JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
14 December 2022 (*)
(EU trade mark – Revocation proceedings – EU figurative mark CIPRIANI FOOD – Genuine use of a mark – Nature of use – Article 18(1)(a) of Regulation (EU) 2017/1001 – Extent of use – Article 58(1)(a) and (2) of Regulation 2017/1001)
In Case T‑358/21,
Hotel Cipriani SpA, established in Venice (Italy), represented by M. Rieger-Jansen, D. Op de Beeck and W. Pors, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Altunis-Trading, Gestão e Serviços, Sociedade unipessoal, Lda, established in Funchal (Portugal), represented by M. Pomares Caballero, E. Salis and T. Barber Giner, lawyers,
THE GENERAL COURT (Ninth Chamber),
composed, at the time of the deliberations, of M.J. Costeira, President, M. Kancheva and T. Perišin (Rapporteur), Judges,
Registrar: E. Coulon,
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, Hotel Cipriani SpA, seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 April 2021 (Case R 1599/2020-4) (‘the contested decision’).
Background to the dispute
2 On 21 November 1997, one of the intervener’s legal predecessors, Altunis-Trading, Gestão e Serviços, Sociedade Unipessoal, Lda, filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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)).
3 Registration as a mark was sought for the following figurative sign:
4 The goods in respect of which registration was sought are in, following the restriction made during the proceedings before EUIPO, Classes 29, and 30 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 29: ‘Meat, fish, poultry and game; meat extracts; dried fruits and vegetables; eggs; milk; edible oils and fats’;
– Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread; honey, treacle; yeast, baking-powder; salt; vinegar; spices; ice’.
5 The trade mark application was published in Community Trade Marks Bulletin No 002/1999 of 11 January 1999. That mark was registered on 9 January 2002 under number 683250.
6 On 24 January 2019, the applicant filed an application with EUIPO for revocation of the mark at issue under Article 58(1)(a) of Regulation 2017/1001 in respect of all the goods referred to in paragraph 4 above.
7 On 3 June 2019, the intervener provided evidence of use of the contested mark.
8 By decision of 16 June 2020, the Cancellation Division partially upheld the application for revocation. It found, however, that the registration of the contested mark had to be maintained for the goods ‘edible oils’ in Class 29 and ‘rice; preparations made from cereals, bread; vinegar’ in Class 30 (‘the goods at issue’).
9 On 31 July 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision.
10 By the contested decision, the Board of Appeal dismissed the appeal.
11 In essence, the Board of Appeal found that the intervener had furnished proof of genuine use of the contested mark in connection with the goods at issue as a result of evidence demonstrating, inter alia, its use as registered for the purpose of marketing those goods and the sale of those goods on a continuous and regular basis during the relevant period, for sufficiently high amounts.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– alter the contested decision by declaring the contested mark to be revoked in its entirety;
– order EUIPO and the intervener to pay the costs.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
14 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred in connection with the proceedings before the General Court and the Board of Appeal.
Law
Preliminary observations on the applicable law
15 In view of the date on which the application for revocation at issue was filed, on 24 January 2019 in the present case, which is decisive for the purpose of identifying the applicable substantive law, the present case is governed by the substantive provisions of Regulation 2017/1001 (see, to that effect, judgment of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, EU:C:2019:471, paragraph 2). In addition, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
16 Accordingly, in the present case, as regards the substantive rules, the references made by the applicant to Article 15 of Regulation No 207/2009 must be understood as referring to Article 18 of Regulation 2017/1001 which is identical in content.
Admissibility of certain annexes to the application
17 EUIPO contends that the documents contained in Annexes A.10 and A.11 to the application have been produced for the first time before the Court and must, therefore, be declared inadmissible.
18 As a preliminary point, it must be recalled that the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. Pursuant to Article 95 thereof, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
19 Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible, and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
20 In the present case, by submitting in Annex A.10 a sample of sales invoices, as it considers them to have been submitted by the intervener, the applicant draws the Court’s attention to the fact that, apart from four of them, those invoices appear with a part of the top margin cut off. It follows that the contested mark does not appear there, but that only the following representation appears:
21 Next, Annex A.11 contains several screenshots containing, in the background, a contested sales invoice and, superimposed in the foreground, a window setting out the document properties. In drawing the Court’s attention to the information contained in the window setting out the document properties submitted in Annex A.11, the applicant seeks to prove that the invoices at issue are contained in a document which was referenced by EUIPO under number ‘167724726.pdf’ of the file relating to the contested mark, accessible via the ‘eSearch plus’ search portal.
22 By submitting those two annexes, the applicant seeks, in essence, to corroborate the claim put forward in its first plea that, among the evidence which it received, only four sales invoices included the mark in the form as registered.
23 In that regard, first of all, as EUIPO states, it is possible to verify the parties’ communications in the EUIPO search portal ‘eSearch plus’, as contained in the file relating to a contested mark. Annex A.10 does indeed consist of a reproduction of certain sales invoices as they appear in one of the files contained in the EUIPO search portal ‘eSearch plus’. Similarly, Annex A.11 makes it possible to identify the file at issue, namely that bearing number ‘167724726.pdf’ dated 3 June 2019.
24 Next, it should be noted that the file of a contested mark on the EUIPO search portal ‘eSearch plus’ includes, inter alia, communications between the parties to a dispute concerning that mark. Consequently, such communications form part of the factual and legal context of the dispute brought before the Board of Appeal.
25 Lastly, it is clear that the documents contained in Annex A.10 reproduce the sales invoices contained in the file of the contested mark on the ‘eSearch plus’ search portal and, more specifically, in the document bearing the number ‘167724726.pdf’ dated 3 June 2019. Similarly, the documents contained in Annex A.11 indicate information relating to the IT properties on the ‘eSearch plus’ search portal of those sales invoices.
