JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
24 April 2024 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark LabCorp – Earlier national word mark and international registration of earlier word mark labcore – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – No genuine use of the earlier trade mark – Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001))
In Case T‑674/22,
Dr. Neumann & Kindler GmbH & Co. KG, established in Bochum (Germany), represented by T. Pfeifer and N. Gottschalk, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, R. Raponi and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Laboratory Corporation of America Holdings, established in Burlington, North Carolina (United States), represented by R. Kunze, lawyer,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk (Rapporteur), President, G. Hesse and I. Dimitrakopoulos, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 30 November 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Dr. Neumann & Kindler GmbH & Co. KG, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 August 2022 (Case R 1998/2020-2) (‘the contested decision’).
Background to the dispute
2 On 2 March 2016, the intervener, Laboratory Corporation of America Holdings, filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3 The mark applied for covered goods and services in Classes 9, 16, 35, 36, 42, 44 and 45 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.
4 On 22 December 2016, the predecessors in title to the applicant, Dr M. Neumann and Mr H. Kindler, filed a notice of opposition to the registration of the mark applied for in respect of all the goods and services covered by that mark.
5 The opposition was based on the following earlier rights:
– the German word mark labcore, No 30633117, registered on 6 August 2006, for goods and services in Classes 9, 16, 35, 41, 42 and 45, corresponding, for each of those classes, to the following description:
– Class 9: ‘Computer programs (recorded); computer software (recorded); computer programs (downloadable)’;
– Class 16: ‘Manuals; quality management handbooks; pamphlets; teaching materials (except apparatus); prospectuses’;
– Class 35: ‘Business consultancy; business organization consultancy; project management services in the field of data processing; planning and supervision of company development with regard to the organization; planning (business management assistance); company presentations on the Internet and other media; personnel management consulting; updating of advertising material; cost-price analysis; business management and organization consultancy; business management advisory and consultancy services; procurement services for others (providing goods and services for other companies); advice on business economics and business organization; development of advertising and marketing concepts; efficiency experts; publication of publicity texts; marketing (research); arranging commercial and economic contacts, also on the Internet; data compilation in computer data bases; public relations; collecting, updating, systematization, maintenance of data in data bases’;
– Class 41: ‘Arranging and conducting of seminars, workshops (training) and courses of instruction; education and further training consultancy; coaching; personnel development by means of training and further training’;
– Class 42: ‘Updating of data base software, leasing/rental/arranging of access time to data bases, data storage in data bases; services of a computer programmer; electronic data storage, rental of data processing capacities; consulting in the field of data processing; development and research services regarding new products (for others); computer programming services; creation of web sites; hardware and software consulting; implementation of computer programs in networks; configuration of computer networks by the means of software; conceptual design of web sites; investigations and inquiries in data bases and on the Internet for others; software maintenance and installation, computer software rental; updating of computer software and of Internet pages’;
– Class 45: ‘Software licencing’.
– international registration No 934889 designating the European Union for the word mark labcore of 24 November 2006, for goods and services in Classes 9, 16, 35, 41 and 42, corresponding, for each of those classes, to the following description:
– Class 9: ‘Computer programs (recorded); computer software (recorded); computer programs (downloadable)’;
– Class 16: ‘Manuals; quality management handbooks; flyers; teaching materials (except apparatus); prospectuses’;
– Class 35: ‘Business consultancy; business organization consultancy; project management services in the field of data processing; planning and supervision of company development with regard to the organisation; planning (business management assistance); company presentations on the Internet and other media; personnel management consulting; updating of advertising material; cost-price analysis; business management and organisation consultancy; business management advisory and consultancy services; sourcing services for third parties (providing products and services for other companies); advice on business economics and business organization; development of advertising and marketing concepts; efficiency experts; publication of publicity texts; marketing (research); arranging commercial and economic contacts, also on the internet; data compilation in computer data bases; public relations; data collecting, updating, systematization, maintenance in data bases’;
– Class 41: ‘Organizing and arranging seminars, workshops (training) and courses of instruction; education and further training consultancy; coaching; personnel development by means of training and further training’;
– Class 42: ‘Updating of data base software, data storage in data bases; services of a computer programmer; electronic data storage, rental of data processing capacities; consulting in the field of data processing; development and research services regarding new products (for third parties); computer programming services; creation of web sites; hardware and software consulting; implementation of computer programs in networks; configuration of computer networks by the means of software; conceptual design of web sites; software licensing; investigations and inquiries in data bases and on the Internet for third parties; software maintenance and installation, computer software rental; updating of computer software and of Internet pages’;
6 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1) (now Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
7 Following a request made by the intervener on the basis of Article 47(2) of Regulation 2017/1001, EUIPO invited the applicant to adduce proof of genuine use of the earlier marks relied on in support of the opposition. The applicant complied with that request within the period prescribed.
