Language of document : ECLI:EU:T:2020:439

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

23 September 2020 (*)(1)

(EU trade mark – Opposition proceedings – Application for an EU three-dimensional mark – Shape of a blade of grass in a bottle – Earlier three-dimensional national mark – Genuine use of the earlier mark – Article 15(1) and Article 43(2) and (3) of Regulation (EC) No 40/94 (now Article 18(1) and Article 47(2) and (3) of Regulation (EU) 2017/1001) – Nature of use – Alteration of distinctive character – Use in conjunction with other marks – Scope of the protection – Requirement for clarity and precision – Requirement for the description and the representation to align with one another – Decision taken following annulment of an earlier decision by the General Court – Reference to the grounds of an earlier annulled decision – Obligation to state reasons)

In Case T‑796/16,

CEDC International sp. z o.o., established in Oborniki Wielkopolskie (Poland), represented by M. Siciarek, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Walicka and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Underberg AG, established in Dietlikon (Switzerland), represented by A. Renck, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 August 2016 (Case R 1248/2015‑4) relating to opposition proceedings between CEDC International  and Underberg,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira, President, D. Gratsias and M. Kancheva (Rapporteur), Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 11 November 2016,

having regard to the response of EUIPO lodged at the Court Registry on 24 February 2017,

having regard to the response of the intervener lodged at the Court Registry on 8 March 2017,

having regard to the decision of 29 May 2017 to suspend the proceedings,

having regard to the decision of 12 August 2019 to resume the proceedings,

having regard to the measures of organisation of procedure of 10 December 2019 and the parties’ responses lodged at the Court Registry on 23 December 2019 and on 9 January 2020,

further to the hearing on 6 February 2020,

gives the following

Judgment

 Background to the dispute

1        On 1 April 1996, the intervener, Underberg AG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (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)).

2        Registration as a mark was sought for the following three-dimensional sign:

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3        That representation of the mark applied for is accompanied by the following description: ‘the object of the trade mark is a greeny-brown blade of grass in a bottle; the length of the blade of grass is approximately three-quarters the height of the bottle’.

4        The goods in respect of which registration was sought are in Class 33 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 to the following description: ‘Spirits and liqueurs’.

5        The trade mark application No 33266 was published in Community Trade Marks Bulletin No 51/2003 of 23 June 2003.

6        On 15 September 2003, Przedsiębiorstwo Polmos Białystok (Spółka Akcyjna), which was replaced by the applicant, CEDC International sp. z o.o., following a merger by acquisition on 27 July 2011, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (subsequently Article 41 of Regulation No 207/2009, now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of the goods referred to in paragraph 4 above.

7        The opposition was based inter alia on the earlier three-dimensional French mark, filed on 18 September 1995, registered on 18 April 1997 under No 95588457, renewed on 9 June 2005 and 13 July 2015 (after being sent to the applicant on 28 October 2011) for ‘alcoholic beverages’ in Class 33 of the Nice Agreement, represented as follows:

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8        That representation of the earlier three-dimensional French mark is accompanied by the following description: ‘the mark consists of a bottle such as is pictured above, inside which a blade of grass is placed in the body of the bottle in an almost diagonally inclined position’.

9        The opposition was also based on other trade marks representing, in the applicant’s view, a blade of grass in a bottle, namely German trade mark No 39848553, Polish trade marks Nos 62018, 62081 and 85811, Japanese trade mark No 2092826, French trade mark No 98746752 and unregistered signs claimed in various EU Member States.

10      The grounds relied on in support of the opposition were those referred to, first, in Article 8(1)(a) and (b) of Regulation No 40/94 (which became Article 8(1)(a) and (b) of Regulation No 207/2009, and subsequently Article 8(1)(a) and (b) of Regulation 2017/1001) on the basis of the earlier three-dimensional French mark No 95588457 reproduced in paragraph 7 above, second, in Article 8(3) of Regulation No 40/94 (subsequently Article 8(3) of Regulation No 207/2009, now Article 8(3) of Regulation 2017/1001) on the basis of that same trade mark and the registered marks referred to in paragraph 9 above and, third, in Article 8(4) of Regulation No 40/94 (which became Article 8(4) of Regulation No 207/2009, and subsequently Article 8(4) of Regulation 2017/1001) on the basis of the unregistered signs referred to in paragraph 9 above.

11      On 11 July 2007, the applicant submitted evidence of use of its earlier three-dimensional French mark by the deadline of 1 August 2007 set by the Opposition Division in response to a request for proof of genuine use made by the intervener. On 3 July 2008, the applicant elaborated on its arguments concerning proof of that use.

12      On 18 October 2010, the Opposition Division rejected the opposition in its entirety. It held inter alia that the evidence submitted was insufficient to establish genuine use of the earlier three-dimensional French mark between 23 June 1998 and 22 June 2003 (‘the relevant period’) and that the presence of a label containing the term ‘Żubrówka’ and the representation of a bison on the bottle marketed altered the distinctive character of that mark in the form in which it had been registered.

13      On 17 December 2010, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. On 18 February 2011, it lodged the statement setting out the grounds of the appeal, to which evidence of use which had not been adduced before the Opposition Division was attached.

14      By decision of 26 March 2012 (‘the initial decision’) in Case R 2506/2010‑4, the Fourth Board of Appeal of EUIPO dismissed the appeal.

15      With regard, first, to the ground of opposition set out in Article 8(1)(a) and (b) of Regulation No 207/2009, the Board of Appeal began by listing the evidence of use adduced by the applicant before the Opposition Division, to which various representations of ŻUBRÓWKA vodka bottles seen from the front were attached, adding that ‘no other presentations than the ones depicted [below] [had been] submitted’:

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16      Next, the Board of Appeal considered that (i) the French mark, use of which had been proved, consisted of a ‘common shaped bottle with a line on the body which r[an] diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’, as reproduced in paragraph 7 above, (ii) proof of use showed bottles in two different shapes but always with the same striking non-transparent ‘żubrówka bison vodka’ label covering a large part of the bottles and (iii) the diagonal line was not affixed to the outside surface and did not appear on the label itself. It further found that, as a result of the presence of the label, it was impossible to see what was behind it on or in the bottles.

17      Lastly, the Board of Appeal concluded that, in those circumstances, the applicant had not proved the nature of use of the earlier three-dimensional French mark, that is to say, the use of that mark as registered or in a form which differed in elements which do not alter the distinctive character of that trade mark in the form in which it was registered. From that, it inferred, as that trade mark was the only earlier mark on which the opposition was based under Article 8(1)(a) and (b) of Regulation No 207/2009, that that opposition had to be rejected.

