Provisional text
JUDGMENT OF THE GENERAL COURT (Third Chamber)
14 March 2017 (*)
(EU trade mark — Revocation proceedings — EU word mark popchrono — Absence of genuine use of a trade mark — Article 51(1)(a) of Regulation (EC) No 207/2009)
In Case T‑132/15,
IR, residing in Caen (France), represented by C. de Marguerye, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented initially by S. Palmero Cabezas, and subsequently by D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Pirelli Tyre SpA, established in Milan (Italy), represented byT. Malte Müllerand F. Togo, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 February 2015 (Case R 217/2014-5), relating to revocation proceedings between Pirelli Tyre and Mr IR,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 12 June 2015,
having regard to the response of EUIPO lodged at the Court Registry on 12 November 2015,
having regard to the response of the intervener lodged at the Court Registry on 13 November 2015,
having regard to the decision of 12 January 2016 refusing leave to lodge a reply,
having regard to the order of 20 May 2015 granting the applicant legal aid,
having regard to the application for permission to introduce a new plea in law and to adduce further evidence,
having regard to the application made by the applicant for confidential treatment of the further evidence offered in support of the new plea in law,
having regard to the reassignment of the case to the Eighth Chamber and to a new Judge-Rapporteur,
having regard to the change in the composition of the Chambers of the General Court and the reassignment of the case to the Third Chamber,
further to the hearing on 18 November 2016,
gives the following
Judgment
Background to the dispute
1 On 7 December 2004, the applicant, Mr IR, and Mr W. filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).
2 Registration as a mark was sought for the word sign popchrono.
3 The goods in respect of which registration was sought are in, inter alia, Class 12 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: ‘Vehicles; apparatus for locomotion by land, air or water’.
4 The trade mark application was published in Community Trade Marks Bulletin No 2005/028 of 11 July 2005, and the mark was registered on 9 February 2006 under number 004177267 (‘the contested trade mark’).
5 On 21 May 2012, the intervener, Pirelli Tyre SpA, filed an application for revocation of the contested trade mark in respect of all the goods referred to in paragraph 3 above, based on Article 51(1)(a) of Regulation No 207/2009.
6 By decision of 21 November 2013, the Cancellation Division granted the application for revocation and declared the rights of the applicant and Mr W., the proprietors of the contested trade mark, revoked as from 21 May 2012 in respect of all the goods referred to in the application for revocation.
7 On 15 January 2014, the applicant and Mr W. filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
8 By decision of 13 February 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal.
9 The Board of Appeal held that the application for revocation was admissible since the intervener had submitted a valid authorisation and had specified the goods in Class 12 covered by the application for revocation. On the substance, it found that the evidence provided by the proprietors of the contested trade mark did not prove genuine use of that mark.
Forms of order sought
10 The applicant claims that the Court should:
– uphold the form of order sought by him, annul the contested decision;
– ‘confirm the property rights of the [contested] trade mark’;
– order EUIPO to pay the costs.
11 EUIPO and the intervener contend that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
12 Since the applicant informed the Court that he waived his request for a hearing and EUIPO informed the Court that it would not be present at the hearing, the hearing took place without those parties being present, pursuant to Article 108(1) of the Rules of Procedure of the General Court.
Law
Admissibility
Admissibility of the action
13 EUIPO contends that the action is inadmissible on the ground that the application does not comply with the requirements of Article 76(d) of the Rules of Procedure. The application as a whole, or the majority of the applicant’s arguments, is unclear and did not enable EUIPO to prepare its defence, nor would it enable the Court to exercise its power of review.
14 Specifically, EUIPO submits that the arguments put forward in support of the fourth part of the first plea in law, the first part of the second plea in law, and the third and fourth pleas in law are inadmissible for want of clarity.
15 It must be recalled that, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and Article 44(1)(c) of the Rules of Procedure of the General Court of 2 May 1991, which applies to intellectual property matters by virtue of Article 130(1) and Article 132(1) of those rules, the application must contain a summary of the pleas in law on which it is based.
16 That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any other supporting information (judgments of 16 November 2011, Chabou v OHIM — Chalou (CHABOU), T‑323/10, not published, EU:T:2011:678, paragraph 15; of 24 June 2015, Infocit v OHIM — DIN (DINKOOL), T‑621/14, not published, EU:T:2015:427, paragraph 23; see, also, judgment of 17 December 2015, Bice International v OHIM — Bice (bice), T‑624/14, not published, EU:T:2015:998, paragraph 19 and the case-law cited).