8 On 20 August 2020, the Opposition Division rejected the opposition on the ground that the applicant had not demonstrated genuine use of the earlier marks in the European Union during the five-year period preceding the application for registration of the mark applied for, that is to say between 2 March 2011 and 1 March 2016 (‘the relevant period’).
9 On 16 October 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the applicant had not adduced proof of genuine use of the earlier marks during the relevant period. In essence, the Board of Appeal found that the various items of evidence adduced by the applicant failed to establish either a link between the use of the earlier marks and the goods and services for which they were registered, listed in paragraph 5 above (‘the goods and services in question’), or, a fortiori, the extent of the use of those marks.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs incurred before the General Court and order the intervener to pay the costs incurred in the course of the appeal proceedings before EUIPO.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
13 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Determination of the substantive law applicable ratione temporis
14 Given the date on which the application for registration at issue was filed, namely 2 March 2016, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009. (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, in so far as, in accordance with settled case-law, procedural rules are generally deemed to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
15 Accordingly, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the applicant, EUIPO and the intervener in their written pleadings to Article 8(1)(b) and Article 47(2) and (3) of Regulation 2017/1001 must be understood as referring, to Article 8(1)(b) and Article 42(2) and (3) of Regulation No 207/2009, respectively, which are identical in content.
Substance
16 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009 and Article 97(1)(f) of Regulation 2017/1001, read in conjunction with Article 10(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), in that, in essence, the Board of Appeal wrongly concluded in the contested decision that there was no genuine use of the earlier marks during the relevant period.
17 The applicant submits that the Board of Appeal made five errors in its assessment of the evidence submitted by the applicant before the Opposition Division and the Board of Appeal to demonstrate genuine use of the earlier marks. First, it erred in finding that the probative value of the statements on the use of the earlier marks in the affidavits of Dr Neumann and Mr Kindler, partners of the applicant and former proprietors of the earlier marks, was only very limited. Secondly, its examination of the substantive content of the extracts from four training documents and two lab books marked ‘LABBOOK’ was incomplete. Thirdly, it erred in its assessment of certain invoices submitted by the applicant which, contrary to the Board of Appeal’s analysis, make it possible to establish a link between the use of the earlier marks and the goods and services in question. Fourthly, it made the same error of assessment as regards the quotes and extracts from the training documents submitted by the applicant. Fifthly, in the light of the evidence submitted, it should not have found that the extent of the use of the earlier marks was too low to conclude that there was genuine use of those marks.
18 EUIPO and the intervener dispute the applicant’s arguments.
19 As a preliminary remark, it should be borne in mind that, under Article 42(2) of Regulation No 207/2009, read in conjunction with Article 42(3) of that regulation, if the applicant so requests, the proprietor of an earlier trade mark who has given notice of opposition is to furnish proof that, during the five-year period preceding the date of filing of the EU trade mark application, the earlier trade mark has been put to genuine use in the Member State in which that mark is protected in connection with the goods or services in respect of which it is registered and on which the opposition is based, or that there are proper reasons for non-use, provided that the earlier trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition is to be rejected.