18      With regard, second, to the ground of opposition set out in Article 8(4) of Regulation No 207/2009, the Board of Appeal held that the applicant had not proved actual use of the unregistered signs claimed in various Member States of the European Union (see paragraph 9 above), inter alia in Germany, and accordingly rejected the opposition based on that ground.

19      With regard, third, to the ground of opposition set out in Article 8(3) of Regulation No 207/2009, the Board of Appeal found that the applicant had not proved either actual use of the trade marks relied on (see paragraph 9 above) or, in the contractual documents submitted, any relationship of agency or commercial activity with the intervener and accordingly rejected the opposition based on that ground. For the sake of completeness, the Board of Appeal added that, for some of the trade marks relied on, it had not been proved that the applicant was the proprietor, they had been filed after the date on the trade mark at issue was filed or their existence was not sufficiently substantiated in accordance with Rule 19 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 7 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), inter alia because they had not been translated into English, the language of the case before it.

20      By application lodged at the Court Registry on 29 May 2012 and registered under case number T‑235/12, the applicant brought an action for annulment of the initial decision, in support of which it put forward three pleas in law.

21      By judgment of 11 December 2014, CEDC International v OHIM – Underberg (Shape of a blade of grass in a bottle) (T‑235/12, EU:T:2014:1058; ‘the judgment ordering annulment’), the Court annulled the initial decision.

22      As a preliminary point, the Court noted that the applicant was challenging EUIPO’s findings and assessments concerning all the grounds for opposition, that is to say, those laid down in Article 8(1)(a), Article 8(3) and Article 8(4) of Regulation No 207/2009, but that, however, the applicant stated that it was restricting its arguments solely to the Board of Appeal’s findings on the assessment of the evidence of use adduced, as those findings also concerned all the grounds put forward in support of the opposition (paragraph 29 of the judgment ordering annulment).

23      The Court considered it appropriate to begin by examining the third plea, alleging infringement of Article 75 and Article 76(1) and (2) of Regulation No 207/2009 (now Article 94 and Article 95(1) and (2) of Regulation 2017/1001) concerning the evidence to be taken into account in assessing genuine use of the earlier three-dimensional French mark. By that plea, the applicant claims that the Board of Appeal had failed to examine, without providing reasons for not doing so, certain evidence adduced for the first time before it, containing inter alia representations of the vodka bottle bearing the term ‘żubrówka’ from four different angles, not only from the front but also from the back and the side, proving, in its submission, that that mark in the shape of a blade of grass in a bottle was clearly visible and had actually been used (the judgment ordering annulment, paragraphs 30 and 31).

24      The Court observed that the five annexes submitted for the first time before the Board of Appeal were as follows:

–        articles from the French press and extracts from French websites, dating from 1998 to 2003 and containing representations of the bottle of vodka with the word ‘żubrówka’ and statements to the effect that, in essence, ŻUBRÓWKA vodka with the ‘famous bison grass’ ‘is easily identified thanks to the aromatic blade of grass present in the bottle’;

–        an extract from the Warsaw (Poland) Wallpaper City Guide;

–        a statement of 16 February 2011, written in Polish and translated into English, from Mr K., a specialist technologist in charge of labelling for the applicant since 1992 (‘Mr K.’s statement’);

–        a poster entitled ‘Żubrówka bison grass vodka’;

–        an extract from the Wikipedia website (the judgment ordering annulment, paragraph 50).

25      Appended to Mr K.’s statement were four photographs of bottles of ŻUBRÓWKA vodka, which he stated were exported to France during the relevant period, and which showed the following four representations, in which the bottle was shown from the front, on two opposite sides and from the back (the judgment ordering annulment, paragraph 52):

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26      The Court inferred from the foregoing that the Board of Appeal’s statement in paragraph 16 of the initial decision, to the effect that ‘no other presentations than the [front views had been] submitted’, had to be construed as referring to the evidence of use submitted before the Opposition Division within the time limit set by it, but not to evidence submitted out of time before the Board of Appeal. Accordingly, the Court found that the Board of Appeal had taken into account only the evidence submitted by the applicant before the Opposition Division and not the evidence of use submitted for the first time before it, in particular Mr K.’s statement and the photographs appended thereto, as well as the articles from the French press and the extracts from French websites. The Court held that the Board of Appeal had not exercised the discretion conferred on it to decide whether or not to take into account evidence of use submitted for the first time before it and had not given any reasons for its decision in that regard (the judgment ordering annulment, paragraphs 54, 55 and 61).

27      The Court also found that the supplementary evidence submitted out of time included at the very least Mr K.’s statement and the appended presentations of the bottle, seen from the front, two opposite sides and the back (see paragraphs 24 and 25 above) and that the articles from the French press and the extracts from French websites fulfilled the two requirements laid down in case-law for, in theory, being taken into account by EUIPO. In particular, the Court considered that Mr K.’s statement and the appended presentations of the bottle, seen from the front, two opposite sides and the back, were, prima facie, likely to be truly relevant to the outcome of the opposition brought before EUIPO since, had they been taken into account, they would have been likely to call into question the Board of Appeal’s assessment set out in paragraphs 17 and 18 of the initial decision (see paragraphs 16 and 17 above), first, that ‘the diagonal line was not affixed to the outside surface and did not appear on the label itself’, second, that ‘as a result of the presence of the label, it was impossible to see what was behind it on or in the bottles’ and, third, that ‘in those circumstances, the applicant had not proven the nature of use’ of its earlier three-dimensional French mark (the judgment ordering annulment, paragraphs 63 and 64).

28      In that regard, the Court pointed out that the three-dimensional nature of a trade mark such as that at issue precluded a static, two-dimensional vision and called for a dynamic, three-dimensional perception. Thus, a three-dimensional mark may, in principle, be perceived from a number of sides by the relevant consumer. As regards proof of use of such a mark, according to the Court, it therefore had to be taken into account not as a reproduction of how it was viewed in two dimensions, but rather as a presentation of how it was perceived in three dimensions by the relevant consumer. It followed that presentations from the side and the back of a three-dimensional mark were, as a rule, likely to be truly relevant for the purposes of assessing the genuine use of that trade mark and could not be rejected solely on the ground that they were not reproductions from the front (the judgment ordering annulment, paragraph 65).

