade mark gains from his registration, and, on the other hand, must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him (judgment of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 51).

30      In the present case, it must, in the first place, be noted that the Board of Appeal was fully entitled to find, in paragraph 36 of the contested decision, that the contested mark did not cover ‘surgical, medical, dental and veterinary apparatus and instruments’ as four separate categories, but, because of the term ‘namely’, was referring to a dedicated sub-group of goods consisting of ‘injection devices and their components for all manner of injection, collection and transfer of tissue and fluids’. Furthermore, as the use of that expression also shows, it is not possible to consider that that mark had been registered, as the applicant argues, for each of those four categories

31      In the second place, it should be observed that it is not disputed by the parties that the intervener had provided evidence of genuine use of the contested mark for ‘medical apparatus and instruments, namely, injection devices and their components for all manner of injection, collection and transfer of tissues and fluids’. In addition, it follows from the documents before the Court that the intervener proved the genuine use of that mark for hypodermic injection devices and for injection devices intended to be used for phlebotomy and the injection of insulin and tuberculin.

32      Furthermore, the applicant’s argument that, in essence, the ‘medical apparatus and instruments, namely injection devices and components for all manner of injection, collection and transfer of tissues and fluids’ are not ‘surgical, dental and veterinary apparatus and instruments’ cannot succeed. Indeed, it must be pointed out that, as was rightly held by the Board of Appeal in paragraph 40 of the contested decision, none of the evidence in the documents before the Court shows that an injection device used in medical procedures differs from an injection device used in dental, surgical or veterinary procedures.

33      It follows that, as the Board of Appeal rightly found in paragraph 41 of the contested decision, the intervener has correctly established the genuine use of the contested mark in respect of all the goods for which that mark was registered.

34      Accordingly, the first plea must be rejected.

 The second plea, alleging infringement of Articles 57(1), 63(2), 75 and 76(2) of Regulation No 207/2009 and of Rule 40(3) of Regulation No 2868/95

35      The applicant argues that, by taking into account the additional items of evidence submitted by the intervener on 21 August 2014 and by failing to grant it the right to submit its observations, the Board of Appeal committed a procedural irregularity and infringed Articles 57(1), 63(2), 75 and 76(2) of Regulation No 207/2009 and Rule 40(3) of Regulation No 2868/95. It claims that those items of evidence were manifestly decisive for the outcome of the proceedings, in so far as, at pages 5 to 7 of its decision, the Cancellation Division based its reasoning on that evidence.

36      The applicant states that the Board of Appeal acknowledged, in paragraph 46 of the contested decision, that EUIPO had committed a procedural irregularity. However, the Board of Appeal was wrong to hold that the procedural error committed by the Cancellation Division had been remedied in the course of the appeal proceedings. By its second plea, the applicant thus claims, in essence, that the Board of Appeal committed a procedural irregularity.

37      It is common ground that, on 21 August 2014, in response to the applicant’s observations, the intervener submitted observations and presented additional evidence and that the Cancellation Division did not invite the applicant to reply to those observations or take a position on such evidence.

38      It follows from Article 75 of Regulation No 207/2009 that the decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. Consequently, EUIPO, by depriving the applicant of the opportunity to submit its observations on the additional evidence that it had accepted, committed a procedural irregularity, as was correctly stated in paragraph 46 of the contested decision.

39      However, it must be noted that, as the Board of Appeal was right to find in paragraph 47 of the contested decision, a procedural irregularity will entail the annulment of a decision in whole or in part only if it is shown that had it not been for the irregularity the contested decision might have been substantively different (see, to that effect, judgment of 8 June 2005, Wilfer v OHIM (ROCKBASS), T‑315/03, EU:T:2005:211, paragraph 33 and the case-law cited).

40      As has been pointed out by EUIPO and the intervener, not only is it evident that the applicant was able to submit before the Board of Appeal in its statement of grounds of appeal its observations on the additional evidence put forward by the intervener, but also, and above all, as is apparent from paragraph 48 of the contested decision, the applicant failed to refer to any facts or evidence in that statement. On the contrary, the applicant stated that it abstained for the time being from commenting on the observations submitted by the intervener on 21 August 2014 and that evidence.

41      It follows from all of the foregoing that the Board of Appeal was right to find, in paragraph 49 of the contested decision, that there was nothing to suggest that the Cancellation Division’s decision would have been different in the absence of the procedural error found.

