JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
15 November 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark INCRUISES – Earlier EU figurative mark INTERCRUISES SHORESIDE & PORT SERVICES – Relative ground for refusal – Article 8(1)(b) of Regulation (EU) 2017/1001 – Genuine use of the earlier mark – Article 47(2) and (3) of Regulation 2017/1001)
In Case T‑780/22,
TUI Holding Spain, SLU, established in Palma de Mallorca (Spain), represented by H. Fangmann, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
inCruises International LLC, established in San Juan (Puerto Rico),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse and I. Dimitrakopoulos (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, TUI Holding Spain, SLU, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 September 2022 (Case R 1081/2021-2) (‘the contested decision’).
Background to the dispute
2 On 11 March 2019, the other party to the proceedings before the Board of Appeal, inCruises International LLC, filed an application for registration of an EU trade mark with EUIPO for the word sign INCRUISES.
3 The mark applied for covered services in Classes 35 and 39 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:
– Class 35: ‘Membership club services in the nature of providing discounts to members in the field of travel, namely, cruises’;
– Class 39: ‘Providing travel management services’.
4 On 9 September 2019, the predecessor in title to the applicant, Hotelbeds Spain, SLU, filed a notice of opposition to registration of the mark applied for in respect of all the services referred to in paragraph 3 above.
5 The opposition was based on the following earlier EU figurative mark:
6 The earlier mark was registered on 21 February 2006 as an EU trade mark under No 4285541 and covered services in Classes 39 and 43 corresponding, for each of those classes, to the following description:
– Class 39: ‘Shipping of passengers and goods; packaging, storage and warehousing of goods; delivery of goods; freight forwarding; transport brokerage; cargo loading and unloading; haulage services, logistics and distribution; shipping agents’ services; shipping agents; transportation and storage information; consultancy relating to transport, logistics and distribution; services of a travel agency’;
– Class 43: ‘Services provided by persons or establishments whose aim is to prepare food and drinks for consumption, as well as providing accommodation, board and meals in hotels, boarding houses and other establishments that provide temporary lodging; booking accommodation for travellers, provided mainly by travel agencies or brokers’.
7 The applicant was assigned the rights to the earlier mark by Hotelbeds Spain, SLU, and has therefore been, since 22 December 2020, the proprietor of that mark.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) 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).
9 Following the request made by the other party to the proceedings before the Board of Appeal, EUIPO invited the applicant to adduce proof of genuine use of the earlier mark relied on in support of the opposition. The applicant complied with that request within the period prescribed.
10 On 3 June 2021, the Opposition Division upheld the opposition in its entirety and refused registration of the mark applied for in respect of all the services concerned, finding that genuine use of the earlier mark during the relevant period, namely from 11 March 2014 to 10 March 2019 inclusive, in the relevant territory had been proved for ‘services of a travel agency’ in Class 39, and that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
11 On 20 June 2021, inCruises International LLC filed a notice of appeal with EUIPO against the Opposition Division’s decision.
12 By the contested decision, the Board of Appeal upheld the appeal and rejected the opposition in its entirety on the ground that the evidence produced by the applicant, considered as a whole, was not sufficient to prove that the earlier mark had been put to genuine use in the European Union during the relevant period for the services covered by that mark.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
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.
Law
Substance
15 In support of its action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 47(2) and Article 33(5) of Regulation 2017/1001 in so far as the Board of Appeal did not properly assess the evidence produced by the applicant concerning genuine use of the earlier mark and, second, infringement of Article 8(1)(b) and Article 33(5) of that regulation in so far as the Board of Appeal erred in law in its assessment of the likelihood of confusion between the marks at issue.
The first plea, alleging infringement of Article 47(2) and Article 33(5) of Regulation 2017/1001
16 The applicant argues that the Board of Appeal misapplied Article 47(2) of Regulation 2017/1001 and submits that the Board of Appeal did not properly assess the evidence and erred in finding that there had been no genuine use of the earlier mark.
