JUDGMENT OF THE COURT OF FIRST INSTANCE (First Chamber)
30 April 2008 (*)
(Community trade mark – Application for the Community figurative mark SONIA SONIA RYKIEL – Earlier national word mark SONIA – Relative ground for refusal – Genuine use of the mark – Article 43(2) and (3) of Regulation (EC) No 40/94)
In Case T‑131/06,
Sonia Rykiel création et diffusion de modèles, established in Paris (France), represented by E. Baud and S. Strittmatter, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM having been
Cuadrado SA, established in Seville (Spain),
ACTION brought against the decision of the First Board of Appeal of OHIM of 30 January 2006 (Case R 329/2005‑1), concerning opposition proceedings between Cuadrado SA and Sonia Rykiel création et diffusion de modèles,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),
composed of J.D. Cooke, President, I. Labucka and M. Prek (Rapporteur), Judges,
Registrar: C. Kantza, Administrator,
having regard to the application lodged at the Court Registry on 4 May 2006,
having regard to the response lodged at the Court Registry on 24 July 2006,
further to the hearing on 23 October 2007,
gives the following
Judgment
Background to the dispute
1 On 21 December 1998, the applicant, Sonia Rykiel création et diffusion de modèles, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The trade mark for which registration was sought is the following figurative sign:
3 The goods for which registration was sought fall within Classes 18 and 25, in addition to Classes 3, 9 and 14, of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description:
– Class 18: ‘Leather and imitations of leather and goods made of these materials, namely handbags, trunks, suitcases and travelling bags, purses, pocket wallets, chequebook holders, card holders, key ring cases, umbrellas, parasols, walking sticks and switches’;
– Class 25: ‘Clothing, including headscarves, underwear, socks, stockings, footwear (except orthopaedic footwear), headgear, for men, women and children’.
4 The application was published in Community Trade Marks Bulletin No 96/1999 of 6 December 1999.
5 On 6 March 2000, Cuadrado SA filed a notice of opposition pursuant to Article 8(1)(a) and (b) of Regulation No 40/94. The opposition was directed against the goods in Classes 18 and 25 of the Nice Agreement specified in the trade mark application and was based on the following earlier rights:
(a) the Spanish national registration No 101394 of 4 June 1935, in respect of ‘knitwear’ in Class 24 of the Nice Agreement and ‘stockings, socks’, in Class 25 of the Nice Agreement, of the mark
(b) the Spanish registration No 1609133, of 20 April 1994, of the word mark SONIA (‘the earlier work mark’) in respect of ‘articles of clothing for women, men or children; footwear (except orthopaedic); headgear’ in Class 25 of the Nice Agreement.
6 In the course of the opposition proceedings, the applicant called on Cuadrado to provide evidence of genuine use of its earlier marks, in accordance with Article 43(2) and (3) of Regulation No 40/94.
7 By decision of 26 June 2001, the Opposition Division, without examining the issue of whether there had been genuine use of the earlier marks, found that there was a likelihood of confusion between those marks and the mark applied for with regard to the goods in Class 25 of the Nice Agreement and dismissed that likelihood with regard to the goods in Class 18 of that agreement.
8 On 14 August 2001, the applicant appealed against that decision, restricting the subject matter of its application to disputing the existence of a likelihood of confusion between its mark and the earlier marks in respect of all the goods in Class 25 of the Nice Agreement. In that respect, it drew attention to the fact that there was no evidence of genuine use of the earlier marks with regard to those goods.
9 In its decision R 744/2001‑2 of 21 May 2002, the Second Board of Appeal ruled that there had been an infringement by the Opposition Division of its obligation to request Cuadrado to submit evidence of use of those earlier marks. It also noted that the decision was definitive in so far as it rejected the opposition with regard to the goods in Class 18 of the Nice Agreement. The case was therefore remitted to the Opposition Division for further action regarding the opposition in respect of the applicant’s goods in Class 25 of the Nice Agreement.
10 On 22 November 2002, the parties were informed that the opposition proceedings were being resumed. Cuadrado was requested, in accordance with Article 43(2) of Regulation No 40/94, to furnish evidence of genuine use of the earlier marks.
11 On 22 January 2003, Cuadrado submitted several documents to prove that the marks on which the opposition was based had been put to genuine use in Spain.
