JUDGMENT OF THE GENERAL COURT (Second Chamber)
24 January 2024 (*)
(EU trade mark – Revocation proceedings – EU figurative mark NOAH – Genuine use of the mark – Nature of use – Article 18(1), second subparagraph, point (a), and Article 58(1)(a) of Regulation (EU) 2017/1001 – Proof of genuine use – Article 95(2) of Regulation 2017/1001 – Article 19(1) and Article 10(7) of Delegated Regulation (EU) 2018/625 – Right to be heard)
In Case T‑562/22,
Noah Clothing LLC, established in New York, New York (United States), represented by W. Leppink, P. Trapman and C. Bey, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by C. Bovar and D. Hanf, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Yannick Noah, residing in Feucherolles (France), represented by A. Berthet, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, V. Tomljenović and W. Valasidis (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 8 September 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Noah Clothing LLC, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 July 2022 (Case R 504/2021‑1) (‘the contested decision’).
Background to the dispute
2 On 17 January 2007, the intervener, Mr Yannick Noah, filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3 The mark at issue designated goods in Classes 18, 25 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 corresponding for each of those classes to the following description:
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes, namely key wallets, briefcases, wallets, purses, not of precious metal; handbags, school bags and school satchels, tool bags (empty), rucksacks, shopping bags, bags for climbers, bags for campers, beach bags, travelling bags, garment bags for travel; Boxes of leather or leather board; leather thongs, leather straps; trimmings of leather for furniture, animal skins, hides, trunks and travelling bags, bags for packaging, umbrellas, parasols’;
– Class 25: ‘Clothing, sports jerseys, swimsuits, beachwear, bathing trunks, bathrobes, saris, bandanas, boas, stoles, headscarves, scarves, headbands, stockings, bibs of paper, braces, collar protectors, camisoles, hoods, belts, shawls, dressing gowns, sweaters, chasubles, socks, sock garters, shirts, jumpers (shirt fronts), collars (clothing), combinations (clothing), trousers, suits, aprons, earmuffs, neckties, clothing of leather, clothing of imitation leather, footwear uppers, shirt yokes, furs (clothing), gabardines, corsets, gloves, mittens, waistcoats, pullovers, knitwear, clothing, T-shirts, waterproof clothing, coats, parkas, pelerines, pelisses, stuff jackets, jackets, leggings, skirts; fancy-dress costumes, underwear, underclothing, underpants, bodies, brassieres, knickers, corselets, pyjamas, dressing gowns, footwear, boots, ankle boots, lace-up boots, slippers, football boots, beach shoes, sports shoes, studs for sports shoes, espadrilles, galoshes, slippers, sandals, ski boots, shoes; headgear, caps, bath caps, skull caps, berets, nightwear, suits (sportswear)’;
– Class 28: ‘Games and playthings; normal playing cards, gymnastic and sporting articles not included in other classes, gloves for games, rackets, balls for games, balloons; decorations for Christmas trees’.
4 On 11 February 2008, the mark at issue was registered as an EU trade mark under No 5620968.
5 On 7 June 2019, the applicant filed an application for revocation of the mark at issue on the basis of Article 58(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1) with EUIPO, on the ground that that mark had not been put to genuine use in the European Union within a continuous period of five years for all of the goods for which it had been registered.
6 On 16 October 2019, 9 March 2020 and 3 December 2020, the intervener submitted before the Cancellation Division a series of evidence of use of the mark at issue in relation to part of the goods, namely ‘leather and imitations of leather’ in Class 18 and ‘clothing, sports jerseys, sweaters, shirts, pants, clothing of leather, clothing of imitation leather, clothing, T-shirts, jackets, footwear, sports shoes, shoes, suits (sportswear)’ in Class 25.
7 On 26 January 2021, the Cancellation Division revoked the mark at issue in respect of all the registered goods with the exception of ‘sport casual shirts’ in Class 25.
8 On 19 March 2021, the intervener filed a notice of appeal with EUIPO against the decision of the Cancellation Division in so far as it had revoked the mark at issue. On 25 May 2021, he submitted his observations.
9 On 9 June 2021, EUIPO informed the intervener that the evidence submitted did not comply with Article 55 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), since the annexes were not labelled consecutively, and requested that he rectify the deficiency within one month. On 4 August 2021, after the expiry of the prescribed time limit, the intervener submitted the remedied evidence.
10 On 7 October 2021, the applicant filed a cross-appeal, under Article 68(2) of Regulation 2017/1001, seeking the annulment of the Cancellation Division’s decision in so far as it had dismissed the application for revocation in respect of ‘sport casual shirts’ in Class 25.