17 EUIPO disputes the applicant’s arguments.
18 Article 47(2) of Regulation 2017/1001 provides that, if the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition is to furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided that the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition is to be rejected.
19 The requirement that there be genuine use of an EU trade mark must concern the goods or services ‘in respect of which it is registered’. Article 18(1) and Article 58(1)(a) of Regulation 2017/1001 do not indicate that use of a mark in connection with goods or services similar to those in respect of which it is registered can be regarded as genuine use of the mark in question (see, to that effect, judgment of 28 June 2023, C. & S. v EUIPO – Scuderia AlphaTauri (CS jeans your best fashion partner), T‑645/22, not published, EU:T:2023:363, paragraph 37).
20 In addition, there is genuine use of a trade mark where it 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).
21 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, Deutsche Rockwool Mineralwoll v OHIM – Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 22 and the case-law cited).
22 As to the extent or scale of the use to which the earlier 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).
23 Furthermore, it is necessary to carry out a global assessment which takes into account all the relevant factors of the particular case and entails a degree of interdependence between the factors taken into account (judgment of 8 July 2020, Euroapotheca v EUIPO – General Nutrition Investment (GNC LIVE WELL), T‑686/19, not published, EU:T:2020:320, paragraph 35).
24 Furthermore, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28, and of 8 July 2020, GNC LIVE WELL, T‑686/19, not published, EU:T:2020:320, paragraph 35). Under Article 10(3) and (4) 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 proof of use of a trade mark must concern the place, time, extent and nature of use of that mark and is to be limited, in principle, to the submission of supporting documents and items such as 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.
25 It is in the light of those considerations that the applicant’s complaints must be examined.
26 In the present case, the Board of Appeal regarded the period from 11 March 2014 to 10 March 2019 as the relevant five-year period in respect of which the applicant was required to prove genuine use of the earlier mark, which the parties do not dispute.
27 In order to prove genuine use of the earlier mark, the applicant submitted, inter alia, the following evidence during the administrative proceedings:
– a screenshot from the Bloomberg website which gives a short description of Intercruises Shoreside & Port Services, SL. The document is in English and dated 3 September 2020;
– some screenshots from ‘www.intercruises.com’ containing information about the services offered by Intercruises Shoreside & Port Services. Those documents are in English and the earlier figurative mark appears on them. They are dated 2005, 2006, 2012, 2018 and 2020;
– examples of international and local awards received by Intercruises Shoreside & Port Services for service quality and innovation, inter alia in the field of shore excursions. The documents are in English and cover the period between 2010 and 2019;
– advertisements published in specialised magazines in the cruise sector and invoices relating to those advertisements. The documents contain the earlier figurative mark and are partly in Spanish and English. They are dated September 2014, March 2017, March 2018 and March 2019;
– a number of invoices issued by legal entities operating in the European Union and worldwide, which contain the earlier figurative mark and date between 22 July 2014 and 24 June 2020. They are all in English;
– a presentation about Intercruises Shoreside & Port Services by its Regional Director for Northern Europe and two catalogues forming part of an internal newsletter. All of those documents are in English and contain the earlier figurative mark. They are dated November and December 2014;
– a press release from TUI Group’s website (www.tuigroup.com) concerning the acquisition by TUI Group of Destination Management from Hotelbeds Group. The document is in English and dated 2 August 2018;
– some printouts from ‘www.google.com’ showing search results on the Google search engine for the term ‘intercruises shoreside & port services’. Those documents are in English and dated 21 May 2020;
– an invoice for the participation of Intercruises Shoreside & Port Services as an exhibitor, and for stand rental, at the Seatrade Europe Cruise & River Cruise Convention, held from 9 to 11 September 2015, that undertaking having sponsored that event and been represented on the conference programme. A printout of pages from a website is annexed. The documents are in English and contain the earlier figurative mark.
