JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
26 July 2023 (*)
(EU trade mark – Invalidity proceedings – Figurative mark XTRADE – Relative ground for invalidity – Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009 (now Article 8(4) and Article 60(1)(c) of Regulation (EU) 2017/1001) – Evidence submitted for the first time before the Board of Appeal – Article 95(2) of Regulation 2017/1001)
In Case T‑67/22,
Guma Holdings Ltd, established in Limassol (Cyprus), represented by M. Oleksyn and M. Stępkowski, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
XTB S.A., established in Warsaw (Poland), represented by P. Maślak-Stępnikowska, lawyer,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg and I. Dimitrakopoulos (Rapporteur), Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 26 January 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Guma Holdings Ltd, seeks the alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 November 2021 (Case R 981/2020‑5) (‘the contested decision’).
Background to the dispute
2 On 12 April 2018, the company X-Trade Brokers Dom Maklerski Spółka Akcyjna, which is the predecessor in title of the intervener, XTB S.A., filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed on 7 July 2014 for the following figurative sign:
3 The goods and services covered by the contested mark in respect of which a declaration of invalidity was sought are in Classes 9, 35, 36 and 41 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: ‘Software; computer programmes for data processing; software for facilitating secure credit card transactions; computer databases; computer databases; computer software for authorising access to data bases; databases (electronic)’;
– Class 35: ‘Advertising and marketing; advertising; direct marketing; advertising by mail order; publicity and sales promotion services; advertising; publicity and sales promotion services; publicity and sales promotion services; advertising and marketing; business consulting services; business acquisitions consultation; business consultancy services relating to data processing; business consultancy services relating to insolvency; business consultancy services relating to the supply of quality management systems; business research and advisory services; business research; business research and information services; business analysis, research and information services; planning of marketing strategies; systemization of information into computer databases; compilation of information into computer databases; advertising services relating to data bases; systemization of information into computer databases; collection and systematisation of information into computer databases; systemization of information into computer databases; updating and maintenance of data in computer databases; business information; marketing agency services’;
– Class 36: ‘Agencies for brokerage of securities trading in overseas securities markets and of transactions on commission of overseas market securities futures; finance services; investment services; personal finance services; investment services; financial portfolio management; providing of economic/financial information, data, consultancy and advice; financial transfers and transactions, and payment services; investment consultation; investment consultation; investment consultation; brokerage of commodities; investment consultation; investment consultation; investment consultation’;
– Class 41: ‘Information relating to education, provided on-line from a computer database or the internet; publication of material which can be accessed from databases or from the internet; publication of material which can be accessed from databases or from the internet; education; professional training services; providing of education; publication of instructional literature; training in the operation of software systems’.
4 The application for a declaration of invalidity was based on the rights in the company name ‘X-Trade Brokers’, used as a trade name in the course of trade in Germany for, inter alia, ‘brokerage and financial services’ in Class 36 and protected under Paragraphs 5 and 15 of the Markengesetz (German law on trade marks).
5 The ground relied on in support of the application for a declaration of invalidity was that referred to in Article 60(1)(c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), read in conjunction with Article 8(4) of that regulation.
6 On 20 March 2020, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
7 On 19 May 2020, the intervener filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
8 By the contested decision, the Board of Appeal upheld the appeal in part, on the ground that the intervener had proved use of the trade name in the course of trade in Germany for ‘brokerage and financial services’ in Class 36 that was of more than mere local significance. Accordingly, the Board of Appeal concluded that the decision of the Cancellation Division, in which it had been found that the first two conditions laid down in Article 8(4) of Regulation 2017/1001 had not been satisfied, had to be annulled. As regards the remaining conditions provided for by the applicable German law, the case was remitted to the Cancellation Division for further prosecution.
Forms of order sought
9 The applicant claims that the Court should:
– alter the contested decision and reject the application for a declaration of invalidity in its entirety; and
– order EUIPO and the intervener to bear their own costs and to pay those incurred by the applicant, including those incurred in the proceedings before EUIPO.
10 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
11 The intervener contends that the Court should:
– dismiss the application;
– order the applicant to bear its own costs and to pay those incurred by the intervener, including those incurred in the proceedings before EUIPO.