11 By the contested decision, the Board of Appeal partially upheld the appeal, dismissed the application for revocation with regard to the ‘polo shirts’ and ‘sweaters’ in Class 25, and dismissed the appeal as to the remainder as well as the cross-appeal. In particular, the Board of Appeal found that the mark at issue had not been expressly registered for ‘sweater vests’. Those goods fall, however, under the broader category of ‘sweaters’ in Class 25, for which the mark at issue is registered. It also noted that the evidence provided by the intervener proved genuine use of the mark at issue during the period from 7 June 2014 to 6 June 2019 (‘the relevant period’) for the goods ‘polo shirts’ and ‘sweaters’ in Class 25 in the relevant territory, namely the European Union. It then declared that the mark at issue remained registered for those goods.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision in so far as it rejects the application for a declaration of revocation with regard to the goods ‘polo shirts’ and ‘sweaters’ in Class 25;
– annul the contested decision in so far as it dismisses the cross-appeal;
– refer the case back to another Board of Appeal for reconsideration;
– order EUIPO to pay the costs.
13 At the hearing, the applicant declared that it was withdrawing its third head of claim, formal note of which was taken in the minutes of the hearing.
14 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
15 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
16 The applicant relies on three pleas in law, alleging, in essence, first, infringement of the right to a fair trial and the right to be heard, secondly, lack of genuine use of the mark at issue for the goods ‘polo shirts’ and ‘sweaters’ in Class 25 and, thirdly, lack of genuine use of the mark at issue for the goods ‘sport casual shirts’ in Class 25, in connection with the cross-appeal.
The first plea in law
17 The first plea in law alleges infringement of Article 95(2) of Regulation 2017/1001, read in conjunction with the third sentence of Article 19(1) and Article 10(7) of Delegated Regulation 2018/625 and with Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950.
18 That plea is based, in essence, on three complaints, the first of which relates to the consideration of evidence submitted out of time before the Cancellation Division, the second to the consideration of evidence remedied out of time before the Board of Appeal, and the third to the infringement of the right to be heard.
Consideration of evidence submitted out of time before the Cancellation Division
19 The Board of Appeal accepted the evidence submitted out of time by the intervener after the expiry of the time limit set by EUIPO, taking the view that it was relevant as supplementary evidence corroborating the initial evidence and that the stage of the proceedings did not preclude it from being taken into account.
20 The applicant complains that the Board of Appeal and the Cancellation Division incorrectly took into account evidence submitted out of time by the intervener before the Cancellation Division without there being any circumstance to justify the intervener’s delay in producing the evidence.
21 EUIPO and the intervener dispute the applicant’s claims.
22 It should be borne in mind that Article 95(2) of Regulation 2017/1001 provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties.
23 According to settled case-law, it follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation 2017/1001 and EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time (see judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 48 and the case-law cited).
24 By stating that EUIPO ‘may’ decide to disregard such evidence, Article 95(2) of Regulation 2017/1001 grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 49 and the case-law cited).
25 The exercise of discretion conferred on EUIPO by Article 95(2) of Regulation 2017/1001 is governed by Article 10(7) of Delegated Regulation 2018/625, applicable mutatis mutandis to the revocation proceedings under Article 19(1) of that delegated regulation. According to Article 10(7) of that delegated regulation, in deciding whether to accept indications or evidence submitted after the expiry of the prescribed time limit, which supplement those which have already been submitted before expiry of that time limit and relate to the same requirement laid down in paragraph 3 thereof, namely the place, time, extent and nature of use of the mark at issue, EUIPO is to take into account, in particular, the stage of proceedings and whether the indications or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the indications or evidence.
26 By contrast, according to Article 19(1) of Delegated Regulation 2018/625, if no proof of genuine use of the mark concerned is provided within the time limit set by EUIPO, EUIPO must, in principle, revoke that mark.
27 In the present case, it is common ground that the intervener submitted the first evidence of use of the mark at issue on 16 October 2019, within the time limit set by EUIPO, namely a copy of the licence agreement, a copy of a statement about sales revenue from the years 2015 to 2019, press articles, press releases, and technical product information documents.
28 It is, moreover, common ground that the items of evidence produced on 9 March 2020 before the Cancellation Division, namely the translation of a statement about sales revenue relating to clothing and footwear in the years 2015 to 2019, produced earlier in the course of the proceedings, a press article on the polo shirt marketed by the intervener, technical product information documents on certain goods covered by the mark at issue for the years 2017 to 2019, and invoices, are items of evidence additional to those initially produced and are, prima facie, relevant in the context of the dispute, which is not, moreover, formally disputed by the applicant, as is apparent from paragraph 48 of the application.
