JUDGMENT OF THE GENERAL COURT (Second Chamber)
23 September 2020 (*)
(EU trade mark – Revocation proceedings – EU word mark SYRENA – Genuine use of the mark – Extent of use – Proof of use – Articles 18(1) and 58(1)(a) and (2) of Regulation (EU) 2017/1001 – Duty to state reasons – First sentence of Article 94(1) of Regulation 2017/1001)
In Case T‑677/19,
Polfarmex S.A., established in Kutno (Poland), represented by B. Matusiewicz-Kulig, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Arkadiusz Kaminski, residing in Etobicoke, Ontario (Canada), represented by E. Pijewska, M. Mazurek and W. Trybowski, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 11 July 2019 (Joined Cases R 1861/2018‑2 and R 1840/2018‑2), relating to revocation proceedings between Polfarmex and Mr Kaminski,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, P. Škvařilová-Pelzl (Rapporteur) and I. Nõmm, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 2 October 2019,
having regard to the response of EUIPO lodged at the Court Registry on 10 December 2019,
having regard to the response of the intervener lodged at the Court Registry on 13 December 2019,
having regard to the reassignment of the case to a new Judge-Rapporteur,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks of 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
I. Background to the dispute
1 On 6 July 2010, the intervener, Mr Arkadiusz Kaminski, 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), 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)). Registration as a mark was sought for the word sign SYRENA. That application was published in Community Trade Marks Bulletin No 180/2010 of 24 September 2010 and the mark was registered on 7 January 2011 under No 9262767.
2 The goods in respect of which registration was sought are in Classes 9, 12 and 28 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, for each of those classes, to the following description:
– Class 9: ‘Computer and video game programs and software, none of the aforesaid goods relating to the aeronautical field, and in particular helicopters and rotorcrafts’;
– Class 12: ‘Motor vehicles for locomotion by land and parts therefor (included in Class 12)’;
– Class 28: ‘Games and playthings, model vehicles; scale model vehicles made of all materials, in particular paper model vehicles and die-cast model vehicles or plastic model vehicles’.
3 On 22 April 2016, the applicant, Polfarmex S.A., filed an application for revocation of the EU trade mark SYRENA pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001). That application was directed against all of the goods covered by the contested mark.
4 The intervener submitted documents numbered from 1 to 41 as evidence of the genuine use of the contested mark. On 21 July 2017, he produced additional documents numbered from 42 to 60.
5 On 27 July 2018, the Cancellation Division revoked the contested mark in respect of all the goods referred to in paragraph 2 above, except in respect of ‘cars’ in Class 12. In essence, it found that genuine use of the contested mark had been shown in respect of solely ‘cars’ in Class 12.
6 On 18 and 21 September 2018, respectively, the intervener and the applicant each filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
7 By decision of 11 July 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the two appeals. In essence, it, like the Cancellation Division, found that genuine use of the contested mark had been shown in respect of solely ‘cars’ in Class 12. By contrast, genuine use had not been shown in respect of the other goods in Classes 9, 12 and 28 covered by the contested mark.
8 According to the Board of Appeal, the evidence, considered as a whole, made it possible to conclude that the intervener had attempted to restart the production of SYRENA-branded cars and electric cars and that the contested mark had been used in order to create or preserve an outlet for the goods at issue. It considered, inter alia, that, despite the lack of evidence of the actual sale of goods, several items of evidence indicated that cars were about to be marketed and that the preparatory work in order to secure customers for those cars appeared to be underway.
9 More specifically, the Board of Appeal found that the market in question was characterised by relatively low demand and the sale of a limited number of vehicles. According to the Board of Appeal, in the light of items of evidence such as the agreements, the press articles, the few purchase orders received and documents containing references to orders and inquiries concerning the SYRENA Nixi model, the intervener had made real commercial use of the mark, consisting of creating a market share for the goods at issue. The Board of Appeal took into account, in particular, that, in respect of high-end collectors’ items as specific as racing cars, a long period of time, up to several years, can pass between order and delivery. Likewise, it noted that the evidence showed that a SYRENA Nixi electric car was launched and that, even though some of those items of evidence post-dated the relevant period, they referred to activities that took place during that period.
10 Since the evidence showed that the contested mark was used in respect of sports cars and electric cars, the Board of Appeal considered that the category of ‘motor vehicles for locomotion by land’ in Class 12 was too broad having regard to the goods in respect of which use had been proved. It found that, within that category, it was possible to discern several subcategories of goods, including the subcategory of ‘cars’. According to the Board of Appeal, the evidence produced by the intervener, taken as a whole, was sufficient to establish genuine use in respect of the latter subcategory.
II. Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision in so far as it declares that the contested mark should be upheld in respect of ‘cars’ in Class 12;
– alter the contested decision by declaring the contested mark revoked in its entirety;
– in the alternative, remit the case to EUIPO;
– order EUIPO to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO.
13 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs, including those incurred by the intervener.
III. Law
A. Admissibility of the third head of claim
14 EUIPO submits that the applicant’s third head of claim, set out in the alternative to the first two heads of claim, for the case to be remitted to EUIPO should be ‘annulled’ as it is vague and redundant, considering, in particular, that a remittal to EUIPO would be the consequence of the first head of claim and would not amount to an alternative to the latter.
15 In that regard, it is sufficient to note that, in an action before the EU judicature against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of the EU judicature. It is therefore for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the EU judicature (see judgment of 31 January 2019, Pear Technologies v EUIPO – Apple (PEAR), T‑215/17, not published, EU:T:2019:45, paragraph 81 and the case-law cited).
16 Therefore, it is appropriate to consider that the applicant’s third head of claim, by which it submits, in the alternative, that the case should be remitted to EUIPO, does not have its own purpose, in that it is a consequence of the first head of claim seeking annulment of the contested decision in so far as that decision upheld the registration of the contested mark in respect of ‘cars’ in Class 12. That head of claim must therefore be rejected as inadmissible.