29      The Court found that the Board of Appeal was required to exercise its discretion in an objective, reasoned manner to decide whether or not to take into account the evidence submitted out of time which fulfilled the two criteria laid down by case-law, namely, at the very least, Mr K.’s statement and the appended presentations of the bottle, seen from the front, two opposite sides and the back, and also the articles from the French press and the extracts from French websites. Accordingly, in failing to exercise its discretion in an objective, reasoned manner, to decide whether or not to take into account the evidence of use of the earlier three-dimensional French mark submitted for the first time before it, the Board of Appeal had infringed Article 76(2) of Regulation No 207/2009 and also Article 75 of the same regulation by failing to give reasons for its decision on the matter. The Court also considered that the evidence submitted was supplementary and adduced in addition to the relevant evidence submitted within the time limit set (the judgment ordering annulment, paragraphs 68, 69, 87 and 100).

30      Given that the third plea was well founded, the Court upheld the action and consequently annulled the initial decision, without it being necessary to examine the first and second pleas (the judgment ordering annulment, paragraph 103).

31      By decision of the Presidium of the Boards of Appeal of 23 June 2015, the case was remitted to the Fourth Board of Appeal for a further decision, as Case R 1248/2015‑4.

32      By decision of 29 August 2016 (‘the contested decision’) in Case R 1248/2015‑4, the Fourth Board of Appeal of EUIPO dismissed the appeal.

33      In particular, the Board of Appeal found that, even if it were to exercise its discretion to take into account the evidence submitted out of time in favour of the applicant, that evidence did not change its previous decision that the applicant had failed to prove the nature of use and, consequently, genuine use of the earlier French three-dimensional mark, in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) (paragraph 35 of the contested decision).

34      As a starting point, the Board of Appeal noted that the graphical representation of the trade mark as filed defined the scope of its protection and not the description of the trade mark as had been provided by the applicant. It added that a mark description was to define what can be seen in the mark representation and that the scope of protection was not broadened by a possible interpretation of what the applicant meant by that representation or what it had in mind. In the present case, the Board of Appeal observed that (i) the graphical representation of the earlier three-dimensional French mark showed a commonly shaped bottle with a line on the body of it which ran diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base, (ii) the line, shown as a fixed part of the body of the bottle, was a straight diagonal line and nothing else and (iii) that fact was not altered by the description provided by the applicant because the scope of protection of the trade mark was not defined by what the applicant had in mind when filing the mark (paragraphs 38 and 39 of the contested decision).

35      The Board of Appeal found that none of the evidence submitted at first instance showed the trade mark in the form registered, that is to say, as graphically represented in the register. Indeed, none of the bottles bore an uninterrupted diagonal line, let alone the same line as that forming part of the earlier mark, that line was not affixed on the outside surface of any of the bottles shown and did not appear on or across the label itself, and it was impossible to see what could be in the bottle behind the label because the non-transparent label covered almost the entire surface of the bottle. The Board of Appeal added that the applicant had submitted before it additional evidence in which bottles were depicted, some of them with illegible labels and others with labels stating ‘żubrówka bison vodka’, but that all the bottles, like those submitted at first instance, had a non-transparent label, preventing what was behind it from being seen, and did not show the diagonal line forming part of the earlier mark on the outside surface of the bottle or across the label itself. With regard to the evidence submitted out of time, and more specifically the photographs (appended to Mr K.’s statement) of the bottle with the ‘żubrówka bison vodka’ label and depicted on that occasion not only from the front view but also from the back and with two side views, the Board of Appeal observed that, from the side views in each photograph, an uninterrupted elongated line could be perceived and that, although they are somewhat different on the two photographs, those lines were by no means the same as the straight diagonal line which formed part of the earlier mark: for example, their positions were different, they were much longer, they had a different starting point at the bottom of the bottle and they were not completely straight (paragraphs 40 to 42 of the contested decision).

36      The Board of Appeal found that such use, as demonstrated by the applicant, was not use of the trade mark as it was registered, and nor was it use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered within the meaning of Article 15(1)(a) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001). In that respect, it took into account the fact that the distinctive character of the earlier French mark as such was rather weak as it consisted of a commonly shaped bottle with a simple straight line placed in a specific position and of a specific length and that, actually, in the overall impression, it was that line and its specific positioning and length which rendered the trade mark a little distinctive. Accordingly, the scope of protection of the earlier mark as defined by its graphic representation was very weak and, therefore, a form differing in the manner set out in the evidence submitted in no way constituted use of the earlier mark. The Board of Appeal further pointed out that the applicant’s explanation that what was inside the bottles shown in the evidence submitted was a blade of grass, which was an important feature of its ŻUBRÓWKA brand vodka, did not improve its case and was not relevant because the earlier French mark did not protect the concept of a blade of grass in a bottle (paragraphs 43 to 45 of the contested decision).

37      The Board of Appeal concluded that, even taking into account the evidence submitted for the first time before it, the applicant had failed to prove the nature of use of the earlier three-dimensional French mark, which was a necessary requirement for proving genuine use of that earlier mark pursuant to Article 42(2) and (3) of Regulation No 207/2009. From that, it inferred that, for that reason alone, there was no need to examine further the evidence submitted out of time or to examine whether or not account ought to be taken of that evidence as a whole. In its view, the fact remained that the opposition based on the earlier three-dimensional French mark and the grounds laid down in Article 8(1)(a) and (b) of Regulation No 207/2009 failed. As regards the other grounds of the opposition and the other earlier rights relied upon, the Board of Appeal ‘explicitly refer[red] to the reasoning in its decision of 26 March 2012, case R 2506/2010‑4’. It concluded that the opposition failed on all grounds and all earlier rights on which the opposition was based (paragraphs 46 to 49 of the contested decision).

 Procedure and forms of order sought

38      By letter of 4 May 2017, EUIPO requested that the present proceedings be stayed. It explained that it had deemed it appropriate to reopen the examination of absolute grounds concerning the trade mark applied for, on the basis of Article 45(3) of Regulation 2017/1001, and that that examination could result in the application being refused pursuant to Article 7 of that regulation. It added that, if that were the case, the opposition brought by the applicant would be rendered obsolete and that the present action before the Court would become devoid of purpose, in accordance with Article 130(2) of the Rules of Procedure of the General Court.

39      By letters of 22 May 2017, the applicant and the intervener submitted their observations on EUIPO’s application for the proceedings to be stayed and did not oppose that application.

40      On 29 May 2017, the President of the Eighth Chamber of the General Court (former composition) decided, pursuant to Article 69(c) of the Rules of Procedure, to stay the present proceedings until EUIPO informed the Court that a new decision had been adopted following the re-examination of the absolute grounds for refusal relating to the trade mark applied for.