29 Similarly, the items of evidence produced on 3 December 2020, in particular, images of polo shirts, such as models ‘1822356 TENNIS PRO Polo France N 2 18 M new opti’ and ‘1822382 TENNIS PRO Polo France N2 18 M cobalt/n’, marketed by the intervener in 2015 and 2016, technical product information documents on sports shoes, sweater vests, polo shirts and trousers covered by the mark at issue and invoices dated between 2015 and 2018, are prima facie relevant items of evidence, complementary to those produced within the prescribed time limit, which the Board of Appeal was therefore also entitled to take into consideration.
30 Furthermore, the fact that the applicant disputes the evidence of use, filed within the prescribed time limit, by the proprietor of the mark at issue may justify the latter producing further evidence, together with its observations (see, to that effect, judgment of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 36). That is the case here, since the further evidence produced on 9 March and 3 December 2020 was produced in response to the applicant’s observations disputing the evidence initially produced by the intervener within the prescribed time limit. It was therefore without manifest error that the Board of Appeal considered that its late submission during the proceedings did not prevent it from being taken into consideration. The Board of Appeal was therefore entitled to take it into consideration in support of its assessment, pursuant to Article 10(7) of Delegated Regulation 2018/625.
31 It follows that the first complaint raised in support of the first plea must be rejected as unfounded.
Consideration of the evidence rectified out of time before the Board of Appeal
32 The Board of Appeal considered that it was not necessary to rule on the admissibility of the documents produced by the intervener in his statement setting out the ground of appeal, filed on 25 May 2021. After finding that the intervener had not rectified the deficiency in the numbering of the documents annexed to his appeal until after the prescribed time limit, namely 4 August 2021, the Board of Appeal noted that those documents were, in any event, identical to the evidence that the intervener had already submitted before the Cancellation Division, which could be taken into account in its entirety, notwithstanding the late submission of some of it.
33 The applicant submits that the Board of Appeal infringed, in essence, its right to a fair trial by granting the intervener, in practice, an extended term for the submission of evidence, first, by allowing him to remedy the evidence at the stage of his appeal and, secondly, by accepting, without valid reason, the evidence so remedied even though it was submitted after the expiry of the prescribed time limit for rectifying the deficiency, namely 4 August 2021.
34 EUIPO and the intervener dispute the applicant’s arguments.
35 As previously mentioned in paragraph 9 above, on 9 June 2021, EUIPO informed the intervener that the evidence submitted did not comply with Article 55 of Delegated Regulation 2018/625. It then asked him to rectify, within one month, the deficiency as regards the numbering of the annexes attached to the observations submitted on 25 May 2021. On 4 August 2021, after the expiry of the prescribed time limit, the intervener submitted the remedied evidence.
36 In that regard, suffice it to note, as the Board of Appeal did, that the documents submitted out of time are identical to those that were already submitted to and accepted by the Cancellation Division.
37 Therefore, the Board of Appeal correctly found that it was not necessary to rule on the admissibility of those documents, without infringing the applicant’s right to a fair trial.
38 The second complaint relied on in support of the first plea must be rejected as unfounded.
Infringement of the right to be heard in that the applicant was deprived of the opportunity to comment on the evidence submitted by the intervener on 3 December 2020
39 The Board of Appeal made clear that it could take into account the evidence submitted by the intervener on 3 December 2020, without infringing the applicant’s right to be heard, given that the applicant had commented on that evidence in its observations in response to the appeal and in its statement setting out the grounds of the cross-appeal. Any possible infringement of the applicant’s right to be heard by the Cancellation Division was thus dealt with in the appeal proceedings.
40 The applicant claims that the Cancellation Division and the Board of Appeal infringed its right to be heard as regards the evidence submitted out of time by the intervener before the Cancellation Division on 3 December 2020. It maintains that the opportunity that it had to submit observations on that evidence at the appeal stage did not make it possible to remedy the infringement by the Cancellation Division of its right to a fair trial and to equal treatment, since it was deprived, unlike, in essence, the intervener, of a ‘true “second chance”’ before the Board of Appeal.
41 EUIPO contends that that complaint is inadmissible in so far as it concerns the lawfulness of the Cancellation Division’s decision. EUIPO and the intervener also maintain that that complaint is unfounded.
42 In accordance with Article 72(1) of Regulation 2017/1001, actions may be brought before the EU judicature only against decisions of the Boards of Appeal. Therefore, the applicant’s complaint alleging infringement of the right to be heard in that the Cancellation Division did not give it the opportunity to comment on the evidence filed on 3 December 2020 must, in any event, be rejected as ineffective in the context of the present action before the Court (see, to that effect, judgment of 25 January 2018, SilverTours v EUIPO (billiger-mietwagen.de), T‑866/16, not published, EU:T:2018:32, paragraph 19 and the case-law cited). The same applies to the complaints, assuming they are separate, alleging infringement, as a result of the infringement of its right to be heard, of its right to a fair trial or to equal treatment.