B. Substance
1. The claim for annulment
17 In support of its claim for annulment, the applicant raises five pleas in law. The first plea alleges infringement of Articles 94(1) and 95(1) and recital 42 of Regulation 2017/1001 and of Article 55(1) 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). The second plea alleges infringement of Article 58(1)(a) of Regulation 2017/1001. The third plea alleges infringement of Articles 18(1), 58(1)(a), 58(2), 94(1), 95(1) and recital 42 of Regulation 2017/1001 and of Article 55(1) of Delegated Regulation 2018/625. The fourth plea alleges infringement of Articles 58(2) and 64(5) of Regulation 2017/1001. The fifth plea alleges infringement of Articles 94(1) and 64(1) and recital 42 of Regulation 2017/1001.
18 The first and second pleas relate, in essence, to the assessment of the evidence produced by the intervener and the Board of Appeal’s finding that use of the mark was shown in the present case, even though no cars have been sold. Therefore, it is appropriate to consider them together. Together with those pleas, it is also appropriate to examine the first complaint of the third plea, by which the applicant claims that the Board of Appeal applied a threshold intended for specialised goods to the other subcategories of cars.
19 Likewise, it is appropriate to examine together the second complaint of the third plea and the fourth plea, by which the applicant disputes the Board of Appeal’s finding that the use in respect of the subcategory ‘racing cars’ was sufficient to show genuine use in respect of the category ‘cars’ in Class 12.
20 It is appropriate to begin by examining the fifth plea, as that plea relates to whether the applicant’s rights of defence were respected.
(a) The fifth plea
21 In the context of its fifth plea, the applicant claims that, to the extent that the Cancellation Division failed to give it the opportunity to present its comments on documents Nos 42 to 60, it was deprived of its right to comment on almost half of the evidence collected during the administrative procedure. Moreover, it submits that the Board of Appeal relied heavily on that evidence in the contested decision. The applicant submits that the Board of Appeal and the Cancellation Division clearly infringed Article 94(1) of Regulation 2017/1001. It claims that, as a result, documents Nos 42 to 60 should not be taken into account in the present case.
22 EUIPO and the intervener dispute the applicant’s arguments.
23 In the present case, as is apparent from paragraph 5 of the contested decision, the intervener submitted documents Nos 42 to 60 to the Cancellation Division on 21 July 2017. The Cancellation Division decided to take them into account as additional evidence, noting that their submission was justified by the fact that the applicant had disputed the relevance of the initial evidence. Likewise, the Cancellation Division held that those documents could not change the outcome of the proceedings and therefore did not consider it necessary to reopen the administrative procedure for another round of observations regarding those specific documents.
24 It follows that the Cancellation Division failed in actual fact to give the applicant the opportunity to present its comments on documents Nos 42 to 60.
25 In that regard, it should be noted that, pursuant to Article 72(1) of Regulation 2017/1001, actions may be brought before the Courts of the European Union against decisions of the Boards of Appeal only.
26 It follows that the applicant’s complaint, alleging infringement of Article 94(1) of Regulation 2017/1001 in so far as the Cancellation Division failed to give it the opportunity to present its comments on documents Nos 42 to 60 must, in any event, be rejected (see, to that effect, judgment of 5 March 2019, Meblo Trade v EUIPO – Meblo Int (MEBLO), T‑263/18, not published, EU:T:2019:134, paragraph 31 and the case-law cited).
27 Likewise, irrespective of the question of any breach, on the part of the Cancellation Division, of Article 94(1) of Regulation 2017/1001, it is clear that the applicant brought appeal proceedings before the Board of Appeal, in which it was able to, inter alia, make known its views as to the relevance of the documents Nos 42 to 60, so that it could have been heard in that regard. As contended by the intervener and EUIPO, the applicant had the opportunity to present its comments on the evidence disputed before the Board of Appeal. Accordingly, the breach claimed would, in any event, have no impact on the validity of the contested decision (see, to that effect, judgment of 5 March 2019, MEBLO, T‑263/18, not published, EU:T:2019:134, paragraph 30).
28 It follows that the fifth plea must be rejected.
(b) The first and second pleas and the first complaint of the third plea regarding insufficient evidence to prove genuine use of the mark
29 In its first plea, the applicant claims that the Board of Appeal failed to examine the evidence as a whole and erred in finding that the contested mark had been put to genuine use on the sole basis of promotional and preparatory activities, without the goods ever having been, in actual fact, placed on the market or about to be placed on the market. It argues, inter alia, that a single item of evidence relates to the alleged sale of a single racing car and that it has not been established that that order was filled. The applicant submits that the contested decision is based on circumstantial evidence alone that could be taken into account only if it were supported by direct evidence. It adds that the intervener has not shown that his cars were granted type approval. Type approval is obligatory in order to place cars or car parts on the market. Moreover, racing cars are also subject to obligatory type approval, granted by specialised sports associations.
30 In its second plea, the applicant claims that the evidence produced in the present case shows that merely token and unsuccessful preparatory activities, at best, were carried out. These mere preparations for use cannot be regarded as commencement or resumption of use within the meaning of Article 58(1)(a) of Regulation 2017/1001. Moreover, the Board of Appeal erred in referring to Article 66(1)(a) of Regulation 2017/1001 rather than to Article 58(1)(a) of that regulation.
31 By the first complaint of its third plea, the applicant claims that the Board of Appeal applied the threshold relevant to the specialised use of racing cars to sports cars and electric cars.
32 EUIPO disputes the applicant’s claims and submits that the Board of Appeal’s reasoning that, in that specific market where goods are bespoke and the production process is complex, even though no sales were shown in the relevant period, the evidence shows that a large part of the commercial activity that took place was genuinely intended to create a market share and was perfectly consistent with the purpose of the requirement to demonstrate genuine use. It adds that, in the present case, the applicant designed the car at issue, publicised it under the SYRENA mark and set up the infrastructure in order to manufacture the product. Moreover, in the sector at issue, sales often take place a long time before the car is delivered and a period of several years is not uncommon between ordering such a car and delivery. In that regard, EUIPO recalls that, regarding the applicant’s electric cars, the advertising carried out in 2016 was intended to create demand for a product that would not be available before 2020.
