JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
29 April 2020 (*)
(EU trade mark — Revocation proceedings — European Union figurative mark green cycles — Genuine use of the mark — Article 18(1) of Regulation (EU) 2017/1001 — Article 58(1)(a) of Regulation 2017/1001 — Article 10(3) and (4) of Delegated Regulation (EU) 2018/625 — Form differing in elements which do not alter the distinctive character — Lack of use of the sign as a company logo)
In Case T‑78/19,
Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented by A. Marx, K. Bonhagen and M. Wolter, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Scardocchia and J. Crespo Carrillo, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Plásticos Hidrosolubles, SL, established in Rafelbuñol (Spain), represented by C. Sueiras Villalobos, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 29 November 2018 (Case R 778/2018-5) relating to revocation proceedings between Lidl Stiftung and Plásticos Hidrosolubles,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and T. Perišin, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Registry of the General Court on 8 February 2019,
having regard to the response of EUIPO lodged at the Court Registry on 16 April 2019,
having regard to the response of the intervener lodged at the Court Registry on 6 May 2019,
further to the hearing on 16 January 2020,
gives the following
Judgment
Background to the dispute
1 On 13 January 2010, the intervener, Plásticos Hidrosolubles, SL, 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)).
2 Registration as a mark was sought for the following figurative sign:
3 The goods and services for which registration was sought are in Classes 17, 20, 40 and 42 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 17: ‘Plastics in extruded form for use in manufacture; semi-processed goods of plastic; semi-processed goods of water-soluble, biodegradable and compostable plastic; plastic fibres, plastic film, plastic sheeting, plastic plates; Plastic semi-worked products’;
– Class 20: ‘Articles made of plastics; goods of water-soluble, biodegradable and compostable plastic’;
– Class 40: ‘Treatment of materials; in particular treatment, processing of plastic and decoration of plastic surfaces’;
– Class 42: ‘Engineering for the plastic processing industry, design and development of products of plastic or made using plastic; scientific and technological services and research for goods of plastic; Engineering, namely consultancy relating to the design, development and manufacture of injection moulded parts of plastic’.
4 The application was published on 17 May 2010 and the contested mark was registered on 2 September 2010 under No 8807265 in respect of all the goods and services referred to in paragraph 3 above.
5 On 3 September 2015, the applicant, Lidl Stiftung & Co. KG, filed, under Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), an application for revocation of the EU trade mark referred to above in respect of all of the goods and services covered by that mark.
6 On 16 September 2016, the intervener submitted a series of items of evidence to prove genuine use of its mark. That evidence was submitted in four documents, under the headings ‘self-advertising’ (document No 1), ‘advertising’ (document No 2), ‘commercial activity’ (document No 3) and ‘trade mark management’ (document No 4), which were annexed to the file of the proceedings before EUIPO.
7 On 15 March 2018, the Cancellation Division of EUIPO partially upheld the application for revocation, in so far as it declared the intervener’s mark to be revoked, with effect from 3 September 2015, in respect of certain services in Class 40, namely ‘treatment of materials with the exception of plastics’.
8 On 26 April 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division, seeking the partial annulment thereof in so far as that decision allowed the contested mark to stay registered for the remaining goods and services in Classes 17, 20, 40 and 42.
9 By decision of 29 November 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed that appeal and upheld the decision of the Cancellation Division. The Board of Appeal considered that the evidence adduced by the intervener, considered as a whole, was sufficient to prove genuine use of the contested mark during the relevant period for Classes 17, 20 and 42 and partially for Class 40, in accordance with Article 58(1)(a) and (2) of Regulation 2017/1001 and with the criteria in Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (now 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)).
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs incurred in the context of the present proceedings before the Court;
– order the intervener to pay the costs incurred in the context of the proceedings before the EUIPO.
11 EUIPO contends that the Court should:
– annul the contested decision in so far as the Board of Appeal concluded that genuine use of the contested mark had been shown by the intervener in respect of all of the goods included in Class 20;
– dismiss the action as to the remainder;
– order each party to bear its own costs.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant puts forward a single plea, alleging, in essence, infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Rule 22(3) and (4) of Regulation No 2868/95. It should be noted that, as the applicant stated in paragraph 13 of the application, the content of those provisions is identical to that, respectively, of Article 18(1) of Regulation 2017/1001 and of Article 10(3) and (4) of Delegated Regulation 2018/625.
