JUDGMENT OF THE GENERAL COURT (Third Chamber)
14 December 2011 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark VÖLKL – Earlier international word mark VÖLKL – Relative ground for refusal – Likelihood of confusion – Refusal in part of registration – Article 8(1)(b) of Regulation (EC) No 207/2009 – Genuine use of the earlier mark – Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) of Regulation (EC) No 2868/95 – Competence of the Board of Appeal in the case of an appeal limited to part of the goods or services covered by the application for registration – Article 64(1) of Regulation No 207/2009 – Application for variation of the decision of the Board of Appeal – Article 65(3) of Regulation No 207/2009)
In Case T‑504/09,
Völkl GmbH & Co. KG, established in Erding (Germany), represented by C. Raßmann, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Hanne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Marker Völkl International GmbH, established in Baar (Switzerland), represented by J. Bauer, lawyer,
ACTION against the decision of the First Board of Appeal of OHIM of 30 September 2009 (Case R 1387/2008‑1) concerning opposition proceedings between Marker Völkl International GmbH and Völkl GmbH & Co. KG,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz, President, I. Labucka and D. Gratsias (Rapporteur), Judges,
Registrar: T. Weiler, Administrator,
having regard to the application lodged at the Registry of the Court on 16 December 2009,
having regard to the response of OHIM lodged at the Registry of the Court on 29 March 2010,
having regard to the response of the intervener lodged at the Registry of the Court on 8 March 2010,
having regard to the decision of 19 April 2010 refusing leave to lodge a reply,
further to the hearing on 14 July 2011,
gives the following
Judgment
Background to the dispute
1 On 25 April 2005, the applicant, Völkl GmbH & Co. KG, filed an application for registration of 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the word mark VÖLKL.
3 The goods in respect of which registration was sought fall within Classes 3, 9, 18 and 25 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 3: ‘Care preparations for footwear’;
– Class 9: ‘Special footwear (firefighting shoes)’;
– Class 18: ‘Leather and leatherwear, except sports bags and holdalls’;
– Class 25: ‘Shoes, in particular ski boots, après-ski boots, climbing boots, fur boots, climbing shoes, hiking shoes, sports shoes and shoes for leisurewear’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 5/2006 of 30 January 2006.
5 On 27 April 2006, the intervener, Marker Völkl International GmbH, filed a notice of opposition to registration of the trade mark applied for, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).
6 The opposition was based on the international word mark VÖLKL (‘the earlier mark’), registered on 31 July 1991 under number 571440. That registration extends to, inter alia, Spain and Italy and covers, in particular goods in Classes 18, 25 and 28 corresponding, for each of those classes, to the following description:
– Class 18: ‘Sports bags’;
– Class 25: ‘Clothing’;
– Class 28: ‘Fitness equipment’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 In its observations filed at OHIM on 20 December 2006, the applicant submitted a request seeking, inter alia, proof of genuine use of the earlier mark for the goods relied on in support of the opposition, in accordance with Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009).
9 Following the filing of that request, the intervener supplied, annexed to its observations filed at OHIM on 1 March 2007, inter alia, the following evidence:
– statistics for its turnover, in particular, from the sale of skis and snowboards, skiwear and snowboarding clothes and sport accessories, such as sports bags, between 2002 and 2006;
– two catalogues relating to the goods marketed by it in the 2006/2007 season, one showing skis, snowboards and ski bags and the other showing skiwear and snowboarding clothing;
– two series of invoices relating to sales of the intervener’s goods to its Spanish and Italian distributors respectively.
10 Furthermore, on 2 March 2007, the intervener sent OHIM a sworn statement of Mr. G., an employee of an undertaking affiliated to the intervener. He confirmed under oath the intervener’s turnover between 2002 and 2006, in particular through the sale of the goods referred to in paragraph 9 above, and declared that all those goods bore the earlier mark.
11 On 31 July 2008, the Opposition Division, having taken the view that the opposition concerned only the registration of the applicant’s mark for the goods ‘ski boots, snowboarding boots, sports shoes’ in Class 25 (‘the three articles’), upheld the opposition as far as those goods were concerned (paragraph 1 of the operative part of the decision of the Opposition Division).
12 The Opposition Division held that the intervener had shown proof of genuine use of the earlier mark for the goods referred to in paragraph 6 above. In that regard, the Opposition Division referred, in its decision, to the invoices, the turnover statistics and the sworn statement of Mr. G. produced by the intervener and took the view that they related to the relevant period and Member States, in this case Spain and Italy, and proved an impressive sales volume for the goods in question. The Opposition Division found that the invoices bore a figurative sign (‘the first figurative mark’), reproduced below:
13 The Opposition Division took the view that the use of that sign constituted a use of the earlier mark in a form which did not alter its distinctive character, for the purposes of Article 15(2)(a) of Regulation No 40/94 (now Article 15(1), second subparagraph, (a) of Regulation No 207/2009), applicable by analogy. Furthermore, the Opposition Division dismissed the applicant’s argument that it was another undertaking which made use of the earlier mark and not the intervener. In the view of the Opposition Division, since the intervener itself claimed use of its mark by a third party, it impliedly claimed that that use had been with its consent, within the meaning of Article 15(3) of Regulation No 40/94 (now Article 15(2) of Regulation No 207/2009).
14 As regards the three articles, the Opposition Division held that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 between the mark applied for and the earlier mark, having regard to the identical nature of the marks and the similarity between the goods covered by them. Moreover, the Opposition Division held, in paragraph 2 of the operative part of its decision, that registration of the mark applied for could be made in respect of the goods in Classes 3, 9 and 18 described in paragraph 3 above and of ‘shoes, not including ski boots, snowboarding boots and sports shoes’ in Class 25 (together ‘the other goods’).
15 On 25 September 2008, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.
16 By decision of 30 September 2009 (‘the contested decision’), notified to the applicant on 16 October 2009, the First Board of Appeal of OHIM annulled the decision of the Opposition Division ‘as regards the finding of the likelihood of confusion between the signs at issue and [remitted the decision] to the Opposition Division for further prosecution’ (paragraph 1 of the operative part of the contested decision). However, it ‘[dismissed] the action as regards the decision on the proof of [genuine] use’ of the earlier mark (paragraph 2 of the operative part of the contested decision).