33 In addition, EUIPO submits that preparations intended to secure customers, particularly in the form of advertising campaigns, can constitute genuine use and that the intervener’s advertising efforts had gone beyond mere preparatory tasks, to the extent that the intervener had offered his goods for sale and was ready to meet demand, so the preparatory acts in question were in fact imminent to the offer of sales. As for the threshold of use, EUIPO contends that the Board of Appeal did not lower the threshold in relation to the goods concerned.
34 As for the intervener, he contends that the evidence he submitted attests, as a whole, to the existence of consecutive steps intended to promote and launch the production and marketing of cars under the SYRENA mark and there is no doubt that he has made real efforts to acquire a market position for the SYRENA mark. He adds that his efforts were never restricted to racing cars and that the idea of an electric car, announced in 2013, led to a project being presented to the Polish Ministry of Development and the public in 2016 and that potential customers were invited to make inquiries about the cars and reserve their place on the order list.
35 Regarding the application of Article 58(1)(a) of Regulation 2017/1001, the intervener submits, primarily, that his situation does not correspond to the scenario set out in that provision and, even if his actions were to be regarded as preparatory, it cannot be argued that he undertook ‘preparations for the commencement or resumption of use’ only after the expiry of the relevant period of five years and after he had become aware that an application for revocation could be lodged.
36 According to Article 18(1) of Regulation 2017/1001, if, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the European Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark is to be subject to the sanctions provided for in that regulation, unless there are proper reasons for non-use.
37 Under Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of an 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 Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. However, that article provides that no person may claim that the proprietor’s rights in a trade mark should be revoked where, during the interval between expiry of that period and filing of the application for revocation, genuine use of the trade mark has been started or resumed.
38 The rationale for the requirement that a mark must be the subject of genuine use in order to be protected under EU law is that EUIPO’s register cannot be compared to a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 20 and the case-law cited).
39 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 (judgment of 21 November 2013, Recaro v OHIM – Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 19; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43, and order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 27).
40 The Court has thus held that the analysis of whether use of an earlier trade mark is genuine cannot be confined merely to establishing that that mark has been used in the course of trade, since that use must also be genuine, in accordance with Regulation 2017/1001. Not all proven commercial exploitation can therefore automatically be deemed to constitute genuine use of the mark in question (judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 32).
41 Genuine use of the mark entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned. Use of the mark must 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 (judgments of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 39, and of 14 March 2017, IR v EUIPO – Pirelli Tyre (popchrono), T‑132/15, not published, EU:T:2017:162, paragraph 88; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
42 As regards the criteria for assessing whether use of the trade mark is genuine, it must be borne in mind that, in making such an assessment, 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 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 22 and the case-law cited).
43 Furthermore, a global assessment must be carried out which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the low volume of goods marketed under the mark may be offset by the fact that use of the mark was very extensive or very regular and vice versa (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 23 and the case-law cited).
44 Last, genuine use 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 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 26 and the case-law cited).
45 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 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 31 and the case-law cited).
46 The turnover and the volume of sales of the goods under the contested trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, use of a mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be classified as genuine, provided that it is 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. It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use was genuine or not. In consequence, a de minimis rule, which would not allow EUIPO – or, on appeal, the General Court – to appraise all the circumstances of the dispute before it, cannot be laid down (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 32 and the case-law cited).
47 Indeed, in the interpretation of the notion of genuine use, account must be taken of the fact that the rationale for the requirement that the contested 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 judgments of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM – Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 18 and the case-law cited, and of 15 July 2015, TVR Automotive v OHIM – TVR Italia (TVR ITALIA), T‑398/13, EU:T:2015:503, paragraph 45 and the case-law cited).
48 The applicant’s complaints must be examined in the light of those principles.
49 It must be noted, as a preliminary point, that the Board of Appeal was entitled to find, in paragraph 33 of the contested decision, that the period of five years before the application for revocation, in respect of which the intervener had to establish genuine use of the mark, spanned from 22 April 2011 to and including 21 April 2016.
50 Regarding, first, the complaint relating to the Board of Appeal’s failure to assess the items of evidence as a whole and together with one another, it must be stated that the applicant complains, in actual fact, that the Board of Appeal considered that the contested mark had been put to genuine use whereas no evidence had shown that the intervener had in fact manufactured even a single car, thereby showing that the contested mark had been put to genuine use on the market.
51 In that regard, the applicant claims, in particular, than none of the 60 documents produced by the intervener makes it possible to establish the most fundamental and essential fact that the goods covered by the contested mark were in fact available on the market in a way that would constitute genuine use.
52 In that regard, it should be borne in mind that it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts. It is only the consideration of all the evidence submitted to the Board of Appeal that must make it possible to establish proof of that use and each item of evidence, therefore, does not necessarily have to relate to the place, duration, nature and extent of use (see judgment of 13 June 2019, Pielczyk v EUIPO – Thalgo TCH (DERMÆPIL SUGAR EPIL SYSTEM), T‑398/18, not published, EU:T:2019:415, paragraphs 62 and 63 and the case-law cited).
53 Thus, the very principle of a global assessment means that genuine use can be demonstrated in the light of all the items of evidence taken as a whole even if each item, individually, is insufficient to show such use. Therefore, the applicant’s complaint alleging failure to have regard to the principle of the global assessment of evidence is wholly unfounded.
54 In that regard, it should be noted that the Board of Appeal already responded to that argument in paragraph 69 of the contested decision, citing, in particular, the principles of case-law recalled in paragraph 52 above.
55 Moreover, it should also be noted that the applicant did not refer to any item of evidence that the Board of Appeal allegedly failed to take into account in order for the applicant to claim properly that the Board of Appeal infringed the principle of the global assessment of evidence.
56 Likewise, the applicant also did not argue that the Board of Appeal took into account an item of evidence or piece of information that was not submitted by the parties, with the result that any argument relating to the alleged infringement of Article 95(1) of Regulation 2017/1001 cannot succeed.