14 That plea is divided, in essence, into three parts, the first alleging the existence of errors made during the assessment of the use of the contested mark in connection with all of the goods and services designated by that mark, the second alleging an erroneous assessment relating to the use of the contested mark in the form in which it was registered, and the third alleging an erroneous assessment relating to the use of the contested mark as a trade mark.
The first part, alleging the existence of errors made during the assessment of the use of the contested mark in connection with all of the goods and services designated
15 The applicant criticises the Board of Appeal for having committed an error by concluding that the intervener had shown, during the revocation proceedings, genuine use of the contested mark with respect to all the goods and services designated by it. According to it, the Board of Appeal focused its analysis on the ‘sales of one or two products’, instead of analysing each category of goods or services covered by that mark.
16 In particular, the applicant claims, first of all, that the invoices provided by the intervener relate only to plastic bags and plastic films, but that they concern no other goods or services, in particular, as the Board of Appeal noted, golf balls, plastic bottles or the wads for cartridges. Likewise, contrary to the Board of Appeal, it considers that neither the advertising material nor the material about sponsorships of events produced by the intervener for the purposes of showing use of the contested mark proves that the goods covered by that mark have been put on the market and sold. In that regard, it adds that the evidence of use originating from the sphere of the proprietor of the trade mark has, according to the case-law, less evidential value than evidence deriving from a third party. On that basis, it alleges that the majority of the documents provided by the intervener do not emanate from an independent source that could support their authenticity.
17 Next, as regards the goods in Classes 17 and 20, the applicant considers that, in accordance with the case-law, the Board of Appeal should have examined more closely the different subcategories forming part of those two classes in more detail and not found use of the contested mark for those classes of goods in such a broad manner. According to it, there is hardly any article which cannot be made out of plastic, so that the Board of Appeal should have identified, in relation to Classes 17 and 20, subcategories capable of being viewed independently in the context of its examination.
18 Finally, the applicant alleges that the Board of Appeal wrongly considered that the contested mark had been used publicly and outwardly, as is required by settled case-law. More particularly, it considers that the documents provided by the intervener were never publicly used in the context of a commercial activity. It reiterates that there is no evidence of public and outward use of the contested mark for bottles, golf balls, urns and wads for cartridges.
19 EUIPO disputes the applicant’s arguments with the exception of those formulated with regard to the Board of Appeal’s assessment in respect of the relevant goods in Class 20. As regards those goods, EUIPO requests, under its first head of claim, that the contested decision be partially annulled in so far as the Board of Appeal should have broken down the categories of the goods covered by the contested mark into subcategories and examined in detail the use of that mark in relation to each of those subcategories.
20 For its part, the intervener rejects all the applicant’s arguments and considers that it proved genuine use of the contested mark to the requisite legal standard in relation to all the goods and services covered by it. As regards, in particular, the relevant goods in Class 20, the intervener considers that it showed use of such a wide variety of coherent categories of plastic products, that the contested mark can be considered to have been used for that whole category.
21 First, it should be recalled that, under 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 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 this Regulation, unless there are proper reasons for non-use’.
22 As regards the criteria for assessing genuine use, under Article 10(3) and (4) of Delegated Regulation 2018/625, applicable to revocation proceedings pursuant to Article 19(1) of that regulation, proof of use 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 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.
23 As is clear from the case-law, there is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 26 and the case-law cited).
24 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 30 and the case-law cited).
25 Moreover, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 23 September 2009, Cohausz v OHIM — Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 36 and the case-law cited). 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 (see judgment of 18 January 2011, Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, not published, EU:T:2011:9, paragraph 30 and the case-law cited).
26 Finally, if a trade mark has been registered for a category of goods or services which is sufficiently broad to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to 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, to that effect, judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (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).
27 It is in the light of the above that it is necessary to examine whether the Board of Appeal was correct to conclude, in the contested decision, that the evidence submitted by the intervener in the context of the revocation proceedings was capable of proving genuine right-preserving use of the contested mark.