17 Firstly, the Board of Appeal found that the Opposition Division had not correctly identified the goods against which the opposition was filed. In the view of the Board of Appeal, the notice of opposition filed by the applicant did not contain any indication as to the goods to which it referred. Consequently, in accordance with Rule 15(3)(a) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), as amended, the opposition was deemed to be filed against all the goods covered by the mark applied for. In addition, the Board of Appeal held that although ‘sports shoes’ and ‘ski boots’ were covered by the term ‘ski boots’, used in the applicant’s application for registration, the ‘snowboarding boots’ were not covered by that application. The Board of Appeal therefore concluded that the Opposition Division had taken into account goods not included in the list of goods covered by the mark applied for. Although the parties had not raised that question but only that of genuine use of the earlier mark, the Board of Appeal took the view that the decision of the Opposition Division had to be annulled, to the extent that it concerned the likelihood of confusion between the marks at issue (paragraphs 15 and 18 of the contested decision).
18 Secondly, the Board of Appeal considered, as did the Opposition Division, that the intervener had proved genuine use, in Italy and Spain, of the earlier mark for goods in respect of which it was protected (paragraph 22 of the contested decision).
19 In paragraphs 24 and 25 of the contested decision, the Board of Appeal gave the following grounds for that finding,:
‘24. The invoices produced by the [intervener] for 2002 to 2006 prove the sales figures achieved over those years in Spain and Italy, that is to say, the place, date and extent of the use. Although it is true that those invoices show only the [intervener’s first figurative mark], clearly the opposing party cannot be required to submit separately, for the invoices alone, the sales figures for the goods bearing the [earlier] mark. In general, such differentiation between the goods is quite simply impossible, which is particularly so when the goods do not all bear the same identical sign. In that situation, differentiation involves an administrative effort which it is not normally reasonable to expect of the undertaking concerned, without making it almost impossible for it to show proof of use.
25. With regard to the type of use of the opposing mark, it is apparent from the [intervener’s] catalogue extracts that it does not use only the [first figurative mark] to designate its goods, which also bear [another figurative mark] and the [earlier] mark. The [earlier] mark appears in isolation, purely and simply as a word element, on skis, ski poles and a large number of other items of sports clothing illustrated in those catalogues. The goods illustrated in the catalogues submitted by the opposing party are also mentioned in the invoices in the file. The invoice of 12 January 2006 in the name of a Spanish customer, for example, includes items No 106001 (Racetiger OS Racing Titanium), No 106021 (Racetiger RC Titanium) and No 106051 (Supersport Allstar Titanium), and the invoice of 21 December 2005 relates in particular to goods No 106031 (Racetiger SC Titanium) et n° 106240 (Attiva Star). Those items bear the [earlier] mark as a purely word mark and [another figurative mark held by the intervener] elsewhere on the goods. The ski catalogue in Spanish concerns only the relevant Spanish market, because of the language used. Nevertheless, it is apparent from a comparison with the invoices in the names of Italian customers filed by the opposing party that the goods are also marketed in Italy. The invoice of 18 November 2005, for example, concerns items bearing No 106021 (Racetiger RC Titanium), and the [earlier] mark appears on those goods as a purely word mark. Some of them also show the intervener’s other figurative mark affixed in a different position.’
20 The intervener’s other figurative mark referred to in paragraph 25 of the contested decision (‘the second figurative mark’) is reproduced below:
21 In addition, the Board of Appeal, relying on the case-law of the General Court, considered that the intervener did not have to prove use in isolation of the earlier mark, but that it was sufficient to prove that it had used it on relevant goods in conjunction with other marks (paragraphs 26 and 27 of the contested decision). Finally, having regard to those findings, the Board of Appeal took the view that it was not necessary to examine the question, mooted in the case-law, of the extension of the protection enjoyed by a registered mark to another mark which consists of a slight variation on the first (paragraph 28 of the contested decision).
Forms of order sought by the parties
22 The applicant claims that the Court should:
– annul the contested decision;
– annul the decision of the Opposition Division in so far as it upheld the opposition;
– dismiss the opposition;
– order OHIM to pay the costs.
23 OHIM contends that the Court should:
– dismiss the action insofar as it relates to paragraph 2 of the operative part of the contested decision, concerning the proof of genuine use of the earlier mark;
– annul the remainder of the contested decision;
– order each party to bear its own costs.
24 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility
25 Firstly, it is necessary to examine the admissibility of the action in the light of Article 65(4) of Regulation No 207/2009. Under that provision, an action before the General Court against a decision of a Board of Appeal of OHIM ‘shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision’.
26 A decision of a Board of Appeal must be regarded as having upheld the claims of one of the parties before that Board, when it grants the application of that party on the basis of one of the grounds for refusal of registration or for invalidity of a mark or, more generally, of only part of the arguments put forward by that party, even where it does not examine or where it dismisses the other grounds or arguments raised by that party (see, to that effect, order of 14 July 2009 in Case T‑300/08 Hoo Hing v OHIM – Tresplain Investments (Golden Elephant Brand), not published in the ECR, paragraphs 29 to 37).
27 However, the view must be taken that a decision of a Board of Appeal of OHIM does not uphold, for the purposes of Article 65(4) of Regulation No 207/2009, the claims of a party when it rules on an application filed before OHIM by that party in a manner unfavourable to it (see, to that effect, Case T‑171/06 Laytoncrest v OHIM – Erico (TRENTON) [2009] ECR II‑539, paragraphs 20 and 21).
28 The latter case must be regarded as including the situation where the Board of Appeal, after having rejected an application the admission of which would have ended the proceedings before OHIM in a manner favourable to the party which made it, remits the case to the lower department for further prosecution, irrespective of the fact that that re‑examination could give rise to a decision favourable to that party. That possibility is not sufficient to regard that situation as similar to that envisaged in paragraph 26 above, in which the Board of Appeal grants an application on the basis of some of the pleas or arguments submitted in support thereof and rejects or does not examine the remainder of the pleas or arguments raised in the application.
29 In the present case, it is clear that, so far as the other goods are concerned, the contested decision did not grant the applicant’s claims. In paragraph 1 of the operative part, the decision annulled the decision of the Opposition Division in its entirety as regards the finding of the likelihood of confusion between the signs at issue. In paragraph 2 of the operative part, the decision of the Opposition Division expressly stated that the mark applied for could be registered for the other goods and, accordingly, in respect of those goods, had granted the applicant’s application for registration.