Law
Admissibility of the action
12 Since the action contains, besides the request that EUIPO and the intervener be ordered to pay the costs, only one head of claim formally seeking the alteration of the contested decision, it is apparent that, by that head of claim, the applicant is seeking necessarily, not only the alteration of the contested decision but also the annulment thereof, which, moreover, can be deduced from the submission of the pleas in support of the action (see, to that effect, judgment of 27 February 2014, Advance Magazine Publishers v OHIM – Nanso Group (TEEN VOGUE), T‑509/12, EU:T:2014:89, paragraphs 15 and 16 and the case-law cited). The action, as thus defined, is therefore admissible.
Determination of the regulation applicable ratione temporis
13 Given the date on which the application for registration at issue was filed, namely 7 July 2014, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1). (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Furthermore, since, 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 case is governed by the procedural provisions of Regulation 2017/1001.
14 Consequently, in the present case, first, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision, and by the parties in their written pleadings, to Articles 8(4) and 60(1)(c) of Regulation 2017/1001, must be understood as referring to, respectively, Articles 4 and 53(1)(c) of Regulation No 207/2009, which are substantively identical. Secondly, as regards the procedural rules, the application for a declaration of invalidity at issue, filed on 12 April 2018, and the appeal before the Board of Appeal, brought on 19 May 2020, are governed by the provisions of Regulation 2017/1001 and of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).
Substance
15 In support of the action, the applicant invokes three pleas, alleging, first, the late and inadmissible nature of the observations and evidence submitted for the first time before the Board of Appeal; secondly, an insufficient statement of reasons for the contested decision; and, thirdly, in essence, an infringement of Articles 8(4) and 53(1)(c) of Regulation No 207/2009.
The first plea in law
16 The applicant alleges infringement of Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Delegated Regulation 2018/625. The applicant claims that there was no ground for the admissibility of the evidence submitted by the intervener for the first time before the Board of Appeal for the purpose of demonstrating the existence of an earlier right referred to in Article 8(4) of Regulation No 207/2009, and which is listed in paragraph 10 of the contested decision (‘the new evidence’). According to the applicant, the Board of Appeal therefore exceeded the scope of its discretion in that regard.
17 EUIPO and the intervener dispute the applicant’s arguments.
18 As a preliminary point, it should be noted that, under Article 53(1)(c) of Regulation No 207/2009, an EU trade mark is to be declared invalid, on application to EUIPO, where there is an earlier right as referred to in Article 8(4) of that regulation and the four conditions set out in that paragraph are satisfied.
19 Pursuant to the first two conditions provided for in Article 8(4) of Regulation No 207/2009, the sign (a non-registered trade mark) invoked by the applicant for a declaration of invalidity must be used in the course of trade within the European Union and be of more than mere local significance.
20 In that regard, it follows from Rule 19(2)(d) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) and the substantively identical provision of Article 7(2)(d) of Delegated Regulation 2018/625 that, if the opposition is based on Article 8(4) of Regulation No 207/2009, the applicant must provide evidence, not only of the acquisition and scope of protection of that earlier right, but also of the ‘continued existence’ thereof. By analogy, the earlier right relied on in support of an application for a declaration of invalidity must still exist at the time when that application is made (see judgment of 18 July 2017, Alfonso Egüed v EUIPO – Jackson Family Farms (BYRON), T‑45/16, EU:T:2017:518, paragraph 83 and the case-law cited). This presupposes normally that the sign in question must still be in use at the time of the filing of the application for a declaration of invalidity. Indeed, it is precisely the use of that sign in the course of trade which is the basis of the existence of the rights to that sign (judgment of 23 October 2013, Dimian v OHIM – Bayer Design Fritz Bayer (Baby Bambolina), T‑581/11, not published, EU:T:2013:553, paragraph 27).
21 Furthermore, Article 95(2) of Regulation 2017/1001 provides that EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’. It follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the periods to which such submission is subject under the provisions of that regulation, and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (judgment of 27 October 2021, Jiruš v EUIPO – Nile Clothing (Racing Syndicate), T‑356/20, not published, EU:T:2021:736, paragraphs 22 and 23). In stating that EUIPO ‘may’, in such a case, decide to disregard facts and evidence, that provision grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 43, and of 27 October 2021, Racing Syndicate, T‑356/20, not published, EU:C:2021:736, paragraph 24).
