JUDGMENT OF THE GENERAL COURT (Second Chamber)
7 February 2024 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark O – Earlier international registration in respect of the figurative mark O – Relative grounds for refusal – No genuine use of the earlier mark – Article 42(2) of Regulation (EC) No 207/2009 (now Article 47(2) of Regulation (EU) 2017/1001))
In Case T‑74/23,
Oriflame Cosmetics AG, established in Schaffhausen (Switzerland), represented by N. Gerling and U. Pfleghar, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Caramé Holding AG, established in Sulzbach (Germany), represented by M. Ebner and R. Lange, lawyers,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, V. Tomljenović and L. Spangsberg Grønfeldt (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Oriflame Cosmetics AG, seeks the annulment and the alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 December 2022 (Case R 938/2022-2) (‘the contested decision’).
Background to the dispute
2 On 1 March 2016, the intervener, Caramé Holding AG, designated the European Union in its international registration of the following figurative sign:
3 The application was published on 25 July 2016.
4 The mark applied for covers goods in Class 3 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, corresponding to the following description: ‘Preparations for the cleaning, care and beautification of the skin, nails, lips, eyes and hair; perfumery; cosmetics; decorative cosmetic products; nail care products; hair care products; hair styling products’.
5 On 25 November 2016, the applicant filed a notice of opposition to the international registration at issue in respect of the goods referred to in paragraph 4 above.
6 The opposition was based on the earlier international registration No 822 851, which had been filed and registered on 19 February 2004, in respect of the figurative sign reproduced below:
7 The earlier international registration (‘the earlier mark’) designates Bulgaria, Latvia, Lithuania, Poland, the Czech Republic and Slovenia and covers goods in Class 3 corresponding to the following description: ‘Soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’.
8 The grounds relied on in support of the opposition were, inter alia, those set out in Article 8(1)(b) and Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), as amended (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)).
9 On 18 May 2020, in its observations in support of the opposition, the applicant stated that it had been commercially exploiting the earlier mark (‘the O Logo’) since 2003 by using it both in its principal trade mark (‘its main brand’) and as a stand-alone trade mark (‘a standalone brand’) on its goods and marketing materials and in order to designate its undertaking. On that occasion, the applicant referred to and documented its guidelines relating to the earlier mark, its online presence and its choice to market and promote its goods by direct selling by means of independent sales consultants promoting the goods on social media, distributing catalogues and organising events during which samples were offered and orders were taken.
10 Following a request made by the intervener, EUIPO invited the applicant to furnish proof of genuine use of the earlier mark which had been relied on in support of the opposition. The applicant complied with that request within the time limit set by illustrating and elaborating upon, on 21 April 2021, the evidence which had been placed on the file in support of the observations on the opposition.
11 On 4 April 2022, the Opposition Division rejected the opposition.
12 On 26 May 2022, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision and, on 4 August 2022, it submitted the grounds in support of that appeal, stating that it was usual for many undertakings to vary their trade mark by using two forms in order to identify their goods, namely, first, a complete form and, secondly, an abbreviated form represented by a stylised letter which was also used in the complete form. By way of examples of such variations, the applicant cited, inter alia, the complete forms Nespresso, Fila, Carlsberg and Disney and the abbreviated forms represented by the stylised letters ‘n’, ‘f’, ‘c’ and ‘d’, which were also used as the first letters in the corresponding complete forms.
13 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the applicant had not proved genuine use of the earlier mark, either on its own or in combination with other elements, such as the word elements ‘oriflame’ or ‘one’, with the result that the opposition had to be rejected.
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision;
– annul the Opposition Division’s decision of 4 April 2022;
– ‘reject the EU designation of [the] international trade mark registration [applied for]’;
– order EUIPO and the intervener to pay the costs.
