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

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

16 June 2021 (*)

(EU trade mark – Invalidity proceedings – EU word mark HYAL – Article 51(1)(a) of Regulation (EC) No 40/94 (now Article 59(1)(a) of Regulation (EU) 2017/1001) – Absolute ground for refusal – Article 7(1)(c) of Regulation No 40/94 (now Article 7(1)(c) of Regulation 2017/1001) – Right to be heard – Audi alteram partem rule – Obligation to state reasons – Sound administration and equal treatment – Article 165(1) of Regulation 2017/1001)

In Case T‑215/20,

Fidia farmaceutici SpA, established in Abano Terme (Italy), represented by R. Kunz-Hallstein and H.P. Kunz-Hallstein, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Sliwinska, V. Ruzek and H. O’Neill, acting as Agents,

defendant,

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

Ioulia and Irene Tseti Pharmaceutical Laboratories SA, established in Athens (Greece), represented by C. Chrysanthis, P.-V. Chardalia and A. Vasilogamvrou, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 24 January 2020 (Case R 613/2019-5), relating to invalidity proceedings between Ioulia and Irene Tseti Pharmaceutical Laboratories and Fidia farmaceutici,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira, President, D. Gratsias and M. Kancheva (Rapporteur), Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 21 April 2020,

having regard to the response of EUIPO lodged at the Court Registry on 6 July 2020,

having regard to the response of the intervener lodged at the Court Registry on 25 May 2020,

further to the hearing on 11 March 2021,

gives the following

Judgment

 Background to the dispute

1        On 30 October 2001, the applicant, Fidia farmaceutici SpA, 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, and 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 HYAL.

3        The goods in respect of which registration was sought are in Classes 1, 3 and 5 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 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’.

4        On 13 February 2008, the sign applied for was registered as an EU trade mark under number 2430221 in respect of the goods referred to in paragraph 3 above.

5        On 21 April 2017, the intervener, Ioulia and Irene Tseti Pharmaceutical Laboratories SA, filed with EUIPO an application for a declaration of invalidity of the applicant’s EU trade mark in respect of all the goods covered by that mark, in accordance with Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b), (c) and (d) of Regulation No 207/2009 (now Article 7(1)(b), (c) and (d) of Regulation 2017/1001) and Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001).

6        By decision of 4 February 2019, the Cancellation Division partially upheld the application for a declaration of invalidity and declared the contested mark invalid in respect of ‘chemicals used in industry and science’ in Class 1 and ‘pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; biomaterials’ in Class 5, on account of the descriptiveness of the sign HYAL with regard to those goods. The Cancellation Division dismissed the application for a declaration of invalidity as to the remainder.

7        On 18 March 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.

8        By decision of 24 January 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to repay the costs incurred by the intervener in the invalidity proceedings.

9        At the outset, the Board of Appeal agreed to take into account, pursuant to Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), the additional evidence adduced by the intervener on 1 October 2019, for the first time before the Board of Appeal, for the purposes of substantiating the use of the sign HYAL as a descriptive term of the goods in question.

10      Next, the Board of Appeal found, as the Cancellation Division did, that the relevant public was composed of professionals in respect of the goods in Class 1 and of professionals and the general public in respect of the goods in Class 5. Similarly, it noted that the sign HYAL had two different meanings. On the one hand, it was used, in particular in scientific publications, as an abbreviation of the term ‘hyaluronidase’, an enzyme encoded by the human genes HYAL 1, HYAL 2, HYAL 3, HYAL 4 and HYAL 5. According to the Board of Appeal, the contested sign referred both to those genes and to the enzyme itself. On the other hand, the Board of Appeal stated that the term ‘hyal’ was a prefix which meant ‘glassy’ or ‘transparent, relating to or resembling glass’ and that it could be understood by the relevant professional public as a direct reference to hyaluronic acid as an ingredient widely used in pharmaceutical and cosmetic preparations. The Board of Appeal also noted that, for the professional public, there was a close operational relationship between the terms ‘hyaluronic acid’ and ‘hyaluronidase’, in that hyaluronidases, which are enzymes, degraded that acid, which is also called ‘hyaluron’ in English.

11      Furthermore, with regard to the goods in Class 1, the Board of Appeal found that the sign HYAL, as a reference to hyaluronidase, an active ingredient appearing in the list of international common names (‘the list of INNs’) and used as a chemical substance in pharmaceutical preparations, should be regarded as descriptive of ‘chemicals used in industry and science’. In that regard, the Board of Appeal added that, although the evidence adduced by the intervener did not fall within the relevant period, namely the date of the application for registration of the sign HYAL, it was accepted that a term used subsequently as an abbreviation in official sources would also have been used at an earlier date in so far as the substance in question was known at that time, like in this case.

12      Furthermore, with regard to the goods in Class 5, the Board of Appeal found that, at least for the professional public, the term ‘hyal’ indicated that those goods contained hyaluronic acid as an active ingredient and that it could also be associated with the well-known properties specific to that substance, namely a glassy or transparent effect. On that basis, the Board of Appeal found, in short, that, at the time of its application for registration, the sign HYAL was capable of designating the nature or the intended purpose or the properties of ‘pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; biomaterials’.

13      Lastly, the Board of Appeal concluded that the Cancellation Division did not err in finding that the contested mark did not fulfil its function as an indicator of the origin of the goods in question in Classes 1 and 5 and that it had to be declared invalid in accordance with Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) of that regulation.

 Forms of order sought

14      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

15      EUIPO and the intervener contend that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

16      In support of its action, the applicant relies, in essence, on five pleas in law, alleging (i) infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) of that regulation, (ii) infringement of the right to be heard and of the audi alteram partem rule, (iii) infringement of Article 95(1) of Regulation 2017/1001, (iv) infringement of the obligation to state reasons and of the principles of sound administration and equal treatment, and (v) infringement of Article 165(1) of Regulation 2017/1001 and of Articles 32(f) and 39(2) of Regulation 2018/625.

 The application ratione temporis of the regulations on the EU trade mark

17      In view of the date of submission of the application for registration at issue, that is to say, 30 October 2001, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94, as amended (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

18      Accordingly, in this case, with regard to the substantive rules, the references made by the Board of Appeal, in the contested decision, and by the parties, in their arguments, to Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) of that regulation, must be understood as referring to Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(c) of that regulation, as amended, which are identical in content.

19      However, since, in accordance with settled case-law, procedural rules are generally deemed to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the second, third, fourth and fifth pleas in law, which relate to alleged procedural infringements, will be examined in the light of the provisions of Regulation 2017/1001 and Delegated Regulation 2018/625 relied on by the applicant.

