The matter at hand

Pensa Pharma is the owner of two EU trade marks relating to the sign PENSA. The Ferring companies filed applications for declaration of invalidity of these EU trade marks on the basis of earlier trade marks for the word mark PENSATA registered in France and the Benelux countries. EUIPO upheld the applications for a declaration of invalidity of the EU trade marks on the ground of likelihood of confusion.

In the appeal brought before it, the General Court held that the arguments Pensa Pharma put forward during the hearing before it were inadmissible because they sought to alter the legal and factual context of the dispute as it was brought before EUIPO.

Pensa Pharma appealed this decision before the ECJ, alleging (i) an error of law committed by the General Court in so far as it rejected as inadmissible the arguments Pensa Pharma had put forward during the hearing, (ii) a distortion of the facts and evidence and an error of law, which led the General Court to confirm the contested decisions despite the failure of the Board of Appeal to verify the renewal of the earlier marks, (iii) an error of law committed by the General Court in so far as it did not annul the contested decisions for failure to state reasons and (iv) infringement of Article 8(1)(b) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark by the General Court in the global assessment of the likelihood of confusion between the marks at issue.

The judgment of the ECJ

The ECJ starts by examining Pensa Pharma’s second ground of appeal, by which Pensa Pharma argues that the Board of Appeal should have verified whether the earlier marks of the Ferring companies were still valid. According to Pensa Pharma, the Board of Appeal should have found that, in the absence of a renewal, the validity period of those marks had expired before the contested decisions were adopted and the General Court should have identified that error both of its own motion and following the argument to that effect made by Pensa Pharma during the hearing.

The ECJ rejects this plea, considering that the General Court was not required to examine the validity of the earlier marks of its own motion and that it is not apparent that Pensa Pharma raised such a plea: “Proceedings before the Courts of the European Union are inter partes. With the exception of pleas involving matters of public policy which the Courts are required to raise of their own motion, such as the failure to state reasons for a contested decision, it is for the applicant to raise pleas in law against that decision and to adduce evidence in support of those pleas” (paragraph 26). “Contrary to what Pensa Pharma argues, it is not apparent from reading its application at first instance, which is included in the file of the General Court sent to this Court, that it raised such a plea” (paragraph 27).

The third ground of appeal raised by Pensa Pharma, alleging that the General Court should have annulled the contested decisions for erroneous allocation of the costs, is rejected for the same reasons: “Such a plea relates not to compliance with the obligation to state reasons which is binding on the departments of EUIPO pursuant to Article 75 of [Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark], but to the merits of those reasons. It is therefore not among the pleas which the General Court must, if necessary, raise of its own motion and it was up to Pensa Pharma itself to raise it before the General Court” (paragraph 37).

The second and third ground of appeal are therefore rejected on the basis that these grounds constitute a new plea under the first subparagraph of Article 48(2) of the Rules of Procedure of the General Court in the version in force during the proceedings before that Court. The General Court, however, had rejected Pensa Pharma’s pleas not because they had been put forward before it out of time, but because they sought to alter the legal and factual context of the dispute as it was brought before the Board of Appeal.

“However, by the arguments put forward during the hearing before the General Court, Pensa Pharma submitted neither facts nor evidence not submitted before the departments of EUIPO, but called into question the assessment, by those departments, of the facts and evidence that were available to them” (paragraph 47). “Such arguments did not alter the legal and factual context of the dispute as it had been brought before the Fifth Board of Appeal of EUIPO and, had they been raised in time before the General Court, they would have been admissible” (paragraph 49).

Although this leads the ECJ to the conclusion that the General Court rejected Pensa Pharma’s pleas for the wrong reasons, and that the General Court therefore infringed EU law, this infringement has no impact on the operative part of the judgment under appeal as it is shown to be well founded on other legal grounds. Consequently, the General Court’s infringement of EU law is not capable of bringing about the annulment of its decision and the first ground of appeal is dismissed as well (paragraph 51).

As to the fourth ground of appeal, the ECJ rules that “the assessment of the similarities between the signs at issue is of a factual nature and, save where the evidence and facts are distorted, is not subject to review by the Court of Justice on appeal” (paragraph 60). Considering that no such distortion was alleged or demonstrated by Pensa Pharma, the fourth ground of appeal is rejected as inadmissible as well (paragraph 61).

Accordingly, the ECJ dismisses the appeal.