41      By letter of 13 May 2019, the intervener informed the Court of the following developments. The examiner had reopened the examination on the basis of two grounds for refusal. First, on 10 May 2017, he had issued objections to the registration of the mark applied for in the light of Article 7(1)(a) of Regulation No 40/94 (which became Article 7(1)(a) of Regulation No 207/2009 and subsequently Regulation 2017/1001). The intervener had overcome that objection by adjusting the description of the trade mark applied for by adding the wording (which continues not to be noted in the EUIPO register) that ‘[the] mark [was] a position mark’ and ‘the object of the trade mark [was] a greeny-brown blade of grass in a bottle, which is placed diagonally between the bottom of the bottle and its neck, the length of which is approximately three-quarters the height of the bottle’. Second, on 30 January 2018, the examiner had issued an objection to the registration of the trade mark applied for in the light of Article 7(1)(b) of Regulation No 40/94 (which became Article 7(1)(b) of Regulation No 207/2009, and subsequently of Regulation No 2017/1001). The examiner had considered, in essence, that the trade mark applied for showed a blade of grass in a bottle, which did not constitute a significant departure from the norms and customs of the sector, since herbs and plants in bottles had always been used in the production of spirits, as was clear from the evidence gleaned from the Internet (including a bottle with the ŻUBRÓWKA  brand and other bottles of Polish vodka, of the GRASOVKA brand and with an illegible word). On 10 July 2018, the examiner had refused the trade mark application. The intervener had filed a notice of appeal against that decision, under number R 1651/2018‑4. By decision of 12 April 2019, the Fourth Board of Appeal of EUIPO had annulled the examiner’s decision and found that the grounds for refusal laid down in Articles 41 and 42 of Regulation 2017/1001 were not met in relation to the trade mark applied for. In particular, the Board of Appeal had criticised procedural infringements on the part of the examiner, which in the Board’s view constituted an ‘unacceptable … salami tactic’, and the evidence provided by the examiner, which post-dated the filing of the trade mark application, that is to say, 1 April 1996, and related to Poland, which was not a Member State of the European Union at that time. The Board of Appeal had found that, 23 years later, it was practically impossible to evaluate market conditions retrospectively for the year 1996 and a European Community of 15 Member States. As a result of all those developments, the intervener requested that the present proceedings be reopened.

42      By letter of 3 June 2019, EUIPO submitted its observations on the intervener’s request for the proceedings to be reopened. It informed the Court that the re-examination of the trade mark applied for was closed, following the final decision of the Fourth Board of Appeal in Case R 1651/2018‑4, and that the present proceedings could be reopened.

43      By letter of 3 June 2019, the applicant responded to the intervener’s request. It called for the Court to require EUIPO to submit to the Court, for the purposes of the present proceedings, the complete file pertaining to the re-examination procedure for the trade mark applied for before EUIPO, to which it had been unable to gain access, despite its requests, owing to reasons of ‘confidentiality’ and on the pretext that it was an ‘unpublished trade mark application’ (whereas it had been published in 2003; see paragraph 5 above). It also requested an extension of the deadline for the submission of observations on the intervener’s request to reopen the proceedings on a new date falling one month after EUIPO having submitted the complete file to the Court and that file having been made available for the applicant to access, to enable it to evaluate the merits of the Board of Appeal’s decision in Case R 1651/2018‑4 and, consequently, of the reopening of the proceedings.

44      By letter of 9 July 2019, the intervener objected to the applicant’s request for documents to be produced on the ground that the subject of the present dispute before the Court was solely the Board of Appeal’s decision in Case R 1248/2015‑4, which concerned genuine use of an earlier three-dimensional mark in France between 1998 and 2003 (opposition proceedings) and not the distinctive character of the position of a blade of grass in a bottle within the European Union in 1996 (re-examination procedure).

45      By letter of 10 July 2019, EUIPO also objected to the applicant’s request for production of documents on the ground that the applicant was not party to the ex parte re-examination procedure, which is separate from the inter partes opposition proceedings which gave rise to the present action. It added that if – following its notification that the applicant’s request for opening for public inspection was irregular, a notification to which the applicant had not responded – a decision refusing that request were to be made, the applicant could bring an action.

46      On 12 August 2019, the President of the Eighth Chamber of the General Court (former composition) refused the applicant’s request for production of documents and, consequently, ordered that the present proceedings be reopened.

47      Since the composition of the Chambers of the General Court was altered on 4 October 2019, the Judge-Rapporteur was assigned to the Ninth Chamber, to which the present case was accordingly allocated on 22 October 2019, pursuant to Article 27(5) of the Rules of Procedure.

48      The applicant claims that the Court should:

–        annul the contested decision in its entirety;

–        order EUIPO and the intervener to pay the costs incurred in the proceedings before the Court and before the Board of Appeal.

49      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

50      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs, including all costs incurred by the intervener.

 Law

51      In support of its action, the applicant puts forward three pleas in law. The first plea alleges infringement of Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001). The second plea alleges infringement of Article 15(1) of Regulation No 207/2009 and of Rule 22(3) of Regulation No 2868/95 (now Article 10(3) of Delegated Regulation 2018/625) as well as Article 8(1)(a) and (b) and Article 42(2) and (3) of Regulation No 207/2009. The third plea alleges infringement of Articles 75 and 76(1) and (2) of Regulation No 207/2009.

 Preliminary observations

 On the applicable law ratione temporis

52      It is apparent from the file that the Board of Appeal applied Regulation No 207/2009 (see paragraph 3 of the contested decision), that the applicant based its pleas on that regulation (see paragraph 4 of the application), that the intervener based its response on that regulation and that EUIPO, in its response, relied on a version of the ‘EUTMR’ with numbered provisions corresponding to those of that regulation.

53      However, in response to a question from the Court at the hearing, EUIPO stated that, since the date on which the trade mark application was filed was decisive, the applicable law in the present case, at least as regards the substance, was Regulation No 40/94.

54      In view of the filing date of the application for registration of the mark applied for, in the present case 1 April 1996, and that date being decisive for the purposes of identifying the applicable substantive law (see, to that effect, order of 26 October 2015, Popp and Zech v OHIM, C‑17/15 P, not published, EU:C:2015:728, paragraph 2; judgment of 12 December 2019, EUIPO v Wajos, C‑783/18 P, not published, EU:C:2019:1073, paragraph 2) and in view of the date on which the contested decision was adopted, in the present case 29 August 2016, which is decisive for the purposes of identifying the applicable procedural law, it must be held that the present dispute is governed, on the one hand, by the substantive provisions of Regulation No 40/94 and, on the other hand, by the procedural provisions of Regulation No 207/2009. The substantive provisions of those two relevant regulations are, in essence, identical for the purposes of the present proceedings.