20 As set out in Article 97(1)(f) of Regulation 2017/1001, which the applicant claims was infringed by the Board of Appeal, statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up may be taken as measures of inquiry in any proceedings before EUIPO.
21 Article 10(3) of Delegated Regulation 2018/625, which the applicant claims was also infringed by the Board of Appeal, provides that the indications and evidence of use are to establish the place, time, extent and nature of use of the earlier trade mark for the goods or services in respect of which it is registered and on which the opposition is based.
22 In accordance with case-law, for the purpose of interpreting the concept of genuine use, account must be taken of the fact 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 an EU 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, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 38).
23 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 (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 39; see also, to that effect and by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
24 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 use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares 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 (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
25 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 time for which the mark was used and the frequency of use (judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
26 In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall 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, a low volume of goods marketed under that trade mark may be compensated for by a high intensity of use or a period of very regular use of that trade mark or vice versa (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
27 It is therefore 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, with the result that a de minimis rule, which would not allow EUIPO or, on appeal, the Court, to appraise all the circumstances of the dispute before it, cannot be laid down (judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72).
28 Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).
29 It is in the light of those considerations that it is necessary to assess whether the Board of Appeal made an error of assessment in finding that the evidence produced by the applicant before the Opposition Division and the Board of Appeal did not demonstrate genuine use of the earlier marks for the purposes of Article 42(2) and (3) of Regulation No 207/2009.
30 In the present case, it should be observed, first of all, that the five errors relied on by the applicant, which are summarised in paragraph 17 above, can be divided, in essence, into two complaints relating to the Board of Appeal’s assessment in the contested decision. The first complaint concerns the assessment of the evidence submitted by the applicant intended to demonstrate the nature of the use of the earlier marks for the goods and services in question. The second complaint concerns the assessment of the extent of the use of the earlier marks.
31 In its first complaint, the applicant submits, in essence, that, contrary to the Board of Appeal’s finding in the contested decision, the evidence submitted before the Opposition Division and the Board of Appeal sufficiently demonstrated use of the earlier marks for the goods and services in question.
32 In that regard, the applicant submits that the Board of Appeal erred in its assessment of the probative value of the affidavits made by Dr Neumann and Mr Kindler (‘the affidavits of the applicant’s partners’) and of certain other items of evidence, namely the invoices, quotes and extracts from training documents and lab books, which corroborated the statements contained in those affidavits.
The assessment of the affidavits of the applicant’s partners
33 In paragraphs 55 to 59 of the contested decision, the Board of Appeal found that, in view of the links between their authors and the applicant, the affidavits of the applicant’s partners (exhibits 1 and 2 before the Opposition Division) had limited probative value and could not, on their own, prove use of the earlier marks and had to be supported by further evidence.
34 The applicant criticises that analysis, arguing that the affidavits of the applicant’s partners are of increased probative value since they were made before the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office). Since the latter is a competent authority for the purposes of Paragraph 156 of the Strafgesetzbuch (German Criminal Code), the authors of the affidavits in question are liable to criminal penalties if the content of the affidavits proves to be false. However, the Board of Appeal did not take that factor into account when assessing the probative value of the affidavits in question.
35 EUIPO and the intervener dispute the applicant’s arguments.
36 In that regard, it should be borne in mind that, in accordance with case-law, affidavits from a person who has close links with the party concerned, such as the links which the authors of the affidavits in question have with the applicant in the present case as partners of the applicant and former proprietors of the earlier marks, are of less probative value than affidavits of third parties and that, therefore, they cannot, on their own, constitute sufficient proof of use of the mark (see, to that effect, judgment of 9 December 2014, Inter-Union Technohandel v OHIM – Gumersport Mediterranea de Distribuciones (PROFLEX), T‑278/12, EU:T:2014:1045, paragraph 51, and of 5 March 2020, Dekoback v EUIPO – DecoPac (DECOPAC), T‑80/19, not published, EU:T:2020:81, paragraph 55 and the case-law cited). By making such a finding, the Board of Appeal was entitled to conclude that those affidavits were of limited probative value and had to be supported by further objective evidence in order to prove use of the earlier marks.
37 That finding cannot be called into question by the applicant’s argument relating to the fact that the affidavits of the applicant’s partners were made before the German Patent and Trade Mark Office and that, therefore, their authors are liable to criminal penalties under German law if the content of the affidavits proves to be false. As EUIPO states in its response, there is nothing in Regulation No 207/2009 to support the conclusion that the probative value of the evidence of use of the earlier marks, including sworn statements, must be assessed in the light of the national law of a Member State (see, to that effect, judgments of 7 June 2005, Lidl Stiftung v OHIM – REWE-Zentral (Salvita), T‑303/03, EU:T:2005:200, paragraph 42, and of 13 May 2009, Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK), T‑183/08, EU:T:2009:156, paragraph 38).
38 Consequently, the Board of Appeal was entitled to find that the affidavits of the applicant’s partners were not of increased probative value, contrary to the applicant’s submission, and that they had to be supported by further evidence. It follows that those affidavits were not capable, on their own, of proving use of the earlier marks for the goods and services in question.
39 Furthermore, it is necessary to add that the applicant has not put forward any arguments capable of supporting its claim, repeated at the hearing, that the Board of Appeal infringed Article 97(1)(f) of Regulation 2017/1001 in its assessment of the probative value of the affidavits of the applicant’s partners. That claim must therefore be dismissed.
The assessment of the invoices
40 As regards the invoices (exhibit 3 before the Opposition Division and exhibits 13 and 18 before the Board of Appeal), the Board of Appeal found, in paragraphs 61 and 62 of the contested decision, that only six of the invoices submitted by the applicant contained the term ‘labcore’. It then explained, in paragraphs 63 to 70 of the contested decision, that those six invoices did not establish use consistent with the essential function of a trade mark during the relevant period. First, the Board of Appeal observed that one of those invoices postdated the relevant period and that another described a service which was not part of the goods and services in question. Secondly, it noted that the four other invoices gave no indication of the use of the earlier marks for the goods and services in question. It stated, in that regard, that use of a sign as a company or trade name is not, of itself, intended to distinguish goods or services and that there was no reference in the invoices to the provision of services under the earlier marks, as the invoices referred only to the ‘Doc-db’ software. In the light of those findings, the Board of Appeal also concluded, in paragraphs 72 and 73 of the contested decision, that the other invoices, which did not contain the term ‘labcore’, could not be taken into account in the assessment because they were not supported by solid and objective evidence of use of the earlier marks.
41 The applicant criticises that analysis, stating, first, that several invoices were not taken into account by the Board of Appeal when it observed, in the contested decision, that the earlier marks did not appear in those invoices. In that regard, the applicant submits that the Board of Appeal erred in failing to take into account the content of Mr Kindler’s affidavit, which explained that all the invoices submitted by the applicant had been issued to their addressees on the business stationery of ‘Dr. Neumann & Kindler Ltd. & Co. KG’, on which the term ‘labcore’, composing the earlier marks, was depicted at the bottom of the page.
42 Secondly, as regards the invoices in respect of which the Board of Appeal acknowledged the inscription of the term ‘labcore’, the applicant argues that the Board of Appeal erred in finding that four of those invoices did not establish a link between the use of the earlier marks and the goods and services in question. In that regard, the applicant states that the presence of the figurative element ‘dr. neumann & kindler’, representing the applicant’s company name, which also appeared on the four invoices in the header above its address, would not prevent the relevant public from understanding that the term ‘labcore’ indicates the commercial origin of the goods and services in question. The presence of the symbol ‘®’ following the term ‘labcore’ would facilitate that connection, as the public is accustomed to seeing the services in question under a trade mark that is not the same as the company name.
43 EUIPO and the intervener dispute the applicant’s arguments.
44 In that regard, it should be stated, first, that the term ‘labcore’ does not appear on all of the invoices submitted by the applicant, as stated in the contested decision. It appears in only 6 of the 22 invoices filed by the applicant. Where that term does appear, it is as a watermark at the bottom of the documents and as part of an email address and website address.
