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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Giuliani v EUIPO - H&H (Swisse) (EU trade mark - Judgment) [2025] EUECJ T-442/23 (02 April 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T44223.html Cite as: [2025] EUECJ T-442/23, ECLI:EU:T:2025:354, EU:T:2025:354

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JUDGMENT OF THE GENERAL COURT (Third Chamber)

2 April 2025 (*)

( EU trade mark - Invalidity proceedings - EU figurative mark Swisse - Absolute grounds for invalidity - Article 51(1)(a) and (b) of Regulation (EC) No 40/94 (now Article 59(1)(a) and (b) of Regulation (EU) 2017/1001) - Mark of such a nature as to deceive the public - Article 7(1)(g) of Regulation No 40/94 (now Article 7(1)(g) of Regulation 2017/1001) - Bad faith - Right to be heard - Article 41 of the Charter of Fundamental Rights )

In Case T‑442/23,

Giuliani SpA, established in Milan (Italy), represented by S. de Bosio, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,

defendant,

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

Health and Happiness (H&H) Hong Kong Ltd, established in Hong Kong (China), represented by S. Geerlings, lawyer, and N. Saunders, Barrister-at-Law,

THE GENERAL COURT (Third Chamber),

composed of I. Nõmm, acting as President, G. Steinfatt (Rapporteur) and D. Kukovec, Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the written part of the procedure,

further to the hearing on 8 October 2024,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Giuliani SpA, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 May 2023 (Case R 2185/2019-1 RENV) ('the contested decision'), as corrected by the corrigendum of 27 May 2024. Given that the written pleadings of the parties predate the corrigendum, the present judgment refers to the numbering of the grounds of the contested decision in its original version.

 Background to the dispute

2        On 9 March 2018, the applicant filed an application with EUIPO for a declaration of invalidity of the EU trade mark which had been registered following an application filed on 2 July 2003 by Swisse Vitamins Pty Ltd, the predecessor in law to the intervener, Health and Happiness (H&H) Hong Kong Ltd, in respect of the following figurative sign:

3        The goods covered by the contested mark in respect of which the declaration of invalidity was sought were in Class 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 corresponded to the following description: 'Vitamins, vitamin preparations, herbal formulations, mineral supplements and nutritive elements including vitamins, minerals, nutritive elements and herbal formulations in capsule, tablet and liquid form'.

4        As grounds for invalidity, the applicant selected Article 7(1)(b), (g), (h) and (i) of 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) from the drop-down menu on EUIPO's standard form for the application for a declaration of invalidity. Furthermore, it referred, in the explanation of grounds section of that form, to Article 59(1)(b) of that regulation.

5        On 26 July 2019, the Cancellation Division declared the contested mark invalid. It found, in essence, that that mark was devoid of any distinctive character and that it was not necessary to examine the other grounds for invalidity relied on.

6        By decision of 25 May 2020, the Fifth Board of Appeal of EUIPO dismissed the appeal brought by the intervener against the decision of the Cancellation Division ('the decision of 25 May 2020').

7        By application lodged at the Court Registry on 3 August 2020, the intervener brought an action against the decision of 25 May 2020.

8        By judgment of 19 October 2022, H&H v EUIPO – Giuliani (Swisse) (T‑486/20, not published, EU:T:2022:642), the Court annulled the decision of 25 May 2020. In essence, the Court held that, by declaring the contested mark invalid on the basis of its alleged lack of distinctive character, the Board of Appeal had made a ruling that went beyond the grounds and arguments put forward by the intervener up to the closure of the adversarial part of the proceedings before the Cancellation Division. Although the second sentence of Article 95(1) of Regulation 2017/1001 provides that, in invalidity proceedings pursuant to Article 59 of that regulation, EUIPO is to limit its examination to the grounds and arguments submitted by the parties, it is not the applicant for invalidity but the adjudicating bodies of EUIPO which established the link between the alleged lack of distinctive character of the contested mark, in respect of which no reasoning had been submitted by the applicant for invalidity, and the grounds, arguments and facts which that party had put forward for the purposes of specifically proving the grounds for invalidity in Article 7(1)(g), (h) and (i) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (now Article 7(1)(g), (h) and (i) of Regulation 2017/1001) and in Article 51(1)(b) of Regulation No 40/94 (now Article 59(1)(b) of Regulation 2017/1001).

9        Following that judgment, the case was assigned to the First Board of Appeal under reference number R 2185/2019-1 RENV.

10      By the contested decision, as corrected by the corrigendum of 27 May 2024, the Board of Appeal allowed the intervener's appeal, annulled the decision of the Cancellation Division and rejected the application for a declaration of invalidity.

11      In the first place, the Board of Appeal found that the conditions of the ground for invalidity laid down in Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(g) thereof, had not been satisfied. First, it observed that the word 'swisse' is not part of the English or French language or of any other language spoken in the European Union, with the result that it cannot deceive the public. Second, it found that the possible descriptiveness or even non-distinctiveness of that word could not have any bearing on the case on account of the figurative elements of the contested mark in respect of which the applicant had not put forward any arguments claiming that they were either deceptive or non-distinctive. Third, it considered that, even if that word is understood as a clear and direct reference to 'Swiss' or 'Switzerland', which might indicate to customers that the goods are from Switzerland, its use does not – in the abstract – mislead consumers, since all the goods concerned may be produced in Switzerland, irrespective of where the intervener's seat is located. The evidence submitted by the applicant refers neither to the date of filing of the application for registration of the contested mark ('the relevant date') nor to the goods at issue, but to other goods, namely cosmetics, with the result that that evidence does not support its claims. Consequently, the applicant had proved neither that the contested mark had deceived consumers on the relevant date nor that there was a sufficiently serious risk of consumers being deceived, a serious risk presupposing that the intervener had already used that mark in a deceptive way on that date. Fourth, it observed that use, after registration, of a trade mark by its proprietor which is liable to mislead the public could result, under Article 50(1)(c) of Regulation No 40/94 (now Article 58(1)(c) of Regulation 2017/1001), in the revocation of that mark. However, in its view, the applicant had not put forward any arguments in that respect. Fifth, it found that the document 'Use of “Swissness” for advertising purposes' in Annexes 2 to 4 to the application for a declaration of invalidity did not prove the deceptiveness of the contested mark.

12      In the second place, the Board of Appeal rejected the ground for invalidity laid down in Article 51(1)(b) of Regulation No 40/94. It observed that, according to the applicant, the contested mark contained various elements associated with Switzerland, namely the colours and the word element, such that the mark falsely suggested that the goods are of Swiss origin. The applicant thus used the alleged deceptiveness to establish bad faith on the part of the intervener. However, it found that, as the contested mark was not deceptive on the relevant date, the intervener could not have acted in bad faith. The question whether Switzerland has a reputation with respect to pharmaceutical products is, according to the Board of Appeal, irrelevant to the issue of bad faith, since the word element of the contested mark is neither descriptive nor deceptive. Nor, in its view, does the file contain any evidence showing that the intervener planned, on the relevant date, to market under the contested mark goods which had no connection with Switzerland.

13      In the third place, the Board of Appeal considered that, as regards the effect of the refusal of the Federal Institute of Intellectual Property (Switzerland) to register the sign at issue, the registrability of a sign as an EU trade mark can be assessed by reference only to the rules of EU law.

 Forms of order sought

14      The applicant claims that the Court should:

–        annul the contested decision;

–        uphold the application for a declaration of invalidity of the contested mark;

–        order EUIPO and the intervener to pay the costs.

15      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs in the event that an oral hearing is convened.

16      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to bear its own costs and to pay the costs incurred by the intervener in the proceedings.

 Law

 Admissibility of certain items of evidence

17      The intervener contends that the documents contained in Annexes A.14, A.15, A.19, A.22, A.23, A.24 and A.25 to the application have been produced for the first time before the Court, meaning that they are inadmissible.

18      According to settled case-law, the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court's function to review the facts in the light of documents produced for the first time before it (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

19      The position is different where the Boards of Appeal, in order to determine the perception that the relevant public will have of the marks at issue, rely on matters of common knowledge or on the particular understanding of those matters by their members. In such a case, the adversely affected party may dispute its accuracy in its action before the Court and the evidence put forward in support of that challenge is therefore admissible (see judgment of 21 December 2022, Sanrio v EUIPO – Miroglio Fashion (SANRIO CHARACTERS), T‑43/22, not published, EU:T:2022:844, paragraph 19 and the case-law cited).