 The first plea in law, alleging infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(c) of that regulation

20      The applicant disputes, in essence, the finding of the Board of Appeal that the sign HYAL was descriptive of the goods at issue in Class 1 and in Class 5 as on the date of the application for registration of that sign.

21      As regards, in the first place, the goods in Class 1, the applicant takes the view that the sign HYAL is not descriptive with regard to ‘chemicals used in industry and science’ and that the assessment of the Board of Appeal, in that regard, is based on errors of fact.

22      First, the applicant claims that the term ‘hyal’, by itself, is not used in reference to any commercially available chemical substance or active ingredient, as the Board of Appeal wrongly held. The evidence adduced by the intervener merely shows that that term refers to human genes, such as HYAL 1, HYAL 2, HYAL 3, HYAL 4 and HYAL 5. However, the applicant submits that genes, which constitute the DNA of plant and animal cells, cannot be marketed or regarded as chemical substances intended for pharmaceutical preparations.

23      Second, the applicant disputes that the term ‘hyal’ is used by itself as an abbreviation of the term ‘hyaluronidase’. It acknowledges, as the contested decision did, that human genes HYAL 1, HYAL 2, HYAL 3, HYAL 4 and HYAL 5 encode, respectively, the human enzymes hyaluronidase 1, hyaluronidase 2, hyaluronidase 3, hyaluronidase 4 and hyaluronidase 5. However, the numbering added to each HYAL gene and to each hyaluronidase enzyme shows that they are different genes and enzymes, and that an enzyme HYAL, without numbering, does not exist as such. In that regard, it disputes the finding of the Board of Appeal that the numbering is not relevant on account of the presence of the same word element in the genes and the enzymes.

24      Third, the applicant maintains that the human enzymes hyaluronidase 1, hyaluronidase 2, hyaluronidase 3, hyaluronidase 4 and hyaluronidase 5 are not commercially available as chemical substances. In particular, it submits that the Board of Appeal erred in considering that the hyaluronidases encoded in the human genome are identical to hyaluronidase as an active ingredient for pharmaceutical use. Hyaluronidase is a pharmaceutical substance of non-human origin listed as an INN. By contrast, hyaluronidase 1, hyaluronidase 2, hyaluronidase 3, hyaluronidase 4 and hyaluronidase 5 are each different enzymes, on the basis of their characteristics and properties, which are therefore distinguished by individual numbering. The existence of several hyaluronidases encoded in the human genome shows that they cannot correspond to a single substance, including hyaluronidase, as defined in the list of INNs.

25      Fourth, the applicant concludes that the term ‘hyal’ cannot be regarded as descriptive of chemicals used in science and chemicals used in industry, since that term cannot be understood as the scientific abbreviation of any chemical substance. In that regard, it recalls that, in accordance with the case-law, abbreviations of descriptive terms are descriptive in themselves only if they have been used in that way and if the relevant public recognises them as identical to their complete descriptive meaning, which is not the case here.

26      Fifth, the applicant disputes the assessment that the descriptiveness of the sign HYAL with regard to the goods in Class 1 could be established since 2001 in the light of the evidence provided by the intervener. In that regard, it alleges that the Board of Appeal failed to specify on which evidence that conclusion was based, which constitutes a failure to state reasons. In any event, it claims that none of the evidence referred to pre-dates 2001 and that the Board of Appeal therefore erred in assessing the facts.

27      In the second place, the applicant submits that the term ‘hyal’ is not descriptive with regard to ‘pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; biomaterials’ in Class 5.

28      First, the applicant submits that the conclusions of the Board of Appeal are contradictory. According to the applicant, the relevant consumer cannot understand the sign HYAL immediately and simultaneously as referring to two different active ingredients, namely, hyaluronidase, as noted in the context of the analysis of the goods in Class 1, on the one hand, and, hyaluronic acid, on the other. In short, the applicant takes the view that, if the term HYAL is understood as designating hyaluronidase, it cannot be understood as being identical to hyaluronic acid, and vice versa. Furthermore, according to the applicant, it is illogical that the Board of Appeal did not take another INN into account as descriptive of the sign HYAL, in respect of professionals, namely hyalosidase, also used in pharmaceutical preparations, the indication of which is entirely different. According to the applicant, this shows that the term ‘hyal’ has no direct and specific meaning for the relevant public, and that it must be regarded as vague, given that it may refer to multiple meanings and designate distinct substances.

29      Second, the applicant disputes the findings of the Board of Appeal that the term ‘hyal’ refers, in the minds of the professional public, to the well-known properties of hyaluronic acid. In that regard, the applicant questions, first of all, whether hyaluronic acid has properties such as ‘glassy’ and ‘transparent’, as the Board of Appeal found in the contested decision. Next, it states that the term ‘hyal’, by itself, does not mean either ‘glass’, ‘transparent’ or ‘resembling glass’ and that it is never used alone, but in conjunction with other words, with the result that it cannot be understood as a reference to the characteristics of the goods in question. Lastly, the applicant notes that, in accordance with the case-law, the properties of hyaluronic acid mentioned above cannot, in any event, be regarded as descriptive of the contested goods, since they are not objective, inherent or intrinsic characteristics of pharmaceutical preparations, dietetic substances or sanitary preparations, as is required by that case-law.

30      Third, the applicant disputes the descriptiveness of the sign at issue with regard to the goods in Class 5 on account of the link made by the Board of Appeal between those goods and hyaluronic acid. The applicant complains, first, that the Board of Appeal found that the term ‘hyal’ is linguistically and conceptually ‘associated’ with hyaluronic acid and, therefore, is descriptive. According to the applicant, an association cannot be sufficient for the purposes of applying Article 7(1)(c) of Regulation No 40/94 because, in essence, it requires a non-immediate mental step. Next, as in the case of the goods in Class 1, the applicant disputes the assessment that the descriptiveness of the sign HYAL with regard to the goods in Class 5 could be established at the relevant date in the light of the evidence provided by the intervener.

