JUDGMENT OF THE GENERAL COURT (Second Chamber)
8 May 2024 (*)
(EU trade mark – Revocation proceedings – EU word mark VAPIX – Article 18(1) and Article 58(1)(a) of Regulation (EU) 2017/1001 – Proof of genuine use – Assessment of the evidence)
In Case T‑207/23,
Sta Grupa AS, established in Riga (Latvia), represented by I. Stankeviča, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Axis AB, established in Lund (Sweden), represented by J. Norderyd, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, J. Schwarcz (Rapporteur) and R. Norkus, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Sta Grupa AS, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 February 2023 (Case R 1098/2022-5) (‘the contested decision’).
Background to the dispute
2 On 7 April 2006, the intervener, Axis AB, filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)). The trade mark for which registration was sought was the word mark VAPIX.
3 The mark applied for covered goods in Class 9 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, corresponding to the following description: ‘Interface for cinematographic, optic apparatus and instruments; interface for apparatus and instruments for measuring, signalling and control (surveillance); interface for apparatus for recording, receiving, transmitting or reproducing sound and images; interface (for computers).’
4 The mark was registered on 2 February 2007 and renewed on 5 April 2016.
5 On 24 January 2020, the applicant filed an application for revocation of the mark referred to in paragraph 2 above in respect of all the goods referred to in paragraph 3 above, in accordance with Article 58(1)(a) of Regulation 2017/1001, on the ground that that mark had not been put to genuine use within a period of five years.
6 On 4 June 2020, the intervener submitted evidence to demonstrate genuine use of the contested mark.
7 On 10 August 2020, the applicant submitted its observations, contesting the evidence of genuine use put forward by the intervener and taking the view that that evidence showed that the VAPIX Application Programming Interfaces (APIs) were used only with products covered by the EU trade mark AXIS, registered under number 005183686, which also belonged to the intervener, that they could not be purchased separately and that no invoices had been provided.
8 On 18 December 2020, the intervener submitted further evidence.
9 By decision of 24 April 2022, the Cancellation Division revoked the contested mark as from 24 January 2020. In essence, having exercised its discretion and agreed to take into account also the evidence submitted on 18 December 2020, the Cancellation Division took the view that there was a lack of evidence from independent sources and that there was no evidence that the products designated by the contested mark were delivered or sold to customers as independent products rather than as ancillary products to those provided under another mark of the intervener, namely the AXIS trade mark. In addition, the number of users of the products designated by the contested mark was too small to create or preserve an outlet for those products, no invoices had been submitted and it had not been shown that the intervener had attempted to carve out a niche market for those products. There was little mention of the contested mark in the evidence, which referred mainly to the AXIS mark.
10 On 22 June 2022, the intervener filed an appeal against the decision of the Cancellation Division.
11 On 3 February 2023, the Board of Appeal adopted the contested decision, by which it upheld the appeal in part and annulled the decision of the Cancellation Division in so far as the contested mark had been revoked for the following goods of Class 9: ‘Application Programming Interface for cinematographic, optic apparatus and instruments; Application Programming Interface for apparatus and instruments for measuring, signalling and control (surveillance); Application Programming Interface for apparatus for recording, receiving, transmitting or reproducing sound and images; Application Programming Interface for (for computers).’ It rejected the application for revocation to that extent.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– revoke the contested mark for the following goods, in Class 9, which have remained registered: ‘Application Programming Interface for cinematographic, optic apparatus and instruments; Application Programming Interface for apparatus and instruments for measuring, signalling and control (surveillance); Application Programming Interface for apparatus for recording, receiving, transmitting or reproducing sound and images; Application Programming Interface for (for computers)’;
– order EUIPO to pay the costs.
13 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs in the event that an oral hearing is convened.
14 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Subject matter of the action
15 Although the applicant’s first head of claim is worded as an application for annulment of the contested decision in its entirety, it is apparent from the application and in particular from its second head of claim that the applicant seeks, in fact, an annulment of the contested decision only in part, in so far as it upholds the action against the Cancellation Division in part, dismisses the application for revocation in part and maintains the registration of the contested decision for the goods referred to in paragraph 11 above.
Substance
16 In support of its action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 58(1) of Regulation 2017/1001 on the ground that the Board of Appeal erred in its assessment of the genuine use of the contested mark. It divides this plea into four complaints, relating to the time, place, nature and extent of use of that mark.