26 Therefore, since those documents are not new, they are admissible.
Substance
27 In support of its action, the applicant relies on four pleas in law. By the first plea, it alleges that the Board of Appeal infringed Article 94(1) of Regulation 2017/1001 by failing to state adequate reasons. By the second plea, the applicant submits that the Board of Appeal infringed Article 18 of that regulation by finding that the evidence would establish use of the contested mark as registered. By the third plea, the applicant complains that the Board of Appeal erred, in breach of that article, in its assessment of the extent of use of the contested mark. By the fourth plea, the applicant alleges that the Board of Appeal erred under Article 58(2) of that regulation in finding that ‘pasta’ is not an autonomous subcategory of ‘preparations made from cereals’.
The first plea alleging an inadequate statement of reasons
28 The applicant claims that the Board of Appeal failed to state reasons, in accordance with Article 94(1) of Regulation 2017/1001, for rejecting the argument that the sales invoices submitted did not show the contested mark in the form as registered. According to the applicant, only four pages out of the 954 pages of sales invoices submitted show the contested mark in the form as registered. In support of that assertion, as has been stated in paragraphs 20 and 21 above, the applicant submitted the representation, in Annex A.10, which appears on the sales invoices at issue as they were received by the applicant, as shown by Annex A.11.
29 The applicant adds that, although it pointed out to EUIPO and the intervener that the sales invoices at issue did not contain the contested mark, no other copies of those invoices were sent to the applicant by the intervener.
30 EUIPO and the intervener dispute those claims.
31 It must be borne in mind at the outset that, under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. It has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to address all relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgment of 7 June 2017, Mediterranean Premium Spirits v EUIPO – G-Star Raw (GINRAW), T‑258/16, not published, EU:T:2017:375, paragraph 88).
32 Furthermore, the duty to state reasons does not require the Board of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (judgments of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 19, and of 7 June 2017, GINRAW, T‑258/16, not published, EU:T:2017:375, paragraph 89).
33 First of all, as regards EUIPO’s argument that it is only before the Court that the applicant explains why it considered that the contested mark did not appear on the sales invoices at issue, it must be noted that the applicant did, admittedly, produce in the written pleadings submitted before the Cancellation Division and the Board of Appeal the way in which those invoices appeared to it. However, the applicant did not state that it was a screenshot of the document bearing the number ‘167724726.pdf’ of 3 June 2019 contained in the file of the contested mark accessible on the EUIPO search portal ‘eSearch plus’.
34 It must be stated that that omission was of decisive importance for the purposes of the proper understanding of the applicant’s arguments before the Board of Appeal and the Cancellation Division.
35 Next, EUIPO states, in its response, that it was only when the applicant substantiated such arguments before the Court that it found that there was a technical error when uploading the document bearing the number ‘167724726.pdf’ of 3 June 2019. Such an error went unnoticed during the proceedings, since the evidence submitted by the intervener was the subject of several communications on which the invoices at issue did not contain defects.
36 That assumption is confirmed by the fact, first, that, in EUIPO’s administrative file, which was sent to the Court and on the basis of which EUIPO and the Board of Appeal analysed the case, the contested mark appears at the top left of the header of the disputed sales invoices. Secondly, as the intervener rightly submits, when, in a letter of 17 May 2021, the applicant asked the Registry of the Board of Appeal to verify that the sales invoices included the contested mark in its entirety, the Board of Appeal replied in the affirmative, referring to EUIPO’s administrative file.
37 Lastly and in any event, it must be held that the file to which the applicant refers was not intended for it. It is not disputed that, in support of its claim that the contested mark does not appear on the sales invoices, the applicant refers to the document contained in the EUIPO search portal ‘eSearch plus’, which bears the number ‘167724726.pdf’. However, that document corresponds to the intervener’s communication of 3 June 2019 to EUIPO of the evidence, including the sales invoices at issue. By contrast, EUIPO sent the applicant that evidence on 18 June 2019 in a document which, in the EUIPO search portal ‘eSearch plus’, bears the number ‘258666.pdf’. In that file for the applicant, the contested mark appears at the top left of the header of all the sales invoices at issue.
38 Thus, it must be stated that, as EUIPO submits in essence, the fact that there was a technical error during the intervener’s uploading of the evidence on the EUIPO ‘eSearch plus’ search portal, which had the effect of altering the screen display of the sales invoices in the version sent on 3 June 2019, did not affect the applicant in this case. A version of that evidence without defects, namely including sales invoices featuring the contested mark in its entirety at the top left of their headers, was expressly and regularly sent to the applicant on 18 June 2019.
39 In those circumstances, the Board of Appeal cannot be criticised for failing to fulfil its obligation to state reasons, not only because it could not reasonably have been aware of the reasons underlying the assertion made before it that the sales invoices did not represent the contested mark, but also because a version without defects had initially been sent to the applicant.
40 In that context, the applicant cannot, moreover, reasonably and usefully claim that no other copy of the evidence was sent to it.
41 The first plea must accordingly be rejected.
The second, third and fourth pleas, alleging an error of assessment of the use of the contested mark
42 The applicant submits that the Board of Appeal infringed Article 18(1) of Regulation 2017/1001 and Article 58 of that regulation by finding that the contested mark had been put to genuine use.
43 EUIPO and the intervener dispute the applicant’s arguments.
44 As a preliminary point, it should be recalled that pursuant to Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of an EU trade mark shall be declared to be revoked on application to EUIPO, 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.
45 As regards the criteria for assessing genuine use, 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), applicable to revocation proceedings in accordance with Article 19(1) of that regulation, proof of use must relate to the place, time, extent and nature of use made of the contested 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.