31      Fourth, in the light of the foregoing, the applicant claims that the sign HYAL is not descriptive of the goods in Class 5. According to the applicant, it is true that, in accordance with the case-law, a trade mark must be refused registration if at least one of its possible meanings designates a characteristic of the goods concerned. However, that criterion applies only to descriptors, which, even with several meanings, describe only one single element or characteristic. In this case, the term ‘hyal’ does not refer directly or specifically to the goods in question and cannot therefore be understood without further reflection, in so far as it can be understood either as descriptive of hyaluronidase or as descriptive of hyaluronic acid. According to the applicant, those two pharmaceutical ingredients have different properties and characteristics, because the former is a polymer consisting of simple molecules of sugar, and the latter is a protein. Nor is there, as the Board of Appeal found, a close operational relationship between hyaluronic acid and hyaluronidase, since those substances differ in their pharmaceutical applications. Lastly, in so far as Article 7(1)(c) of Regulation No 40/94 does not apply to terms which are only suggestive or allusive, that article should not apply to the sign HYAL on the basis of its vague and imprecise nature.  

32      Fifth, the applicant submits that the Board of Appeal in fact regarded the term ‘hyal’ as an abbreviation of the terms ‘hyaluronic acid’. In accordance with settled case-law, the mere fact that an abbreviation is derived from a descriptive term is not sufficient to preclude registration of the sign at issue. In that regard, the applicant complains that the Board of Appeal did not follow the EUIPO guidelines with regard to the assessment of the descriptiveness of the abbreviations of descriptive terms. Despite the consistent references by the applicant to those guidelines, the Board of Appeal assessed the descriptiveness of the sign HYAL, as an abbreviation, incompletely, by departing from the guidelines which it imposed on itself and without stating reasons for that departure. The Board of Appeal thus infringed the obligation to state reasons, the principle of equal treatment and the principle of sound administration.

33      EUIPO, supported by the intervener, disputes those arguments.

34      Under Article 51(1)(a) of Regulation No 40/94, an EU trade mark is to be declared invalid, inter alia on application to EUIPO, where it has been registered contrary to the provisions of Article 7 of that regulation.

35      Article 7(1)(c) of Regulation No 40/94 provides that ‘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’ are not to be registered. Under paragraph 2 of that article, paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

36      Article 7(1)(c) of Regulation No 40/94 pursues an aim that is in the public interest, which requires that signs or indications that may serve, in trade, to designate characteristics of the goods or services for which registration is sought, may be freely used by all. That provision accordingly prevents such signs or indications from being reserved to one undertaking alone because they have been registered as trade marks (see, by analogy, judgment of 27 June 2017, Aldi Einkauf v EUIPO – Fratelli Polli (ANTICO CASALE), T‑327/16, not published, EU:T:2017:439, paragraph 17 and the case-law cited).

37      It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 40/94, there must be a sufficiently direct and specific relationship between the sign and the goods or services at issue to enable the public concerned immediately to perceive, without further thought, a description of the goods or services or one of their characteristics (see, by analogy, judgment of 27 June 2017, ANTICO CASALE, T‑327/16, not published, EU:T:2017:439, paragraph 18 and the case-law cited).

38      Accordingly, the descriptiveness of a mark must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (see, by analogy, judgment of 27 June 2017, ANTICO CASALE, T‑327/16, not published, EU:T:2017:439, paragraph 19 and the case-law cited).

39      Lastly, it is settled case-law that the only relevant date for the purpose of assessing an application for a declaration of invalidity based on Article 51(1)(a) of Regulation No 40/94 is that of the filing of the application for registration of the contested mark (see, by analogy, judgment of 25 October 2018, Devin v EUIPO – Haskovo (DEVIN), T‑122/17, EU:T:2018:719, paragraph 25 and the case-law cited).

40      In the light of those considerations, it is necessary to examine whether the Board of Appeal was right to find that the sign HYAL was descriptive with regard to the goods concerned.

 The relevant public

41      As a preliminary point, as regards the relevant public, it must be noted that, as the Board of Appeal correctly stated in paragraph 28 of the contested decision, the goods in Class 1, namely ‘chemicals used in industry and science’, are intended for professionals, while the goods in Class 5, namely ‘pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; biomaterials’, are intended for both professionals and the general public. The degree of attentiveness of that public must therefore be regarded as above average, since the goods in Class 1 target specialists and the goods in Class 5 concern health and the human body (see, to that effect, judgment of 28 November 2019, August Wolff v EUIPO – Faes Farma (DermoFaes), T‑643/18, EU:T:2019:818, paragraph 27 and the case-law cited). Those findings are not, however, disputed by the applicant.

42      Furthermore, since the contested mark is composed of the term ‘hyal’, which, as stated in paragraph 49 below, has a meaning in English, the Board of Appeal was right to find, in paragraph 29 of that decision, that the assessment of its descriptiveness had to be carried out, at least, with regard to English-speaking consumers in the European Union, which is, moreover, not disputed by the applicant.

 The meaning of the contested mark

43      As regards the question of whether the relevant public perceives the contested mark as being descriptive of the goods in question, it must be noted at the outset that, as correctly stated in paragraph 30 of the contested decision, that mark consists of the word sign HYAL and that the date of the application for registration of that sign as an EU trade mark – which is relevant in accordance with the case-law referred to in paragraph 39 above for the purposes of determining its meaning – is 30 October 2001.

44      In this case, first, the Board of Appeal found, in paragraph 33 of the contested decision, on the basis of the evidence adduced by the intervener, that the term ‘hyal’ was used, in particular in extracts from the free-access electronic encyclopaedia Wikipedia, online scientific dictionaries and scientific publications, as an abbreviation of the term ‘hyaluronidase’, an enzyme encoded by the human genes HYAL 1, HYAL 2, HYAL 3, HYAL 4 and HYAL 5. In particular, the Board of Appeal explained that the term ‘hyal’ was used not only as a reference to those genes, but also as an abbreviation of the hyaluronidase enzymes, namely HYAL 1 for hyaluronidase 1, HYAL 2 for hyaluronidase 2, HYAL 3 for hyaluronidase 3, HYAL 4 for hyaluronidase 4 and HYAL 5 for hyaluronidase 5. The sign HYAL was therefore capable of referring to both the genes and the enzyme itself.

45      The foregoing finding cannot be called into question by the claims submitted by the applicant.

46      The evidence referred to in paragraph 33 of the contested decision highlights the use of the term ‘hyal’ as an abbreviation of the enzyme hyaluronidase, and not only of the genes, as the applicant claims. That is the case in the extracts from the Wikipedia encyclopaedia (Annexes 2 to 4 of the application for a declaration of invalidity) and in the dictionaries and other scientific publications put forward by the intervener in the invalidity proceedings and before the Board of Appeal (see Annexes 21 to 23 of the application for a declaration of invalidity and Annexes 24 to 31 and 38 of the observations of 1 October 2019). Furthermore, it must be held, as EUIPO did, that the existence of different hyaluronidase enzymes, distinguished by individual numbering, is not capable of calling into question the finding that the term ‘hyal’, as such, is recognised in the scientific field as a general name used to identify the hyaluronidase enzyme or the family of that enzyme. That conclusion is supported, by way of illustration, by the reference to ‘HYAL genes’ in the scientific publications adduced by the intervener, in which the term ‘hyal’ refers to the hyaluronidase enzyme generally.