28 In the present case, first, it should be noted that reference is made to the complete list of evidence provided by the intervener for the purposes of proving genuine use of the contested mark in paragraph 5 of the contested decision. In the present judgment, it is necessary to restrict references to that evidence to the extent that it is specifically contested by the applicant. Secondly, it should be noted that the applicant contests the findings of the Board of Appeal only as regards the criteria of the extent and nature of the use of the contested mark provided for in Article 10(3) of Delegated Regulation 2018/625. By contrast, it does not put forward any arguments contesting the Board of Appeal’s findings, in paragraphs 25 to 31 of the contested decision, relating to the time and place of that use.
The extent of the use
29 As regards the extent of the use, the Board of Appeal considered, in essence, in paragraphs 36 and 37 of the contested decision, that the number of invoices submitted during the revocation proceedings, which were addressed to clients in particular in the European Union, showed a turnover which displayed effective and sufficient use of the contested mark on the market. Likewise, it considered that the advertisements which appeared in two Spanish newspapers, the quotations, the advertising and the sponsorship of the intervener indicated, despite the absence of information about the volume of sales, at least that the goods had been placed on the market and that they had been sold.
30 According to settled case-law, in assessing the extent of the use made of a contested mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (see judgment of 8 November 2007, Charlott v OHIM — Charlo (Charlott France Entre Luxe et Tradition), T‑169/06, not published, EU:T:2007:337, paragraph 36 and the case-law cited).
31 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. Accordingly, use of a mark need not always be quantitatively significant in order for it 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. Therefore, 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, with the result that 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 7 July 2016, Fruit of the Loom v EUIPO — Takko (FRUIT), T‑431/15, not published, EU:T:2016:395, paragraph 26 and the case-law cited).
32 In interpreting the concept 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 judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 27 and the case-law cited).
33 However, 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 any doubts as to the genuineness of its use (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 28 and the case-law cited).
34 In the present case, it should be pointed out that, in paragraphs 36 and 37 of the contested decision, the Board of Appeal reiterated, in essence, the Cancellation Division’s assessment that the evidence provided by the intervener during the revocation proceedings, namely the invoices issued to the intervener’s clients in the European Union and in third countries, advertisements which appeared in two different Spanish newspapers, correspondence with clients which contained advertising and marketing, purchase orders, quotations, brochures and catalogues, were sufficient to show the extent of the use of the sign.
35 The Court considers that that assessment is well founded.
36 First of all, it is necessary to reject the applicant’s argument that, apart from the plastic bags and plastic films, there is no evidence of sales concerning the use of the contested mark in connection with other goods or services. As the Cancellation Division and the Board of Appeal noted, it is apparent from the annex to the file in the proceedings before EUIPO, in particular from document No 3, that the intervener adduced evidence showing the extent of sales of bags, bin bags, laundry bags, urns, pellets, plastic films, wads for cartridges, film tubes and resins. It also showed the extent of use with regard to design, development and testing services.
37 The applicant claims that the evidence lodged by the intervener, with the exception of the requests concerning orders of plastic bags or plastic films, does not originate from an independent source, as a result of which it should be regarded as evidence with a low probative value. However, it must be noted that during the revocation proceedings the intervener lodged objective evidence, in particular invoices, contained in document No 3 of the annex to the file in the proceedings before EUIPO, which shows that the goods bearing the contested mark were sold both inside and outside the European Union. Although the invoices were issued by the intervener itself, as the applicant alleges in its written pleadings, they are documents intended for third parties capable of serving as evidence of genuine use of a mark without the need for authentication.
38 In its arguments, the applicant also invokes the judgment of 7 June 2005, Lidl Stiftung v OHIM — REWE-Zentral (Salvita) (T‑303/03, EU:T:2005:200), which specifically deals with the limited evidential value of declarations made by the proprietor of the mark. However, it should be noted that it follows, in essence, from that judgment that evidence such as the invoices, catalogues or newspaper advertisements, that is to say the documents produced in the present case by the intervener, had, contrary to the declarations made by the proprietor of the mark, a high evidential value (see paragraphs 34 and 45 of that judgment). In the present case, in addition, no declarations of the type at issue in the above judgment have been presented.
39 As regards the applicant’s argument that neither the advertising material nor the material about sponsorships produced by the intervener in order to show genuine use of the contested mark prove that the goods and services covered by that mark were placed on the market and sold, it must be noted that such evidence is combined with numerous invoices which, as stated in paragraph 37 above, show the actual and sufficient marketing of those goods.
