Case T‑307/13

Capella EOOD

v

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

(Community trade mark — Revocation proceedings — Community figurative mark ORIBAY ORIginal Buttons for Automotive Yndustry — Admissibility of the application for revocation)

Summary — Judgment of the General Court (Second Chamber), 9 December 2014

1.      Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Direction issued to the Office — Exclusion

(Council Regulation No 207/2009, Art. 65(6))

2.      Community trade mark — Appeals procedure — Action before the EU judicature — Procedural role of the Office — Right of the Office, although designated as the defendant, to support the applicant’s claims

(Rules of Procedure of the General Court, Art. 133(2))

3.      Community trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Partial use — Obligation on the applicant for revocation to determine the extent of its demand for proof — Scope — Reproduction of the description of the category of goods or services registered, with the exclusion of certain sub-categories of goods — Admissibility of the application for revocation

(Council Regulation No 207/2009, Arts 51(1)(a), and (2), and 56; Commission Regulation No 2868/95, Art. 1, Rule 37(a)(iii))

1.      See the text of the decision.

(see para. 11)

2.      In a Community trade mark action against a decision of a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), there is nothing to prevent OHIM from endorsing a head of claim of the applicant’s or from simply leaving the decision to the discretion of the Court, while putting forward all the arguments that it considers appropriate for giving guidance to the Court. Conversely, it may not seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application or put forward pleas in law not raised in the application.

(see para. 17)

3.      Since proof of use of the mark on which the application for revocation is based need be furnished only when requested by the applicant, it is for the latter to determine the scope of its request for proof.

Where the mark at issue 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 sub-categories capable of being viewed independently, it is possible that the proprietor of that mark may be able to furnish proof that the mark has been put to genuine use in relation only to a part of those goods or services, in which case the protection afforded by registration of the mark at issue applies only to the sub-category or sub-categories in which the goods or services for which the mark in question has actually been used belong.

Similarly, where the mark at issue 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 sub-categories capable of being viewed independently, an applicant for revocation which considers that the proprietor of the mark at issue has made genuine use of that mark in relation to a part of the goods and services for which it is registered, is entitled to exclude those goods or services from its application for revocation in order to determine the scope of its request for proof that the mark on which the application is based has been put to genuine use.

In that regard, where a list has been provided of the goods, in a given category, in respect of which the mark at issue was registered, an applicant for revocation cannot be required, as a condition for admissibility, to identify all the sub-categories of goods and services which it considers capable of being individually distinguishable from one another while falling within the one broad category designated in the registration of the mark at issue.

In the first place, where, in its application for revocation, the applicant initially reproduces expressly and fully the description of the category of goods in respect of which the mark at issue was registered, and only subsequently limits the scope thereof by removing certain sub-categories of goods in respect of which it does not deny serious use, it clearly meets the requirement that it determine the scope of its request for proof that the mark at issue was put to genuine use. Secondly, only the applicant for registration of a Community mark is entitled to determine, under the control of the competent OHIM adjudicatory bodies, the scope of protection it would like to be granted to that mark. Therefore, where the proprietor of the mark at issue had, before registration of the latter, designated the goods in question by reference to a single broad category, without further identifying the sub-categories of goods and services which were capable of falling within it, the Board of Appeal cannot declare the application for revocation inadmissible on the ground that the applicant had failed to identify such sub-categories in that application.

Finally, in order to give a decision on the admissibility of a request for revocation based on the lack of genuine use of a mark, the competent OHIM adjudicatory bodies must first assess whether the mark at issue was registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently.

(see paras 23-25, 30, 31)