43 As regards the complaint in so far as it is directed against the contested decision, it must be stated that the applicant was given the opportunity to comment on the evidence filed on 3 December 2020, since it responded to it in its observations on the appeal and in the cross-appeal. Therefore, no infringement of its right to be heard can be found in that regard before the Board of Appeal.
44 In those circumstances, the third complaint relied on in support of the first plea must be rejected as, in part, ineffective and, in part, unfounded and, consequently, the complaints, assuming they are separate, relating to the applicant’s right to a fair trial and to equal treatment must also be rejected.
45 It follows from the foregoing that the third complaint in the first plea must be rejected and, consequently, the first plea must be rejected in its entirety.
The second plea in law
46 The second plea in law alleges, in essence, infringement of Article 58(1)(a) of Regulation 2017/1001, read in conjunction with point (a) of the second subparagraph of Article 18(1) thereof, on the grounds of lack of genuine use of the mark at issue for ‘polo shirts’ and ‘sweaters’ in Class 25.
47 That plea is divided into four parts.
Preliminary observations
48 It must be pointed out at the outset that Article 58(1)(a) of Regulation 2017/1001 provides, inter alia, that the rights of the proprietor of an EU trade mark must be declared to be revoked if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
49 According to settled case-law, there is genuine use of a trade mark, within the meaning of Article 58(1)(a) of Regulation 2017/1001, 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 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 38 and the case-law cited).
50 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real in the course of trade, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see order of 11 September 2019, Camomilla v EUIPO, C‑68/19 P, not published, EU:C:2019:711, paragraph 12 and the case-law cited).
51 Under Article 10(3) and (4) of Delegated Regulation 2018/625, applicable to revocation proceedings pursuant to Article 19(1) of that delegated regulation, proof of use of a mark must consist of indications concerning the place, time, extent and nature of the use of the mark and is limited to the submission of supporting documents and items such as, for example, packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 97(1)(f) of Regulation 2017/1001.
52 In that regard, in so far as the time and place of use are not disputed in the context of the present proceedings, it is necessary to examine the evidence provided and the arguments put forward by the parties in so far as they relate to the nature and extent of the use of the mark at issue.
The first part of the second plea, alleging use of the mark at issue in a modified form
53 The Board of Appeal observed that the majority of the pictures in the evidence submitted by the intervener showed the following sign:
54 In that regard, the Board of Appeal found that the addition of the upper-case letter ‘Y’ followed by a full stop before the word element ‘noah’ did not alter the distinctive character of the mark at issue. First, that letter is already present in the figurative element of that mark and does not therefore constitute a completely new element. Secondly, the addition of the first letter of the given name to the surname Noah does not change the distinctive character of the mark at issue, since that mark as used still refers to the same person. Surnames usually have a stronger distinctive character than given names and, therefore, in both forms of the mark at issue, the co-dominant elements are the figurative element and the word ‘noah’. The latter is likely to be perceived by consumers as a surname because, in the clothing sector, the use of surnames is commonplace.
55 The applicant claims that the use of the upper-case letter ‘Y’ followed by a full stop alters the distinctive character of the mark at issue as registered, within the meaning of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001. In particular, the word element ‘Y. Noah’ in the mark at issue as it is used clearly refers to Mr Noah, unlike the word element ‘noah’ in the mark at issue as it was registered, which might refer both to a surname and to a given name. In support of its argument, the applicant relies on the decision of the Cancellation Division of EUIPO of 26 January 2021 (application for revocation No C 36 026), in which the Cancellation Division recognised that the omission of the word element ‘yannick’ significantly altered the distinctive character of the registered word mark YANNICK NOAH.
56 EUIPO and the intervener dispute the applicant’s claims.
57 According to point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor, constitutes use of the EU trade mark.
58 According to the case-law, the purpose of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgment of 27 February 2014, Lidl Stiftung v OHIM – Lídl Music (LIDL), T‑266/12, not published, EU:T:2014:98, paragraph 49 and the case-law cited).
59 Therefore, a finding that the distinctive character of the mark as registered has been altered requires an assessment of the distinctive and dominant character of the added elements, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the various elements within the arrangement of the mark (see judgment of 29 April 2020, Lidl Stiftung v EUIPO – Plásticos Hidrosolubles (green cycles), T‑78/19, not published, EU:T:2020:166, paragraph 67 and the case-law cited).
60 In the present case, it is necessary to assess whether the distinctive character of the mark at issue as it was registered was altered by the addition of further elements, such as the first letter of the given name of the intervener, namely the upper-case letter ‘Y’, followed by a full stop.