15 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
16 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
17 Given the date on which the application for registration at issue was filed, namely 1 March 2016, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, as amended (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
18 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to Article 8(1)(b), Article 8(5) and point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b), Article 8(5) and point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, the wording of which is, in essence, identical (see, to that effect, judgment of 8 March 2023, Sympatex Technologies v EUIPO – Liwe Española (Sympathy Inside), T‑372/21, not published, EU:T:2023:111, paragraph 14).
19 Likewise, the references made by the applicant to the second sentence of Article 47(2) of Regulation 2017/1001, read in conjunction with Article 47(3) of that regulation, must be understood as referring to the second sentence of Article 42(2) of Regulation No 207/2009, read in conjunction with Article 42(3) of that regulation, the wording of which is identical. The aforementioned substantive provisions, which were applicable as at the date on which the application for registration at issue was filed, define a substantive rule since they provide that the opposition is to be rejected ‘in the absence of proof’ of genuine use of the earlier mark in the European Union in connection with the goods in respect of which it is registered and which the opponent cites as justification for his or her opposition.
20 Furthermore, it must be stated, as observed by the applicant, that, in the light of the fact that the request for proof of use of the earlier mark was filed on 30 November 2020, Article 10(2) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), applies in the present case, in accordance with Article 82(2)(d) of that regulation (judgment of 10 November 2021, AC Milan v EUIPO – InterES (ACM 1899 AC MILAN), T‑353/20, not published, EU:T:2021:773, paragraph 17).
21 In addition, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001 and of Delegated Regulation 2018/625.
The applicant’s first head of claim
22 In support of its first head of claim, seeking the annulment of the contested decision, the applicant relies on a single plea in law alleging infringement of Article 42(2) and (3) of Regulation No 207/2009, read in conjunction with point (a) of the second subparagraph of Article 15(1) of that regulation and Article 10(2) of Delegated Regulation 2018/625. In essence, the applicant submits that the Board of Appeal incorrectly assessed the evidence which had been placed on the file. According to the applicant, that evidence served to prove genuine use of the earlier mark, whether that use had been in the registered form on its own or in combination with other elements. It also dwells on the need for the Board of Appeal to assess the role and weight that are capable of being given to the evidence relating to the use of that mark on social media which was placed on the file.
23 EUIPO and the intervener dispute the applicant’s claims, referring essentially to the reasoning set out in the contested decision. In particular, EUIPO contends that the Board of Appeal quoted and endorsed the Opposition Division’s findings regarding the lack of proof of genuine use of the earlier mark on a stand-alone basis and that it also responded to the arguments which the applicant had put forward in its appeal. The intervener also claims that the applicant has not provided any evidence that is capable of proving that the earlier mark was perceived independently by the public.
24 Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001) provides that, if the applicant has so requested, the proprietor of an earlier EU trade mark who has given notice of opposition is required to furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application (now the date of filing or the date of priority in Article 47 of Regulation 2017/1001), the earlier trade mark has been put to genuine use in the territory in which it is protected in connection with the goods or services in respect of which it is registered and which he or she cites as justification for his or her opposition, or that there are proper reasons for non-use.
25 The second sentence of Article 42(2) of Regulation No 207/2009 and the second sentence of Article 10(2) of Delegated Regulation 2018/625 provide that, in the absence of proof of genuine use of the earlier mark, the opposition is to be rejected.
26 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 judgment of 31 January 2019, Pandalis v EUIPO, C‑194/17 P, EU:C:2019:80, paragraph 83 and the case-law cited). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in 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; see also, to that effect and by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
27 When assessing whether use of a trade mark 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 that mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of that mark (see judgment of 22 June 2022, Beveland v EUIPO – Super B (BUCANERO), T‑29/21, not published, EU:T:2022:388, paragraph 20 and the case-law cited).
28 Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of that trade mark on the market concerned. It is therefore necessary to carry out an overall assessment which takes into account all the relevant factors in the particular case and entails a degree of interdependence between the factors taken into account (see judgment of 22 June 2022, BUCANERO, T‑29/21, not published, EU:T:2022:388, paragraph 21 and the case-law cited).