55      As regards the second plea, which alleges infringement of various provisions of substantive law, having regard to the fact that the relevant provisions of Regulations No 40/94 and No 207/2009 are, in essence, identical, the Court will apply the substantive provisions of Regulation No 40/94. However, it must be stated that the fact that the Board of Appeal applied identical provisions of Regulation No 207/2009, which was, after all, not disputed by the applicant, cannot cause the contested decision to be set aside. Indeed, the application of either of those regulations ratione temporis does not lead to a different result and any challenge to that decision on that basis would be ineffective.

56      As regards the first and third pleas, alleging infringement of a number of procedural provisions, since the contested decision was adopted on 29 August 2016, the provisions of Regulation No 207/2009, where appropriate as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Regulation No 2868/95, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), apply to them (see, to that effect, judgment of 31 October 2019, Repower v EUIPO, C‑281/18 P, EU:C:2019:916, paragraphs 2 and 3). More specifically, Article 4 of Regulation 2015/2424 provides that that regulation enters into force on 23 March 2016, but that certain provisions of Regulation No 207/2009, including Article 75, are to apply only from 1 October 2017. In the present case, in view of the date on which the decision in question was adopted, Article 75 of Regulation No 207/2009 in its original version continues to apply to that decision. However, in the absence of transitional provisions, Articles 65(6) and 76(1) of Regulation No 207/2009 apply to that decision as amended by Regulation 2015/2424. In short, applying the original or amended versions of the procedural provisions of Regulation No 207/2009 ratione temporis does not lead to a different result as regards the examination of the first and third pleas.

 The subject matter of the present dispute

57      The applicant disputes EUIPO’s assessments concerning all the grounds of the opposition, namely Article 8(1)(a) and (b), (3) and (4) of Regulation No 207/2009. However, the applicant limits its arguments to the Board of Appeal’s findings on the assessment of the evidence it provided of its use of the earlier three-dimensional French mark, since, in its view, those findings affect all the grounds of the opposition due to the fact that all the earlier three-dimensional marks (see paragraph 9 above) showed a plain bottle with a blade of grass inside it.

58      EUIPO stated at the hearing that it ‘[did] not agree’ with the decision of 12 April 2019 of the Fourth Board of Appeal in Case R 1651/2018‑4 (see paragraph 41 above), which annulled the examiner’s decision and that, in its view, registration of the mark applied for should have been refused due to lack of distinctive character pursuant to Article 7(1)(b) of Regulation No 40/94, having regard to the well-known traditional practice in the alcoholic drinks sector of placing in bottles organic materials which are visible to consumers. However, EUIPO explained that since that decision of the Fourth Board of Appeal was definitive, it was necessary to start from the premiss that the examination of the absolute grounds was closed, unless new facts were to arise and that, therefore, it should be assumed that the inherent distinctive character of the mark applied was minimal. Similarly, while expressing doubts as to whether and to what extent the earlier mark met the requirement of clarity and precision, EUIPO acknowledged that it should be assumed in the present dispute that that mark was validly registered. However, EUIPO took the view that those doubts concerning the ability to protect the two marks at issue should be taken into account when establishing the respective scope of protection of those marks and when examining whether the use of the earlier mark did indeed correspond to the trademark as represented in the registration.

59      In the first place, it must be stated, as did EUIPO, that the subject matter of the present dispute is not the validity of the mark applied for. Indeed, the proceedings brought before the Court were not a review procedure (see paragraph 41 above) or invalidity proceedings but rather opposition proceedings.

60      In that regard, it is clear that the absolute grounds for refusal referred to in Article 7 of Regulation No 40/94 do not fall to be examined as part of the opposition proceedings and that that article is not one of the provisions in the light of which the legality of the contested decision must be assessed. If the applicant is of the view that the mark applied for does not comply with the provisions of that article, it ought to submit an application for a declaration of invalidity to EUIPO under Article 51(1)(a) of Regulation No 40/94 (which became Article 52(1)(a) of Regulation No 207/2009, and subsequently Article 59(1)(a) of Regulation 2017/1001) (see, to that effect, judgment of 8 October 2014, Fuchs v OHIM – Les Complices (Star within a circle), T‑342/12, EU:T:2014:858, paragraph 58 and the case-law cited; order of 3 December 2018, Classic Media v EUIPO – Pirelli Tyre (CLASSIC DRIVER), T‑811/17, not published, EU:T:2018:894, paragraph 27). Similarly, in so far as it is claimed, in paragraph 7.39 of the application, that the trade mark applied for was ‘filed in bad faith by a former distributor of [the] applicant’s products’, the applicant may submit an application for a declaration of invalidity on the grounds of bad faith to EUIPO under Article 51(1)(b) of Regulation No 40/94 (which became Article 52(1)(b) of Regulation No 207/2009, and subsequently Article 59(1)(b) of Regulation 2017/1001).

61      In the second place, nor does the present dispute concern the validity of the earlier mark, the validity of which must be assumed.

62      In that regard, it must be recalled that, in order to avoid infringing Article 8(1)(b) of Regulation No 40/94, it is necessary to acknowledge a certain degree of distinctive character of an earlier national mark on which an opposition against the registration of an EU trade mark is based (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 47). Thus, even if the registered national mark had to be considered devoid of a high degree of distinctive character, a minimum degree of distinctive character should nevertheless be acknowledged for it, by virtue of its having been registered (see, to that effect, judgment of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 44).

63      In the third place, the main subject matter of the present dispute is whether or not genuine use (in France during the relevant period) was made of the earlier three-dimensional French mark, as represented and registered. By contrast, the present dispute also does not concern the genuine use of other word marks or figurative marks of the applicant, such as ŻUBRÓWKA BISON VODKA.

64      It is now necessary to examine the three pleas raised by the applicant.

 The first plea in law: infringement of Article 65(6) of Regulation No 207/2009

65      By the first plea, the applicant claims that the Board of Appeal, in adopting the contested decision, failed to have proper regard to the assessments and guidelines of the Court which are contained in the judgment ordering annulment.

66      In the first place, it claims that the Board of Appeal based its decision on incorrect assumptions regarding the nature of the earlier mark, which were derived from its initial (annulled) decision, in describing a ‘line’ on the body of the bottle and not a blade of grass in a bottle. First of all, in paragraph 8 of the judgment ordering annulment, the Court confirmed that the three-dimensional mark ‘correspond[ed]’ to the description.