61 In that regard, first, the upper-case letter ‘Y’ followed by a full stop before the word ‘noah’ constitutes a repetition of an element already present in the figurative element of the mark at issue, which is described by its proprietor as consisting, inter alia, of an upper-case letter ‘Y’ in black. Secondly, that letter is placed below the figurative element, which dominates the overall impression both of the mark as registered, in conjunction with the word ‘noah’, and the modified mark, with the result that, although it is not negligible, it occupies a secondary position in the perception of that mark.
62 In addition, the use of signs consisting of surnames is common in the clothing sector (judgment of 20 February 2013, Caventa v OHIM – Anson’s Herrenhaus (B BERG), T‑631/11, not published, EU:T:2013:85, paragraph 64). Therefore, as regards the conceptual meaning of the mark at issue, the word element ‘noah’ may be perceived, both in the registered form and the modified form, as a surname that refers to a specific person, namely the intervener.
63 In any event, the applicant itself acknowledges, in paragraph 56 of the application, that the word element ‘noah’, as it appears in the registered form and in the modified form of the mark at issue, may be perceived as a surname.
64 Lastly, it must be noted, as EUIPO did, that the addition of the first letter of the given name merely reinforces the reference to the intervener.
65 Consequently, it must be held that the mark at issue in its form used in the course of trade may be regarded as broadly equivalent to the mark at issue as registered, since the added element consisting of the upper-case letter ‘Y’ followed by a full stop is neither distinctive nor dominant in the configuration of the modified mark. In those circumstances, such an element cannot be perceived by the relevant public as capable of altering the distinctive character of the mark at issue.
66 As regards the decision of the Cancellation Division relied on by the applicant and referred to in paragraph 55 above, it should be noted that the Boards of Appeal are not bound by the decisions of lower adjudicating bodies of EUIPO (see judgment of 19 September 2019, Showroom v EUIPO – E-Gab (SHOWROOM), T‑679/18, not published, EU:T:2019:631, paragraph 96 and the case-law cited). In any event, that decision is irrelevant in the present case. The omission of the word ‘yannick’ from the word mark YANNICK NOAH is likely to weaken the link between that mark and the intervener. On the contrary, in the present case, the addition of the upper-case letter ‘Y’ followed by a full stop, which represents the initial of the intervener, reinforces, as has been pointed out in paragraph 64 above, the reference to the proprietor of the mark at issue.
67 In the light of the foregoing, the Board of Appeal correctly concluded that the addition of the upper-case letter ‘Y’ followed by a full stop does not alter the distinctive character of the mark at issue.
68 The first part of the second plea must be rejected.
The third part of the second plea, alleging misinterpretation of the term ‘sweaters’
69 In the light of the applicant’s arguments in support of the second and third parts of the present plea, the Court considers it appropriate to examine the third part first.
70 The Board of Appeal found that the mark at issue had not been expressly registered for ‘sweater vests’. Those goods fall, however, under the broader category of ‘sweaters’ in Class 25, for which the mark at issue is registered. The Board of Appeal added that the fact that those goods are sleeveless did not permit the inference that they fell within a subcategory of ‘sleeveless sweaters’. The use of the latter is therefore sufficient to establish use for the entire category of ‘sweaters’ in Class 25.
71 The applicant claims that the Board of Appeal misinterpreted the term ‘sweater’ in relation to the goods for which the mark at issue was registered. The applicant submits, in essence, that the ‘sweater vests’ marketed by the intervener are sports articles that should be classified as ‘spencers’, which are very specific goods that do not cover the entire category of ‘sweaters’, included in Class 25. In those circumstances, the Board of Appeal committed an error of assessment by considering that the use of ‘sweater vests’ was sufficient to establish use for the broader category of ‘sweaters’.
72 Moreover, the applicant maintains that genuine use of the mark at issue for those goods does not follow from the intervener’s intentions in so far as the applications for the French word marks NOAH and Y. NOAH filed by the intervener between 2015 and 2020 do not refer to ‘sweaters’.
73 EUIPO and the intervener dispute those arguments.
74 It should be borne in mind that, according to the case-law, as regards goods or services which form part of a broad category, which may be subdivided into several independent subcategories, it is necessary to require the proprietor of the earlier trade mark to provide proof of genuine use of that trade mark for each of those independent subcategories (see, to that effect, judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 43). 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 (judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45).
75 With regard to the relevant criterion or criteria to apply for the purposes of identifying a coherent subcategory of goods or services capable of being viewed independently, the criterion of the purpose and intended use is an essential criterion for defining a subcategory of goods or services (see, to that effect, judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 44 and the case-law cited).
76 In the present case, it should be noted that ‘sweaters’ are clothes intended to cover the upper part of the body, whether or not they have sleeves. The absence of sleeves does not therefore alter either the purpose or the intended use of the goods in the category of ‘sweaters’. ‘Sleeveless vests’ cannot, therefore, constitute an independent subcategory within the broader category of ‘sweaters’ in Class 25.