17 In order to ensure legal certainty and the sound administration of justice, if an action is to be admissible, the essential facts and law on which it is based must be apparent from the text of the application itself, at the very least in summary form, provided that the statement is coherent and comprehensible. Similar requirements apply where a claim is put forward in support of a plea in law (judgment of 16 November 2011, CHABOU, T‑323/10, not published, EU:T:2011:678, paragraph 16; see, also, judgment of 24 June 2015, DINKOOL, T‑621/14, not published, EU:T:2015:427, paragraph 24 and the case-law cited) and, similarly, all claims must be accompanied by pleas and arguments enabling both the defendant and the Court to assess their validity (judgments of 10 May 2012, Amador López v OHIM (AUTOCOACHING), T‑325/11, not published, EU:T:2012:230, paragraph 47; of 7 November 2013, Budziewska v OHIM — Puma (Bounding feline), T‑666/11, not published, EU:T:2013:584, paragraph 34; and of 18 November 2014, Conrad Electronic v OHIM — British Sky Broadcasting Group and Sky IP International (EuroSky), T‑510/12, not published, EU:T:2014:966, paragraph 15).
18 In the present case, in the first place, it should be noted that the applicant puts forward four pleas in law in support of his claim that the contested decision should be annulled, alleging, respectively, infringement of the right to be heard; restrictive interpretation of the concept of ‘genuine use’; failure to examine certain evidence of genuine use of the contested trade mark; and that EUIPO failed to take account of ‘the [intervener’s] contempt of elementary rules of competition and ... will of obstruction ... against [the applicant]’.
19 In the second place, it is apparent from the application that the applicant has put forward arguments in support of those four pleas in law and, specifically, in support of the fourth part of the first plea in law, the first part of the second plea in law, and the third and fourth pleas in law.
20 Thus, under the fourth part of the first plea in law, alleging infringement of the right to be heard, the applicant claims that it was for the Board of Appeal to ascertain whether the Cancellation Division had examined his arguments relating to the scope of the application for revocation impartially. He submits, inter alia, first, that the Board of Appeal ruled ultra petita by failing to examine his arguments relating to the admissibility of the application for revocation and by taking into account facts which were not included in that application. Secondly, he submits that by failing to take into account his arguments relating to the illegality of the authorisation of the intervener’s representative and breach of the adversarial principle, the Board of Appeal ruled contra petita and, consequently, infringed the obligation to state reasons.
21 Under the first part of the second plea in law, alleging restrictive interpretation of the concept of ‘genuine use’, the applicant submits that he provided evidence of genuine use of the contested trade mark which the Board of Appeal failed to take into consideration. In this connection, it must be observed that it is clear from paragraphs 42, 43 and 55 of the application that the applicant complains that the Board of Appeal did not take into consideration the facts presented.
22 Under the third plea in law, alleging failure to examine certain evidence of genuine use of the contested trade mark, it is clear, inter alia, from paragraph 76 of the application, that the applicant submits that he proved that genuine use of the contested trade mark had been resumed in good time, despite the late disclosure of the evidence provided to that end.
23 Lastly, in support of the fourth plea in law, alleging that EUIPO failed to take account of ‘the [intervener’s] contempt of elementary rules of competition and ... will of obstruction ... against [the applicant]’, the applicant claims that the intervener refused to sign a confidentiality agreement, preventing him from providing certain evidence of use of the contested trade mark, and that EUIPO did not make any attempt at settlement.
24 Consequently, the essence of the applicant’s arguments can be identified from the application with sufficient clarity so that, as is apparent from their written pleadings, EUIPO and the intervener were able to put their case properly in their responses.
25 It follows from the foregoing that the applicant set out, in the application, the pleas in law and arguments relied on in support of his claim that the contested decision should be annulled and, therefore, EUIPO’s plea of inadmissibility must be rejected.
Admissibility of the applicant’s second head of claim
26 By his second head of claim, the applicant asks the Court to confirm his property rights over the contested trade mark.
