JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
15 July 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark TVR ITALIA — Earlier national and Community word marks TVR — Relative ground for refusal– Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 –Revocation proceedings — Genuine use of the earlier trade mark — Article 42(2) and (3) of Regulation No 207/2009 — Article 15(1) of Regulation No 207/2009)
In Case T‑398/13,
TVR Automotive Ltd, established in Whiteley (United Kingdom), represented by A. von Mühlendahl and H. Hartwig, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by G. Schneider and S. Hanne, and subsequently by J. Crespo Carillo, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
TVR Italia Srl, established in Canosa (Italy), represented by F. Caricato, lawyer,
intervener,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 14 May 2013 (Case R 823/2011-2) concerning opposition proceedings between Muadib Beteiligung GmbH and TVR Italia Srl,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,
Registrar: L. Grzegorczyk, Administrator,
having regard to the application lodged at the Court Registry on 2 August 2013,
having regard to the response of OHIM lodged at the Court Registry on 17 January 2014,
having regard to the response of the intervener lodged at the Court Registry on 14 January 2014,
further to the hearing on 3 March 2015,
gives the following
Judgment
Background to the dispute
1 On 19 February 2007, the intervener, TVR Italia Srl, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to 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 Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods and services in respect of which registration was sought are in Classes 12, 25 and 37 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 12: ‘Automobiles; sports cars; trucks; mopeds; motorcycles; bicycles; tricycles; tyres and inner tubes for vehicles and motor vehicles in general; tractors; buses; vehicles and motor vehicles; aeroplanes; helicopters; gliders; boats; dinghies; ships; apparatus for locomotion by land, air or water; motors and engines for land vehicles; components of bicycles, motorcycles, mopeds and motor vehicles; parts of boats and aeroplanes’;
– Class 25: ‘Clothing for gentlemen, ladies and children in general, including clothing in leather; shirts; blouses; skirts; suits; jackets; trousers; shorts; jerseys; undershirts; pyjamas; stockings; singlets; corsets; suspenders; underpants; brassieres; slips; hats; headscarves; ties; raincoats; overcoats; coats; swimming costumes; tracksuits; anoraks; ski pants; belts; fur coats; mufflers; gloves; dressing gowns; footwear in general, including slippers, shoes, sports shoes, boots and sandals’;
– Class 37: ‘Construction and repair, in particular with regard to the mechanical and automobile sector’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 4/2008 of 28 January 2008.
5 On 25 April 2008, Muadib Beteiligung GmbH filed a notice of opposition, pursuant to Article 42(1) of Regulation No 40/94 (now Article 41(1) of Regulation No 207/2009), to registration of the trade mark applied for, in respect of all the goods and services referred to in paragraph 3 above.
6 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), 8(4) and 8(5) of Regulation No 40/94 (now Article 8(1)(b), 8(4) and 8(5) of Regulation No 207/2009).
7 The opposition was based, inter alia, on (i) the earlier Community word mark TVR registered on 14 April 1998 under No 61283 covering ‘motor cars and parts and fittings therefor’ in Class 12 and (ii) the earlier word mark TVR registered in the United Kingdom on 27 February 2004 under No 2343460 covering goods and services in Classes 9, 11, 25 and 41 (‘the earlier UK trade mark’).
8 Following a request from the intervener for Muadib Beteiligung to provide proof of genuine use of the earlier Community trade mark, as provided for in Article 42(2) and (3) of Regulation No 207/2009, Muadib Beteiligung produced several documents as evidence appended to a witness statement from Ms H., a trade mark attorney for the firm Marks & Clerk and Muadib Beteiligung’s legal representative in the opposition proceedings.