77 Moreover, the applicant has neither established nor even claimed that the purpose of a ‘sleeveless vest’ is different from that of a ‘sweater’. The fact that a sleeveless vest may be ‘knitted’ or that it is ‘most of the time closed by buttons’, which may also be the case for a sweater, is not sufficient to justify the existence of a coherent subcategory capable of being viewed independently. Similarly, the applicant has not provided any explanation as to the existence of a specific purpose or intended use of a ‘spencer’ that is different from that of a ‘sweater’. In that regard, it confined itself to classifying such a product as a ‘sports article’, a ‘single and very specific product’, without identifying the characteristics capable of defining an independent subcategory within the broader category of ‘sweaters’, given that a ‘sweater’ may also be used to cover the upper part of the body during a sporting activity.
78 Furthermore, the applicant’s argument that the genuine use of the mark at issue for ‘sweaters’ is also not the result of the intervener’s intentions in so far as he filed applications for French trade marks that do not cover such goods is irrelevant for the purposes of assessing whether there has been genuine use of the mark at issue for those goods. The marks on which the applicant relies are French word marks and do not correspond to the mark at issue, which is an EU figurative mark. The use of those marks does not relate to the same sign or the same territory. They cannot therefore be taken into account in assessing the extent to which the mark at issue has been used and the actual intentions of its proprietor to use it.
79 In those circumstances, the Board of Appeal was fully entitled to find that the fact that ‘sweater vests’ did not have sleeves did not make it possible to identify an independent subcategory within the broader category of ‘sweaters’ in Class 25.
80 Accordingly, the third part of the second plea must be rejected.
The second part of the second plea, alleging errors in the assessment of the evidence of use for ‘polo shirts’ and ‘sweaters’
81 The Board of Appeal found that the only goods for which the invoices and the statement about sales revenue could be cross-referenced with depictions of goods bearing the mark at issue were ‘polo shirts’ and ‘sweater vests’. The Board of Appeal relied on depictions of the goods listed in that statement and including, for the goods concerned, the number or description of the corresponding item.
82 The applicant claims that the Board of Appeal misinterpreted the evidence of use provided by the intervener concerning the relevant period for ‘polo shirts’ and ‘sweaters’.
83 First, it stresses that the intervener did not submit any invoice for the polo shirt with the reference 1822382 TENNIS PRO Polo France N2 18 M cobalt/n. Moreover, the Board of Appeal incorrectly accepted the cross-referencing of the dated invoices with the undated drawings as evidence of use of the mark at issue.
84 Secondly, the applicant submits that the evidence is insufficient in so far as the depictions of the goods are drawings and not photographs, and therefore it cannot be ruled out that such depictions differ from the goods for which use is claimed. In that regard, it criticises the intervener’s inability to submit catalogues with a representation of the goods in question.
85 EUIPO and the intervener dispute the applicant’s arguments.
86 In order to examine, in a given case, whether use of the mark at issue is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case, which implies a certain interdependence between the factors taken into account (judgment of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 36). Thus, each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and the most coherent meaning. In the context of such an analysis, it cannot be ruled out that a grouping of items of evidence may allow the necessary facts to be established, even if each of those items, individually, would be insufficient to prove the accuracy of those facts (see, to that effect, judgment of 6 March 2014, Anapurna v OHIM – Annapurna (ANNAPURNA), T‑71/13, not published, EU:T:2014:105, paragraph 45; see also, by analogy, judgment of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 36).
87 In the present case, it must be observed that the absence of the invoices alleged by the applicant for a specific product, namely the polo shirt with the reference 1822382 TENNIS PRO Polo France N2 18 M cobalt/n, does not preclude a finding that there has been genuine use of the mark at issue for that product. Proof of use requires an overall analysis and cannot be limited to the analysis of a single piece of evidence to call into question the global assessment. Although no invoice has been produced for that model of polo shirt, it appears in the statement about sales revenue and in the other evidence provided by the intervener, namely a depiction produced in Annex 6.
88 Furthermore, the applicant does not claim that the intervener did not provide invoices for the other ‘polo shirts’ and ‘sweater vests’ referred to by the Board of Appeal in support of its reasoning. It cannot therefore validly dispute the assessment resulting from the cross-references made by the Board of Appeal between the invoices produced and the representation of the majority of the goods.
89 In those circumstances, the argument based on the failure to produce invoices for one of the polo shirts marketed by the intervener is not sufficient to invalidate the Board of Appeal’s assessment that ‘polo shirts’ and ‘sweater vests’ were the only goods for which the invoices and the statement about sales revenue could be cross-referenced with depictions of goods bearing the mark at issue.