27 It must be pointed out that, by that head of claim, the applicant is seeking to obtain a confirmatory ruling from the Court. However, it is clear from Article 65(2) and (3) of Regulation No 207/2009 that actions brought before the General Court seek to have the lawfulness of decisions of the Boards of Appeal examined and to obtain, as the case may be, the annulment or alteration of those decisions (order of 7 May 2014, Sharp v OHIM (BIG PAD), T‑567/13, not published, EU:T:2014:257, paragraph 11). Consequently, such actions cannot have the objective of obtaining confirmatory rulings in respect of those decisions.
28 It follows that the applicant’s second head of claim is inadmissible.
Admissibility of certain evidence
29 The intervener contends that Annexes A.58 and A.66 to A.68 to the application are inadmissible, on the ground that those documents were produced for the first time before the Court.
30 Those annexes correspond to a screenshot of a page from a website relating to the mark popchrono in the case of Annex A.58, and to three letters offering an undertaking a trade mark licence agreement in respect of the contested trade mark in the case of Annexes A.66 to A.68.
31 It must be recalled, in this connection, that the purpose of actions before the General Court is to have the lawfulness of decisions of the Boards of Appeal of EUIPO reviewed as provided for in Article 65 of Regulation No 207/2009. Consequently, it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, Annexes A.58 and A.66 to A.68 to the application must be excluded, without it being necessary to examine their probative value (see, to that effect, judgments 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; of 17 December 2014, Lidl Stiftung v OHIM (Deluxe), T‑344/14, not published, EU:T:2014:1097, paragraph 11; and of 30 November 2015, Hong Kong Group v OHIM — WE Brand (W E), T‑718/14, not published, EU:T:2015:916, paragraph 20).
Admissibility of the new plea in law and of the further evidence offered
32 By separate document lodged at the Court Registry on 3 February 2016, the applicant applied for permission to introduce a new plea in law and to adduce further evidence, in accordance with Articles 84 and 85 of the Rules of Procedure.
33 The applicant claims that the grounds on which the co-contractor to the licence agreement he had signed in respect of the contested trade mark was required to discontinue use of the contested trade mark are proper reasons for non-use of that mark under Article 51(1)(a) of Regulation No 207/2009. He submits that, since the co-contractor authorised the applicant to disclose those grounds subject to their being treated as confidential, this is a matter of fact and law which has come to light in the course of the procedure before the Court. On that basis, the applicant has produced a statement from the co-contractor setting out the grounds on which use of the contested trade mark was discontinued.
34 Under Article 76(d) in conjunction with Article 84(1) of the Rules of Procedure, the application initiating proceedings must contain the subject matter of the proceedings and a summary of the pleas in law relied on, and no new pleas in law may be introduced in the course of the proceedings unless they are based on matters of law or of fact which come to light in the course of the procedure.
35 Furthermore, Article 85(1) of the Rules of Procedure provides that evidence produced or offered is to be submitted in the first exchange of pleadings, however, under Article 85(3) of the rules, the main parties may, exceptionally, produce or offer further evidence before the oral part of the procedure is closed or before the decision of the General Court to rule without an oral part of the procedure, provided that they justify the delay in producing or offering that evidence.
36 In the present case, it must be stated, first, that since the plea in law regarding the existence of proper reasons for non-use of the contested trade mark was not expressly or implicitly relied on in the application, as the applicant himself concedes, and since it is not closely connected to the pleas in law put forward in the application, it constitutes a new plea in law.
37 Secondly, the fact that, in the course of the procedure before the Court, the applicant’s co-contractor agreed to authorise the applicant to disclose the grounds on which use of the contested trade mark was discontinued does not necessarily mean that those grounds constitute a matter of fact that came to light in the course of the procedure. The applicant has not proved, nor has he even claimed, that he was not previously aware of those grounds and it is immaterial that because of the applicant’s contractual relations that plea in law could not be put forward earlier. Consequently, the applicant has not shown that the new plea in law was based on matters of law and of fact that came to light in the course of the procedure before the Court.
38 As regards the offer of further evidence, it is provided in support of the new plea in law exclusively and the applicant has not put forward any other circumstance to justify the delay in submitting it to the Court.
39 In any event, as EUIPO correctly contends, the new plea in law and the offer of further evidence provided in support thereof constitute a change to the subject matter of the proceedings within the meaning of Article 188 of the Rules of Procedure, which is not permitted before the General Court.