57 Regarding, second, whether the Board of Appeal’s consideration that genuine use of the mark had been established in the present case was valid, it should be noted that the Board of Appeal observed, inter alia, that the intervener builds racing cars (paragraph 49 of the contested decision). It went on to consider, in essence, that the contested mark was used in order to create or preserve an outlet for racing or sports cars under the SYRENA mark (paragraph 68 of the contested decision) and conclude that genuine use had been shown in respect of sports cars and electric cars (paragraph 83 of the contested decision). It is therefore appropriate to examine the merits of the Board of Appeal’s findings in respect of each of those categories, taken separately.
(1) Proof of genuine use in respect of racing cars
58 The Board of Appeal noted that the intervener had established that he built vehicles for a very specific market, namely racing cars, which, given the highly specialised nature of that market, were of interest to few people. The Board of Appeal inferred from this that the sale of a limited number of such bespoke or racing vehicles can be considered to constitute genuine use. In addition, it referred to the Court’s case-law, according to which, in the context of high-end sports cars with technical specifications and that are not intended for normal, everyday road use and the price of which exceeds that of most private use cars, it is enough to demonstrate that the trade mark was marketed in the relevant period and that that trade mark was the subject matter of public discussion. The latter criterion was satisfied by the many press articles.
59 Likewise, the Board of Appeal found that the intervener had shown that he had put the contested mark to outward use during the relevant period, given that that mark was affixed to the cars that were the subject of the press articles, during car shows, despite the difficulties encountered in relation to type approval and delivery. It also considered that the extent of use had also been sufficiently shown by, inter alia, the production of cooperation agreements and purchase orders.
60 In the light of the evidence submitted by the intervener, the Board of Appeal found that (i) the cars were about to be marketed, (ii) preparatory work in order to secure customers appeared to be underway and (iii) real use of the contested mark and sufficiently broad and consistent use indicating an effort to create a market share for the goods concerned were established in the present case.
61 It should be borne in mind that the applicant claims, principally, that the Board of Appeal was not justified in finding that genuine use of the mark had been established, since none of the 60 documents submitted by the intervener shows that the goods covered by the contested mark were available on the market in a way that would constitute genuine use. As is apparent from paragraph 30 above, it submits that only one of the documents produced related to the alleged sale of a racing car, the production of which was due to begin after the order was placed on 18 January 2016, that is, almost two weeks after the end of the five-year grace period on 7 January 2016. In addition, the applicant claims that the intervener has not established that that order was filled and the car was in fact produced and delivered to the purchaser.
62 In that regard, it must be stated that, admittedly, the evidence submitted by the intervener does not show that the sale of racing cars, namely the SYRENA Meluzyna R model, took place. However, those items of evidence show real commercial use of the contested mark and the intervener’s genuine efforts to acquire a market share.
63 In the first place, as noted by the Board of Appeal in paragraphs 59 and 62 of the contested decision, without it being disputed by the applicant, the intervener also produced a cooperation agreement dated 18 February 2015, concluded with the company FSO S.A. for the purpose of producing cars with the SYRENA mark, and a coexistence agreement concluded between the same parties dated 1 February 2013, relating to rights in respect of the SYRENA mark.
64 Likewise, the evidence submitted shows, in the second place, that the 1:5 scale SYRENA Meluzyna model was presented to the public on 16 September 2015 and the SYRENA Meluzyna R prototype model was presented on 11 and 12 December 2015 during the 53rd edition of the ‘Warsaw Barbórka Rally’, which was also that model’s debut. Those events were also reported in a large number of articles in Polish and other foreign languages between December 2015 and January 2016.
65 In the third place, the placing of SYRENA Meluzyna R models on the market is evidenced, inter alia, by the copy of a brochure containing images of and information on that model and by correspondence with the company My Rally Challenge with a view to purchasing that model. That brochure contains the technical specifications of the SYRENA Meluzyna R model and sets out the production volume, namely 25 cars, and the starting price for that model, namely EUR 60 000. Inter alia, the brochure contains images of the other upcoming models (SYRENA Meluzyna and SYRENA Ligea) and the indication that the production of the SYRENA Meluzyna R racing car was the first stage in the relaunch strategy for SYRENA cars. A press article, produced as document No 27, also mentions that the total planned production of the SYRENA Meluzyna R model is 25 cars.
66 Additionally, in the fourth place, several orders of the SYRENA Meluzyna R model were placed, as shown by the invoice issued on 28 July 2016 for the attention of the company SARL Alpmediterranee, which confirmed its interest in the purchase of five cars by a letter of 5 July 2016, and by the cancellation on 13 September 2016 of the order of 5 January 2016 placed by the company Gavbiz Ltd on account of the dispute between the intervener and the applicant regarding the SYRENA mark.
67 Last, in the fifth place, it must be noted that the file (document No 16a) also contains a confirmation from the company Pirelli Polska Sp. z o.o., dated 13 September 2016, of its cooperation with the company AK Motor Polska Sp. z o.o. at the launch of the new SYRENA Meluzyna R model in 2015.
68 It should be added that the intervener’s advertising efforts are also evidenced by various Polish and international press articles.
69 Moreover, the content of all those documents is not disputed by the applicant. Likewise, it should be noted that, in the light of the observations in paragraphs 63 to 68 above, the applicant is not justified in claiming that the goods covered by the contested mark were never actually placed on the market or were never about to be placed on the market. It should be specified that the placing on the market of goods or services also includes circumstances in which that product or service is actually offered for sale, even if it has not yet been sold.