12 By decision No 204/2005 of 28 January 2005, the Opposition Division took the view that the evidence submitted by Cuadrado showed genuine use of the earlier word mark, but only in respect of ‘women’s slips’ and ‘petticoats’. On the other hand, it considered that no evidence of genuine use of mark No 101394 had been provided. Comparing the earlier word mark, the only mark for which genuine use had been established, with the trade mark applied for, it then concluded that there was no likelihood of confusion between them.
13 On 23 March 2005, Cuadrado filed a notice of appeal against that decision.
14 By decision R 329/2005‑1 of 30 January 2006 (‘the contested decision’), the First Board of Appeal of OHIM, after having confirmed the Opposition Division’s findings as to whether there had been genuine use of the earlier national word mark, nevertheless found that there was a likelihood of confusion between that mark and the mark applied for and, consequently, annulled the Opposition Division’s decision. It thus rejected the application for registration of the Community trade mark in respect of the goods in Class 25 of the Nice Agreement.
Forms of order sought
15 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
16 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
17 The applicant puts forward two pleas alleging infringement, first, of Article 43(2) and (3) of Regulation No 40/94 and, secondly, of Article 8(1)(b) of that regulation.
The first plea, alleging infringement of Article 43(2) and (3) of Regulation No 40/94
Arguments of the parties
18 The applicant claims that the evidence submitted by Cuadrado for the purpose of demonstrating genuine use of the earlier word mark, in respect of women’s slips and petticoats, is neither relevant nor sufficient.
19 The applicant notes that the evidence at issue consists of copies of invoices issued in 1997, 1998 and 2002, packaging and labels showing the trade mark as applied on the marketed goods together with the corresponding reference numbers identifying the goods, and a copy of an invoice addressed to Cuadrado for the manufacturing of packaging bearing, inter alia, the earlier word mark.
20 It submits first, that, the following findings render that evidence irrelevant:
– some invoices issued in 1997 have reference numbers that bear no relation to the goods covered by the earlier word mark;
– since the Community trade mark application was published on 6 December 1999, the evidence subsequent to that date, in particular the invoices issued in 2002, should have been ignored;
– the invoice for the manufacturing of packaging bearing the earlier word mark does not prove any commercial sale of the goods under that trade mark and, moreover, dates from 2001;
– the packaging and labels are not dated. In addition, the references to the trade mark were not printed on the packaging or labels themselves but on independent stickers. They therefore have no probative value.
21 Secondly, the applicant, relying on the judgment in Case C‑40/01 Ansul [2003] ECR I‑2439, claims that the evidence provided by Cuadrado is not sufficient to show genuine use of the earlier word mark.
22 In that connection, the applicant takes the view that women’s slips and petticoats and clothing articles in general are goods of common everyday use, in the light of the reasonable price charged for them, they are not luxury goods, very expensive and sold in limited numbers in a narrow market, but are rather goods to be sold to a large number of consumers. The size of the related national market is thus very large. However, only 61 articles of underwear were sold between 6 December 1994 and 6 December 1999. Such a situation cannot indicate genuine use of the trade mark for goods of common everyday use. Cuadrado, furthermore, failed to set out relevant arguments or to file relevant evidence justifying the minimal use of the earlier word mark.
23 The decision of the Opposition Division, upheld by the Board of Appeal, refusing registration of the trade mark applied for is therefore the result of an overly extensive interpretation of the evidence provided by Cuadrado.
24 OHIM contends that it is necessary to refer to the Opposition Division’s decision concerning the evaluation of the items of evidence since the Board of Appeal endorsed the findings of the Opposition Division on that issue.
25 In that connection, it observes first of all that both the Opposition Division and the Board of Appeal agreed that the only items of evidence which were relevant were those bearing a date earlier than 6 December 1999, thereby discarding the items of evidence dated 2002.
26 Next, OHIM argues that the Opposition Division and Board of Appeal did not dispute that the packaging and labels were undated, observing that often those documents by their very nature do not bear any date. However, they established that those items of evidence were corroborated by other documents, in this case invoices.