20      Since it is apparent both from the file and from the applicant's statements at the hearing that none of those documents was produced before the Board of Appeal and that they have not been put forward in support of a challenge relating to a matter of common knowledge, the abovementioned annexes must be rejected as inadmissible, without it being necessary to assess their evidential value.

21      The Court finds that the same is true of Annex I.15 to the intervener's response, the intervener having confirmed at the hearing that it did not produce it before the Board of Appeal. That annex must therefore be rejected as inadmissible.

 Substance

22      It must be stated at the outset that, in view of the date on which the application for registration in question was filed, namely 2 July 2003, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held 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 case is governed by the procedural provisions of Regulation 2017/1001, 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), and of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37).

23      As regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the present dispute to Article 7(1)(b), (g), (h) and (i) of Regulation 2017/1001 and to Article 59(1)(a) and (b) of Regulation 2017/1001 must be understood as referring respectively to Article 7(1)(b), (g), (h) and (i) of Regulation No 40/94 and to Article 51(1)(a) and (b) of Regulation No 40/94, which are identical in content.

24      The applicant puts forward four pleas in law in support of its action:

–        by the first plea, it complains that the Board of Appeal ruled ultra petita and infringed the principle of res judicata;

–        by the second plea, it submits that the Board of Appeal:

–        had a conflict of interest;

–        lacked impartiality;

–        misunderstood, misinterpreted or failed to examine:

–        the findings set out in the decision of the Cancellation Division and in the decision of 25 May 2020;

–        documents or pleadings of the parties;

–        infringed:

–        Article 41 of the Charter of Fundamental Rights of the European Union ('the Charter');

–        Article 6 of the European Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950:

–        Article 32(i) of Delegated Regulation 2018/625;

–        Article 71(1) of Regulation 2017/1001, and

–        Article 94(1) of that regulation;

–        exceeded its powers or committed an abuse of power, and

–        gave contradictory, illogical and vague reasons for the contested decision;

–        the third plea alleges infringement of Article 7(1)(g) of Regulation No 40/94, and

–        the fourth plea alleges infringement of Article 51(1)(b) of that regulation.

 The first plea in law

25      The applicant claims that the contested decision is based on the idea that the contested mark cannot be perceived as an indication of geographical origin. It submits that that conclusion, however, contradicts the factual assessments made by the Cancellation Division, as supplemented in the decision of 25 May 2020, and changes that assessment with regard to an aspect that was not disputed by the parties. Thus, it maintains that the Board of Appeal exceeded its powers and infringed the principle of res judicata.

26      The applicant submits that the Court did not annul the factual assessments of the decision of the Cancellation Division, as supplemented by the Fifth Board of Appeal, or the proceedings before those bodies, but only penalised the application of Article 7(1)(b) of Regulation No 40/94, and that, before the Fifth Board of Appeal, the intervener merely put forward arguments regarding points of procedural and substantive law.

27      EUIPO and the intervener dispute the applicant's arguments.

28      In the first place, decisions of the adjudicating bodies of EUIPO are not judicial decisions, such that the principle of res judicata is not applicable to them.

29      In so far as the applicant claims that the decision of the Cancellation Division or the decision of 25 May 2020 is final, it must be noted that it is apparent from Article 66(1) and Article 159(d) of Regulation 2017/1001 that an appeal is to lie from decisions of the Cancellation Division. Those decisions are to take effect only as from the date of expiration of the appeal period referred to in Article 68 of that regulation. The filing of the appeal is to have suspensive effect.

30      The intervener did indeed file an appeal against the decision of the Cancellation Division, however.

31      It is also apparent from Article 71(3) of Regulation 2017/1001 that the decisions of the Board of Appeal are to take effect only as from the date of expiry of the period referred to in Article 72(5) of that regulation or, if an action has been brought before the General Court within that period, as from the date of dismissal of such action or of any appeal filed with the Court of Justice against the decision of the General Court.

32      The decision of 25 May 2020, which confirmed the decision of the Cancellation Division and endorsed its reasoning, was annulled by the judgment of 19 October 2022, Swisse (T‑486/20, not published, EU:T:2022:642). Under Article 72(6) of Regulation 2017/1001, EUIPO is required to take the necessary measures to comply with the judgments of the Courts of the European Union. Article 35(4) of Delegated Regulation 2018/625 provides that, 'where a decision of a Board of Appeal on a case has been annulled or altered by a final ruling of the General Court …, the President of the Boards of Appeal shall, with a view to complying with that ruling in accordance with Article 72(6) of Regulation [2017/1001], reallocate the case pursuant to paragraph 1 … to a Board of Appeal'. It follows, inter alia, from Articles 66 to 70 of Regulation 2017/1001 that the Board of Appeal to which the case is reallocated must decide afresh on the appeal brought against the decision of the Cancellation Division.

33      Thus, nothing in the decision of the Cancellation Division or in the decision of 25 May 2020 can be regarded as final.

34      In the second place, as regards the applicant's claim that the Board of Appeal went beyond, if not against, the intervener's arguments, it is true that, before the Cancellation Division, the intervener had acknowledged that the word element 'swisse' could evoke, or indeed does evoke, Switzerland. However, whether before the Cancellation Division or before the Board of Appeal, the intervener disputed that consumers would understand the contested mark as indicating that the goods in question were Swiss in origin or had a connection with Switzerland. It also maintained that the term 'swisse' was enigmatic and distant from the term 'swiss'.

35      The applicant is therefore incorrect in complaining that the Board of Appeal exceeded its powers and ruled ultra petita.

36      The first plea in law must therefore be rejected.

 The second plea in law

37      In the first place, referring to paragraph 45 of the judgment of 29 November 2018, Khadi and Village Industries Commission v EUIPO – BNP Best Natural Products (Khadi) (T‑681/17, not published, EU:T:2018:858), the applicant submits that the essential function of a trade mark is to guarantee the origin of the marked goods or services to the consumer or end user and that it no longer fulfils that role if the information that it contains is deceptive.

38      The applicant claims that EUIPO has a conflict of interest given that it granted the registration of the contested mark and could, if it admitted its mistake, be held liable. It argues that EUIPO is therefore not impartial in assessing an application for a declaration of invalidity based on deceptiveness.

39      In the second place, according to the applicant, the contested decision disregards not only the fact that the intervener had stated that the contested mark could be perceived as an indication of geographical origin and that it had never claimed that its products were manufactured in Switzerland, or that it had never intended to manufacture them there, but also all the allegedly undisputed factual assessments that had been endorsed by the Fifth Board of Appeal, including the Cancellation Division's assessment according to which 'both parties [mentioned that] the word “swisse” [could be understood] as meaning “from Switzerland”', conveying a positive connotation or an idea of that particular quality of those goods, namely nutritive elements, Switzerland being associated with wellness and, consequently, associated with goods in Class 5, including pharmaceuticals and nutritive elements.

40      In the third place, it submits that, in the case of absolute grounds for invalidity, EUIPO is required to examine the facts of its own motion.

41      In the fourth place, the applicant argues that the Board of Appeal did not require the parties to submit their observations regarding the effect of the judgment of 19 October 2022, Swisse (T‑486/20, not published, EU:T:2022:642) on the remainder of the proceedings. Moreover, it submits that, in so far as the Board of Appeal failed to take account of the factual assessments carried out by the Cancellation Division and the Fifth Board of Appeal, it should have remitted the case to the Cancellation Division.

42      In the fifth place, the applicant maintains that the contested decision infringed its rights of defence enshrined in Article 41 of the Charter and in Article 6 of the European Convention for the Protection of Human Rights and Fundamental Freedoms, and also constituted an abuse of power by the Board of Appeal or an exceedance of its powers. In particular, it argues that the Board of Appeal disregarded the observations and evidence produced by the applicant before the Cancellation Division and before the Fifth Board of Appeal, as well as its statement in intervention before the Court in the proceedings which gave rise to the judgment of 19 October 2022, Swisse (T‑486/20, not published, EU:T:2022:642).

43      In the sixth place, the applicant submits that the contested decision is devoid of logical reasoning, is contradictory and does not take account of the reasons given for the decision of the Cancellation Division.