46 It should be recalled that, in proceedings for the revocation of a mark, it is, in principle, for the proprietor of the mark to establish genuine use of that mark (see judgment of 23 January 2019, Klement v EUIPO, C‑698/17 P, not published, EU:C:2019:48, paragraph 57 and the case-law cited).
47 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39 and the case-law cited).
48 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 products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
49 In order to examine whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (see judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42 and the case-law cited).
50 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 12 December 2002, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).
51 In the assessment of the evidence of the genuine use of a mark, each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning. Thus, even if the probative value of an item of evidence is limited to the extent that, individually, it does not show with certainty whether, and how, the goods concerned were placed on the market, and that item of evidence is therefore not in itself decisive, it may nevertheless be taken into account in the overall assessment as to whether the use of the mark concerned is genuine. That is also the case, for example, when that item of evidence is accompanied by other evidence (see, to that effect, judgments of 9 December 2014, Inter-Union Technohandel v OHIM – Gumersport Mediterranea de Distribuciones (PROFLEX), T‑278/12, EU:T:2014:1045, paragraphs 64 to 69, and of 7 September 2016, Victor International v EUIPO – Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 74).
52 In the present case, as stated in the contested decision, in order to prove genuine use of the contested mark, the intervener submitted the following evidence:
– affidavits of retailers from Germany, Spain and Portugal;
– 955 pages of sales invoices issued by Cipriani Industria SpA and Cipriani Industria Srl, companies linked to the intervener, to different retailers in 16 Member States of the European Union at the time (Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Latvia, Luxembourg, Malta, Austria, Portugal, Romania, Slovakia, Sweden and the United Kingdom) and in Switzerland, dated from 2014 to 2019;
– catalogues, brochures and invoices in English, German and Italian from 2014 to 2018;
– food safety authorisations, dated 22 April 2003, authorising Cipriani Industria Srl to produce and package dry egg pasta and to sell foodstuffs, wines and spirits wholesale, and of 6 April 2005 authorising the activity of packaging biscuits and pastry products;
– an affidavit signed by the director of the intervener and Cipriani Industria SpA, dated May 2019, stating that those companies have been using the contested mark since the mid-1980s for various foodstuffs (different types of pasta and also olive oils, vinegar, rice, sauces and panettone); that document includes the annual turnover relating to those products for the years 2014-2019 in 23 Member States of the European Union (by country and by year) and also includes a 28-page list entitled ‘Listing of worldwide Cipriani trade marks in Classes 29 and 30’;
– a licence declaration, dated 29 May 2013, issued by the director of the intervener, in which he states that the intervener is owned by Cipriani International Group SA, and explains its commercial links with other Cipriani companies, including Cipriani Industria Srl; the intervener authorised its related companies to use the Cipriani marks.
53 In the present case, given the date on which the application for revocation was filed, namely 24 January 2019, the Board of Appeal acted correctly in taking the view that the relevant period for the purpose of assessing genuine use of the contested mark extended from 24 January 2014 to 23 January 2019 inclusive.
54 It should be noted that, under the heading ‘conclusion’ in its application, the applicant submits that the contested mark was not put to genuine use in the relevant territory during the relevant period in relation to the goods at issue. However, the pleas put forward by the applicant seek only to call into question the Board of Appeal’s findings relating to the use of the contested mark as registered, its extent and the goods in respect of which it was registered. Thus, it must be held that the other criteria of genuine use are not the subject of any argument and cannot therefore be examined.
– The second plea, alleging an incorrect assessment of the use of the contested mark as registered
55 The applicant submits, in essence, that the Board of Appeal infringed Article 18 of Regulation 2017/1001 in finding that the contested mark had been used as registered.
56 In particular, it submits that the Board of Appeal failed to determine the distinctive and dominant elements of the contested mark in order to assess correctly whether that mark had been used as registered having regard to the evidence. As a result, the Board of Appeal based its assessment of the use of the contested mark as registered on the basis of incomplete findings.
57 In particular, first, the applicant submits, in essence, that the Board of Appeal erred in finding that the occurrence of the term ‘cipriani’ among the items of evidence contributed to substantiating the use of the contested mark as registered.
58 Secondly, as regards the catalogues and brochures, the applicant submits that the Board of Appeal took account only of an image set out on pages 6 and 10 of the Cancellation Division’s decision. In particular, the applicant submits that an examination limited to that image would have had the effect of other evidence being set aside, the examination of which would have led the Board of Appeal to consider that the sign used by the intervener in the contested mark was fundamentally different to that mark.
59 Thirdly, the applicant adds that the Board of Appeal also failed to establish use of the contested mark as registered on the basis of each of the goods at issue. It produces, by way of example, several images taken from the evidence in order to show use of a sign other than that of the contested mark as regards the marketing of panettone, oil, vinegar and rice. In view of the images, the applicant submits that the composition and positioning of the signs used are not identical to the contested mark as registered and that the Board of Appeal failed to acknowledge such differences.
60 EUIPO and the intervener dispute those claims.
61 As a preliminary point, it should be noted that, under point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, use of an EU trade mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered is also to be regarded as use within the meaning of the first subparagraph of Article 18(1) of that regulation.
62 The purpose of that provision, which avoids imposing strict conformity between the form of the EU trade mark as used and the form in which that 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 accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the form of the sign used in trade differs from the form in which that sign was registered only in negligible elements, with the result that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the registered trade mark 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 23 October 2017, Galletas Gullón v EUIPO – O2 Holdings (Shape of a packet of biscuits), T‑404/16, not published, EU:T:2017:745, paragraph 27 and the case-law cited).