27 The Opposition Division and Board of Appeal noted that each of the labels and items of packaging submitted by Cuadrado displayed a reference, in the form of numbers corresponding to goods. The invoices produced by Cuadrado show that references 908010, 908018 and 910051 related to women’s slips and references 910007 and 910004 to petticoats. OHIM agrees with the applicant’s view that the other reference numbers which were not shown to relate to goods bearing the earlier mark should be discarded, and adds that the decision of the Board of Appeal cannot be criticised on that account.
28 The Opposition Division went on to analyse nine invoices dated from 10 January 1997 to 10 March 1998 and, as the Board of Appeal subsequently did, approved the resulting figures which indicated that a total amount of 85 units had been sold for a transaction value of approximately EUR 432 over a 13-month period.
29 OHIM concurs with the Opposition Division’s finding that the evidence submitted shows merely a quantity which was quite modest, in absolute terms, of articles sold over the relevant period, taking account of their price and the likely size of the national market for that type of goods. However, it makes clear that Cuadrado was not required to submit invoices for all the goods which it sold over the five relevant years or to adduce evidence other than that showing that the goods designated by the earlier word mark had been used publicly and outwardly (Case T‑174/01 Goulbourn v OHIM– Redcats (Silk Cocoon) [2003] ECR II‑789, paragraph 39). The fact that the invoices covered a period of 13 months and were sent to 9 different customers located in various parts of Spain (thus covering different regions of the relevant territory) is convincing that use is not merely token but in fact genuine.
30 OHIM refers in this connection to the judgment in Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraph 49, relating to goods of everyday consumption, which found that sales amounting to 3 500 goods with a value of EUR 4 800 over a period of 11 months reflected genuineness of the use. Those sales constituted use which was objectively such as to create or preserve an outlet for the goods concerned and which entailed a volume of sales which, in relation to the period and frequency of use, was not so low that it could be concluded that the use was merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.
31 OHIM also invokes the judgment in Case T‑334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II-2787, paragraph 47, concerning sales of 450 units with a value of EUR 6 000 over a period of four and a half months, according to which a low turnover, achieved during a relatively short period of four and a half months, directly preceding the date of publication of the application for a Community trade mark, was not an obstacle to a finding of genuine use.
32 At the hearing, OHIM also relied on the judgment of 27 September 2007 in Case T-418/03 La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), not published in the ECR, in which packaging and 10 invoices were sufficient to establish that an earlier national word mark had been used.
33 It submits that, by analogy, the same finding should apply in the present case, and it is therefore satisfied that the file contains sufficient information on the place, duration, extent and nature of the use of the earlier word mark with regard to the goods at issue.
34 In conclusion, OHIM takes the view that the Opposition Division and the Board of Appeal acted correctly in finding that the earlier word mark was, under Article 43(2) and (3) of Regulation No 40/94, deemed to be registered only for women’s slips and petticoats, and that genuine use of that trade mark had been proved with regard to those two products. It also confirms that, in the absence of any proof that the earlier trade mark No 101394 was put to genuine use, that trade mark was properly disregarded.
Findings of the Court
35 As the ninth recital in the preamble to Regulation No 40/94 indicates, the legislature took the view that the protection of an earlier trade mark is justified only to the extent that the mark has actually been used. In keeping with that recital, Article 43(2) and (3) of Regulation No 40/94 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the five years preceding the date of publication of the Community trade mark application against which an opposition has been filed (Case T-39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II-5233, paragraph 34; VITAFRUIT, cited in paragraph 30 above, paragraph 36, and LA MER, cited in paragraph 32 above, paragraph 51).
36 Under Rule 22(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), the proof of use must cover the place, duration, extent and nature of the use made of the earlier trade mark.
37 In interpreting the concept of genuine use, account must be taken of the fact that the rationale for the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application, is to restrict the number of conflicts between two marks, in so far as there is no sound economic reason resulting from an actual function of the mark on the market (Silk Cocoon, cited in paragraph 29 above, paragraph 38). However, that provision does not involve either assessing the commercial success of an undertaking or monitoring its economic strategy, nor is it designed to reserve the protection of trade marks for large-scale commercial uses of them (VITAFRUIT, cited in paragraph 30 above, paragraph 38; HIPOVITON, cited in paragraph 31 above, paragraph 32; and LA MER, cited in paragraph 32 above, paragraph 53).