29 In the assessment of the evidence of genuine use of a mark, each piece of evidence is not to be analysed separately, but together, in order to determine the most likely and coherent meaning. Consequently, although the probative value of an item of evidence is limited to the extent that, individually, it does not show with certainty whether, and how, the goods concerned were placed on the market, and although that item of evidence is not therefore on its own decisive, it may nevertheless be taken into account in the overall assessment as to whether the use of the mark concerned is genuine. That is the case, for example, when that item of evidence is accompanied by other evidence (see, to that effect, judgment of 22 June 2022, BUCANERO, T‑29/21, not published, EU:T:2022:388, paragraph 22 and the case-law cited).
30 Furthermore, it must be pointed out that, under point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 in conjunction with Article 42(2) and (3) of that regulation (now, respectively, point (a) of the second subparagraph of Article 18(1) and Article 47(2) and (3) of Regulation 2017/1001), proof of genuine use of an earlier national or EU trade mark which forms the basis of an opposition against an EU trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered (see judgment of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited).
31 In the first place, it is necessary, in the present case, for the Court to point out that, during the proceedings before EUIPO, the applicant placed evidence on the file in order to define the facts and circumstances relevant to establishing whether the commercial use of the earlier mark during the relevant period was real, in order to prove there had been genuine use of that mark in the territory in which it was protected as regards the goods in respect of which it was registered and on which the opposition was based.
32 It must be stated that the evidence placed on the file showed use of the earlier mark not only in combination with other elements, but also as such, on the goods and marketing materials or in order to designate the undertaking.
33 Thus, in the column headed ‘Use [of the earlier mark]’ in the observations in support of the opposition, the applicant presented goods to which the earlier mark was affixed independently, as such, or as an element of a composite mark including the word element ‘one’, of which that mark represented the first letter. One of the examples provided in that regard was a lipstick on which the earlier mark appeared as such, the only one visible on the top of the cap of that cosmetic product.
34 Likewise, the annexes which the applicant submitted to EUIPO in order to supplement its observations in support of the opposition made it possible to identify:
– screenshots of Bulgarian, Latvian, Lithuanian and Slovenian websites dated 2013, 2014 and 2015 (Annex 8) which showed, by means of reproductions of the earlier mark, use of that mark as such on the top of the cap of various cosmetic products;
– a screenshot of an article dated 21 February 2014 from a website publishing information relating to direct selling (Annex 11) in which the earlier mark appeared as such and which referred to the promotional and commercial collaboration between the applicant and the Women’s Tennis Association and one of its best players;
– extracts from social media (for example Facebook, Instagram, YouTube and Twitter) (Annex 13) which showed, inter alia, use of that mark as such, some of those extracts also being illustrated by photos of cosmetic products marketed by the applicant on which that mark also appeared as such;
– a screenshot of an article referring to the year 2015 from a Czech website, which is illustrated by a photograph of cosmetic products marketed by the applicant (Annex 14), in which the product, the top of the lid of which is visible, bears the earlier mark as such.
35 Furthermore, in its observations relating to the proof of use in support of the opposition, the applicant submitted a number of examples of commercial use of the earlier mark as a stand-alone trade mark or in combination with other elements. As regards the use of that mark on its own, the applicant provided examples of the use of that mark on the back cover of its annual report for 2015, but also on the top of the cap of a cosmetic product or a perfumery product and at the bottom of a tube containing another cosmetic product.
36 Extracts from catalogues, which the applicant presented in its observations relating to the proof of use in support of the opposition and which relate to the marketing of its goods in the Czech Republic, Poland, Slovenia, Latvia and Lithuania, also made it possible to note the presence of the earlier mark as such, for example on the top of the cap of various lipsticks.