70 It must also be stated that the Board of Appeal, in paragraph 48 of the contested decision, relied on the Court’s case-law, which it was fully entitled to consider relevant in the present case. As is apparent from the case-law, it is common knowledge that the market for high-end sports cars with technical specifications that are not intended for normal, everyday road use and the price of which exceeds that of most private use cars is often characterised by relatively low demand, by production to specific order and by the sale of a limited number of vehicles. The Court held that, in such circumstances, the provision of accounting documents setting out sales figures or invoices is not necessary for the purposes of establishing genuine use of the mark in question. Further, the Court noted that publications demonstrated that the mark in question was the subject matter of public discussion in anticipation of a revival of production and sale of a car model bearing the mark in question (see, to that effect, judgment of 15 July 2015, TVR ITALIA, T‑398/13, EU:T:2015:503, paragraph 57).
71 It follows that, having regard to the specific features of the relevant market, duly taken into account by the Board of Appeal when it relied on the case-law cited in paragraph 70 above, the evidence produced by the intervener shows the existence of various preparatory tasks and advertising efforts in relation to the SYRENA Meluzyna R model. Moreover, it shows, as contended by EUIPO, not only that the car was about to be marketed, but also that it was available to order.
72 Moreover, it should be borne in mind that, contrary to the applicant’s claims, it is apparent from the case-law cited in paragraph 41 above that use of the mark can be shown by evidence that the goods at issue are about to be marketed.
73 Accordingly, the Board of Appeal was fully entitled to consider that genuine use of the contested mark had been shown in respect of sports cars. That finding cannot be called into question by the applicant’s other arguments.
74 As regards the applicant’s argument that a car must receive type approval before it can be marketed, it is sufficient to note, as the Board of Appeal did in paragraph 61 of the contested decision, that racing cars are not intended to be driven on public roads. Although racing cars must receive type approval by sports associations, the purpose of such type approval is completely different from that of cars authorised to be driven on public roads and can differ according to the race, which the applicant also, in essence, acknowledges.
75 However, the need to obtain type approval in order to take part in a car race does not in any way establish that the intervener could not access the racing car market, as the applicant claims. As is apparent, in essence, from the intervener’s submissions, the obligation to obtain type approval for each race means that the type approval depends on the type of race in which the client intends to take part. Likewise, it can be issued for racing cars that have already been built and sold according to the type of race track or event in which those cars could be used to take part. It follows that any lack of type approval does not prevent racing cars from being produced or marketed.
76 In addition, it must be emphasised, as the Board of Appeal did, that type approval can only be one of the factors taken into account when assessing genuine use. As is apparent from the considerations in paragraphs 62 to 73 above, genuine use of the contested mark has been established in respect of racing cars.
77 As regards the applicant’s claim that mere preparatory tasks cannot constitute commencement or resumption of use within the meaning of Article 58(1)(a) of Regulation 2017/1001, it should be noted that it is not clearly apparent from the contested decision that the Board of Appeal found that the evidence produced by the intervener showed that genuine use of the contested mark had started or resumed. In paragraph 53 of the contested decision, the Board of Appeal stated that the production of invoices or audited accounts cannot be regarded as the only means for proving the extent of use of a trade mark, to the extent that, where Article 58(1)(a) of Regulation 2017/1001 – wrongly referred to by the Board of Appeal as Article 66(1)(a) of that regulation – applies, account is taken of the commencement or resumption of use which, as preparatory tasks preceding any marketing of goods or services, cannot be shown by invoices relating to sales or by audited accounts.
78 In any event, given that the Board of Appeal was fully entitled to hold that the evidence submitted by the intervener was sufficient to constitute genuine use of the contested mark, that evidence is all the more sufficient in order to demonstrate the commencement of such use.
(2) Proof of genuine use in relation to sports cars
79 In the present case, the Board of Appeal concluded, in paragraph 83 of the contested decision, that genuine use of the earlier mark had been shown in relation to, inter alia, sports cars.
80 However, the category of ‘sports cars’ is referred to in the Board of Appeal’s reasoning only occasionally. Thus, in paragraph 64 of the contested decision, the Board of Appeal noted that it was clear from the brochures and catalogues that the SYRENA mark was used in respect of sports cars and electric cars in particular. Likewise, it held, in essence, in paragraph 68 of the contested decision, that the use shown was not token in respect of racing cars or sports cars.
81 The Board of Appeal also stated, in paragraph 63 of the contested decision, that the declaration of a third party, namely the company Pirelli Polska (document No 16a), confirmed that the activities surrounding the launch of a sports car were not merely preparatory. That finding was also supported by the interest shown in that car by the companies My Rally Challenge (document No 21) and Alpmediterranee (document No 23). However, those items of evidence relate to the SYRENA Meluzyna R model, which is a racing car, as is apparent from paragraph 62 above.
82 It follows from the foregoing that the Board of Appeal did not carry out an assessment of genuine use in respect of sports cars individually. Likewise, nor does the contested decision contain the reasons why the findings relating to racing cars are capable of being applied to sports cars. In that regard, it should be noted, as is apparent from the case file, that sports cars, unlike racing cars, are intended to be driven on public roads.
83 Although, in the context of its first plea, the applicant disputes, primarily, the Board of Appeal’s finding that genuine use of the mark had been established in the present case, the applicant also raised a complaint alleging infringement of the duty to state reasons under Article 94(1) of Regulation 2017/1001.
84 Moreover, an absence of reasons or an inadequate statement of reasons constitutes an infringement of essential procedural requirements for the purposes of Article 263 TFEU and is a plea involving a matter of public policy which may, and indeed must, be raised by the EU judicature of its own motion (see, to that effect, judgment of 16 June 2015, Polytetra v OHIM – EI du Pont de Nemours (POLYTETRAFLON), T‑660/11, EU:T:2015:387, paragraph 19 and the case-law cited).
85 In that regard, it must be pointed out, first, that a decision which (i) concludes that an earlier mark has been put to genuine use within the meaning of Article 58(1) of Regulation 2017/1001 and (ii) does not make clear to what extent the evidence produced supports that conclusion in relation to each of the goods or services or each of the categories of goods or services for which that use has been accepted is vitiated by inadequate reasoning (see, to that effect, judgment of 16 June 2015, POLYTETRAFLON, T‑660/11, EU:T:2015:387, paragraph 23 and the case-law cited).