47      Second, the Board of Appeal, like the Cancellation Division, took the view, in paragraph 37 of the contested decision, that the term ‘hyal’ could be perceived by the relevant professional public as a direct reference to hyaluronic acid, which is a substance widely used in pharmaceutical and cosmetic preparations.

48      Similarly, that finding cannot be called into question by the arguments put forward by the applicant. First, it is apparent from the extracts from the dictionaries referred to by the Board of Appeal (Annexes 7 to 11 to the application for a declaration of invalidity) that the term ‘hyal’ is a prefix in English which means ‘glassy’, ‘transparent, relating to or resembling glass’, which are proprieties that hyaluronic acid is commonly recognised as having. Second, as the Board of Appeal also notes, hyaluronic acid is known as ‘hyaluron’ in English, which shows that the relevant public may perceive the term ‘hyal’ as a linguistic reference to that acid. Third, the extracts from the Wikipedia encyclopaedia and the other publications mentioned by the Board of Appeal highlight the relationship between hyaluronic acid and hyaluronidase, namely that that enzyme has the property of degrading that acid. An operational relationship between hyaluronic acid and hyaluronidase can therefore be established, as is apparent from paragraph 37 of the contested decision.

49      It follows that the Board of Appeal did not err in finding that the term ‘hyal’ has two different meanings and that it could therefore be perceived by the relevant public, first, as an abbreviation of the term ‘hyaluronidase’ and, second, as a direct reference to hyaluronic acid.

50      Moreover, as the Board of Appeal correctly recalled in paragraph 31 of the contested decision, in order to fall within the scope of Article 7(1)(c) of Regulation No 40/94, it is sufficient that a word sign, in at least one of its potential meanings, designates a characteristic of the goods or services concerned (see judgment of 30 April 2013, ABC-One v OHIM (SLIM BELLY), T‑61/12, not published, EU:T:2013:226, paragraph 17 and the case-law cited). It follows that, contrary to what the applicant submits, where a sign has two or more meanings, it is sufficient that one of them is descriptive of the goods in question for the prohibition on registration laid down in Article 7(1)(c) of Regulation No 40/94 to apply. Accordingly, the reasoning of the Board of Appeal cannot be regarded as contradictory, as the applicant claims.

51      On the basis of the two meanings established in paragraph 49 above, it is necessary to examine the merits of the Board of Appeal’s assessment of the descriptiveness of the sign HYAL, concerning (i) the goods in Class 1 and (ii) the goods in Class 5.

 The goods in Class 1

52      As regards, in the first place, the goods in Class 1, the Board of Appeal found that the sign HYAL, as an abbreviation of hyaluronidase, had to be regarded as descriptive of ‘chemicals used in industry and science’. The applicant disputes that assessment, reiterating, in essence, that the term ‘hyal’ cannot be regarded as descriptive of those goods, since that term cannot be understood as the scientific abbreviation of any chemical substance.

53      In accordance with settled case-law, to refuse to register a trade mark under Article 7(1)(c) of Regulation No 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).

54      Furthermore, as the Board of Appeal noted in paragraph 42 of the contested decision, it is apparent from the case-law of the General Court that abbreviations of descriptive terms are themselves descriptive only if they have been used in that way and if the relevant public recognises them as identical to their full descriptive meaning. The mere fact that an abbreviation is derived from a descriptive term is not sufficient to oppose the registration of the sign at issue (see, to that effect, judgment of 12 January 2005, Wieland-Werke v OHIM (SnTEM, SnPUR, SnMIX), T‑367/02 to T‑369/02, EU:T:2005:3, paragraphs 32 and 37).

55      In this case, as is apparent from the finding established in paragraph 49 above, the Board of Appeal did not err in finding that the term ‘hyal’ was capable of being understood by the relevant public as the abbreviation of the term ‘hyaluronidase’. Furthermore, in so far as, as noted in paragraph 43 of the contested decision, hyaluronidase is a chemical substance included in the list of INNs by the World Health Organisation (WHO) and commonly used in pharmaceutical preparations, the Board of Appeal was entitled to conclude that the sign HYAL was potentially descriptive of ‘chemicals used in industry and science’ in Class 1.

56      In the light of the foregoing, the applicant cannot claim that an identity between the enzyme hyaluronidase encoded with human genes HYAL 1, HYAL 2, HYAL 3, HYAL 4 and HYAL 5, on the one hand, and the enzyme hyaluronidase as a chemical substance, on the other, cannot be established. In that regard, it must be held that the applicant’s claims are not sufficient to call into question what is explained by EUIPO in its response, namely that the scientific publications adduced by the intervener highlight that the function of hyaluronidases is to catalyse the degradation of hyaluronic acid either in the human genome or in the context of industrial or pharmaceutical production. That reason justifies the inclusion of hyaluronidase in the list of INNs as a chemical substance, with the result that the catalyst action of that enzyme in two different human and industrial contexts cannot preclude the sign HYAL from being descriptive of the goods in question in Class 1.

57      As regards the arguments relating to the date of the evidence, the applicant complains that the Board of Appeal based its assessment of the descriptiveness of the sign at issue with regard to the goods in Class 1 on evidence subsequent to the date on which the contested mark was filed.

58      In that regard, it should be borne in mind that, for the adjudicating bodies of EUIPO, the date on which the application for registration of the mark was filed is the relevant date for the assessment of whether the absolute grounds referred to in Article 7(1)(c) of Regulation No 40/94 must result in a previously registered mark being declared invalid. However, that obligation does not preclude those bodies from taking into consideration, where appropriate, evidence which, although subsequent to the date of filing the application, enables conclusions to be drawn with regard to the situation as it was on that date (see judgment of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 60 and the case-law cited).

59      In this case, it is true that the Board of Appeal relied in part, in the contested decision, on items of evidence adduced by the intervener which did not relate to the date of the application for registration of the mark, namely 2001, but which were subsequent to it, listed in paragraph 6 of the contested decision, including in particular extracts from the Wikipedia encyclopaedia, online databases and online scientific dictionaries and scientific publications.