63 The finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the elements added, carried out on the basis of the intrinsic qualities of each of those elements, as well as the relative position of the different elements within the arrangement of the trade mark (see judgment of 20 July 2017, Cafés Pont v EUIPO – Giordano Vini (Art’s Cafè), T‑309/16, not published, EU:T:2017:535, paragraph 16 and the case-law cited).
64 In the present case, in paragraph 28 of the contested decision, the Board of Appeal found, first of all, that all the submitted sales invoices represented the contested mark as registered, in the top left of their headers. Similarly, it noted that those invoices showed the most distinctive word element of the sign, namely the term ‘cipriani’, in the description of the product sold.
65 Next, it found that the catalogues and brochures submitted showed sufficient examples in which the contested mark is represented as registered, not only on the pages of the catalogue, but also on the goods themselves, in particular for the packaging of rice, pasta, oil, vinegar, panettone and focaccia. For each of those goods, it specified, by way of example, the page on which the submitted documents showed use of the contested mark as registered.
66 Lastly, the Board of Appeal concluded that, even though some of the goods represented in the catalogues and brochures showed ‘the contested mark in a slightly different composition as the figurative element and with the word element separated’, there was also enough evidence to prove that the goods were marketed with the contested figurative mark as registered.
67 In essence, the applicant claims that, since the Board of Appeal did not examine the distinctive and dominant elements of the contested mark, it could not but err in its assessment of the use of the contested mark as registered for each of the goods at issue.
68 In that regard, it should, first of all, be noted that, as regards the sales invoices, the Board of Appeal found that all of them ‘contain[ed] the contested mark as registered at the top left of the header’. Similarly, it should be noted that, as regards the four sales invoices for which the applicant did not claim an inadequate statement of reasons in its first plea, the applicant stated that the contested mark in the form as registered was displayed on them. Such a representation is identical to the remainder of the sales invoices. Therefore, the Board of Appeal’s finding cannot be called into question.
69 Next, as regards the descriptions of the goods among the sales invoices, the Board of Appeal found that using the sign CIPRIANI contributed to showing the use of the contested mark, since it is the most distinctive word element of the contested mark.
70 In that regard, first, the second word element of the contested mark is clearly the word ‘food’ and the descriptive nature of that word in relation to the goods at issue, namely foodstuffs, is not in doubt. In view of its meaning in English, the word ‘food’ refers directly to the goods at issue. Therefore, among the word elements of the contested mark, the element ‘cipriani’ is clearly the most distinctive element, in particular because it has no connection with the characteristics of the goods at issue.
71 Secondly, and in any event, it should be noted that the sales invoices which include descriptions of goods with the element ‘cipriani’ contain the contested mark as registered in their headers. As EUIPO correctly states, the fact that the word element ‘cipriani’ appears alone in the description of the goods cannot have the effect of excluding the elements in the header from the assessment of genuine use of the contested mark. As is apparent from the principle of overall assessment of the evidence set out in paragraph 51 above, that evidence must be assessed together. In those circumstances, it must be held that the reference to the term ‘cipriani’ in the description of the goods on the sales invoices supports the fact that those goods were marketed under the contested mark.
72 Lastly, as regards the catalogues and brochures, the Board of Appeal found that they ‘do not only show sufficient examples where the contested mark is depicted as registered on the catalogue pages, but also on the products themselves’.
73 Contesting that assessment, the applicant submits, in essence, that, since it failed to examine the distinctive character of the contested mark, the Board of Appeal failed to verify whether the evidence showed use in accordance with the contested mark as registered in relation to all of the goods at issue.
74 However, in paragraph 28 of the contested decision, the Board of Appeal refers, by way of example for each of the goods at issue, to specific illustrations of product packaging contained in the catalogues and brochures. Those references enabled the Board of Appeal to establish use of the contested mark as registered.
75 Examination of those references shows that the Board of Appeal’s findings are well founded. The examples on the basis of which the Board of Appeal found that the contested mark had been used are proved and relate to all of the goods at issue. Moreover, those examples are not isolated cases, since they appear several times in the brochures and catalogues.
76 Consequently, the claim that the Board of Appeal did not carry out an express examination of the distinctive and dominant elements of the contested mark is irrelevant because, in order to support its finding, it was sufficient for the Board of Appeal to note the uses of the contested mark which were identical to the form in which it was registered.
77 Therefore, contrary to what the applicant claims, the Board of Appeal did not err in finding that the contested mark had been used as registered for each of the goods at issue.
78 The applicant’s other arguments are not such as to call that finding into question.
79 First, the applicant claims that, in view of the alleged failure to examine the use of the contested mark as registered for each of the goods at issue, the Board of Appeal failed to comply with its duty to state reasons when it stated, in paragraph 28 of the contested decision, that ‘there is also enough evidence that proves that the products are marketed with the contested figurative mark in its registered form’.
80 In that regard, it is sufficient to note that it is apparent from paragraph 28 of the contested decision that the Board of Appeal expressly based its conclusions on the analysis of the headers of the sales invoices, the product descriptions contained in the invoices as well as the brochures and catalogues. As regards the latter documents, it mentioned the pages to which it referred in order to establish use of the contested mark as registered for each of the goods at issue. Thus, like the Court, the applicant was in a position to understand the reasons for the contested decision and, therefore, to assert its rights.
81 Therefore, since the Board of Appeal provided a sufficient statement of reasons for those findings in accordance with the case-law referred to in paragraph 31 above, such an argument must be rejected as unfounded.
82 Secondly, the applicant submits that the Board of Appeal did not justify its finding that the word element ‘cipriani’ was the most distinctive word element of the sign. It claims that that finding contradicts the decision of the Cancellation Division, which stated that the silhouette and the words ‘cipriani’ and ‘food’ were all key elements of the contested mark that enabled the consumer to identify the registered proprietor.