37 Among the documents which supplemented the applicant’s observations relating to the proof of use in support of the opposition were, inter alia, extracts from the applicant’s social media (for example Facebook, Instagram, YouTube and Twitter) but also from the Google Play applications store (exhibit 1) which showed, among other reproductions of the earlier mark, use of the earlier mark as such on social media, and invoices issued in Bulgaria, the Czech Republic, Poland, Slovenia, Latvia and Lithuania (exhibits 4, 6 to 9) which referred to the presence of the earlier mark as such on the top of the cap of various cosmetic products.
38 Furthermore, it is apparent from the statement of grounds of appeal before the Board of Appeal that the applicant referred expressly to the fact that it used the earlier mark independently on its goods, which it considered that it had proved in the various observations and annexed documents previously submitted to EUIPO, including the extracts from its catalogues.
39 In that context, the Board of Appeal was not entitled to find, as it did in paragraph 41 of the contested decision, that apart from the reference made to the earlier mark in the guidelines relating to that mark, ‘there [wa]s … no further evidence that [the earlier mark] as an abbreviation of the main logo ha[d] actually been used in the course of trade’.
40 Likewise, having regard in particular to the content of the statement of grounds of appeal before the Board of Appeal, it cannot be claimed without any other form of examination, as the Board of Appeal also did in paragraph 47 of the contested decision, that, ‘as [had been] correctly held by the Opposition Division and not contested by [the applicant], the remaining evidence [was] unable to prove use of the earlier mark on a stand-alone basis’.
41 It is indeed apparent from the facts and circumstances which the applicant referred to during the proceedings before EUIPO and before the Board of Appeal, although the Board of Appeal did not, however, examine all the arguments and corresponding evidence in the contested decision, that the intended commercial use of the earlier mark could be regarded as having been made in the course of trade, in particular through its use as such and not only in combination with other elements. That is particularly true of the use made of the earlier mark on the top of the cap or lid of cosmetic products in order to display the identity of the origin of those goods to consumers who could see only that cap or that lid.
42 In the light of the foregoing, it must be held that the Board of Appeal made an error of assessment in finding that the evidence placed on the file during the proceedings before EUIPO did not serve to prove genuine use of the earlier mark as registered.
43 In the second place, following on from the foregoing, the applicant is right in claiming that the Board of Appeal did not give sufficient weight, in the contested decision, to the use made of the earlier mark on social media.
44 It is thus apparent from the evidence placed on the file that the use of social media was part of the commercial use of the earlier mark defined by the applicant. A number of extracts produced in that regard thus showed that that mark was used as such on those social media in a way that was particularly visible not only to subscribers, but also to visitors, with the references relating to the account holder (such as oriflame beauty, Oriflame Bulgaria and Oriflame Poland) appearing in smaller letters.
45 It is also apparent that the accounts which referred to the earlier mark on the various social media mentioned by the applicant were often viewed on small screens, such as those of telephones, on which there was not much space, and therefore favoured the use of the abbreviated form of that mark. The extracts submitted also serve to establish that that mark was used in order to identify the applicant’s goods, whether what was involved concerned promoting or marketing them, for example by means of videos, photos or texts.
46 In that regard, EUIPO and the intervener cannot be followed when they claim that the presence of the earlier mark on social media was not relevant in the present case. According to EUIPO and the intervener, that presence does not say anything about the consumer’s perception of the use of that mark, nor is it sufficient to show that the goods in respect of which it was registered had found a real commercial presence on the market. However, as the applicant observes, the relevant question at this stage of the analysis of the opposition is whether the evidence provided during the proceedings before EUIPO, assessed as a whole, served to prove genuine use of the earlier mark in order to guarantee the identity of the origin of the goods concerned. In the context of that analysis, the presence on social media was capable of constituting a relevant factor, since it is a means which is commonly used in order to promote and even sell cosmetic products in the economic sector concerned.
47 In the light of the foregoing, it must be held that the Board of Appeal also made an error of assessment in not taking into account, and not assessing, the scope of the use of the earlier mark on social media, in particular in order to determine whether that use made it possible to associate the goods which appeared on those media with the undertaking which marketed them.