60      However, first, it is necessary to uphold the reasoning followed both by the Board of Appeal in paragraph 49 of the contested decision and by the Cancellation Division, that the term ‘hyal’, used after 2001 as an abbreviation in reliable official sources, was also used during that year, provided that the substance to which it refers was already known, which is the case for hyaluronidase. In that respect, it should be noted that the evidence adduced by the intervener (see Annex 3 to the application for a declaration of invalidity), although it post-dates the relevant date, already refers to articles dating from the 1990s and the early 2000s, which mention the substance hyaluronidase.

61      Second, and in any event, some of the additional evidence adduced by the intervener on 1 October 2019, set out in paragraph 11 of the contested decision, predates the filing date of the sign at issue, in particular two scientific articles from 1989 and 1999. Those two articles highlight, in particular, the use of the term ‘hyal’ as a descriptive abbreviation of a gene and the fact that hyaluronidases contribute to degrading hyaluronic acid. Those documents therefore enabled the Board of Appeal to confirm the assessment of the Cancellation Division at first instance on the basis of evidence subsequent to 2001.

62      Thus, it follows from the foregoing that, contrary to the applicant’s arguments, the Board of Appeal did not base its reasoning on assumptions or on an attempt to estimate the situation in 2001, but rather made relevant assessments of the descriptiveness of the sign HYAL as it was in 2001.

63      In the light of the foregoing, the Board of Appeal did not err in finding that the relevant public could, at the relevant date, perceive the sign HYAL as the scientific abbreviation of the substance hyaluronidase and that that public was likely to establish a sufficiently direct and specific relationship between the sign HYAL and the goods in question in Class 1, such as to attribute descriptiveness to the contested mark.

 The goods in Class 5

64      As regards, in the second place, the goods in Class 5, the Board of Appeal found that the sign HYAL was descriptive, taking the view that that sign, as a direct reference to hyaluronic acid, indicated for the relevant public that ‘pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; biomaterials’ contained that acid as an active ingredient or, at the very least, that it could be associated with the well-known properties of that substance. By contrast, the applicant disputes that assessment, claiming in particular that the word element ‘hyal’ does not mean ‘glass’, ‘transparent’ or ‘resembling glass’ and that it is never used alone, but as a prefix, namely in combination with other words, with the result that it cannot be understood as a reference to the characteristics of the goods in question.

65      As is apparent from the case-law referred to in paragraph 37 above, for a sign to be caught by the prohibition laid down in Article 7(1)(c) of Regulation No 40/94, there must be a sufficiently direct and specific relationship between that sign and the goods in question to enable the public concerned to immediately perceive, without further thought, a description of one of the characteristics of the goods concerned.

66      Moreover, the signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 22 November 2011, mPAY24 v OHIM – Ultra (MPAY24), T‑275/10, not published, EU:T:2011:683, paragraph 36 and the case-law cited).

67      The fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Thus, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation 2017/1001 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, to that effect, judgment of 20 September 2019, Multifit v EUIPO (real nature), T‑458/18, not published, EU:T:2019:634, paragraph 17 and the case-law cited).

68      Lastly, it is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) of Regulation No 40/94 does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying that provision, any undertaking must be able freely to use such signs or indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see, to that effect, judgment of 30 April 2013, SLIM BELLY, T‑61/12, not published, EU:T:2013:226, paragraphs 36 and 37 and the case-law cited).

69      In this case, it is apparent from the conclusion in paragraph 49 above that the Board of Appeal did not err in finding that the term ‘hyal’ could be understood as a direct reference to hyaluronic acid. Thus, the Board of Appeal also did not make an error where, in paragraphs 57 and 59 of the contested decision, it found that the sign HYAL could indicate to the relevant public either that those goods were likely to contain hyaluronic acid as an active ingredient, or that those goods could be associated with the well-known properties of that acid, namely their glassy and hydrating effect. In that context, the Board of Appeal’s finding, in paragraph 60 of the contested decision, that the sign HYAL was capable of designating the nature, the intended purpose or the properties of the goods in question in Class 5 must be endorsed.

70      The foregoing finding cannot be called into question by the applicant’s remaining arguments.

71      First, in so far as the applicant reiterates that the contested decision is contradictory in that the relevant public cannot understand the sign HYAL immediately and simultaneously as referring to hyaluronidase on the one hand, and to hyaluronic acid, on the other, it must be borne in mind, first of all, that, as stated in paragraph 50 above, where a sign has two or more meanings, it is sufficient that one of them is descriptive of the goods in question for the prohibition of registration laid down in Article 7(1)(c) of Regulation No 40/94 to apply. Next, it must be noted, as EUIPO did, that it is of no account to determine the substance with which the relevant public will establish a descriptive relationship as long as that public will perceive the sign HYAL as a reference to one of the two substances. Accordingly, the fact that the word element ‘hyal’ may be understood as referring to one or other of those substances cannot preclude it from being classified as descriptive. Lastly, since hyaluronic acid and hyaluronidase share a close relationship, in the light of the findings in paragraph 48 above, the Board of Appeal did not err in finding that the sign HYAL was descriptive in the light of those two possible meanings.

72      Second, the applicant disputes the finding of the Board of Appeal that the sign HYAL makes it possible to ‘associate’ the goods in question directly with the well-known properties of hyaluronic acid, that is to say, a glassy or transparent effect. In that regard, it should be noted, first of all, that it is apparent from the evidence provided by the intervener that hyaluronic acid is actually used for pharmaceutical and cosmetic purposes on account of its properties of generating a glassy or transparent effect. In that regard, it is irrelevant whether the characteristics described by the sign applied for are essential or ancillary, since Article 7(1)(c) of Regulation No 40/94 does not draw any distinction in that regard (see judgment of 24 April 2012, Leifheit v OHIM (EcoPerfect), T‑328/11, not published, EU:T:2012:197, paragraph 41 and the case-law cited). Next, contrary to what the applicant claims, the use of the term ‘associated’ by the Board of Appeal in the last sentence of paragraph 57 of the contested decision is valid for the purposes of referring to the direct link likely to be made between the term ‘hyal’, on the one hand, and the properties of hyaluronic acid, on the other. That term easily indicates that the goods in question may contain hyaluronic acid and does not require, as the applicant submits, a non-immediate ‘mental step’ which would preclude the application of Article 7(1)(c) of Regulation No 40/94.