67      In the second place, the applicant claims the Board of Appeal did not analyse properly the five items of evidence submitted out of time (see paragraph 24 above) and found them to be irrelevant for the analysis of genuine use, despite guidance to the contrary from the Court (the judgment ordering annulment, paragraphs 63 to 66 and 68). The applicant continues that the Board of Appeal did not take that evidence into account at all, since it neither assessed its admissibility nor conducted a substantive analysis of it. In particular, it disregarded the articles from the French press and the extracts from French websites, which the Court considered to be relevant. Furthermore, it claims that the Board of Appeal made a ‘very short and illusory’ assessment of Mr K.’s statement (the judgment ordering annulment, paragraph 51) before concluding that that item of evidence did not demonstrate use of the earlier mark as registered, whereas the Court found that that item was likely to be truly relevant for the outcome of the opposition (the judgment ordering annulment, paragraph 64).

68      In the third place, the applicant claims that the Board of Appeal applied an incorrect and improper test of the genuine use of a three-dimensional mark, contrary to the guidance from the Court that the proper criterion against which evidence of such use should be analysed is dynamic perception from a number of sides (the judgment ordering annulment, paragraph 65). Thus, the presence of a label does not preclude clear perception of the three-dimensional mark from the other sides. Lastly, the applicant claims that the finding that it is impossible to see what is behind the label is contrary to the Court’s finding that it is clear ‘from the photographs [reproduced in paragraph 15 above] that it is a blade of grass – and not just some oblong object – inside a bottle which is visible to the observer’ (the judgment ordering annulment, paragraph 91).

69      EUIPO and the intervener dispute the applicant’s arguments.

70      It must be recalled that, where an action is brought before the EU courts against a decision of a Board of Appeal of EUIPO, EUIPO is required, pursuant to Article 266 TFEU and Article 65(6) of Regulation No 207/2009, as amended by Regulation 2015/2424, to take the necessary measures to comply with the EU courts’ judgment ordering annulment.

71      It is not for the Court to issue directions to EUIPO and it is for the latter to give due effect to the operative part and the grounds of the Court’s judgments (judgments of 31 January 2001, Mitsubishi HiTec Paper Bielefeld v OHIM (Giroform), T‑331/99, EU:T:2001:33, paragraph 33; of 6 October 2011, Bang & Olufsen v OHIM (Representation of a loudspeaker), T‑508/08, EU:T:2017:877, paragraph 31; and of 7 December 2017, Coca-Cola v EUIPO – Mitico (Master), T‑61/16, EU:T:2017:877, paragraph 35).

72      In accordance with settled case-law, a judgment annulling a measure takes effect ex tunc and thus has the effect of retrospectively eliminating the annulled measure from the legal system (see judgment of 25 March 2009, Kaul v OHIM – Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraph 21 and the case-law cited; judgments of 8 June 2017, Bundesverband Deutsche Tafel v EUIPO – Tiertafel Deutschland (Tafel), T‑326/16, not published, EU:T:2017:380, paragraph 18, and of 8 February 2018, Sony Interactive Entertainment Europe v EUIPO – Marpefa (Vieta), T‑879/16, EU:T:2018:77, paragraph 37).

73      It is clear from that same case-law that, in order to comply with a judgment annulling a measure and to implement it fully, the institution that is the author of the measure is required to have regard not only to the operative part of the judgment but also to the grounds constituting its essential basis, in so far as they are necessary to determine the exact meaning of what is stated in the operative part. It is those grounds which, on the one hand, identify the precise provision held to be illegal and, on the other, indicate the specific reasons which underlie the finding of illegality contained in the operative part and which the institution concerned must take into account when replacing the annulled measure (judgments of 25 March 2009, ARCOL, T‑402/07, EU:T:2009:85, paragraph 22; of 8 June 2017, Tafel, T‑326/16, not published, EU:T:2017:380, paragraph 19; and of 8 February 2018, Vieta, T‑879/16, EU:T:2018:77, paragraph 38).

74      In the first place, as regards the correct identification of the earlier mark, it must be stated that, in paragraph 8 of the judgment ordering annulment, when the Court stated that the earlier mark ‘correspond[ed] to the following description’, the word ‘correspond[ed]’ simply meant that that mark had been filed together with a description. However, the Court in no way made a finding concerning the scope of the protection conferred by that mark and, consequently, in no way found that that description corresponded to the representation, nor that the line represented in that mark was a blade of grass.

75      In addition, in paragraph 91 of the judgment ordering annulment, when the Court found that ‘from the photographs reproduced [in paragraph 15 above] … it is a blade of grass – and not just some oblong object – inside a bottle which is visible to the observer’, it only concluded that ‘the photographs [reproduced in paragraph 25 above] are accordingly not the first and only proof of use of a blade of grass placed inside a bottle’, thereby ruling on a procedural issue which logically comes before the assessment of the substance of the case. In so doing, the Court referred to certain additional items of evidence of use as submitted, where a blade of grass appeared. However, the Court in no way made a finding concerning the earlier mark as registered (see paragraph 7 above) and in no way found that it included a blade of grass. Moreover, in the judgment ordering annulment, the Court examined only the third plea, which concerned procedure, alleging infringement of Articles 75 and 76 of Regulation No 207/2009, and not the second plea, which concerned substance, alleging infringement of Article 15 of that regulation.

76      In the second place, as regards the complaint that the Board of Appeal did not assess the evidence submitted out of time (see paragraph 24 above), in particular the articles from the French press and the extracts from French websites with the exception of Mr K.’s statement, it must be recalled that, in paragraphs 101 and 102 of the judgment ordering annulment, the Court held as follows:

‘Moreover, [since] the issue whether or not account ought to have been taken of the supplementary evidence produced before it … was not examined by the Board of Appeal, it is not for this Court to rule for the first time on issues the merits of which were not examined …

It will therefore be for the Board of Appeal to assess, in keeping with the guidance from the case-law and the present judgment, taking due account of all the relevant circumstances and providing reasons for its decision on the matter, whether or not account must be taken of the additional evidence submitted by the applicant for the first time before it, in order to make the decision it is called upon to give in the action which is still pending before it …’

77      The Court therefore left to the discretion of the Board of Appeal the decision on whether or not to take account of the evidence submitted out of time.

78      However, it is apparent from paragraphs 41 and 42 of the contested decision that the Board of Appeal did take into account the evidence submitted out of time, although its view was that it was irrelevant. Indeed, it examined that evidence in the light of the criteria of ‘use [of the mark] as … registered’ and found that the applicant had not proved the nature of use of the mark as registered, due to the presence of the non-transparent label and the differences in nature, length and position between the lines, while taking due account of the front, back and side views of the bottle.

