JUDGMENT OF THE COURT OF FIRST INSTANCE (First Chamber)
23 September 2009 (*)
(Community trade mark – Invalidity proceedings – Community figurative mark acopat – Earlier national word marks COPAT – Relative ground for refusal – No genuine use of the earlier marks – Article 56(2) and (3) of Regulation (EC) No 40/94 (now Article 57(2) and (3) of Regulation (EC) No 207/2009))
In Case T‑409/07,
Helge B. Cohausz, residing in Düsseldorf (Germany), represented initially by I. Friedhoff, lawyer, and subsequently by S. von Petersdorff‑Campen and H. Timmann, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
José Izquierdo Faces, residing in Bilbao (Spain), represented by H. Bock, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 6 September 2007 (Case R 289/2006-1) relating to invalidity proceedings between Helge B. Cohausz and José Izquierdo Faces,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),
composed of M. Jaeger, President, V. Tiili (Rapporteur) and F. Dehousse, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 16 November 2007,
having regard to OHIM’s response lodged at the Court Registry on 10 March 2008,
having regard to the intervener’s response lodged at the Court Registry on 15 February 2008,
having regard to the decision of the President of the Court of First Instance of 10 March 2009 to sit in the present case, since one of the members of the Chamber was prevented from attending,
further to the hearing on 1 April 2009,
gives the following
Judgment
Background to the dispute
1 On 8 May 2000, the intervener, José Izquierdo Faces, filed an application for 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 in respect of which registration was sought is the following figurative sign:
3 The services in respect of which registration was sought fall within Classes 35 and 42 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 35: ‘Services consisting of business management and organisation consultancy, especially related to the industrial property all included in this class’;
– Class 42: ‘Valuations, reports, researches, studies in general, all related to the industrial and intellectual property’.
4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 12/2001 of 29 January 2001.
5 On 27 April 2001, the applicant, Helge B. Cohausz, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), against the trade mark registration applied for. The opposition was rejected by the decision of the Opposition Division of 29 November 2002 on the ground that the evidence of registration of the earlier mark had not been translated into the language of the case.
6 Concurrently, on 5 November 2001, the applicant filed an application for a Community trade mark for the word sign copat, against which the intervener brought opposition proceedings. At the request of the applicant, the proceedings in that case were suspended pending the outcome of the invalidity proceedings with which the present case is concerned.
7 The acopat trade mark was registered as a Community trade mark on 11 February 2004.
8 On 6 April 2004, the applicant applied, under Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009), for a declaration that that registration was invalid on the ground that registration was precluded by the relative ground for refusal laid down in Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation No 207/2009).
9 In support of his application for a declaration of invalidity, the applicant relied on the following earlier marks, protected in Germany:
– the word mark COPAT, registered under No 1166152, with effect from 21 October 1989, for the following services within Class 42: ‘Services of a patent lawyer, services of European Patent Attorney; consulting, agency, appraisal and search (technical and legal) commercial right protection regarding patents, utility models, design patents, registered trade marks, topographic sort patent rights and patent rights licenses and administration of patent rights, including fee-monitoring; investigation in legal matters, in particular international patent right searches, technical consultations, physical technical appraisals, services of a physicist, technical and legal translation’;
– the word mark COPAT, registered under No 2056440, with effect from 20 October 1993, in particular for the following goods and services within Classes 9, 35, 41 and 42: ‘Computer programs, management consultancy, arranging and conducting of congresses and seminars, publication of books, magazines and computer programs as printed matter, services of an attorney, engineer, translator, programmer, searcher, designer’.
10 The application for a declaration of invalidity concerned all the services covered by the Community trade mark, and it was based on all the goods and services covered by the earlier marks.
11 On 30 July 2004, the intervener requested that, in accordance with Article 56(2) and (3) of Regulation No 40/94 (now Article 57(2) and (3) of Regulation No 207/2009), the applicant furnish proof that the earlier marks had been put to genuine use.
12 On 15 December 2004, OHIM received documents from the applicant intended to prove that the earlier marks had been put to genuine use in Germany during the five-year period preceding the application for a declaration of invalidity (that is to say, during the period from 6 April 1999 to 5 April 2004), as well as during the five-year period preceding the publication of the application for a Community trade mark (that is to say, during the period from 29 January 1996 to 28 January 2001).