28 In paragraphs 22 to 29 of the contested decision, the Board of Appeal found, in essence, that the evidence produced by the applicant was insufficient to prove use of the earlier mark in relation to one of the specific services covered by that mark. More specifically, the Board of Appeal found that the services mentioned in the evidence of use were restricted to services supporting the cruise tourism industry with ground handling and port agency services, which were not ‘services of a travel agency’ in Class 39. In that regard, the Board of Appeal observed that there were other services in Class 39, such as ‘ground support passenger handling services’ or ‘arranging excursions’ for which the earlier mark could have been registered.
29 In paragraphs 30 and 31 of the contested decision, the Board of Appeal found that, as regards, more specifically, shore excursions, even if they were deemed to be covered by ‘services of a travel agency’, the evidence submitted in relation to them was manifestly insufficient to prove genuine use of the earlier mark, at least from the perspective of the extent and time of use. In that regard, the Board of Appeal stated that the only invoices submitted that mentioned ‘excursions’ were two invoices outside the relevant period and that ‘no evidence ha[d] been submitted to prove turnover figures’ in the territory of the European Union and that there were no data as to the number of cruise excursions sold, number of passengers, excursions purchased on destinations or anything ‘similar or specific’ to the European Union.
30 In paragraph 32 of the contested decision, the Board of Appeal observed that, as regards the extent of use of the earlier mark, the Opposition Division had held that the fact that the volume of the services sold under the earlier mark was not very significant could be explained by the fact that the invoices concerned could be samples of the total sales and that the assessment in that respect entailed a degree of interdependence between the factors taken into account, without, however, making reference to any invoice or amount in particular which could be linked to ‘services of a travel agency’ in Class 39.
31 In the light of those considerations, the Board of Appeal concluded, in paragraph 33 of the contested decision, that, considered as a whole, the various items of evidence adduced by the applicant were not sufficient to prove that the earlier mark had been put to genuine use in the European Union during the relevant period for the services for which it was registered.
32 The reasons for the contested decision, in respect of the Board of Appeal's conclusion referred to above, thus concern, first, the nature of the use of the earlier mark (in paragraphs 26 to 29 of the contested decision) and, second, the extent and time of that use (in paragraphs 30 to 32 of the contested decision).
– Nature of use
33 The applicant argues that the Board of Appeal did not sufficiently examine the documents which it produced and therefore wrongly rejected its argument relating to genuine use of the earlier mark during the relevant period in connection with the services in Class 39 in respect of which that mark was registered, and especially services of a travel agency, such as the organisation for cruise ship guests of city tours and shore excursions, hotel accommodation and guest transfers. The applicant submits that the use of the earlier mark in relation to the abovementioned services is apparent from a global review of the various documents produced before the Board of Appeal and does not only result from the two invoices mentioned by the Board of Appeal in the contested decision.
34 In that regard, the applicant refers to a number of items of evidence produced before the Board of Appeal, referred to in paragraph 27 above, such as, inter alia, the company profile for Intercruises Shoreside & Port Services given on the Bloomberg website, the content of www.intercruises.com, a press release and numerous awards received. It also refers to certain invoices produced before the Board of Appeal, which, according to the applicant, relate to transfers, tourist excursions or hotel services.
35 EUIPO disputes those arguments.
36 It should be noted, as a preliminary point, that it is common ground between the parties that both the applicant and its predecessor in title, namely Hotelbeds Spain, and undertakings connected with that company, in particular Intercruises Shoreside & Port Services, offered services, inter alia, under the earlier mark.
37 Furthermore, it must be held that the evidence relied on by the applicant and produced in the administrative proceedings shows use of the earlier mark in connection with ‘services of a travel agency’ in Class 39 in respect of which that mark was registered.
38 First, as regards the company profile for Intercruises Shoreside & Port Services, it is apparent from the description on the Bloomberg website that that undertaking offers, inter alia, ‘guest transportation and city tours’ as services under the earlier mark. In addition, the screenshots from www.intercruises.com, which contain the earlier mark, refer, inter alia, to ‘shore excursions, hotel programs, land programs, domestic transfers’.