44      EUIPO and the intervener dispute the applicant's arguments.

45      In the first place, it is necessary to reject the applicant's line of argument according to which the Board of Appeal had a conflict of interest at the time when the contested decision was adopted. First of all, the possibility that registered trade marks may, upon reasoned application, be declared invalid if the person making such an application shows that, on the relevant date, the marks did not satisfy certain conditions, follows from the legislation on the matter.

46      Next, it is apparent from the case-law that the purpose of invalidity proceedings is, inter alia, to enable EUIPO to review the validity of the registration of a mark and to adopt, where necessary, a position which it should have adopted of its own motion during the registration procedure (judgment of 24 May 2023, Glaxo Group v EUIPO – Cipla Europe (Shape of an inhaler), T‑477/21, not published, EU:T:2023:280, paragraph 58). However, as was recalled in paragraphs 75 and 76 of the judgment of 19 October 2022, Swisse (T‑486/20, not published, EU:T:2022:642), in invalidity proceedings based on an absolute ground for invalidity, the Board of Appeal cannot be required to carry out afresh the examination of the relevant facts which the competent EUIPO bodies conducted, of their own motion, at the time of registration. It follows from the provisions of Articles 51 and 54 of Regulation No 40/94 (now Articles 59 and 62 of Regulation 2017/1001) that the EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by EUIPO in the examination of an application for registration. Consequently, in invalidity proceedings based on an absolute ground for invalidity, 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 the validity of that trade mark into question. Thus, the second sentence of Article 95(1) of Regulation 2017/1001, which consolidates the Court's previous case-law, provides that, in invalidity proceedings pursuant to Article 51 of Regulation No 40/94 (now Article 59 of Regulation 2017/1001), EUIPO is to limit its examination to the grounds and arguments submitted by the parties. Therefore, in invalidity proceedings, EUIPO does not carry out the same examination as at the time of registration of the trade mark in question.

47      Lastly, Article 166 of Regulation 2017/1001 expressly enshrines the independence of the Boards of Appeal.

48      That complaint must therefore be rejected.

49      In the second place, as regards, first, the applicant's argument that the Board of Appeal disregarded the fact that the parties were in agreement that the word element of the contested mark could be perceived as an indication of origin and that the Cancellation Division and the Fifth Board of Appeal had shared that point of view, it is sufficient to reject it for the same reasons as those set out in paragraphs 34 and 35 above.

50      Second, the complaint based on the alleged failure to take into account the fact that the intervener never claimed that it manufactured or intended to manufacture the relevant goods in Switzerland does not concern either the Board of Appeal's obligation to state reasons or the applicant's rights of defence which are the subject of its second plea in law, but rather the specific assessment of the questions whether, on the relevant date, the contested mark was deceptive or whether the application for registration of the contested mark had been filed in bad faith, which come under the third and fourth pleas in law.

51      That complaint must therefore be rejected.

52      In the third place, contrary to what the applicant, in essence, claims (see paragraph 40 above), it is apparent from the case-law cited in paragraph 46 above that, in invalidity proceedings based on an absolute ground for invalidity, 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 the validity of that trade mark into question. Thus, the second sentence of Article 95(1) of Regulation 2017/1001, which consolidates the Court's previous case-law, provides that, in invalidity proceedings pursuant to Article 51 of Regulation No 40/94 (now Article 59 of Regulation 2017/1001), EUIPO is to limit its examination to the grounds and arguments submitted by the parties. Therefore, in invalidity proceedings, EUIPO does not carry out the same examination as at the time of registration of the trade mark in question (judgment of 2 June 2021, Franz Schröder v EUIPO – RDS Design (MONTANA), T‑854/19, EU:T:2021:309, paragraph 40).

53      That complaint must therefore be rejected.

54      In the fourth place, as regards the complaint that the case was not remitted to the Cancellation Division, first, the arguments put forward by EUIPO and by the intervener, according to which the applicant itself asked the Fifth Board of Appeal to rule on the grounds for invalidity which were not addressed by the Cancellation Division, in reality invite the Court to assess whether that issue was the subject matter of the proceedings before the Board of Appeal and, accordingly, whether it is admissible before the Court.

55      The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, and Article 188 of the Rules of Procedure of the General Court provides that the parties' pleadings may not change the subject matter of the proceedings before the Board of Appeal. Consequently, the Court's review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal. Likewise, the applicant does not have the power to alter before the Court the terms of the dispute as delimited in the respective claims and allegations submitted by itself and by the intervener (see judgment of 19 October 2022, Swisse, T‑486/20, not published, EU:T:2022:642, paragraphs 44 and 45 and the case-law cited; judgment of 8 November 2023, Pollen + Grace v EUIPO – Grace Foods (POLLEN + GRACE), T‑41/23, not published, EU:T:2023:705, paragraph 30).

56      However, according to settled case-law, infringement of essential procedural requirements within the meaning of Article 263 TFEU constitutes a ground said to be of 'public policy', which must be raised by the Courts of the European Union of their own motion, but in compliance with the rule that the parties should be heard. The same goes for lack of competence, within the meaning of that article (see judgment of 18 October 2011, Reisenthel v OHIM – Dynamic Promotion (Hampers, crates and baskets), T‑53/10, EU:T:2011:601, paragraph 27 and the case-law cited; judgment of 13 December 2013, Hungary v Commission, T‑240/10, EU:T:2013:645, paragraphs 70 and 71).

57      Thus, the Court has jurisdiction to determine whether the Board of Appeal was itself competent to rule on the grounds for invalidity which were not addressed by the Cancellation Division.

58      As regards the substance of that issue, it is common ground that neither the Fifth Board of Appeal nor the Cancellation Division assessed the grounds for invalidity based on Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(g) and Article 51(1)(b) of that regulation. It was in the contested decision that those grounds were assessed for the first time.

59      In that regard, it is apparent from Article 71(1) of Regulation 2017/1001 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.

60      First of all, it follows from that provision and from the scheme of Regulation 2017/1001 that, in ruling on an appeal, the Board of Appeal has the same powers as the department which was responsible for the decision appealed and that its examination concerns the dispute as a whole as it stands on the date of its ruling. Next, it is also apparent 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 trade marks and legal issues and the Cancellation Divisions on the one hand, and the Boards of Appeal on the other. It follows from that continuity that, in the context of the review of the decisions taken by the EUIPO units which heard the application at first instance, the Boards of Appeal are required to base their decisions 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. Lastly, it must be held that it is apparent from the use of the verb 'may' in Article 71(1) of Regulation 2017/1001 that the Board of Appeal of EUIPO has a broad discretion for the purposes of 'either exercis[ing] any power within the competence of the department which was responsible for the decision appealed or remit[ting] the case to that department for further prosecution' (judgments of 4 May 2022, Advanced Superabrasives v EUIPO – Adi (ASI ADVANCED SUPERABRASIVES), T‑4/21, not published, EU:T:2022:274, paragraph 66, and of 19 October 2022, Greenwich Polo Club v EUIPO – Lifestyle Equities (GREENWICH POLO CLUB), T‑437/21, not published, EU:T:2022:643, paragraph 20; order of 17 January 2024, Palírna U Zeleného stromu v EUIPO – Bacardi (B42V), T‑800/22, not published, EU:T:2024:17, paragraph 27).

61      In the present case, the applicant itself requested in its observations before the Fifth Board of Appeal that that board rule on the other grounds for invalidity if it were found that the ground alleging lack of distinctive character had not been properly raised by the applicant. Moreover, both before the Cancellation Division and before the Fifth Board of Appeal, the parties exchanged arguments regarding the application of those other grounds for invalidity. In the light of that factual and procedural context, the decision of the First Board of Appeal not to remit the case to the Cancellation Division is fully understandable. Nor does that decision go beyond the broad discretion enjoyed by the Board of Appeal, since the parties' right to submit their views on the outstanding issues was not infringed, the parties having on three occasions exchanged their arguments and submitted evidence in that regard.

62      In addition, since the judgment of 19 October 2022, Swisse (T‑486/20, not published, EU:T:2022:642), did not examine the outstanding grounds for invalidity, there was no reason for the Board of Appeal to ask the parties about the effect which that judgment might have had on the remainder of the proceedings. Nor has the applicant specified how that fact infringed its rights of defence.

63      That complaint must therefore be rejected.

64      In the fifth place, as regards the various documents which the Board of Appeal allegedly did not take into account, the applicant submits, in essence, that the Board of Appeal infringed its right to be heard.

65      Under the second sentence of Article 94(1) of Regulation 2017/1001, EUIPO decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision enshrines the general principle of protection of the rights of the defence in the law of trade marks. That principle includes the right to be heard, which is set out in Article 41(2)(a) of the Charter. In accordance with that principle, any person who has been adversely affected by a decision of a public authority must have been afforded the opportunity effectively to make known his or her views before the adoption of that decision (see judgment of 6 October 2021, Kondyterska korporatsiia 'Roshen' v EUIPO – Krasnyj Octyabr (Representation of a lobster), T‑254/20, not published, EU:T:2021:650, paragraph 38 and the case-law cited).

66      That right extends to all the factual and legal material which forms the basis of the decision, but not to the final position which the authority intends to adopt. That right does not in addition require that, before taking a final position on the assessment of the evidence submitted by a party, the Board of Appeal of EUIPO must offer that party a further opportunity to comment on that evidence (see judgment of 6 October 2021, Representation of a lobster, T‑254/20, not published, EU:T:2021:650, paragraph 39 and the case-law cited).

67      Moreover, in order for the undertakings' submission of views to be effective, it is necessary only that they have been submitted in good time so that EUIPO may take cognisance of them and assess, with all the requisite attention, their relevance for the content of the measure being adopted (see judgment of 6 October 2021, Representation of a lobster, T‑254/20, not published, EU:T:2021:650, paragraph 40 and the case-law cited).

68      In the present case, first, it must be recalled that Annexes A.14, A.15 and A.19 were not submitted before the Board of Appeal (see paragraph 20 above), with the result that that board was not in a position to take them into account.

69      Second, as regards the observations submitted by the applicant before the Cancellation Division and before the Fifth Board of Appeal, Annex 5bis to the application for a declaration of invalidity showing packaging of a product of the intervener, the survey in Annexes 6, 6bis and 6ter filed by the applicant before the Cancellation Division and reproduced in Annexes A.12 and A.13 to the application and the page from the intervener's website in Annex 10 to the application for a declaration of invalidity, it must be held that they are all contained in EUIPO's file, that they are referred to in paragraph 5 of the contested decision and that there is nothing in the file before the Court which might suggest that the Board of Appeal did not take cognisance of them. In particular, the Board of Appeal is not required to make express reference in its decision to any document produced before it or expressly to assess the evidential value of that document. In reality, the applicant's complaint that those documents were not taken into account does not concern either the Board of Appeal's obligation to state reasons or the applicant's rights of defence, including the right to be heard, which are the subject of its second plea in law, but rather the specific assessment of the questions whether, at the time when the application for registration of the contested mark was filed, that mark was deceptive or whether that application was filed in bad faith, issues which come under the third and fourth pleas in law.

70      Third, the applicant criticises the alleged failure to take into account (i) Annexes 14 to 92 to the pleadings which it submitted before EUIPO, and which are contained in Annexes A.12. and A.13 to the application, including, inter alia, documents purportedly demonstrating the reputation of Swiss food supplements in the health/wellness/beauty sector, the connection between those goods and the cosmetics sector and the reputation associated with any term evoking the concept of 'Swissness' as an indication of geographical origin, (ii) a document allegedly showing that the goods bearing the contested mark are not produced in Switzerland, and (iii) Annex 5 to the file before the Board of Appeal containing a recording on a USB stick which, it is claimed, demonstrates that the letter 'e' at the end of the word element of the contested mark is not pronounced and which is alleged to contradict the finding in paragraph 38 of the contested decision according to which 'Swisse' is different from 'Swiss'.

71      It should be pointed out that paragraph 5 of the contested decision lists 16 annexes which the applicant allegedly provided in support of its application for a declaration of invalidity of the contested mark.

72      In paragraph 16 of that decision, in the part recalling the proceedings before the Fifth Board of Appeal, the Board of Appeal states that the applicant submitted evidence in support of its claim, set out in paragraph 15 of that decision, that Switzerland has a long tradition and a strong reputation in the cosmetics sector and that a French speaker would pronounce the word element of the contested mark exactly like the English adjective 'swiss', which renders the sign descriptive. The Board of Appeal also notes that the applicant further reiterates the arguments which it already submitted before the Cancellation Division.

73      In paragraph 42 of the contested decision, relating to the examination of whether the contested mark was deceptive on the relevant date, the Board of Appeal referred to the evidence submitted by the applicant during the cancellation proceedings, which relates to cosmetics. Such documents do not, however, appear in the annexes listed by the Board of Appeal in paragraph 5 of that decision, but rather in Annexes 16 to 18 to the reply submitted by the applicant before the Cancellation Division and in several annexes which the applicant produced before the Fifth Board of Appeal.

74      In paragraph 54 of the contested decision, which forms part of the examination of whether the intervener acted in bad faith, the Board of Appeal considers that there is also no evidence on file that the intervener planned, on the relevant date, to market under the contested mark goods which had no connection with Switzerland.

75      Thus, although the wording of the contested decision may be criticised for a certain lack of clarity, it is nevertheless apparent from that decision that the Board of Appeal did indeed take into account all the annexes which were part of the file. It follows in particular from paragraph 16 and from the second sentence of paragraph 42 of the contested decision that the Board of Appeal took note of the documents submitted by the applicant before the Fifth Board of Appeal.

76      Therefore, that complaint must also be rejected.

77      In the sixth place, as regards the applicant's criticisms based on a failure to state reasons or to state adequate reasons, contradictions and the alleged need to take account of the reasons given for the previous decisions adopted in the same case, it must be noted, first of all, that the latter complaint has already been rejected in the context of the first plea in law, in paragraph 33 above.

78      Next, as regards the claims that the contested decision is contradictory, those concern the obligation of the Boards of Appeal to state reasons. The obligation to state reasons stems not only from Article 41(2) of the Charter, but also from the second paragraph of Article 296 TFEU and the first sentence of Article 94(1) of Regulation 2017/1001, under which decisions of EUIPO are to state the reasons on which they are based. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question. The purpose of that obligation is, on the one hand, to enable the persons concerned to ascertain the reasons for the measure and, on the other, to enable the Courts of the European Union to exercise their power to review the legality of the decision (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65 and the case-law cited). It is not necessary for the reasoning to address all the relevant facts and points of law, since the question 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 8 May 2024, Ofree v EUIPO – gamigo (gamindo), T‑91/23, not published, EU:T:2024:298, paragraph 95 and the case-law cited). The Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal's decision and provides the competent Court with sufficient material for it to exercise its power of review (judgments of 25 March 2009, Anheuser-Busch v OHIM – Budějovický Budvar (BUDWEISER), T‑191/07, EU:T:2009:83, paragraph 128, and of 24 May 2023, Shape of an inhaler, T‑477/21, not published, EU:T:2023:280, paragraphs 35 and 36).

79      A contradiction in reasoning amounts to a failure to state reasons, since it is impossible for the parties and the Courts of the European Union to understand the statement of reasons for the contested decision (judgment of 24 May 2023, Shape of an inhaler, T‑477/21, not published, EU:T:2023:280, paragraph 70).

80      First, it must be held that the applicant misreads paragraph 54 of the contested decision. While the applicant claims that, 'in [paragraph] 54 [of the contested decision,] [the Board of Appeal] admits that the [a]pplicant proved that “Switzerland ha[d] a reputation with respect to pharmaceutical products” (i.e. [C]lass 5 products)', the Board of Appeal simply states that 'whether Switzerland has a reputation with respect to pharmaceutical products has no bearing on the outcome of the case'. Thus, it does not rule on Switzerland's reputation in the field of pharmaceutical goods, much less on its reputation in the field of the other goods in Class 5, including the goods concerned. Accordingly, there is no contradiction with paragraph 42 of the contested decision in which the Board of Appeal concludes that the evidence submitted by the applicant does not refer to the goods concerned, but rather to cosmetics.

81      Second, the applicant also misreads paragraph 41 of the contested decision. While the applicant claims that, 'in [paragraph] 41[, the Board of Appeal concedes] that “Swisse” may be “understood as a clear and direct reference to 'Swiss'”', that paragraph states rather that 'the use of the term “Swisse”, even if understood as a clear and direct reference to “Swiss” or “Switzerland”, which might indicate to customers that the products come from Switzerland, does not – in the abstract – deceive consumers.' Thus, the Board of Appeal analysed the question whether the contested mark was deceptive at the time of the filing of the application for its registration in the event that its word element were understood as a reference to Switzerland. Moreover, the applicant combines, in paragraph 34 of the application, within the same quotation, an incomplete part of the end of the first sentence of paragraph 54 of the contested decision, according to which 'the term [“swisse”] is neither descriptive nor deceptive', with a part of the first sentence of paragraph 39 of the contested decision, which concludes that 'an unknown term cannot deceive the public either as to the geographical origin or any other relevant characteristic.' The applicant cannot claim that there is a contradiction between an assumption, on the one hand, and the understanding of the word element of the mark which the Board of Appeal considers to be correct, on the other.

82      Third, it is true that there is a contradiction between paragraphs 40 and 51 of the contested decision. Although, according to paragraph 40, 'the registered sign does not consist of a word alone but also of some figurative elements' and 'no arguments were brought forward that these elements were to be considered non-distinctive or deceptive', paragraph 51 states that the applicant essentially claims that the contested mark contains various elements which are associated with Switzerland, namely the colours as well as the verbal element and that 'by using these elements, it falsely suggests that the products are of Swiss origin.' In addition, it is apparent from the summary of the applicant's arguments submitted before the Cancellation Division, set out in paragraph 6 of the contested decision, that it maintained that the deceptiveness had also been increased by the use of the colours red and white, which are exactly the same as the colours of the Swiss flag, and by the fact that, of the 26 cantons, 11 coats of arms contain black elements. Thus, while it follows from paragraph 40 of the contested decision that no arguments had been put forward by the applicant regarding the allusion that the figurative elements may make to Switzerland, the Board of Appeal considers, in paragraphs 7 and 51 of that decision, that the applicant did put forward such arguments, but that they could not succeed.

83      However, the argument alleging that contradiction cannot be upheld. Even if the Board of Appeal erred in finding, in paragraph 40 of the contested decision, that no arguments had been put forward by the applicant regarding the allusion which the figurative elements could make to Switzerland, it nevertheless took account of the arguments put forward by the applicant in that regard, with the result that it is in no way impossible for the parties and the Courts of the European Union to understand the statement of reasons for the contested decision.

84      The applicant is also incorrect in claiming that it is unclear to which items of evidence the Board of Appeal refers in paragraph 42 of the contested decision. It is apparent from paragraph 75 above that it referred to all the documents in the Board of Appeal's file which relate to cosmetics.

85      Lastly, in so far as the applicant claims that it does not understand whether the finding in paragraph 42 of the contested decision that the evidence does not refer either to the relevant date or to the goods in question concerns the issue of the alleged deceptive use of that mark or the reputation of Switzerland, it must be held that the wording of paragraph 42 of the contested decision is clear inasmuch as it states that none of that evidence is, for the two reasons that have just been mentioned, capable of supporting the applicant's claims regarding the deceptiveness of the contested mark at the time when the application for registration was filed, which then had repercussions on the analysis of whether there had been bad faith at the time of that filing (paragraphs 52 and 53 of the contested decision).

86      As regards the alleged lack of explanation of the reasons why cosmetic goods are different from the goods concerned, including food supplements, it must be stated that the respective meanings of those concepts are sufficiently clear and distinct, such that the meanings did not require further explanation. In essence, cosmetic goods are intended for external use, be it on the skin, hair or nails, whereas food supplements are ingested.

87      That complaint must therefore be rejected, with the result that the second plea in law must be rejected in its entirety.

 The third plea in law

88      In the first place, the applicant criticises, first of all, the Board of Appeal's conclusion in paragraph 41 of the contested decision that, in essence, the contested mark is not deceptive if 'the products for which [that mark] enjoys protection may be produced in Switzerland.' According to the applicant, if the products in respect of which a trade mark is registered may not reasonably be produced in a certain place, which would also imply that that place does not have a reputation in connection with those products, the mention of that place by a trade mark is fanciful or arbitrary, and not misleading, as no customer would make a link between the geographical term and the geographical origin of that product. It argues that the contested mark, however, used for health, wellness or dermatology products, does deceive consumers because they would immediately think that those products originate from Switzerland, given its alleged reputation for health, wellness, dermatology and pharmaceutical products. The applicant maintains that Switzerland's reputation in those fields was not disputed by the intervener and was established in paragraph 42 of the contested decision in relation to cosmetics and in paragraph 54 of that decision in relation to pharmaceutical products. It submits that the Board of Appeal's interpretation would deprive Article 7(1)(g) of Regulation No 40/94 of its substance with regard to geographical indications, since any product could theoretically be manufactured in a given place.

89      According to the applicant, it is apparent from the decision of the Grand Board of Appeal of 2 March 2020 in Case R 1499/2016-G, Ornua Co-operative Ltd v Hijos de Moisés Rodríguez González, 'La Irlandesa' (paragraphs 34 to 48), that the applicant for a declaration of invalidity has to prove only that the products designated by the contested mark did not have an origin corresponding to the indication of source evoked by that mark.

90      Next, the applicant submits that, according to the contested decision, a serious risk of deception exists only if the intervener had already used the contested mark on the relevant date in a deceptive way or if there had been any other similar behaviour. It maintains that it has been proved that the intervener had used the contested mark deceptively in Australia since the 1960s. Furthermore, it argues that it is not necessary to prove that a deceptive trade mark has been used in a deceptive way before or on the relevant date; most registered trade marks are not used before and sometimes even after registration, as most entrepreneurs register the trade mark first and finalise their plans actually to use it only afterwards.

91      The applicant submits that, in the present case, it follows from the extracts from the intervener's website that the proprietor of the contested mark had initially intended to use it only in Australia and that it did not produce or market anything outside that country until the 2010s. It maintains, however, that the application for registration of the contested mark was filed in 2003 and concerned the 'wellness market', that is to say, precisely the market in which Swiss goods and services enjoy a strong reputation. According to the applicant, it is obvious in that context that, on the relevant date, the likelihood of the products covered by the contested mark being manufactured in Switzerland rather than in Australia, where the intervener was the leader in the wellness market, was zero.

92      Lastly, although the Board of Appeal states in paragraph 56 of the contested decision that the refusal of the Federal Institute of Intellectual Property is irrelevant for the purpose of determining the registrability of the contested mark, the applicant submits that that refusal demonstrates that products bearing the contested mark could not even be manufactured in Switzerland.

93      In the second place, the applicant claims that, having regard to the slight misspelling in the word element of the contested mark, the Board of Appeal erred in considering that it was sufficiently distinguishable from the words 'suisse' and 'swiss', such that it cannot deceive the relevant public. Moreover, the other elements of the contested mark are essentially the colours of the Swiss flag.

94      The applicant submits that the Board of Appeal was also incorrect in considering that a mark which is geographically evocative but not invalid under Article 7(1)(b) or (c) of Regulation No 40/94 cannot be deceptive.

95      In the third place, it maintains that the contested decision infringes Article 7(1)(g) of Regulation No 40/94, since, with regard to indications of geographical origin, any interpretation must be consistent with Article 3bis of the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, concluded in 1891, revised in Washington in 1911, The Hague in 1925, London in 1934, Lisbon in 1958 and Stockholm in 1967, which is in force in most of the countries of the European Union.

96      EUIPO and the intervener dispute the applicant's arguments.

97      Under the provisions of Article 51(1)(a) of Regulation No 40/94, in conjunction with Article 7(1)(g) thereof, a trade mark is to be declared invalid where it has been registered despite being of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.

98      According to settled case-law, the only date which is relevant for the purposes of the assessment of an application for a declaration of invalidity is the date of filing of the application for the mark at issue (orders of 24 September 2009, Bateaux mouches v OHIM, C‑78/09 P, not published, EU:C:2009:584, paragraph 18, and of 23 April 2010, OHIM v Frosch Touristik, C‑332/09 P, not published, EU:C:2010:225, paragraph 41). However, the case-law allows material subsequent to that date to be taken into account if it relates to the situation on the date of filing of the trade mark application (judgment of 29 June 2022, Hijos de Moisés Rodríguez González v EUIPO – Ireland and Ornua (La Irlandesa 1943), T‑306/20, EU:T:2022:404, paragraph 54).

99      The circumstances referred to in Article 7(1)(g) of Regulation No 40/94 presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 55).

100    The assessment of the ground mentioned in Article 7(1)(g) of Regulation No 40/94 cannot extend to anything other than the goods or services in question, on the one hand, and the perception of the mark by the relevant public, on the other (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 56).

101    Moreover, Article 7(1)(g) of Regulation No 40/94 implies a sufficiently specific designation of potential characteristics of the goods and services covered by the trade mark. Only where the targeted consumer is led to believe that the goods and services possess certain characteristics which they do not in fact possess will he or she be deceived by the trade mark (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 57).

102    Under Article 7(2) of Regulation No 40/94 (now Article 7(2) of Regulation 2017/1001), Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

103    In the present case, it is apparent from paragraph 38 of the contested decision that the Board of Appeal took into consideration, from a geographical point of view, consumers throughout the European Union and based its analysis on the English-speaking and French-speaking parts of that public.

104    Following the finding in paragraph 39 of the contested decision, according to which the word element 'swisse' cannot deceive the public since an unknown term cannot deceive the public, the analysis set out in paragraphs 41 to 45 of the contested decision – which starts from the alternative assumption that the term 'swisse' is understood as a clear and direct reference to 'Swiss' or 'Switzerland', which might indicate to consumers that the goods come from that country – reaches the conclusion that that term does not – in the abstract – deceive consumers.

105    Articles 51 to 53 of Regulation No 40/94 (now Articles 59 to 61 of Regulation 2017/1001) govern the grounds for invalidity of an EU trade mark, whereas a separate provision, Article 50 of that regulation, concerns grounds for revocation (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 63).

106    The misleading nature of a mark constitutes an absolute ground for invalidity of that mark under the provisions of Article 51(1)(a) of Regulation No 40/94, in conjunction with Article 7(1)(g) thereof, and, in addition, a ground for revocation under Article 51(1)(c) of that regulation (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 64).

107    Article 50(1)(c) of Regulation No 40/94 provides expressly that the misleading nature of a registered trade mark, which justifies a declaration that the rights of its proprietor are revoked, arises from the use made of that mark, whereas the provisions of Article 51(1)(a) of that regulation, in conjunction with Article 7(1)(g) thereof, which render invalid a mark that has been registered in spite of its deceptive nature, do not contain any reference to such use (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 65).

108    It follows from the foregoing that, in principle, the examination of an application for revocation within the meaning of Article 50(1)(c) of Regulation No 40/94 requires that account be taken of the actual use of the mark and thus of evidence subsequent to its filing, whereas that is not the case for the purpose of examining an application for a declaration of invalidity brought under the provisions of Article 51(1)(a) of Regulation No 40/94, in conjunction with Article 7(1)(g) thereof. The examination of such an application for a declaration of invalidity requires that it be established that the sign filed for the purposes of registration as a mark was per se of such a nature as to deceive the consumer at the time of filing of the application for registration, since the subsequent management of that sign is irrelevant (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 66).

109    That principle is confirmed by the case-law, according to which the only date which is relevant for the purposes of the assessment of an application for a declaration of invalidity is the date of filing of the application for the mark at issue and according to which material subsequent to the date of filing of the trade mark application may be taken into account only if it relates to the situation on that date (see judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 67 and the case-law cited).

110    In other words, in the case of invalidity, the question which arises is whether the mark should not have been registered ab initio for reasons already existing on the date of the trade mark application, since the consideration of subsequent evidence can serve only to clarify the circumstances as they were on that date (judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 68).

111    In the present case, as has been found in paragraph 104 above, the Board of Appeal, in paragraphs 41 to 45 of the contested decision, assessed the application of the ground for invalidity laid down in the provisions of Article 51(1)(a) of Regulation No 40/94, in conjunction with Article 7(1)(g) thereof, based on the alternative assumption that the term 'swisse' is understood as a clear and direct reference to 'Swiss' or 'Switzerland', which might indicate to consumers that the goods come from that country.

112    As EUIPO and the intervener correctly contend, for the purpose of applying Article 7(1)(g) of Regulation No 40/94, the Board of Appeal had to ascertain whether, on the relevant date, there was any inconsistency between the information which the contested mark conveyed and the characteristics of the goods designated in the application for registration. The list of goods covered by the contested mark did not contain any indication of their geographical origin, nor was it impossible for the goods concerned to be manufactured in Switzerland; therefore, the contested mark could cover goods originating from Switzerland. Accordingly, there was no inconsistency in the present case, on the relevant date, between the information which the contested mark was able to convey and the goods designated, with the result that it was not possible to find that that mark was misleading on that date (see, to that effect, judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 71).

113    That conclusion is not called into question by the applicant's arguments.

114    In the first place, in the light of paragraphs 103 and 104 above, it is not necessary to assess the applicant's arguments that the contested decision contains an error in paragraphs 38 and 39 thereof inasmuch as it states that the word element of the contested mark is sufficiently distinguishable from the words 'suisse' and 'swiss' such that it cannot deceive the relevant public. The analysis of the application of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(g) thereof, carried out in paragraphs 41 to 45 of the contested decision, starts from the assumption that the contested mark will be understood as referring to a Swiss origin of the goods concerned.

115    In the second place, as the examination of an application for a declaration of invalidity such as the one in the present case requires that it be established that the sign filed for the purposes of registration as a mark was per se of such a nature as to deceive the consumer at the time of the application for registration, the subsequent management of that sign is irrelevant. It follows that the extracts from the intervener's website, relating to the history of the use of the sign at issue in Australia and of its subsequent expansion, are irrelevant.

116    In the third place, and in the light of the reasons set out in paragraphs 105 to 112 above, it must be recalled that the Board of Appeal had to ascertain whether, on the relevant date, there was any inconsistency between the information which the contested mark conveyed as such and the characteristics of the goods designated in the application for registration, the use of that mark being irrelevant for the purposes of that analysis. Thus, by stating, in the second sentence of paragraph 43 of the contested decision, in essence, that a serious risk of deception presupposes that it is proved that the applicant had already used the contested mark in a deceptive way on the date of the application for registration, the Board of Appeal refers to a criterion which is not relevant in the context of the examination of the ground for invalidity under Article 7(1)(g) of Regulation No 40/94. Thus, the applicant's arguments directed against that part of the statement of reasons for the contested decision and seeking to demonstrate deceptive use of the mark prior to the relevant date must be rejected as ineffective.

117    In the fourth place, as regards the effect of the provisional or definitive refusal to register the sign at issue in Switzerland, contained in Annexes 11 and 12 of the applicant's annexes in the Board of Appeal's file, it must be borne in mind, first of all, that, having regard to the autonomy of the EU trade mark system, EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision adopted in a Member State or in a third country finding that sign to be registrable or not registrable as a national trade mark (see judgment of 25 April 2018, Perfumes y Aromas Artesanales v EUIPO – Aromas Selective (Aa AROMAS artesanales), T‑426/16, not published, EU:T:2018:223, paragraph 114 and the case-law cited; judgment of 15 February 2023, Topcart v EUIPO – Carl International (TC CARL), T‑8/22, not published, EU:T:2023:70, paragraph 78).

118    The applicant submits that that refusal makes it impossible to manufacture the goods concerned in Switzerland under the contested mark. However, such a consequence does not follow from the operative part of that refusal or from its statement of reasons. In particular, the possibility of manufacturing the goods concerned in Switzerland with the abovementioned sign for export to the EU market does not appear to be affected in any way. The documents in question, as such, relate only to the reasons for the refusal to register that sign in Switzerland.

119    So far as is relevant, the rules to which the Federal Institute of Intellectual Property referred in arriving at that refusal also do not support the conclusion that the mere manufacture of the goods concerned under the contested mark in Switzerland is prohibited.

120    First, the provisional refusal refers to Article 6quinquies B(2) and (3) of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended, which provides for certain absolute grounds for denial of registration and corresponding grounds for invalidity of trade marks.

121    Second, that provisional refusal refers to Article 2(a) and (c), Article 30(2)(c) and Article 47 et seq. of the Swiss Federal Law on the Protection of Trade Marks and Indications of Source. Extracts from that law were provided by the applicant during the proceedings before the Board of Appeal. Article 2 of that law relates to the absolute grounds for refusal of registration of trade marks. Article 30(2)(c) thereof was not provided by the applicant. As regards the final reference in the provisional refusal, the applicant has provided Articles 47 to 55 of that law concerning indications of source. Article 47(3) of that law prohibits the use of incorrect indications of source (point (a)), designations that may be confused with an incorrect indication of source (point (b)) and names, company names, addresses or trade marks associated with goods or services of a different origin where this could be misleading (point (c)). However, the applicant did not provide the version in force on the relevant date. The version which it provided indicates that its entry into force was 1 January 2017 and that Article 47(3)(c) of that law was amended. In any event, in the version applicable as from 2017, that law prohibits inter alia the use of trade marks which are of such a nature as to deceive with respect to the geographical origin of goods or services. As regards points (a) and (b) of paragraph 3 of that article, it is not clear which type of use of a trade mark is prohibited. So far as concerns foreign law, to which the principle of iura novit curia does not apply, it was for the applicant to substantiate its claim further and, if necessary, to explain the scope of the Swiss legislation. However, in its written pleadings before the Court, it does not engage in an analysis of the Swiss legislation in that field in force on the relevant date. In those circumstances, and on the whole, it appears that, if the goods concerned were actually being manufactured in Switzerland on the relevant date, the Swiss legislation would not preclude a sign referring to their origin in that country from being affixed to those goods. However, the legislation in question would not allow that sign to enjoy protection as a trade mark.

122    Lastly, and in any event, as the contested mark is an EU trade mark, Article 51(1)(a) and Article 7(1)(g) of Regulation No 40/94, infringement of which is alleged in the present plea, do not preclude those goods from being manufactured in Switzerland and the contested mark from being affixed to them following their import into the European Union, which is consistent with the Board of Appeal's conclusion, in paragraph 41 of the contested decision, that all the goods in respect of which the contested mark enjoys protection may be produced in Switzerland.

123    Furthermore, it is irrelevant that the Board of Appeal, in paragraph 45 of the contested decision, analysed the Swiss legislation relating to 'Swissness', as that legislation was not adopted until well after the relevant date, namely in 2013.

124    In the fifth place, as regards the arguments based on the application of Article 3bis of the Madrid Agreement, which, together with the list of Contracting States to that agreement, is set out in Annexes A.24 and A.25 to the application, it has already been held that those annexes are inadmissible in the present action (see paragraph 20 above). In any event, the European Union is not a contracting party to that international agreement. On the relevant date, namely 2 July 2003 (see paragraph 98 above), only 8 of the 15 Member States at the time were contracting parties to the Madrid Agreement. It is therefore not possible to envisage applying by analogy the approach adopted with regard to the General Agreement on Tariffs and Trade (GATT) in paragraphs 10 to 18 of the judgment of 12 December 1972, International Fruit Company and Others (21/72 to 24/72, EU:C:1972:115), and recalled in Opinion 2/15 (Free Trade Agreement with Singapore) of 16 May 2017 (EU:C:2017:376, paragraph 248). It cannot therefore be binding on the European Union and on its institutions and bodies.

125    Moreover, Article 3bis of the Madrid Agreement adds nothing to Article 7(1)(g) and Article 51(1)(a) of Regulation No 40/94 as regards the application of the absolute ground for invalidity based on the misleading nature of a trade mark. Article 3bis of that agreement provides that 'the countries to which [that] Agreement applies also undertake to prohibit the use, in connection with the sale or display or offering for sale of any goods, of all indications in the nature of publicity capable of deceiving the public as to the source of the goods, and appearing on signs, advertisements, invoices, wine lists, business letters or papers, or any other commercial communication.' Its objective is, in essence, to prohibit the marketing of goods covered by trade marks which are of such a nature as to deceive the public as to the origin of the goods, and not to prohibit the registration of such marks, or even to define the conditions for declaring them invalid.

126    That agreement is therefore not relevant with regard to the outcome of the present case.

127    In the sixth place, it is appropriate to assess a number of the applicant's arguments put forward in its second plea, but which in fact concern the third plea.

128    First, the complaint based on the alleged failure to take into account the fact that the intervener had never claimed that it manufactured or intended to manufacture the relevant goods in Switzerland must also be rejected because the Board of Appeal had to ascertain whether, on the relevant date, there was any inconsistency between the information which the contested mark conveyed and the characteristics of the goods designated in the application for registration of that mark (see paragraphs 108 and 112 above). The application of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(g) thereof, therefore presupposes that the sign is inherently misleading in relation to the list of goods or services covered.

129    Second, as regards the observations submitted by the applicant before the Cancellation Division and before the Fifth Board of Appeal, including those relating to the alleged misleading nature of the contested mark, it must be held that the applicant does not point out any specific argument which the Board of Appeal incorrectly assessed. According to the case-law, it is not for the Court to seek and identify in the annexes the pleas and arguments on which it may consider the action to be based, since the annexes have a purely evidential and instrumental function (judgment of 3 March 2022, WV v EEAS, C‑162/20 P, EU:C:2022:153, paragraph 70).

130    Third, as regards the alleged incorrect assessment of Annex 5bis to the application for a declaration of invalidity showing packaging of a product of the intervener, and of the survey in Annexes 6, 6bis and 6ter filed by the applicant before the Cancellation Division and reproduced in Annexes A.12 and A.13 to the application, in so far as it is claimed that those documents should have led the Board of Appeal to find that interested customers were misled by the contested mark and thought that the goods bearing that mark came from Switzerland, although they are not manufactured there, it suffices to point out that it has been stated that, in paragraphs 41 to 45 of the contested decision, the Board of Appeal examined whether the contested mark was deceptive on the relevant date in the event that the relevant public would understand the mark as referring to the Swiss origin of the goods concerned (see, inter alia, paragraphs 83 to 104 above). It must also be recalled that the Board of Appeal had to ascertain whether, on the relevant date, there was any inconsistency between the information which the contested mark conveyed and the characteristics of the goods designated in the application for registration of that mark.

131    Fourth, as regards (i) Annexes 14 to 92 to the pleadings submitted by the applicant before EUIPO, contained in Annexes A.12 and A.13 to the application, for the purpose of demonstrating the reputation of Swiss food supplements in the health/wellness/beauty sector, the connection between those goods and the cosmetics sector, and the reputation associated with any term evoking the concept of 'Swissness' as an indication of geographical origin, (ii) a document allegedly showing that the goods bearing the contested mark are not produced in Switzerland, and (iii) Annex 5 to the file before the Board of Appeal containing a recording on a USB stick which, it is claimed, demonstrates that the letter 'e' at the end of the word element of the contested mark is not pronounced and which is alleged to contradict the finding in paragraph 38 of the contested decision according to which 'Swisse' is different from 'Swiss', it must be held that that evidence is not, in the present case, relevant to the application of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(g) thereof.

132    Neither the alleged reputation of Swiss food supplements nor that of Switzerland as a place of production nor the connection between food supplements and the cosmetics sector play a role in the assessment which the Board of Appeal must carry out in the context of those provisions, namely the ascertainment of whether there was, on the relevant date, any inconsistency between the information which the contested mark conveyed and the characteristics of the goods designated in the application for registration of that mark (see paragraphs 108 and 112 above). Nor does the audio file provided by the applicant in order to demonstrate that the pronunciation of the word element of the contested mark is identical to the pronunciation of 'suisse' or 'swiss' add anything to the present examination, given that it is apparent from paragraphs 41 to 45 of the contested decision that the Board of Appeal analysed, in the alternative, the ground for invalidity based on the alleged misleading nature of the contested mark in the event that it will be perceived as referring to the Swiss origin of the goods concerned.

133    It follows from all of the foregoing that the third plea in law must be rejected.

 The fourth plea in law

134    According to the applicant, it is apparent from the judgment of 29 June 2022, La Irlandesa 1943 (T‑306/20, EU:T:2022:404, paragraphs 81 to 101), that a mark which is not declared invalid on the basis of deceptiveness may nevertheless be declared invalid on the basis of bad faith, if it is proved that the proprietor of the mark did not intend to use the indication of geographical origin as a trade mark in relation to goods connected to the designated place of origin. The applicant maintains that that is exactly what it alleged in its application for a declaration of invalidity and in its observations in reply before the Cancellation Division.

135    The applicant submits that the case-law has made it clear that any parasitic intent, including the intent to use an indication of geographical origin as a trade mark in relation to products with no connection to the designated geographical origin, results in the invalidity of the trade mark in question for bad faith.

136    It argues that, contrary to what the Board of Appeal states in paragraph 52 of the contested decision, the ground for invalidity based on bad faith is therefore not a repetition of the ground for invalidity based on deceptiveness. Indeed, the applicant claims that, on the relevant date, the intervener would necessarily have been aware that 'Swiss' was the most prestigious and most valuable indication of source in the world and that the contested mark, used to designate goods which are not manufactured in Switzerland, took unfair advantage of the reputation of Swiss quality products in general and of Swiss energy, health, wellness and skincare goods and services in particular.

137    It submits that the unfair exploitation of the 'Swissness' concept is also proved by the statement on the intervener's website, which acknowledges that the founder of the intervener's predecessor in law became aware of that concept's reputation in that field during his trip to Switzerland in the 1960s.

138    According to the applicant, the extract from the intervener's website, contained in Annex 10 filed by the applicant before EUIPO, proves that, even on the relevant date, production was taking place only in Australia. Furthermore, it maintains that, when the intervener started, more than 10 years after the relevant date, to market the products concerned bearing the contested mark in Italy, those goods were never manufactured in Switzerland. Thus, in the applicant's submission, the intervener never intended to manufacture the products concerned in Switzerland. Consequently, it argues, the intervener wished only to take unfair advantage of the Swiss indication of source, which constitutes registration in bad faith.

139    EUIPO and the intervener dispute the applicant's arguments.

140    Article 51(1)(b) of Regulation No 40/94 provides that an EU trade mark is to be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he or she filed the application for the trade mark.

141    While, in accordance with its usual meaning in everyday language, the concept of 'bad faith' presupposes the presence of a dishonest state of mind or intention, that concept must also be understood in the context of trade mark law, which is that of the course of trade. In that regard, Regulation No 40/94, Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) and Regulation 2017/1001, which were adopted successively, have the same objective, namely the establishment and functioning of the internal market. The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers through the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see judgment of 28 October 2020, Target Ventures Group v EUIPO – Target Partners (TARGET VENTURES), T‑273/19, EU:T:2020:510, paragraph 25 and the case-law cited).

142    The intention of an applicant for a trade mark is a subjective factor which must, however, be determined objectively by the competent administrative and judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case. It is only in that manner that a claim of bad faith can be assessed objectively (see judgment of 28 October 2020, TARGET VENTURES, T‑273/19, EU:T:2020:510, paragraph 33 and the case-law cited).

143    The factors taken into account by the case-law in the context of the global analysis undertaken pursuant to Article 51(1)(b) of Regulation No 40/94 include, in particular, the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product or service capable of being confused with the sign for which registration is sought, the applicant's intention to prevent that third party from continuing to use such a sign, the degree of legal protection enjoyed by the signs at issue, the applicant's intention to prevent a third party from marketing a product, the origin of the contested sign and how it has been used since it was created, the commercial logic of which the filing of the application for registration of the sign as an EU trade mark forms a part, and the chronology of events relating to the filing (judgment of 21 February 2024, Dendiki v EUIPO – D-Market (hepsiburada), T‑172/23, not published, EU:T:2024:105, paragraph 26).

144    It is apparent from the case-law that, since the various factors are only examples drawn from a number of factors which can be taken into account in order to determine whether an applicant for registration was acting in bad faith at the time of filing the trade mark application, the fact that any one of those factors is not present does not necessarily preclude, depending on the particular circumstances of the case, a finding that the applicant acted in bad faith (see judgment of 28 October 2020, TARGET VENTURES, T‑273/19, EU:T:2020:510, paragraph 31 and the case-law cited).

145    The Court of Justice has also stated that the applicant for a trade mark is not required to indicate or even to know precisely, on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for and he or she has a period of five years for beginning actual use consistent with the essential function of that trade mark (judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 76).

146    However, the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered by that registration may constitute bad faith, where there is no rationale for the application for registration in the light of the aims referred to in Regulation No 40/94 and First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for registration of a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark (judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 77).

147    The bad faith of the trade mark applicant cannot, therefore, be presumed on the basis of the mere finding that, at the time of filing his or her application, that applicant had no economic activity corresponding to the goods and services referred to in that application (judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 78).

148    In addition, it is for the applicant for a declaration of invalidity who intends to rely on Article 51(1)(b) of Regulation No 40/94 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark applicant being presumed until proven otherwise (judgment of 8 March 2017, Biernacka-Hoba v EUIPO – Formata Bogusław Hoba (Formata), T‑23/16, not published, EU:T:2017:149, paragraph 45; see judgment of 21 February 2024, hepsiburada, T‑172/23, not published, EU:T:2024:105, paragraph 27 and the case-law cited).

149    Where the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic of the application for registration of that mark. The proprietor of the trade mark at issue is best placed to provide EUIPO with information regarding his or her intentions at the time of applying for registration of that mark and to provide it with evidence capable of convincing it that, in spite of the existence of objective circumstances, those intentions were legitimate (see judgment of 21 February 2024, hepsiburada, T‑172/23, not published, EU:T:2024:105, paragraph 28 and the case-law cited).

150    In the present case, it must be observed that, in so far as the Board of Appeal appears, in paragraph 53 of the contested decision, to have inferred the absence of bad faith on the part of the trade mark applicant from the rejection of the ground based on the misleading nature of that mark, such reasoning would be incorrect (see, to that effect and by analogy, judgment of 29 June 2022, La Irlandesa 1943, T‑306/20, EU:T:2022:404, paragraph 97).

151    However, the Board of Appeal, in any event, also pointed out, in paragraph 54 of the contested decision, that the applicant had not shown that, on the date when the application for registration of the contested mark was filed, there was an intention on the part of the trade mark applicant to market under that mark goods which had no connection with Switzerland.

152    In that regard, the applicant submits that it has proved that the intervener did not wish, on the relevant date, to use the contested mark in respect of goods manufactured in Switzerland, but rather that it intended to take unfair advantage of Switzerland's reputation in relation to the manufacture of goods, in particular in the field to which the goods concerned belong.

153    However, without it being necessary to rule on Switzerland's reputation in that field, it is apparent from the case-law cited in paragraphs 145 to 147 above that the applicant's line of argument cannot succeed. On the relevant date, the intervener was not even required to know precisely the use that it would make of the contested mark. Nor has the applicant claimed, let alone demonstrated, that the intervener had no intention to use the contested mark in relation to the goods covered by that registration.

154    Moreover, the applicant has not demonstrated to the requisite legal standard that the intervener did not intend, on the relevant date, to manufacture the goods concerned in Switzerland. It has been established only that those goods had not been produced there.

155    Nor has the applicant put forward any evidence that the intervener intended to pass off the goods concerned that it manufactures as goods originating in Switzerland, even though they are not produced there.

156    Although the intervener acknowledged before the Cancellation Division that the contested mark could evoke Switzerland – which, moreover, it denied before the Fifth Board of Appeal – it contends that the contested mark does not refer to any Swiss origin of the goods concerned.

157    In any event, as the intervener, in essence, contends, the extracts from its website are not capable of demonstrating a dishonest intention on its part, since the goods concerned may be inspired by Swiss formulas or contain ingredients originating from Switzerland, which is in fact consistent with the Board of Appeal's finding in paragraph 54 of the contested decision that there is also no evidence on file that the intervener planned, on the relevant date, to market under the contested mark goods which had no connection with Switzerland. Rather, the extracts from the intervener's website show the inspiration which the founder of the intervener's predecessor in law had during his trip to Switzerland in the 1960s (see, to that effect and by analogy, judgment of 29 November 2018, Khadi, T‑681/17, not published, EU:T:2018:858, paragraph 51).

158    The fourth plea in law must therefore be rejected.

159    As regards the second head of claim by which the applicant asks the Court to uphold the application for a declaration of invalidity of the contested mark, it is apparent from the case-law that such a request is inadmissible (judgment of 5 November 2019, APEDA v EUIPO – Burraq Travel & Tours General Tourism Office (SIR BASMATI RICE), T‑361/18, not published, EU:T:2019:777, paragraphs 73 to 75).

160    It follows that the action must be dismissed in its entirety.

 Costs

161    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.

162    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 (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Giuliani SpA to pay the costs.

Delivered in open court in Luxembourg on 2 April 2025.

*      Language of the case: English.

© European Union
The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice. This electronic version is not authentic and is subject to amendment.

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