73      Third, the applicant asserts that the Board of Appeal in fact regarded the term ‘hyal’ as an abbreviation of the terms ‘hyaluronic acid’. In that regard, it complains that the Board of Appeal infringed the obligation to state reasons and the principle of equal treatment and the principle of sound administration, in that the Board did not follow the EUIPO guidelines with regard to the assessment of the descriptiveness of abbreviations of descriptive terms. However, the fact remains that, as regards the goods in Class 5, the Board of Appeal found that the sign HYAL should be regarded as a ‘direct reference’ to hyaluronic acid, and not as an ‘abbreviation’ of that acid. Accordingly, it is sufficient to reject as ineffective the applicant’s arguments seeking a declaration of infringement of the obligation to state reasons and of the principle of equal treatment and the principle of sound administration.

74      Fourth, in so far as the applicant again complains that the Board of Appeal based its assessment on evidence subsequent to the relevant date in this case, it is sufficient to refer to the considerations set out in paragraphs 57 to 62, which also apply in the context of the present complaint.

75      It follows that the Board of Appeal did not make an error of assessment in finding that, when the applicant’s application for registration was filed, the relevant public could make a sufficiently direct and specific link between the sign HYAL, as a direct reference to hyaluronic acid, and the goods in question in Class 5, such that that sign could be perceived as describing the characteristics of those goods.

76      In the light of the foregoing, the applicant’s argument based on Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(c) of that regulation, must be rejected.

77      The first plea must therefore be dismissed.

 The second plea in law, alleging infringement of the right to be heard and of the audi alteram partem rule

78      The applicant claims that the contested decision infringes its right to be heard and the audi alteram partem rule, enshrined, respectively, in Article 94(1) and Article 95(1) of Regulation 2017/1001, since that decision is based on arguments and evidence on which the applicant was unable to comment. In that regard, the applicant submits that the Board of Appeal decided to exercise the discretion conferred on it by Article 95(2) of Regulation 2017/1001 in favour of the intervener, in order to take account of the evidence adduced before it for the first time on 1 October 2019. Contrary to what is required under Article 94(1) of Regulation 2007/1001 and Article 70(2) of that regulation, the Board of Appeal closed the written procedure ‘unconditionally’ and without inviting, in particular, the applicant to comment on the new evidence, with the result that it did not have the opportunity to comment and state its views on that evidence. The applicant adds, in that regard, that the right to be heard is a general principle of law not only in the European Union, but also in the international order.

79      EUIPO, supported by the intervener, disputes those arguments.

80      The applicant complains, in essence, that the Board of Appeal did not give it the opportunity to comment on the additional evidence adduced for the first time before it for the purposes of substantiating the use of the sign HYAL as a descriptive term for the goods in question.

81      Under Article 70(2) of Regulation 2017/1001, the Board of Appeal, in the examination of the appeal, is to invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself.

82      The second sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO are to be based only on reasons or evidence on which the parties have had an opportunity to make their views known.

83      In accordance with settled case-law, that latter provision constitutes a specific application of the general principle of protection of the right to defend oneself, enshrined in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union, according to which a person whose interests are affected by a decision taken by a public authority must be given the opportunity to make his or her point of view known. The right to be heard extends to all the factual and legal material which forms the basis of the decision (see, to that effect, judgment of 29 March 2019, All Star v EUIPO – Carrefour Hypermarchés (Shape of a shoe sole), T‑611/17, not published, EU:T:2019:210, paragraph 72 and the case-law cited).

84      The rights of the defence are infringed by reason of a procedural irregularity only in so far as the irregularity actually has had a specific effect on the ability of the undertakings or individuals concerned to defend themselves. Accordingly, non-compliance with rules in force whose purpose is to protect the rights of the defence can vitiate the administrative procedure only if it is shown that the latter could have had a different outcome if the rules had been observed (see judgment of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 73 and the case-law cited).

85      In the present case, it should be pointed out, first of all, that, as regards the observations of 1 October 2019, containing the evidence at issue, those observations were put forward by the intervener in response to the notice of appeal and, in particular, to the applicant’s statement dated 3 June 2019 setting out the grounds of appeal. By letter of 22 October 2019, those observations, together with the additional evidence, were forwarded by the Board of Appeal to the applicant, which received them on 5 November 2019. It must therefore be held that the Board of Appeal complied with its obligation to provide information under Article 94(1) of Regulation 2017/1001. Contrary to the applicant’s arguments, nothing in that letter of 22 October 2019 demonstrates that the Board of Appeal informed the parties that the written procedure was to become ‘unconditionally’ closed at that stage.

86      Next, it should be noted that the procedure before the Board of Appeal is set out in Title V of Delegated Regulation 2018/625, under the heading ‘Appeals’, in which Articles 21 to 26 refer specifically to the various stages of the written part of that procedure. In particular, during that written part, the notice of appeal and the statement setting out the grounds of appeal are followed by the submission of observations in response to the other party in the proceedings. Subsequently, in accordance with Article 26(1) of Delegated Regulation 2018/625, the Board of Appeal may authorise the applicant to supplement the statement of grounds with a reply within such period as it may specify. Such authorisation may be granted only upon a reasoned request by the appellant, filed within two weeks of the notification of the response.

87      It follows that, in accordance with the procedure laid down in Delegated Regulation 2018/625, after the submission of observations in response to the other party in the proceedings, the applicant still has the opportunity to request authorisation from the Board of Appeal to submit a reply on those observations, including on any new evidence submitted.

88      In the present case, it is sufficient to note that, as EUIPO points out, following receipt of the observations of 1 October 2019, the applicant failed to request authorisation to submit a reply, as a means available to it in order to submit its observations on the new arguments and the new evidence adduced by the intervener in its response.

89      Consequently, it cannot be alleged that the Board of Appeal deprived the applicant of the opportunity to comment on the evidence adduced for the first time on 1 October 2019 and thus vitiated the administrative procedure, in breach of the audi alteram partem rule and the right to be heard.

90      In that context, there is also no need to examine, in accordance with the case-law referred to in paragraph 84 above, whether the contested decision might have had a different outcome in the light of any observations made by the applicant.

91      Accordingly, the second plea must be dismissed.

 The third plea in law, alleging infringement of Article 95(1) of Regulation 2017/1001

92      The applicant claims that the contested decision infringes the audi alteram partem rule, laid down in Article 95(1) of Regulation 2017/1001, in that, in the first place, the Board of Appeal ruled ultra petita with regard to the subject matter defined by the intervener in its application for a declaration of invalidity. First, the Board of Appeal focused only on two of the possible meanings of the term ‘hyal’ put forward by the intervener, even though the subject matter defined by that term was based on multiple meanings of the contested mark. According to the applicant, in so doing, the Board of Appeal itself defined the subject matter of the case. Second, the Board of Appeal assessed the descriptiveness of the contested sign at the date of its registration, even though the intervener had not expressly made such a claim. According to the applicant, the intervener had not submitted in its initial application for a declaration of invalidity that the contested mark was descriptive in 2001. It merely stated that the mark was descriptive or was of common use and adduced, to that end, evidence subsequent to that date, mainly from 2011 and 2017.

