JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
22 November 2018 (*)
(EU trade mark — Revocation proceedings — EU word mark FRUIT — Genuine use of the mark — Article 15(1)(a) of Regulation (EC) No 207/2009 (now Article 18(1)(a) of Regulation (EU) 2017/1001) — Res judicata — Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001))
In Case T‑424/17,
Fruit of the Loom, Inc., established in Bowling Green, Kentucky (United States), represented by S. Malynicz QC and V. Marsland, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Takko Holding GmbH, established in Telgte (Germany),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 25 April 2017 (Case R 2119/2016-4), relating to revocation proceedings between Takko Holding and Fruit of the Loom,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias (Rapporteur), President, A. Dittrich and I. Ulloa Rubio, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 10 July 2017,
having regard to the response lodged at the Court Registry on 25 August 2017,
further to the hearing on 19 June 2018,
gives the following
Judgment
Background to the dispute
1 On 16 March 2006, the applicant, Fruit of the Loom, Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the word sign FRUIT.
3 The goods in respect of which registration was sought are in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Clothing, footwear, headgear’.
4 The trade mark application was published in Community Trade Marks Bulletin No 43/2006 of 23 October 2006 and the mark was registered on 4 May 2007.
5 On 26 April 2013, Takko Holding GmbH filed an application for revocation of that EU trade mark, on the basis of Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), on the ground that the mark had not been put to genuine use in respect of all the goods covered for a continuous period of five years at the date of application for revocation.
6 With a view to establishing genuine use of its mark between 26 April 2008 and 25 April 2013, the applicant submitted evidence by which it sought to show (i) use of the contested mark as part of other trade marks, (ii) use of the word element ‘fruit’ in circumstances other than those in which it was used as a mark itself, and (iii) stand-alone use of the contested mark in preparatory works for the launch of a clothing range named ‘Born in the USA’.
7 By decision of 29 April 2014, the Cancellation Division upheld the application for revocation.
8 On 27 June 2014, the applicant filed a notice of appeal against that decision with the Board of Appeal of EUIPO.
9 By decision of 12 May 2015, the Second Board of Appeal of EUIPO dismissed that appeal. More specifically, it upheld the findings of the Cancellation Division regarding lack of genuine use of the contested mark (i) as part of other trade marks, (ii) in circumstances other than those in which it was used as a mark itself, and (iii) as a stand-alone trade mark in preparatory works for the launch of the ‘Born in the USA’ range.
10 By application lodged at the Court Registry on 30 July 2015, the applicant brought an action against the decision of 12 May 2015, registered as Case T‑431/15. The applicant contested only paragraphs 33 to 43 of the decision of 12 May 2015, namely the paragraphs in which the Board of Appeal considered whether there had been genuine use of the contested mark as a stand-alone trade mark. On the other hand, the applicant expressly stated in paragraph 9 of its application that it did not contest paragraphs 26 to 32 of that decision, which related to the use of the contested mark (i) as part of other trade marks and (ii) in other circumstances.
11 By judgment of 7 July 2016, Fruit of the Loom v EUIPO — Takko (FRUIT) (T‑431/15, not published, EU:T:2016:395), the Court annulled the decision of 12 May 2015 on the ground that the conclusion of the Board of Appeal with regard to the genuineness of the use of the contested trade mark as a stand-alone mark was based, as regards its primary reasoning, on an analysis vitiated by an error of law, in so far as the Board had taken the view that the outward use of a mark necessarily means use aimed at end consumers. The Board of Appeal’s alternative conclusion was, according to the Court, based on an assessment of the evidence and the circumstances of the case which did not satisfy the criteria laid down by case-law, particularly in the light of the detailed and precise nature of the arguments and evidence submitted by the applicant before the adjudicating bodies of EUIPO.
12 Following delivery of the judgment of 7 July 2016, FRUIT (T‑431/15, not published, EU:T:2016:395), the Presidium of the Boards of Appeal of EUIPO, by decision of 14 November 2016, referred the case to the Fourth Board of Appeal under reference number R 2119/2016-4.
13 By decision of 25 April 2017 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal in Case R 2119/2016-4 and ordered the applicant to pay the costs incurred for the purposes of the cancellation and appeal proceedings.
14 According to the Board of Appeal, first, in so far as the contested mark had not been put to genuine use for ‘footwear and headgear’, it had to be declared revoked for those goods (paragraph 30 of the contested decision).
15 Secondly, as regards the use of the contested mark for clothing, on the one hand, the Board of Appeal examined the evidence adduced by the applicant (paragraphs 31 to 52 of the contested decision). The applicant had provided various documents capable, in its view, of establishing use of the contested mark. The list of those documents can be found in paragraph 3 of the contested decision (Annexes LM 1 to LM 21). By those documents, the applicant sought to establish the use of the contested mark in preparatory works for the launch of a clothing range named ‘Born in the USA’ and, in particular, in connection with its participation in the fashion trade fair ‘Bread and Butter’, which took place in Berlin (Germany) in July 2012. Apart from those documents, the applicant produced two statements by Mr L. M, Executive Vice President and Chief Executive Officer of Fruit of the Loom Ltd, the first dated 26 July 2013 (Mr M.’s first statement’) and the second dated 14 February 2014 (‘Mr M.’s second statement’), which were intended to clarify the content of the evidence.
16 Following an examination of that evidence, the Board of Appeal held that it could not be regarded as containing any indication of use of the contested mark and could not, therefore, establish that there was genuine use of the mark during the relevant period (paragraph 52 of the contested decision).
17 On the other hand, the Board of Appeal found that, even assuming that some of the evidence submitted by the applicant did provide some indication of use of the contested mark, that use could not be classified as genuine in the light of the low volume of goods bearing the contested mark. Thus, as regards, more specifically, an order of 400 items claimed by the applicant, which was carried out on 19 July 2012, the Board of Appeal, while considering that the very existence of that order (at a time when, according to the statements of Mr M., it had already been decided not to go ahead with the launch of the clothing range which included clothing bearing the contested mark) was ‘interesting’, stated, in any event, that, even if that order had to be taken into account and all the T-shirts ordered did bear the contested mark, ‘a single order of approximately 400 T-shirts to one single retailer cannot qualify as genuine use of the trade mark under attack’ (paragraph 50 of the contested decision).
18 Furthermore, according to the Board of Appeal, even if it were considered that the goods presented in the various catalogues relied on by the applicant bore the contested mark, the commercial acts relied on by the applicant were not sufficient to classify the use claimed as genuine. In the Board of Appeal’s view, the applicant merely asserted that it participated in a single fashion trade fair, held in Berlin in July 2012 (see paragraph 12 above), and sent out catalogues. Those commercial acts, seen in the light of the applicant’s decision to stop the launch of the ‘Born in the USA’ range, a decision that was not the result of an unsuccessful attempt to market its goods, were insufficient for it to be considered that the contested mark had been put to genuine use (paragraphs 56 and 57 of the contested decision).
Forms of order sought
19 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
20 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO.