90 Furthermore, it is not disputed that the model of polo shirt or sweater vest marketed by the intervener is referenced by an article number or identified by a description in the documents produced by the intervener. Although the applicant submits that ‘sometimes, products with the same product number are being updated over a period of time’, and irrespective of the exact scope of its statement, it does not establish this. In those circumstances, the fact that the evidence depicting the product in question is undated does not preclude the possibility of cross-referencing the invoices produced with the article numbers or the description of the goods in question in order to establish the sales figures for those goods during the relevant period referred to in those invoices. Therefore, the applicant’s argument that it is impossible to cross-reference the dated invoices with the undated drawings has no bearing on the Board of Appeal’s assessment.
91 Lastly, as regards the applicant’s claim that the evidence for ‘polo shirts’ and ‘sweaters’ is insufficient, in so far as the depictions of the goods are drawings and not photographs, it should be stated that the fact that the product is represented graphically and not photographically is not sufficient to invalidate the Board of Appeal’s assessment based on the description of the product or on its article number.
92 The lack of a catalogue complained of by the applicant is also irrelevant since the Board of Appeal relied on the identification details of the goods in question in order to assess, by targeting the relevant invoices for those goods, the sales figure achieved for the relevant period.
93 In that regard, as EUIPO correctly observes, as regards the assessment of genuine use for ‘polo shirts’ and ‘sweaters’, the Board of Appeal’s analysis is not based on each item of evidence, considered in isolation, but is based on an overall assessment of all the evidence made available to it.
94 The second part of the second plea must therefore be rejected.
The fourth part of the second plea, alleging incorrect assessment of the extent of use of the mark at issue
95 The Board of Appeal found that the documents taken as a whole proved a sufficient extent of use of the mark at issue for ‘polo shirts’ and ‘sweaters’ in Class 25. In paragraph 73 of the contested decision, the Board of Appeal referred to the statement about sales revenue in the years 2015 to 2019. According to the Board of Appeal, throughout the relevant period, the total sales amounted to EUR 87 302.79 for ‘polo shirts’ and EUR 3 446.08 for ‘sweater vests’. The sales figures are supported by invoices and by advertisement campaigns and press articles. Moreover, the relatively low sales figures are, again according to the Board of Appeal, justified by the fact that the mark at issue was used for a limited edition of clothing. The use of the mark at issue was regular and concerned a long period of time so that it served a real commercial purpose.
96 The applicant claims that the Board of Appeal did not correctly assess the extent of use of the mark at issue for ‘polo shirts’ and ‘sweaters’. In particular, it states that, in the economic sector of fashion and sports clothing, the sales volumes, namely 1 768 polo shirts and 127 sweater vests allegedly sold in five years, are too low to prove genuine use of the mark at issue. Moreover, according to the applicant, the intervener did not provide any information on royalties received from his exclusive licensee, Le Coq Sportif, which supports the conclusion that there is no genuine use.
97 EUIPO and the intervener dispute those arguments.
98 As regards the extent of use, which the applicant calls into question in the present case by means of its argument relating to the sales volumes, it must be borne in mind that the question whether use is quantitatively sufficient to maintain or create market share for the goods or services protected by the mark depends on a number of factors and on a case-by-case assessment. The characteristics of those goods and services, the frequency or regularity of the use of the trade mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, or evidence of use which the proprietor is able to provide, are among the factors which may be taken into account (see judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 71 and the case-law cited).
99 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 is genuine or not. A de minimis rule, which would not allow EUIPO or, following the bringing of an action, the Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (see, to that effect, order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 25). Thus, when it serves a real commercial purpose, in the circumstances referred to in paragraphs 50 and 51 above, even minimal use of the trade mark can be sufficient to establish genuine use (see, to that effect, order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 27).
100 In interpreting the concept of genuine use, account must be taken of the fact that the rationale for the requirement that the mark at issue 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).
101 It should be added, however, that the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel possible doubts as to its genuineness (see, to that effect, judgment of 18 January 2011, Advance Magazine Publishers v OHIM – Capela & Irmãos (VOGUE), T‑382/08, not published, EU:T:2011:9, paragraph 31). Thus, the fact that commercial volume achieved under the mark at issue was not high may be offset by the fact that use of the mark was extensive or regular, and vice versa (see judgment of 15 September 2011, centrotherm Clean Solutions v OHIM – Centrotherm Systemtechnik (CENTROTHERM), T‑427/09, EU:T:2011:480, paragraph 28 and the case-law cited).