30 It follows that the action is admissible in that it seeks the annulment of the contested decision, since that decision annulled paragraph 2 of the operative part of the decision of the Opposition Division concerning the other goods.
31 With regard to the three articles, it must be noted that, in their written submissions, neither the applicant nor the intervener raised the question of the admissibility of the action in so far as concerns them. OHIM pointed out, in its response, that proof of genuine use of the earlier mark posed a question which precedes examination of the likelihood of confusion, which could be examined by the Court independently of the other pleas in the action. OHIM takes the view that such an examination is relevant in the present case since an examination of the likelihood of confusion between the marks at issue, not yet carried out by the Board of Appeal, must take into consideration only the goods for which genuine use of the earlier mark has been proved.
32 The Court considers that the action is admissible also in so far as it concerns the three articles.
33 Indeed, with regard to those products, paragraph 1 of the operative part of the contested decision merely annuls the decision of the lower department which was unfavourable to the applicant and remits the case to that department for a new decision.
34 However, paragraph 2 of the operative part of the contested decision holds, following submission by the applicant before the Opposition Division of a request seeking proof of genuine use of the earlier mark, that that proof had been adduced, whereas by that request the applicant sought an opposite finding, which would have implied rejection of the opposition.
35 In that regard, it must be borne in mind that, in accordance with settled case-law, a request for proof of genuine use of the earlier mark adds to the opposition proceedings the specific and preliminary question of genuine use of the earlier mark which, once raised by the applicant for the trade mark, must be settled before a decision is given on the opposition proper (Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraph 26; Case T‑364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR II‑757, paragraph 37; and Case T‑425/03 AMS v OHIM – American Medical Systems (AMS Advanced Medical Services) [2007] ECR II‑4265, paragraph 106).
36 Because of its specific and preliminary nature, that question does not fall within the context of the examination of the opposition proper, alleging the existence of a likelihood of confusion with that mark. Thus, where, as in the present case, the Opposition Division concludes that proof of genuine use of the earlier mark has been provided and, accordingly, upholds the opposition, the Board of Appeal can examine the question of that proof only if the applicant for the mark raises it specifically in its appeal before that Board (see, to that effect, Case T‑292/08 Inditex v OHMI – Marín Díaz de Cerio (OFTEN) [2010] ECR II‑0000, paragraphs 33, 39 and 40).
37 It follows from those considerations that since, by paragraph 2 of the operative part of the contested decision, the Board of Appeal rejected the request for proof of genuine use of the earlier mark, specifically made before it by the applicant, and since it did not reject the opposition on a different ground, which distinguishes the present situation from that referred to in paragraph 26 above, that decision falls within, as regards the three articles, the situation envisaged in paragraph 28 above. Consequently, the view must be taken that it did not grant the applicant’s claims and that the applicant is entitled to challenge it before the Court.
38 Although it is true that, by virtue of paragraph 1 of the operative part of the contested decision, the Opposition Division is called upon to undertake a fresh examination of the likelihood of confusion between the mark applied for and the earlier mark as regards the three articles, the fact remains that, in the light of paragraph 2 of the operative part of that decision, that fresh examination should not include the specific and preliminary question of the genuine use of the earlier mark, which has been finally decided by the Board of Appeal.
39 Secondly, it is necessary to examine the admissibility, disputed by OHIM, of the applicant’s second and third heads of claim which seek, on the one hand, the annulment of the decision of the Opposition Division in that it upholds the opposition and, on the other, rejection of the opposition. OHIM submits that those heads of claim are inadmissible since in reality they ask that an order be issued from the Court to OHIM, which is not within the powers of the Court.
40 That argument cannot be accepted. Contrary to OHIM’s submissions, in reality those heads of claim ask the Court to take the decision which, in the applicant’s submission, the Board of Appeal should have taken when it was seised of the case. It is apparent from the second sentence of Article 64(1) of Regulation No 207/2009 that the Board of Appeal may annul the decision of the OHIM department which was responsible for the contested decision and exercise any power within the competence of that department, in the present case rule on the opposition and reject it. Consequently, those measures fall within those which may be taken by the General Court in the exercise of its power to amend decisions under Article 65(3) of Regulation No 207/2009 (Case T-334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 19; T‑363/04 Koipe v OHIM – Aceites del Sur (La Española) [2007] ECR II‑3355, paragraphs 29 and 30; and judgment of 11 February 2009 in Case T‑413/07 Bayern Innovativ v OHIM – Life Sciences Partners Perstock (LifeScience), not published in the ECR, paragraphs 15 and 16).
41 The second and third heads of claim are therefore admissible.
42 However, the third head of claim, requesting the Court to reject the opposition, must be read in the light of the argument put forward by the applicant in its first plea, alleging that, in the notice of opposition, the intervener had clearly restricted its scope to the three articles alone, which the Board of Appeal did not note.
43 The conclusion must therefore be that the third head of claim concerns only the three articles. As regards the other goods, annulment of the contested decision, as sought by the applicant in its first head of claim, would allow the decision of the Opposition Division, which took the view that the mark could be registered for those other goods, once more to be effective and would, consequently, be sufficient in itself fully to satisfy the applicant’s claims, insofar as those goods are concerned.
44 It is apparent from all of the foregoing considerations that the action is admissible both in that by the first head of claim it seeks the annulment of the contested decision in its entirety and in that by the second and third heads of claim it seeks, in essence, the rejection of the opposition as regards the three articles.
Substance
45 In support of its action, the applicant raises four pleas in law alleging, firstly, infringement of the principle in Article 76(1) of Regulation No 207/2009 that the subject-matter of a case is delimited by the parties, secondly, infringement of the principle of the prohibition on reformatio in pejus by the Board of Appeal of the decision of the department of OHIM, thirdly, infringement of the rights of the defence set out in Article 37(3) and the second sentence of Article 75 of Regulation No 207/2009 and, fourthly, infringement of Article 15(1), second subparagraph, (a) and of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(2) of Regulation No 2868/95.
The first and second pleas in law, alleging infringement, respectively, of the principle in Article 76(1) of Regulation No 207/2009 that the subject-matter of a case is delimited by the parties, and of the principle of the prohibition on reformatio in pejus by the Board of Appeal of the decision of the department of OHIM.
46 It is appropriate to examine the first and second pleas together.
47 By the first plea, the applicant submits that the Board of Appeal wrongly held that the opposition concerned all the goods covered by the mark applied for. In the notice of opposition, the intervener clearly restricted its scope to only three items. The fact that the goods for which registration had been applied for did not include ‘snowboarding boots’ is, in that regard, immaterial. The Opposition Division ought to have rejected the opposition for those goods as inadmissible. However, that does not justify the Board of Appeal’s extension of the opposition to all the goods covered by the mark applied for.
48 In its arguments relating to the second plea, the applicant points out that the Opposition Division examined the likelihood of confusion between the marks at issue only in respect of the three articles. Since the Board of Appeal remitted the case to the Opposition Division for examination of the likelihood of confusion in respect of all the goods covered by the applicant’s application for registration, the Board of Appeal placed the applicant in a situation less favourable than that in which it had been before the appeal was filed. Thus, the Board of Appeal made a reformatio in pejus of the decision of the lower department, prohibited under Article 59 of Regulation No 207/2009.
49 In response both to the first and second pleas, OHIM submits that the appeal should be upheld inasmuch as it concerns paragraph 1 of the operative part of the contested decision. The Opposition Division correctly held that the opposition was restricted to only the three articles. For reasons which cannot be explained, the Board of Appeal failed to notice that restriction.
50 The intervener confirms, in the same context, that the opposition concerned only the three articles. It adds that, contrary to the applicant’s assertion, the Opposition Division was correct in not regarding the opposition as inadmissible in respect of ‘snowboarding boots’, since the applicant’s application for registration covered all types of footwear, including snowboarding boots. The different types of footwear included in the list of goods in Class 25, covered by the application for registration (see paragraph 3 above), are preceded by the term ‘in particular’, which shows that they were listed only as examples. The guidelines regarding opposition proceedings before OHIM allow for the possibility of referring, by an opposition, to specific goods included in a wider term covered by the application for registration.
51 As a preliminary point, the Court notes that while OHIM does not have the requisite capacity to bring an action against a decision of a Board of Appeal, conversely it cannot be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed. Thus there is nothing to prevent OHIM from endorsing a head of claim raised by the applicant, as in the present case with regard to the applicant’s first head of claim (see Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraphs 26 and 27 and the case-law cited).
52 Next, it must be held that, despite its heading, the second plea poses the more specific question of the jurisdiction of the Board of Appeal of OHIM to examine an opposition to an application for registration of a Community trade mark for certain goods or services where that Board is seised only of an appeal from the applicant for the mark, who is contesting the decision of the Opposition Division upholding the opposition for other goods or services covered by that application. Examination of that question must logically precede that of the challenge, in the first plea, to the assertion in the contested decision that the intervener had not restricted the list of goods covered by the opposition.
53 It follows from Article 64(1) of Regulation No 207/2009 that, following the examination as to the merits of the appeal, the Board of Appeal is to decide on it and that, in doing so, it may ‘exercise any power within the competence of the department which was responsible for the contested decision’, that is to say, in the present case, give judgment itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or reversing the contested decision. As the Court of Justice held in Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 57, it follows from that provision that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact.
54 Where an appeal before the Board of Appeal concerns only part of the goods or services covered by an application for registration or by the opposition, that appeal entitles the Board of Appeal to carry out a new examination of the substance of the opposition, but only so far as concerns those goods or services, since the application for registration and the opposition were not brought before it as regards the other goods or services covered.
55 That is the situation in the present case. The applicant brought an appeal before the Board of Appeal against the decision of the Opposition Division only in respect of the fact that it had upheld the opposition and rejected the application for registration of the three articles. Moreover, it was not possible for it to appeal against that decision in that it held that the mark applied for could be registered for the other goods which it covered. It follows from the first sentence of Article 59 of Regulation No 207/2009, according to which ‘[a]ny party to proceedings adversely affected by a decision may appeal’, that, inasmuch as the decision of the lower department of OHIM has upheld the claims of a party, that party does not have standing to appeal to the Board of Appeal (order in Case T‑194/05 TeleTech Holdings v OHIM – Teletech International (TELETECH INTERNATIONAL) [2006] ECR II‑1367, paragraph 22).
56 Consequently and as the applicant, in essence, submits by its second plea, by annulling paragraph 2 of the operative part of the decision of the Opposition Division relating to the other goods, the Board of Appeal has exceeded the limits of its jurisdiction as defined in Article 64(1) of Regulation No 207/2009. The second plea is therefore well founded.
57 In any event, it is settled between the parties and, furthermore, confirmed by a reading of the notice of opposition in the procedural file before OHIM, sent to the Court pursuant to Article 133(3) of the Rules of Procedure of the General Court, that, contrary to the finding in the contested decision, the opposition was indeed restricted to only the three articles. It follows that the first plea is also well founded.
58 In those circumstances, there is no need to examine the third plea. Since the Board of Appeal was not, in any event, entitled to examine the application for registration as regards the other goods, it is superfluous to rule on whether it should have informed the applicant of its intention to carry out such an examination and afforded it the possibility of submitting its observations. However, the fourth plea must be examined, since it concerns the three articles, that is to say a different aspect of the contested decision from that covered by the first three pleas.
The fourth plea in law, alleging infringement of Article 15(1), second subparagraph, (a) and Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(2) of Regulation No 2868/95
59 By the fourth plea in law, the applicant submits that the intervener has not proved genuine use of the earlier mark. In its view, inasmuch as the Board of Appeal arrived at the contrary conclusion, it infringed Article 15(1), second subparagraph, (a) and Article 42(2) and (3) of Regulation No 207/2009, and Rule 22(2) of Regulation No 2868/95.
60 The argument advanced by the applicant is in two parts. By the first part, the applicant disputes the Board of Appeal’s assessment of the evidence of genuine use of the earlier mark produced by the intervener.
61 By the second part, the applicant submits that, having regard to the insufficient evidence of genuine use of the earlier mark, the Board of Appeal ought to have examined whether it was entitled to take account, for the purpose of that evidence, of the use of the intervener’s first figurative mark. The applicant believes that the fact that the use of that mark was taken into account is contrary to case-law and to the decision-making practice of OHIM.
62 First of all, the second part must be rejected as ineffective. As is apparent from paragraph 28 of the contested decision (see also paragraph 20 above), the Board of Appeal took the view that the evidence produced by the intervener enabled it to reach the conclusion that genuine use of the earlier mark had been proved in the form in which it was registered and decided not to take into account, for the purposes of the evaluation of that question, the use of the intervener’s first figurative mark.
63 It follows that if, as the applicant submits by the first part of this plea, the Board of Appeal was incorrect in holding that the evidence of genuine use of the earlier mark was sufficient, it would be necessary to annul the contested decision, without taking account of any use of the intervener’s first figurative mark. Since the substance of the latter question was not examined by the Board of Appeal, it is not for the Court to examine it, for the first time, in its review of the lawfulness of the contested decision (see, to that effect, Case C‑263/09 P Edwin v OHIM [2011] ECR I‑0000, paragraphs 72 and 73, and Case T‑148/08 Beifa Group v OHIM – Schwan-Stabilo Schwanhäußer (Writing instrument) [2010] ECR II‑1681, paragraph 124 and the case-law cited).
64 In the context of the first part of the fourth plea, the applicant puts forward a series of arguments intended to show that the Board of Appeal’s conclusion that the genuine use of the earlier mark has been proved was incorrect.
65 Firstly, it states that the invoices produced by the intervener did not include the earlier mark but the first figurative mark. It doubts that it was impossible to differentiate between goods listed on an invoice according to the mark on them, as, in essence, the Board of Appeal noted in paragraph 24 of the contested decision. In any event, it argues that proof of genuine use of the earlier mark required the production of invoices referring to that mark.
66 Secondly, the other evidence of genuine use of the earlier mark produced by the intervener did not state whether it related to goods covered by that mark. The catalogue of goods referred to in paragraph 25 of the contested decision was not sufficient in that regard, since it contained several products bearing only the intervener’s first or second figurative mark and it related only to the 2006/2007 season and to the Spanish market.
67 Thirdly, the sale of articles covered by the earlier mark, referred to in paragraph 25 of the contested decision, concerned minimal quantities which, in accordance with the case-law and the decision-making practice of OHIM, are not sufficient to prove genuine use of a mark registered for mass products, like the earlier mark.
68 OHIM and the intervener submit that the Board of Appeal was correct to find that genuine use of the earlier mark was proven.
69 In the view of OHIM, the Board of Appeal correctly based its finding on the invoices produced by the intervener with regard to proof of the place, time or extent of use of the earlier mark. Contrary to the assertions of the applicant, it is not necessary for that mark to be mentioned on the actual invoices, since the decisive factor is the affixing of the mark to the goods themselves.
70 With regard to the examination of the nature of the use of that mark, the Board of Appeal was correct in taking as its basis the catalogues produced by the intervener, which enable it to be established, using the code numbers of the goods in question, that there was a link between the intervener’s goods and invoices. Furthermore, it cannot be claimed that the goods which bore only the earlier mark were included in those catalogues only for the purpose of a symbolic use of that mark.
71 With regard to the applicant’s argument as to the allegedly minimal quantity of the sales referred to in paragraph 25 of the contested decision, OHIM submits that the Board of Appeal did not calculate the turnover from each article covered by the earlier mark, but merely noted, as examples, some positions on the invoices produced by the intervener. There are other examples of sales of goods bearing that mark but, in any event, a purely quantitative breakdown of the turnover from those goods is not necessary, since, according to the case-law, it is not possible to define a minimum degree of use.
72 The intervener submits that the applicant’s assertion that the invoices taken into account by the Board of Appeal proved only the sale of 21 articles is incorrect, as shown by several other examples of sales of goods covered by the earlier mark, listed in those invoices. Furthermore, the Board of Appeal correctly noted that requiring the intervener to identify each item listed in those invoices would be unreasonable.
73 The invoices in question were produced as illustrations and did not cover the entirety of the sales made by the intervener in Spain and Italy during the relevant period. The impressive sales volumes are apparent from the sworn statement of Mr. G., referred to in paragraph 10 above.
74 Furthermore, the applicant’s argument alleging that the volume of sales of goods bearing the earlier mark was small disregards the fact that OHIM must carry out an overall assessment of all the evidence of genuine use. Such an assessment leaves no doubt as to the genuine use of the earlier mark in the present case. In any event, in the light of the criteria applied by the case-law, the sales volumes to which the applicant refers do not appear to be insufficient.
75 The General Court recalls that, by virtue of Article 42(2) and (3) of Regulation No 207/2009, an applicant for a Community trade mark, against which an opposition is filed may require proof that the earlier mark, relied on in support of that opposition and registered under international arrangements having effect in one or more Member States, has been put to genuine use in those Member States during the five years preceding publication of the application.
76 Furthermore, under Rule 22(3) of Regulation No 2868/95, as amended, proof of use must relate to the place, time, extent and nature of use of the earlier mark.
77 In accordance with settled case-law, it is apparent from the abovementioned provisions and from recital 10 in the preamble to Regulation No 207/2009 that the ratio legis of 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, where there is no good commercial justification deriving from active functioning of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see, to that effect, Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraphs 36 to 38 and the case-law cited).
78 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 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 (see, by analogy, Case C‑40/01 Ansul [2003] ECR I‑2439, paragraph 43). Furthermore, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (VITAFRUIT, paragraph 77 above, paragraph 39; see also, to that effect and by analogy, Ansul, paragraph 37).
79 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 exploitation of the mark is real, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating 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 (VITAFRUIT, paragraph 77 above, paragraph 40; see also, by analogy, Ansul, paragraph 78 above, paragraph 43).
80 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 (VITAFRUIT, paragraph 77 above, paragraph 41, and HIPOVITON, paragraph 40 above, paragraph 35).
81 To examine whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by a high intensity or some settled period of use of that mark or vice versa (VITAFRUIT, paragraph 77 above, paragraph 42, and HIPOVITON, paragraph 40 above, paragraph 36).
82 The turnover and the volume of sales of the goods 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 goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (VITAFRUIT, paragraph 77 above, paragraph 42, and HIPOVITON, paragraph 40 above, paragraph 36). Even minimal use can therefore be sufficient to be classified as genuine, provided that it is justified, in the economic sector concerned, to maintain or create market share for the goods or services protected by the mark. 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 OHIM or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 72).
83 As is apparent from the first subparagraph of Article 15(1) of Regulation No 207/2009, only trade marks genuine use of which has been suspended during an uninterrupted period of five years are subject to the sanctions provided for by the regulation. Accordingly, it is sufficient that a trade mark has been put to genuine use during a part of the relevant period for it not to be subject to the sanctions (VITAFRUIT, paragraph 77 above, paragraph 45, and HIPOVITON, paragraph 40 above, paragraph 40).
84 Finally, 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 actual and sufficient use of the trade mark on the market concerned (Case T-39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II‑5233, paragraph 47, and Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 28).
85 The question whether, in the present case, the Board of Appeal was correct to take the view that the evidence submitted by the intervener showed genuine use of the earlier mark must be examined in the light of those considerations
86 In that regard, first of all, it must be noted that, since the applicant for a Community trade mark filed by the applicant was published on 30 January 2006 (see paragraph 4 above), the relevant five-year period referred to in Article 42(2) of Regulation No 207/2009 is from 30 January 2001 to 30 January 2006, as the Board of Appeal correctly pointed out in paragraph 22 of the contested decision.
87 Next, it must be noted that although, like the Opposition Division, the Board of Appeal took the view that genuine use of the earlier mark during the abovementioned period had been proved, it based that conclusion on grounds substantially different from those set out in the decision of the Opposition Division.
88 As is apparent from its decision, summarised in paragraphs 12 and 13 above, the Opposition Division, firstly, based its findings not only on the intervener’s invoices but also on statistics produced by the intervener and on the sworn statement of Mr. G. Secondly, as regards the invoices in question, it solely relied on the presence in their heading of the first figurative mark, which it considered to be sufficient and appropriate proof of use of the earlier mark, identical to the word element of that figurative mark. The decision of the Opposition Division gives the impression, however, that it was unaware that the first figurative mark was not a simple juxtaposition of the earlier mark and a figurative element but constituted a distinct registered mark. Thus, the Opposition Division did not take a position as regards whether genuine use of a figurative mark including a word element could also serve to prove genuine use of a distinct word mark, composed solely of that word element.
89 The Board of Appeal referred only to two groups of evidence produced by the intervener, namely the invoices and the catalogues (see paragraphs 24 and 25 of the contested decision). In addition, it took the view that genuine use of the earlier mark, as registered, had been proved and that, accordingly, it was not necessary to take into consideration, in that regard, any genuine use of the first figurative mark, as is apparent from paragraph 28 of the contested decision.
90 In particular, in paragraph 24 of the contested decision, the Board of Appeal took the view that the invoices produced by the intervener for 2002 to 2006 proved ‘the sales figures achieved over those years in Spain and Italy, that is to say, the place, date and extent of the use’. In paragraph 25 of that decision, it referred to the intervener’s catalogues, which it regarded as evidence of the nature of the use of the earlier mark, to the extent that it ‘appears in isolation, purely and simply as a word element, on skis, ski poles and a large number of other items of sports clothing illustrated in those catalogues’.
91 Furthermore, the Board of Appeal held that the goods illustrated in the catalogues submitted by the opposing party were ‘also mentioned in the invoices in the file’ and referred, as an ‘example’, to two invoices concerning the sale to a customer in Spain of five different items. It accepted that the ski catalogue, written in Spanish, related only to the Spanish market, but it added that it was apparent from a comparison with the invoices addressed to the intervener’s Italian distributor that the goods listed in that catalogue were also marketed in Italy. In that regard, it referred, as an ‘example’, to an invoice of 18 November 2005 concerning the sale of an item bearing the earlier mark.
92 As has already been noted in paragraph 53 above, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact. Following that examination it may, in particular, confirm the decision of the Opposition Division, on the basis of grounds different from those relied on in that decision. In that situation, in the event of an appeal to the General Court against the decision of the Board of Appeal, it is the lawfulness of the grounds adopted by the Board of Appeal and not those contained in the decision of the Opposition Division which must be reviewed.
93 It has indeed been repeatedly held that, when the Board of Appeal confirms a lower-level decision of OHIM in its entirety, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the Court to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well founded (Case T‑304/06 Reber v OHIM – Chololadefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, pargarph 47, and the judgment of 24 September 2008 in Case T‑248/05 HUP Uslugi Polska v OHIM – Manpower (I.T.@MANPOWER), not published in the ECR, paragraph 48). Nevertheless, that consideration does not permit the grounds of the lower-level decision to be taken into account when the Board of Appeal, while reaching the same conclusion as the department below, has not adopted the grounds for the decision of that department and has not even referred to them in its own decision (see, to that effect, judgment of 30 June 2010 in Case T‑351/08 Matratzen Concord v OHIM – Barranco Schnitzler (MATRATZEN CONCORD), not published in the ECR, paragraph 26).
94 Since that is the situation in the present case, it is appropriate to review the grounds put forward by the Board of Appeal in the contested decision to justify its conclusion that genuine use of the earlier mark has been proved, without taking into account the grounds appearing in the decision of the Opposition Division.
95 In that regard, it must be noted that OHIM’s file does contain a large number of invoices showing the sale by the intervener of some goods to a company in Italy and to another company in Spain which, according to the explanations given by the intervener before OHIM, are its distributors of goods in those two countries. The invoices in question bear, at their head, the intervener’s first figurative mark. On some of them, that mark is presented beside another figurative sign, comprising the word element ‘marker’. On each invoice, the goods sold are identified by a code and by a model name, without mention of the type of the goods or of the earlier mark. The quantities and total value of the goods covered by each invoice appear to be significant, a number of invoices covering sales of an amount of hundreds of thousands of euros. The period covered by the sales in question runs from 19 February 2002 to 4 December 2006 for the sales in Italy and from 11 December 2002 to 18 August 2006 for the sales in Spain and so includes, in both cases, a large part of the relevant period referred to in paragraph 86 above.
96 The fact that the earlier mark is not mentioned on those invoices cannot, in itself, show that they lack relevance for the purposes of proof of genuine use of that mark (see, to that effect, judgment of 27 September 2007 in Case T‑418/03 La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), not published in the ECR, paragraph 65). That is particularly true of the present case, since those invoices were not intended for the end consumers of the goods covered by the earlier mark, here the public at large, but for the intervener’s distributors.
97 None the less, in order for those invoices to constitute material evidence as to the use of the earlier mark in relation to the goods referred to in paragraph 6 above, it is necessary to ascertain whether they did actually cover such goods and, if so, whether those goods bore the earlier mark or, at least, whether that mark was used, in accordance with its essential function, publicly and outwardly, in connection with the sale of those goods to consumers.
98 The submission by the intervener, for the purposes of that verification, of separate sales figures relating only to the goods bearing the earlier mark, regarded by the Board of Appeal as being very laborious and, in the end, impossible, was not essential. It would have been sufficient to identify on the invoices, as necessary by reference to other evidence, the goods in the categories referred to in paragraph 6 above which bore the earlier mark and to do so in a quantity enabling any possibility of purely symbolic use of that mark to be discounted and, consequently, that was sufficient to prove its genuine use.
99 The two catalogues produced by the intervener constituted evidence which could serve that purpose, as the Board of Appeal noted in paragraph 25 of the contested decision. The first of those catalogues is written in Spanish and shows various models of skis marketed by the intervener. For each model, it contains a photograph of the item, its name and various other relevant information including, in particular, the code used by the intervener to identify it. The second catalogue is written in Italian and English and contains analogous information for the sports clothing marketed by the intervener.
100 As the Board of Appeal noted in paragraph 25 of the contested decision, a large number of the goods illustrated in those two catalogues bore the earlier mark. In several cases, it appeared together with the intervener’s first figurative mark or second figurative mark. Nevertheless, as the Board of Appeal in essence pointed out in paragraph 26 of the contested decision, that fact is irrelevant as regards whether the intervener had proved genuine use of the earlier mark. There is no rule in the Community trade mark system that obliges the opponent to prove the use of the earlier mark on its own, independently of any other mark (see, to that effect, Case T‑29/04 Castellblanch v OHIM − Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraphs 33 and 34).
101 The catalogues in question do not therefore constitute only evidence as to the nature of the use of the earlier mark by the intervener. Since they contain, inter alia, the code numbers of the goods which were shown in them, they made it possible to verify whether those goods were also listed in the invoices produced by the intervener.
102 For the purposes of such verification, the Board of Appeal, using the expression ‘for example’, referred, by way of illustration, in paragraph 25 of the contested decision, to six different items mentioned in three ‘invoices’ dated 18 November and 21 December 2005 and 12 January 2006. It follows from a reading of the intervener’s catalogues that those six items are all skis (that is to say ‘Fitness equipment’ in Class 28) and actually bear the earlier mark.
103 More generally, on a combined reading of the three documents referred to in paragraph 25 of the contested decision and of the intervener’s ski catalogue it may be held that the invoice of 18 November 2005 refers, in total, to six pairs of skis of different types bearing the earlier mark. The invoice of 21 December 2005 lists, in total, 10 pairs of skis of various types which, as a reading of the catalogue confirms, all bear the earlier mark. The ‘invoice of 12 January 2006 in the name of a Spanish customer’ shows 43 pairs of skis of different types which also bear the earlier mark. However, according to its own heading that document is not an invoice but a delivery note which does not show any prices for the goods to which it refers. At the hearing, the intervener’s representative stated, in reply to a question from the Court, that it was not an accounting document.
104 Furthermore, among the many invoices produced by the intervener, there is one, dated 20 December 2005, which is addressed to its Italian distributor. It comprises 27 pages, concerns goods of a total value of EUR 54 938.98 and lists, on the first two pages, a number of pairs of skis of different types which, as can be confirmed with the help of the ski catalogue, bore the earlier mark. However, with the exception of a pair of skis sold at the price of EUR 88, for all other pairs the sale price mentioned is EUR 0. In reply to a question from the Court at the hearing, the intervener’s representative stated that he did not know the details of the invoice in question, but he added that, when new models of skis were made available to a distributor to carry out tests, it was usual to state a price on the corresponding invoice equivalent to zero. Those statements were recorded in the minutes of the hearing.
105 Another invoice, addressed to the intervener’s Italian distributor and dated 12 January 2006, concerns the sale of goods of a total value of EUR 408 625.40. A large number of the goods mentioned are skis which bear the earlier mark. In particular, the invoice mentions the sale of 600 units of skis of the model ‘Racetiger GS Racing Tit Moti 06/07’, with code number 106001, of a total value of EUR 124 200, and of 350 units of skis of the model ‘Racetiger SL Racing Motion 06/07’, with code number 106011, of a total value of EUR 72 450. Those two models appear in the intervener’s ski catalogue and so it can be confirmed that they bear the earlier mark.
106 A third invoice, dated 27 January 2006 and addressed to the intervener’s Spanish distributor, in the total value of EUR 13 631.90, concerns sales of skis of different models referred to in the intervener’s ski catalogue and bearing the earlier mark, in quantities varying from one to four pairs per model.
107 Nevertheless, with the exception of the three documents referred to in paragraph 25 of the contested decision, the three invoices mentioned in paragraphs 104 to 106 above and some invoices later than the relevant period, as defined in paragraph 86 above, the remainder of the invoices produced by the intervener, namely the great majority of them, concern goods which cannot be identified in the catalogues filed by the intervener, since they bear code numbers which are not mentioned in those catalogues.
108 Requested at the hearing to submit its observations on the identification of the goods in question by the code numbers given on most of the invoices produced by the intervener, its representative stated, in essence, that the code numbers used by the intervener often changed from one season to another, for reasons of logistics. That explanation, plausible as it may be, does not resolve the question of identification of the goods designated in the invoices by code numbers which do not appear in the intervener’s catalogues.
109 Thus, without additional information, it could not be concluded on the basis of any invoice that the intervener had sold, during the relevant period, ‘Sports bags’ in Class 18 and ‘Clothing’ in Class 25 which bore the earlier mark. It is indeed true that, of the two catalogues produced by the intervener, the one relating to skis shows a number of types of bags bearing the earlier mark and the other includes some items of sports clothing bearing that mark. However, none of those items appears on the invoices dating from the relevant period which were produced by the intervener. OHIM points, in its response, to a single example of such a reference but it concerns an invoice dated 18 August 2006, that is to say after the relevant period. It is appropriate, in addition, to note that the intervener’s catalogues cannot alone be regarded as sufficient evidence of use of the earlier mark, since it is not at all apparent from the file how widely they were distributed.
110 With regard to the ‘Fitness and sports equipment’ in Class 28, as has been pointed out in paragraphs 102 to 105 above, there are some invoices showing the sale of skis, which constitute goods in that category, but the parties disagree as to whether or not the quantities concerned by those sales were sufficient to prove genuine use of the earlier mark.
111 That question cannot be decided by the Court. Clearly, the Board of Appeal did not take the view that the sales referred to in paragraph 25 of the contested decision proved, by themselves, genuine use of the earlier mark. On the contrary, it is apparent from the terms used in that paragraph that those sales were referred to purely as examples. In other words, the Board of Appeal considered, implicitly but clearly, that the other invoices produced by the intervener also related, at least in part, to sales of goods covered by the earlier mark and bearing that mark. It is on that basis that the Board of Appeal concluded that genuine use of the earlier mark had been proved. It is therefore for the Court, in its review of the lawfulness of the decision of the Board of Appeal, to examine whether the file submitted to the Board of Appeal enabled such a conclusion to be drawn.
112 That is not the case. As has already been stated in paragraph 107 above, the goods covered by the large majority of the invoices produced by the intervener could not be clearly identified. Contrary to what is implied by the terms used by the Board of Appeal in paragraph 25 of the contested decision, the three documents referred to there were not typical examples chosen at random but formed part of a very limited group of documents, all dating from a period of slightly more than two months, from 18 November 2005 to 27 January 2006 in this case, which were the only ones in respect of which it could be confirmed that they related to goods covered by the earlier mark and bearing that mark.
113 It follows that the evidence of genuine use of the earlier mark taken into consideration by the Board of Appeal, namely the invoices and catalogues filed by the intervener, were not sufficient to support the finding in the contested decision that the earlier mark had been genuinely used for the goods in Classes 18, 25 and 28 covered by it throughout the period to which those invoices related. At most, that evidence constituted indications that such use might be regarded as probable. In accordance with the case-law cited in paragraph 84 above, a mere supposition, however plausible it may be, is not sufficient for the purposes of Article 42(2) and (3) of Regulation No 207/2009, which requires proof of such use.
114 The Board of Appeal should, accordingly, have deepened its analysis of the file and also taken into consideration the other evidence produced by the intervener, in particular the sworn statement of Mr. G., whose probative value should have been ascertained. If necessary, it could, under Article 42(1) of Regulation No 207/2009, have invited the parties to file additional observations or even order measures of enquiry under Article 78 thereof (see, to that effect, HIPOVITON, paragraph 40 above, paragraphs 57 and 58).
115 On the basis of all the foregoing considerations, it must therefore be held that the fourth plea in law is also well founded and must be upheld.
The application for alteration
116 As has been pointed out in paragraph 40 above, by its second and third heads of claim, the applicant seeks the alteration of the contested decision. It is therefore appropriate to examine whether the first, second and fourth pleas in law, which, as already stated, must be upheld as regards the application for annulment of the contested decision, justify such alteration.
117 Firstly, it must be borne in mind that, in its argument relating to the first plea in law (see paragraph 47 above), the applicant submits that the finding made in the contested decision that ‘snowboarding boots’ were not covered by the application for registration was correct, but that the conclusion to be drawn from that finding should have been rejection of the opposition in so far as it related to those boots.
118 That part of the applicant’s argument thus seeks, in essence, the alteration of the contested decision, in that paragraph 1 of the decision of the Opposition Division should be annulled and the opposition rejected to the extent that it covers ‘snowboarding boots’.
119 That application is not well founded and must be rejected. As the intervener rightly points out, all the goods covered by the opposition were included in the applicant’s application for registration. The wording of the application with regard to the goods in Class 25 (see paragraph 4 above) refers, first of all, to ‘Footwear’ and, then, to different types of footwear, preceded by the term ‘in particular’. In accordance with the case-law, that term, used in descriptions of goods, indicates that they are merely examples (judgment of 12 November 2008 in Case T‑87/07 Scil proteins v OHIM – Indena (affilene), not published in the ECR, paragraph 38; see, to that effect, Case T‑224/01 Durferrit v OHIM – Kolene (NU-TRIDE) [2003] ECR II‑1589, paragraph 41). Used in a list of goods, it serves to distinguish goods which have a specific interest for the proprietor of a mark without, however, excluding any goods from the list (see, to that effect, affilene, paragraph 39). It follows that the applicant sought registration of its mark for ‘footwear’ in general and therefore also for ‘ski boots, snowboarding boots and sports shoes’ covered by the opposition.
120 It must, furthermore, be borne in mind that the wording of the application for registration also refers, as regards goods in Class 25, to ‘sports shoes’ which constitute a more general category which includes ‘snowboarding boots’.
121 Secondly, insofar as the application for alteration asks the Court to make its own finding that genuine use of the earlier mark has not been proved and, on that ground, reject the opposition, it must be stated that the question of the genuine use of the earlier mark was indeed examined on its merits by OHIM, but incompletely, as noted in paragraphs 113 and 114 above. Its examination by the Court would imply, in essence, the exercise of administrative and investigatory functions specific to OHIM and would therefore upset the institutional balance on which the division of jurisdiction between OHIM and the Court is based. In those circumstances, the Court considers that it is not appropriate to grant the applicant’s request (Case T‑165/06 Fiorucci v OHIM – Edwin (ELIO FIORUCCI) [2009] ECR II‑1375, paragraph 67; see also, to that effect, judgment of 4 October 2006 in Case T‑188/04 Freixenet v OHIM (Form of a matt black frosted-glass bottle), not published in the ECR, paragraph 47).
122 The contested decision must therefore be annulled and the remainder of the action dismissed.
Costs
123 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. However, pursuant to the first subparagraph of Article 87(3) of the same rules, where the circumstances are exceptional, the General Court may order that the costs be shared.
124 In the present case, OHIM contended that each party should be ordered to bear its own costs and, furthermore, supported the application for annulment of the contested decision, with the exception of the provisions relating to the proof of genuine use of the earlier mark (see paragraph 49 above). None the less, that fact does not constitute an exceptional circumstance within the meaning of the first subparagraph of Article 87(3) of the Rules of Procedure justifying sharing the costs and does not prevent an order that OHIM pay the applicant’s costs, in accordance with the form of order sought by the applicant, since the contested decision emanates from a Board of Appeal of OHIM (see, to that effect, VENADO with frame and others, paragraph 51 above, paragraph 115 and the case-law cited). OHIM must therefore be ordered to bear its own costs and pay those incurred by the applicant.
125 Since the intervener has been unsuccessful in its pleadings, it must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Third 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 September 2009 (Case R 1387/2008‑1);
2. Dismisses the action as to the remainder;
3. Orders OHIM to bear its own costs and pay those incurred by Völkl GmbH & Co. KG;
4. Orders Marker Völkl International GmbH to bear its own costs.
Delivered in open court in Luxembourg on 14 December 2011.
[Signatures]