42      Accordingly, the second plea in law must be rejected.

 The third plea, alleging infringement of the second sentence of Article 64(1) of Regulation No 207/2009

43      The applicant argues that the Board of Appeal infringed Article 64(1) of Regulation No 207/2009 by failing to exercise the powers of the Cancellation Division. It maintains that it follows from paragraph 42 of the contested decision that the Board of Appeal did not carry out a new, full examination of the merits, since it followed the reasoning of the decision taken by the Cancellation Division and found that the evidence before the Cancellation Division was sufficient, while reaching a conclusion contrary to that of the Cancellation Division in respect of ‘dental, surgical and veterinary apparatus and instruments’ and without setting out the factors which led it to that conclusion.

44      It must be noted that Article 64(1) of Regulation No 207/2009 provides that the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. It follows from that provision as well as from the scheme of that regulation that the Board of Appeal has the same powers when ruling on an appeal as the department which was responsible for the contested decision, and that its examination covers the whole dispute as it stands at the date of its ruling. It is apparent also from that provision, as well as from settled case-law, that there is continuity in terms of their functions between the different units of EUIPO, namely the examiner, the Opposition Division, the division responsible for the administration of trademarks and legal issues and the Cancellation Divisions on the one hand, and the Boards of Appeal on the other. It follows from that continuity in terms of their functions between the different departments of EUIPO that, in the context of a review of the decisions taken by the EUIPO units which heard the application at first instance, the Boards are required to base their decision on all the matters of fact and of law which the parties put forward either in the proceedings before the department which heard the application at first instance or in the appeal (see judgment of 10 July 2006, La Baronia de Turis v OHIM-Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, EU:T:2006:197, paragraphs 56 to 58 and the case-law cited).

45      In the present case, it is apparent from the contested decision that the Board of Appeal exercised the powers of the Cancellation Division by carrying out a new examination of the case in question. Indeed, in paragraph 42 of the contested decision, the Board of Appeal found that the evidence submitted by the applicant before the Cancellation Division was sufficient to prove not only the genuine use of the contested mark for ‘medical apparatus and instruments, namely injection devices and their components for all manner of injection, collection and transfer of tissues and fluids’, as that division had concluded, but also for all the goods for which that mark had been registered. Admittedly, in that paragraph the Board of Appeal does refer to the Cancellation Division’s reasons as to the proof of genuine use of the contested mark, but it conducted its own analysis, in paragraph 34 of that decision, according to which the distinction made by the Cancellation Division between the various products was arbitrary. That finding indicates, as pointed out by the intervener, that the Board of Appeal carried out a fresh examination of the case.

46      Accordingly, the third plea in law must be rejected.

 The fourth plea, alleging infringement of Article 75 of Regulation No 207/2009

47      The applicant argues that the Board of Appeal infringed the duty to state reasons laid down in Article 75 of Regulation No 207/2009 by failing to give any adequate reasons in the contested decision or by providing only insufficient or obviously flawed reasons in support of its conclusions.

48      The applicant submits that the Board of Appeal did not provide any ‘evidence’ when it stated, in paragraph 39 of the contested decision, that injection devices were not specific to a medical setting, but were by definition part of the entire category of surgical, medical, dental and veterinary apparatus and instruments. Thus, it claims, that chamber exceeded the limits of its powers, which were limited to the facts and arguments presented by the parties.

49      At the outset, it must be noted that, according to case-law, EUIPO’s obligation to state reasons has the same scope as the obligation laid down in Article 296 TFEU and that it must disclose the author’s reasoning in a clear and unequivocal manner (judgment of 8 March 2013, Mayer Naman v OHIM — Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 56). The duty to state the reasons on which EUIPO’s decisions are based has a twofold objective: to enable the persons concerned to ascertain the reasons for the measure so that they can defend their rights, and to enable the Court to exercise its jurisdiction to review the legality of the decision (judgments of 28 November 2013, Herbacin cosmetic v OHIM — Laboratoire Garnier (HERBA SHINE), T‑34/12, not published, EU:T:2013:618, paragraph 42, and of 25 September 2014, Alma-The Soul of Italian Wine v OHIM — Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑605/13, not published, EU:T:2014:812, paragraph 18).