17 EUIPO and the intervener dispute the merits of that plea.
18 It must be noted that, pursuant to the first subparagraph of Article 18(1) and to Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of an EUIPO trade mark are declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for its non-use (judgment of 6 September 2023, Consultora de Telecomunicaciones Optiva Media v EUIPO – Optiva Canada (OPTIVA MEDIA), T‑601/22, not published, EU:T:2023:510, paragraph 21).
19 The rationale for the requirement that a mark must have been put to genuine use in order to be protected under EU law is that EUIPO’s register cannot be regarded as a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 6 September 2023, optiva media, T‑601/22, not published, EU:T:2023:510, paragraph 23 and the case-law cited).
20 According to settled case-law, there is genuine use of a trade mark, for the purposes of Article 58(1)(a) of Regulation 2017/1001, 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. Moreover, the condition relating to genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgment of 6 September 2023, optiva media, T‑601/22, not published, EU:T:2023:510, paragraph 24 and the case-law cited).
21 As regards the criteria for assessing genuine use, under Article 10(3) 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), which is applicable to revocation proceedings in accordance with Article 19(1) of that regulation, proof of use must relate to the place, time, extent and nature of use of the contested mark (see judgment of 6 September 2023, optiva media, T‑601/22, not published, EU:T:2023:510, paragraph 25 and the case-law cited).
22 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark in the course of trade 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 scale and frequency of use of the mark (see judgment of 6 September 2023, optiva media, T‑601/22, not published, EU:T:2023:510, paragraph 26 and the case-law cited).
23 Furthermore, genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (see judgment of 6 September 2023, optiva media, T‑601/22, not published, EU:T:2023:510, paragraph 27 and the case-law cited).
24 It must also be added that, in proceedings for revocation of a trade mark, it is, in principle, for the proprietor of the mark to prove genuine use of that mark (see judgment of 6 September 2023, optiva media, T‑601/22, not published, EU:T:2023:510, paragraph 28 and the case-law cited).
25 It is in the light of the foregoing considerations that it is necessary to examine whether the Board of Appeal was right to conclude, in the contested decision, that the evidence submitted by the intervener demonstrated genuine use of the contested mark for the goods listed in paragraph 11 above.
26 In the present case, the Board of Appeal found, in paragraph 25 of the contested decision, that the contested mark, registered on 2 February 2007, had been registered for more than five years as at 24 January 2020, the date on which the application for revocation was filed. The intervener was thus required to prove genuine use of that mark during the five-year period preceding the filing date of that application, namely from 24 January 2015 to 23 January 2020 inclusive. The applicant does not dispute that assertion by the Board of Appeal.
27 The Board of Appeal carried out a detailed analysis as regards the time, place, nature and extent of use of the contested mark for the goods in question, whether an API was an independent subcategory of goods within the category ‘interfaces’ and the use of that mark in its registered form. Taking into account the extent of the use of that mark and the other evidence analysed, the Board of Appeal found that, overall, proof of its genuine use had been furnished in respect of the goods referred to in paragraph 11 above.
Time of use
28 As a preliminary point, it should be borne in mind that Article 58(1)(a) of Regulation 2017/1001 does not require continuous and uninterrupted use of the contested mark within the relevant period, but rather only genuine use over the course of that period (judgment of 22 June 2022, Beveland v EUIPO – Super B (BUCANERO), T‑29/21, not published, EU:T:2022:388, paragraph 103).
29 The Board of Appeal found, in paragraphs 29 to 35 of the contested decision, referring to appendix 2 and to items 1, 6 to 14, 17, 18 and 20 to 24, submitted in the intervener’s communications to EUIPO of 4 June 2020 and 18 December 2020, that a substantial part of the evidence bore a date coming within the relevant period or contained indications referring to that period.
30 In essence, the Board of Appeal took into consideration the fact that the VAPIX interface had been used since 2001, that the data sheets bore copyright notices covering the relevant period, that the screenshots from the website ‘www.axis.com’ of the VAPIX API library on the APIs for products under the AXIS mark all indicated updates including during the relevant period, that the VAPIX licence agreement was available in 2015 and 2019, and that archived extracts of the intervener’s website, dated May 2015 and April 2016, referred to the mark VAPIX as Axis’ own open API.
31 In addition to that evidence, the Board of Appeal took into account a screenshot of a video tutorial on the social network YouTube concerning the use of VAPIX API commands, dated 2019, an article from the Spanish publication Software Tecnico Libre, entitled ‘Axis IP cams with VAPIX protocol’, published in July 2016, and the fact that a Dutch developer, Connectrick, was admitted as a partner to the Axis Applications Development Program, as was apparent from a post from April 2017. To this were added excerpts from the AXIS Customer Forum, with a specific subsection on questions on the VAPIX APIs, listing the views and posts made during the relevant period, including on 21 May 2019. The Board of Appeal also took into consideration third-party affidavits, attesting to the continuous use over numerous years, including the relevant period, of the VAPIX APIs, and to their membership of the AXIS Application Development Partner (‘ADP’) Program. Lastly, the Board of Appeal referred to the fact that Vaxtor Technologies’ ‘VaxALPR On Camera’ Developer’s Guide was dated May 2017 and that the affidavit of Ms M.N., Global Manager of Partner Programs at AXIS Communications AB, had provided membership data regarding Axis’ Developer Community since December 2019. Furthermore, the Google Data Analytics covered the period from 9 January 2019 to 9 January 2020.
32 The applicant disputes the Board of Appeal’s conclusion regarding the time of use of the contested mark. In essence, it claims that the Board of Appeal did not analyse the probative value of the documents that led it to find that a substantial part of the evidence dated from the relevant period. According to the applicant, those documents lack sufficient probative value. Although the applicant does not dispute the fact that certain documents contain an indication regarding time, in its view they do not, however, contain links to other criteria, such as place or the extent to which consumers had seen the contested mark. The evidence contains only indications for each criterion separately.
33 EUIPO and the intervener dispute the applicant’s claims.
34 As a preliminary point it must be noted that, although the applicant’s claims relate, in principle, to each of the items of evidence taken individually, those items should be assessed together (see, to that effect, judgment of 6 September 2023, optiva media, T‑601/22, not published, EU:T:2023:510, paragraph 26 and the case-law cited). The Board of Appeal correctly stated that a substantial part of the evidence bore a date within the relevant period or contained indications referring to that period.
35 In that regard, even if the evidence in appendix 2 were not sufficient to establish that the word ‘vapix’ had been used since 2001 to designate the APIs in question, it must be noted that other items of evidence relate to the relevant period.
36 Thus, first, contrary to what the applicant claims, the fact that, in items 1 to 4 (data sheets for Axis network video door stations, radar detectors, network cabinet speakers, network cameras mentioning VAPIX as the API), the dates indicated as regards copyright relate, respectively, to 2015 to 2018, 2017 to 2020, 2016 to 2019 and 2017 and 2018, constitutes evidence of use of the contested mark during the relevant period. Indeed, in the sector of the goods in question, which are all technologically advanced products, where technological developments are rapid, a fact of which consumers are generally aware, it is reasonable to consider that the date indicated, relating to copyright, corresponds to the date on which the data sheets in question were made available to the intervener’s customers. The same applies to item 5 (the instructions and terms of use of the VAPIX Pan Tilt Zoom API), indicating copyright for the years 2008 to 2017, which partially overlap with the relevant period.
37 Second, although it is true that items 6 to 10, which evidence regular updates of the VAPIX API, including during the relevant period, are mere screenshots from the intervener’s VAPIX API library, those updates are confirmed by evidence from items 11 and 12 which, for their part, include screenshots from the Wayback Machine and are thus of high probative value, with a date indicating 19 September 2015 in respect of a VAPIX licencing agreement and 10 April 2016 in respect of a screenshot of the intervener’s web page which includes a reference to the VAPIX API.
38 Third, it is appropriate to emphasise the importance of item 14, an article from the publication Software Tecnico Libre, detailing the author’s impression on VAPIX APIs. Contrary to the applicant’s claims, the issue in the present instance is not whether that article was published merely as a blog reaching a limited section of consumers, but rather the fact that that article, submitted during the relevant period, namely on 3 July 2016, demonstrates use of the VAPIX API (in the form of the VAPIX protocol), by clearly indicating the existence of detailed documentation accessible on the intervener’s website ‘www.axis.com’, as technical support for developers. It is thus a relevant indication of the use of the mark at issue. Reference is also made in that article to free software enabling the intervener’s products to be used. Thus, taken as a whole, that article confirms other evidence of genuine use of the contested mark during the relevant period.
39 Fourth, the Board of Appeal correctly took account of items 17 and 18, the first consisting of a screenshot of the Dutch website of Connectrick, a member of the AXIS ADP Program, indicating an upload on 12 April 2017, the second showing a screenshot of an extract from the AXIS customer forum with a specific subsection on issues relating to VAPIX APIs. It is apparent, in particular, that on 21 May 2019, 744 views were recorded in relation to the topic of ‘VAPIX commands [influence] the reliability of Axis camera’. Figures of a similar order were also shown in respect of other topics related to the VAPIX API, dated 6 February and 5 March 2019. Furthermore, while it is true that the webpage in question, namely ‘https://custforum.axis.com’, is a page that is accessible worldwide, it is necessary to take into account the fact that Axis AB is an undertaking with its head office in Sweden, and to read that evidence in conjunction with other evidence, such as the data taken from Google Analytics, which will be assessed below, and the affidavits, all of which come from companies based in the European Union (see paragraph 40 below).
40 Fifth, it should be noted that the Board of Appeal was right to take into account affidavits, the probative value of which it assessed. In particular, it is apparent from items 20, 21 and 22 that independent undertakings, namely the undertakings CamStreamer s.r.o. and ATEAS CZ s.r.o. based in the Czech Republic, despite cooperating with the intervener, confirmed, through their chief executive officers (CEOs), that they had used the VAPIX API during the relevant period. The same is true of the company Vaxtor Technologies, based in Spain, whose affidavit was signed by the software development director. As is apparent from paragraphs 64 to 67 of the contested decision, the Board of Appeal found that not only the other items of evidence, as referred to in paragraphs 38 and 39 above, but also the affidavits, constituted evidence from independent sources the probative value of which was sufficient.
41 In particular, the Board of Appeal was right to recall, in paragraphs 65 to 67 of the contested decision, the case-law on the fact that an affidavit constitutes one of the means of proving genuine use of a mark (see, to that effect, judgment of 7 June 2005, Lidl Stiftung v OHIM – REWE-Zentral (Salvita), T‑303/03, EU:T:2005:200, paragraph 40), and the case-law according to which the existence of contractual links between two distinct entities does not, on its own, mean that the affidavit from one of those entities is not that of a third party, but that of a person having close links with the party concerned, so that such an affidavit has less probative value (see, to that effect, judgments of 28 March 2012, Rehbein v OHIM – Dias Martinho (OUTBURST), T‑214/08, EU:T:2012:161, paragraph 38, and of 15 February 2017, M. I. Industries v EUIPO – Natural Instinct (Natural Instinct Dog and Cat food as nature intended), T‑30/16, not published, EU:T:2017:77, paragraphs 42, 45 and 46). In those circumstances, in the present case, there is no reason to refuse to take account of the information submitted in the affidavits referred to in paragraph 40 above.
42 Lastly, item 23 contains an affidavit by Ms M.N., the Global Manager for Partner Programs at Axis Communications AB, confirming use of the VAPIX mark during the relevant period, with detailed information as to the number of partners in the AXIS ADP Program, showing the regions where users were located, which included the European Union. Although it is not an independent third party statement, it is supported, as regards the existence of a community of users of VAPIX APIs, by other evidence, including data from Google Data Analytics, which the Board of Appeal took into account.
43 Taken together, that evidence constitutes proof of genuine use of the contested mark during the relevant period, including, moreover, an indication of approximately 3 000 unique members of Axis AB’s ADP Program throughout the European Union (item 23), that being a sufficiently large number which, in the context of the assessment of genuine use of that mark as regards the relevant products, must not be compared with the total number of consumers in the European Union, contrary to what the applicant claims. Indeed, account must be taken of the fact that the VAPIX APIs are intended, in particular, for software developers. It is clear from the evidence that the participants in that programme have access to the VAPIX API library. In addition, the usage statistics on Google Data Analytics, provided in item 24(a), relate to the period from 9 January 2019 to 9 January 2020 and show that there was regular access to that library during the relevant period, the data indicating a large number of page views by interested parties (several thousand views, with data subdivided into several tabs, in accordance with the region concerned). Moreover, contrary to the applicant’s claims, it cannot be required that such indications of page views specify whether or not certain page views were the result of the same person repeatedly returning to consult the same web page.
44 In the light of all of the foregoing, the applicant’s claims do not invalidate the Board of Appeal’s finding regarding the time of genuine use of the contested mark.
Place of use
45 Genuine use of the contested mark as an EU trade mark must be demonstrated in the territory of the European Union, in accordance with Article 58(1)(a) of Regulation 2017/1001, read in conjunction with Article 18(1) of that regulation.
46 Whilst it is reasonable to expect that an EU trade mark should be used in a larger area than a national mark, it is not necessary that the mark should be used in an extensive geographic area for the use to be deemed genuine, since such a qualification will depend on the characteristics of the product or service concerned on the corresponding market (see, to that effect, judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 54).
47 Since the assessment of whether the use of the trade mark is genuine is carried out by reference to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark serves to create or maintain market shares for the goods or services for which it was registered, it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not (see, to that effect, judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 55).
48 In the present case, the Board of Appeal stated, in paragraph 39 of the contested decision, in essence, that the intervener was a Swedish undertaking regarded as one of the world leaders in the video surveillance IP cameras market (see item 14), with an extensive catalogue of camera models covering virtually any need. All of its products had a common access protocol via ‘http’, the VAPIX protocol, which was provided, through the VAPIX API library on the intervener’s website, to partners in Axis AB’s ADP Program and to members of the Axis Developer Community. The Board of Appeal found, in essence, that there was evidence of use in the European Union, with reference to items 11 and 20 to 25, relating to evidence concerning the Netherlands, the Czech Republic and Spain as well as to evidence that is subdivided according to the regions of the European Union, such as the data from Google Data Analytics, and relating to applications and other software of the members of Axis AB’s ADP Program in Germany, France, Sweden and the Netherlands.
49 The applicant submits, in essence, that the Board of Appeal, as in its assessment relating to the criterion relating to time, did not examine the probative value of the evidence.
50 EUIPO and the intervener dispute the applicant’s claims.
51 As regards the applicant’s specific claims concerning the evidence, first of all, contrary to the criticisms concerning item 14, the fact that the intervener is based in Sweden and offers the VAPIX API to users is not irrelevant in the assessment of the place of use of the contested mark, in particular in a context such as that of the present case, where use of the VAPIX API consists of direct access to the term library, without it even being necessary to download a particular application. Moreover, the evidence must be examined as a whole, and that includes, in the present case, the affidavits, which have already been found to have probative value and concern several Member States of the European Union (see paragraphs 40 to 42 above), and the data from Google Data Analytics concerning three different regions of Europe.
52 In that latter regard, although it is true that the evidence from Google Data Analytics does not precisely indicate the visits by country within the European regions assessed, it cannot be inferred from this that that indication is insufficient, in particular as regards the place of genuine use. Thus, by way of example, it is apparent from the analysis relating to ‘middle Europe’ that the indicated total number of visits to the VAPIX library concerned eight countries, seven of which were Member States of the European Union, to which Lichtenstein was added. In those circumstances, it is reasonable to consider that that item of evidence constitutes an additional indication making it possible to establish, together with other evidence, genuine use of the contested mark in the European Union. Moreover, contrary to the applicant’s claims, the data clearly indicate the number of pages visited and the way in which they are accessed (by organic search, direct access or by referral).
53 As regards the applicant’s criticisms relating to item 25, which consists of screenshots from the website ‘www.axis.com’ of lists of the partners in Axis AB’s ADP Program by country (Germany, France, Sweden and the Netherlands), although this is, in fact, only indirect proof of use of the contested mark, it remains a relevant item of evidence, in so far as the development, by Axis AB’s partner undertakings, of applications compatible with the intervener’s products and software, are facilitated by the VAPIX API. Thus, it is reasonable to take the view that those partners, in the countries listed, have access to the VAPIX API in the context of the development of their own software or for the purpose of facilitating interoperability between various software products.
54 In the light of the foregoing, the applicant’s various claims relating to the evidence mentioned by the Board of Appeal in its assessment of the place of use of the contested mark must be rejected as unfounded.
Nature of use
55 In paragraph 57 of the contested decision, the Board of Appeal asserted that there were no discrepancies between the contested mark as registered and as used.