83 In that regard, it is sufficient to note that that assertion is based on an erroneous reading of the Cancellation Division’s decision. In its examination, the Cancellation Division did not find that each of the elements constituting the contested mark had to be classified as ‘key elements’. By contrast, it is apparent from that decision that the Cancellation Division found, as did the Board of Appeal, that in a large body of evidence, those three elements constituting the whole of the contested mark appeared in the same composition and positions, in a prominent and discernible manner.
84 Moreover, the fact that the Cancellation Division found that the three elements constituting the contested mark were present on the evidence in order to reach its conclusions is not incompatible with the Board of Appeal’s analysis that the element ‘cipriani’ is, among the word elements, the most distinctive element.
85 Therefore, that argument must be rejected as unfounded.
86 Thirdly, the applicant submits that the Board of Appeal was wrong to consider that it was possible to rely on the use of the term ‘cipriani’ in the evidence in order to establish genuine use of the contested mark. In particular, the applicant claims that, in paragraph 28 of the contested decision, the Board of Appeal stated that ‘the use of the word “cipriani” on the invoices or packaging was sufficient to support the claim that the [contested] mark had been used [in its form] as registered’.
87 In that regard, it must be stated that that assertion does not correspond to paragraph 28 of the contested decision, either to its letter or to the interpretation that may be given to it. It must therefore be observed that the applicant’s assertion is based on a misunderstanding of that decision.
88 Moreover, if, by such an argument, it were to be understood that the applicant criticises the Board of Appeal for having taken into account the inclusion of the word ‘cipriani’ in the descriptions of the goods contained in the sales invoices, that argument cannot be upheld. As is apparent from the grounds set out in paragraphs 68 to 76 above, for the purpose of assessing the use of the mark as registered, the Board of Appeal analysed the representation of the contested mark on all the evidence and in accordance with the principle of overall assessment as set out in paragraph 51 above. The reference to the word ‘cipriani’ in the descriptions of goods contained in the sales invoices is merely an indication that the goods at issue are marketed under the contested mark, which is confirmed by an examination of the brochures and catalogues.
89 Therefore, that argument must be rejected as unfounded.
90 Accordingly, the second plea must be rejected.
– The third plea, alleging an incorrect assessment of the extent of use
91 The applicant submits, in essence, that the Board of Appeal infringed Article 18 of Regulation 2017/1001 by concluding that the evidence submitted makes it possible to establish that the contested mark was put to sufficiently extensive use to be regarded as genuine.
92 Its arguments essentially revolve around three complaints.
93 By its first complaint, the applicant submits that it was for the intervener to establish the size of the market for the goods at issue and that the Board of Appeal incorrectly reversed the burden of proof in that regard by considering that it was for the applicant to determine the size of that market.
94 By its second complaint, the applicant alleges that the Board of Appeal erred in finding that the contested mark had been put to sufficiently extensive use, because the Board of Appeal did not examine the commercial volume of sales under that mark in the light of the size of the market for the goods at issue in the European Union.
95 By its third complaint, the applicant submits, in essence, that the Board of Appeal found that there had been sufficiently extensive use of the contested mark as a result of reasoning that was contradictory.
96 EUIPO and the intervener dispute those arguments.
97 As a preliminary point, as regards the assessment of the extent of use to which a contested trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (see judgment of 8 November 2007, Charlott v EUIPO – Charlo (Charlott France Entre Luxe et Tradition), T‑169/06, not published, EU:T:2007:337, paragraph 36 and the case-law cited).
98 Use of the mark need not, therefore, always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market (see, to that effect, judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 39). However, the smaller the commercial volume of use 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, 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).
99 Thus, the fact that commercial volume achieved under the contested mark 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).
100 In the present case, the Board of Appeal first noted that the numerous sales invoices issued to retailers throughout the European Union, assessed in conjunction with the other evidence, such as the affidavits of some of those retailers, show continuous and significant sales of the goods at issue. Next, the Board of Appeal found extensive use of the contested mark for pasta and that the applicant did not oppose that finding. Lastly, the Board of Appeal substantiated its reasoning as regards the other goods at issue, namely olive oil, rice, panettone, focaccia and biscotti. It took the view that the applicant’s argument that those goods had only accounted for sales of 100 or 120 units or for amounts of less than EUR 500 had no factual basis. Relying, by way of illustration, on some invoices, it noted that they showed, on the contrary, continuous sales of those products for high amounts.
101 Thus, the Board of Appeal concluded that, even on the assumption – in support of which the applicant had not provided it with any evidence – the market for foodstuffs and beverages in the European Union is of significant size and value, the sales invoices demonstrated sufficiently extensive use of the contested mark for all of the goods at issue.
102 In support of that conclusion, the Board of Appeal found, first, that the requirement of genuine use was not related to the commercial success of an undertaking and, secondly, that despite the lack of a breakdown of the turnover by product in the affidavits of retailers and the intervener, those affidavits made it possible to establish use of the contested mark in several Member States of the European Union.
103 By its first complaint, the applicant alleges that the Board of Appeal incorrectly reversed the burden of proof for the purpose of defining the size of the market in question, namely, according to the applicant, the food market. In particular, the applicant disputes the consideration set out in paragraph 26 of the contested decision that its claims seeking to refute the extent of use of the contested mark were irrelevant because it ‘did not provide any evidence’ in order to establish the size of that market. On the contrary, the applicant submits that it was for the intervener, as proprietor of the contested mark, to establish the size of that market in order to demonstrate genuine use.
104 In that regard, it is sufficient to note that, in paragraph 26 of the contested decision, the Board of Appeal expressly based its analysis on the assumption put forward by the applicant that the food and beverage market was of significant size and value in the European Union. Consequently, the finding by which the Board of Appeal stated, in the same paragraph of the contested decision, that the applicant had not produced any evidence to define the market for the goods at issue had no bearing on the assessment carried out by that board.
105 Accordingly, the first complaint in the third plea is not such as to call into question the legality of the contested decision.
106 By its second complaint, the applicant alleges that the Board of Appeal did not correctly assess the extent of the use of the contested mark in the light of the size of the market for the goods at issue in the European Union.
107 In particular, in support of that complaint, the applicant states that, in the case which gave rise to the judgment of 18 October 2016, August Storck v EUIPO – Chiquita Brands (Fruitfuls) (T‑367/14, not published, EU:T:2016:615), the Board of Appeal was itself able to establish the size of the confectionery market in the European Union. Thus, the applicant submits that it follows from the case-law and from the decisions of the Board of Appeal and the Cancellation Division of EUIPO that the extent of use must be examined in the light of the size of the market for the goods at issue. Since they are foodstuffs of low value and intended for ‘mass market consumption’, the extent of use of the mark should be demonstrated by a sales volume proportionate to the ‘overall’ size of the market that those goods constitute in the European Union.
108 In that regard, it should first of all be recalled that the Board of Appeal based its analysis on the assumption put forward by the applicant that the food market is a significant market in the European Union. Therefore, assuming that the Board of Appeal could have, in practice, itself established the size of the market for the goods at issue in the examination of an application for revocation, it must be stated that such a circumstance has no bearing on the present case.
109 Next, it should be noted that the applicant’s claims are based on an incorrect premiss.
110 As is apparent from the case-law set out in paragraphs 97 to 99 above, in assessing the use of an EU trade mark, account must be taken of several factors, which must be analysed in an interrelated manner.
111 It is true that the characteristics of the market in question are among the factors which must be taken into account and where, as in the present case, they are everyday consumer goods, it is necessary to assess the commercial volume of sales under the contested mark in the light of the size of the market in question (see, to that effect and by analogy, judgment of 7 June 2018, Sipral World v EUIPO – La Dolfina (DOLFINA), T‑882/16, not published, EU:T:2018:336, paragraph 75).
112 However, those factors also include the length of the period during which the acts of use occurred and the frequency of those acts. In short, as is apparent from the case-law referred to in paragraph 47 above, the assessment of those criteria must make it possible to establish that the contested mark has been used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and 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.
113 Lastly, in the present case, while there is no doubt that the market for foodstuffs is a significant market in the European Union, it must also be stated, as the Board of Appeal found in paragraph 26 of the contested decision, that the intervener submitted a considerable number of invoices showing the sale of the goods at issue under the contested mark continuously throughout the relevant period to multiple retailers located in 16 Member States of the European Union with a sustained frequency.
114 Therefore, it must be concluded that, first, the Board of Appeal took account of the various criteria designed to establish the extent of use of a mark, including the characteristics of the market for the goods at issue, and, secondly, it correctly applied those criteria in the present case.
115 Accordingly, the second complaint of the third plea is unfounded.
116 By its third complaint, the applicant claims that the Board of Appeal found there to be sufficiently extensive use of the contested mark as a result of contradictory reasoning.
117 In particular, first, the applicant submits that the Board of Appeal acknowledged, in paragraph 26 of the contested decision, the accuracy of certain figures which it had brought to its attention, namely that invoices of less than 100 units and representing an amount of less than EUR 500 were provided for the sale of olive oil, rice, panettone, focaccia and biscotti, and less than 120 units in respect of the sale of vinegar. Secondly, the applicant submits that the Board of Appeal acknowledged in paragraph 27 of the contested decision that the turnover mentioned in the affidavits of the intervener’s director and several retailers is not broken down by product.
118 In that regard, first of all, it is necessary to reject as a misunderstanding of the contested decision the applicant’s argument that the Board of Appeal found, in paragraph 26 of the contested decision, that the intervener was able to prove only the sale of fewer than 100 units of olive oil, rice, panettone, focaccia and fewer than 120 units of vinegar, for an amount of less than EUR 500.
119 It must be stated that the applicant’s claims are based on an incorrect statement of the amounts which the Board of Appeal set out in paragraph 25 of the contested decision. Not only are they displayed by way of illustration, but most of them are well above EUR 500. For example, the Board of Appeal refers to an invoice for the sale of panettone in Spain in the amount of EUR 2 869.26, another for the sale of foccacia in the United Kingdom in the amount of EUR 1 231.20, or another for the sale of olive oil in Estonia in the amount of EUR 10 423.28.
120 Next, contrary to what the applicant claims, the Board of Appeal did not base its decision on a single invoice for each of the goods at issue, but rather, as it explains in paragraph 26 of the contested decision, on all the invoices produced during the relevant period.
121 The examination of those invoices makes it possible to reach the same conclusion as the Board of Appeal, namely that the numerous invoices submitted by the intervener refer to the sale of the goods at issue throughout the relevant period, at a sustained frequency and in volumes which, at the very least, cannot be described as symbolic.
122 Finally, it is true that the statements submitted by the intervener do not contain a breakdown of the turnover by product. However, it must be stated that such evidence is secondary in the present case. It is apparent from the contested decision that the Board of Appeal examined the extent of use of the contested mark as a matter of priority on the basis of the sales invoices. By contrast, it rightly found that those statements were capable only of corroborating the circumstances of the use of the contested mark, in particular its use in several Member States of the European Union.
123 Therefore, the Board of Appeal did not err in taking those statements into account.
124 In the light of the foregoing, the third complaint of the third plea must be rejected as unfounded.
125 Therefore, the third plea must be rejected.
– The fourth plea, alleging an error of assessment of the use of the contested mark for the registered goods
126 The applicant submits, in essence, that the Board of Appeal infringed Article 58(2) of Regulation 2017/1001 in finding that the registered mark had been used for the category of ‘preparations made from cereals’.
127 In particular, the applicant submits it is true that the general heading ‘pasta and noodles’ was absent from the seventh edition of the Nice Classification when the application for registration of the mark at issue was filed, namely in the 1997 version. However, since such a heading was included in the general indications of that class when the application for revocation was filed, pasta may exist as a subcategory in its own right. Consequently, the Board of Appeal’s finding that the contested mark was used for ‘preparations made from cereals’ is based on erroneous reasoning.
128 EUIPO and the intervener dispute those claims.
129 As a preliminary point, it should be noted that, pursuant to Article 58(2) of Regulation 2017/1001, where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor must be declared to be revoked in respect of those goods or services only (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 36).
130 With regard to the concept of ‘some of the goods or services’ referred to in that article, it should be noted that a consumer who wishes to purchase a product or service in a category of goods or services that has been defined particularly precisely and narrowly, but within which it is not possible to make any significant sub-divisions, will associate all the goods or services belonging to that category with a mark registered in respect of that category of goods or services, such that that trade mark will fulfil its essential function of guaranteeing the origin of those goods or services. Accordingly, it is sufficient to require the proprietor of such a mark to adduce proof of genuine use of his or her trade mark in relation to some of the goods or services in that homogeneous category (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 37 and the case-law cited).
131 On the other hand, with regard to goods or services in a broad category of goods, which may be sub-divided into several independent subcategories, it is necessary to require the proprietor of a mark registered in respect of that category of goods or services to adduce proof of genuine use of his or her mark for each of those independent subcategories, failing which he or she will be liable to forfeit his or her rights to the trade mark in respect of those independent subcategories for which he or she has not adduced such proof (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 38 and the case-law cited).
132 Indeed, if the proprietor of a mark has registered his or her trade mark for a wide range of goods or services which he or she may potentially market, but which he or she has not done during a continuous period of five years, his or her interest in enjoying the protection of his or her mark for those goods or services cannot prevail over his or her competitors’ interest in using an identical or similar sign for those goods or services, or even in applying for registration of that sign as a trade mark (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 39 and the case-law cited).
133 With regard to the relevant criterion to apply for the purpose of identifying a coherent subcategory of goods or services capable of being viewed independently, the criterion of the purpose and intended use of the goods or services at issue is the essential criterion for defining an independent subcategory of goods (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 40 and the case-law cited).
134 It is important therefore to assess in a concrete manner – principally in relation to the goods or services for which the proprietor of a mark has furnished proof of use of his or her mark – whether those goods or services constitute an independent subcategory in relation to the goods and services falling within the class of goods or services concerned, so as to link the goods or services for which genuine use of the mark has been proved to the category of goods or services covered by the registration of that trade mark. The only relevant question in that regard is whether a consumer who wishes to purchase a product or service falling within the category of goods or services covered by the trade mark in question will associate all the goods or services belonging to that category with that mark (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraphs 41 and 43 and the case-law cited).
135 In the present case, first of all, in paragraph 33 of the contested decision, the Board of Appeal found that the evidence had demonstrated genuine use of the contested mark for numerous types of pasta and for panettone and focaccia.
136 Next, the Board of Appeal observed that the different types of pasta for which the intervener used the contested mark were covered by the heading of Class 30 ‘preparations made from cereals’. It found that, at the time when the contested mark was filed, ‘pasta’ did not constitute a separate class heading. Since ‘pasta’ is included in Class 30, with the general indication ‘preparations made from cereals’, the Board of Appeal found that the contested mark had to be regarded as having been used for ‘preparations made from cereals’.
137 Lastly, the Board of Appeal found that the contested mark had been used for focaccia, that is to say, a type of flat bread manufactured with yeast and olive oil and flavoured with herbs, and panettone, namely a rich Italian bread, manufactured with eggs, fruit and butter and usually eaten at Christmas. Thus, it took the view that those goods could be classified as both ‘bread’ and ‘preparations made from cereals’.
138 Accordingly, in view of the goods in respect of which proof of use of the contested mark had been provided, the Board of Appeal found that that mark had been used for ‘preparations made from cereals, bread’.
139 In essence, the applicant claims that, given that the heading ‘pasta’ is now included in Class 30 of the Nice Classification, the Board of Appeal erred in finding that ‘pasta’ did not constitute an independent subcategory of ‘preparations made from cereals’.
140 In that regard, it should be noted at the outset that such a claim is based on a false premiss.
141 As a preliminary point, it should be noted that ‘pasta’ did not constitute a separate class heading at the time of the application for registration of the contested mark.
142 Next, first, as follows from Article 58(2) of Regulation 2017/1001, cited in paragraph 129 above, if the ground for revocation exists in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor are to be declared to be revoked in respect of those goods or services only. In that regard, the fact that new editions of the Nice Classification have been published since the date of registration of the contested mark is irrelevant, since they cannot retrospectively alter the list of goods designated by a registered mark.
143 Secondly, in the light of the case-law referred to in paragraph 134 above, the determination of a possible independent subcategory must be assessed in a concrete manner, principally in the light of the goods or services for which the proprietor of a trade mark has provided proof of use of its mark. Thus, the fact that, in contrast to the situation existing on the date of registration of the contested mark, there is a new entry entitled ‘pasta’ in Class 30 of the Nice Classification on the day of the application for revocation has no bearing on the determination of an independent subcategory of ‘pasta’ in relation to ‘preparations made from cereals’.
144 Therefore, in the present case, the only relevant question is whether the goods in the category of ‘preparations made from cereals’, for which use of the contested mark has been proved, constitute an independent subcategory of that category. In the present case, as EUIPO observes, the applicant does not dispute the fact that the contested mark was used for, inter alia, various types of pasta, panettone and focaccia.
145 In accordance with the case-law set out in paragraph 133 above, in order to determine whether pasta, panettone and focaccia constitute a subcategory of goods capable of being viewed independently in the light of the heading of Class 30 of the Nice Classification ‘preparations made from cereals’, it is necessary to determine whether they are in essence different, namely whether they have a different purpose and intended use.
146 In that regard, first, the applicant has clearly not put forward any form of analysis to that end. Secondly, as observed by EUIPO, it should be noted that pasta, panetonne and foccacia are, like ‘preparations made from cereals’, intended to be consumed by an individual in order to satisfy his or her nutritional needs.
147 That assessment is, moreover, corroborated by the case-law according to which differences such as those concerning the nature, characteristics or place of sale are not relevant to the definition of a subcategory of goods (see, to that effect, judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 53; see, also, judgment of 18 October 2016, Fruitfuls, T‑367/14, not published, EU:T:2016:615, paragraph 32 and the case-law cited).
148 In those circumstances, it must be held that, in view of the use of the contested mark for pasta, panettone and focaccia, it is impossible to consider that those products form independent subcategories in relation to the category ‘preparations made from cereals’ for which that mark is registered.
149 Therefore, the Board of Appeal did not err in finding that the contested mark had been used for ‘preparations made from cereals’.
150 That finding cannot be called into question by the applicant’s other arguments.
151 First, the applicant claims that, by the application for registration of the contested mark, the intervener intended that the application would cover all of the goods in Class 30. In support of that statement, the applicant notes that, on the one hand, the mark applied for had been registered for all the general headings of Class 30. On the other hand, it would follow from the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), that an application for registration of a mark prior to the date of that judgment and stating the general headings of a class of goods must be considered as covering all of the goods of such a class.
152 In that regard, it is sufficient to note that the scope of the dispute brought before the Court applies at most to the goods in respect of which the Board of Appeal found that proof of the use of the contested mark had been demonstrated. Consequently, the question of what the proprietor of the contested mark intended when he indicated the goods for which he was applying for registration of that mark is irrelevant. In those circumstances, in the light of the arguments raised by the applicant, it is for the Court alone to verify the merits of the Board of Appeal’s finding that use of the contested mark has been proved for the category of ‘preparations made from cereals’.
153 That argument must therefore be rejected as ineffective.
154 Secondly, the applicant submits that the Board of Appeal erred in finding that the evidence of use of the contested mark for panettone and focaccia made it possible to contribute to establishing genuine use for the general category of ‘preparations made from cereals’.
155 In support of that line of argument, the applicant submits that, in paragraph 38 of the judgment of 18 October 2016, Fruitfuls (T‑367/14, not published, EU:T:2016:615), the Court held that chocolate bars and chocolate could not, in that case, constitute a subcategory of ‘confectionery’ because the mark at issue was also registered for ‘chocolate and chocolate goods’ and such goods fell rather within that latter category. By analogy, the applicant submits that panettone and focaccia can only establish genuine use of the contested mark for the category of goods ‘bread’, of which panettone and focaccia form part, but not jointly for the category of ‘preparations made from cereals’. Therefore, the Board of Appeal should have taken account only of pasta in order to assess whether the contested mark had been put to genuine use for the general category of ‘preparations made from cereals’.
156 In the present case, the Board of Appeal found that panettone and focaccia could be classified both as ‘preparations made from cereals’ and ‘bread’. In so doing, it found that proof of use of the contested mark for panettone and foccacia contributed to establishing genuine use for those two categories of goods together.
157 In that regard, it should be noted that the classification of goods and services under the Nice Agreement is itself carried out only for exclusively administrative purposes. The scope of protection under trade mark law is therefore not determined by a term’s inclusion in a taxonomic information structure but by the usual meaning of that term. The purpose of the Nice Classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. By contrast, the headings of the classes do not constitute a system in which goods or services included in one class or category are precluded from also forming part of another class or category (see, to that effect, judgment of 19 April 2018, Rintisch v EUIPO – Compagnie laitière européenne (PROTICURD), T‑25/17, not published, EU:T:2018:195, paragraph 70 and the case-law cited).
158 Thus, in order to establish that a product contributes to genuine use of a mark for a general category of goods covered by that mark, it is sufficient to determine whether that product can correspond to the usual meaning of that category. That said, contrary to the interpretation adopted by the applicant, a product may help to demonstrate genuine use for two categories of goods in the same class covered by a trade mark.
159 In the present case, the Board of Appeal did not err in finding that panettone and focaccia could be classified both as ‘preparations made from cereals’ and as ‘bread’, both in Class 30, which, moreover, the applicant does not dispute.
160 Consequently, the applicant’s argument is unfounded.
161 In the light of the foregoing, the third plea must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
162 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
163 Since 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.
164 As regards the intervener’s claim that the applicant should be ordered to pay the costs of the proceedings before the Board of Appeal, it is sufficient to point out that, since the present judgment is dismissing the action brought against the contested decision, it is paragraph 2 of the operative part of the contested decision which continues to determine the costs in question.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Hotel Cipriani SpA to bear its own costs and to pay those incurred, in connection with the present proceedings, by the European Union Intellectual Property Office (EUIPO) and by Altunis-Trading, Gestão e Serviços, Sociedade unipessoal, Lda.
Delivered in open court in Luxembourg on 14 December 2022.
E. Coulon | | M. van der Woude |