JUDGMENT OF THE GENERAL COURT (Third Chamber)
26 April 2023 (*)
(EU trade mark – Revocation proceedings – EU word mark SYRENA – Application of the law ratione temporis – Partial inadmissibility of the action – Res judicata – Article 15(1) and Article 51(1)(a) and (2) of Regulation (EC) No 207/2009 (now Article 18(1) and Article 58(1)(a) and (2) of Regulation (EU) 2017/1001) – Genuine use in the European Union – Obligation to state reasons – First sentence of Article 94(1) of Regulation 2017/1001)
In Case T‑35/22,
Arkadiusz Kaminski, residing in Etobicoke, Ontario (Canada), represented by W. Trybowski, E. Pijewska and M. Mazurek, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Polfarmex S.A., established in Kutno (Poland),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová-Pelzl (Rapporteur) and I. Nõmm, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 16 January 2023,
gives the following
Judgment
1 By his action based on Article 263 TFEU, the applicant, Mr Arkadiusz Kaminski, seeks, in essence, principally, alteration of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 October 2021 (Joined Cases R 1952/2020-1 and R 1953/2020-1) (‘the contested decision’) and, in the alternative, partial annulment of that decision.
Background to the dispute
2 On 6 July 2010, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
3 Registration as a mark was sought for the word sign SYRENA.
4 The goods in respect of which registration was sought, are, following the restriction made in the course of the proceedings before EUIPO, in Classes 9, 12 and 28 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 9: ‘Computer and video game programs and software, none of the aforesaid goods relating to the aeronautical field, and in particular helicopters and rotorcrafts’;
– Class 12: ‘Motor vehicles for locomotion by land and parts therefor (included in Class 12)’;
– Class 28: ‘Games and playthings, model vehicles; scale model vehicles made of all materials, in particular paper model vehicles and die-cast model vehicles or plastic model vehicles’.
5 On 22 April 2016, Polfarmex S.A. (‘the other party’), filed an application for revocation of the trade mark in question in respect of all the goods for which it had been registered, on the basis of Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), on the ground that it had not been put to genuine use within a continuous period of five years. The applicant then produced documents, numbered 1 to 60, seeking to demonstrate that he had made genuine use of that mark.
6 By decision of 27 July 2018, the Cancellation Division revoked the contested mark in respect of all the goods referred to in paragraph 4 above, with the exception of ‘cars’ in Class 12.
7 On 18 and 21 September 2018 respectively, the applicant and the other party each filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
8 By decision of 11 July 2019 in Joined Cases R 1840/2018-2 and R 1861/2018-2 (now Joined Cases R 1953/2020-1 and R 1952/2020-1) (‘the 2019 decision’), the Second Board of Appeal of EUIPO dismissed both appeals. In essence, it found, as had the Cancellation Division, that genuine use of the contested mark had been demonstrated in respect of ‘cars’ in Class 12, but not in respect of the other goods in Classes 9, 12 and 28.
9 On 2 October 2019, the other party brought an action before the General Court, registered as Case T‑677/19, seeking annulment of the 2019 decision in so far as the latter had stated that the registration of the contested mark had to be upheld for ‘cars’ in Class 12.
10 By its judgment of 23 September 2020, Polfarmex v EUIPO – Kaminski (SYRENA) (T‑677/19, not published, EU:T:2020:424; ‘the annulment judgment’), the Court upheld in part the other party’s action for annulment of the 2019 decision in so far as, in that decision, the Second Board of Appeal had upheld the registration of the contested mark in respect of ‘cars’ in Class 12 other than ‘racing cars’. In essence, the Court confirmed the genuine use of that mark in respect of ‘racing cars’, which it considered to be an independent subcategory of goods within the category ‘cars’. Furthermore, it held that the Board of Appeal’s findings concerning that genuine use in respect of ‘sports cars’ were vitiated by inadequate reasoning. Lastly, it found that the Board of Appeal had been wrong to consider that that genuine use had been demonstrated in respect of ‘electric cars’. Moreover, the Court rejected the application for alteration of that decision, on the ground that it did not have all the elements available to it in order to take the decision that the Board of Appeal in question should have taken, in so far as the latter’s reasoning relating to ‘sports cars’ was vitiated by inadequate reasoning.