93      In the second place, the applicant argues that the Board of Appeal infringed the audi alteram partem rule by relying on evidence subsequent to the filing date of the registration of the sign HYAL relevant for the assessment of its descriptiveness. The applicant takes the view that, since that evidence was subsequent, the Cancellation Division and the Board of Appeal based their decisions on estimates. In particular, it disputes the assertion of the Board of Appeal that it ‘could be reasonably concluded that in 2001 the term “hyal” was likely to have been used to indicate that the goods [concerned] contained hyaluronic acid’. According to the applicant, the Board of Appeal based its reasoning on a factual situation existing more than 16 years prior, without any evidence at the time allowing to corroborate the position adopted and once again ruled ultra petita.

94      EUIPO, supported by the intervener, disputes those arguments.

95      Under Article 95(1) of Regulation 2017/1001, during the proceedings, EUIPO is to examine the facts of its own motion and, in invalidity proceedings brought under Article 59, it is to limit its examination to the pleas in law and the arguments submitted by the parties.

96      Furthermore, Article 27(2) of Delegated Regulation 2018/625, under the heading ‘Examination of the appeal’, provides as follows:

‘2.      In inter partes proceedings, the examination of the appeal … shall be restricted to the grounds invoked in the statement of grounds and, as the case may be, in the cross appeal. Matters of law not raised by the parties shall be examined by the Board of Appeal only where they concern essential procedural requirements or where it is necessary to resolve them in order to ensure a correct application of Regulation (EU) 2017/1001 having regard to the facts, evidence and arguments presented by the parties.’

97      In accordance with settled case-law, in invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call its validity into question (see judgment of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (representation of a brown and beige checkerboard pattern), T‑359/12, EU:T:2015:215, paragraph 61 and the case-law cited).

98      In this case, the applicant submits, in the first place, that the Board of Appeal ruled ultra petita, first, by itself defining the subject matter of the case when it chose to base its reasoning on two of the multiple meanings of the term ‘hyal’ relied on by the intervener and, second, by basing its analysis at the date of the application for registration of the sign, even though the intervener had not referred to such a date in its application for a declaration of invalidity.

99      However, the fact remains that the Board of Appeal carried out its analysis in full compliance with the provisions applicable to the examination of the action and the settled case-law relating to applications for a declaration of invalidity based on the application of absolute grounds for refusal, such as Article 7(1)(c) of Regulation No 40/94.

100    First, the Board of Appeal applied the case-law referred to in paragraph 50 above, according to which, where a sign has two or more meanings, it is sufficient that one of them is descriptive of the goods in question for the prohibition on registration laid down in Article 7(1)(c) of Regulation No 40/94 to apply. In the present case, even though the intervener submitted that the term ‘hyal’ was descriptive in relation to a number of chemicals, it is apparent from an examination of the first plea in law that the Board of Appeal did not err in finding that that term ‘hyal’ referred, in particular, to the enzyme hyaluronidase and was therefore descriptive of the goods in question in Class 1. The Board of Appeal therefore did not itself define the subject matter of the application for a declaration of invalidity, as the applicant submits, but rather resolved the issues raised by that application in order to ensure the correct application of Regulation No 40/94, having regard to the facts, evidence and arguments previously submitted by the intervener, as required under Article 27(2) of Delegated Regulation 2018/625.

101    Second, in accordance with the case-law referred to in paragraph 39 above, the Board of Appeal carried out its examination of the descriptiveness of the sign HYAL, by correctly taking into consideration the date of the application for registration of that sign. Once again, the taking into account of that date, during the examination of the application for a declaration of invalidity of the intervener, cannot be regarded as the adoption of an ultra petita decision, since it is a requirement which follows from the case-law of the Courts of the European Union and, consequently, it is necessary for the purposes of resolving the issues raised by the correct application of Regulation No 40/94.

102    In the second place, as regards the complaint that the Board of Appeal infringed the audi alteram partem rule by basing its analysis on the descriptiveness of the sign HYAL on evidence subsequent to the date of filing of the registration of that sign, it is sufficient to reiterate, in accordance with the finding established in paragraph 62 above, that that Board of Appeal did not base its reasoning on assumptions or on an attempt to estimate the context in 2001, but on relevant assessments applicable to that context in the light of the evidence adduced by the intervener in its application for a declaration of invalidity and in its observations of 1 October 2019.

103    It follows that, contrary to the applicant’s arguments, the Board of Appeal did not rule ultra petita by introducing into its analysis new matters of fact and law contrary to the audi alteram partem rule laid down in Article 95(1) of Regulation 2017/1001.

104    The third plea must therefore be dismissed.

 The fourth plea in law, alleging infringement of the obligation to state reasons and of the principles of sound administration and equal treatment

105    The applicant argues that the Board of Appeal failed to meet its obligation to state reasons and infringed the principle of equal treatment and the principle of sound administration, since it did not provide clear and specific grounds for departing from the previous decisions of EUIPO concerning the distinctiveness of the sign HYAL.

106    In particular, the applicant submits that, during the proceedings before the Board of Appeal, it relied on previous decisions of EUIPO and of the Boards of Appeal, which recognised the distinctiveness of the sign HYAL with regard to the goods in Classes 1 and 5. However, according to the applicant, the Board of Appeal simply refused to examine those arguments, stating that it was not bound by its previous decisions.

107    In that regard, the applicant submits that, although the legality of decisions should be assessed in the light of the provisions of Regulation No 40/94, and not of the previous practice of EUIPO, the obligation to state reasons and the principle of equal treatment and the principle of sound administration are independent of the merits of the decision and require the reason for departing from previous decisions to be explained. The applicant maintains, in that regard, that the Court of Justice established such an obligation in its judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509).

108    Lastly, the applicant submits that the previous decisions concerned the same mark and that those decisions are relevant for assessing the perception of the sign at a time closer to the relevant period in the present case, namely 2001.