9 By decision of 21 September 2010, the Opposition Division partially upheld and partially rejected the opposition. First, the Opposition Division upheld the opposition, finding that Muadib Beteiligung had furnished proof of genuine use of the earlier Community trade mark for ‘sports cars and parts and fittings therefor’ in Class 12. Secondly, taking those goods and the goods and services covered by the earlier UK trade mark into account, the Opposition Division concluded that there was a likelihood of confusion between the marks at issue with regard to goods and services in Classes 12, 25 and 37, with the exception of ‘trucks’, ‘tractors’, ‘buses’, ‘mopeds’, ‘bicycles’, ‘tricycles’, ‘aeroplanes’, ‘helicopters’, ‘gliders’, ‘boats’, ‘dinghies’, ‘ships’, ‘apparatus for locomotion by air or water’, ‘components of bicycles and mopeds’ and ‘parts of boats and aeroplanes’ in Class 12. Thirdly, the Opposition Division rejected the grounds of opposition based on Article 8(4) and 8(5) of Regulation No 207/2009, respectively. Fourthly, it refused the Community trade mark application ‘in respect of the goods and services listed above’ but allowed it in respect of the ‘remaining goods [in] Class 12’.
10 On 14 April 2011, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision, to the extent that that body had refused the application for registration.
11 On 17 April 2011, the intervener filed an application with OHIM for revocation of the earlier Community trade mark, pursuant to Article 51(1)(a) of Regulation No 207/2009, with regard to all the goods in Class 12 covered by that mark.
12 On 25 May 2011, the intervener requested that the opposition proceedings before the Board of Appeal be stayed pending a decision on the application for revocation.
13 On 15 July 2011, Muadib Beteiligung submitted its observations on the appeal and on the request for a stay of proceedings, to which it was opposed.
14 On 26 October 2011, the Board of Appeal decided to stay the opposition proceedings pending a decision on the application for revocation.
15 By decision of 8 May 2012, the Cancellation Division rejected the application for revocation on the ground that Muadib Beteiligung had furnished proof of genuine use of the earlier Community trade mark for the period from 17 May 2006 to 16 May 2011.
16 On 13 July 2012, the intervener brought an appeal against the Cancellation Division’s decision.
17 By decision of 9 October 2012, the Board of Appeal dismissed that appeal as inadmissible because that appeal was out of time.
18 On 1 March 2013, OHIM informed the parties that the stay of proceedings was lifted with regard to the opposition proceedings and that those proceedings were resumed.
19 By decision of 14 May 2013 (‘the contested decision’), of which Muadib Beteiligung was notified on 23 May 2013, the Second Board of Appeal of OHIM upheld the appeal in its entirety, annulled the Opposition Division’s decision and rejected the opposition in its entirety. In support of its decision, the Board of Appeal found, in essence, that (i) for the period from 28 January 2003 to 27 January 2008, Muadib Beteiligung had not furnished proof of genuine use of either the earlier Community trade mark (paragraphs 16 to 31 of the contested decision) or the earlier UK trade mark (paragraph 32 of the contested decision), and (ii) the opposition fell to be rejected in so far as it was based on Article 8(4) of Regulation No 207/2009 (paragraphs 33 to 39 of the contested decision).
20 Following a number of transfer operations, the applicant, TVR Automotive Ltd, acquired ownership of the earlier Community and UK trade marks, the former proprietor of which was Muadib Beteiligung. As at 1 August 2013, the applicant was thus listed as the proprietor of the earlier Community and UK trade marks in the databases of OHIM and the United Kingdom Intellectual Property Office.
Forms of order sought
21 The applicant claims that the Court should:
– annul the contested decision;
– dismiss the intervener’s appeal against the Opposition Division’s decision;
– order OHIM and the intervener to pay the costs.
22 OHIM contends that the Court should:
– annul the contested decision to the extent that the Board of Appeal rejected the opposition on grounds of non-use of the earlier UK trade mark;
– dismiss the action as to the remainder.
23 The intervener contends that the Court should:
– dismiss the action and confirm the contested decision;
– allow the trade mark applied for to be registered;
– order the applicant to pay the costs, including those incurred in the proceedings before OHIM.
Law
Admissibility
Compliance with the time-limit for bringing proceedings
24 The Court must reject at the outset the intervener’s argument that the present action was brought out of time.
25 In this connection, suffice it to state that, in the present case, under Article 65(5) of Regulation No 207/2009, read in conjunction with Article 58(1)(a) and (b) of the Rules of Procedure of the General Court, following Muadib Beteiligung’s being notified of the contested decision on 23 May 2013, the two month time-limit for bringing proceedings, increased on account of distance by the period of ten days provided for in Article 60(2) of the Rules of Procedure, which applies — contrary to what the intervener contends — to all applicants, irrespective of their place of residence, expired on 2 August 2013. It follows that the action, which was lodged by fax on 2 August 2013 and supplemented by the sending of the original of the application on 5 August 2013, was brought within the time-limit.