Law
21 In the application, the applicant relies on two pleas in law, the first alleging infringement of Article 15(1) of Regulation No 207/2009 (now Article 18(1) of Regulation 2017/1001), and the second alleging infringement of Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001). Specifically, by its second plea, the applicant claims that the Board of Appeal disregarded the authority of res judicata attached to the judgment of 7 July 2016, FRUIT (T‑431/15, not published, EU:T:2016:395), and in particular the principles set out in paragraph 63 thereof, inasmuch as it concluded that the stopping of the launch of the ‘Born in the USA’ range was ‘on its own a sufficient reason to show that the use [of the contested mark] was not genuine’ (paragraph 67 of the application).
22 The applicant clarifies, furthermore, in paragraph 10 of the application, that it intends to challenge the contested decision in relation to ‘clothing’ only. On the other hand, it does not challenge the findings of the Board of Appeal in relation to ‘footwear and headgear’ (see paragraph 14 above).
The first plea, alleging infringement of Article 15(1) of Regulation No 207/2009
23 By the first plea, the applicant claims that the Board of Appeal reached its conclusion that there were no indications of genuine use of the contested mark in breach of Article 15(1) of Regulation No 207/2009. Pursuant to that provision, if, within a period of five years following registration, the proprietor has not put the trade marks at issue to genuine use in the European Union in connection with the goods or services in respect of which they are registered, or if such use has been suspended during an uninterrupted period of five years, those trade marks are to be subject to the sanctions provided for in Regulation No 207/2009, unless there are proper reasons for non-use.
24 As is apparent from paragraphs 16 and 17 above, the Board of Appeal took the view, primarily, that the evidence provided by the applicant could not be regarded as containing any indication of use of the contested mark and could not, therefore, establish that there was genuine use of the mark during the relevant period. Moreover, it is apparent from paragraph 18 above that the Board of Appeal found, for the sake of completeness, that, even assuming that the goods presented in the various catalogues relied on by the applicant bore the contested mark, the commercial acts relied on by the applicant were not sufficient to classify the use claimed as genuine. It should be pointed out, in that regard, that, at the hearing, in response to a question put by the Court, both parties confirmed that reading of the contested decision.
25 It must first of all be borne in mind that there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition of genuine use of the mark requires that that mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 21 June 2012, Fruit of the Loom v OHIM — Blueshore Management (FRUIT), T‑514/10, not published, EU:T:2012:316, paragraph 47 and the case-law cited].
26 It should moreover be recalled that, according to the case-law, it may be inferred from a combined reading of Article 15, Article 42(2), Article 51(1) and Article 57(2) of Regulation No 207/2009 (Article 42(2), Article 51(1), and Article 57(2) now being Article 47(2), Article 58(1) and Article 64(2) of Regulation 2017/1001) that, in proceedings for revocation of a mark, such as the proceedings in the present case, it is for the proprietor of the contested mark, and not EUIPO of its own motion, as a rule, to establish genuine use of that mark (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 63).
27 When assessing whether that use is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the extent and frequency of use of the mark (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 22 and the case-law cited).
28 Furthermore, a global assessment must be carried out which takes into account all the relevant factors of the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under the trade contested mark may be offset by a high intensity of use or a period of very regular use of that trade mark or vice versa (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 23 and the case-law cited).
29 As to the extent or scale of the use to which the contested trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 25 and the case-law cited).
30 It is true that the rationale for the requirement that the earlier mark must have been put to genuine use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 27 and the case-law cited).
31 However, the smaller the commercial volume of the use of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 28 and the case-law cited).
32 It is in the light of that case-law that the plea submitted by the applicant must be examined.
33 In the first plea, the applicant relies on the case-law cited in the judgment of 7 July 2016, FRUIT (T‑431/15, not published, EU:T:2016:395) concerning proof of genuine use of a contested mark, and Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 341, p. 21) (now Article 10 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)).
34 Furthermore, on the one hand, the applicant relies on the case-law of the General Court on the admissibility of written statements as an acceptable means of proof and, in particular, the judgments of 7 June 2005, Lidl Stiftung v OHIM — REWE-Zentral (Salvita) (T‑303/03, EU:T:2005:200, paragraph 42); of 13 May 2009, Schuhpark Fascies v OHIM — Leder & Schuh (jello SCHUHPARK) (T‑183/08, not published, EU:T:2009:156, paragraph 39); and of 23 September 2009, Cohausz v OHIM — Izquierdo Faces (acopat) (T‑409/07, not published, EU:T:2009:354, paragraph 49).
35 On the other hand, the applicant observes that, according to the case-law, an accumulation of evidence may allow the necessary facts to be established, even though none of those pieces of evidence, taken individually, would be capable of establishing the accuracy of those facts. It relies, in that regard, on the judgments of 17 April 2008, Ferrero Deutschland v OHIM (C‑108/07 P, not published, EU:C:2008:234, paragraphs 36 and 37); of 19 April 2013, Luna v OHIM — Asteris (Al bustan) (T‑454/11, not published, EU:T:2013:206, paragraph 36); and of 30 September 2014, Scooters India v OHIM — Brandconcern (LAMBRETTA) (T‑132/12, not published, EU:T:2014:843, paragraph 25).
36 Furthermore, the applicant presents a long series of arguments seeking to establish errors committed by the Board of Appeal in its assessment of the various items of evidence adduced before it (paragraphs 17 to 59 of the application). More specifically, the applicant submitted before the departments of EUIPO, two witness statements of Mr M., accompanied by annexes LM 1 to LM 21. By its line of argument, the applicant thus seeks to challenge the Board of Appeal’s assessment of each of those items of evidence.
37 EUIPO disputes the applicant’s arguments.
38 It should be pointed out at the outset that, as is shown in paragraph 60 of the application, entitled ‘Conclusion on the first plea’, by all its arguments, the applicant seeks to establish that the Board of Appeal, by making ‘a number of errors’, ‘failed to consider the evidence as a whole and failed to realise that not each piece of evidence has to show use of the mark to be taken into account’. In the applicant’s submission, ‘an accumulation of evidence may prove use’. Moreover, the applicant submits that the Board of Appeal displayed ‘a lack of care and attention to detail in the decision and a failure to read (properly or at all) [that evidence]’.
39 In that regard, it must be stated that the applicant misreads the case-law that it nevertheless cites itself in paragraph 14 of the application. Admittedly, according to that case-law, although Rule 22 of Regulation No 2868/95 refers to indications concerning the place, time, extent and nature of use, and gives examples of acceptable evidence, such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and other statements in writing, that rule does not state that each item of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of the use claimed (judgment of 16 November 2011, Buffalo Milke Automotive Polishing Products v OHIM — Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, EU:T:2011:675, paragraph 61; see, also, judgment of 19 April 2013, Al bustan, T‑454/11, not published, EU:T:2013:206, paragraph 35 and the case-law cited). Moreover, it is established case-law that it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though none of those items of evidence, taken individually, would be capable of establishing the accuracy of those facts (see judgment of 19 April 2013, Al bustan, T‑454/11, not published, EU:T:2013:206, paragraph 36 and the case-law cited).