40 In this connection, it should be recalled that, under Article 188 of the Rules of Procedure, the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings before the Board of Appeal (judgments of 24 September 2015, Rintisch v OHIM — Compagnie laitière européenne (PROTICURD), T‑382/14, not published, EU:T:2015:686, paragraph 18, and of 30 September 2015, Gat Microencapsulation v OHIM — BASF (KARIS), T‑720/13, not published, EU:T:2015:735, paragraph 89). In so far as it is for the Court to review the lawfulness of decisions taken by the Boards of Appeal, that review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (judgments of 30 September 2015, KARIS, T‑720/13, not published, EU:T:2015:735, paragraph 89, and of 22 October 2015, Enosi Mastichoparagogon v OHIM — Gaba International (ELMA), T‑309/13, not published, EU:T:2015:792, paragraph 15). Moreover, in accordance with the case-law recalled in paragraph 31 above, it is not the Court’s function to review the facts in the light of material produced for the first time before it. Likewise, an applicant does not have the power to alter before the Court the terms of the dispute as delimited in the claims and allegations put forward before EUIPO (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 43 and the case-law cited; judgments of 28 June 2012, I Marchi Italiani and Basile v OHIM — Osra (B. Antonio Basile 1952), T‑133/09, EU:T:2012:327, paragraph 16, and of 6 June 2013, Kastenholz v OHIM — Qwatchme (Watch dials), T‑68/11, EU:T:2013:298, paragraph 25).
41 In the present case, it must be stated that, by the new plea in law and the offer of further evidence provided in support thereof, the applicant is altering the context of the dispute as it was brought before the Board of Appeal and is inviting the Court to review the factual and legal circumstances in the light of material and evidence produced for the first time before it.
42 Thus, it is clear from the case file relating to the proceedings before EUIPO submitted to the Court that since the applicant confined himself to claiming that the contested trade mark had been put to genuine use and to adducing evidence to that effect, and did not plead the existence of proper reasons for non-use of the contested trade mark, nor provide evidence in this connection, the Cancellation Division and the Board of Appeal did not rule on such a claim.
43 It follows that the new plea in law and the offer of further evidence provided in support thereof are inadmissible, and there is no need to rule on the application for confidential treatment submitted by the applicant.
Substance
44 In support of his action, the applicant puts forward four pleas in law, alleging, respectively, infringement of the right to be heard; restrictive interpretation of the concept of ‘genuine use’; failure to examine certain evidence of genuine use of the contested trade mark; and that EUIPO failed to take account of ‘the [intervener’s] contempt of elementary rules of competition and ... will of obstruction ... against [the applicant]’.
The first plea in law, alleging infringement of the right to be heard
45 The first plea in law, alleging infringement of the right to be heard, comprises four parts. The Court considers it appropriate to examine the second and third parts together.
– First part of the first plea in law
46 The applicant claims that the application form for revocation of the contested trade mark is inadmissible under Rule 39(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), because, under the heading ‘Extent of the application’, the intervener ticked the box indicating that the application was directed ‘against part of the goods and services in the challenged registration’, but listed all of the goods in Class 12 in respect of which the contested trade mark had been registered. He claims that that contradiction meant that it was impossible to know the extent of the products covered by the application for revocation, as provided for in Rule 37(a)(iii) of Regulation No 2868/95.
47 EUIPO and the intervener dispute the applicant’s arguments.
48 In this connection, it should be recalled that, under Rule 37(a)(iii) of Regulation No 2868/95, an application for revocation is to contain a statement of the registered goods and services in respect of which revocation is sought.
49 In the present case, it is clear from the case file relating to the proceedings before EUIPO submitted to the Court that the intervener ticked the box on the application for revocation form indicating that the application was directed against part of the goods and services in respect of which the contested trade mark had been registered, namely, ‘Vehicles; apparatus for locomotion by land, air or water’ in Class 12.
50 Consequently, as EUIPO correctly states, since the contested trade mark was registered in respect of goods in different classes, by applying for revocation as regards all the goods in Class 12, the intervener applied for revocation as regards only part of the goods in respect of which the contested trade mark had been registered.
51 It follows that the application for revocation was not contradictory, that the applicant was in a position to ascertain its scope and that, therefore, the Board of Appeal did not err in finding, in paragraph 14 of the contested decision, that the intervener had specified the goods in Class 12 covered by the application for revocation and that the application in question was admissible.