The applicant’s standing to bring proceedings
26 In so far as the intervener disputes the applicant’s standing to bring proceedings on the ground that the applicant has allegedly not shown that it is the proprietor of the earlier trade marks, it must be observed that the applicant has produced (i) extracts from OHIM’s CTM-online database, dated 1 August 2013, which identify the applicant as the proprietor of the earlier Community trade mark and (ii) extracts from the United Kingdom Intellectual Property Office’s analogous database, of the same date, identifying the applicant as the proprietor of the earlier UK trade mark and referring to reassignments of that trade mark, which took place on 17 October 2011 and 3 May 2013, as a result of a transfer of title linked to a transfer of rights, first between Muadib Beteiligung and TVR GmbH and then between the latter and the applicant.
27 The intervener’s vague and unsubstantiated allegations concerning those transfers of title to the earlier trade marks are not such as to call into question the evidential value of the documents referred to above.
28 The intervener’s claim that, as the ‘Italian branch’, it is the true successor of the former parent company established in the United Kingdom, TVR Engineering Ltd, cannot succeed. The documents produced by the intervener in support of that claim indicate merely that that parent company held only 24% of the share capital of that subsidiary and do not contain any evidence of a legal succession between those two companies or of a partnership between them for the purpose of assigning to that subsidiary the exclusive right to use the mark TVR in respect of sports cars.
29 Accordingly, the intervener’s argument that the applicant has not established its standing to bring proceedings on the ground that it is not the proprietor of the earlier trade marks must be rejected.
30 It follows from all the foregoing considerations that the present action is admissible.
Substance
31 In support of its action, the applicant puts forward two pleas in law, alleging, first, infringement of Article 42(2) and (3) of Regulation No 207/2009 and, secondly, failure to take account of the principles of res judicata or non bis in idem and of the adage venire contra factum proprium, and infringement of Article 42(2) of Regulation No 207/2009, read in conjunction with Article 15(1) of that regulation.
The first plea in law
32 Under its first plea in law, the applicant relies on an infringement of Article 42(2) and (3) of Regulation No 207/2009, in that the Board of Appeal rejected the opposition based on the earlier UK trade mark on the ground of its non-use, even though proof of genuine use of that mark had not been requested and could not in fact be requested. OHIM concurs with the arguments put forward by the applicant and contends also that the first plea in law should be upheld. By contrast, the intervener submits that the Board of Appeal did not take the earlier UK trade mark into consideration in order to conclude that there was no use of the applicant’s ‘trade mark’. The intervener submits that the contested decision assessed the lack of genuine use of the earlier Community trade mark only and referred to the earlier UK trade mark only at the end of that analysis in order to apply that analysis by analogy to the latter mark. Furthermore, it is claimed that even though the five-year period under Article 42(2) of Regulation No 207/2009 had not yet come to an end for the latter mark, the evidence produced clearly showed the applicant’s intention not to use that mark and its lack of business activity.
33 In this connection, suffice it to state that, in paragraph 32 of the contested decision, the Board of Appeal in fact concluded that the opposition based on the earlier UK trade mark had to be rejected, on the ground of insufficient use of that mark, by referring mutatis mutandis to its assessment of the evidence produced for the purposes of establishing use of the earlier Community trade mark (paragraphs 25 to 31 of the contested decision). However, as the applicant and OHIM correctly submit, the intervener did not request proof of genuine use of the earlier UK trade mark during the proceedings before OHIM, nor was it entitled to do so (see, to that effect, order of 30 May 2013 in Wohlfahrt v OHIM, C‑357/12 P, EU:C:2013:356, paragraphs 30 and 31). Since the earlier UK trade mark had been registered on 27 February 2004, the five-year period provided for in Article 42(2) and (3) of Regulation No 207/2009, read in conjunction with Article 15(1) of that regulation, had not yet expired on 28 January 2008, the date of publication of the Community trade mark application. In its decision, the Opposition Division was therefore correct in restricting its assessment to proof of genuine use of the earlier Community trade mark.