40 However, it cannot be inferred from that case-law that disparate items of evidence having no apparent link between one another may, taken as a whole, constitute proof of genuine use of a contested mark. In other words, although each item of evidence considered individually must not necessarily include all the information required to establish genuine use of a contested mark, by contrast, it must be possible for the place, time, nature and extent of the use claimed by means of each item of evidence to be corroborated by other items of evidence submitted by the proprietor of a contested mark.
41 It is in the light of those considerations that it is necessary to examine the arguments by which the applicant seeks to challenge the conclusions that the Board of Appeal reached following its assessment of each of the items of evidence submitted before it.
Paragraphs 31, 48 and 49 of the contested decision
42 The applicant challenges the Board of Appeal’s assessment of Annexes LM1 and LM 2. Those annexes include a historic presentation of the applicant and of its activity in the clothing sector as well as a graphic representation of the timeline for the launch of the ‘Born in the USA’ range, respectively. In paragraph 31 of the contested decision, the Board of Appeal found that those annexes do not contain any specific reference to the contested mark, nor to any place where the range in question should have been marketed.
43 The applicant does not challenge that conclusion. It merely asserts, in paragraph 19 of the application, that Annex LM 1 was not submitted ‘to show use of the mark but merely includes information about [the applicant’s] established presence in Europe and its European headquarters being based in the UK, with a distribution centre in Germany and over 3 500 employees in its European division’, and the fact that it ‘has a strong network of business partners and wholesalers throughout Europe’. According to the applicant, ‘[t]his is relevant as part of the overall evidence in the case’.
44 The applicant’s line of argument must, in that respect, be rejected. Admittedly, in the first place, information such as that which Annex LM 1 is supposed to demonstrate might, in some circumstances, have been relevant in the present case if the applicant was marketing or was preparing to market in the EU its goods only under the contested mark alone. In such a case, such information, assuming that it was established, could indeed have been taken into account for the purposes of assessing whether there had been genuine use of that mark. However, it is apparent from the documents before the Court that the applicant is the proprietor of other EU trade marks, such as, in particular, the Fruit of the Loom mark. Consequently, it cannot be considered, in the present case, that the information in Annex LM 1 might be relevant as regards whether there was genuine use of the contested mark alone.
45 In the second place, the same is true of the applicant’s criticisms, in paragraph 57 of the application, of paragraph 48 of the contested decision which relates to Annexes LM 18-2 and LM 19. As the Board of Appeal correctly found, those annexes do not refer specifically to use of the contested mark, but consist of sales figures, invoices and financial reports of the applicant. In the third place, the same findings also apply as regards the allegations made in paragraph 59 of the application, in which the applicant contests the Board of Appeal’s assessment in paragraph 49 of the contested decision in relation to Annex LM 20. The applicant concedes that the documents submitted under that annex were not submitted ‘as evidence showing the [contested mark] on its own but as general background evidence as to the nature and size of the applicant[’s] … business, and its reputation’. It is sufficient, in that regard, to note that the applicant’s alleged reputation cannot constitute a relevant factor in the present case, in so far as, although such a reputation may, admittedly, be taken into account in order to assess the recognition that the applicant enjoys or the recognition of other marks under which its goods are marketed, that reputation does not prove genuine use of the contested mark.
46 As regards, moreover, Annex LM 2 and the launch of the ‘Born in the USA’ range, the applicant states, in paragraph 20 of the application, that Mr M. confirmed, in paragraph 7 of his first statement, that the range in question was to be launched ‘in Europe and elsewhere’, that he described the planned timeline in that statement and stated that he ‘believes he attended the kick off meeting in August 2011’. According to the applicant, this material is part of the global assessment of the evidence.
47 In that regard, it should be noted that, by way of a measure of organisation of procedure, the Court (i) indicated to EUIPO that certain extracts of Mr M.’s first statement, namely part of paragraph 7, mentioned in paragraph 46 above, paragraphs 8 to 9 and part of paragraph 10 of that statement, must have been omitted from the case file submitted to it and (ii) requested explanations in that respect. In its response of 1 June 2018, EUIPO maintained that it never received the missing page and that it was therefore an omission attributable to the applicant, which could have easily verified, on the EUIPO website, the number of pages actually transmitted to EUIPO.
48 At the hearing, the applicant submitted that it was never notified by EUIPO of the fact that a page was missing in its file whereas EUIPO was required to notify it of this in accordance with Rule 82(2) of Regulation No 2868/95, read in conjunction with Rule 80(2) of that regulation (now Article 60(3) of Regulation 2018/625). It is apparent from those provisions that, where a communication is sent to EUIPO by electronic means and is incomplete or illegible, or where EUIPO has reasonable doubts as to the accuracy of the transmission, EUIPO is to inform the sender accordingly and to invite him, within a period to be specified by EUIPO, to retransmit the original by telecopy or to submit the original.
49 However, even if paragraph 7 of Mr M.’s first statement has the content that the applicant ascribes to it, its line of argument set out in paragraph 46 above must be rejected.
50 First of all, it should be noted that the applicant’s line of argument is not capable of calling in question the Board of Appeal’s conclusion that Annex LM 2 does not contain any reference to the contested mark. As regards the part of Mr M.’s statement according to which the range in question was to be launched ‘in Europe’, it should be observed that the applicant itself cites, in paragraph 15 of its application, the settled case-law that, where a statement pursuant to Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001), namely a statement in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up, has been established by one of the applicant company’s executives, probative value can be attributed to that statement only if it is supported by other evidence (see judgment of 13 June 2012, Süd-Chemie v OHIM — Byk-Cera (CERATIX), T‑312/11, not published, EU:T:2012:296, paragraph 30 and the case-law cited; see also, to that effect, judgment of 13 May 2009, jello SCHUHPARK, T‑183/08, not published, EU:T:2009:156, paragraph 39 and the case-law cited). However, the applicant does not rely on any other material in the case file capable of corroborating Mr M.’s specific statements regarding the launch of the ‘Born in the USA’ range in the EU. In addition, in paragraph 20 of the application, the applicant states that Mr M. ‘believes’ he attended the kick off meeting for that range in 2011. However, according to the case-law, genuine use of a mark cannot be established by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the mark on the market concerned (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 24 and the case-law cited).
Paragraph 32 of the contested decision
51 In paragraph 22 of the application, the applicant challenges paragraph 32 of the contested decision, according to which the launch of the ‘Born in the USA’ range was cancelled ‘in the summer of 2012, sometime between the beginning of July and mid-August, after a review of the [applicant’s] global business’ and ‘[c]onsequently, even according to the [applicant], the [contested] trade mark was never actually available on the market’.
52 The applicant claims that that assertion, according to which the contested mark was never available on the market, is incorrect, in so far as commercial acts capable of proving use of the contested mark were indeed carried out. It states, in that regard, that samples and brochures were provided to customers and sales agents, and that samples were exhibited at the ‘Bread and Butter’ trade show. The applicant moreover puts forward evidence of an order being placed in Italy, the content of which is confirmed in Mr M.’s second statement. According to paragraph 12 of that statement, 5 of the items ordered by the Italian customer used the contested mark on its own and two others had FRUIT 1851 on an outside label, which the applicant claims is confirmed by the photographs submitted in Annex LM 4.