13 On 22 December 2005, after comparing it with the mark COPAT (No 1166152), the OHIM Cancellation Division declared that the Community trade mark acopat was invalid. First, the Cancellation Division held that although the invoices, brochures and other evidence relating to the period from 29 January 1996 to 28 January 2001 had been ‘highly reduced’, the documents taken as a whole allowed the conclusion to be drawn that the mark COPAT (No 1166152) had been put to genuine use in the field of industrial property related services throughout the reference period (that is to say, from 6 April 1999 to 5 April 2004 and from 29 January 1996 to 28 January 2001). Secondly, the Cancellation Division held that, in view of the similarity of the signs at issue and the fact that the services in question were at least similar, there was a likelihood of confusion with the earlier mark COPAT (No 1166152).
14 On 20 February 2006, the intervener filed a notice of appeal with OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), in respect of the decision of the Cancellation Division.
15 By decision of 6 September 2007 (‘the contested decision’), the First Board of Appeal of OHIM allowed the intervener’s appeal and set aside the decision of the Cancellation Division. It held that the applicant had failed to prove that his earlier marks had been put to genuine use during the five-year period preceding the publication of the application for a Community trade mark and, specifically, had failed to show the extent of use between 29 January 1996 and 28 January 2001. Accordingly, the Board of Appeal dismissed the application for a declaration of invalidity.
Forms of order sought
16 The applicant claims that the Court should:
– annul the contested decision;
– order the intervener and/or OHIM to pay the costs.
17 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The documents produced for the first time before the Court of First Instance
18 Both OHIM and the intervener contend that Annexes 6 to 14 to the application are new documents in that they were not produced before OHIM. In consequence, those documents are inadmissible. In addition, the intervener contends that the English-language version of Annexes 5 and 16 are inadmissible, as is Annex 17.
19 It should be pointed out that Annexes 6 to 12 are extracts of archived internet pages. Although they show how those pages appeared at the time, it should be noted that they were not produced before OHIM, a fact which the applicant confirmed at the hearing and formal note of which was taken in the hearing minutes. Annexes 13 and 14 display the results of searches on the internet site of the Deutsches Patent‑ und Markenamt (German Patent and Trade Mark Office), which were not carried out until after the administrative procedure before OHIM.
20 As a consequence, those documents, produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court of First Instance is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009) and, accordingly, it is not the Court’s function to re-examine the facts in the light of documents produced for the first time before it. The abovementioned documents must therefore be disregarded, without it being necessary to assess their probative value (see, to that effect, Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case-law cited).
21 As for the English-language versions of Annexes 5 and 16 to the application, these must be found to be admissible. It is common ground that the applicant produced the German-language version of those documents before OHIM. However, since the language of the case in the present proceedings is English, the applicant was required also to produce the English translation of those documents before the Court. Accordingly, the English-language versions of Annexes 5 and 16 to the application cannot be regarded as inadmissible.
22 As for Annex 17 to the application, this is a copy of a decision of the Fourth Board of Appeal of OHIM of 27 August 2002. Although this was produced for the first time before the Court of First Instance, it is not, strictly speaking, evidence: rather, it relates to OHIM’s usual practice in reaching decisions, to which, even after the procedure before OHIM is complete, a party has the right to refer (ARTHUR ET FELICIE, paragraph 20; see, by way of analogy, Case T-29/04 Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 16).
Substance
23 The applicant raises two pleas in law in support of his action. The first plea alleges infringement of Article 56(2) and (3) of Regulation No 40/94, and the second alleges infringement of Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended and as applicable at the material time. Since both those pleas concern, in essence, the question whether it had been proved that the earlier marks had been put to genuine use, they should be examined together.
24 The applicant submits that the Board of Appeal erred in holding that the earlier marks had not been used in Germany during the period from 29 January 1996 to 28 January 2001.
25 Both OHIM and the intervener contend that the Board of Appeal was correct in holding that the evidence furnished by the applicant was insufficient to prove that the earlier marks had been put to genuine use in Germany between 29 January 1996 and 28 January 2001 in respect of the services concerned.