52 It follows that the first part of the first plea in law must be rejected.
– The second and third parts of the first plea in law
53 The applicant submits that the authorisation of the intervener’s representative before EUIPO is unlawful on account of irregularities relating to the failure to indicate its place of signature, the fact that the date is set out after the intervener’s signature and pre-dates that of the application for revocation by more than two months, and the fact that the date of registration by EUIPO is not indicated on it. As a result of that illegality, he submits that the application for revocation is null and void and the Board of Appeal ought to have annulled the decision of the Cancellation Division on that ground.
54 Moreover, the Board of Appeal failed to rule on the plea in law alleging breach of the principle of adversarial debate put forward by the applicant.
55 EUIPO and the intervener dispute the applicant’s arguments.
56 In the first place, as regards the authorisation of the intervener’s representative before EUIPO, it must be pointed out that the applicant has not indicated which legal rules the Board of Appeal infringed in holding that the authorisation was not vitiated by the alleged irregularities relied on by the applicant.
57 Furthermore, it should be recalled that, under Article 92(1) and (2) of Regulation No 207/2009, natural and legal persons having a domicile, principal place of business or a real and effective commercial establishment in the European Union are not required to be represented before EUIPO. Moreover, under Rule 76(1) of Regulation No 2868/95, a signed authorisation must be filed with EUIPO if the other party to the proceedings expressly asks for this. However, Rule 76(4) of that regulation provides that if the authorisation is not filed within the time limit set by EUIPO, proceedings are to be continued with the represented person.
58 In the present case, it is not in dispute that, since the intervener has its principal place of business in a Member State of the European Union, it was not necessary for it to be represented during the proceedings before EUIPO. Therefore, even if it had submitted the representation authorisation to EUIPO after the time limit set, or had submitted a non-compliant authorisation, the proceedings would have continued directly with the represented person, the admissibility of the application for revocation being in no way affected.
59 In the second place, as regards the complaint relating to breach of the adversarial principle, it should be pointed out that, in paragraphs 12 to 27 of the application, the applicant sets out the chronology of the procedure before the Cancellation Division as regards, in particular, the production by the intervener of a representation authorisation, without pleading any error on the part of the Board of Appeal in that regard. The applicant claims, in paragraphs 21 and 22 of the application, that he ought to have had the benefit of adversarial debate on that issue, and that the Board of Appeal ignored the complaint that the Cancellation Division closed the adversarial debate prematurely, whereas it ought to have ruled on the plea in law regarding failure to observe the principle of adversarial debate. Consequently, the applicant is complaining only that the Board of Appeal did not rule on the complaint relating to breach of the adversarial principle. In this connection, suffice it to state that it is not clear from either the grounds of appeal before the Board of Appeal or from the response to the arguments of the intervener before the Board of Appeal that the applicant relied on breach of the adversarial principle on the part of the Cancellation Division because of the closing of the procedure before the intervener sent the representation authorisation. Therefore, the applicant cannot claim before the Court that the Board of Appeal erred by failing to rule on that complaint.
60 It follows that the second and third parts of the first plea in law must be rejected.
– The fourth part of the first plea in law
61 The applicant submits, first, that the Board of Appeal ruled ultra petita by failing to examine his arguments relating to the admissibility of the application for revocation and by taking into account facts which were not included in that application, and, secondly, that it ruled contra petita and failed to comply with its obligation to state reasons by failing to take into consideration his arguments relating to the illegality of the authorisation of the intervener’s representative and breach of the adversarial principle.
62 EUIPO and the intervener dispute the applicant’s arguments.
63 First, it should be recalled that the Board of Appeal is not required to respond expressly and exhaustively to all the arguments put forward by the applicant (see, to that effect, judgments of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 112, and of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 88), provided that it sets out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 24 November 2015, Intervog v OHIM (meet me), T‑190/15, not published, EU:T:2015:874, paragraph 48 and the case-law cited).
64 It must be stated that it is clear from paragraphs 13 and 14 of the contested decision that the Board of Appeal responded to the arguments relating to the legality of the authorisation of the intervener’s representative and the admissibility of the application for revocation, and set out the main grounds on which the authorisation and the application for revocation were admissible in the present case.
65 Secondly, since the Board of Appeal was fully entitled to hold that the application for revocation was admissible in that it covered the goods in Class 12 in respect of which the contested trade mark was registered, it was fully entitled to assess genuine use of the contested trade mark in connection with those goods.