40 Moreover, it should be noted that the evidence provided in the context of revocation proceedings is valid in so far as it allows clear inferences to be drawn as to the criteria provided for in Article 10(3) of Delegated Regulation 2018/625, including the extent of use. In the present case, the advertisements which appeared in two of the national newspapers with the highest circulation in Spain, namely El País and La Razón, suffice in themselves for the purposes of corroborating the fact that, as was stated by the Board of Appeal, in essence, in paragraph 37 of the contested decision, the goods covered by the contested mark were placed on the market and sufficiently marketed.
41 Finally, in so far as the applicant criticises the Board of Appeal for having focused solely on the ‘sales of one or two products’ in order to find the existence of a minimum extent of use with respect to all the goods and services designated by the contested mark, it should be noted that, in paragraphs 36 and 37 of the contested decision, the analysis carried out by the Board of Appeal of the extent of genuine use of the contested mark does not concern, individually, each class of goods and services designated by that mark.
42 However, the Board of Appeal cannot be accused of erring in law by proceeding in such a manner. It suffices to note that, in the context of its analysis, the Board of Appeal was solely required to assess whether the mark at issue had been put to ‘effective and sufficient’ use in connection with the goods and services identified in the evidence adduced by the intervener during the administrative procedure, mentioned in paragraph 34 above. By contrast, the Board of Appeal was free to carry out an assessment of the specific classification of such goods and services in accordance with the Nice Agreement and of the correspondence thereof with the goods and services covered by the contested mark in the context of the analysis relating to the nature of the use.
43 It follows that none of the applicant’s arguments is capable of calling into question the Board of Appeal’s assessment relating to the extent of genuine use of the contested mark.
Nature of the use
44 As regards the nature of the use of the contested mark, the Board of Appeal considered, like the Cancellation Division, in paragraphs 54 to 61 of the contested decision, that the use of the contested mark had been shown during the relevant period with respect to Classes 17, 20 and 42 and partially with respect to Class 40. Under the heading ‘Global assessment of the evidence of use’, in paragraph 68 of the contested decision, it also considered that that use had taken place publicly and outwardly. The applicant contests those two assessments.
45 First of all, it is necessary to reject the applicant’s claim that the contested mark was not used publicly and outwardly for the purposes of the case-law cited in paragraph 23 above. As the Board of Appeal noted in paragraph 68 of the contested decision, the sample invoices provided together with the catalogues, the promotional events, the advertising efforts, and the commercial activity, can be considered to be sufficiently representative evidence of that mark being used publicly and outwardly with a view to creating commercial markets in the Union. In particular, the large number of invoices issued by the intervener to different clients shows that the use of the contested mark took place publicly and outwardly. In that regard, it should be noted that, according to the case-law, the issuing of an invoice allows in itself to establish that the use of the mark took place publicly and outwardly, and not solely within the undertaking which is the proprietor of the contested mark (see, to that effect, judgment of 13 June 2019, MPM-Quality v EUIPO — Elton Hodinářská (MANUFACTURE PRIM 1949), T‑75/18, not published, EU:T:2019:413, paragraph 75 and the case-law cited).
46 Next, as regards evidence of use in connection with all of the goods and services designated, it should be noted that EUIPO requests, in the context of its first head of claim, the partial annulment of the contested decision in so far as the Board of Appeal found, in paragraph 61 of that decision, genuine use of the contested mark with respect to the goods in Class 20.
47 In that regard, it should be noted that, according to settled case-law, nothing precludes EUIPO from endorsing the heads of claim of the applicant or from simply leaving the decision to the discretion of the Court, while putting forward all the arguments that it considers appropriate for giving guidance to the Court. Conversely, it may not seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application or put forward pleas in law not raised in the application (see judgment of 9 December 2014, Capella v OHIM — Oribay Mirror Buttons (ORIBAY), T‑307/13, EU:T:2014:1038, paragraph 17 and the case-law cited).
48 In the present case, the form of order sought by EUIPO, like that of the applicant, seeks the annulment of the contested decision in so far as the Board of Appeal concluded that genuine use of the contested mark had been shown by the intervener with respect to all of the goods included in Class 20. It must be noted that that point was also raised by the applicant in the application. In those circumstances, it must be concluded that there is no reason why the form of order sought by EUIPO should not be declared admissible and the arguments formulated in support thereof taken into account during the examination of the substance of the contested decision.