11 On 8 October 2020, the joined cases were reallocated to the First Board of Appeal of EUIPO.
12 On 23 November 2020, the applicant brought an appeal before the Court of Justice against the annulment judgment. By order of 28 January 2021, Kaminski v EUIPO (C‑626/20 P, not published, EU:C:2021:83), the Court held that it had not been demonstrated that the appeal raised an issue that was significant with respect to the unity, consistency or development of EU law. Consequently, the appeal was not allowed to proceed, with the result that the annulment judgment became final and has thus acquired the force of res judicata.
13 By decision of 26 October 2021 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the applicant’s appeal in Case R 1953/2020-1, upheld the other party’s appeal in Case R 1952/2020-1 and partially annulled the 2019 decision in so far as that decision had upheld the registration of the contested mark for ‘cars’ in Class 12 ‘other than racing cars’. It confirmed the partial revocation of that mark in respect of all ‘cars’, with the exception of ‘racing cars’. In essence, the Board of Appeal confirmed that genuine use of that mark had been demonstrated in respect of ‘racing cars’, but not in respect of ‘electric cars’. Next, it analysed the evidence submitted by the applicant in order to determine whether that evidence demonstrated such genuine use in respect of ‘sports cars’ and came to the conclusion that that was not the case. Lastly, the Board of Appeal examined the arguments relating to proper reasons for non-use of the mark in question and concluded that those reasons had not been demonstrated to the requisite legal standard.
Forms of order sought
14 The applicant claims, in essence, that the Court should:
– alter the contested decision, by dismissing the appeal in Case R 1952/2020-1, by declaring that the contested mark remains registered for ‘cars’ in Class 12 and by ordering the other party to bear the costs incurred in that case;
– in the alternative, partially annul that decision in so far as it revokes that mark in respect of ‘cars’ in Class 12 ‘other than racing cars’;
– order EUIPO to pay the costs.
15 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
16 In support of the action, the applicant relies on four plea in law.
17 The first plea alleges, in essence, that the Board of Appeal infringed, first, the rule for identifying an independent subcategory of goods set out in paragraph 47 of the judgment of 22 October 2020, Ferrari (C‑720/18 and C‑721/18, EU:C:2020:854), in that it found that ‘sports cars’ formed an independent subcategory within the category of ‘cars’ and, second, Article 72(6) of Regulation 2017/1001, in that the Board of Appeal did not take the necessary measures to comply with the annulment judgment when it identified three independent subcategories of goods within the category of ‘cars’.
18 The second plea formally alleges that the Board of Appeal infringed Article 18(1) and Article 58(1)(a) and (2) of Regulation 2017/1001, in that it interpreted too vaguely and, therefore, in an incorrect manner, the concept of an independent ‘category’ or ‘subcategory’ of goods in the context of the use of the contested mark for part of the goods for which it had been registered. Consequently, that Board of Appeal artificially identified the subcategories of ‘racing cars’, ‘sports cars’ and ‘electric cars’ within the category of ‘cars’ and infringed the main rules of case-law concerning the identification of independent categories and subcategories of goods.
19 The third plea is formally based on an infringement by the Board of Appeal of Article 18(1) and Article 58(1)(a) and (2) of Regulation 2017/1001 and of Article 94(1) of that regulation. First, the Board of Appeal infringed Article 18(1) and Article 58(1)(a) and (2) of that regulation by carrying out an incorrect and selective examination of the evidence, in so far as it wrongly found that much of the evidence concerned only a particular subcategory of ‘cars’ in Class 12, namely ‘racing cars’, whereas that evidence also related to other cars. Second, the Board of Appeal infringed the obligation to state reasons laid down in Article 94(1) of that regulation by failing to provide clear and unequivocal reasons in that regard, as required by the case-law.
20 The fourth plea formally alleges that the Board of Appeal infringed Article 18(1) and Article 58(1)(a) and (2) of Regulation 2017/1001, in that it misinterpreted the concept of ‘proper reasons for non-use’ of the contested mark.
The law applicable ratione temporis to the dispute
21 EUIPO, in the contested decision, and all the parties, in their pleadings, stated that Regulation 2017/1001 was applicable ratione temporis to the dispute.
22 As is apparent from the minutes of the hearing, in response to a measure of organisation of procedure adopted by the Court concerning the law applicable ratione temporis to the dispute, the applicant designated Regulation 2017/1001, on the ground that all the rules on which he relied in the present case were procedural. By contrast, EUIPO argued that the rules of substantive law applicable ratione temporis were those of Regulation No 207/2009.