50      However, the duty to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them (see judgment of 12 July 2012, Guccio Gucci v OHIM — Chang Qing Qing (GUDDY), T‑389/11, not published, EU:T:2012:378, paragraph 16 and the case-law cited). It is therefore sufficient if the institution concerned sets out the facts and the legal considerations having decisive importance in the context of the decision (judgment of 21 May 2014, Eni v OHIM — Emi (IP) (ENI), T‑599/11, not published, EU:T:2014:269, paragraph 30).

51      In the present case, first, it is apparent from the contested decision that the Board of Appeal set out the facts and the legal considerations having decisive importance in the context of the decision. In paragraphs 34 and 36 of that decision, the Board explained that the injection devices for which use had been proved did not form a sub-group of goods corresponding to a single general term on a list of goods, but formed a sub-group of goods to both ‘medical apparatus and instruments’ and to ‘dental, veterinary and surgical apparatus and instruments’. Furthermore, in paragraphs 37 and 38 of that decision, it set out the case-law on which it based its conclusion. Finally, it found, in paragraph 40 of the decision at issue, that the injection devices and components were generally used for all types of injection and that none of the evidence in the documents before the Court demonstrated a difference between the device used in medical procedures and those used in surgical, dental and veterinary procedures.

52      Furthermore, the applicant argues that the Board of Appeal reversed the burden of proof in holding, in paragraph 40 of the contested decision, that there was no evidence in the documents before the Court that showed that a device used in the context of surgical, dental and veterinary procedures somehow differs from an injection device used in the context of medical procedures. The applicant maintains that it was not for it to prove that any such differences existed and that the intervener had to prove that its injection devices were used in surgical, dental and veterinary procedures.

53      In that regard, it is sufficient to observe that, even assuming that that argument and those set out at paragraph 48 above are well founded, they cannot establish a breach of the duty to state reasons by the Board of Appeal, with the result that it must be declared ineffective in so far as they are raised in support of the fourth plea.

54      The statement of reasons for the contested decision thus enabled the applicant to know the justification for the decision in order to defend its rights and enables the Court to exercise its power to review the legality of that decision. Therefore, the Board of Appeal did not fail to fulfil its obligation to state reasons in the present case.

55      Therefore, the fourth plea in law must be rejected.

 The fifth plea, alleging infringement of Article 77 of Regulation No 207/2009

56      The applicant argues that the Board of Appeal infringed Article 77 of Regulation No 207/2009 by failing to hold oral proceedings or by failing correctly to exercise its discretion as to whether to hold such proceedings. It maintains that the Board of Appeal’s reasoning in paragraph 21 onwards in the contested decision does not allow it to be concluded that the Board of Appeal exercised its discretion. Furthermore, the applicant submits that oral proceedings would have been expedient in the light of the particularities of the matter before the Board of Appeal, namely the fact that two appeals were filed against the decision of the Cancellation Division and that the intervener was late in submitting material. In addition, the applicant claims that oral proceedings would have served the purpose of Article 57(4) of Regulation No 207/2009, under which EUIPO may, if it thinks fit, invite the parties to make a friendly settlement.

57      In that regard, it is sufficient to note that Article 77(1) of Regulation No 207/2009 is worded as follows: ‘If [EUIPO] considers that oral proceedings would be expedient they shall be held either at the instance of [EUIPO] or at the request of any party to the proceedings.’

58      It follows from case-law that the Board of Appeal does have a certain amount of discretion as to the question of whether oral proceedings before it are genuinely necessary (see judgment of 3 February 2011, Gühring v OHIM (Combination of broom yellow and silver grey), T‑299/09 and T‑300/09, not published, EU:T:2011:28, paragraph 34 and the case-law cited).

59      In the present case, the Board of Appeal exercised its discretion, in paragraph 24 of the contested decision, by finding that it was in possession of all the information necessary for its decision. Furthermore, nothing in the documents before the Court suggests that the Board of Appeal did not have before it all the information needed as a basis for the operative part of the contested decision.

60      Consequently, the fifth plea must be rejected.

61      It follows from all the foregoing that the application must be dismissed in its entirety.

 Costs

62      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

63      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Hansen Medical, Inc. to pay the costs.

Delivered in open court in Luxembourg on 27 February 2018.

*      Language of the case: English.

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