86 However, as is apparent from the considerations set out in paragraphs 79 to 82 above, that is not the case here. The Board of Appeal’s reasoning does not make it possible to understand to what extent the evidence produced supports the Board of Appeal’s finding in respect of sports cars.
87 Failing sufficient reasons that make it possible to assess the lawfulness of the Board of Appeal’s findings, it is not for the Court to conduct an analysis based on reasoning not apparent from that decision or to put itself in EUIPO’s place in exercising the powers vested in EUIPO by Regulation 2017/1001 (see, to that effect, judgment of 16 June 2015, POLYTETRAFLON, T‑660/11, EU:T:2015:387, paragraph 34 and the case-law cited).
88 In that regard, the intervener states that, before finding that the contested mark had been put to genuine use in respect of sports cars and electric cars, the Board of Appeal carried out an assessment of the various activities carried out by the intervener. Thus, that conclusion does not stem directly from the finding that the intervener built cars for a very specific market, namely that of racing cars, but is based on additional considerations.
89 That argument cannot succeed. Even though the Board of Appeal’s finding relating to the use of the contested mark in respect of sports cars does not stem directly from the finding that the intervener manufactured racing cars, the Board of Appeal did not identify, in the present case, the documents in the case file that made it possible to establish genuine use in respect of those goods.
90 Accordingly, it must be stated that the contested decision is vitiated by inadequate reasoning since it does not enable the Court to understand the extent to which the evidence produced by the intervener and relied on by the Board of Appeal allegedly showed genuine use of the contested mark in respect of sports cars, for which the Board of Appeal had taken the view that genuine use had been established.
(3) Proof of genuine use in respect of electric cars
91 Regarding the use of the contested mark in respect of electric cars, it must be stated that, in paragraph 63 of the contested decision, the Board of Appeal found that the items of evidence showed that an electric car, namely a SYRENA Nixi car, had been launched and, in that regard, relied on document No 26 relating to the official presentation of the model before the Polish Minister for Development. It added that, although the majority of the articles in documents Nos 27 and 28 referring to the launch of the electric car were published in June 2016, that is, after the relevant period, they referred to events that took place during the five years before the application for revocation was made. In addition, in paragraph 68 of the contested decision, containing a reference to documents Nos 44 to 50, the Board of Appeal referred to, inter alia, the launch of that electric car and the electric car project dating from 2016.
92 However, it must be stated that, in the light of the evidence submitted by the intervener, the Board of Appeal’s findings are inaccurate and, in any event, do not make it possible to allow a finding of genuine use of the contested mark in respect of electric cars.
93 In the first place, it must be noted that, although the meeting with the Polish Minister for Development of 4 April 2016 did take place during the relevant period, it is inconclusive as regards the use of the contested mark in respect of electric cars. The presentation given during that meeting (document No 25) does not contain any reference to or image of the SYRENA Nixi model or prototype or any other electric car. The only images it contains are those of the SYRENA Meluzyna and SYRENA Ligea models, without any reference to electric propulsion. The term ‘electric’ in English is used only in the part of the presentation relating to innovation. As for the exchange of electronic messages between the intervener and the representative of the Polish Ministry of Development following that meeting, contained in document No 26, it contains only a vague reference to the fact that the project concerning electric cars at issue had developed rapidly since the meeting of 4 April 2016.
94 Thus, even though the various Polish press articles submitted by the intervener (document No 27) refer to the fact that the project for the SYRENA Nixi electric car was presented to the Minister for Development, that fact is not evidenced by the documents relating to that presentation.
95 In the second place, it must be stated that the articles referred to in paragraph 94 above, dated June and July 2016, merely refer to the electric car project in vague terms.
96 By contrast, the press articles containing more information on the SYRENA Nixi electric car project date from 14 February to 20 July 2017 (documents Nos 44 and 45). Those publications, which contain the images of that model, also refer to the fact that its presentation took place on 14 February 2017, it was presented to the Ministry of Development on 4 April 2016 and publicly announced on 14 June 2016. Likewise, those items of evidence contain the technical specifications of the SYRENA Nixi model and state that an interest in purchasing that model can be expressed by sending an email to the intervener.
97 In that regard, it should be borne in mind that the Board of Appeal considered, inter alia, in paragraph 63 of the contested decision, that, even though the articles mentioning the launch of the electric car were published in June 2016, they referred to facts that took place during the five years before the application for revocation was made.
98 Admittedly, as stated by the Board of Appeal, it is not precluded, in assessing the genuineness of use during the relevant period, that account be taken, where appropriate, of any circumstances subsequent to that period. Such circumstances may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period (judgment of 19 April 2013, Luna v OHIM – Asteris (Al bustan), T‑454/11, not published, EU:T:2013:206, paragraph 45; see also, by analogy, order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 31).
99 However, in the present case, as is apparent from paragraphs 95 and 97 above, the only information relating to the relevant period to which those items subsequent to that period refer is the presentation of the project to the Polish Ministry of Development on 4 April 2016. The other items of information relate to the use that took place after the relevant period and do not make it possible to assess the use of the contested mark during that period.
100 In any event, for the reasons set out in paragraph 93 above, the items of information relating to the meeting of 4 April 2016 must be regarded as insufficient to show genuine use of the mark in respect of electric cars.
101 In that regard, it must be added that the expressions of interest to which the articles dated February 2017 (document No 44) refer, contained in document No 54, are not purchase orders per se, as they give priority order rights at the time when the prototype will be ready. Likewise, the consortium agreement relating to the development of the SYRENA Nixi car project (document No 47) is dated only 10 November 2016.
102 It is therefore appropriate to consider that the evidence relating to the electric car at issue does not show that that product was about to be marketed, even if it were appropriate to take into account the evidence from 2017, that is, almost a year after the relevant period.