23 In view of the date of submission of the application for revocation at issue, that is to say 22 April 2016, which is decisive for the purpose of identifying the applicable substantive law, the present dispute is governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 2, and of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3). Furthermore, 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 present dispute is governed by the procedural provisions of Regulation 2017/1001. Finally, as regards the rules governing the competence of EU institutions, bodies, offices or agencies to adopt a measure, the provisions which were in force when that measure was adopted are, in principle, applicable (see, to that effect, judgment of 3 February 2011, Italy v Commission, T‑3/09, EU:T:2011:27, paragraph 57 and the case-law cited), namely those set out in the latter regulation.
24 Consequently, in the present case, as regards the substantive rules, the references made by EUIPO, in the contested decision, and by all the parties, in their pleadings, to Article 18(1) and Article 58(1)(a) and (2) of Regulation 2017/1001 must be understood as referring to Article 15(1) and Article 51(1)(a) and (2) of Regulation No 207/2009, the wording of which is identical.
The first and second pleas in law
25 As is apparent from the minutes of the hearing, in response to a question put by the Court concerning the possible inadmissibility of the first and second pleas in the light of the force of res judicata attaching to the annulment judgment, the applicant argued that those pleas are admissible, whereas EUIPO argued that that admissibility could be called into question.
26 The parties having been heard in that regard (see paragraph 25 above), it is necessary, in the present case, for the Court to examine of its own motion such a plea of inadmissibility.
27 A judgment’s status as res judicata is such as to bar the admissibility of an action if the proceedings in question are between the same parties, have the same subject matter and have the same cause of action, those conditions necessarily being cumulative (see, to that effect, order of 24 April 2007, Gorostiaga Atxalandabaso v Parliament, T‑132/06, not published, EU:T:2007:113, paragraph 50 and the case-law cited).
28 In the present case, it must be observed, first of all, that the condition that the parties to the proceedings must be the same is satisfied. The present proceedings are between the applicant and EUIPO, who were also parties to the proceedings in the case which gave rise to the annulment judgment.
29 Next, in order to assess whether the condition that the subject matter of the proceedings must be the same is also satisfied, it must be borne in mind that the act the annulment of which is sought is an essential element of the subject matter of the dispute (see order of 24 April 2007, Gorostiaga Atxalandabaso v Parliament, T‑132/06, not published, EU:T:2007:113, paragraph 50 and the case-law cited).
30 A priori, the present proceedings and the proceedings in Case T‑677/19 concern different decisions, namely, in the first case, the contested decision and, in the second case, the 2019 decision.
31 However, it follows from the case-law that, in the light of the condition that the subject matter of the proceedings must be the same, an act may be regarded as identical to another, which already partially has the force of res judicata, where it is a mere repetition of the part of the earlier act that has the force of res judicata (see, to that effect, order of 24 April 2007, Gorostiaga Atxalandabaso v Parliament, T‑132/06, not published, EU:T:2007:113, paragraphs 51 and 53 and the case-law cited).
32 In the present case, as follows from paragraphs 29, 43 and 51 of the contested decision, the subject matter of the proceedings before the Board of Appeal related to the examination of the application for revocation of the contested mark as regards ‘sports cars’, in respect of which the Court found, in paragraph 90 of the annulment judgment, that the findings in the 2019 decision were vitiated by inadequate reasoning. It was therefore for that Board of Appeal to provide, in the contested decision, a reasoned assessment as to whether the evidence produced by the applicant, the proprietor of that mark, demonstrated genuine use of that mark in respect of ‘sports cars’. Furthermore, as is apparent from paragraph 86 of that decision, the subject matter of those proceedings also related to whether that evidence demonstrated that there were proper reasons for non-use of the mark in question in respect of the subcategories of ‘cars’ in Class 12, other than ‘racing cars’, namely ‘electric cars’ and ‘sports cars’, in accordance with Article 51(1)(a) of Regulation No 207/2009.
33 However, it is apparent from paragraphs 15, 42 and 43 of the contested decision that the parts of that decision which refer, first, to the three subcategories of ‘cars’ in Class 12, identified in the 2019 decision as being concerned by the evidence, namely ‘racing cars’, ‘electric cars’ and ‘sports cars’, and, second, to the findings of the examination of that evidence in relation to the first two subcategories, were merely a repetition of assessments which have the force of res judicata and which were made by the Court in the annulment judgment. The parts of the contested decision which merely reiterate those assessments, which the Board of Appeal had to take into account in accordance with its obligation under Article 72(6) of Regulation 2017/1001, must therefore be regarded as being identical to those assessments.