26 It should be noted that, as is clear from the ninth recital in the preamble to Regulation No 40/94 (now recital 10 in the preamble to Regulation No 207/2009), the legislature considers there to be no justification for protecting an earlier trade mark except where the mark has actually been used. In keeping with that recital, Article 56(2) and (3) of Regulation No 40/94 provides that the proprietor of a Community trade mark may request proof that the earlier trade mark has been put to genuine use, in the territory in which it is protected, during the five years preceding the date of the application for a declaration of invalidity. Furthermore, if, at the date on which the Community trade mark application was published, the earlier trade mark had been registered for not less than five years, the proprietor of the earlier trade mark is to furnish proof that the earlier trade mark was put to genuine use in that territory during the five years preceding that publication.
27 Under Rule 22(2) (now Rule 22(3)) of Regulation No 2868/95 – which applies mutatis mutandis in invalidity proceedings pursuant to Rule 40(5) (now, after amendment, Rule 40(6)) of that regulation – the proof of use must relate to the place, time, extent and nature of use of the earlier mark.
28 In interpreting the notion of genuine use, account must be taken of the fact 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 Community 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 (Case T-174/01 Goulbourn v OHIM – Redcats (Silk Cocoon) [2003] ECR II‑789, paragraph 38). However, the purpose of the provision 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 (Case T-203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraph 38, and the 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 53).
29 The notion of genuine use must therefore be understood as denoting actual use, consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, by way of analogy, Case C-40/01 Ansul [2003] ECR I‑2439, paragraphs 35 and 36; Case C-442/07 Verein Radetzky‑Orden [2008] ECR I‑0000, paragraph 13; and Case C-495/07 Silberquelle [2009] ECR I‑0000, paragraph 17).
30 Thus, there is genuine use of a trade mark where the mark is used, in accordance with its essential function, 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 way of analogy, Ansul, paragraph 43). In addition, 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 39; see also, to that effect and by way of analogy, Ansul, paragraph 37).
31 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances necessary to establish that the commercial exploitation of the mark is real and, in particular, to 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 40; see also, by way of analogy, Ansul, paragraph 43).
32 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 41, and Case T-334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 35).
33 In order to determine, in a particular case, whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, in which all the relevant factors of the particular case are taken into account. 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 the fact that use of the mark was highly intense or very regular, and vice versa (VITAFRUIT, paragraph 42, and HIPOVITON, paragraph 36).
34 In addition, the turnover and the volume of sales of goods or services 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 qualify as genuine, on condition that it is deemed to be 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 (VITAFRUIT, paragraph 42, and HIPOVITON, paragraph 36; see, by way of analogy, the order of the Court of Justice of 27 January 2004 in Case C-259/02 La Mer Technology [2004] ECR I‑1159, paragraph 21).
35 Moreover, it is not possible to prescribe a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use was genuine or not. In consequence, a de minimis rule, which would not allow OHIM – or, on appeal, the Court of First Instance – to appraise all the circumstances of the dispute before it, cannot be laid down. Thus, when it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use (Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 72).
36 In addition, 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 effective 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).
37 Since, in the present case, the application for a declaration of invalidity was filed by the applicant on 6 April 2004, the five-year period referred to in Article 56(2) of Regulation No 40/94 is the period from 6 April 1999 to 5 April 2004. The application for a Community trade mark filed by the applicant was published on 29 January 2001. At that date, the earlier marks had been registered for not less than five years. Accordingly, the second five-year period for the purposes of Article 56(2) of Regulation No 40/94, read in conjunction with Article 43(2) thereof (now Article 42(2) of Regulation No 207/2009), is the period from 29 January 1996 to 28 January 2001. It is common ground that proof of use was established in respect of the first period. Thus, only the second period (‘the relevant period’) is at issue in the present case.
38 As a consequence, it is necessary to examine, in the light of the abovementioned case-law, whether the Board of Appeal was correct in holding that the evidence adduced by the applicant before OHIM failed to show that the earlier marks COPAT had been put to genuine use in Germany during the relevant period.
39 The applicant produced before OHIM 350 exhibits relating to the use of the earlier marks COPAT in Germany. It should be pointed out that exhibits 54 to 350 relate only to the period after 29 January 2001, and are not therefore relevant to the present dispute.