103 In the third place, it must be noted that the criteria relating to racing cars as put forward by the Board of Appeal in paragraphs 48 and 49 of the contested decision do not necessarily – unless, at the very least, appropriate reasons are given – apply to electric cars. Electric cars are not intended for a market as specific as racing cars, which are likely to interest so few people that the sale of a limited number of those vehicles constitutes genuine use. The same applies in relation to the Board of Appeal’s findings in paragraph 65 of the contested decision that racing cars are high-end bespoke collectable goods that may require many hours of work well after the sale has been concluded.
104 It follows that the Board of Appeal was wrong to consider that genuine use of the mark had been shown as regards electric cars.
105 Having regard to all the above considerations, it is in respect of racing cars only that the Board of Appeal was correct to hold that genuine use of the contested mark had been shown in the present case.
(c) The second complaint of the third plea and the fourth plea
106 By the second complaint of the third plea, the applicant submits that the Board of Appeal wrongly applied a significantly lower threshold, intended for specialised goods, that is, racing cars, in order to make a finding of genuine use in respect of cars in general, intended for the general public and potentially including a variety of subcategories.
107 In its fourth plea, the applicant complains that the Board of Appeal found that the contested mark had been put to genuine use in respect of the category of ‘cars’ based on alleged use pertaining to one of its subcategories, namely ‘racing cars’. According to the applicant, the Board of Appeal failed to take into account the fact that the category of ‘cars’ is very broad and includes a variety of sufficiently distinct and coherent categories. In doing so, the Board of Appeal allegedly infringed Article 64(5) of Regulation 2017/1001. In addition, the applicant submits that the Board of Appeal, by stating that the intervener was not required to establish use of all conceivable variations of the category of goods at issue, namely ‘cars’, mistook a ‘variation’ of a category of goods for a ‘subcategory’ of those goods.
108 EUIPO contends that the Board of Appeal’s finding that genuine use of the mark had been shown in respect of ‘cars’ was a logical and proper application of the principles set out in the judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN) (T‑126/03, EU:T:2005:288). It argues that the subcategory accepted by the Board of Appeal in the present case, namely ‘cars’, is designed or intended to carry a driver and a small number of passengers for private, commercial or leisure use and that the subdivision put forward by the applicant merely amounts to a list of variations of cars that all serve the same purpose. It adds that racing cars, like sports cars, are ‘cars’ and, even though that type of car is intended more for leisure use, it would be arbitrary to regard them as a distinct subcategory.
109 The intervener contends that the Board of Appeal was correct to confirm that the market in respect of the goods at issue is limited, and argues that the considerations relating to racing cars apply to all cars the manufacture of which requires several preparatory actions – of a technical, organisational and financial nature, more specifically – to be taken, which the intervener did in the present case.
110 As for the complaint that the Board of Appeal was wrong to find that the contested mark had been put to genuine use in respect of the category of ‘cars’ on the basis of the evidence relating to ‘racing cars’, it is, according to the intervener, out of time, as it has been raised for the first time before the Court. Moreover, the intervener contends that the Board of Appeal’s finding that the contested mark was used in respect of ‘cars’ was based on the findings that use had been shown in respect of ‘sports cars’ and ‘electric cars’ and that the Board of Appeal, in accordance with case-law, identified the subcategory of ‘cars’ within the category ‘motor vehicles for locomotion by land’.
111 It should be borne in mind that, under Article 58(2) of Regulation 2017/1001, where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor must be declared to be revoked in respect of those goods or services only.
112 In that regard, the Court has held that the provisions of Article 47(2) of Regulation 2017/1001 allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use of the mark has been established (i) are a limitation on the rights which the proprietor of the earlier trade mark gains from his or her registration and (ii) must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his or her range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him or her (judgment of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 51). The same considerations apply by analogy to the provisions of Article 58(2) of Regulation 2017/1001 relating to partial revocation.
113 According to the case-law, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in respect of a part of those goods or services affords protection only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong (see judgment of 10 December 2015, Sony Computer Entertainment Europe v OHIM – Marpefa (Vieta), T‑690/14, not published, EU:T:2015:950, paragraph 61 and the case-law cited).
114 However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category (judgments of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 45, and of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23).
115 While the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of that trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he or she has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. In that regard, in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (judgments of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 46; of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 24; and of 10 December 2015, Vieta, T‑690/14, not published, EU:T:2015:950, paragraph 62).
116 As regards the question whether goods are part of a coherent subcategory which is capable of being viewed independently, it is apparent from the case-law that, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service at issue is vital in directing their choices. Consequently, since consumers do employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a subcategory of goods or services (judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 29, and of 16 May 2013, Aleris v OHIM – Carefusion 303 (ALARIS), T‑353/12, not published, EU:T:2013:257, paragraph 22). In contrast, the nature of the goods at issue and their characteristics are not, as such, relevant to the definition of subcategories of goods or services (see judgment of 18 October 2016, August Storck v EUIPO – Chiquita Brands (Fruitfuls), T‑367/14, not published, EU:T:2016:615, paragraph 32 and the case-law cited).
117 In the present case, it is not disputed that the contested mark was not used for all of the goods in respect of which it was registered, the whole of the category ‘motor vehicles for locomotion by land’ in Class 12 in particular.
118 In that regard, the Board of Appeal held that the relevant subcategory in respect of which genuine use of the contested mark had been shown is that of ‘cars’, whereas the applicant submits, in essence, that that subcategory itself contains independent subcategories and the alleged use of a single subcategory, namely ‘racing cars’, is insufficient to show genuine use in respect of the whole category of ‘cars’.
119 In the first place, it is appropriate to examine the intervener’s argument that the applicant’s complaint is inadmissible, as it was not raised before the Board of Appeal.
120 In this respect, it must be recalled that the purpose of an action brought before the Court pursuant to Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. Pursuant to Article 95 of that regulation, the review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal. Furthermore, under Article 188 of the Rules of Procedure of the General Court, the parties’ pleadings may not alter the subject matter of the proceedings before the Board of Appeal (see judgment of 10 October 2006, Armacell v OHIM – nmc (ARMAFOAM), T‑172/05, EU:T:2006:300, paragraph 39 and the case-law cited).