34 It follows that, in so far as they concern the parts of the contested decision referred to in paragraph 33 above, the present proceedings must be regarded as having the same subject matter as the proceedings in Case T‑677/19.
35 Finally, as regards the condition that the cause of action of the proceedings must be the same, it must be noted that that condition is also satisfied in the present case. As is apparent in particular from paragraphs 61, 91 and 106 to 109 of the annulment judgment, the dispute in Case T‑677/19 already raised the questions of, first, whether the three subcategories identified in the 2019 decision could be taken into account in the examination of the evidence and, second, whether that evidence was sufficient to demonstrate genuine use of the contested mark for the first two subcategories, namely ‘racing cars’ and ‘electric cars’. The applicant raises those questions again in the context of the present dispute. To that extent, it may be held that the present proceedings and the proceedings in Case T‑677/19 are based on the same cause of action.
36 Following the foregoing assessments, it must therefore be concluded that, in the present dispute, the applicant is not entitled to raise pleas directed against those parts of the contested decision which refer, first, to the three subcategories identified in the 2019 decision as being concerned by the evidence, namely ‘racing cars’, ‘electric cars’ and ‘sports cars’, and, second, to the conclusions of the examination of that evidence in relation to the first two subcategories. Such pleas are caught by the force of res judicata of the annulment judgment.
37 It must be held that, by the first and second pleas, as summarised in paragraphs 17 and 18 above, the applicant disputes exclusively the parts of the contested decision in which the Board of Appeal refers, first, to the three subcategories which had been identified in the 2019 decision for the examination of the evidence and, second, to the conclusions drawn from the examination of that evidence in relation to the first two subcategories.
38 The present pleas must therefore be rejected as inadmissible.
The third plea in law
39 In his first complaint, the applicant alleges that the Board of Appeal infringed Article 15(1) and Article 51(1)(a) and (2) of Regulation No 207/2009 by carrying out an incorrect and selective examination of the evidence, in so far as it did not find, in the contested decision, that some of that evidence concerned not only ‘racing cars’ but also other cars which could have the characteristics of ‘sports cars’, and, in his second complaint, alleges that the Board of Appeal infringed Article 94(1) of Regulation 2017/1001 by failing, in that regard, to fulfil its obligation to state reasons.
40 EUIPO disputes the applicant’s arguments.
41 As a preliminary point, it must be noted that, in so far as the third plea, taken in its two complaints, contains a challenge to the contested decision that is broader than that set out in paragraph 39 above, relating to the taking into account of the three subcategories identified in the 2019 decision as being concerned by the evidence produced by the applicant, namely ‘racing cars’, ‘electric cars’ and ‘sports cars’, or relating to the conclusions drawn from the examination of that evidence as regards the first two subcategories, that plea must be rejected as inadmissible, in accordance with the conclusion drawn in paragraph 36 above.
42 That being said, it is necessary, for reasons of the proper administration of justice, to begin by examining the second complaint, alleging infringement of the obligation to state reasons laid down in Article 94(1) of Regulation 2017/1001.
43 In that regard, it must be noted 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 obligation has the same scope as the obligation following from the second paragraph of Article 296 TFEU, which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons of a measure meets those requirements must, nonetheless, 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. The purpose of that obligation, which also follows from Article 41(2) of the Charter of Fundamental Rights of the European Union, is, first, to enable interested parties to know the purported justification for the measure taken so as to enable them to protect their rights and, second, to enable the Courts of the European Union to exercise their jurisdiction to review the legality of the decision in question (see judgment of 9 March 2022, Stryker v EUIPO (RUGGED), T‑204/21, not published, EU:T:2022:116, paragraph 62 and the case-law cited).
44 According to the applicant, numerous items of evidence showed his intention to relaunch the contested mark not only for ‘racing cars’, but also for ‘cars other than racing cars’, in particular those with the characteristics of ‘sports cars’. While purporting to complain that there was no clear and unequivocal statement of reasons in the contested decision, the applicant is in fact alleging that the Board of Appeal, in that decision, incorrectly assessed certain items of evidence, namely the cooperation agreements concluded between him and another company, cited in paragraph 45 of the application, in particular the agreement of 19 December 2016, the documents cited in paragraph 46 of the application relating to the presentation, on 16 September 2015, at that company’s headquarters, of a 1:5 scale model of the Meluzyna car, as well as the websites and articles cited in paragraph 47 of the application.
