Case T‑660/11

Polytetra GmbH

v

Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (OHIM)

(Community trade mark — Opposition proceedings — Application for Community word mark POLYTETRAFLON — Earlier Community word mark TEFLON — No genuine use of the earlier mark — Article 42(2) and (3) of Regulation (EC) No 207/2009 — Final product incorporating a component — Use of the earlier mark in respect of the final products of third parties — Duty to state reasons)

Summary — Judgment of the General Court (First Chamber), 16 June 2015

1.      Community trade mark — Procedural provisions — Statement of reasons for decisions — Article 75, first sentence, of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU

(Art. 296, second para., TFEU; Council Regulation No 207/2009, Art. 75, first sentence)

2.      Actions for annulment — Grounds — Infringement of essential procedural requirements — To be considered of the Court’s own motion

(Art. 263 TFEU)

3.      Community trade mark — Procedural provisions — Statement of reasons for decisions

(Council Regulation No 207/2009, Art. 42(2) and (3))

4.      Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal

(Council Regulation No 207/2009)

5.      Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment

(Council Regulation No 207/2009, tenth recital, Arts 42(2) and (3), and 78(1)(f); Commission Regulation No 2868/95, Rule 22(3) and (4))

1.      See the text of the decision.

(see para. 18)

2.      See the text of the decision.

(see para. 19)

3.      A decision which (i) concludes that an earlier mark has been put to genuine use within the meaning of Article 42(2) of Regulation No 207/2009 and (ii) does not make clear to what extent the evidence produced supports that conclusion in relation to each of the goods or services or each of the categories of goods or services for which that use has been accepted is vitiated by inadequate reasoning. That provision the Board of Appeal of OHIM to establish a link between the goods or services for which it considers genuine use to have been demonstrated and all or a part of the goods and services in respect of which that mark is registered, in order to allow a subsequent assessment of a likelihood of confusion.

A lack of precision in that regard in an OHIM decision renders it impossible for a review to take place of the application by the Board of Appeal of the last sentence of Article 42(2) of Regulation No 207/2009. It follows from Article 42(2) and (3) of that regulation that, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection in opposition proceedings only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. On the other hand, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for those goods or services necessarily covers the entire category for the purposes of the opposition.

Accordingly, it is for the Board of Appeal to assess, where use is proved only in respect of a part of the goods or services in a category for which the earlier mark is registered and which is cited as justification for the opposition, whether that category includes independent subcategories covering the goods and services in respect of which use is demonstrated, so that it must be held that use has been proved only in respect of that subcategory of goods and services or, on the other hand, whether such subcategories are not possible.

(see paras 23-25)

4.      Where sufficient reasons for reviewing the legality of the contested decision are lacking, it is not for the General Court to conduct an analysis based on reasoning not apparent from that decision. It is for OHIM to investigate the application for registration of a Community trade mark and to decide upon it. It is then for the Court, if necessary, to review the evaluation made by the Board of Appeal in the decision adopted on the basis of the grounds relied on by the Board of Appeal in support of its conclusion. It is not, however, for the Court to put itself in OHIM’s place in exercising the powers vested in OHIM by Regulation No 207/2009 on the Community trade mark.

(see para.34)

5.      See the text of the decision.

(see paras 42-48, 94)