121 Consequently, it must be assessed whether, by disputing for the first time before the Court the finding that genuine use of the contested mark had been shown in respect of ‘cars’, whereas the evidence related to ‘racing cars’ alone, the applicant has altered the subject matter of the dispute brought before the Board of Appeal.
122 In that regard, it must be noted that the dispute before the Board of Appeal consisted of the applicant’s request for revocation of the contested mark due to that mark not having been put to genuine use pursuant to Article 58(1)(a) of Regulation 2017/1001. Likewise, in accordance with Article 58(2) of that regulation, in the case of partial use of the contested mark, the rights of the proprietor of that mark will be declared to be revoked in respect of the goods concerned only. It follows that, in the context of the assessment of genuine use of the contested mark, it was for the Board of Appeal to assess whether the mark had been put to genuine use in respect of the goods for which it had been registered and, where partial use was established, identify independent subcategories of goods in accordance with the case-law cited in paragraph 113 above.
123 Nor did the fact that the applicant did not dispute the Cancellation Division’s findings on that point before the Board of Appeal deprive the applicant of the right to challenge, in the factual and legal context of the dispute before the Board of Appeal, the findings of that body on this point (see, to that effect, judgment of 10 October 2006, ARMAFOAM, T‑172/05, EU:T:2006:300, paragraph 42 and the case-law cited).
124 Clearly, the applicant’s complaint raised before the Court relating to the genuine use in respect of ‘cars’ does not depart from the context of the dispute as it was brought before the Board of Appeal. Indeed, the applicant merely questions that body’s findings and its reasoning on this point. It follows that the applicant has not altered the subject matter of the proceedings by that complaint, which is therefore admissible before the Court (see, to that effect, judgment of 10 October 2006, ARMAFOAM, T‑172/05, EU:T:2006:300, paragraph 43).
125 In the second place, it must be stated that, as is apparent from the findings set out above (see paragraphs 73 and 105 above), it is in respect of racing cars alone that the Board of Appeal was correct to find that the contested mark had been put to genuine use. Consequently, it is appropriate to assess whether racing cars are capable of constituting a subcategory within the meaning of the case-law cited in paragraph 116 above. The question whether sports cars and electric cars can constitute independent subcategories is not to be examined, in so far as the Board of Appeal’s findings relating to those two subcategories are vitiated by errors (see paragraphs 90 and 104 above).
126 Contrary to EUIPO’s claim, racing cars are capable of constituting a coherent subcategory, for, unlike cars, their purpose is not the same as that of vehicles intended to carry a driver and passengers. Those cars, as acknowledged by the Board of Appeal in paragraph 61 of the contested decision, are not intended to be driven on public roads and such use is even prohibited on account of the absence of type approval. Their purpose is therefore different from that of other cars.
127 In addition, EUIPO argues that there is a high degree of cross-over between racing cars and high-end sports cars for which success on the racing track is aimed at, and goes hand in hand with, enhancing prestige and reputation of the mark for road vehicles.
128 In that regard, it must be stated that that argument does not call into question the finding in paragraph 126 above that racing cars may constitute an independent category within the meaning of the case-law in paragraph 116 above, in that the purpose of that category is different from that of other types of cars, inter alia, sports cars. The fact that a car manufacturer is, on account of a certain amount of commercial complementarity, capable of broadening its car offer, going, inter alia, from sports cars to racing cars, does not affect the finding that racing cars are an independent category of cars. Moreover, on account of their difference in purpose, as is apparent from paragraph 126 above, the distinction between racing cars and sports cars is in no way arbitrary for the purposes of the case-law cited in paragraph 115 above and does not deprive the intervener of all protection in respect of goods which, without being identical in every way, are not substantively different from goods in respect of which genuine use has been shown, within the meaning of that same case-law.
129 It follows that, to the extent that genuine use of the mark has been established in relation to racing cars alone, which constitute an independent subcategory within the meaning of the case-law cited in paragraph 116 above, the Board of Appeal was wrong to find that genuine use had been shown in respect of cars in Class 12. On that basis, the second complaint of the third plea and the fourth plea must be upheld and the contested decision must be annulled to the extent that it upheld the registration of the contested mark in respect of ‘cars’ in Class 12, with the exception of ‘racing cars’, in respect of which registration must be upheld.
2. The application for alteration
130 Regarding the applicant’s second head of claim asking the Court to alter the contested decision by revoking the contested mark fully, it must be pointed out that the applicant asks, in essence, the Court to adopt the decision which the Board of Appeal should have taken. It must therefore be concluded that, by the second head of claim, the applicant is requesting alteration of the contested decision (see, to that effect, judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 67 and the case-law cited).
131 In that regard, it should be pointed out that the power of the Court to alter decisions, granted to the Court 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 that 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, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
132 In the present case, as is apparent from paragraph 90 above, in so far as the Board of Appeal’s finding relating to sports cars is vitiated by inadequate reasoning, the Court does not have all the elements available to it in order to take the decision that the Board of Appeal should have taken. It follows that the conditions of alteration are not satisfied, with the result that the applicant’s head of claim to that effect must be rejected.
IV. Costs
133 Under Article 134(3) of the Rules of Procedure, the parties are to bear their own costs, where each party succeeds on some and fails on other heads. However, if it appears justified in the circumstances of the case, the Court may order that one party, in addition to bearing its own costs, pay a proportion of the costs of the other party.
134 In the present case, as the applicant has been unsuccessful as regards ‘racing cars’ and EUIPO and the intervener have been unsuccessful as regards ‘cars’ other than ‘racing cars’, each party must be ordered to bear its own costs.
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 11 July 2019 (Joined Cases R 1861/2018‑2 and R 1840/2018‑2) to the extent that it upheld the registration of the European Union trade mark No 9262767 in respect of ‘cars’ in Class 12 other than ‘racing cars’;
2. Dismisses the action as to the remainder;
3. Orders each party to bear its own costs.
Tomljenović | Škvařilová-Pelzl | Nõmm |
Delivered in open court in Luxembourg on 23 September 2020.