39 Second, as regards the awards relied on by the applicant, it should be pointed out that those awards relate to ‘Shorex’ services (abbreviation for shore excursions), which are shore activities for cruise passengers. According to the evidence submitted by the applicant, Intercruises Shoreside & Port Services obtained, in 2016, the ‘Innovative Shorex of the Year’ award for the ‘Barcelona guided walking tour by homeless’ sightseeing tour in the specialised ‘Seatrade Cruise Awards’ competition. It was also a finalist for the same award in 2014, 2018 and 2019. In addition, the same company was recognised as being the ‘Most Efficient Shorex Agent and Tour Operator’ at the ‘MedCruise Awards’ in 2018 and, in 2017, obtained the ‘Wave Award’ in the ‘Best UK Attraction or Excursion’ category. All the above awards relate to shore excursions.
40 Third, it should be pointed out that the applicant provided multiple invoices all of which contain the earlier mark. Contrary to EUIPO's argument, some of those invoices contain a specific indication as to the nature or characteristics of the services provided. For example, one invoice dated 31 March 2015 mentions costs of transfers and accommodation as part of a guided visit in France. One invoice, dated 27 March 2020, mentions transfer services to various airports in the United Kingdom. One invoice, dated 8 January 2020, mentions transfer services and bus excursions to Portugal. Four invoices dated 15 May, 27 May, 22 July and 14 August 2019, respectively, include references to museum visits, various shore activities and hotel services in Greece. It is therefore clear that all of those invoices contain detailed references to services relating to shore excursions, which include transfer and hotel services.
41 Fourth, the advertisements in the specialised magazines Cruises news and Seatrade Cruise Review, which contain the earlier mark, describe in detail the programmes for various shore excursions in Spain and the services relating to shore excursions in Croatia and Morocco and also make reference to the awards received by Intercruises Shoreside & Port Services, referred to in paragraph 39 above.
42 In the light of the foregoing, it must be concluded that, contrary to the Board of Appeal’s statement in paragraph 27 of the contested decision, the evidence of use of the earlier mark provided by the applicant is not restricted to ‘services supporting the cruise tourism industry with ground handling and port agency services’, but also relates to ‘services of a travel agency’ in Class 39, in respect of which the earlier mark was registered.
43 Consequently, the Board of Appeal made an error of assessment in concluding, in paragraph 29 of the contested decision, that the evidence produced before it was insufficient to prove use of services of such a nature as to be included in the list of services covered by the earlier mark.
– Extent and time of use
44 The applicant submits that it had adduced evidence of the extent and time of the use of the earlier mark at least for ‘services of a travel agency’. According to the applicant, the evidence submitted shows that a significant turnover was achieved by using the earlier mark. It adds that even a small amount of evidence is sufficient to prove genuine use of the earlier mark. It also submits that most of the evidence it produced relates to the relevant period and that evidence not relating to that period must also be taken into account if it is corroborated by the other evidence. In addition, the applicant refers to a significant number of invoices produced before the Board of Appeal, which, according to the applicant, show its collaboration with the leading cruise companies.
45 EUIPO disputes those arguments.
46 As stated in paragraph 30 above, as regards the extent of use of the earlier mark, the Board of Appeal confined itself, in paragraph 32 of the contested decision, to stating that the Opposition Division held that the limited volume of the services sold under the earlier mark could be explained by certain considerations, without making reference to any invoice or amount in particular which could be linked to ‘services of a travel agency’ in Class 39.
47 The Board of Appeal thus criticised the Opposition Division for not giving sufficient reasons or substantiating its conclusion concerning the extent of use of the earlier mark in connection with ‘services of a travel agency’ in Class 39. Nevertheless, the Board of Appeal, having found that insufficient reasons had been given for the Opposition Division’s decision, did not carry out its own global assessment of the extent of use of that mark by taking into consideration all the relevant factors and evidence submitted by the applicant.