22 Moreover, Article 27(4) of Delegated Regulation 2018/625 circumscribes the exercise of the discretion which is provided for in Article 95(2) of Regulation 2017/1001 as regards facts and evidence submitted for the first time before the Board of Appeal. That provision reads as follows:
‘In accordance with Article 95(2) of Regulation [2017/1001], the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:
(a) they are, on the face of it, likely to be relevant for the outcome of the case; and
(b) they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’
23 In the present case, the Board of Appeal found, in paragraphs 19 to 22 of the contested decision, that the conditions provided for in Article 27(4) of Delegated Regulation 2018/625 were satisfied and that the new evidence submitted was admissible. After finding, in paragraph 21 of that decision, that that new evidence had been submitted by the intervener in response to the conclusion by the Cancellation Division that the evidence submitted before it was insufficient, the Board of Appeal found, first, that the present case did not relate to a situation in which no evidence had been submitted relating to Germany, and, secondly, that the evidence submitted during the action before it was relevant and supplemented the evidence submitted previously before that division.
24 In that regard, first of all, it should be noted, as regards the first condition set out in paragraph 22 above, that it is satisfied in the present case, a fact which is not challenged by the applicant.
25 As regards the second condition referred to in paragraph 22 above, it should be recalled that supplementary evidence is characterised by a link with other evidence previously submitted in due time which it supplements (judgment of 19 January 2022, Masterbuilders, Heiermann, Schmidtmann v EUIPO – Cirillo (POMODORO), T‑76/21, not published, EU:T:2022:16, paragraph 40).
26 In that regard, it should be pointed out that the intervener had relied on and submitted before the Cancellation Division significant facts and evidence designed to prove the use of the trade name at issue in Germany for the brokerage and financial services in order to establish the complaint put forward under Article 8(4) of Regulation No 207/2009. In addition, it had provided before that division some evidence regarding the use of the trade name at issue in Germany during the three years prior to the date on which the application for a declaration of invalidity was filed, namely 12 April 2018, the period for which that division had concluded that the intervener had not proved the continued existence of its earlier right in Germany. That evidence relates to Annexes 1, 3, 4, 7 and 44 that are set out in paragraph 7 of the contested decision, containing extracts from the website www.xtb.com dated 9 April 2018, an extract from the Polish register dated 10 April 2017 referring, in particular, to the German branch of the intervener, a licence from 2017 granted by the Polish Financial Supervisory Authority to the intervener concerning the services at issue, a document issued by the German Federal Financial Supervisory Authority dated 15 April 2016 referring to the German branch of the intervener, and a 2017 judgment of the Munich District Court involving the intervener.
27 Next, before the Board of Appeal and in response to the decision of the Cancellation Division, the intervener also submitted new evidence that related to the use of the trade name at issue during, in particular, the period from April 2015 to April 2018. That new evidence included, inter alia, annual consolidated financial reports of the intervener for the years 2017, 2018 and 2019.
28 In those circumstances, the Board of Appeal was fully entitled in law to find that the new evidence supplemented the evidence already submitted by the intervener before the Cancellation Division concerning the continued existence of the earlier right up to the intervener’s introduction of its application for a declaration of invalidity, with the result that the second condition provided for in Article 27(4) of Delegated Regulation 2018/625 was satisfied.
29 In so doing, the Board of Appeal was able, in accordance with its margin of discretion under Article 95(2) of Regulation 2017/1001, to accept the new evidence submitted by the intervener.
30 The arguments of the applicant, in that regard, are not capable of calling that assessment into question.
31 First, the applicant’s argument that the Board of Appeal accepted the admissibility of the new evidence by incorrectly finding that that evidence was provided in response to conclusions drawn or examined of its own motion by the Cancellation Division must be rejected, in so far as the applicant relies on an incorrect understanding of the contested decision. As pointed out in paragraph 23 above, the Board of Appeal stated expressly that that new evidence had been submitted by the intervener in response to the conclusion of that division that the evidence submitted before it was insufficient. It did not find, therefore, that the conclusions of that division concerning the lack of continued existence of its earlier right had been drawn of its own motion.
