Case T-504/09

Völkl GmbH & Co. KG

v

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

(Community trade mark – Opposition proceedings – Application for Community word mark VÖLKL – Earlier international word mark VÖLKL – Relative ground for refusal – Likelihood of confusion – Partial refusal to register – 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)

Summary of the Judgment

1.      Community trade mark – Appeals procedure – Persons entitled to appeal and to be parties to the proceedings – Persons whose claims not upheld by a decision – Decision referring the case back to the lower department for further prosecution

(Council Regulation No 207/2009, Art. 65(4))

2.      Community trade mark – Appeals procedure – Appeal to a Board of Appeal – Competence of the Boards of Appeal

(Council Regulation No 207/2009, Art. 64(1))

3.      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, Art. 42(2) and (3))

4.      Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Genuine use – Concept – Determination of a minimal quantitative use threshold – Not included

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

1.      A decision of a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) 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.

However, a decision of a Board of Appeal of OHIM does not uphold, for the purposes of Article 65(4) of Regulation No 207/2009 on the Community trade mark, the claims of a party when it rules on an application filed before the Office by that party in a manner unfavourable to it.

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 the Office 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.

(see paras 26-28)

2.      Where an appeal before the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) 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.

That is the situation if 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 in respect of part of the goods covered by the application.

Consequently, by annulling the paragraph of the operative part of the decision of the Opposition Division permitting registration of the mark applied for as regards 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 on the Community trade mark.

(see paras 54-56)

3.      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. 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.

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.

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.

(see paras 78-80)

4.      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.

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. 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 the Office for Harmonisation in the Internal Market (Trade Marks and Designs) or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down.

(see paras 81-82)