79      The Board of Appeal consequently exercised its discretion and took account of the evidence submitted out of time in deciding that that evidence did not prove the nature of use of the mark as registered and, moreover, did not prove use which did not alter the distinctive character of the mark within the meaning of Article 15 of Regulation No 207/2009. Therefore, in paragraph 47 of the contested decision, it took the view that there was no need to examine ‘further’ the evidence concerning the time, place and extent of use, nor the probative value of the evidence.

80      Indeed, it is clear that since the Board of Appeal was of the view that the applicant had submitted no evidence of the nature of use of the mark as registered (the substance of which forms the subject matter of the second plea), it was not necessary to examine ‘further’ the requirements as to use.

81      In the third place, as regards the complaint relating to the assessment criterion regarding use for three-dimensional marks, it suffices to point out that the Board of Appeal did not apply an improper criterion of genuine use of the three-dimensional mark, but performed a dynamic analysis of the evidence of use, taking account not only of the front and back views, but also the two side views, as is apparent from paragraph 42 of the contested decision, where it found that ‘from the side views … an uninterrupted elongated line can be perceived’. Consequently, that complaint is unfounded.

82      The first plea must therefore be rejected.

 The second plea in law: infringement of Article 15(1) of Regulation No 207/2009 and of Rule 22(3) of Regulation No 2868/95, as well as of Article 8(1)(a) and (b) and of Article 42(2) and (3) of Regulation No 207/2009

83      By the second plea, the applicant criticises, in essence, the Board of Appeal for having taken the view that the evidence adduced (before the Opposition Division and before the Board of Appeal) did not prove genuine use of the earlier three-dimensional French mark during the relevant period. It puts forward four complaints in that regard.

84      By the first complaint, the applicant claims that the Board of Appeal failed to identify the earlier mark properly by stating, incorrectly, in paragraph 39 of the contested decision that ‘the line, shown as a fixed part of the body of the bottle, concerns a straight diagonal line and nothing else’, whereas it is a bottle with a blade of grass inside. In summary, the applicant criticises the Board of Appeal for having failed to take account of the perception of the earlier three-dimensional French mark as including a blade of grass inside the bottle, which is in line, first, with the findings of the Court in the judgment ordering annulment, second, with the three-dimensional type representation and with the description of that mark as set out in its certificate of registration and, third, with the evidence submitted. In the applicant’s view, the Board of Appeal’s continued references to the artificial concept of a ‘commonly shaped bottle with a [straight] line on the body of it’ were incorrect as was its statement that ‘the line’ cannot be regarded as a blade of grass which is in the bottle.

85      By the second complaint, the applicant claims that the Board of Appeal ‘once again’ applied an improper and inadequate criterion of the genuine use of the earlier three-dimensional French mark on account of its ‘simplistic, two-dimensional’ approach to that mark, whereas the three-dimensional nature of a trade mark precludes a static, two-dimensional vision and calls for a dynamic, three-dimensional perception. In addition, the Board of Appeal cannot, in the applicant’s view, limit itself to an analysis of the items of evidence independently from each other, but must rather analyse those items jointly, bearing in mind the relationships between them, in particular between the different views of the form used on the market. It should, the applicant claims, have taken into account all the evidence in order to apply a dynamic test with a view to assessing the perspective of the consumer, who may perceive the trade mark at issue from a number of sides.

86      By the third complaint, the applicant claims that the Board of Appeal disregarded the possibility of simultaneous use of several trade marks of various types by incorrectly stating that the use of the label changes the distinctive character of the earlier three-dimensional French mark. Accordingly, by once again rejecting certain items of evidence solely on account of the presence of a label bearing the word ‘żubrówka’, which supposedly made it impossible to see what was behind it, the Board of Appeal disregarded the case-law of the Court that a number of trade marks may be put to genuine use on one product at the same time, despite being registered separately. In the present case, the earlier three-dimensional French mark is used together with trade marks of other types (word and figurative marks) which are used on a label, and the presence of a label does not preclude genuine use of the earlier mark for four reasons. First, despite the presence of the label, the blade of grass is clearly visible from the front view. Second, the very nature of the three-dimensional mark presupposes a dynamic analysis of the evidence of genuine use, all the more so because the blade of grass placed inside a plain, transparent bottle is fully visible from the sides, where the label does not interfere with any three-dimensional element (see the photographs from the side in paragraph 25 above). Third, according to the case-law, the simultaneous use of several trade marks autonomously on a product is common market practice, especially in the alcoholic drinks sector, and consumers are well used to that practice. Fourth, alcoholic beverages must always have a label containing certain information and are subject to certain legal requirements. Therefore, the presence of the label cannot be a factor excluding genuine use of the three-dimensional mark as registered.

87      By the fourth complaint, the applicant claims that the Board of Appeal incorrectly assessed genuine use within the meaning of Article 15(1)(a) of Regulation No 207/2009 by erroneously restricting it only to instances where the form is ‘the same’ or ‘identical’ to that registered and by failing to acknowledge that minor differences in the length and position of the blade of grass inside the bottle used on the French market had not altered the distinctive character of the earlier three-dimensional French mark as registered. In the applicant’s view, in describing the photographs appended to Mr K.’s statement (see paragraph 25 above) in paragraph 42 of the contested decision, the Board of Appeal failed to analyse whether or not the minor differences mentioned altered the distinctive character of the earlier mark as registered. However, comparing the representation of that mark with the views (from the front, sides or back) of the product as used on the market, according to the applicant, it appears that, first, the main distinctive element of the trade mark in question – a blade of grass in the bottle – is clearly visible from all sides due to the bottle’s transparent glass; second, the bottles are identical (shape of the body, base, neck), while the blades of grass are nearly identical and as similar as two blades of grass can be; third, EUIPO ‘exaggerated’ by stating that the blades of grass, or rather their lines, were ‘much longer’ because the difference in length is minimal; and, fourth, EUIPO incorrectly stated that the blades were ‘not 100% straight’, as they are in fact straight.

88      According to the applicant, slight differences in length and position of the blade of grass are typical examples of differences which do not alter the distinctive character of the earlier three-dimensional French mark as registered and are not noticed by average consumers. In addition, slight changes in the position of the blades in the liquid are inevitable and are due to the very nature of that trade mark. However, that does not change the fact that it is still ‘a single, long blade of grass placed inside an identical bottle in an almost diagonally inclined position’. Therefore, the form of that mark used on the market matches the graphic representation and description in its certificate of registration, there being some minor differences which do not alter its distinctive character. Applying a stricter test would in most cases lead to it being impossible in practice to prove genuine use of a three-dimensional mark.