45 It follows from settled case-law that the obligation to state reasons is an essential procedural requirement and distinct from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure. The fact that a statement of reasons may be incorrect does not mean that there is no statement of reasons (see judgment of 12 September 2012, Duscholux Ibérica v OHIM – Duschprodukter i Skandinavien (duschy), T‑295/11, not published, EU:T:2012:420, paragraph 41 and the case-law cited).
46 In the present case, the statement of reasons for the contested decision enabled the applicant to understand, clearly and unequivocally, that the Board of Appeal considered that the evidence showed genuine use of the contested mark only in respect of ‘racing cars’ and the merits of that assessment, which the applicant has been able to dispute before the Court in the context of the first complaint of the third plea, will be reviewed by the Court in the context of the examination of that complaint.
47 For those reasons, the second complaint must be rejected as unfounded.
48 As regards the first complaint, alleging an incorrect and selective examination of the evidence in relation to the subcategory of ‘sports cars’, it must be noted that, according to the case-law, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43; order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 27; and judgment of 21 November 2013, Recaro v OHIM – Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 19).
49 The assessment of whether use of the trade mark is genuine must be based on all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the extent and frequency of use of the mark (see judgment of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 22 and the case-law cited).
50 A global 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 low volume of goods marketed under the mark may be offset by the fact that use of the mark was very extensive or very regular and vice versa (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 23 and the case-law cited).
51 Furthermore, use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
52 It is in the light of those considerations that it must be examined whether the Board of Appeal was right to find, in the contested decision, that the evidence did not demonstrate genuine use of the contested mark in respect of ‘cars other than racing cars’, in particular cars with the characteristics of ‘sports cars’.
53 First of all, as regards the cooperation agreements, it must be noted that they are not strictly limited to ‘racing cars’. In some passages, those agreements refer to ‘cars’ in general. However, only the projects for AK Syrena Ligea, Syrena Sport Liga and AK Syrena Meluzyna cars are specifically indicated. The cars concerned by those projects fall within the independent subcategory of ‘racing cars’. Therefore, it is not possible to infer from the agreements in question that there was use of the contested mark for ‘cars other than racing cars’, in particular for cars with the characteristics of ‘sports cars’. Furthermore, the mere general reference to the project of launching production of cars under that mark is not sufficient to constitute proof of use of that mark within the meaning of the case-law cited in paragraphs 48 to 51 above.
54 As regards, more specifically, the agreement of 19 December 2016, it must be stated that the passage from that agreement which has been cited and relied on by the applicant in support of his claims, in paragraph 45 of the application, contains only a general reference to the project of ‘revitalising’ the contested mark and relaunching production of cars under that mark, without any indication of a specific project that was imminent. Such a reference is not sufficient to constitute proof of use of that mark within the meaning of the case-law cited in paragraphs 48 to 51 above.
55 Furthermore, as regards the documents relating to the presentation of a scale of the Meluzyna car model, it should be noted that the text accompanying the photos does not make it possible to determine the characteristics of the model for which the scale is presented. The press articles which cover that presentation are also insufficient to conclude that that model is a car with the characteristics of a ‘sports car’. On account of their lack of details, those elements therefore do not demonstrate that the contested mark was used for ‘sports cars’.
56 Lastly, as regards the websites and articles cited in paragraph 47 of the application, even if they could relate to cars with the characteristics of ‘sports cars’, they concern only the initial phase of development and promotion of those cars. Thus, it could not, in any event, be inferred from those elements that the applicant’s marketing of ‘sports cars’ under the contested mark was imminent.
57 Consequently, the Board of Appeal, in the contested decision, did not err in its assessment of the evidence or infringe Article 15(1) and Article 51(1)(a) and (2) of Regulation No 207/2009 by finding that there was no proof of genuine use of the contested mark in respect of ‘sports cars’.
58 Consequently, the first complaint and, therefore, the present plea, taken in its entirety, must be rejected as unfounded.