40 The Board of Appeal stated that it had examined exhibits 1 to 53 and found that the only evidence which might be relevant and relate to the relevant period was the following:
– an image brochure of the firm to which the applicant belongs and invoices for its design (invoices of 27 December 1996 and 26 April 2000) and printing (invoice of 17 January 1997) (exhibits 1 to 4);
– a copy of the cover of the firm’s information folder and an invoice for its printing (invoice of 1 April 2000) (exhibits 5 and 6);
– a handout with COPAT sign listing various intellectual property rights and what they protect (exhibit 12);
– the registration of the domain names ‘copat.de’ and ‘copat.com’ in 1998 (exhibits 18 and 19);
– an extract from the register of European Patent Office (EPO) patent attorneys (exhibits 26 and 27);
– a copy of a page from Handwerk Magazin No 5/2000 on which the internet site www.copat.com is mentioned (exhibit 29);
– printouts showing the title page of tuition computer software (exhibits 38 to 40);
– an invoice, dated 22 January 2001, showing that the firm purchased ‘copat markengenerator’ software from an IT company (exhibit 44); and
– a copy of a decision of the Deutsches Patent- und Markenamt in which that office found that the mark COPAT (No 2056440) had been put to genuine use in Germany between November 1998 and November 2003 (exhibit 51).
41 The Board of Appeal found that the evidence produced by the applicant did not substantiate his claim that the earlier marks had been put to genuine use in Germany during the relevant period in respect of the services covered by those marks. It found, in particular, that the extent of use during the relevant period had not been documented in any way.
42 The applicant submits that the Board of Appeal failed altogether to take into consideration the ‘Affirmation in lieu of an oath’ of 13 December 2004 (‘the declaration’), which had already been produced before the Cancellation Division (exhibit 48). The applicant notes that OHIM did not ask for a translation of that document, which was drafted in German, into the language of the case. He has produced the English translation of that document before the Court of First Instance.
43 OHIM disputes that the declaration was disregarded. In any event, the declaration was not capable of affecting the Board of Appeal’s conclusions as to the extent of use. OHIM also points out that neither the Cancellation Division nor the Board of Appeal was required to request a translation of that document.
44 It is apparent from the contested decision that, although the Board of Appeal referred to the declaration in paragraph 8 of that decision, which lists the documents filed by the applicant before the Cancellation Division, it did not refer to that declaration specifically in the grounds of the decision. In paragraph 31 of the contested decision, the Board of Appeal stated that ‘the remaining evidence ha[d] to be examined i.e. Exhibits numbered 1 to 53’, and, in paragraph 32 of the contested decision, it listed the evidence from among those 53 exhibits ‘which may be relevant and might relate to the [relevant] period’. There is no mention of the declaration among those items of evidence. It must therefore be inferred that the Board of Appeal did not regard the declaration as relevant.
45 However, the applicant appears to be arguing that that exhibit was not taken into consideration by OHIM at all, since it was not translated into the language of the case. In that connection, it should be recalled that, under Rule 22(4) of Regulation No 2868/95, where the evidence supplied by the applicant for a declaration of invalidity is not in the language of the case, OHIM may require the applicant to submit, within a specified period, a translation of that evidence in that language. In the present case, OHIM, exercising its discretion in that regard, did not require the applicant to produce a translation of the declaration; moreover, OHIM was under no obligation to do so. However, that does not mean that OHIM – and, more precisely, the Board of Appeal – did not examine the declaration.
46 Accordingly, the applicant cannot maintain that the Board of Appeal did not examine the exhibit in question at all. The question whether the Board of Appeal made an error of assessment in finding that the declaration was not relevant is a different issue altogether.
47 The declaration should therefore be examined in order to determine whether it should have been regarded as relevant and capable of calling into question the conclusions reached in the contested decision.
48 First of all, it should be noted that ‘statements in writing sworn or affirmed’, as referred to in Article 76(1)(f) of Regulation No 40/94 (now Article 78(1)(f) of Regulation No 207/2009), to which Rule 22 of Regulation No 2868/95 refers, constitute admissible evidence in the context of invalidity proceedings (see, to that effect, Case T-303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita) [2005] ECR II‑1917, paragraph 40, and the judgment of 14 December 2006 in Case T-392/04 Gagliardi v OHIM – Norma Lebensmittelfilialbetrieb (MANŪ MANU MANU), not published in the ECR, paragraph 88).