89      Furthermore, the applicant states that it is not trying to protect the concept of any blade of grass inside any type of bottle, but rather that it is attempting to protect a specific representation of a blade of grass inside a specific bottle, which is covered by the earlier trade mark registration and which forms the basis of an opposition against a nearly identical trade mark application (both in terms of the signs and the description) filed ‘in bad faith’ by a former distributor of the applicant’s products.

90      Finally, the applicant considers that it has proved not only the time, place and extent of use but also the nature of use. It explains that it submitted a range of evidence which it believes, analysed together, should have led the Board of Appeal to find that the genuine use of the earlier mark on a mass scale on the French market between 23 June 1998 and 22 June 2003 had been proved. It states that all those documents refer to use of the same form of that mark and, indeed, of the same product, the majority of those documents were submitted in due time before the Opposition Division, and the evidence submitted out of time accompanying the statement setting out the grounds of appeal likewise confirmed the genuine use of that mark and the perception of the blade of grass by consumers as an indication of origin. In the applicant’s view, while the leaflets (aimed at French distributors and consumers), brochures, advertisements and pictures of sold products attached to affidavits show the representations of the product and its trade marks, that is to say, which trade mark was used (nature of use), the press releases, affidavits, invoices, list of promotional activities and the report issued by Institut Iri indicating the off-trade volumes in France during the years 1998 to 2006 show the time, place and extent of use – that is to say, when and how the trade mark was used. It observes in that regard that EUIPO’s objections were limited to the nature of use.

91      In reply to a written question from the Court, the applicant takes the view that the question of genuine use of the earlier mark is not governed by EU law, but rather by national law, in particular Decree No 92‑100 of 30 January 1992 and the Decision of 31 January 1992.

92      EUIPO and the intervener dispute the applicant’s arguments.

93      It must be stated that, in essence, the present plea concerns whether the earlier mark was used in the form in which it was registered (or in a form which does not alter it, or with minor variations) and consequently, the precise subject of the protection conferred by that mark.

94      In that regard, it should be recalled that Article 43(2) and (3) of Regulation No 40/94 (which became Article 42(2) and (3) of Regulation No 207/2009 and subsequently Article 47(2) and (3) of Regulation 2017/1001) provides, in essence, that, if the applicant so requests, the proprietor of an earlier EU trade mark or national trade mark who has given notice of opposition is to furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application, the earlier EU or national trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which is cited as justification for that opposition, or that there are proper reasons for non-use. In the absence of proof to that effect, the opposition is to be rejected.

95      Under the first subparagraph of Article 15(1) of Regulation No 40/94 (which became the first subparagraph of Article 15(1) of Regulation No 207/2009 and subsequently the first subparagraph of Article 18(1) of Regulation 2017/1001), if, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the European Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark is to be subject to the sanctions provided for in that regulation, unless there are proper reasons for non-use.

96      Under Rule 22(3) and (4) of Regulation No 2868/95, as amended (now Article 10(3) and (4) of Delegated Regulation 2018/625), the proof of use must concern the place, time, extent and nature of use which has been made of the mark and it is to be confined, generally, 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 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001).

97      Those considerations are to govern the applicant’s four complaints forming the second plea and whether the Board of Appeal was correct in finding, in paragraph 46 of the contested decision, that even when account was taken of the evidence submitted for the first time before it, the applicant had not demonstrated the nature of use of the earlier three-dimensional French mark, which was a necessary requirement for proving genuine use of that mark in accordance with Article 42(2) and (3) of Regulation No 207/2009.

98      As a preliminary point, as regards the applicable substantive law, it must be recalled that, in accordance with the case-law, where the proprietor of an EU trade mark requests proof of genuine use to be furnished, that use constitutes a condition which must be met, under Regulation No 40/94, not only by EU trade marks but also by earlier national marks relied on in support of an application for a declaration of invalidity of that EU trade mark. Therefore, the application of Article 43(2) of Regulation No 40/94 to earlier national marks under paragraph 3 of that article means that genuine use is to be defined according to Article 15 of that regulation and not in accordance with national law (see, by analogy, in relation to invalidity proceedings, judgment of 12 July 2019, mobile.de v EUIPO – Droujestvo S Ogranichena Otgovornost “Rezon” (mobile.ro), T‑412/18, not published, EU:T:2019:516, paragraph 23). The Board of Appeal therefore did not err in law, in the present dispute, in assessing whether the earlier national mark had been put to genuine use within the meaning of that provision of EU law and not under French law.

99      In the present case, it must be stated that the applicant submitted, within the time limit set by the Opposition Division, evidence showing, in its view, that the earlier mark had been put to ‘long and extensive’ use. That evidence, as described by it, includes in particular:

–        an affidavit dated 25 June 2007 signed by the Financial Director and President of the applicant containing figures concerning sales in France for the years 2000 to 2004 of bottles of vodka containing a blade of bison grass and bearing the mark ŻUBRÓWKA, accompanied by invoices and photographs of the product; the sales were made by the applicant’s exclusive licensee/distributor (Agros Trading SA) through the French company Pernod SA;

–        an affidavit dated 27 June 2007 signed by the Chairman and CEO of Pernod, containing figures concerning the sales in France for the years 2000 to 2004 of bottles of vodka containing a blade of bison grass and bearing the mark ŻUBRÓWKA, accompanied by invoices and photographs of the product, from which the applicant deduces that it is apparent, and similarly for the other affidavits, that sales volumes in France were ‘very high’ and growing between 2000 and 2004 and amounted to EUR 1.3 million in 2002 and 2003;

–        examples of invoices relating to the sale by Agros Trading to Pernod of bottles of vodka containing a blade of bison grass and bearing the mark ŻUBRÓWKA with a photograph of the product;

–        photos showing a sample of the vodka bottle sold in the French market;

–        examples of leaflets for French distributors relating to the years 2001 to 2003 and showing the vodka bottle bearing the ŻUBRÓWKA mark actually distributed on the market;

–        a list of the promotional activities which took place in France during the years 1999 to 2004, during which leaflets referring to ŻUBRÓWKA vodka were distributed to the public;

–        report issued by Institut Iri indicating the off-trade volumes relating to sales of ŻUBRÓWKA vodka in France during the years 1998 to 2006;

–        an example leaflet dated 24 May 2003 distributed by a French supermarket and showing the ŻUBRÓWKA vodka bottle;

–        examples of leaflets concerning off-trade promotions held in France during November 2003 and June 2006 and concerning ŻUBRÓWKA vodka.

100    That evidence included the photographs reproduced in paragraph 15 above. Subsequently, the applicant submitted, for the first time before the Board of Appeal, the evidence listed in paragraph 24 above, together with the photographs reproduced in paragraph 25 above, as well as the following photograph: