JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
5 June 2024 (*)
(EU trade mark – Revocation proceedings – EU word mark BIG MAC – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) – No proof of genuine use of the mark in connection with some of the goods and services – Lack of solid and objective evidence – No independent subcategory – Interpretation of the list of services)
In Case T‑58/23,
Supermac’s (Holdings) Ltd, established in Galway (Ireland), represented by V. von Bomhard and J. Fuhrmann, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
McDonald’s International Property Co. Ltd, established in Chicago, Illinois (United States), represented by C. Eckhartt, A. von Mühlendahl and K. Thanbichler-Brandl, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira (Rapporteur), President, M. Kancheva and U. Öberg, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 14 December 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Supermac’s (Holdings) Ltd, seeks the partial annulment and the alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 December 2022 (Case R 543/2019-4) (‘the contested decision’).
I. Background to the dispute
2 On 11 April 2017, the applicant filed an application for revocation with EUIPO in respect of the EU trade mark which had been registered under the number 62638 following an application filed on 1 April 1996 in respect of the word sign BIG MAC.
3 The goods and services covered by the contested mark in respect of which a declaration of revocation was sought are in Classes 29, 30 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 29: ‘Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts’;
– Class 30: ‘Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar’;
– Class 42: ‘Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others’.
4 The ground relied on in support of the application for revocation was that set out in Article 51(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (now Article 58(1)(a) 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)).
5 On 11 January 2019, the Cancellation Division upheld the application for revocation and declared the rights of the intervener, McDonald’s International Property Co. Ltd, to be revoked as from 11 April 2017 with regard to all the goods and services referred to in paragraph 3 above. More specifically, the Cancellation Division found that the evidence provided by the intervener did not prove the extent of use of the contested mark.
6 On 8 March 2019, the intervener filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7 By the contested decision, the Board of Appeal annulled the decision of the Cancellation Division in so far as it had revoked the intervener’s rights in respect of the following goods and services:
– Class 29: ‘Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches’;
– Class 30: ‘Edible sandwiches, meat sandwiches, chicken sandwiches’;
– Class 42: ‘Services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’.
8 By contrast, it dismissed the appeal with regard to the remaining goods and services.
II. Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decision except in so far as it concerns ‘meat sandwiches’ in Class 30 and alter it to the effect that the appeal brought by the intervener is dismissed in respect of all the goods and services concerned with the exception of ‘meat sandwiches’ in Class 30;
– order EUIPO and the intervener to pay the costs.
10 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
11 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
III. Law
A. The scope of the action
12 The intervener contends that the claim for annulment is inadmissible in so far as it concerns ‘chicken sandwiches’, since the applicant has stated, in the application, that it does not relate to ‘meat sandwiches’. The intervener claims that the specification ‘meat sandwiches’ clearly covers ‘chicken sandwiches’.
13 In that regard, it is true that the applicant has stated in the application that it is not challenging the contested decision as regards the Board of Appeal’s assessment relating to genuine use of the contested mark in connection with ‘meat sandwiches’ in Class 30.
14 However, contrary to what the intervener claims, that withdrawal cannot be interpreted, in the light of the complaints set out by the applicant in its written pleadings, as also covering ‘chicken sandwiches’.
15 In paragraphs 18 to 38 of the application, the applicant states, in essence, that the contested decision has to be annulled to the extent that it was found in that decision that genuine use had been shown in connection with ‘chicken sandwiches’ in Classes 29 and 30. In particular, the applicant states that the evidence does not make it possible to conclude that there has been genuine use of the contested mark in connection with ‘chicken sandwiches’, because the contested mark has only been used to designate ‘a sandwich with beef’, and nothing else.
16 Thus, the intervener’s proposed interpretation of that withdrawal, which would also cover ‘chicken sandwiches’, is not apparent from the applicant’s written pleadings and must therefore be rejected.
17 Consequently, the claim of inadmissibility must be rejected as unfounded.
B. Substance
18 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009.
19 That plea consists of five parts, relating, first, to ‘meat sandwiches’ and ‘chicken sandwiches’ in Class 29; secondly, to ‘chicken sandwiches’ in Classes 29 and 30; thirdly, to ‘foods prepared from meat and poultry products’ in Class 29; fourthly, to ‘edible sandwiches’ in Class 30 and, fifthly, to the services in Class 42.
20 It must be pointed out at the outset that, according to the first subparagraph of Article 15(1) of Regulation No 207/2009 (now the first subparagraph of Article 18(1) of Regulation 2017/1001), read in conjunction with Article 51(1)(a) of Regulation No 207/2009, in revocation proceedings, the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO, if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
21 According to Article 51(2) of Regulation No 207/2009 (now Article 58(2) of Regulation 2017/1001), where the grounds for revocation of rights exist in respect of only some of the goods or services for which the trade mark is registered, the rights of the proprietor are to be declared to be revoked in respect of those goods or services only.
22 Under Rule 22(3) and (4) 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) (now Article 10(3) and (4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), the indications and evidence of use must establish the place, time, extent and nature of use of the trade mark and are, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001).
23 It is apparent from the case-law that there is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. 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 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraphs 29 and 31 and the case-law cited).
24 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 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28 and the case-law cited).
25 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use. Such an assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods or services marketed under the trade mark may be compensated for by a high intensity of use or a period of regular use of that mark or vice versa (see judgment of 7 September 2022, Peace United v EUIPO – 1906 Collins (bâoli), T‑754/21, not published, EU:T:2022:529, paragraph 33 and the case-law cited).
26 In the present case, the application for revocation of the contested mark was filed on 11 April 2017. The five-year period referred to in Article 51(1)(a) of Regulation No 207/2009 ran, as the Board of Appeal correctly pointed out in paragraph 44 of the contested decision, from 11 April 2012 to 10 April 2017.
27 The applicant does not dispute the Board of Appeal’s findings relating to the use of the contested mark in connection with ‘meat sandwiches’ in Class 30. The claim for annulment, as regards the goods in that class, is therefore limited to ‘edible sandwiches’ and ‘chicken sandwiches’.
1. The claim for annulment of the contested decision
(a) The first part, relating to the registration of the contested mark in respect of ‘meat sandwiches’ and ‘chicken sandwiches’ in Class 29
28 The applicant submits, in essence, that ‘meat sandwiches’ and ‘chicken sandwiches’ are wrongly registered in Classes 29 and 30, because, according to the Nice Classification, any kinds of edible sandwiches, including meat or chicken sandwiches, belong to Class 30. It argues that the registration of the contested mark with regard to those goods should therefore be revoked in respect of Class 29.
29 EUIPO and the intervener dispute the applicant’s arguments.
30 In that regard, it must be borne in mind that the classification of goods and services under the Nice Agreement is carried out solely for administrative purposes. The purpose of that classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. By contrast, the class headings do not constitute a system in which goods or services included in one class or category are precluded from also forming part of another class or category (judgment of 21 October 2014, Szajner v OHIM – Forge de Laguiole (LAGUIOLE), T‑453/11, EU:T:2014:901, paragraph 88).
31 Furthermore, it has been held that, in view of the exclusively administrative purposes pursued by the Nice Classification, the mere fact that a contested mark has been registered in respect of goods which have been designated incorrectly as goods in a particular class cannot lead to the revocation of that mark in respect of such goods if that mark has actually been used in connection with those goods (see, to that effect, judgment of 6 October 2021, Dermavita Company v EUIPO – Allergan Holdings France (JUVEDERM), T‑372/20, not published, EU:T:2021:652, paragraphs 55 and 62).
32 It follows that the error alleged by the applicant, even if it were established, could not in any event, for the purposes of Article 51(1)(a) of Regulation No 207/2009, constitute a reason or a ground for revocation of the contested mark in respect of those goods.
33 In those circumstances, the Board of Appeal cannot be criticised for not having upheld the application for revocation in respect of those goods on that ground.
34 The present part must therefore be rejected as unfounded.
(b) The second part, relating to whether there has been genuine use of the contested mark in connection with ‘chicken sandwiches’
35 The applicant submits, in essence, that the evidence produced by the intervener in the course of the administrative proceedings was insufficient to substantiate genuine use of the contested mark in connection with ‘chicken sandwiches’. It argues that that evidence is limited essentially to ‘meat sandwiches’.
36 EUIPO and the intervener contend, in essence, that the evidence submitted, namely Annexes 2, 10d and 12c, refers explicitly to ‘chicken sandwiches’. In particular, they submit that those annexes show use of the contested mark in connection with those goods in France from 2015 to 2016.
37 In order to substantiate that use, the intervener submitted the following evidence during the administrative proceedings:
– printouts of advertising posters, on which, inter alia, the handwritten words ‘September – November 2016’ appear, and menu boards relating to the ‘Grand Big Mac Chicken’ (Annex 2 of EUIPO’s case file):
– screenshots of a television commercial relating to ‘BIG MAC + Grand BIG MAC Chicken’, which was broadcast in France in 2016 (Annex 10d of EUIPO’s case file):
– screenshots from the Facebook account of McDonald’s France, relating to the offer of ‘Grand Big Mac Chicken’ in 2016 (Annex 12c of EUIPO’s case file):
38 In paragraphs 120 and 121 of the contested decision, the Board of Appeal found that those items of evidence, taken together, showed that there had been use of the contested mark in connection with ‘chicken sandwiches’ in France from 2015 to 2016.
39 In the present case, it must be pointed out that, although the evidence which was submitted by the intervener and taken into account by the Board of Appeal does indeed show the goods at issue represented under the contested mark in the context of advertisements in France during the relevant period, that evidence does not, however, provide any indication of the extent of use of the mark in connection with those goods for the purposes of the case-law referred to in paragraph 25 above, in particular as regards the volume of sales, the length of the period during which the mark was used and the frequency of use.
40 That evidence, which amounts to printouts of advertising posters, screenshots of a television advertisement which was broadcast in France in 2016 and screenshots from the Facebook account of McDonald’s France in 2016, does not make it possible to ascertain in what quantities, or with what regularity and recurrence, the goods concerned were distributed. That evidence cannot therefore on its own suffice to establish that the commercial use of the contested mark in connection with ‘chicken sandwiches’ was real.
41 Furthermore, contrary to what EUIPO and the intervener claim in their written pleadings, those documents do not contain any indication as regards the prices at which those goods were marketed.
42 Likewise, the affidavit of one of the intervener’s employees (Annex 17 of EUIPO’s case file) does not contain any specific information regarding the sales figures achieved by the contested mark with regard to ‘chicken sandwiches’. The data submitted are merely raw data, which are not broken down in relation to the goods, regarding the sales of ‘Big Mac’ in France between 2013 and 2017.
43 Lastly, although it is true, as the intervener states in its written pleadings, that one of the specific features of the fast-food sector is to offer goods which are not always available, but which recur with a certain regularity, the documents taken into account by the Board of Appeal do not, however, serve to prove that there was genuine use of the contested mark in connection with ‘chicken sandwiches’, in accordance with the case-law referred to in paragraph 25 above. Those documents show with certainty only that there was insignificant use of the contested mark in connection with ‘chicken sandwiches’ with regard to 2016, as is apparent from the screenshots produced (Annexes 10d and 12c of EUIPO’s case file).
44 First, the date on which the advertising posters and menu boards submitted (Annex 2 of EUIPO’s case file) were disseminated to the public or the date on which the goods at issue were marketed is not clear from those posters and boards. Consequently, those documents, which, moreover, appear to be drafts in view of the word ‘confidential’ in them, do not contain, with the exception of the words ‘limited duration’, any information regarding their dissemination or the marketing of the goods in question to the public. The words ‘November/December 2015’ and ‘September – November 2016’, which have been added by hand and are located outside the frame of the advertising posters, cannot, in the light of their handwritten nature and location, constitute a reliable and definite indication regarding the date on which they were disseminated to the public or regarding the date on which the goods were marketed.
45 Secondly, contrary to what the intervener claims in its written pleadings, the screenshots from the Facebook account of McDonald’s France in connection with the goods concerned relate only to the year 2016 (29 September and 8 October). The screenshot bearing the date of 28 December 2015 concerns only the ‘meat sandwich’.
46 Thirdly, it is true that the Google analytics report relating to the data regarding access to the intervener’s websites which was submitted before the Board of Appeal (Annex 15b of EUIPO’s case file) does indeed contain two entries which concern the ‘grand Big Mac chicken’. However, those data are not broken down by year, but relate to the period from 1 April 2012 to 1 April 2017, with the result that they do not serve to establish precisely and with certainty the frequency and regularity with which the contested mark was used in connection with ‘chicken sandwiches’. In any event, that document does not bear out the existence of use of the contested mark in connection with ‘chicken sandwiches’ with regard to 2015. That document appears only to show a slight peak in use of the contested mark with regard to the end of 2013 and with regard to 2016.
47 It follows from all of the foregoing that the Board of Appeal erred in finding that the evidence provided by the intervener was sufficient to prove genuine use of the contested mark in connection with ‘chicken sandwiches’ in France from 2015 to 2016.
48 The applicant’s complaint must therefore be upheld, without it being necessary to examine further the parties’ other arguments.
(c) The third part, relating to whether there has been genuine use of the contested mark in connection with ‘foods prepared from meat and poultry products’ in Class 29
49 The applicant submits, in essence, that the Board of Appeal’s conclusion that the contested mark had to be maintained for the broader category of meat and poultry products, on the sole ground that use of the contested mark in connection with ‘meat sandwiches’ and ‘chicken sandwiches’ had been proved, has no legal basis. It argues that the reference to the abstract statements contained in paragraphs 109 to 111 of the contested decision cannot replace an actual statement of reasons. According to the applicant, the Board of Appeal did not consider whether the goods in question constituted a homogeneous category within the meaning of the case-law. It contends that the use of the contested mark in connection with those sandwiches does not mean that the mark is used for the broader category of ‘foods prepared from meat and poultry products’. It submits that those broad terms do not constitute a homogeneous category of goods. It argues that, in the present case, sandwiches form a category in their own right.
50 EUIPO and the intervener dispute the applicant’s arguments.
(1) The issue of whether there has been proof of genuine use of the contested mark in connection with ‘foods prepared from poultry products’
51 The Board of Appeal found, in paragraph 122 of the contested decision, that, since ‘chicken sandwiches’ were included in the broader category of ‘foods prepared from poultry products’, use of the contested mark had also been shown with regard to the latter, in accordance with the case-law cited in paragraphs 109 to 111 of that decision.
52 The Board of Appeal thus found that use of the contested mark in connection with the goods concerned had been proved on account of the use of the contested mark in connection with ‘chicken sandwiches’.
53 However, it has been held in paragraph 47 above that the Board of Appeal erred in finding that the evidence provided by the intervener was sufficient to prove use of the contested mark in connection with ‘chicken sandwiches’.
54 Consequently, and since it was determined that there had been use of the contested mark in connection with ‘foods prepared from poultry products’ on the basis of an incorrect premiss, the contested decision must be annulled as regards those goods, without it being necessary to examine further the parties’ arguments.
(2) The issue of whether there has been proof of genuine use of the contested mark in connection with ‘foods prepared from meat products’
55 The Board of Appeal found, in paragraph 119 of the contested decision, that, since ‘meat sandwiches’ were included in the broader category of ‘foods prepared from meat products’, use of the contested mark had also been shown with regard to the latter, in accordance with the case-law cited in paragraphs 109 to 111 of the decision.
56 The applicant’s arguments refer, without any real distinction, to the Board of Appeal’s obligation to state reasons and the merits of that reasoning.
57 First, as regards the obligation to state reasons, it must be borne in mind that Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation has the same scope as that laid down in the second paragraph of Article 296 TFEU and its purpose is (i) to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and (ii) to enable the Courts of the European Union to exercise their power to review the legality of the decision. The Boards of Appeal cannot, however, be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see judgment of 13 June 2017, Ball Beverage Packaging Europe v EUIPO – Crown Hellas Can (Cans), T‑9/15, EU:T:2017:386, paragraph 26 and the case-law cited).
58 However, by referring expressly to the case-law cited in paragraphs 109 to 111 of the contested decision, which concerned proof of genuine use of goods or services in a broad category which was capable of being subdivided into independent subcategories, in order to conclude that use of the contested mark had been proved in connection with ‘foods prepared from meat products’, the Board of Appeal implicitly, but necessarily, found that those goods constituted a homogeneous category.
59 Consequently, although the statement of reasons is succinct, it nonetheless shows, as required by the case-law referred to in paragraph 57 above, the Board of Appeal’s reasoning in such a way as to enable the applicant to know the reasons for the contested decision and to provide the Court with sufficient material for it to exercise its power of review.
60 The applicant’s complaint must therefore be rejected as unfounded.
61 Secondly, as regard the merits of the Board of Appeal’s assessment, it must be stated that the contested mark was registered in respect of ‘foods prepared from meat products’ in Class 29 and ‘meat sandwiches’ in Classes 29 and 30. It must also be stated that the intervener has furnished proof of genuine use of the contested mark in connection with ‘meat sandwiches’.
62 The applicant disputes the assessment that ‘meat sandwiches’ are included in the broader category of ‘foods prepared from meat products’. It submits that ‘meat sandwiches’ constitute an independent subcategory amongst the goods in Class 29.
63 In that regard, it must be borne in mind that, 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 part of those goods or services affords protection 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 those goods or services necessarily covers the entire category (see, to that effect, judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23 and the case-law cited).
64 Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not result in the proprietor of the mark concerned being stripped of all protection for goods which, although not strictly identical to those in respect of which he or she has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. It must, in that regard, be observed that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (see, to that effect, judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 24 and the case-law cited).
65 As regards the question whether goods are part of a coherent subcategory which is capable of being viewed independently, it is apparent from the case-law that, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers employ the criterion of the purpose or intended use before making any purchase, that criterion is of fundamental importance in the definition of a subcategory of goods or services (judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 29). By contrast, the nature of the goods at issue and their characteristics are not, as such, decisive with regard to the definition of subcategories of goods or services.
66 In the present case, it must be stated, as observed by EUIPO, that ‘meat sandwiches’ and ‘foods prepared from meat products’ have the same intended use or purpose, because they are foodstuffs containing meat, which are meant to be consumed and are intended to meet specific nutritional needs. In those circumstances, and contrary to what the applicant claims, they cannot be regarded as ‘in essence different’ within the meaning of the case-law referred to in paragraph 64 above.
67 Furthermore, the fact that ‘foods prepared from meat products’ cover a wide range of goods which vary greatly in terms of consistency, because they may, in particular, be stock, meat stuffing, meatballs and minced beef, or that the ‘meat sandwiches’ marketed by the intervener are more commonly called ‘hamburgers’ is, in principle, irrelevant, since, in accordance with the case-law referred to in paragraph 65 above, the nature of the goods is not, as such, relevant with regard to the definition of subcategories of goods.
68 The same is true of the Nice Classification, which, as has been pointed out in paragraph 31 above, has only administrative purposes.
69 Consequently, and contrary to what the applicant claims, ‘foods prepared from meat products’ do not constitute a sufficiently broad category of goods for it to be necessary to identify within it subcategories, such as ‘sandwiches’, in relation to which actual use had specifically to be proved. It must rather be held that it is not possible to make any significant subdivisions within that category of goods, in accordance with the case-law.
70 It follows that the Board of Appeal was right in finding that the applicant, by furnishing undisputed proof of genuine use of the mark in connection with ‘meat sandwiches’, had also furnished proof of genuine use of the mark in connection with ‘foods prepared from meat products’.
71 The applicant’s complaint must therefore be rejected as unfounded.
(d) The fourth part, relating to whether there has been genuine use of the contested mark in connection with ‘edible sandwiches’ in Class 30
72 The applicant submits that the Board of Appeal erred in finding that the use of the contested mark in connection with ‘meat and chicken sandwiches’ was sufficient to maintain the registration of the mark with regard to the slightly broader category of ‘edible sandwiches’. It argues that that latter category of goods covers a huge variety of goods, such as cold or hot, toasted, grilled or steamed or vegetarian sandwiches, with the result that use of a mark in connection with a single type of sandwich does not mean that it is used for any type of edible sandwich.
73 EUIPO and the intervener dispute the applicant’s arguments.
74 In paragraph 123 of the contested decision, the Board of Appeal observed that the word ‘edible’ means, for example, ‘eatable, fit to be eaten’. It thus found that, since use of the contested mark had been proved in connection with ‘meat sandwiches’ and ‘chicken sandwiches’, which were both eatable and edible sandwiches, use of the contested mark had also been proved in connection with ‘edible sandwiches’, in accordance with the case-law cited in paragraphs 109 to 111 of the decision.
75 For the same reasons as those set out in paragraphs 63 to 70 above, which apply mutatis mutandis, the applicant’s complaint must be rejected as unfounded.
(e) The fifth part, relating to whether there has been genuine use of the contested mark in connection with the services in Class 42
76 The applicant submits, in essence, that the services in question are not ‘restaurant services’, but services of ‘preparation of carry-out foods’ and services ‘relating to operating restaurants and other such establishments or facilities’. It contends that those services are business-to-business services, which are associated with operating restaurants. It argues that, in any event, none of the evidence submitted refers to services of ‘preparation of carry-out foods’ or to ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities’.
77 EUIPO and the intervener contend that the applicant’s argument that the services concerned are not ‘restaurant services’ but business-to-business services is incorrect. They argue that a service rendered in operating a restaurant is a restaurant service, without there being any need for further interpretation. They submit that the Board of Appeal correctly established that there had been use of the mark on the basis of the evidence submitted. That argument is also, according to the intervener, inadmissible, since it has been put forward for the first time before the Court.
(1) The issue of whether the argument which the applicant has allegedly put forward for the first time before the Court is admissible
78 The intervener submits that the applicant’s argument that the services concerned are services rendered not to persons visiting restaurants or other establishments or facilities providing food and drink, but to businesses, is inadmissible.
79 At the hearing, EUIPO and the applicant disputed that inadmissibility.
80 In that regard, it must be borne in mind that pleas put forward for the first time before the Court must be declared inadmissible, without there being any need to examine them (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
81 However, the applicant’s argument, which relates to non-use of the contested mark in connection with the services concerned, cannot, in the present case, be held to be a plea which has been put forward for the first time before the Court, since the applicant submitted, both before the Cancellation Division and before the Board of Appeal, that none of the evidence provided by the intervener proved that there had been use of the contested mark in connection with those services.
82 Furthermore, by the contested decision, the Board of Appeal annulled the decision of the Cancellation Division, which had upheld the applicant’s application for revocation and which had declared the intervener’s rights to be revoked with regard to all the goods and services in respect of which the contested mark had been registered. The Cancellation Division had found that the evidence submitted did not prove the extent of use of the contested mark in connection with, inter alia, the services concerned. The Board of Appeal therefore, in the contested decision, carried out a full re-examination of the application for revocation. In those circumstances, the applicant cannot be prevented from criticising the Board of Appeal’s assessments in its action before the Court, the purpose of which is to review the legality of decisions of the Boards of Appeal of EUIPO.
83 The claim of inadmissibility put forward by the intervener must therefore be rejected as unfounded.
(2) The Board of Appeal’s interpretation of the services concerned
84 The contested mark was registered in respect of, inter alia, ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’.
85 In paragraphs 147 and 148 of the contested decision, the Board of Appeal interpreted those services as being (fast-food) restaurant services, in the context of which foodstuffs and beverages are provided to customers, an interpretation which the applicant disputes.
86 In that regard, it must be borne in mind that the list of goods and services in respect of which a trade mark is registered and with regard to which proof of genuine use has been requested must, in order to ascertain the extent of the protection of that mark and to settle the issue of its genuine use, be interpreted in the most coherent manner, in the light of its literal meaning and its grammatical construction, but also, if there is a risk of an absurd result, of its context and the actual intention of that mark’s proprietor as regards its scope (judgment of 17 October 2019, Alliance Pharmaceuticals v EUIPO – AxiCorp (AXICORP ALLIANCE), T‑279/18, EU:T:2019:752, paragraph 50).
87 Furthermore, although it is true that the Nice Classification is purely administrative, reference should, however, be made to it in order to determine, where necessary, the range or the meaning of the goods and services in respect of which a mark has been registered (see judgment of 30 November 2022, Hasco TM v EUIPO – Esi (NATURCAPS), T‑12/22, not published, EU:T:2022:733, paragraph 23 and the case-law cited).
88 In the present case, first, it must be pointed out that the Board of Appeal interpreted in a different manner, and without any explanation, the ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities’ and the services of ‘franchising restaurants’, although they appear in the same expression and were registered without any punctuation, in particular a semicolon, with the result that they must, logically, have the same nature and be aimed at the same public. However, the services of ‘franchising restaurants’ were interpreted by the Board of Appeal, as is apparent from paragraph 151 of the contested decision, as services allowing the franchisee ‘to open a restaurant with an already existing business model, operating procedures, and support and management training’. In other words, they were interpreted as services intended for professionals (franchisees), with the aim of providing them with advice concerning the management and operation of their franchise.
89 Secondly, it must be stated that, contrary to what EUIPO and the intervener claim in their written pleadings, the literal meaning of the terms comprising the services concerned does not refer to the idea of restaurant services in the context of which foodstuffs and beverages are provided to customers, but to support services aimed at restaurant professionals, such as services relating to the way in which to manage or operate a restaurant, because the present case concerns, on the one hand, services rendered or associated with operating restaurants and other establishments or facilities of that kind and, on the other hand, services associated with the preparation of carry-out food.
90 Thirdly, it must be pointed out that if the intervener’s actual intention was in fact to register the contested mark in respect of fast-food restaurant services, the Nice Classification in force on the date on which the application for registration of the contested mark was filed, namely the sixth edition, already included, among the categories of services in Class 42, the categories: ‘snack-bars’ and ‘restaurants’.
91 Fourthly, it must be noted that the other services in Class 42 in respect of which the contested mark was registered, namely the services of ‘the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others’, concern consultancy services aimed at professionals in connection with providing food and drink and not fast-food restaurant services, in the context of which foodstuffs and beverages are provided to customers.
92 It follows from the foregoing that, by equating the services concerned with (fast-food) restaurant services, the Board of Appeal made an error of assessment which vitiates the contested decision as regards the existence of genuine use of the contested mark in connection with those services.
93 The applicant’s complaint must therefore be upheld.
(3) The issue of whether there has been proof of genuine use of the contested mark in connection with the services concerned
94 In paragraph 149 of the contested decision, the Board of Appeal found that the contested mark had been put to genuine use in connection with ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’.
95 In that regard, first, the Board of Appeal stated, in paragraph 145 of the contested decision, that, on the one hand, the intervener’s MCDONALD’s trade mark had a reputation for fast-food restaurant services and for fast-food products on the menu of fast-food establishments and, on the other hand, ‘BIG MAC’, as one of the intervener’s sub-brands, was well known to the general public, as it was listed as an exclusive product of the intervener.
96 Secondly, the Board of Appeal found, in paragraph 147 of the contested decision, that the evidence submitted by the intervener showed that the contested mark had been used not only to identify a specific sandwich, but also to promote the food provider. It stated that the extensive amount of evidence showed that the ‘meat sandwich’ marketed by the intervener was an iconic ‘flagship’ product, which had been inextricably linked to the intervener for more than 40 years. It observed that it could not be purchased in any restaurant other than the intervener’s establishments. It found that it was therefore apparent from the evidence that the contested mark had been used in such a way that it identified not only the specific sandwich provided by the intervener, but also that the use of the contested mark was intended to distinguish the restaurant services provided by the intervener from similar services of third parties, in accordance with paragraph 32 of the judgment of 13 May 2009, Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK) (T‑183/08, not published, EU:T:2009:156).
97 Thirdly, the Board of Appeal observed, in paragraph 148 of the contested decision, that the evidence clearly showed that the intervener used the contested mark in such a way as to establish a link between that mark and the restaurant services provided and cited, by analogy, the judgment of 13 May 2009, jello SCHUHPARK (T‑183/08, not published, EU:T:2009:156).
98 It follows from the foregoing that the Board of Appeal recognised that there had been genuine use of the contested mark in connection with the services concerned, first, on account of the link existing on the part of the public between those services and the ‘meat sandwich’ marketed by the intervener and covered by the contested mark, in respect of which genuine use had been proved, and, secondly, on account of the fact that the intervener’s fast-food restaurant services under the MCDONALD’S trade mark had a high degree of reputation.
99 That approach on the part of the Board of Appeal cannot be accepted, since it is contrary to the case-law to find that, first, use in connection with goods could also prove use in connection with specific services and, secondly, the reputation of a mark in respect of certain goods or services could have a bearing on the scale of use of another mark, on the pretext that the public could establish a link between those marks. As has been pointed out in paragraph 24 above, 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.
100 In the present case, the evidence which was provided by the intervener and taken into account by the Board of Appeal was the following:
– photographs of the packaging used in relation to the ‘meat sandwich’ marketed by the intervener (Annexes 8a, 8b and 8c of EUIPO’s case file);
– photographs of promotional brochures (Annexes 1, 2 and 12b of EUIPO’s case file);
– printouts from the intervener’s websites (Annexes 4a, 4b and 4c of EUIPO’s case file) and from its Facebook account (Annex 12c of EUIPO’s case file);
– screenshots of television commercials (Annexes 10a, 10b and 10c of EUIPO’s case file) and of YouTube videos (Annex 14a of EUIPO’s case file);
– photographs of menus used in McDonald’s restaurants (Annexes 13a and 13b of EUIPO’s case file);
– surveys (Annexes 6a, 6b and 6c of EUIPO’s case file);
– newspaper and magazine articles (Annex 7 of EUIPO’s case file);
– extracts from articles from the online encyclopaedia Wikipedia (Annexes 5 and 7 of EUIPO’s case file);
– a letter from the Director-General of a German employers’ and trade association in the restaurant chains sector (Annex 19 of EUIPO’s case file).
101 However, none of that evidence refers to the services concerned, even if they are understood as fast-food restaurant services. It does not contain any indication of the existence of those services covered by the contested mark. The contested mark is used solely in connection with ‘meat sandwiches’ in that evidence.
102 Furthermore, the judgment of 13 May 2009, jello SCHUHPARK (T‑183/08, not published, EU:T:2009:156), which the Board of Appeal referred to in paragraphs 147 and 148 of the contested decision and the intervener referred to in its response, cannot justify, even by analogy, the approach taken by the Board of Appeal in the contested decision, since there is no solid and objective evidence, in the present case, of actual use of the contested mark in connection with the services concerned.
103 The same is true of the analogy which the intervener appears to wish to make in its response with the concept of complementarity in the context of the assessment of the similarity between goods or services for the purposes of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). It would be contrary to Article 15 of Regulation No 207/2009 to hold that use in connection with goods could also prove use in connection with specific services.
104 It follows from the foregoing that, even if they are understood as fast-food restaurant services, the evidence which was submitted by the intervener and taken into account by the Board of Appeal does not, in any event, serve to prove that the contested mark has been used in connection with ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’.
105 The applicant’s complaint must therefore be upheld and the contested decision must be annulled as regards those services.
106 In view of all the foregoing, the contested decision must be annulled as regards ‘chicken sandwiches’, ‘foods prepared from poultry products’ and ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’.
107 The present action must be dismissed as to the remainder.
2. The claim for alteration of the contested decision
108 In that regard, it must be borne in mind that the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by that Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
109 In the present case, it must be pointed out that the Board of Appeal examined, in the contested decision, all the evidence which the intervener had submitted in order to substantiate the claim that there had been genuine use of the contested mark in connection with the goods and services in respect of which it had been registered, with the result that the Court has the power to alter that decision in that regard.
110 As is apparent from paragraphs 47, 54 and 104 above, the Board of Appeal was required to find, following an overall assessment of the evidence provided by the intervener, that that evidence was insufficient to prove genuine use of the contested mark in connection with ‘chicken sandwiches’, ‘foods prepared from poultry products’ and ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’.
111 In those circumstances, it must, by alteration of the contested decision, be held, following an overall assessment of the evidence provided by the intervener, that that evidence was insufficient to prove genuine use of the contested mark in connection with ‘chicken sandwiches’, ‘foods prepared from poultry products’ and ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’ and that the appeal which the intervener brought before the Board of Appeal of EUIPO against the Cancellation Division’s decision was therefore unfounded as regards those goods and services.
IV. Costs
112 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.
113 Furthermore, under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.
114 In the present case, since all the parties have been unsuccessful in part, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Partially annuls and alters the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 December 2022 (Case R 543/2019-4) to the effect that the appeal brought before that Board of Appeal of EUIPO by McDonald’s International Property Co. Ltd against the Cancellation Division’s decision of 11 January 2019 is dismissed as regards the goods ‘chicken sandwiches’ in Classes 29 and 30, the goods ‘foods prepared from poultry products’ in Class 29 and the ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’ in Class 42, with regard to which the contested mark had been revoked;
2. Dismisses the action as to the remainder;
3. Orders each party to bear its own costs.
Delivered in open court in Luxembourg on 5 June 2024.
V. Di Bucci | | M. van der Woude |