34 It follows that the Board of Appeal was not entitled to conclude that the opposition had to be rejected on the basis of allegedly insufficient use of the earlier UK trade mark.
35 Consequently, the first plea in law must be upheld.
The second plea in law
36 Under its second plea in law, the applicant claims that the Board of Appeal failed to take account of the principles of res judicata or non bis in idem, the adage venire contra factum proprium and Article 42(2) of Regulation No 207/2009, read in conjunction with Article 15(1) of that regulation. The applicant submits, first, that the decision of the Cancellation Division ruled definitively in the applicant’s favour as regards the question whether there had been genuine use of the earlier Community trade mark during the period from May 2006 to May 2011, at least as regards the period from May 2006 to January 2008. Therefore, the Board of Appeal did not have the authority to reassess the same evidence, but ought to have rejected as inadmissible the request for proof of use made by the intervener. The applicant submits, secondly, that the Board of Appeal was incorrect in concluding that the earlier Community trade mark had not been put to genuine use in connection with the goods concerned during the five-year period preceding the publication of the Community trade mark application.
37 OHIM and the intervener dispute the applicability of the principles of res judicata or non bis in idem and the adage venire contra factum proprium in administrative proceedings before OHIM. They both also dispute that there was proof of genuine use of the earlier Community trade mark, since the evidence produced to that end was not sufficient. Thus, it is submitted that, following insolvency proceedings, the economic activity of the company using that trade mark ceased, the last accounts of that company having been filed in 2004 and its factory closed in 2007. That factory was already close to closing when a Russian investor took over in 2004. It is submitted that the applicant did not show that it had real market presence, nor did it show that sales of TVR cars actually took place during the relevant period. The vague and unreliable statement that production had dropped to two or three cars per week in 2006 was insufficient. Furthermore, although the proven participation in car shows was an indication of market presence, the presentation of prototypes at such events, such as the TVR Sagaris prototype at the Birmingham (United Kingdom) motor show in 2004, did not mean that the car in question went into production or was sold after those events. Similarly, the advertising materials and press releases produced did not establish whether the models in question were actually sold during the relevant period, or whether the company had a real market share. It is argued that the applicant could have submitted convincing evidence of genuine use of the earlier Community trade mark, such as the accounts of the company concerned, sales figures, invoices, or other relevant financial evidence.
38 As regards the first part of the second plea in law, alleging failure to take account of the principles of res judicata or non bis in idem and the adage venire contra factum proprium, it should be recalled that settled case-law recognises that the principle of res judicata, which prohibits a final judicial decision being called into question, is not applicable so far as concerns the relationship between a final decision in opposition proceedings and an application for a declaration of invalidity, given, inter alia, first, that proceedings before OHIM are administrative and not judicial and, second, that the relevant provisions of Regulation No 207/2009, namely Article 53(4) and Article 100(2), lay down no rule to that effect (judgments of 14 October 2009 in Ferrero v OHIM — Tirol Milch (TiMi KiNDERJOGHURT), T‑140/08, ECR, EU:T:2009:400, paragraph 34; 22 November 2011 in mPAY24 v OHIM — Ultra (MPAY24), T‑275/10, EU:T:2011:683, paragraph 15; and 23 September 2014 in Tegometall International v OHIM — Irega (MEGO), T‑11/13, EU:T:2014:803, paragraph 12). As OHIM contends, that also applies in the converse situation concerning the relationship between proceedings leading to a final decision on revocation or on an application for a declaration of invalidity and opposition proceedings. The fact remains that the findings made in the final decision on revocation or the final decision in respect of an application for a declaration of invalidity cannot be entirely ignored by OHIM in the context of a decision in opposition proceedings between the same parties, relating to the same subject-matter and based on the same grounds, as in the present case, on proof of genuine use of a Community trade mark, provided that those findings or decided issues are not affected by new facts, new evidence or new grounds. That assertion is no more than a specific expression of the case-law according to which the previous decisions of OHIM are a factor which may be taken into consideration in assessing whether a sign is suitable for registration (see, to that effect and by analogy, judgments in TiMi KiNDERJOGHURT, EU:T:2009:400, paragraph 35, and MPAY24, EU:T:2011:683, paragraph 17).
39 It follows that, in the present case, the Board of Appeal was not obliged to follow faithfully the considerations and conclusions set out in the Cancellation Division’s decision. If that were not so, the effectiveness of the separate legal remedies of opposition to the registration of a Community trade mark, on the one hand, and revocation proceedings and proceedings for a declaration of invalidity in respect of a registered Community trade mark, on the other, would be undermined, even though it is possible, under Regulation No 207/2009, to bring such proceedings in turn or in parallel (see, to that effect and by analogy, judgments in TiMi KiNDERJOGHURT, cited in paragraph 38 above, EU:T:2009:400, paragraph 36, and MPAY24, cited in paragraph 38 above, EU:T:2011:683, paragraph 18). That assessment is confirmed by the fact that, under Article 42(2) and Article 57(2) of Regulation No 207/2009, the five-year periods in respect of which genuine use of a Community trade mark is required may be different depending on the date of filing of the application for revocation or for a declaration of invalidity or of the publication of the application for registration. Thus, in the present case, as the applicant acknowledges, those periods ran from January 2003 to January 2008 so far as the opposition proceedings are concerned, and from May 2006 to May 2011 so far as the revocation proceedings are concerned. Accordingly, the subject-matter of those two sets of proceedings was not entirely identical.
40 Therefore, the applicant is not correct in arguing that the decision of the Cancellation Division ruled definitively in the applicant’s favour as regards the question whether there had been genuine use of the earlier Community trade mark during the period from May 2006 to May 2011, or at least from May 2006 to January 2008.
41 The above conclusions are applicable mutatis mutandis both to the principle non bis in idem, which is applicable only to penalties, inter alia, to criminal penalties in the strict sense or in the competition field (see, to that effect, judgments of 10 May 2007 in SGL Carbon v Commission, C‑328/05 P, ECR, EU:C:2007:277, paragraphs 24 to 30; 21 July 2011 in Beneo-Orafti, C‑150/10, ECR, EU:C:2011:507, paragraphs 68 to 70; and 14 February 2012 in Toshiba Corporation and Others, C‑17/10, ECR, EU:C:2012:72, paragraph 94), and to the adage venire contra factum proprium (see, to that effect, judgment in TiMi KiNDERJOGHURT, cited in paragraph 38 above, EU:T:2009:400, paragraph 36). In that context, it is to no avail that the applicant relies on Article 53(4) of Regulation No 207/2009, which relates only to repeated applications for a declaration of invalidity or counterclaims in infringement proceedings.
42 Consequently, the first part of the second plea in law must be rejected as unfounded.
43 As regards the second part of the second plea in law, it should be recalled that the applicant claims that it furnished proof of genuine use of the earlier Community trade mark in connection with the goods in respect of which it was registered and in respect of which the Opposition Division accepted such use, during the period of five years that preceded the date of publication of the Community trade mark application, within the meaning of Article 42(2) of Regulation No 207/2009, read in conjunction with Article 15 of that regulation and Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4), under which proof of use must relate to ‘the place, time, extent and nature of use of the opposing trade mark’.
44 According to settled case-law, there is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether there is real commercial exploitation of the mark in the course of trade, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating market share 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 (judgments of 11 May 2006 in Sunrider v OHIM, C‑416/04 P, ECR, EU:C:2006:310, paragraph 70; 19 December 2012 in Leno Merken, C‑149/11, ECR, EU:C:2012:816, paragraph 29; and 17 July 2014 in Reber Holding v OHIM, C‑141/13 P, EU:C:2014:2089, paragraph 29). However, the analysis of whether use of an earlier trade mark is genuine cannot be confined merely to establishing that that mark has been used in the course of trade, since the use must also be genuine, in accordance with the wording of Article 42(2) of Regulation No 207/2009. Moreover, whether a mark is deemed to have been put to ‘genuine use’ will depend on the characteristics of the goods or service concerned on the corresponding market. Not all proven commercial exploitation can therefore automatically be deemed genuine use of the mark in question (see, to that effect, judgment in Reber Holding v OHIM, EU:C:2014:2089, paragraph 32).