109    EUIPO, supported by the intervener, disputes the applicant’s arguments.

110    The applicant complains that the Board of Appeal infringed, in essence, its obligation to state reasons and the principles of equal treatment and sound administration, in that it did not provide specific grounds for departing from EUIPO’s previous decisions concerning the distinctiveness of the sign HYAL.

111    In accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose clearly and unequivocally the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent court to exercise its power of review. It is not necessary for the reasoning to specify all the relevant facts and points of law, since the question of whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see judgment of 25 November 2020, BRF Singapore Foods v EUIPO – Tipiak (SADIA), T‑310/19, not published, EU:T:2020:566, paragraph 35 and the case-law cited).

112    Furthermore, in accordance with equally settled case-law, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration which require, in accordance with the case-law, to take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not (see judgment of 25 June 2020, Brands Up v EUIPO (Credit24), T‑651/19, not published, EU:T:2020:288, paragraph 63 and the case-law cited).

113    That said, the way in which the principle of equal treatment and the principle of sound administration are applied must be consistent with respect for legality, which requires the examination of any trade mark application to be stringent and full and to be undertaken in each individual case (see judgment of 25 June 2020, Credit24, T‑651/19, not published, EU:T:2020:288, paragraph 64 and the case-law cited).

114    Furthermore, it should be borne in mind that, first, in accordance with settled case-law, the legality of decisions of the Board of Appeal, which fall within the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of the applicable regulation in each case, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of EUIPO, which cannot, in any event, bind the EU judicature (see, to that effect, judgment of 25 June 2020, Credit24, T‑651/19, not published, EU:T:2020:288, paragraph 65 and the case-law cited).

115    In this case, as regards the alleged breach of the obligation to state reasons, it should be noted that, in paragraph 65 of the contested decision, the Board of Appeal asserted that it was not bound by its previous decisions, each case having to be examined separately, taking into account its particular characteristics, on the basis of Regulation No 40/94. The explanations provided by EUIPO in that paragraph coincide, in essence, with the case-law cited in paragraphs 112 to 114 above. The Board of Appeal therefore informed the applicant, as an interested party, of the reason for not taking into consideration its previous decision-making practice with regard to the sign HYAL. No failure to state reasons can therefore be found.

116    As regards, second, the principles of equal treatment and sound administration, it is apparent from the contested decision that the Board of Appeal carried out a full and specific examination of the contested mark for the purposes of the application for a declaration of invalidity submitted by the intervener. As is apparent from the examination of the first plea, following its analysis of the application for a declaration of invalidity, the Board of Appeal was entitled to find that the absolute ground for refusal referred to in Article 7(1)(c) of Regulation 2017/1001 justified the cancellation of that mark in respect of the goods in Classes 1 and 5 which it covered. Since the examination of the mark applied for in the light of that provision could not, by itself, lead to a different outcome, the applicant’s claims relating to the failure to take into account the previous decisions of EUIPO concerning the sign HYAL cannot succeed. Furthermore, while, at the hearing, the applicant submitted, in particular, that, in the decision of the Fifth Board of Appeal of EUIPO of 13 July 2020 (Case R 2850/2019-5), the term ‘hyal’ was regarded as meaningless, which precluded its descriptiveness, the fact remains that such an assessment was carried out on the basis of the relevant Italian public, and not the English-speaking public, with the result that the Board of Appeal’s conclusions in that latter decision cannot, in any event, be taken as the basis of an infringement of the principle of equal treatment in the light of the reasoning in the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509), alleged by the applicant.

117    It follows that, contrary to the applicant’s assertions, the Board of Appeal did not infringe the obligation to state reasons under Article 94 of Regulation 2017/1001 or the principles of equal treatment and sound administration.

118    The fourth plea must therefore be dismissed.

 The fifth plea in law, alleging infringement of Article 165(1) of Regulation 2017/1001, Article 32(f) and Article 39(5) of Delegated Regulation 2018/625

119    The applicant submits that the contested decision is signed by a person, namely C. Govers, who cannot be identified as a member of the Board of Appeal. No such name is mentioned either in Article 1 of Decision 2018-10 of 17 December 2018 fixing the timetable for 2019 or in the official organisation chart of the Boards of Appeal. The applicant adds that the name C. Govers is used twice in the contested decision, which shows that it is not a mere typing error.  

120    According to the applicant, the contested decision therefore infringes Article 165(1) of Regulation 2017/1001, which requires that the decision be taken by three appointed members of the Board of Appeal. It also infringes Article 32(f) and Article 39(5) of Regulation 2018/625, which provide that the decisions by the Board of Appeal must be signed by all the members who took part in the decision. That obligation implies that the persons who take part in the decision must be identifiable, which is not the case here.

121    EUIPO disputes the applicant’s arguments.

122    Under Article 165(2) of Regulation 2017/1001, the decisions of the Boards of Appeal are to be taken by three members.

123    Under Article 32(f) and Article 39 of Delegated Regulation 2018/625, the members of the Board of Appeal who took part in a decision of the Board of Appeal must sign it and their names must be indicated therein, as part of the essential formal content of that decision.

124    In this case, the applicant alleges, in essence, infringement of essential procedural requirements at the time of the adoption of the contested decision, in that that decision is signed by a person, namely C. Govers, who cannot be identified as a member of the Board of Appeal.

125    In that regard, it should be borne in mind that the General Court may annul or alter a decision of a Board of Appeal of EUIPO in accordance with Article 72(2) of Regulation 2017/1001, on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty on the Functioning of the European Union, infringement of that regulation or of any rule of law relating to their application, or misuse of powers.

126    However, in this case, it is apparent from the explanations provided by EUIPO in its response that the person who signed the contested decision as ‘C. Govers’ is the member shown as having the name Jan-Kees Govers in the official organisation chart of the Boards of Appeal. Since the first name of that person is Cornelius, there was nothing to prevent him from signing the contested decision as C. Govers. Furthermore, it should be noted that no other member of the Boards of Appeal bears the surname Govers, with the result that he is easily and precisely identifiable.

127    It follows that the Board of Appeal did not infringe the essential procedural requirements at the time of the adoption of the contested decision, in particular Article 165(1) of Regulation 2017/1001 and Articles 32(f) or 39(5) of Delegated Regulation 2018/625.

128    The fifth plea must therefore be dismissed. Accordingly, the action must also be dismissed in its entirety.

 Costs

129    Under 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. 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 (Ninth Chamber)

hereby:

1.      Dismisses the action.

2.      Orders Fidia farmaceutici SpA to pay the costs.

Delivered in open court in Luxembourg on 16 June 2021.

*      Language of the case: English.

© European Union
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