66 Thirdly, the applicant cannot complain that the Board of Appeal failed to rule on the complaint regarding breach of the adversarial principle and failed to state the reasons for the contested decision in that regard, since it is clear from paragraph 59 above that the applicant did not rely on that complaint before the Board of Appeal.
67 It follows that the fourth part of the first plea in law must be rejected and, therefore, the first plea in law must be dismissed in its entirety.
Second plea in law, alleging restrictive interpretation of the concept of ‘genuine use’
68 The second plea in law, regarding restrictive interpretation of the concept of ‘genuine use’, comprises three parts based, first, on an ‘[objection] to the interpretation of the rules of evidence in accordance with Article 51 ... and subsequent articles [of Regulation No 207/2009]’; second, on the fact that the Board of Appeal relied solely on the interpretation developed in the case-law regarding undertakings as opposed to ‘natural persons’; and, third, on the fact that the judgment of 11 March 2003, Ansul (C‑40/01, EU:C:2003:145) and the order of 27 January 2004, La Mer Technology (C‑259/02, EU:C:2004:50) can be used for discussion to guide the Court.
69 The Court considers it appropriate to examine the three parts of the second plea in law together.
70 The applicant claims, first of all, that, in the light of the rules in Regulation No 207/2009 relating to revocation and the evidence of use of the contested trade mark that he provided before EUIPO, the Board of Appeal ought to have taken into account the facts he relied on.
71 Next, he submits that the Board of Appeal ought to have ruled on genuine use of the contested trade mark taking into account the evidence he provided, and taking into consideration the fact that the evidence was from a natural person as referred to in Article 56 of Regulation No 207/2009, inasmuch as, according to settled case-law, evidence of use presented by natural persons may not be assessed in the same way as that from legal persons.
72 Lastly, he submits that the judgment of 11 March 2003, Ansul (C‑40/01, EU:C:2003:145), and the order of 27 January 2004, La Mer Technology (C‑259/02, EU:C:2004:50), can be used for discussion to guide the Court, since they make it clear that the evidence of genuine use of the contested trade mark provided by the applicant may be considered to be imminent acts designed to create market shares.
73 EUIPO and the intervener dispute the applicant’s arguments.
74 Under Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
75 According to the case-law, 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 (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39).
76 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
77 As regards the extent 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 (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
78 Moreover, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 23 September 2009, Cohausz v OHIM — Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 36 and the case-law cited).
79 It is in the light of those considerations that the present plea in law must be examined.
80 A preliminary point to note in order to reject the applicant’s argument that the Board of Appeal erred in assessing the evidence of genuine use of the contested trade mark provided in the light of the case-law relating to legal persons is that, although Article 56 of Regulation No 207/2009 draws a distinction between natural persons and legal persons, that provision, which concerns the submission of applications for revocation or for a declaration of invalidity, draws such a distinction only with the aim of defining the persons entitled to submit such applications. Moreover, it should be added that, first, neither Article 15 of Regulation No 207/2009, nor any provision in Title VI of that regulation, provide that the assessment of an application for revocation, and in particular the evidence of genuine use of the contested mark, depends on whether the proprietor of the contested mark is a natural person or a legal person, and, secondly, the applicant merely invokes settled case-law purportedly establishing such a distinction, without citing a decision of the Court of Justice or of the General Court to substantiate that line of argument.
81 In the present case, the relevant items of evidence are listed in paragraphs 5, 6 and 25 of the contested decision. They consist of the following documents:
– a letter, dated 14 November 2011, from the undertaking I. to the director of company, proposing to negotiate the rights to the contested trade mark and an English translation of that letter;
– a letter, dated 5 December 2011, from the abovementioned company director to the undertaking I., referring to a meeting between the two parties that took place on 2 December 2011 for the purpose of negotiating the rights to the contested trade mark and an English translation of that letter;
– copies of faxes, dated 21 February 2012, sent by the undertaking I. to the directors of several companies, and proposing to negotiate the rights to the contested trade mark;
– a fax in English, dated 21 February 2012, from the undertaking I. to the chairman of the company P. & C., proposing to negotiate the rights to the contested trade mark;
– a fax in English, dated 21 February 2012, from the undertaking I. to the chief executive officer and general manager, the general and general institutional affairs counsel, and the director of media communications of the company P., and proposing to negotiate the rights to the contested trade mark;
– a fax, dated 29 February 2012, from the company P. & C., stating that it is not interested in the applicant’s offer;
– a letter in English, dated 17 May 2012, from the undertaking I. to the company P. & C., informing it that another company is ‘positioned’ to obtain the exclusive exploitation licence but that the intervener can still enter into negotiations;
– a letter from the chief executive officer of the company that had agreed to exploit the contested trade mark under a licence agreement confirming and certifying the licence agreement, the English translation of that document, the licence agreement in question of 9 January 2012, and the English translation of that document;
– an email from the undertaking I., dated 3 October 2012, and emails from the intervener dated 25 September 2012 and 5 October 2012, in which the latter refuses to negotiate or sign any confidentiality agreement to see the licence agreement in respect of the contested trade mark.