32 Secondly, it is also necessary to reject the applicant’s argument that the new evidence did not supplement the evidence submitted before the Cancellation Division, since that latter evidence did not relate to the use of the trade name at issue in the three years preceding the date of filing of the application for a declaration of invalidity. First, that argument is based on an incorrect factual premiss. As is apparent from paragraph 26 above, evidence concerning the entirety of the relevant period was submitted by the intervener before that division in order to prove the continued existence of the earlier right relied upon. Secondly, and in any event, it suffices that, in order to admit new evidence, some evidence seeking to prove the continued existence of the use of the trade name at issue was submitted before the Cancellation Division (see, to that effect, judgments of 14 May 2019, Guiral Broto v EUIPO – Gastro & Soul (Café del Sol et CAFE DEL SOL), T‑89/18 and T‑90/18, not published, EU:T:2019:331, paragraph 43, and of 9 September 2020, Kludi v EUIPO – Adlon Brand (ADLON), T‑144/19, not published, EU:T:2020:404, paragraphs 47 and 60). It is not disputed that such was the case here.
33 Thirdly, in so far as the applicant submits, in essence, that the Board of Appeal should not have accepted that evidence, since the intervener could have produced it before the Cancellation Division, that argument must be rejected. It is not necessary that the party concerned be unable to submit evidence before the Cancellation Division for additional evidence of use of the trade name at issue, produced for the first time before the Board of Appeal, to be taken into account. (see, by analogy, judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 117). On the contrary, the interpretation advocated by the applicant for the application of Article 95(2) of Regulation 2017/1001 and of Article 27(4) of Delegated Regulation 2018/625 is likely to restrict the discretion granted to that Board of Appeal under those provisions, as referred to in paragraphs 21 and 22 above, and to affect adversely the principles of legal certainty and of sound administration justifying that discretion (see, to that effect, judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 48).
34 In the light of the foregoing, the Board of Appeal did not err in the application of Article 27(4) of Delegated Regulation 2018/625 and, consequently, exercised its discretion correctly as provided for in Article 95(2) of Regulation 2017/1001. The first plea in law must, therefore, be rejected as unfounded.
The second plea in law
35 The applicant submits, in essence, that the Board of Appeal failed in its duty to state reasons for its decision and infringed Article 94(1) of Regulation 2017/1001 and Article 41(2) of the Charter of Fundamental Rights of the European Union. According to the applicant, the Board of Appeal did not comply with the threshold required for a finding that the requirements of Article 8(4) of Regulation No 207/1001 had been met.
36 EUIPO and the intervener dispute the applicant’s arguments.
37 It should be borne in mind that, in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That duty to state reasons has the same scope as that stemming from Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. It serves two purposes: first, to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and, secondly, to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to address all relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see judgment of 14 September 2022, Privatbrauerei Eichbaum v EUIPO – Anchor Brewing Company (STEAM), T‑609/21, not published, EU:T:2022:563, paragraph 24 and the case-law cited).
38 In addition, the duty to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient to set out the facts and the legal considerations having decisive importance in the context of the decision (see judgment of 14 September 2022, STEAM, T‑609/21, not published, EU:T:2022:563, paragraph 25 and the case-law cited). To that effect, it must be borne in mind that the requirement to state reasons must be assessed according to the circumstances of each case, in particular the content of the measure in question and the nature of the reasons given, which means that it is not always necessary for an express view to be adopted on all the matters put forward or requested by the persons concerned (see judgment of 14 September 2022, Lotion v EUIPO (BLACK IRISH), T‑498/21, not published, EU:T:2022:543, paragraph 64 and the case-law cited).
39 Next, the obligation to state reasons is an essential procedural requirement, which must be distinguished from the question whether the reasoning is correct, which goes to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect. It follows that objections and arguments intended to establish that a measure is not well founded are irrelevant in the context of a plea in law alleging an inadequate statement of reasons or a lack of such a statement (see judgment of 14 September 2022, BLACK IRISH, T‑498/21, not published, EU:T:2022:543, paragraph 63 and the case-law cited).
40 In that regard, it should be pointed out that, notwithstanding the heading of the second plea in law, all of the arguments submitted in that plea, with the exception of one, are related to the merits of the assessment carried out by the Board of Appeal concerning the application of Article 8(4) of Regulation No 207/2009 with regard to evidence provided by the intervener. By that line of argument, the applicant claims that that Board of Appeal erred in finding that the use of the trade name at issue in the course of trade in Germany, of more than mere local significance, was proved for ‘brokerage and financial services’ in Class 36.