49 As regards, first, the goods covered by the contested mark and falling within Class 17, the Board of Appeal upheld, in paragraphs 54 to 56 of the contested decision, the conclusion of the Cancellation Division according to which the intervener had adduced evidence such as brochures, catalogues, product cards, security cards, technical cards and project information as well as advertising materials and invoices evidencing use of the mark for ‘extrusion and moulding processes’, for ‘plastic films and pellets which are types of plastic in extruded form for use in manufacturing’ and for ‘types of semi-processed goods of plastic which are water-soluble, biodegradable, compostable, and semi-worked products’. According to the Board of Appeal, that conclusion applies also to ‘plastic sheeting and plastic plates’ considered to be ‘very similar’ to ‘plastic films and semi-processed goods of plastic’, with respect to which proof of use had been provided. On that basis, the Board of Appeal concluded that the intervener had adduced evidence of use for all of the goods in Class 17.
50 In that regard, it should be noted that, according to the Nice Agreement, Class 17 for goods includes, in particular, plastics and resins in extruded form for use in manufacture. It should also be noted, as does EUIPO, that according to the explanatory notes relating to that classification, the goods covered by Class 17 include semi-processed goods, which might be transformed into other goods which would then be classified in other classes, according to their nature or purpose. As an example, the explanatory notes state that the ‘plastic film, other than for wrapping and packaging’ is classified in Class 17. Once the semi-processed plastic film is transformed into wrapping film as a final product, it would then fall into Class 16.
51 It follows that Class 17 includes a range of goods defined and identified on the basis, first, of their basic material, in particular plastic, and, secondly, their semi-processed state.
52 In the present case, since the evidence adduced by the intervener shows, as is mentioned in paragraph 49 above, the marketing of a wide range of semi-processed goods of plastic, such as films and pellets, which are capable of coming within one of the categories designated by the contested mark coming within Class 17, namely, ‘plastics in extruded form for use in manufacture; semi-processed goods of plastic; semi-processed goods of water-soluble, biodegradable and compostable plastic; plastic fibres [and] plastic films, …; plastic semi-worked products’, it should be considered that the Board of Appeal was correct to conclude that genuine use had been duly shown for the goods in Class 17.
53 Moreover, it is not necessary to call into question the Board of Appeal’s finding, not contested by the applicant and included in paragraph 56 of the contested decision, that use could, in particular, be found in relation to the ‘plastic sheeting and plastic plates’ as a result of their similarity with the ‘plastic films and semi-processed goods of plastic’, with respect to which proof of that use had been provided.
54 As regards, secondly, the goods in Class 20, the Board of Appeal also considered that proof of use had been provided by the intervener. In particular, it is apparent from paragraphs 5 (‘document No 3’), 54 and 55 of the contested decision that the evidence provided by the intervener shows use in particular with respect to bottles, films, bags, golf balls, bin bags, laundry bags, pellets, urns, wads for cartridges, plastic tubes and resins.
55 In that regard, the Court notes, first, that the Board of Appeal committed an error by holding that the goods with respect to which use of the mark had been demonstrated came within Class 20 of the Nice Agreement. As EUIPO itself states, the explanatory note to that class ‘includes mainly … plastic goods, not included in other classes’. On that basis, it must be noted that the majority of the goods whose marketing has been proved do not come within Class 20. In particular, bin bags come within Class 16, golf balls in Class 18, pellets in several classes, in particular Classes 1, 4, 13, 17 and 19, films in Class 16, wads for cartridges in Class 13 and resins in Classes 1 or 2.
56 Moreover, with respect to the plastic goods which are not included in other classes, as is the case with ‘urns’, the sale of those goods by the intervener cannot constitute proof of genuine use with respect to a category as broad as ‘articles made of plastics’ or ‘goods of water-soluble, biodegradable and compostable plastic’.
57 In that regard, it should be noted that, as follows from the judgment of 14 July 2005, Reckitt Benckiser (España) v OHMI — Aladin (ALADIN) (T‑126/03, EU:T:2005:288, paragraph 42), the requirement to show genuine use of the contested mark is to limit the likelihood of conflict between two marks by protecting only trade marks which have actually been used, in so far as there is no sound economic reason for them not having been used. With that in mind, proof of genuine use seeks to prevent a trade mark which has been used in relation to part of the goods or services for which it is registered being afforded extensive protection merely because it has been registered for a wide range of goods or services.