48 Admittedly, the assessment carried out by the Board of Appeal in paragraphs 30 and 31 of the contested decision relates to the extent and time of the use of the earlier mark. However, that assessment relates only to ‘shore excursions’ and does not cover other ‘services of a travel agency’ in Class 39 for which evidence of use had been submitted, such as, inter alia, guest or transfer services.
49 As regards the time of use of the earlier mark, it should, in any event, be stated that the applicant is right to highlight that it adduced several items of evidence which related to the relevant period and mentioned, in particular, services relating to excursions.
50 In that regard, the applicant produced, in the first place, screenshots from www.intercruises.com dating from 2018 which contain information on the services offered under the earlier mark. In the second place, it submitted evidence of the awards received in 2016, 2017 and 2018 and the competitions in which Intercruises Shoreside & Port Services was a finalist in 2014, 2018 and 2019, referred to in paragraph 39 above. In the third place, it submitted advertisements published in specialised magazines in September 2014, March 2017, March 2018 and December 2018, referred to in paragraph 41 above. In the fourth place, it produced invoices, referred to in paragraph 40 above, including, for example, the invoice dated 31 March 2015, that is to say, during the relevant period, which concerns services relating to tourist shore excursions in France.
51 Consequently, the Board of Appeal made an error of fact in stating, in paragraph 31 of the contested decision, that the only invoices produced before it relating to ‘excursions’ were the two invoices dated June 2019 and 2020, respectively. Indeed, the applicant produced a number of invoices which made reference to services relating to shore excursions. Those invoices were not specifically and precisely examined by the Board of Appeal, which, moreover, did not carry out a global assessment of all the evidence referred to in paragraph 50 above.
52 In that regard, it should be borne in mind that evidence, such as invoices, which postdate the relevant period, may, where appropriate, be taken into consideration in order to confirm or better assess the extent to which the mark was used during the relevant period and the actual intentions of the proprietor during that period (see judgments of 19 December 2019, Sta*Ware EDV Beratung v EUIPO – Accelerate IT Consulting (businessNavi), T‑383/18, not published, EU:T:2019:877, paragraph 71 and the case-law cited; of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 41 and the case-law cited; and of 8 July 2020, GNC LIVE WELL, T‑686/19, not published, EU:T:2020:320, paragraph 46 and the case-law cited).
53 As regards the extent of use of the earlier mark concerning shore excursions specifically, the Board of Appeal found, in paragraph 31 of the contested decision, that the applicant had not provided data concerning the turnover figures or the specific number of cruise excursions sold, the number of passengers, excursions purchased on destinations or anything similar.
54 However, as the applicant rightly submits, those findings are not capable of supporting the Board of Appeal’s conclusion that the evidence produced in respect of the above considerations is manifestly insufficient to prove the extent of use of the earlier mark.
55 The applicant in fact produced other types of evidence, referred to in paragraph 27 above, which was required to be considered as a whole in order to assess the extent of use of the earlier mark.
56 Accordingly, it must be concluded that the considerations set out in paragraphs 26 to 32 of the contested decision are not capable of supporting the Board of Appeal’s finding, in paragraph 33 of that decision, that it considered, as a whole, the various items of evidence adduced by the applicant and that those items of evidence were not sufficient to prove that the earlier mark had been put to genuine use in the European Union during the relevant period in connection with the services for which it was registered.
57 In the light of the foregoing, the present plea must be upheld and the contested decision annulled, without it being necessary to examine the applicant’s other arguments or the second plea.
Costs
58 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.
59 Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 September 2022 (Case R 1081/2021-2);
2. Orders the European Union Intellectual Property Office (EUIPO) to pay the costs.
Kowalik-Bańczyk | Hesse | Dimitrakopoulos |
Delivered in open court in Luxembourg on 15 November 2023.
V. Di Bucci | | M. van der Woude |