41 The only argument of the applicant referring to the lack of a statement of reasons, contained in paragraph 33 of the application, consists of a claim that the Board of Appeal did not explain, in paragraphs 77 to 80 of the contested decision, why the use of the trade name at issue in the course of trade in Germany, of more than mere local significance, had been proved for ‘brokerage and financial services’.
42 Whilst it is true that paragraphs 77 to 80 of the contested decision, which come under the heading ‘Use for financial and brokerage services’, does not contain explanations regarding the use of the trade name at issue for financial and brokerage services in Class 36, it should be borne in mind, however, that the analysis submitted in paragraphs 56 to 76 of that decision relate specifically to the assessment of evidence covering such use.
43 Furthermore, the reasoning set out in paragraphs 56 to 76 of the contested decision enabled the applicant to understand the contested decision and to challenge its substance in that regard. That decision accordingly satisfies the requirements recalled in paragraphs 37 to 39 above.
44 In the light of the foregoing, the applicant’s argument referring to a lack of reasoning must be rejected as unfounded.
45 The other arguments submitted in the context of the second plea, concerning the substance of the assessment carried out by the Board of Appeal, must be rejected as ineffective inasmuch as they are relied upon in support of that plea. Accordingly, the second plea in law must be rejected in its entirety as unfounded.
The third plea in law
46 The applicant claims, in essence, that the Board of Appeal infringed Article 8(4) and Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 16(1)(b) and Article 7(2)(d) of Delegated Regulation 2018/625.
47 In the first place, it is argued, the Board of Appeal failed to assess correctly the evidence submitted by the intervener to substantiate the use of the trade name at issue in the course of trade of more than mere local significance and the continued existence of an invoked earlier right. The applicant refers, in this regard, to the arguments that it raised in its first and second pleas that such a use was not proved, meaning that the Board of Appeal could not rightfully find that the first two conditions provided for in Article 8(4) of Regulation No 207/2009 were satisfied.
48 In the second place, according to the applicant, the Board of Appeal failed to take account of the fact that the intervener had not complied with the obligation to identify clearly the content of the national law relied upon by submitting publications of the relevant provisions of case-law, meaning that the other two conditions provided for in Article 8(4) of Regulation No 207/2009 are not satisfied in the present case.
49 EUIPO and the intervener dispute the applicant’s arguments.
50 As stated in paragraph 18 above, under Article 53(1)(c) of Regulation No 207/2009, an EU trade mark is to be declared invalid, on application to EUIPO, in the case where there is an earlier right as referred to in Article 8(4) of that regulation and the four conditions set out in that paragraph are satisfied.
51 In accordance with Article 8(4) and Article 53(1)(c) of Regulation No 207/2009, the existence of a sign other than a registered mark makes it possible to oppose registration of an EU trade mark if that sign satisfies all of four conditions: (i) the sign must be used in the course of trade; (ii) it must be of more than mere local significance; (iii) the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application for registration of the EU trade mark; and (iv) that sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those four conditions limit the number of the signs other than marks which may be relied on to dispute the validity of an EU mark throughout the European Union (see judgment of 21 January 2016, BR IP Holder v OHIM – Greyleg Investments (HOKEY POKEY), T‑62/14, not published, EU:T:2016:23, paragraph 19 and the case-law cited).
52 In accordance with the case-law, the first two conditions, namely those relating to the use of the sign relied on and its significance, which must be more than merely local, are apparent from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted solely in the light of EU law. Regulation No 207/2009 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (judgment of 14 February 2019, Mouldpro v EUIPO – Wenz Kunststoff (MOULDPRO), T‑796/17, not published, EU:T:2019:88, paragraph 62). In addition, as indicated in paragraph 19 above, it is for the applicant for a declaration of invalidity to submit the relevant evidence fulfilling those conditions.
53 As stated in paragraph 20 above, in the context of the assessment of the conditions provided for in Article 8(4) of Regulation No 207/2009, the applicant must provide evidence, not only regarding the acquisition of the earlier right and the scope its protection, but also regarding that right’s ‘continued existence’. (see, to that effect, judgment of 18 July 2017, BYRON, T‑45/16, EU:T:2017:518, paragraph 83).