45 The case-law has further established that it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 in the preamble to that regulation and Rule 22(3) of Regulation No 2868/95, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a Community trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function 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 is it intended to restrict trade mark protection to the case where large scale commercial use has been made of the marks (judgment of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, ECR, EU:T:2004:225, paragraph 38 and the case-law cited).
46 As regards the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use, on the one hand, and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other. Furthermore, in examining whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors specific to the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by a high intensity or a certain consistency over time of the use of that trade mark or vice versa. Lastly, 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 (judgments in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), cited in paragraph 45 above, ECR, EU:T:2004:225, paragraphs 41 and 42, and of 8 July 2004 in MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, ECR, EU:T:2004:223, paragraphs 35 and 36).
47 It should be recalled that the Board of Appeal concluded that no proof of genuine use of the earlier Community trade mark had been provided for the period from January 2003 to January 2008. In the light of the evidence produced, it found, in essence, first, that Ms H.’s witness statement, originating from the applicant itself, offered no guarantee of impartiality or independence; secondly, that in 2006, the position of the ‘company TVR’ was very precarious, its factory having been declared insolvent in December 2006 and the last TVR Cerbera ever manufactured having been put up for auction in August 2006 without reaching the reserve price set (paragraph 27 of the contested decision); thirdly, that there was no evidence of sales of goods under the earlier Community trade mark, such as copies of business accounts and declarations to the tax authorities, after August 2006, participation in motor shows in 2007 and 2008, publication of price lists in 2007 and reviews of the TVR Sagaris published in December 2006, July 2007 and on 11 July 2008 being insufficient in that regard (paragraphs 28 and 29 of the contested decision). In short, those documents did not provide any information about the volume of business in relation to the goods sold under the earlier Community trade mark in the United Kingdom or elsewhere, nor proof of such use as might create or preserve an outlet for the goods concerned after the summer of 2006 (paragraph 30 of the contested decision).
48 In so doing, the Board of Appeal rejected the Opposition Division’s findings to the contrary — as regards that same period and having regard to the same evidence — that, in essence, those documents taken together established to the requisite standard genuine use of the earlier Community trade mark for ‘sports cars and parts and fittings therefor’, since the information contained therein, inter alia, in the press articles and price lists, provided sufficient indications of the period and the place of that use, in the United Kingdom in particular. Even though the applicant had not produced invoices or sales figures, an article from the BBC of 18 October 2006 gave some indication of the scale of the use of the earlier Community trade mark in so far as it stated that, in April 2006, orders had fallen from 12 cars per week to two cars. The Opposition Division concluded that, taken together, those documents satisfied the minimum test required for the purposes of establishing genuine use of the earlier Community trade mark during the relevant period (page 4 of the Opposition Division’s decision).
49 Similarly, as regards the period from May 2006 to May 2011, the Cancellation Division found that, even in the absence of invoices and evidence of sales figures, there were other documents, such as press articles constituting sources of independent information, prices, technical specifications of cars, and advertising of the earlier Community trade mark in the press and specialist magazines, which demonstrated that that trade mark had been the subject of real and genuine commercial exploitation on the market ‘in recent years’ (paragraphs 36 and 37 of the Cancellation Division’s decision). As regards the extent of use, the Cancellation Division’s decision states that although it is true that the catalogues and press articles do not provide information about the volume of goods actually sold, a large number of cars designated by the earlier Community trade mark were offered in those catalogues and those articles were available, at least in the United Kingdom, for part of the relevant period. Overall, therefore, that evidence supported the conclusion that the mark was used to some extent and that it was not merely token (paragraphs 38 and 39 of the Cancellation Division’s decision) as regards those same goods (paragraphs 42 to 44 of the Cancellation Division’s decision).