56 In paragraphs 40 to 56 of the contested decision, the Board of Appeal examined whether the contested mark had been used in the course of trade as a trade mark for goods. In essence, it found that the evidence, as a whole, concerned APIs for network video cameras and video encoders, cameras, Axis Camera Application Platform (ACAP) applications, audio system products, access control products such as network door controllers and connected equipment such as locks and readers, and network radar products, namely, APIs for products in the nature of ‘cinematographic, optic apparatus and instruments; apparatus and instruments for measuring, signalling and control (surveillance); interface for apparatus for recording, receiving, transmitting or reproducing sound and images’ as in the specification of the contested mark. The Board of Appeal found that the intervener’s API was intended to be used in connection with digital surveillance and, as such, involved the use of computers and was an API for computers.
57 According to the Board of Appeal, throughout the evidence, the mark ‘Axis [was] the house mark’ that designated the digital apparatus and equipment, such as network cameras, audio systems, access control products, such as network door controllers, doors, locks and readers and network radar products originating from the intervener, while the contested mark designated the intervener’s own open APIs available in the VAPIX API library on its website, which users could access to exploit further the functionalities of the products under the AXIS mark.
58 Accordingly, the Board of Appeal examined whether an API was an independent subcategory within an interface, given that the contested mark was for an interface for the apparatus and equipment listed.
59 According to the case-law, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition (judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45).
60 In the present case, the Board of Appeal found, in essence, that an interface was any tool in the broad sense that allowed connectivity between the components of a system or devices, that is to say, which allows those components to communicate with each other and to accept audio and video material.
61 As for an API, the Board of Appeal defined this as intermediary software that allows different applications to interact with each other, without human decisions, submitting requests that are built in a pre-defined manner. As the intervener acknowledged, an API is a set of routines, protocols and tools for building software applications and specifies how software components should interact. APIs are used when programming graphical user interface components and serve to make it easier to develop a program by providing all the building blocks which a programmer can then put together.
62 The Board of Appeal concluded that the open APIs for which use of the contested mark had been demonstrated (see paragraph 11 above) had to be considered to be a coherent and independent subcategory within the broad specification of an interface. Since that conclusion has not been challenged by the parties before the Court and since the approach adopted by the Board of Appeal is consistent with the case-law referred to in paragraph 59 above, it should be taken into account.
63 However, the applicant claims, first, that the contested mark has not been used for the goods in respect of which it was registered. Second, it maintains that it was not used in the course of trade.
64 First, the applicant submits that it is only the goods under the intervener’s AXIS trade mark that are offered publicly and outwardly, namely certain video surveillance and security products. By contrast, the APIs covered by the contested mark, which consist essentially of a code that enables two software programs to communicate and specifies how software components should interact, are made available to developers or end consumers only after purchase of the goods covered by the AXIS mark, namely network video products, security cameras and video encoders. The intervener did not submit any evidence to show that it made commercial efforts to sell, or even offer free of charge, VAPIX APIs to customers other than those who had previously purchased products designated by the AXIS mark. According to the applicant, the contested decision does not contain any analysis of whether the contested mark had been used, in the course of trade, for the goods for which it had been registered.
65 Second, the applicant also submits that there is no evidence in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods protected by the contested mark or for the purpose of carving out a niche market. All commercial efforts were focused on the AXIS mark. The use of the contested mark is merely token use and, moreover, it has not been shown that users had actually attempted to access the VAPIX API library.
66 EUIPO and the intervener dispute the applicant’s claims.
67 The two strands of the applicant’s line of argument can be answered together. As the Board of Appeal stated and as EUIPO and the intervener submitted before the Court, the evidence submitted by the intervener shows that genuine, and not merely token, use had been made of the contested mark during the relevant period. In that regard, it is appropriate to start from the premiss that the matter at issue, in the present case, is limited to the products as defined in paragraph 11 above, since it is common ground that APIs constitute a coherent and independent subcategory within the general specification of an interface (see paragraph 62 above). In addition, the parties also agree that an API is software that acts as an intermediary so that two or more applications can communicate with each other. As such, an API may either come within the internal domain of a given undertaking or be offered outside it, in particular by being published, in order to allow third parties to access a product or software without problems related to interoperability with their own applications.
68 In that regard, the Board of Appeal clearly found, in paragraph 91 of the contested decision, that VAPIX APIs offered the additional possibility of using digital video surveillance products marketed under the AXIS mark in the context of the development of third-party applications. As the Board of Appeal states and as is also apparent from the evidence, in particular from the VAPIX API library and from the affidavits, VAPIX APIs therefore offer the possibility of further exploiting the functionalities of products marketed under the AXIS mark and of building applications based on those products, which demonstrates the particular importance of VAPIX APIs for third parties.
69 It must also be held that the various applications, which can be developed by third parties, that benefit from VAPIX APIs and interact with AXIS products, constitute an independent segment of software. In such circumstances, the use of the contested mark to expand the number of users of VAPIX APIs, whether with the intention of extending the number of applications interacting with the AXIS products or of increasing the quality of those applications, does indeed constitute use of that mark in the course of trade. Such an approach comes within the scope of that, in keeping with the case-law referred to in paragraph 20 above, which aims to create or preserve an outlet for the goods protected by the same mark. Accordingly, the answer to the question, raised by the applicant, of whether VAPIX APIs are also, or predominantly, offered to customers other than those who have previously purchased goods designated by the AXIS mark is not, in any event, decisive.
70 The evidence submitted before EUIPO confirms such an interpretation. Thus, it is apparent in particular from appendix 2 that the VAPIX API can be used to ensure access to different types of applications and facilitates interoperability between third-party platforms and Axis AB’s products. It is also apparent from that piece of evidence that the ONVIF platform had been created in 2008, by the companies Axis AB, SONY and BOSCH, with the aim of standardising the approaches to communication with certain security-based products (IP-based physical security products), and that since ONVIF was used by a large number of members, it took a very long time to introduce new APIs. It is stated in that document that it was precisely for that reason, as well as to be able to target products under the AXIS mark specifically, that the VAPIX API had been developed. It can be deduced from this that the purpose of the use of the contested mark is to create or preserve an outlet for that software, and to facilitate the marketing and use of other products under Axis AB’s parent mark. This commercial effort is confirmed by the approximate figure of 3 000 users of the VAPIX API in the European Union, as well as by other information provided by the affidavits. That other information includes, first, the reference to the fact that the VAPIX API may be used for various products, such as software detecting registration plates using cameras or the repetition of certain coded data (see item 22a). Second, as the Board of Appeal also found in paragraph 88 of the contested decision, even if it could not be ruled out that the ultimate goal of such a tool was to encourage the purchase of digital surveillance products under the AXIS mark, VAPIX APIs were nevertheless in competition with the ONVIF standardised interfaces for effective interoperability of IP-based physical security products. The Board of Appeal correctly referred to items 1 to 4, which indicate as the API both VAPIX and ONVIF, as well as item 22b, relating to an AXIS camera with the VaxALPR camera software of the company Vaxtor Technologies.
71 Overall, it must therefore be concluded that the use of the contested mark does indeed constitute outward use and may be classified as use in the course of trade, notwithstanding the fact that access to the VAPIX API is free of charge, in respect of the goods referred to in paragraph 11 above.
Extent of use
72 Whether use is sufficient to maintain or create market shares for the goods or services protected by the mark depends on several factors and on a case-by-case assessment. The characteristics of those goods and services, the frequency or regularity of the use of the trade mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, and evidence of use which the proprietor is able to provide, are among the factors which may be taken into account (see judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 71 and the case-law cited).
73 It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule, which would not allow EUIPO or, on appeal, the Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use (see judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72 and the case-law cited).
74 In the present case, the Board of Appeal found, in essence, in paragraphs 62 to 101 of the contested decision, that the evidence relating to the extent of use of the contested mark for the goods at issue was sufficient. In particular, it found that, contrary to what had been found by the Cancellation Division, first, there was no absence of independent evidence, second, the goods covered by that mark were provided outwardly, third, the absence of evidence relating to sales volumes and of invoices was not decisive, fourth, the intervener did seek to create or maintain an outlet for VAPIX APIs in the European Union, fifth, VAPIX APIs were offered as independent goods, and, sixth, there was sufficient evidence relating to references to the contested mark, irrespective of the AXIS mark.
75 The applicant relies on the absence of evidence from independent sources and claims that the evidence submitted does not, in any event, satisfy the requirements as to number of users, place and time. According to the applicant the use of the contested mark is not aimed outward, but is internal to the intervener. Lastly, the applicant is of the view that the intervener has not shown that it sought to create a niche market, that it provided for the existence of a competitive offer or made any marketing efforts.