102 In the present case, in the first place, as regards the extent of use of the mark at issue for ‘polo shirts’, it may be noted that the sales revenue represents an amount of EUR 87 302.79 and corresponds to a sales volume of 1 940 articles, and not 1 768 articles, contrary to the applicant’s contention, over a period of five years, namely 172 in 2015, 878 in 2016, 360 in 2017, 187 in 2018 and 343 in 2019. Such volumes appear sufficient to constitute genuine use in view, in particular, of the strategy of marketing limited editions of polo shirts. Furthermore, those sales revenues show regular use of the mark at issue throughout the relevant period. Moreover, the marketing of the polo shirts under the mark at issue during the relevant period is supported by advertising campaigns and press articles. All of those elements are therefore sufficient to establish genuine use of the mark at issue for ‘polo shirts’.
103 In the second place, as regards the extent of use of the mark at issue for ‘sweaters’, it may be noted that the sales revenue represents an amount of EUR 3 446.08 and corresponds to a sales volume of 127 articles over a period of three years, namely 92 articles in 2017, 31 articles in 2018 and 4 articles in 2019.
104 It follows from the case-law that it is sufficient that a trade mark should have been put to use during a part of the relevant period to establish genuine use (see, to that effect, judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 45). In the present case, the mark was used to market sweaters for a continuous period of three years, which represents more than half of the relevant period and constitutes a sufficiently long period to find use that objectively is such as to create or preserve an outlet for the goods in question.
105 Even though it is true that the amount of sales of ‘sweaters’, namely EUR 3 446.08, is relatively low, it must be borne in mind that, in accordance with the case-law referred to in paragraph 100 above, the purpose of the requirement of genuine use is not to assess commercial success of an undertaking or review its economic strategy, nor is it to restrict trade mark protection to the case where large-scale commercial use has been made of the marks. Likewise, as is apparent from the case-law cited in paragraph 99 above, even minimal use can 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 share for the goods or services protected by the mark in question.
106 In the light of the relatively constant marketing of the sweaters over a period of three years during the relevant period and the intervener’s marketing strategy consisting of a limited edition of clothing, the relatively low volume of sales of those sweaters, viewed in that context, is not capable of establishing that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (see, to that effect, judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 49).
107 Furthermore, as regards the applicant’s claim that the intervener’s failure to produce information on the royalties received from his exclusive licensee, Le Coq Sportif, constitutes an indication that the mark has not been put to genuine use, it should be noted that, in EU trade mark law, the principle of the unfettered adduction of evidence, which confers on the parties the possibility to produce before the EU judicature any evidence lawfully obtained that they consider relevant to support their arguments, applies. That unfettered adduction of evidence contributes to guaranteeing the parties’ right to an effective remedy enshrined in Article 47 of the Charter of Fundamental Rights of the European Union (see judgment of 16 December 2020, H.R. Participations v EUIPO – Hottinger Investment Management (JCE HOTTINGUER), T‑535/19, not published, EU:T:2020:614, paragraph 65 and the case-law cited). It follows that the EU judicature must rule on the merits of the action on the basis of evidence freely and actually produced by the parties and not by drawing conclusions from the failure to produce a specific piece of evidence.
108 In the light of the foregoing considerations, the fourth part of the second plea and, consequently, the second plea as a whole must be rejected.
The third plea in law
109 The present plea alleges, in essence, infringement of Article 58(1)(a) of Regulation 2017/1001, in relation to the cross-appeal brought by the applicant on 7 October 2021, on the grounds of lack of genuine use of the mark at issue for ‘sport casual shirts’.
110 The applicant claims that the Board of Appeal incorrectly dismissed its cross-appeal in relation to ‘sport casual shirts’, even though it had established the reasons why there had been no genuine use of the mark at issue for that specific category.
111 EUIPO and the intervener dispute the applicant’s claims.
112 As mentioned in paragraph 10 above, the applicant filed a cross-appeal requesting the annulment of the decision of the Cancellation Division in so far as it had dismissed the application for revocation in respect of ‘sport casual shirts’.
113 It is apparent from paragraph 10 of the contested decision that the use of the words ‘sport casual shirts’ by the Cancellation Division corresponds to the use of the word ‘polo shirts’ by the Board of Appeal.
114 The applicant merely refers in support of its third plea to its arguments in support of its first and second pleas in law. Since it follows from the analysis of the first two pleas in law that the Board of Appeal was fully entitled to find that the proprietor of the mark at issue had established genuine use of the mark at issue for ‘polo shirts’ as a subcategory of the broader category of ‘shirts’ in Class 25, it must be held that the Board of Appeal correctly dismissed the cross-appeal by concluding in the contested decision that genuine use had been established by the intervener for the goods ‘polo shirts’.
115 Consequently, the third plea must be rejected as unfounded and, as a result, the action must be dismissed in its entirety.
Costs
116 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.
117 Since a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Noah Clothing LLC to pay the costs.
Marcoulli | Tomljenović | Valasidis |
Delivered in open court in Luxembourg on 24 January 2024.
V. Di Bucci | | M. van der Woude |