54 Lastly, it should be borne in mind that, according to settled case-law, the purpose of a company, trade or shop name is not, of itself, to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to indicate a business. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being run, such use cannot be regarded as being ‘in relation to goods or services’ for the purposes of Article 4 of Regulation No 207/2009. However, the sign which constitutes the company name could be used in such a manner that a link is established between the sign and the goods marketed or the services provided. To the extent that that condition is satisfied, the fact that a word element is used as the company’s trade name does not preclude its use as a mark and fulfilment of its essential function to designate goods or services (see, to that effect, judgment of 18 July 2017, Savant Systems v EUIPO – Savant Group (SAVANT), T‑110/16, not published, EU:T:2017:521, paragraphs 25 and 26 and the case-law cited), or as a sign conferring on its proprietor the right to prohibit the use of a mark, within the meaning of that provision.
55 Furthermore, the effective use of a sign is linked to the market on which its proprietor carries out its commercial activities. Thus, for the purpose of assessing the use of a sign in the course of trade in a Member State, within the meaning of Article 8(4) of Regulation No 207/2009, the relevant public to which marks are addressed consist not only of end consumers, but also of specialists, industrial customers and other professional users (see, by analogy, judgment of 13 October 2021, Schneider v EUIPO – Frutaria Comercial de Frutas y Hortalizas (Frutaria), T‑12/20, not published, EU:T:2021:702, paragraph 43).
56 In the present case, regarding the first two conditions provided for in Article 8(4) of Regulation No 207/2009, the Board of Appeal, after examining and assessing the evidence provided by the intervener, concluded that the use of the trade name at issue in the course of trade in Germany, of more than mere local significance, on the relevant dates, had been proved for the ‘brokerage and financial services’ in Class 36.
57 In the first place, the Board of Appeal examined, in paragraphs 56 to 73 of the contested decision, the economic and temporal dimensions of the use of the trade name at issue. In particular, it took into account, in that regard, the financial reports of the intervener for the years 2017 to 2019, the reports in German specialist publications, which include articles on the activity of the applicant’s German branch on the relevant market and discussions with the management of the German branch, a press release that was distributed on behalf of that branch by a public relations agency, awards received in Germany by that German branch, and a judgment of the Munich District Court of 25 July 2017.
58 In the second place, the Board of Appeal examined, in paragraphs 74 to 76 of the contested decision, the geographic dimension of the use of the trade name at issue and the evidence that related to use in Germany.
59 In that regard, it should be noted that the Board of Appeal thus referred to a number of precise items of evidence demonstrating the use of the trade name at issue in the course of trade for the ‘brokerage and financial services’ in Class 36. Those items related to the perception and recognition of the trade name at issue by the persons to whom the services at issue are addressed and by professionals of the relevant financial market and, therefore, made it possible to prove, to the requisite legal standard, a link between the use of the trade name at issue and the provision of online services by a broker.
60 The arguments put forward by the applicant are not such as to call that assessment into question.
61 First, the applicant’s argument that the sales figures contained in the intervener’s financial statements were not capable of providing actual evidence of use of the trade name at issue in the course of trade for the services in question cannot succeed. As mentioned in paragraph 62 of the contested decision, those financial statements, which indicate the intervener’s company name containing the designation ‘X-Trade Brokers’, on their first page and in the heading of each page, state that the intervener’s principal activity consists in the supply of brokerage services and indicate the turnover value and its geographic distribution. As they are also audited by an independent audit firm, those reports are therefore a very reliable indication of the significant use of the sign for the marketing of the services which it covers, contrary to what the applicant argues. That finding is not liable to be affected by the applicant's argument alleging the lack of relevance of the finding made by the Board of Appeal, in paragraph 61 of the decision, that the financial statements also showed the applicant’s branch activity in Germany.
62 Secondly, the applicant cannot rely either on the evidence referred to by the Board of Appeal showing the use of the expression ‘xtb online trading’ and of the corresponding logo and the abbreviation ‘XTB’, rather than of the trade name at issue ‘X-Trade Brokers’. In that regard, it should be pointed out that, like EUIPO, the applicant does not dispute that several examples exist in the evidence adduced by the intervener, such as Annexes A 8, A 9, A 20, A 22, A 28 and A 31, showing the use of the trade name ‘X-Trade Brokers’ on its own, not accompanied by the full company name ‘X-Trade Brokers Dom Maklerski S.A.’.