The fourth plea in law
59 The applicant alleges that the Board of Appeal infringed Article 15(1) and Article 51(1)(a) and (2) of Regulation No 207/2009, in that it misinterpreted the concept of ‘proper reasons for non-use’ of the contested mark for the subcategories of ‘cars’ in Class 12, other than ‘racing cars’, namely ‘electric cars’ and ‘sports cars’. He submits that the Board of Appeal erred in finding that the reasons for non-use of that mark were not beyond the applicant’s control. The interpretation adopted by the Board of Appeal, in the contested decision, rejecting as irrelevant the serious technical, financial and legal obstacles that the applicant encountered in the context of the industrial development of the goods intended to be marketed under the mark in question, led the Board of Appeal to underestimate those obstacles and, therefore, deprived the concept of ‘proper reasons for non-use’ of practical importance. In that regard, the applicant submits, first, that the process of ‘bringing a car into life’ was time-consuming in so far as it required numerous financial, technical and organisational actions, all of which he had not been able to complete, including the fulfilment of the numerous technological conditions associated with the approval process. Second, the actions taken by the other party, its business partners and affiliated companies prevented the relaunch of SYRENA cars and could not be regarded as risks associated with running the business.
60 EUIPO disputes the applicant’s arguments.
61 It follows from the case-law that only obstacles having a sufficiently direct relationship with a trade mark making its use impossible or unreasonable, and which arise independently of the will of the proprietor of that mark, may be described as ‘proper reasons for non-use’ of that mark. It must be assessed on a case-by-case basis whether a change in the strategy of the undertaking to circumvent the obstacle under consideration would make the use of that mark unreasonable (judgment of 14 June 2007, Häupl, C‑246/05, EU:C:2007:340, paragraph 54). While it is true that the mere fact that the alleged obstacle is independent of the will of the proprietor of the mark is a relevant factor in determining whether there are proper reasons justifying non-use of a mark, such an obstacle is not, however, sufficient for that purpose since it also has to have a sufficiently direct relationship with that mark, making its use impossible or unreasonable (judgment of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 96).
62 As regards the first ground put forward by the applicant, namely that the process of ‘bringing a car into life’ required a considerable amount of time and many financial, technical and organisational actions, all which he had not been able to complete, it must be noted that it is true that it cannot be ruled out that an approval or certification process may constitute a proper reason for non-use of a trade mark (see, to that effect, judgment of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraphs 70 to 72).
63 However, in the present case, the many financial, technical and organisational actions relied on by the applicant as being necessary to ‘bring the car into life’ were under his control. The implementation of those actions and the start of production of the goods intended to be covered by the contested mark depended entirely on his will.
64 Thus, it was of his own volition, and not in compliance with a statutory obligation, that the applicant applied for registration of the contested mark at a time when there was still considerable uncertainty as to both the date and the possibility of marketing the goods to be covered by that mark. However, it was incumbent on him, as proprietor of that mark, to assess the time necessary for the process of approval or certification of the goods intended to be covered by the mark in question and to file an application for registration of that mark where it was foreseeable that that process would have a positive outcome. Lastly, it remained possible and reasonable for the applicant to prepare the marketing of the goods to be covered by such a mark even before the end of that process, but at a time when he would have had more visibility over the duration and outcome of that process. Consequently, ‘genuine use’ of the relevant mark by the applicant was not impossible, even before the end of the process in question.
65 It follows that the length of the process intended to ‘bring a car into life’ and the many actions required for that were not a proper reason for the applicant’s non-use of the contested mark.
66 The second ground relied on by the applicant concerns actions by the other party or by its business partners and affiliated companies which delayed the full implementation of the relaunch of the cars under the contested mark. In particular, the applicant claims that that mark had been unlawfully used by the other party or by its business partners and affiliated companies and that that had diminished investors’ interest and had negative effects on the development of the goods which he wanted to market under that mark.
67 The mere fact that the contested mark was used by other companies and that that led, in particular, to the cancellation of orders is not sufficient to demonstrate that genuine use of that mark by the applicant had become impossible or unreasonable. According to the case-law, even revocation proceedings brought against a trade mark do not prevent the proprietor of that mark from using it and, although it is always possible that, should such revocation proceedings lead to the revocation of the mark, an action for damages might be instituted, an order to pay damages is not a direct consequence of those proceedings (judgment of 18 March 2015, Naazneen Investments v OHIM – Energy Brands (SMART WATER), T‑250/13, not published, EU:T:2015:160, paragraphs 71 and 72). By analogy, it must be concluded, in the present case, that there are no proper reasons for non-use of the contested mark based on the actions of the other party or its business partners and affiliated companies.
68 Accordingly, the present plea must be rejected.
69 In the light of all of the foregoing considerations, the action must be dismissed in its entirety.
Costs
70 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
71 Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Mr Arkadiusz Kaminski to pay the costs.
Schalin | Škvařilová-Pelzl | Nõmm |
Delivered in open court in Luxembourg on 26 April 2023.
E. Coulon | | M. van der Woude |