53 However, the Board of Appeal did not assert, in paragraph 32 of the contested decision, that the commercial acts claimed by the applicant could not, as such, establish genuine use of the contested mark from the fact that the contested mark had never been available on the retail market. On the contrary, as is apparent from the contested decision, it was only following an overall examination of the evidence relating to those commercial acts that the Board of Appeal reached its conclusion on whether there had been genuine use of the contested mark. By the last sentence of paragraph 32 of the contested decision, the Board of Appeal merely recalls a factual element, namely that the launch of the ‘Born in the USA’ range had been stopped in the summer of 2012, which is not indeed disputed in the present case. It cannot however be inferred from that observation that the Board of Appeal failed to take account of the commercial acts claimed by the applicant during its assessment.
54 The same applies as regards the order to which the applicant refers in paragraph 22 of the application. The Board of Appeal examined the evidence relating to that order in paragraph 50 of the contested decision, which the applicant does not specifically challenge in the present case. In that paragraph, the Board of Appeal set out a first set of considerations, according to which that document contained no reference to the contested mark, but only to the ‘Born in the USA’ product range and that it was not possible to ascertain whether the product codes on the purchase order also appeared in the catalogues of the abovementioned range. In the context of a second set of considerations, the Board of Appeal essentially found that it was ‘interesting’ that products of a range whose launch was supposedly stopped between the beginning of July and mid-August 2012 (see paragraph 51 above) were ordered on 19 July 2012, but that none of those products ever reached the retailer, ‘since no products were ever sold’. The Board of Appeal moreover took the view that, in any event, ‘even if the order were to be taken into consideration and all the T-shirts ordered were to have borne the [trade mark] under attack, a single order of approximately 400 T-shirts to one single retailer cannot qualify as genuine use of the trade mark under attack’.
55 It follows from the foregoing that the Board of Appeal not only took account of the evidence relating to the order at issue, but also made findings as regards both the absence of any specific reference to the contested mark or to goods bearing that mark in the purchase order at issue and the volume of items concerned by that commercial act.
56 In that regard, in paragraph 22 of the application, the applicant stated that, in paragraph 12 of Mr M.’s second statement, it is confirmed that 5 of the items appearing on the purchase order used the contested mark on its own, on an outside label, and that photographs of 4 of those products appeared in Annex LM 4, showing the labels in question.
57 It is admittedly true that, in paragraph 12 of his second statement, Mr M. refers to five items of clothing which he states bear an outside label on which the contested mark appears. Mr M. mentions, indeed, the codes of those products which correspond to codes of products bearing the same name, which appear on pages 165 to 177 of Annex LM 8, namely of the catalogue of the clothing range ‘Born in the USA’. It must therefore be held that, contrary to what is stated in paragraph 50 of the contested decision, it was possible to ascertain whether some of the product codes set out in the purchase order also appeared in the catalogue of the abovementioned range.
58 However, given that it is not possible to discern any labels, let alone what might be written on the labels that were supposedly displayed on the items of clothing set out on pages 165 to 177 of Annex LM 8, the applicant does not put forward any argument capable of calling in question the Board of Appeal’s conclusion as regards the lack of any specific reference to the contested mark in the purchase order at issue. Moreover, the fact that photographs showing items of clothing bearing the contested mark and bearing the same names as some of the items set out on pages 165 to 177 of Annex LM 8 are included in Annex LM 4, cannot, in the light of the findings set out in paragraph 69 below, be considered relevant in the present case.
59 It is apparent from the foregoing that the applicant has not succeeded in challenging the first set of considerations mentioned in paragraph 54 above. Those findings are, however, a sufficient basis for the Board of Appeal’s conclusion that the applicant did not establish the existence of genuine use of the contested mark. Accordingly, it is not necessary to take account, in the present case, of the second set of considerations mentioned in paragraph 54 above.
60 In the light of all the foregoing, any argument based on the premiss that the Board of Appeal failed to take account of the existence of the order mentioned in paragraph 54 above must be rejected as unfounded.
Paragraph 33 of the contested decision
61 In paragraph 24 of the application, the applicant disputes the finding in paragraph 33 of the contested decision, according to which the applicant ‘mixes’, in its pleadings before EUIPO, the different trade marks, product lines and product ranges and ‘tried to make the Board believe that the “Born in the USA range” is the same as the [EU trade mark]’. In the applicant’s submission, that finding is incorrect, in so far as the evidence submitted very clear shows that only some items in the range in question bore the contested mark.
62 In that regard, even if the applicant’s assertions that the evidence that it provided clearly shows that only some of the items of the ‘Born in the USA’ range bore the contested mark were established, their relevance in relation to paragraph 33 of the contested decision is not apparent from the application. The applicant does not claim that the Board of Appeal failed to take account, in those analyses, of its claims that only certain items of the ‘Born in the USA’ range bore the contested mark. Thus, paragraph 33 of the contested decision can be interpreted only as consisting of a general description of the method by which the applicant presented the evidence in the present case.
Paragraphs 34 and 36 of the contested decision
63 The applicant disputes the Board of Appeal’s assessment in relation to Annex LM 3 which includes several pages of a document entitled ‘Development Specification 2013’, showing labels on which the contested mark appears sewn on the outside of various items of clothing. According to paragraph 34 of the contested decision, this document is an internal document, whose implementation is not supported in any way and which does not contain any evidence that the development specifications referred specifically to the EU market.
64 The applicant, which does not dispute the internal nature of that document, claims that the use of tabs on which the contested mark appears is also visible in the photographs in Annex LM 4, which it claims were ‘taken at the offices of the legal representatives of the applicant in London’, and in the catalogue submitted in Annex LM 8.
65 It should be noted that the applicant does not dispute the Board of Appeal’s conclusions in relation to Annex LM 3 as such. It merely submits that the information in that annex is corroborated by Annexes LM 4 and LM 8.
66 It is thus necessary to examine those annexes in order to find whether they corroborate the information alleged to be contained in Annex LM 3.
67 As regards Annex LM 4, it includes photographs showing items of clothing on which the contested mark is displayed. In paragraph 36 of the contested decision, the Board of Appeal examined that annex and concluded that those photographs are undated and that ‘neither the submissions nor the witness statements allow for any conclusions to be drawn about when these photographs were taken or for what market these products were intended’.
68 The applicant disputes that conclusion in paragraph 30 of the application. It asserts, specifically, in that paragraph that the Board of Appeal misread the evidence provided According to the applicant, in paragraph 7 of Mr M.’s first statement, it is stated that the range originated ‘in Europe’ and was intended for sale ‘in Europe and elsewhere’. According to paragraph 9 of that statement, the samples in question were produced for use at exhibitions and for marketing to the trade. It is stated that Mr M. confirmed that Annex LM 4 shows photographs of some of the samples which were produced and that, in its appeal before the Board of Appeal, the applicant describes the uses of the signs FRUIT and FRUIT 1851 on garments presented in Annex LM 4, as shown in the catalogue set out in Annex LM 8.
69 In the light of what was stated in paragraphs 47 to 49 above and even if it were considered that the extracts of Mr M.’s first statement relied on by the applicant have the content which the applicant ascribes to them, the Board of Appeal was right to take the view that it was impossible to establish, from the evidence furnished by the applicant, on what date the photographs in Annex LM 4 had been taken and for which market the samples shown in those photographs had been intended. Even if it were considered, indeed, that those photographs were taken in London (United Kingdom), at the offices of the applicant’s legal representatives, as the applicant asserts (see paragraph 64 above), without, however, adducing any evidence whatsoever to support its claims, that is not capable on its own of establishing that the goods shown in those photographs were going to be marketed in the context of the launch of the ‘Born in the USA’ range, or that there was a link between those goods and Annex LM 3, or, lastly, that those goods were intended to be marketed in the EU.
70 As was stated in paragraph 64 above, the applicant claims that there is a link between some of the items shown in the photographs set out in Annex LM 4 and certain photographs in Annex LM 8, consisting of several pages of what allegedly constitutes a catalogue of the clothing range on which it is claimed that the contested mark is, inter alia, displayed. However, and even if those assertions must be considered to be established, they cannot suffice to prove the date on which the photographs of Annex LM 4 were taken or indeed the destination of the items of clothing shown in those photograph, let alone to establish a link between those photographs and the ‘Development Specifications’ of which Annex LM 3 consists.
71 It is true that the applicant relies, in support of its claims, on Mr M.’s first statement. However, as was recalled in paragraph 50 above, probative value can be attributed to that statement only if it is supported by other evidence. None of the items of evidence on which the applicant relies corroborates Mr M.’s statements regarding the date on which the photographs of Annex LM 4 were taken or the destination of the items of clothing shown in those photographs. Consequently, it cannot be considered that the applicant has established that the Board of Appeal erred in its assessment of Annex LM 3.
Paragraph 35 of the contested decision
72 In paragraph 28 of the application, the applicant disputes the findings made in paragraph 35 of the contested decision, according to which Mr M.’s first statement refers to the Fruit of the Loom trade mark, whose use cannot be considered as use of the contested mark. The applicant submits that that finding is not relevant in the present case, in so far as, although admittedly the ‘“Born in the USA” range was produced as a “Fruit of the Loom” retail range … some of the garments in it were actually branded [as the contested mark]’.
73 It is sufficient to note, in relation to that line of argument, that the applicant does not clarify, in the application, how the Board of Appeal’s finding that some of the evidence provided refers to the Fruit of the Loom mark alone, which did not prevent the Board from examining all the evidence submitted by the applicant, might as such have been detrimental to it. It should be noted that, in paragraph 35 of the contested decision, the Board of Appeal indicated that, in so far as the items of evidence in question refer to the Fruit of the Loom trade mark, they cannot be considered relevant in the present case; this was not, in essence, disputed by the applicant.
Paragraphs 37, 40, 41 and 42 of the contested decision
74 In paragraph 32 of the application, the applicant disputes paragraph 37 of the contested decision. According to that paragraph 37, some of the items of clothing displayed in Annex LM 4 were, according to the applicant, also among the items of clothing set out in Annex LM 5, which it is stated consists of photographs supposedly taken at the ‘Bread and Butter’ trade fair. However, according to the Board of Appeal, Annex LM 5 is undated; furthermore, it is unknown where these photographs, which appear to show a trade fair, were taken. These photographs could have been taken at the ‘Bread and Butter’ trade fair in Berlin in July 2012 (Annex LM 6, page 1), but also anywhere else in the world and at any time. No objective evidence, such as, for example, invoices, lists of participants or meeting schedules, are in the file showing that the applicant even participated in the ‘Bread and Butter’ trade fair in Berlin in July 2012, as it claims.
75 In the applicant’s submission, the Board of Appeal failed, in that regard, to examine the evidence as a whole, evidence which it claims is capable of proving both its participation in the abovementioned fashion trade fair and the fact that clothing bearing the contested mark was exhibited at that fair. Thus, it claims that the Board of Appeal failed to take account of paragraph 10 of Mr M.’s first statement, which confirms that Annex LM 5 contains photographs taken at the trade fair concerned. Moreover, it submits that Annex LM 6 includes a mailing confirming that the applicant was present at that fair. In addition, Annex LM 7 consists of a press article confirming that the applicant was present at the fair in question and, it is claimed, it is confirmed by Mr M., in paragraph 12 of his first statement, that that press article includes photographs of four of the items of clothing shown in the photographs of Annex LM 4, which it is claimed confirms that items of clothing on which the contested mark was displayed were exhibited at that fair.
76 As regards Mr M.’s statements, even if paragraph 10 of his first statement mentioned in paragraph 75 above has the content which the applicant ascribes to it, it is sufficient to refer to paragraphs 50 and 69 above. So far as concerns the other items of evidence to which the applicant refers and which relate to its alleged participation in the ‘Bread and Butter’ trade fair, it must be stated that, although the Board of Appeal did indeed express doubts regarding that participation in paragraph 37 of the contested decision, it did not, nonetheless, fail to examine all the evidence relating thereto.
77 Thus, as regards Annex LM 5, which allegedly consists of photographs taken at the ‘Bread and Butter’ trade fair, the Board of Appeal examined it further in paragraph 40 of the contested decision. The Board of Appeal stated in that paragraph, inter alia, that the goods which appear in those photographs do not contain any visible reference to the contested mark and that, as far as attached product labels are shown, they bear only the ‘Fruit of the Loom and device trade mark’.
78 The applicant disputes those conclusions in paragraph 36 of the application. It relies, in that regard, on paragraphs 10 and 12 of Mr M.’s first statement, and paragraph 15 of its appeal before the Board of Appeal, which it is stated consists of a list of garments which can be identified from LM 5 and which were branded with labels on which the contested mark appears ‘by reference to the larger scale pictures in LM 4’.
79 In that regard, apart from Mr M.’s statements, the applicant merely refers to its own pleadings and merely persists in its claims that the photographs of Annex LM 4 show items of clothing which were allegedly exhibited at the ‘Bread and Butter’ trade fair. However, it does not dispute the Board of Appeal’s finding that labels bearing the contested mark do not appear clearly on the photographs of Annex LM 5, which are supposedly photographs taken at that fair. It must be pointed out that, apart from Mr M.’s statements and the applicant’s claims, no objective link is established, in the case file, between the photographs of Annex LM 4 and the items allegedly exhibited by the applicant at the ‘Bread and Butter’ trade fair.
80 As regards Annex LM 6, which does not consist of correspondence but rather of brochures which appear to be intended to be sent to sales representatives or retailers by way of invitation to two fashion trade fairs, namely the ‘Bread and Butter’ trade fair mentioned above and the ‘Moda’ trade fair, in which the applicant does not claim to have participated, it must be observed that the Board of Appeal did not fail to examine it. In paragraph 41 of the contested decision, it is stated that those brochures predominantly contain, in their headers, the ‘Fruit of the Loom and device trade mark’, while the word element ‘fruit’ is used in a colloquial way, in the context of the English phrase ‘… make your destination casual, fruit style’, which cannot qualify as use of the contested mark within the meaning of Article 15 of Regulation No 207/2009, given that the word element ‘fruit’ is used as an adjective qualifying a ‘specific “style”’ and does not refer to items of clothing. According to the Board of Appeal, the only trade mark which is visible in those brochures appears on the item of clothing worn by the model in the photograph and is the Fruit of the Loom mark.
81 The applicant refers to paragraph 41 of the contested decision in paragraph 38 of the application, without, however, putting forward a specific complaint against the Board of Appeal’s findings. In that paragraph 38, the applicant merely states that ‘the mailings were for people who were interested in [its products]’ and that ‘[i]t will have been totally clear to’ those recipients ‘that this was promoting a clothing range exhibited at the shows [in question]’ while the abovementioned brochures ‘include prominent pictures of clothing’. It must be stated that those arguments do not in any way call in question the Board of Appeal’s findings that the contested mark does not appear in those brochures.
82 Lastly, as regards Annex LM 7, namely the press article referred to in paragraph 75 above, the Board of Appeal examined it in paragraph 42 of the contested decision. In that paragraph 42, it is stated that the contested mark is mentioned nowhere in the press article in question and that only the Fruit of the Loom trade mark appears in that article.
83 According to the applicant (paragraph 40 of the application), it is confirmed in paragraph 12 of Mr M.’s first statement that the photographs of clothing supposedly exhibited at the ‘Bread and Butter’ trade fair and which appear in Annex LM 7 include four photographs showing items of clothing on which the contested mark is allegedly displayed and which correspond to items of clothing appearing also in the photographs of Annex LM 4.
84 In that regard, it appears that an item of clothing similar to that which Mr M. refers to as ‘Atlantic “Deep Navy Floral” Surf Shorts’ and which does indeed bear, in the photograph submitted in Annex LM 4, the contested mark, appears on page 4 of Annex LM 7 as being one of the products exhibited by the applicant at the ‘Bread and Butter’ trade fair. The same is true of the ‘Long Island “Malibu Stripe” Swim Shorts’ (page 1 of Annex LM 4 and page 4 of Annex LM 7), the ‘Cooper Vest in “Mint”’ (page 6 of Annex LM 4 and page 2 of Annex LM 7) and the ‘Blue “Montgomery” Shirt’ (page 7 of Annex LM 4 and page 3 of Annex LM 7) items.
85 However, it must be pointed out that the quality of the reproductions of Annex LM 7 provided by the applicant does not make it possible to establish with certainty that the clothing designs to which Mr M. refers in his first statement, whose names, moreover, have no link with the contested mark, are identical to those which are displayed in the photographs of that annex. The photographs set out in Annex LM 7 do not make it possible to ascertain, in particular, whether the contested mark is displayed on the items of clothing in question.
86 Accordingly, it is apparent from the foregoing that the Board of Appeal did not fail to examine Annexes LM 5, LM 6 and LM 7 to which the applicant refers in paragraph 32 of the application. It is true that the Board of Appeal seems, in paragraph 37 of the contested decision, to have considered that the applicant had not proved its participation in the ‘Bread and Butter’ trade fair. However, in so far as (i) the Board of Appeal did not fail to examine the items of evidence submitted by the applicant which relate to use of the contested mark in the context of that fair and (ii) the applicant does not put forward any argument capable of calling in question the conclusions of that assessment at least as regards Annexes LM 5, LM 6 and LM 7, the final sentence of paragraph 37 of the contested decision cannot call in question the Board of Appeal’s conclusion that the evidence submitted by the applicant does not contain any indications of use of the contested mark in the EU (paragraph 52 of the contested decision).
Paragraph 38 of the contested decision
87 In paragraph 34 of the application, the applicant disputes the Board of Appeal’s conclusions in relation to Annex LM 10. According to paragraph 38 of the contested decision, that annex contains a ‘[l]ist of individual customers, agents and salespersons’. The Board of Appeal examined, in relation to that annex, the possibility that that list included the addresses of the persons to whom the invitations to the ‘Bread and Butter’ trade fair were, according to the applicant, sent, given that the applicant claimed that such invitations had been sent by ‘approximately 1 000 emails’. According to the Board of Appeal, such a conclusion is ‘pure speculation’. Whilst highlighting that the poor quality of the reproductions that the applicant provided had not really enabled it to check the content of the list of Annex LM 10, the Board of Appeal stated that the last column of the list at issue contains email addresses. However, (i) there are only 40 such addresses in that column and (ii) it would appear impossible that 1 000 contacts could have been printed on only five pages. Moreover, the Board of Appeal found that some of the contacts included on the list in question might refer to legal or natural persons established outside the EU. In that regard, it was stated that the promotion of goods placed on a different market cannot qualify as proof of genuine use of the contested mark within the European Union.
88 The applicant relies, in that regard, on paragraph 15 of Mr M.’s first statement, according to which Annex LM 10 is a document showing the allocation of the Spring-Summer 2013 ‘Born in the USA’ catalogues and sample sets to customers, external sales agents and employees of the applicant in a number of countries, many of which are in the EU. According to the applicant, that document also provides details on the allocation of the number of sample sets and brochures by customers, external agents and sales personnel in the EU.
89 It must be stated that, as the applicant claims, Annex LM 10 is entitled ‘Salesmen’s samples allocation — SS 13 Underwear and Born in the USA’. As the applicant states, it is therefore a list of the persons to whom at the very least samples and brochures were supposed to have been sent. Thus, the Board of Appeal’s assumption that the list at issue consists of the names and addresses of the recipients of the invitations to the ‘Bread and Butter’ trade fair is unfounded. However, even if the Board of Appeal erred in that respect, the applicant does not put forward any argument capable of showing how taking account of the exact content of Annex LM 10 might have had an impact on the Board of Appeal’s assessment, particularly as Annex LM 10 consists of a mere list of names and addresses and does not appear to prove that brochures, catalogues and samples were sent, as claimed by the applicant in the present case.
Paragraph 43 of the contested decision
90 In paragraphs 42 to 47 of the application, the applicant disputes the conclusions set out in paragraph 43 of the contested decision in relation to Annexes LM 8, LM 18, LM 9 and LM 10.
91 According to the contested decision, Annexes LM 8 and LM 18 are product catalogues for the applicant’s Spring-Summer 2013 collection. Although the Fruit of the Loom mark and the name of the ‘Born in the USA’ range appear on both cover pages, according to the Board of Appeal, the contested mark does not appear on those pages. It states that the applicant did indeed submit, in Annex LM 9, invoices for printing one of the catalogues and delivery notes. However, while the invoices in question refer to those catalogues, the delivery notes lack any information about the consignment shipped or its weight. Consequently, they cannot establish that the catalogues in question were distributed at all, given that no distribution list was provided and that the Board of Appeal is unable to cross-check the addresses with the names on the list in Annex LM 10 (see paragraphs 87 to 89 above).
92 In that respect, it should first of all be observed that Annex LM 8, which is described by the applicant as a catalogue of the ‘Born in the USA’ range, contains, as EUIPO conceded at the hearing, two photographs of models dressed in T-shirts on which the contested mark is displayed. It is therefore relevant to examine, for the purposes of assessing the existence of genuine use of the contested mark, whether the Board of Appeal was right to conclude that it could not be established, from the evidence provided, that the catalogue in question was sent out in the manner claimed by the applicant (see, in that regard, paragraph 98 below).
93 As regards Annex LM 18, the applicant states, in paragraph 42 of the application, that it does not comprise product catalogues, but information on the applicant’s total retail sales in EU countries between 2008 and 2013 and on retail sales of activewear sales in that territory and for the same period and, also, examples of invoices to customers established in the EU.
94 According to EUIPO’s reply to a written question that the Court sent to it on 18 May 2018, without being contradicted in that respect by the applicant, the applicant had submitted a first set of evidence, namely Annexes LM 1 to LM 17, on 30 July 2013, before re-submitting Annex LM 8. It is to that re-submission which the Board of Appeal thus refers when, in the contested decision, reference is made to Annex LM 18. Thus, it must be stated that, in paragraph 42 of the application, by referring to Annex LM 18, the applicant is in fact referring to the annex which bears the reference ‘LM 18-2’ in the contested decision and which consists of information on the applicant’s total retail sales in EU countries between 2008 and 2013 as well as examples of invoices. The applicant’s argument put forward in paragraph 42 of the application must therefore be rejected.
95 As regards Annex LM 9, the applicant asserts that its first two pages are delivery notes showing dispatch of two separate consignments of 6 020 ‘Fruit of the Loom brochure[s] — [Spring-Summer 2013] Born in the USA’ on two dates in May 2012. The applicant further states that the remainder of that annex consists of tracking details showing deliveries on various dates in July in a number of cities in EU countries.
96 No evidence capable of calling in question the Board of Appeal’s findings is provided with those explanations. The first two pages of Annex LM 9 consist of delivery notes from a company called Ortek Colour Printers and permit the conclusion only that 6 020 ‘Fruit of the Loom brochure[s] — [Spring-Summer 2013] Born in the USA’ were delivered to the applicant alone. As regards the remainder of the pages of Annex LM 9, they do indeed consist of the delivery reports, but it is not possible from that document to identify the subject matter of the corresponding dispatches or their exact recipients, given that only the names of the cities of destination and the names of the person who signed to receive the deliveries in question appear in those delivery reports.
97 As regards, moreover, Annex LM 10, the applicant merely refers to its claims which were already examined in paragraphs 87 to 89 above.
98 To return, lastly, to Annex LM 8, which is discussed in paragraph 92 above, the applicant claims that that evidence should have been read in the light of the claims made in paragraph 13 of Mr M.’s first statement and in conjunction with Annex LM 4, since that evidence would have enabled the Board of Appeal to find that the catalogue of Annex LM 8 consisted of photographs of clothing bearing the contested mark (paragraphs 43 and 44 of the application).
99 However, as is apparent from paragraphs 89 and 96 above, the applicant has failed to establish that the catalogues at issue in the present case were in fact sent to independent sales agents for the purposes of promoting the ‘Born in the USA’ range. Consequently, even if Annex LM 8 consists of one or more photographs showing a model dressed in a T-shirt on which the contested mark appears, the applicant’s line of argument cannot suffice to call in question the Board of Appeal’s conclusions in that regard.
Paragraph 44 of the contested decision
100 In paragraph 49 of the application, the applicant disputes the findings made in paragraph 44 of the contested decision, according to which, among the items of clothing depicted in the evidence provided by the applicant, only two T-shirts visibly bear the contested mark and those T-shirts are shown on page 13 of Annex LM 10 and on page 15 of Annex LM 18. Even if those T-shirts were placed on the market in the EU, according to the Board of Appeal, ‘use of the contested mark on two T-shirts on one occasion cannot qualify as genuine use of a trade mark’, since ‘[a]ll the other items in this catalogue bear, if any, only the “FRUIT OF THE LOOM and device” trade mark’.
101 In the applicant’s submission, those findings are manifestly incorrect, in so far as Annex LM 10 does not contain a page 13 and as page 15 does not include photographs.
102 It is apparent from what was stated in in paragraph 94 above and from EUIPO’s reply to one of the written questions sent to it by the Court on 18 May 2018 that the references to Annexes LM 10 and LM 18 in paragraph 44 of the contested decision must be read as referring to Annex LM 8 and to the re-submission of that latter annex, respectively (see paragraph 94 above). According to EUIPO, the reference to Annex LM 10 instead of Annex LM 8 constitutes a mere clerical error.
103 In that regard, it must be stated that, apart from pointing out that clerical error, the applicant does not submit any argument capable of calling in question the findings made in paragraph 44 of the contested decision. The line of argument set out in paragraph 49 of the application must therefore be rejected.
Paragraph 45 of the contested decision
104 In paragraph 51 of the application, the applicant disputes paragraph 45 of the contested decision, which relates to LM 11. According to the Board of Appeal, the visit reports to two customers of which that annex consists are capable of showing only ‘that a sales representative of the [applicant] met a retailer’. At most, the indications concerning the reasons for the visits in question contain references to the ‘Born in the USA’ range, but do not bear any reference to the contested mark.
105 In that regard, the applicant complains that the Board of Appeal failed to explain its findings in detail, in so far as Annex LM 11 related to two visits made, respectively, to Florence (Italy), on 19 July 2012, and to Venice (Italy), on 30 July 2012. During the first visit, the applicant’s agent allegedly sold 400 items from the ‘Born in the USA’ range, as paragraph 15 of Mr M.’s first statement and Annex LM 21 show.
106 However, the fact that the Board of Appeal did not refer in detail to the places, dates and subject matter of the abovementioned visits is not sufficient to invalidate the contested decision. As regards, indeed, more specifically the order of 400 T-shirts made on 19 July 2012, it is sufficient to refer to paragraphs 54 and 55 above and to reject, therefore, the line of argument submitted by the applicant in paragraph 51 of the application.
Paragraphs 46 and 47 of the contested decision
107 In paragraph 53 of the application, the applicant disputes paragraph 46 of the contested decision, in which the Board of Appeal stated that it is not apparent from the case file how the documents in Annexes LM 12 to LM 15 are relevant in the present case, since those documents do not refer to the contested mark.
108 In the applicant’s submission, explanations in that regard were provided in paragraphs 19 to 23 of Mr M.’s first statement. Those documents are relevant in so far as they relate to uses of the element ‘fruit’ to refer to the applicant or to its products.
109 In that regard, it is true that Mr M.’s first statement includes explanations on the content of Annexes LM 12 to LM 15. In that statement, it is specified that, both internally and among its commercial customers, the applicant is often called ‘Fruit’ and that the word ‘fruit’ is often used by the applicant for promotional purposes. Reference is also made in that statement to the domain name ‘fruit.com’ which, it is claimed, belongs to the applicant and to the use that the applicant makes of the contested mark and of the word ‘fruit’ on social media. Mr M. concludes that, according to his experience, the applicant’s customers identify the contested mark as referring to the applicant and to its products.
110 However, that evidence cannot establish genuine use of the contested mark. It is sufficient, in that regard, to recall that, as the Cancellation Division already stated in its decision of 29 April 2014, adopted during the first pre-litigation procedure (see, to that effect, judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 7), none of the uses of the word element ‘fruit’ invoked by the applicant other than its use as a trade mark could be taken into account when assessing the genuineness of its use.
111 As was recalled in paragraph 25 above, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered. On the contrary, where use of a sign is not associated with any goods, it cannot be classified as genuine use (judgment of 21 June 2012, FRUIT, T‑514/10, not published, EU:T:2012:316, paragraph 58).
112 In the present case, the name that the applicant’s employees use to refer to the applicant or the fact that the applicant uses the word ‘fruit’ to refer to its goods do not constitute evidence capable of proving genuine use of the contested mark during the relevant period, since that evidence alludes to a solely internal use of the contested mark. Moreover, the use of the word element ‘fruit’ by the applicant’s customers as a domain name or on social media cannot be considered relevant in the present case, given that it has not been established that goods bearing the contested mark might have been advertised on that website or on social media. More specifically, none of the items of clothing which appear in the photographs set out in Annexes LM 12 to LM 15 on which the applicant relies in that regard seems to bear the contested mark.
113 The same findings apply to the applicant’s submissions regarding paragraph 47 of the contested decision which relates, more specifically, to the applicant’s use of the word ‘fruit’ on social media.
114 In the light of all the foregoing findings, it must be held that the applicant has not succeeded in establishing that the Board of Appeal made an error of assessment in reaching the conclusion that the evidence that the applicant had submitted did not contain any indications of use of the contested trade mark.
115 Accordingly, in so far as the applicant has not succeeded in properly challenging the ground on which the contested decision is primarily based, the first plea must be rejected, without there being any need to examine the Board of Appeal’s reasoning for the sake of completeness (see paragraphs 15 to 18 above).
The second plea, alleging infringement of Article 65(6) of Regulation No 207/2009
116 The applicant alleges, in support of the second plea, infringement of Article 65(6) of Regulation No 207/2009, according to which ‘[EUIPO] shall be required to take the necessary measures to comply with the judgment of the [Courts of the European Union]’. It recalls, furthermore, the case-law according to which, in order to comply with the judgment annulling the measure and to give it full effect, the institution that issued the measure annulled is required to have regard not only to the operative part of the judgment but also to the grounds which led to that ruling and which constitute its essential basis, in so far as they are necessary for the purposes of determining the exact meaning of what is stated in the operative part.
117 According to the applicant, the Board of Appeal disregarded the authority of res judicata attached to the judgment of 7 July 2016, FRUIT (T‑431/15, not published, EU:T:2016:395), and in particular the principles set out in paragraph 63 thereof. More specifically, the Board of Appeal should not have concluded that the stopping of the launch of the ‘Born in the USA’ range was on its own a sufficient reason to show that the use of the contested mark was not genuine (see paragraph 67 of the application). According to the applicant, it is quite clear that this was an ‘independent and self-standing reason’ to hold that the use was not genuine and did not depend on the other part of the Board of Appeal’s reasoning, which is ‘contrary to the operative part of the General Court’s judgment and the reasoning on which it is based’.
118 EUIPO contests the applicant’s arguments.
119 It should be noted, in that regard, that the case-law has already drawn attention to the importance, both in the European Union legal order and in the national legal orders, of the principle of res judicata. In order to ensure stability of the law and legal relations, as well as the sound administration of justice, it is important that judicial decisions which have become definitive after all rights of appeal have been exhausted, or after expiry of the time limits provided to exercise those rights, can no longer be called into question (see judgment of 19 April 2012, Artegodan v Commission, C‑221/10 P, EU:C:2012:216, paragraph 86 and the case-law cited; judgment of 8 February 2018, Sony Interactive Entertainment Europe v EUIPO — Marpefa (Vieta), T‑879/16, EU:T:2018:77, paragraph 30).
120 As regards the applicant’s line of argument, it should be noted at the outset that, according to paragraph 63 of the judgment of 7 July 2016, FRUIT (T‑431/15, not published, EU:T:2016:395), it cannot be found that a proprietor of a mark which has invested considerable material and human resources in preparatory work for the launch of goods protected by the mark, assessed in relation to the economic importance of its overall commercial activity and the nature and size of the relevant market, has made only token use of that mark, without the evidence it has submitted being examined and submitted to an overall assessment. The fact that, subsequent to that use, the proprietor of the contested mark took the commercial decision to postpone or stop the launch should not constitute the only determining factor in that assessment. On the contrary, it must be held that such a factor is not capable, in and of itself, of establishing purely token use, within the meaning of the case-law, since it does not necessarily deprive the commercial acts carried out before such a decision of their capacity to preserve or create a market share for the goods at issue.
121 According to paragraph 62 of the judgment of 7 July 2016, FRUIT (T‑431/15, not published, EU:T:2016:395), the genuineness of such use cannot be ruled out unless it was determined, following an overall assessment of the material in the file and the circumstances of the case, that the commercial acts invoked by the proprietor were not sufficient to establish such genuine use, on account of their extent and scale, which must be considered in the light of the criteria set out in the case-law.
122 As is apparent from paragraphs 15 to 18 above and from paragraphs 53 to 58 of the contested decision, the Board of Appeal took account of the stopping of the launch of the ‘Born in the USA’ product range only in the context of its reasoning set out for the sake of completeness.
123 In any event, it must be stated that, contrary to what the applicant claims, the Board of Appeal did not base its primary reasoning only on the stopping of the launch of the ‘Born in the USA’ range. On the contrary, it only took account of that decision by the applicant following an assessment of the evidence provided as a whole, without that commercial decision being the sole decisive factor for its assessment.
124 It is thus apparent from the contested decision that the Board of Appeal complied with the judgment of 7 July 2016, FRUIT (T‑431/15, not published, EU:T:2016:395), in so far as it essentially found, following its assessment of the evidence submitted by the applicant, that, even if some of the promotional commercial acts relied on by the applicant were established, they were not sufficient, on account of their number, their volume and the fact that they were concentrated over a very short period of time, namely during June and July 2012, to classify the use of the contested mark claimed by the applicant as genuine use. It was only at that ultimate stage of its reasoning that the Board of Appeal took account of the applicant’s commercial decision to interrupt the launch of the ‘Born in the USA’ range.
125 In addition, it is important to note that, as the applicant itself states in paragraph 67 of its application, the Board of Appeal found, in paragraph 58 of the contested decision, that there was no genuine use of the contested mark ‘also for that reason’, namely ‘also’ on account of the stopping of the launch of the ‘Born in the USA’ range. It cannot therefore be considered whatsoever that the Board of Appeal based its decision on that circumstance alone.
126 Consequently, it must be held that, by the contested decision, the Board of Appeal did not disregard the authority of res judicata attached to the judgment of 7 July 2016, FRUIT (T‑431/15, not published, EU:T:2016:395). It is thus necessary to reject also the second plea and, therefore, to dismiss the action in its entirety.
Costs
127 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Fruit of the Loom, Inc. to pay the costs.
Gratsias | Dittrich | Ulloa Rubio |
Delivered in open court in Luxembourg on 22 November 2018.