38 As is apparent from the judgment in Ansul, cited in paragraph 21 above (paragraph 43), relating to the interpretation of Article 12(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the legislative content of which effectively corresponds to that of Article 43 of Regulation No 40/94, there is genuine use of a trade mark where it is used in accordance with its essential function, namely 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. In that regard, the condition relating to genuine use of the trade mark requires that the use of the mark, as protected on the relevant territory, be public and external (Silk Cocoon, cited in paragraph 29 above, paragraph 39; see, by way of analogy, Ansul, cited in paragraph 21 above, paragraph 37).
39 When assessing whether use of a trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market 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, by analogy, Ansul, cited in paragraph 21 above, paragraph 43).
40 As regards the scale of the use made of the earlier trade mark, account must be taken of, inter alia, first, the commercial volume of all the acts of use and, second, the duration of the period over which the acts of use were carried out and the frequency of those acts (judgment of 14 December 2006 in Case T-392/04 Gagliardi v OHIM – Norma Lebensmittelfilialbetrieb(MANŪ MANU MANU), not published in the ECR, paragraph 82).
41 To examine whether an earlier trade mark has been put to genuine use in a particular case, an overall assessment must be carried out, taking account of all the relevant factors in the case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. In addition, the turnover and the volume of sales of the product under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. As a result, the Court of Justice has stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be deemed genuine, provided that it is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark (order in Case C-259/02 La Mer Technology [2004] ECR I-1159, paragraph 21; LA MER, cited in paragraph 32 above, paragraph 57; see, by way of analogy, Ansul, cited in paragraph 21 above, paragraph 39).
42 However, the more limited the volume of sales of items bearing the mark, the more necessary will it be for the party opposing new registration to produce additional evidence to dispel possible doubts as to the genuineness of the use of the mark in question (HIPOVITON, cited in paragraph 31 above, paragraph 37).
43 The Court of Justice also added, in paragraph 72 of its judgment in Case C‑416/04 P Sunrider v OHIM [2006] ECR I-4237, that it was 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 OHIM or, on appeal, the Court of First Instance, to appraise all the circumstances of the dispute before it, cannot therefore be laid down. Thus, in that judgment, the Court held that, when it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use.
44 The Court of First Instance has held that genuine use of a trade mark cannot be proved by means of probabilities or suppositions but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (HIWATT, cited in paragraph 35 above, paragraph 47, and Case T-356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II-3445, paragraph 28).
45 The issue as to whether the Board of Appeal was correct in holding that the evidence submitted by Cuadrado before OHIM proved genuine use of the earlier word mark should be examined in the light of the foregoing considerations. It is necessary to note, first of all, that in paragraph 18 of the contested decision the Board of Appeal, after examining the evidence provided by Cuadrado, merely confirmed the findings of the Opposition Division on the issue of the genuine use of the earlier word mark. The analysis of the evidence of genuine use should therefore be conducted on the basis of the findings in the decision of the Opposition Division.
46 Since the applicant’s Community trade mark application was published on 6 December 1999, the relevant five-year period for the purposes of Article 43(2) of Regulation No 40/94 therefore lasts from 6 December 1994 to 5 December 1999.
47 The evidence which Cuadrado presented before the Opposition Division as to the use, in Spain, of the earlier word mark consists, as the Opposition Division’s decision shows, of copies of invoices issued in 1997, 1998 and 2002, packaging and labels and a copy of an invoice for the cost of manufacturing packaging bearing the earlier word mark. The Court therefore notes that, during the proceedings before OHIM, Cuadrado did not submit any document designed to indicate the volume of its sales or the commercial volume of all the acts of use, with the result that only the documents referred to above can provide evidence of genuine use of the trade mark.
48 First, the Board of Appeal, like the Opposition Division, took into consideration only nine invoices, drawn up between 10 January 1997 and 10 March 1998, and thus during the relevant period. OHIM thus acted correctly in disregarding the invoices drawn up in 2002.
49 In addition, each of those nine invoices includes at least one of the reference numbers identifying the two products covered by the earlier word mark. Those reference numbers are No 908010 and No 908018 in respect of women’s slips and No 910004 and No 910007 in respect of petticoats. The Board of Appeal therefore did not in any sense take into account invoices without either of those reference numbers.
50 Secondly, the Board of Appeal was correct to disregard, on grounds of irrelevance, the invoice addressed to Cuadrado for the manufacture of packaging bearing the earlier word mark. That invoice, which was, moreover, drawn up after the relevant period, does not in fact indicate that the goods covered by the earlier word mark were actually sold or, at least, that they had been placed on the market during that period.
51 Thirdly, the Board of Appeal was right to take into account the labels and packaging with a view to establishing the use of the earlier word mark. However, that evidence, of limited probative value, is, as such, insufficient to support a finding that the earlier word mark was genuinely used. The mere fact that Cuadrado still has in its possession a number of years after the relevant period examples of labels and packaging bearing the mark at issue does not in itself prove that that mark was actually used during that period, or provide any information on the volume of any acts of use. That evidence must therefore be assessed together with the other evidence as a whole.
52 Fourthly, as regards the argument that the quantities of articles sold were so modest that it cannot be concluded that there was genuine use of the earlier word mark, it should be noted that 54 units of women’s slips and 31 units of petticoats were sold over a period of 13 months, for a total sum of EUR 432. It is therefore necessary to determine, having regard to the previously cited case-law, whether that small turnover and the very modest quantities of articles sold over that period allow the conclusion to be drawn that there was genuine use of the earlier word mark.
53 As stated in paragraph 39 of Ansul, cited in paragraph 21 above, those figures and quantities cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the data above should be viewed in relation to the nature of the goods and the structure of the relevant market.
54 Those articles are goods of everyday consumption, sold at a very reasonable price. They are therefore not luxury goods, expensive and sold in limited numbers in a narrow market, but goods to be sold to a large number of consumers throughout Spain.
55 Therefore, pursuant to the case-law referred to above, it is necessary to examine whether the very small volume of sales of those goods under the earlier word mark might have been offset by the fact that use of the mark was extensive or very regular. In the present case, there is nothing to indicate that use of the mark was extensive or regular, the nine relevant invoices being concentrated in the months of January, February and March 1997, and February and March 1998.
56 The assessment of the turnover and the volume of sales of the product under the earlier trade mark must also be conducted in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark.
57 Admittedly, it is apparent from the Opposition Division’s decision that Cuadrado offers a huge range of articles, of which the goods sold under the earlier word mark form only one part.
58 However, the fact remains that such an explanation is not sufficient to dispel the doubts as to the genuine use of the earlier word mark arising from the extremely limited commercial volume of its exploitation.
59 The contested decision does not include either any concrete information on or an adequate analysis of the relevant factors, referred to in the previously cited case-law, enabling the minimal turnover (EUR 432) and the very small quantity of goods sold under the earlier word mark (85 units) over a relatively long period (13 months) to be placed in context.
60 In addition, the total amount of transactions over the relevant period seems to be so token as to suggest that, in the absence of supporting documents or convincing explanations to demonstrate otherwise, the use by Cuadrado of the earlier word mark cannot be held to be warranted, in the economic sector concerned and taking account of the nature of the goods concerned, for the purpose of maintaining or creating market shares for the goods protected by the earlier word mark.
61 Moreover, the applicant cannot rely on the judgment in LA MER, cited in paragraph 32 above, on the ground that, unlike in the present case, the low volume of sales of the goods under the earlier mark was to a large extent offset by the very regular nature of the use of that mark. The evidence provided in that case related to a period of 33 months (20 months more than in the present case) and the 10 invoices adduced were not concentrated on 2 or 3 months but were spread over the whole of that period.
62 In the light of all those considerations, the Court finds that the Board of Appeal failed to take into account all the relevant factors for the purpose of determining whether the use which was made of the mark could be regarded as genuine and, on that basis, infringed Article 43(2) and (3) of Regulation No 40/94.
63 Accordingly, the contested decision falls to be annulled, without it being necessary to rule on the other pleas put forward by the applicant.
Costs
64 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs, if they have been applied for in the successful party’s pleadings. Since OHIM has been unsuccessful, and the applicant has applied for costs, OHIM must be ordered to pay the costs.
On those grounds,
THE COURT OF FIRST INSTANCE (First Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 30 January 2006 (Case R 329/2005-1);
2. Orders OHIM to pay the costs.
Delivered in open court in Luxembourg on 30 April 2008.