76 EUIPO and the intervener dispute the applicant’s claims.
77 In the first place, as regards the existence of evidence from independent sources, it has already been held in paragraphs 40 and 41 above that the affidavits from third-party undertakings had to be regarded as independent sources, notwithstanding the commercial links between those third parties and the intervener. As the Board of Appeal noted in paragraph 64 of the contested decision, there is other evidence in addition to that evidence, including an article from an independent Spanish publication (item 14), a screenshot of the webpage of a Dutch developer, Connectrick (item 17), excerpts from Axis AB’s customer forum, as a community of developers, with a specific subsection on VAPIX API questions (item 18), but also data from Google Data Analytics, divided by regions of Europe.
78 In the second place, as regards the outward use of the contested mark, the Board of Appeal was right to find, in paragraphs 69 to 76 of the contested decision, that the VAPIX API was a publicly available API, that is to say, it was open outwardly, providing developers with programmatic access to a proprietary software application, the VAPIX API library on the website ‘www.axis.com’. As the Board of Appeal found, it is apparent from the screenshot of the YouTube video tutorial (item 13) and the instructions on the Pan Tilt Zoom API (item 5), that that library consisted of commands and is not subject to download. Access was offered free of charge, subject to acceptance of the terms of the licence agreement which, as is apparent from the evidence (item 11), was itself proposed during the relevant period. Furthermore, it was clear from the evidence submitted as items 17, 18, 20, 21, 22 and 25 that a significant number of users were part of the member community of Axis AB’s partner programme, which had access to the VAPIX API. Moreover, in view of its nature, it was not downloadable. In such circumstances, data on visits to the API VAPIX library, such as those from Google Data Analytics, are particularly relevant. Contrary to what the applicant claims, the number of views of the relevant web pages concerning the VAPIX API, amounting to several thousands, constitutes sufficient data to demonstrate use of the contested mark which is not merely token use.
79 In the third place, as regards the use of the contested mark for the purposes of creating or maintaining market shares or creating a niche market, it has already been found, in paragraph 70 above, that the VAPIX API was not the only API used in connection with the products under the AXIS mark; rather, other competing APIs existed or could be developed, notably the standardised ONVIF interfaces. In so far as the applicant also referred to the absence of invoices relating to sales of the goods covered by the contested mark, it is sufficient to note that, in the light of the technological aspects already mentioned, since the VAPIX API is a free product, access to which is linked to a licence agreement, the submission of invoices cannot be required in order to prove genuine use of that mark. The Board of Appeal was correct to refer, in that regard, in paragraphs 84 to 86 of the contested decision, to judgments of 12 March 2009, Antartica v OHIM (C‑320/07 P, not published, EU:C:2009:146, paragraphs 29 and 30), and of 9 September 2011, Omnicare v OHIM – Astellas Pharma (OMNICARE CLINICAL RESEARCH) (T‑289/09, not published, EU:T:2011:452, paragraphs 67 and 68), from which it follows, in essence, that genuine use of a mark may be demonstrated even in a context in which goods or services are offered free of charge and not in return for any other consideration, in so far as the holder of that mark seeks to create or maintain an outlet for those goods or services in the European Union, as against those of other trade mark holders offering competing goods and services. It has already been found that that was indeed the case here (see paragraph 70 above). It is also apparent from the evidence that VAPIX APIs are not promotional items or services relating to the sale of products covered by the AXIS mark, as the Board of Appeal also points out in paragraphs 87 and 88 of the contested decision.
80 Furthermore, it is clear from the evidence, examined as a whole, that the contested mark was used in such a way as to be assessed as it is, that is to say, independently of the parent mark AXIS. By way of example, the contested mark is prominent in appendix 2, relating to the VAPIX API tutorial, in item 5, relating to the licence agreement, in items 6 to 10, relating to screenshots and excerpts from the VAPIX API Library, and in the Spanish publication (item 14). It should also be added that the affidavits all relate to the contested mark.
81 Since none of the pleas in law put forward by the applicant in support of its application, either for the annulment or the alteration of the contested decision, are well founded, the action must be dismissed in its entirety.
Costs
82 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.
83 In the present case, although the applicant has been unsuccessful, EUIPO has requested that it be ordered to pay the costs only in the event that a hearing is organised. Since no hearing has been held, it is appropriate to order EUIPO to bear its own costs.
84 By contrast, since the applicant has been unsuccessful, as stated above, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Sta Grupa AS, in addition to bearing its own costs, to pay the costs incurred by Axis AB;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Delivered in open court in Luxembourg on 8 May 2024.
V. Di Bucci | | S. Papasavvas |