58 In the present case, since, as is noted by the applicant, there are almost no articles which cannot be made out of plastic, the Board of Appeal should have broken down the goods in Class 20 designated by the contested mark into subcategories and carried out an autonomous analysis of the evidence provided in relation to each of those goods.
59 Consequently, since such an analysis was not carried out, it must be concluded that the Board of Appeal committed an error by concluding that the intervener had shown, during the revocation proceedings, genuine use of the contested mark in relation to the goods in Class 20.
60 As regards, thirdly, services in Classes 40 and 42, apart from a general contestation on the part of the applicant, the latter does not express any specific arguments calling into question the Board of Appeal’s assessment, according to which genuine use of the contested mark had been shown for the services in Class 40 with the exception of the ‘treatment of materials with the exception of plastics’. It follows that that complaint is not put forward in a sufficiently precise and intelligible way to enable the Court to exercise its power of review, with the result that it must be rejected as inadmissible, in accordance with Article 177(1)(d) of the Rules of Procedure of the General Court (see, to that effect, order of 18 January 2018, W&O medical esthetics v EUIPO — Fidia farmaceutici (HYALSTYLE), T‑178/17, not published, EU:T:2018:18, paragraph 27).
61 In addition, it follows from the EUIPO file, including the evidence adduced by the intervener in the context of document No 3 of the annex to the file in the proceedings before EUIPO, that use is shown for the services concerned in Class 42. First, invoices included in that document mention, in particular, the billing for design, development and testing services with an American undertaking at a value greater than one million United States dollars. Secondly, as is noted by EUIPO, the type of services in Class 42 was offered on several occasions during the relevant period in the context of projects conducted with different business partners, development programmes, design services, consulting services and individualised projects for the development of plastic goods.
62 In the light of the above, in so far as the Board of Appeal committed an error concerning goods in Class 20, as was established in paragraph 59 above, it is necessary to partially uphold the first part of the applicant’s single plea.
The second part, alleging an erroneous assessment relating to the use of the contested mark in the form in which it was registered
63 The applicant disputes genuine use of the contested mark, because, according to it, that mark was not used in the form in which it was registered, in infringement of Article 18(1)(a) of Regulation 2017/1001. In essence, it claims that the inversion of the colours used to represent the contested mark in some documents changes the distinctive character of the mark at issue. The applicant refers to documents showing the mark as used with the term ‘green’ in blue on a white background rather than in white on a green background in accordance with the registered form and with the word ‘cycles’ in white on a blue background rather than in grey with no background colour. The applicant claims that the distinctive character is altered as a result of the contradiction between the meaning of the first word element ‘green’ and its blue colouring in the inverted version of the mark.
64 EUIPO and the intervener dispute those arguments.
65 According to Article 18(1)(a) of Regulation 2017/1001, use of the EU trade mark 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 ‘genuine use’.
66 According to the case-law, the purpose of Article 18(1)(a) 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 negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark 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‑226/12, not published, EU:T:2014:98, paragraph 49 and the case-law cited).
67 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, by analogy, judgment of 10 June 2010, Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 31 and the case-law cited).
68 In the present case, it is necessary to assess whether the distinctive character of the contested mark as it was registered was altered by the addition of further elements, such as ‘solutions and products’, ‘plasticos Hidrosolubles s.l.’, sometimes also preceded by the preposition ‘by’, and the inversion of the colours of the figurative mark.
69 In that regard, it must be held that that is not the case. First, the abovementioned word elements are only minor additions as opposed to the expression ‘green cycles’, which constitutes the dominant element of the mark referred to and in respect of which the distinctive character is not affected in any way whatsoever by those minor additions. Secondly, as regards the variations such as the size of the figurative element and the inversion of the colours of the contested mark, it should be concluded, in the light of their position in the configuration of the signs used, that those elements are merely decorative. In particular, it should be pointed out that the colours of the contested mark, blue, green and grey, are not especially original or unusual in each of the two forms of the contested mark. Their variation is thus not such as to affect the distinctive character of that mark (see, to that effect, judgment of 24 November 2005, GfK v OHIM — BUS (Online Bus), T‑135/04, EU:T:2005:419, paragraph 35).
70 It follows that the Board of Appeal did not commit an error by considering that the contested mark was used in a form which does not alter its distinctive character.
71 The second part of the single plea must be rejected.
The third part, alleging an erroneous assessment relating to the use of the contested mark as a trade mark
72 The applicant claims that the contested mark was not used to identify the goods and services, but solely as a company logo. It considers that the contested mark ‘appears not to identify the origin of the products but only the company itself’. The applicant relies in that regard on the fact that the contested mark does not appear on the goods in question, but on the top left corner of brochures, catalogues, product cards and invoices, in particular as a company logo.
73 EUIPO and the intervener contest those arguments.
74 According to the case-law cited in paragraph 23 above, 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.
75 It follows that the use of a sign as a company name cannot be considered to constitute use as a mark (judgment of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 44).
76 In the present case, it is necessary to reject, like the Cancellation Division and the Board of Appeal, the applicant’s arguments that the contested mark was used by the intervener only as a company logo.
77 In that regard, it suffices to note that the contested sign appears on the brochures, advertising material and invoices provided by the intervener in the revocation proceedings. Moreover, even assuming, as the applicant claims, that the mark does not appear on the goods sold on the market, it is not necessary that the contested mark be affixed to the goods in order for there to be genuine use in relation to those goods, but it suffices that use of the mark establishes a connection between the mark and the marketing of those goods (see, to that effect, judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraph 23).
78 In the present case, the presence of the contested mark on the invoices, articles and advertisements relating to the intervener’s goods is capable of establishing that connection. Moreover, that conclusion applies also to the services at issue. Even if, in principle, a mark may not be affixed to services, it is apparent from the evidence of use provided by the intervener that the consumers of the categories of goods or services concerned may easily understand that the contested mark indicates the origin of the services provided and invoiced.
79 Finally, in so far as the applicant’s complaint must be interpreted as emphasising that the intervener’s mark was used, in reality, as a company name, it must also be rejected. In that regard, it suffices to note that the intervener’s company name is not ‘green cycles’ or the figurative sign which accompanies those words in the context of the contested mark. Its company name is Plásticos Hidrosolubles, SL, with the result that the contested mark corresponds neither to the intervener’s company name nor to a part thereof.
80 The Board of Appeal was therefore entitled to consider that the evidence of use did not allow the applicant’s claim that the intervener did not use the contested mark as a trade mark, but as a company name, to be upheld.
81 The third part of the single plea must be rejected.
82 It follows from all of the foregoing and, in particular, from the finding made in paragraph 62 above that the contested decision must be partially annulled and that the action be dismissed as to the remainder.
Costs
83 Under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.
84 In the present case, the applicant and EUIPO, regardless of the form of order sought by the latter, and the intervener, have, respectively, been partly unsuccessful in their forms of order sought, in so far as the contested decision is partially annulled.
85 Consequently, each party must be ordered to bear its own costs.
86 Moreover, the applicant also applied for the intervener to be ordered to reimburse it ‘the costs incurred in the proceedings before EUIPO’.
87 In that regard, it should be noted that, in accordance with Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows therefrom that the costs incurred for the purposes of the proceedings before the Cancellation Division cannot be regarded as recoverable costs (see judgment of 28 February 2019, Lotte v EUIPO — Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 193 and the case-law cited).
88 Therefore, first, the applicant’s form of order must be rejected in so far as it seeks an order that the intervener be ordered to pay the costs incurred before the Cancellation Division. Secondly, in so far as the applicant’s request relates to the costs of the proceedings before the Board of Appeal, it is for the latter to decide, in the light of the present judgment, as to the costs relating to those proceedings (see, to that effect, judgment of 8 May 2019, Inditex v EUIPO — Ffauf Italia (ZARA), T‑269/18, not published, EU:T:2019:306, paragraph 88 and the case-law cited).
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 November 2018 (Case R 778/2018-5) in so far as it found genuine use of the contested mark in respect of the goods in Class 20;
2. Dismisses the action as to the remainder;
3. Orders Lidl Stiftung & Co. KG, EUIPO and Plásticos Hidrosolubles, SL, to each bear their own costs incurred during the proceedings before the Court.
Delivered in open court in Luxembourg on 29 April 2020.