49 Next, it should be borne in mind that, in order to assess the probative value of a document, it is necessary first to check the plausibility and truthfulness of the information it contains. Account must be taken, inter alia, of the origin of the document, the circumstances of its preparation, the addressee, and whether it seems from the content to be sensible and reliable (Salvita, paragraph 42; Case T‑262/04 BIC v OHIM(Shape of a lighter) [2005] ECR II-5959, paragraph 78; and the judgment of 16 December 2008 in Case T-86/07 Deichmann‑Schuhe v OHIM – Design for Woman (DEITECH), not published in the ECR, paragraph 47).
50 The declaration was sworn by the applicant, who is the proprietor of the earlier marks COPAT, in order to show during the procedure before OHIM that the marks had been put to genuine use. The declaration is dated 13 December 2004, which is the date on which the applicant sent OHIM documents intended to show that the earlier marks had been put to genuine use, which OHIM received on 15 December 2004.
51 The declaration states that the applicant granted a licence for the earlier marks COPAT to the specialist intellectual property firm Cohausz Dawidowicz Hannig & Partner in respect of the services offered by that firm.
52 According to the declaration, ever since 1995 the earlier marks COPAT have been – and continue to be – printed regularly on various handouts of that firm, which was formerly called ‘Cohausz Hase Dawidowicz & Partner’ and ‘Hannig Dawidowicz & Partner’. A 1994 handout entitled ‘Industrial Property Rights’, a pre-September 1995 handout detailing the range of the firm’s services, and a handout of 18 December 2000 entitled ‘How to find Cohausz Dawidowicz Hannig & Partner in Düsseldorf’ were produced using the sign COPAT and highlighting it as a trademark. Thus, more than 2 000 copies of each of those handouts were produced each year and distributed to clients and interested persons in Germany. The declaration states that, as from 17 January 1997, the marks COPAT have been regularly printed on the brochure for Cohausz Dawidowicz Hannig & Partner and that, by April 2004, more than 1 500 copies of that brochure had been issued to clients and interested persons in Germany. The declaration adds that ever since 30 March 2000 the earlier marks COPAT have been – and continue to be – printed regularly on that firm’s press folders.
53 The declaration states that the ‘copat’ element has been used continuously by the firm since 1997 as the main component of its email address and, since 7 August 1998, as the main component of the domain name ‘copat.de’ and on the firm’s internet site; and that, as from the first registration of the domain name on 7 August 1998, the marks COPAT have identified all the services offered by the firm on the internet. As from 19 August 1998, the marks COPAT have also been used by the firm as the main component of the domain name ‘copat.com’.
54 In addition, the declaration states that the earlier marks COPAT are printed on the title pages of the firm’s training programmes, such as ‘Patente und Muster’ (‘patents and utility models’), ‘Info & Recherche’ (‘Information and search’) and ‘Marken und Namen’ (‘marks and names’), which have been distributed nationwide by WILA Verlag since 1993. As from March 1999, the earlier marks COPAT have been printed on the patent information brochure ‘Recherchen zu und Schutz von technichen Ideen: Die provisorische Patentanmeldung’ (‘Research into and protection of technical concepts: the provisional patent application’), which has been distributed nationwide. Since December 2000, the marks COPAT have been used as a name for the ‘Copat Markengenerator’ software and on its title page.
55 Lastly, it is stated in the declaration that sales of the services rendered under the earlier marks COPAT by the firm Cohausz Dawidowicz Hannig & Partner from January 1996 until the date of the declaration generated over EUR 1 000 000 yearly.
56 It should be noted that the declaration contains information on the use of the earlier marks COPAT in relation to the place (Germany), nature (industrial property related services rendered under the earlier marks COPAT), time (since 1994 and during the relevant period) and extent of use (yearly sales of services covered by the earlier marks).
57 Accordingly, it is necessary to determine whether the declaration, which is indicative and needs to be corroborated by other evidence (see, to that effect, Salvita, paragraphs 42 to 45; Shape of a lighter, paragraph 79; and DEITECH, paragraph 50), is borne out by the other exhibits lodged by the applicant.
58 First, as regards the place of use, the brochures are written in German and are therefore clearly intended for a German-speaking public. The fact that those brochures and the invoices contain addresses and place names in Germany supports the finding that the mark is used in Germany rather than in Austria. That makes it possible to conclude that the use was in Germany. It should be noted that, in the contested decision, the Board of Appeal does not question the place of use of the earlier marks.
59 Secondly, as regards the nature of the use – which OHIM does not challenge either – it is apparent from the brochures and press folders (for example, exhibits 1, 6, 9, 10, 16 and 17) that the sign COPAT was used as a mark for the various industrial property related services.
60 Thirdly, as regards the time of the use – which is queried by OHIM and the intervener in relation to the relevant period – it should be noted that although some of the exhibits produced by the applicant before OHIM relate to the relevant period, not all of those exhibits are dated.
61 As regards the brochure for the firm Cohausz Hannig Dawidowicz & Partner containing the earlier mark COPAT (exhibit 1), this is undated, and it is not therefore possible to ascertain whether it relates to the relevant period. The invoices relied on by the applicant in order to show that that brochure was printed and distributed within the relevant period cannot relate to that brochure. As regards, first, the invoice of 27 December 1996 (relating to the design of a brochure) (exhibit 2) and the invoice of 17 January 1997 (relating to the printing of a brochure) (exhibit 4), these were addressed to the firm Cohausz Hase Dawidowicz & Partner and cannot therefore relate to the brochure in question, which bears the name Hannig in place of the name Hase. In the invoice of 27 December 1996, a clear reference is made to the brochure of the firm Cohausz Hase Dawidowicz & Partner. Furthermore, at the hearing, in reply to a question from the Court, the applicant stated that Mr Hase did not leave the firm until 1998. It is implausible that, at the end of 1996 or the beginning of 1997, a firm would order 1 470 brochures omitting the name of a person who did not leave the firm until more than one year after that order was placed.
62 In addition, that brochure contains the domain name ‘copat.com’. However, that domain name was not registered until 19 August 1998. It is also implausible that a brochure printed at the beginning of 1997 would contain a domain name registered a year and a half later.
63 Furthermore, the invoice of 17 January 1997 (exhibit 4) refers to the printing of 1 470 brochures ‘29.7 x 29.7’. However, that format bears no resemblance to the dimensions of the brochure produced by the applicant.
64 As regards, next, the invoice of 26 April 2000 (exhibit 3), relating to the design of a brochure, although this is addressed to the firm Cohausz Hannig Dawidowicz & Partner, there is nothing to show that it relates specifically to the brochure bearing the mark COPAT. The same is true of the invoice of 1 April 2000 concerning, inter alia, the printing of 100 brochures. In any event, even if the latter invoice relates to the brochure in question, the printing of 100 brochures far from proves that there has been genuine use.
65 Accordingly, the statement in the declaration that, as from 17 January 1997, the marks COPAT have been regularly printed on the firm’s brochure and that, by April 2004, more than 1 500 copies of that brochure had been issued to clients and interested persons in Germany, is not borne out by the exhibits filed.
66 As regards the press folder (exhibit 6), this is also undated. The date of that folder cannot be traced by means of the invoice of 1 April 2000 (exhibit 5), which relates, inter alia, to the printing of the press folders. Indeed, there is nothing to indicate that the press folder was printed in 2000. Moreover, there is nothing to indicate that that document was distributed regularly from 30 March 2000.
67 In addition, it is apparent from the documents before OHIM (exhibit 13) that in 2000 the firm took part in a number of lectures on various industrial property related subjects. Admittedly, there is no indication that the brochures referring to the mark COPAT were distributed at those lectures, but at least it is shown that those lectures took place. In that connection, it is necessary to reject OHIM’s argument that the lectures do not correspond to the services covered by the earlier marks because public university students, not yet being engaged in any commercial activity, are neither clients nor colleagues of the applicant. Quite apart from the issue of the intrinsic soundness of such an argument, it appears that the lectures in question are really more in the way of continuing vocational training intended for those already practising a profession, such as engineers (for example, the subject ‘Patentrecht für Ingenieure und andere Berufsgruppen’ (‘Patent law for engineers and other professionals’), requested by the Verein Deutscher Ingenieure Bildungswerk Düsseldorf, or ‘Wie sollte sich ein mittelstä[n]disches Unternehmen im Internet präsentieren?’ (How should a medium-sized company present itself on the internet?), requested by the Arbeitsgemeinschaft selbständiger Unternehmer).
68 It also emerges from the documents before OHIM that the domain name ‘copat.de’ was registered on 7 August 1998 (exhibit 18) and the domain name ‘copat.com’ on 19 August 1998 (exhibit 19). However, those registrations do not in themselves show that the earlier marks were put to genuine use during the relevant period. The applicant failed to produce before OHIM extracts from its internet site with dated evidence for that period. The extracts of the archived internet pages which it lodged before the Court of First Instance are inadmissible, as was noted in paragraphs 19 and 20 of the present judgment. Accordingly, the content of those sites cannot be ascertained.