48 Lastly, in the light of the principles set out in paragraphs 24 to 30 above, it must be pointed out that, in order to assess whether there has been genuine use of the earlier mark, the Board of Appeal must carry out an overall assessment of all the facts and circumstances relevant to establishing whether the commercial use of the mark is real. In that context, it must be stated that the contested decision does not make it possible to measure the scope or impact of the applicant’s argument that, on account of the implementation of an overall strategy of commercially exploiting the earlier mark by using it both repeatedly in its principal trade mark and as a stand-alone trade mark, the earlier mark used as such next to a sign which also includes the word element ‘oriflame’ nevertheless retains its distinctive character.
49 Consequently, it follows from the foregoing considerations that the contested decision must be annulled in so far as it dismissed the appeal on the ground that the evidence placed on the file during the proceedings before EUIPO was not capable of proving genuine use of the earlier mark as registered.
The applicant’s second and third heads of claim
50 By its second and third heads of claim, the applicant requests that the Court annul the Opposition Division’s decision of 4 April 2022 and ‘reject the EU designation of [the] international trade mark registration [applied for]’ respectively.
51 EUIPO disputes the admissibility of the second head of claim and contends that the third head of claim is to be interpreted as a claim for alteration which must, in any event, be rejected as unfounded.
52 It must be held that those heads of claim seek, in essence, that the Court exercise its power to alter decisions in order to annul the Opposition Division’s decision and uphold the opposition to registration of the mark applied for in respect of all the goods which it covers, thus adopting the decision which, according to the applicant, the Board of Appeal should have taken when it was seised of the appeal. It is apparent from the second sentence of Article 71(1) of Regulation 2017/1001 that the Board of Appeal may annul the decision of the EUIPO department which was responsible for the decision contested before it and exercise any power within the competence of that department, in this instance rule on the opposition and uphold it. Consequently, those measures are among those which may be taken by the Court in the exercise of its power to alter decisions under Article 72(3) of Regulation 2017/1001 (see, to that effect, judgment of 2 December 2020, Monster Energy v EUIPO – Nanjing aisiyou Clothing (Representation of a scratch), T‑35/20, not published, EU:T:2020:579, paragraph 90 and the case-law cited).
53 However, it must be borne in mind that the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (see judgment of 2 December 2020, Representation of a scratch, T‑35/20, not published, EU:T:2020:579, paragraph 91 and the case-law cited).
54 In the present case, it must be held that the conditions for alteration are not satisfied since the Board of Appeal dismissed the appeal on account of the lack of proof of genuine use of the earlier mark. In particular, the Board of Appeal confined itself to pointing out that, in the light of the evidence produced by the applicant, the applicant had not proved genuine use of that mark in the form in which it had been registered. Consequently, not only has the Board of Appeal not yet adopted a position on the substantive requirements of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, but it also did not examine whether the evidence submitted related to the place, time, extent and nature of use of the earlier mark in accordance with the requirements of Article 10(3) of Delegated Regulation 2018/625 (see, to that effect, judgment of 18 January 2023, Dorsum v EUIPO – id Quantique (Clavis), T‑758/21, not published, EU:T:2023:3, paragraphs 21 and 22).
55 It follows that the claim for alteration, which is contained, in essence, in the second and third of the applicant’s heads of claim, must be rejected.
Costs
56 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. Under Article 134(2) of those rules, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared.
57 Since EUIPO and the intervener have essentially been unsuccessful in their claims, they must each be ordered to bear their own costs and to pay half of the costs incurred by the applicant.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 December 2022 (R 938/2022-2);
2. Dismisses the action as to the remainder;
3. Orders EUIPO to bear its own costs and to pay half of those incurred by Oriflame Cosmetics AG;
4. Orders Caramé Holding AG to bear its own costs and to pay half of those incurred by Oriflame Cosmetics.
Marcoulli | Tomljenović | Spangsberg Grønfeldt |
Delivered in open court in Luxembourg on 7 February 2024.
V. Di Bucci | | M. van der Woude |