63 In addition, there is evidence, such as, inter alia, notes addressed to the intervener’s clients and financial reports, in which the trade name ‘X-Trade Brokers’ is found in juxtaposition with the abbreviation ‘XTB’, allowing consumers to establish a clear link between the two. Furthermore, it should be noted that it is customary to use acronyms or abbreviations of the whole sign for the services offered online, and that such evidence may be taken into account, among other factors, in the overall assessment of all the evidence (see, to that effect, judgment of 18 July 2017, BYRON, T‑45/16, EU:T:2017:518, paragraph 56).
64 Thirdly, the applicant’s argument that the German press articles, mentioning the German branch ‘X-Trade Brokers’, referred to in paragraphs 65 to 70 of the contested decision, do not make it possible to establish that the trade name at issue was indeed used in the course of trade connected to brokerage and financial services, is not convincing. The various items of evidence at issue, which are numerous and include not only reports appearing in specialised German publications but also discussions with the intervener’s management, a press release, awards received and a brochure, demonstrate clearly the degree of recognition, by the public, of the trade name at issue, specifically in connection with the provision of financial services, in particular by the German branch of the intervener. In that regard, it should be borne in mind that, in accordance with settled case-law, the use of the sign in advertising and business correspondence is of particular relevance (see, to that effect, judgment of 14 September 2011, K‑Mail Order v OHIM – IVKO (MEN’Z), T‑279/10, not published, EU:T:2011:472, paragraph 27 and the case-law cited). The Board of Appeal was therefore entitled to take it into consideration in its analysis.
65 Fourthly, the applicant’s argument that the Board of Appeal erred in referring to the judgment of the Munich District Court of 25 July 2017 lacks any relevance. Although the applicant notes that it is found in that judgment only that the sign X‑Trade Brokers was protected as a company name under German law and that the use of the trade name ‘XTRADE’ in order to designate certain goods or services was not in any way prevented, it should be pointed out that the Board of Appeal merely stated, in paragraph 71 of the contested decision, that the use of the X‑Trade Brokers sign since 2009 was further corroborated by that judgment. The applicant does not criticise that finding. Furthermore, in so far as the Board of Appeal did not rely on the operative part of that judgment in its reasoning in relation to the use of the trade name at issue in the course of trade in Germany, the applicant’s complaint that the Board of Appeal distorted the operative part of that judgment cannot succeed. The aforementioned argument must therefore be rejected.
66 Next, regarding the final two conditions provided for by Article 8(4) of Regulation No 207/2009, the Board of Appeal, in paragraph 82 of the contested decision, decided to remit the case to the Cancellation Division pursuant to Article 71(2) of Regulation 2017/1001. Therefore, in the contested decision, the Board of Appeal did not rule on whether those two conditions were satisfied.
67 It should be recalled, in this regard, that, in accordance with Article 71(1) of Regulation 2017/1001, in adjudicating an action, the Board of Appeal may either exercise any power within the competence of the department responsible for the contested decision or remit the case to that department for further prosecution. According to Article 71(2), if the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department is to be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.
68 Thus, the Board of Appeal did not examine, in the contested decision, the third and fourth conditions provided for in Article 8(4) of Regulation No 207/2009 and decided to remit that examination to the Cancellation Division, as it was entitled to do. Therefore, the arguments of the applicant concerning the analysis of those two conditions are ineffective, in accordance with the arguments of EUIPO.
69 Having regard to all of the foregoing considerations, the third plea must be rejected and, therefore, 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 In the present case, EUIPO and the intervener have applied for the applicant to be ordered to pay the costs of the present proceedings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
72 The intervener has also claimed that the applicant should be ordered to pay the costs incurred by the intervener in the administrative proceedings before EUIPO. In that regard, it is sufficient to point out that, since the present judgment dismisses the action brought against the contested decision, it is point 3 of the operative part of that decision which continues to determine the costs incurred in those proceedings (see, to that effect, judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 131).
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Guma Holdings Ltd to pay the costs.
Kowalik-Bańczyk | Buttigieg | Dimitrakopoulos |
Delivered in open court in Luxembourg on 26 July 2023.