69 The extract from Handwerk Magazin No 5/2000 suggests that the domain name ‘copat.com’ was used in 2000 in relation to information on provisional patent applications and to an inventions manual (exhibit 29). That reference could indirectly indicate that there was some use of the mark COPAT in 2000, but does not provide any evidence as to the content of that site.
70 As regards the invoice dated 22 January 2001 concerning the order for the ‘Copat Markengenerator’ software (exhibit 44), this shows that the firm ordered such software. On the other hand, it does not show that by 29 January 2001 the firm had already rendered services externally in relation to that software.
71 Lastly, as regards the decision of the Deutsches Patent- und Markenamt of 3 December 2003 (exhibit 51), which held that the earlier mark COPAT No 2 056 440 had been put to genuine use in accordance with the relevant German legislation between November 1998 and November 2003, it is sufficient to note that the period concerned is not identical to the relevant period. Thus, even if there is an overlap with the relevant period, the possibility remains that genuine use will have been proved only in respect of the end of the period concerned – that is to say, after 28 January 2001 – contrary to the applicant’s claim. In any event, it should be borne in mind that the Community trade mark regime is an autonomous system consisting in a set of rules and pursuing objectives peculiar to it; its application is independent of any national system (Case T-32/00 Messe München v OHIM (electronica) [2000] ECR II‑3829, paragraph 47).
72 Fourthly, as regards the extent of the use, it should be noted that, apart from the declaration, the documents relating to the relevant period do not contain any indication in that respect. As was noted in paragraphs 19 and 20 of the present judgment, the searches conducted on the Deutsches Patent- und Markenamt internet site, relating to the alleged activities of the firm, are inadmissible. In any event, they do not in any way show that services were offered under the earlier marks COPAT.
73 It should be pointed out that, in the present case, the declaration does not have sufficient probative value in that regard.
74 The declaration, which was made by the applicant himself, appears to leave much unsaid, merely stating that, since 1996, the turnover of the services rendered under the earlier marks COPAT generated over EUR 1 million per annum. Despite that high turnover figure, it should be noted that such figures are no indication of the sales volume of the services in question in Germany, since no explanatory details are given and the turnover figure is in no way apportioned between the various services. At the hearing, in reply to a question from the Court, the applicant was unable to provide any additional information, apart from the fact that the bulk of the turnover related to the services of lawyers and of patent agents in particular.
75 In addition, the applicant did not claim that it was impossible to produce other documentary evidence. Even if the particular nature of industrial property related services is taken into account, it should be noted that the applicant was able to produce invoices relating to those services and containing the ‘copat’ element, but only in relation to the period after 12 August 2002, that is to say, after the end of the relevant period (28 January 2001). Indeed, there is nothing to suggest that those services were sold under the earlier mark COPAT prior to that date. Moreover, at the hearing, the applicant acknowledged that the decision to introduce the ‘copat’ element was taken only after the relevant period, that is to say, after the Community trade mark acopat had been published.
76 Accordingly, even if the extent of the use had been proved for the period between 6 April 1999 and 5 April 2004, which partly overlaps the relevant period, a global assessment of all the abovementioned documents discloses that any minimal use before 29 January 2001 could not be regarded as sufficient in the economic sector concerned to create a share in the market for the services protected by the earlier marks and thereby to prove that the earlier marks had been put to genuine use during the relevant period.
77 It follows that the Board of Appeal did not err in finding that the declaration was not relevant, and that the evidence filed by the applicant before OHIM, when considered as a whole, did not prove to the requisite legal standard that the earlier marks COPAT had been put to genuine use in Germany during the relevant period.
78 The action must therefore be dismissed.
79 Accordingly, it is not necessary to examine the applicant’s arguments concerning the application of Article 8(1)(b) of Regulation No 40/94 and the likelihood of confusion.
Costs
80 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
81 Since the applicant has been unsuccessful, he must be ordered to pay the costs in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (First Chamber)
hereby:
1. Dismisses the action.
2. Orders Mr Helge B. Cohausz to pay the costs.
Delivered in open court in Luxembourg on 23 September 2009.
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