82 In the first place, the applicant cannot complain that the Board of Appeal did not take into account the evidence of genuine use of the contested trade mark that he presented, since it is clear from paragraphs 5, 6 and 25 to 30 of the contested decision that it found that the contested trade mark had not been put to genuine use after having examined and assessed that evidence.
83 In the second place, as regards the evidence of genuine use of the contested trade mark relating to proposals to enter into negotiations on a trade mark licence agreement for goods in Class 12, that evidence shows merely an intention to propose such agreements but does not demonstrate the placing on the market of goods covered by the contested trade mark. However, even if it is the intention of the proprietor of the contested mark to make real use of his trade mark, if it is not objectively present on the market in a manner that is effective, consistent over time and stable in terms of the configuration of the sign, so that it cannot be perceived by consumers as an indication of the origin of the goods or services in question, there is no genuine use of the trade mark (see judgment of 23 February 2006, Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 32 and the case-law cited).
84 In the third place, whilst it is true that, under Article 15(2) of Regulation No 207/2009, use of a trade mark by an authorised third party, such as the holder of a licence agreement, is not excluded, it is nevertheless necessary to adduce evidence of genuine use of the mark by that third party. In the present case, since the evidence relating to the licence agreement in respect of the contested trade mark concerns the existence of such an agreement and not the effective placing on the market of goods, it does not show that the contested trade mark was put to genuine use on the market.
85 It must therefore be stated, as did the Board of Appeal, that none of the items of evidence presented by the applicant indicate that goods covered by the contested trade mark were marketed on the market. Moreover, as the Board of Appeal correctly stated in paragraph 29 of the contested decision, it is not possible from the evidence presented by the applicant to assess the commercial volume of all the acts of use, the frequency of those acts of use or the period within which the acts of use were carried out.
86 The Board of Appeal was therefore fully entitled to find that the applicant had not proved, to the requisite legal standard, genuine use of the contested trade mark.
87 That conclusion is not called into question by the case-law relied on by the applicant.
88 It is true that it is clear from that case-law that genuine use of the contested trade mark may relate to goods and services which are about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37, and order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 19).
89 However, it should be pointed out, as EUIPO has done, that, even if the items of evidence in question are not limited to use internal to an undertaking, they do not constitute an advertising campaign. Indeed, they are not intended to promote goods covered by the contested trade mark under that mark, in accordance with the essential function of the trade mark, but on the contrary, are aimed at promoting the mark itself.
90 Furthermore, it follows from the case-law relied on by the applicant that it is necessary to show that goods are about to be marketed. However, the applicant has not adduced any evidence to that effect, the items of evidence provided show merely that the applicant proposed licence agreements and concluded such an agreement.
91 It follows that the second plea in law must be rejected.
Third plea in law, alleging failure to examine certain evidence of genuine use of the contested trade mark
92 The applicant claims that, since 2011, he has taken a series of actions, such as the offers of licences and the conclusion of a licence agreement in respect of the contested trade mark, for the purpose of creating new outlets on the market for goods in Class 12, proving that use of the contested trade mark was resumed three months before the filing of the application for revocation, after a period of non-use of more than five years. He submits that the Board of Appeal ought to have examined, in the light of the evidence produced in this connection, whether genuine use of the contested trade mark had been resumed.
93 EUIPO and the intervener dispute the applicant’s arguments.
94 It is clear from both Article 51(1)(a) of Regulation No 207/2009 and Article 15(1) thereof, read in conjunction with recital 10 of that regulation, that only trade marks genuine use of which has been suspended for an uninterrupted period of five years are subject to the sanctions provided for by the regulation. However, in accordance with the first of those abovementioned provisions, ‘no person may claim that the proprietor’s rights in an EU trade mark should be revoked where, during the interval between expiry of the [period in question] and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed’.
95 In this connection, suffice it to state, first, that it is clear from paragraph 27 of the contested decision that the Board of Appeal took into account the licence agreement in question for the purposes of assessing genuine use of the contested trade mark. Secondly, the concept of genuine use being started or resumed presupposes also, as is clear from the provisions cited in paragraph 94 above, proof of genuine use of the contested trade mark. However, since, in the present case, the Board of Appeal was fully entitled to find that the contested trade mark had not been put to genuine use, that assessment was equally valid as regards genuine use of the contested trade mark being resumed or started.
96 It follows that the third plea in law must be rejected.
Fourth plea in law, alleging that EUIPO failed to take account of ‘the [intervener’s] contempt of elementary rules of competition and ... will of obstruction ... against [the applicant]’
97 In the first place, the applicant submits that the adversarial debate as regards the resumption of genuine use of the contested trade mark through the conclusion of the licence agreement was distorted. He submits that the resumption of use ought to have been examined, under the condition of confidentiality, during the debates before EUIPO, but that because of the intervener’s refusal of confidentiality, that debate did not take place.
98 EUIPO and the intervener dispute the applicant’s arguments.
99 First, it must be stated that EUIPO cannot be held responsible for the intervener’s conduct, nor can the intervener’s conduct constitute an error of law liable to lead to annulment of the contested decision.
100 Secondly, in so far as the applicant complains that the Board of Appeal failed to take account of the licence agreement in respect of the contested trade mark, suffice it to state that it is clear from paragraph 27 of the contested decision that the Board of Appeal did take that agreement into consideration as regards evidence of genuine use of the contested trade mark. Therefore, the applicant cannot claim that the debate was distorted because that document was not taken into account. Furthermore, it is immaterial that that evidence was placed on the file only at a late stage, since it was taken into account by both the Cancellation Division and by the Board of Appeal.
101 In the second place, the applicant submits that, by applying for revocation without having opposed registration of the contested trade mark, the intervener used that application as an ‘anti-competitive weapon’. In addition, he states that EUIPO did not react when the intervener opposed a fair debate by its refusal of confidentiality. Therefore, by refraining from any attempt at settlement, EUIPO prevented a private non-professional person, such as the applicant, from having access to a fair and undistorted trial.
102 EUIPO and the intervener dispute the applicant’s arguments.
103 In this connection, suffice it to state, as EUIPO has done, that the admissibility of an application for revocation is assessed irrespective of the motives of the applicant for revocation, and it is not conditional, under Article 56 of Regulation No 207/2009 or any other provision of that, on the applicant for revocation having opposed registration of the contested mark beforehand.
104 Furthermore, as regards the intervener’s refusal of confidentiality, first, it must be stated that EUIPO granted the applicant’s request that the items of evidence of genuine use of the contested trade mark be treated as confidential documents and that they be sent to the intervener through its representative exclusively. Secondly, it is clear from the case file relating to the proceedings before EUIPO submitted to the Court that the applicant contacted the intervener’s representatives directly in the course of the proceedings before EUIPO in order to request the signature of a confidentiality agreement without the intervention of EUIPO’s departments or adjudicating bodies. Thirdly, EUIPO cannot be held responsible for the intervener’s actions or the clauses in the licence agreement signed by the applicant which prevented him from disclosing the licence agreement in respect of the contested trade mark.
105 Lastly, it should be recalled that, under Article 57(4) of Regulation No 207/2009, during the revocation proceedings, EUIPO may, ‘if it thinks fit’, invite the parties to make a friendly settlement. It follows that the regulation merely provides for the possibility of EUIPO inviting the parties to settle, without imposing any obligation to that effect, whether the parties to the proceedings before EUIPO are natural persons or legal persons. Moreover, at no point in time during the proceedings before EUIPO did the applicant seek such a settlement.
106 It follows from all the foregoing that the applicant cannot complain that the Board of Appeal did not invite the parties to settle and, as a consequence, that it prevented him from having access to a fair and undistorted trial.
107 It follows that the fourth plea in law must be rejected and, therefore, the action must be dismissed in its entirety.
Costs
108 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he 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 Mr IR to pay the costs.
Frimodt Nielsen | Kreuschitz | Półtorak |
Delivered in open court in Luxembourg on 14 March 2017.