50 In this connection, the Court must reject at the outset the applicant’s argument that the Board of Appeal did not take account of the assessment set out in the Cancellation Division’s decision in so far as it concerned the same evidence and in so far as there was an overlap in the respective relevant periods between May 2006 and January 2008. First, OHIM’s general obligation to take account of its previous decision-making practice does not affect its duty to examine genuine use of an earlier trade mark in the light of the evidence provided by the opposing party and the facts in each specific case (see, to that effect, judgment in Reber Holding v OHIM, cited in paragraph 44 above, EU:C:2014:2089, paragraph 46). That obligation does not therefore mean that, in the present case, the Board of Appeal was bound by the Cancellation Division’s findings or that it was not entitled to reach other conclusions as to whether there was genuine use of the earlier Community trade mark (see the case-law cited in paragraph 38 above), particularly since that use had to be proved for two separate periods, even if they overlapped. Secondly, as OHIM submits, the fact that the Board of Appeal waited until the end of the revocation proceedings, on its own suffices to establish that it considered it necessary to take the Cancellation Division’s decision into consideration before adopting its own decision.
51 The fact remains that the Board of Appeal’s assessment is based on a misunderstanding of Article 42(2) of Regulation No 207/2009, read in conjunction with Article 15(1) of that regulation and Rule 22(3) of Regulation No 2868/95, and on an incorrect assessment of the evidential value of the relevant evidence as a whole.
52 As regards the duration of use, the Court has held that only trade marks genuine use of which has been suspended during an uninterrupted period of five years are subject to the sanctions provided for in Article 15(1) of Regulation No 207/2009. Accordingly, it is sufficient that a trade mark has been put to genuine use during a part of that period for it not to be subject to the sanctions (judgments of 8 November 2007 in Charlott v OHIM — Charlo (Charlott France Entre Luxe et Tradition), T‑169/06, EU:T:2007:337, paragraph 41; 16 December 2008 in Deichmann-Schuhe v OHIM — Design for Woman (DEITECH), T‑86/07, EU:T:2008:577, paragraph 52; and 8 March 2012 in Arrieta D. Gross v OHIM — International Biocentric Foundation and Others (BIODANZA), T‑298/10, EU:T:2012:113, paragraph 58). Similarly, Rule 22(3) of Regulation No 2868/95 lays down the criterion of ‘time’ of use without requiring that continuous use be demonstrated during the five-year period, and distinguishes it from, inter alia, the criteria of the extent and nature of use, which, taken together only, demonstrate genuine use of the earlier trade mark. It is only by taking into consideration all the evidence submitted to the Board of Appeal for assessment that proof of genuine use of the mark at issue can be established (see, to that effect and by analogy, judgment of 16 September 2013 in Avery Dennison v OHIM — Dennison-Hesperia (AVERY DENNISON), T‑200/10, EU:T:2013:467, paragraphs 85 and 86 and the case-law cited).
53 Accordingly, the provision for a five-year period in Article 42(2) and Article 15(1) of Regulation No 207/2009 does not mean that proof of genuine use of the earlier trade mark has to be provided for each of the years covered by that period separately, rather it is sufficient to demonstrate that, taking account of all the relevant factors specific to the particular case, for at least part of that period, that trade mark was used not merely in a token manner, but was actually used and used in order to create or preserve an outlet for the goods or services in question. In particular, if this were not so, in a situation such as that in the present case, the occurrence of even only a temporary financial crisis preventing the use of the earlier trade mark for a limited period, even though its proprietor envisages continuing to use that mark in the near future, might be sufficient to preclude him opposing the registration of a similar trade mark.
54 In the present case, having regard to all the evidence produced by the applicant before both the Opposition Division and the Board of Appeal, it must be observed that use, as such, of the earlier Community trade mark is established, at least until 2006.
55 Even if the witness statement does not, in itself, constitute sufficient evidence in that regard, it nevertheless sets out a series of pertinent documents from independent sources, including an extract from the Wikipedia website describing the history of the TVR sports car manufacturer, TVR Motors Company Ltd, and containing a list of the models produced up to 2006, including the TVR Tuscan and Sagaris; two articles about the manufacturer TVR that were published on the website of the BBC on 18 October 2006 and 22 February 2007; articles about the TVR 350C and TVR Sagaris models, which featured in specialist magazines in June 2003, April 2005, December 2006 and July 2008; catalogues presenting, respectively, the TVR Tuscan (produced between 1999 and 2006) and TVR Sagaris (produced between 2004 and 2006) models; and a catalogue setting out the technical specifications and sales prices in the United Kingdom for the TVR Tuscan.
56 Accordingly, the documents referred to in paragraph 55 above establish use of the earlier Community trade mark in respect of TVR sports cars, at least between January 2003 and December 2006, that is to say, during a substantial part of the five-year period ending in 2008, a point that is not, in itself, disputed by OHIM or the intervener.
57 As regards the place, nature and extent of that use, it must be observed that the market in question is for the production and sale of high-end sports cars with technical specifications that are not intended for normal, everyday road use and the price of which exceeds that of most private use cars. It is well known that that market is often characterised by relatively low demand, by production to specific order and by the sale of a limited number of vehicles, as is confirmed by the BBC article of 18 October 2006 (see paragraph 27 of the contested decision). Therefore, the provision of accounting documents setting out sales figures or invoices is not necessary for the purposes of establishing genuine use of the mark in question. On the other hand, it is clear from the documents in the file (see paragraph 55 above), including several articles published on the Internet and catalogues, that TVR models were marketed between 2003 and 2006, at least in the United Kingdom, which is sufficient from a territorial point of view (see, to that effect, judgment in Leno Merken, cited in paragraph 44 above, EU:C:2012:816, paragraphs 50 and 54) and demonstrates the nature and a certain scale of use of the earlier Community trade mark during that period. Furthermore, publications dated July 2007 and 2008 demonstrate that that trade mark was the subject-matter of public discussion in anticipation of a revival of production and sale of the TVR Sagaris model (see also paragraphs 28 and 29 in fine of the contested decision).
58 In the light of those circumstances, contrary to the findings of the Board of Appeal and to the contentions of OHIM and the intervener, it is not possible to regard the use of the earlier Community trade mark during the period in question as merely token, or to regard that mark as not having been used in order to create or preserve an outlet for TVR sports cars. The fact that the production and sale of those cars fell in 2006 and that their manufacture ceased at the end of 2006 because of the insolvency of the factory in the United Kingdom is not sufficient for the contrary conclusion to be reached, having regard to the proven attempts by the proprietor of that trade mark to revive the production of TVR sports cars and its commercial activities during 2007 and 2008. Accordingly, the Court must also reject the Board of Appeal’s statement, set out in paragraph 29 of the contested decision, that the financial difficulties affecting the exploitation of the earlier Community trade mark allowed doubts to remain as to its use after the summer of 2006, for that statement does not take account of the fact that it suffices that a mark has been put to genuine use for at least a part of the five-year period for the purposes of Article 42(2) and Article 15(1) of Regulation No 207/2009 (see paragraphs 52 and 53 above). It should be recalled, lastly, that the case-law has recognised that the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large scale commercial use has been made of the marks (see paragraph 45 above).
59 In the light of all the foregoing considerations, it must be concluded that the Board of Appeal was incorrect to reject the opposition on the ground that the opposing party had not proved to the requisite standard genuine use of the earlier Community trade mark.
60 Consequently, the second part of the second plea in law must be upheld also.
61 Since the first plea in law and the second part of the second plea in law have been upheld, the contested decision must be annulled in its entirety.
62 As regards the applicant’s second head of claim, that the Court should dismiss the intervener’s appeal against the Opposition Division’s decision, it must be recalled that the power to alter decisions, conferred on the General Court by Article 65(3) of Regulation No 207/2009, does not have the effect of conferring on this Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011 in Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraph 72).
63 In this connection, suffice it to observe that the Board of Appeal based the contested decision on the sole fact that genuine use of the earlier Community trade mark had not been established, without carrying out an assessment of the likelihood of confusion between the marks at issue as provided for in Article 8(1)(b) of Regulation No 207/2009. The dispute brought before the Court does not therefore cover such an assessment. Accordingly, it is not for the Court, under its power to alter decisions, to carry out an assessment of that likelihood of confusion; the applicant’s second head of claim must therefore be rejected.
Costs
64 Under Article 134(1) 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.
65 Since OHIM and the intervener have been unsuccessful, they must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 14 May 2013 (Case R 823/2011-2) concerning opposition proceedings between Muadib Beteiligung GmbH and TVR Italia Srl;
2. Dismisses the action as to the remainder;
3. Orders OHIM and TVR Italia Srl to pay the costs.
Delivered in open court in Luxembourg on 15 July 2015.
[Signatures]