45 Secondly, it must be concluded that the Board of Appeal did not make an error of assessment in excluding the other invoices not mentioning the term ‘labcore’ from its analysis. The statement in Mr Kindler’s affidavit that all the invoices had been sent to their addressees on the applicant’s business stationery on which the term ‘labcore’ was depicted as a watermark at the bottom of the page is not capable of calling into question the merits of the Board of Appeal’s assessment in that regard. As recalled in paragraph 28 above, genuine use of a trade mark must be demonstrated by solid and objective evidence and the invoices in question cannot constitute such evidence since they do not include the term ‘labcore’. Mr Kindler’s affidavit alone, which is of limited probative value for the reasons set out in paragraphs 36 and 37 above, does not make it possible to establish a link between those invoices and the use of the earlier marks.
46 Thirdly, as regards invoices Nos 8149, 8088, 8119 and 8126 (‘the invoices in question’) more specifically – the assessment of the probative value of which is disputed by the applicant – the applicant rightly states that the term ‘labcore’ appears on each of them. However, in order to constitute evidence of use of the earlier marks, that term must also have been used on those invoices in such a way as to establish a link between the sign at issue and the goods and services concerned (see, by analogy, judgments of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraph 23, and of 13 May 2009, jello SCHUHPARK, T‑183/08, not published, EU:T:2009:156, paragraphs 21, 22, 31 and 32). In the present case, the term ‘labcore’ appears as a watermark at the bottom of the invoices in question, but is not mentioned in the description of the goods or services included on those invoices. Furthermore, as the Board of Appeal observed in paragraphs 69 and 70 of the contested decision, the four invoices in question also contain the figurative element ‘dr. neumann & kindler’ in the header of those invoices and three of them refer in the description of the services to the ‘Doc-db’ software, both of which may be perceived as trade marks. That fact may give rise to confusion on the part of the relevant public due to the presence of several terms on the same document, despite the fact that the figurative sign ‘dr. neumann & kindler’ could be perceived as a company name, as the applicant submits. In the light of those factors, the applicant has not demonstrated that the term ‘labcore’ depicted as a watermark at the bottom of the page would be perceived by the relevant public as a mark identifying the origin of the goods or services referred to in the invoices in question.
47 In those circumstances, the fact that the invoices in question mention the term ‘labcore’ as a watermark at the bottom of the page is insufficient to establish that the earlier marks were used in connection with the goods and services in question, in accordance with the essential function of a trade mark, referred to in paragraph 23 above, which is to guarantee the identity of the origin of the goods and services for which it was registered.
48 Furthermore, the use of the term ‘labcore’ as part of an email address and website address on the invoices in question gives the impression that that term designates a trade name and not a trade mark identifying the origin of the goods and services in question. In those invoices, the email address and website address in question are located directly below the applicant’s company name, address, and telephone and fax numbers, with the result that those elements are to provide the contact details of an undertaking. In accordance with EUIPO’s argument in its response, such use does not demonstrate that the earlier marks were used in such a way as to establish a link between them and the goods and services in question (see, to that effect, judgment of 15 March 2023, Zelmotor v EUIPO – B&B Trends (zelmotor), T‑194/22, not published, EU:T:2023:130, paragraph 59).
49 Furthermore, contrary to the applicant’s submission, the presence of the symbol ‘®’ after the term ‘labcore’ depicted as a watermark at the bottom of the invoices is not capable of calling the foregoing findings into question. As EUIPO states in its response, the use of that symbol next to the term ‘labcore’ is not sufficient to demonstrate the use of that term as a trade mark for the goods and services at issue (see, to that effect, judgment of 14 February 2017, Pandalis v EUIPO – LR Health & Beauty Systems (Cystus), T‑15/16, not published, EU:T:2017:75, paragraph 44).
50 It follows that the invoices submitted by the applicant were not capable of proving use of the earlier marks for the goods and services in question.
The assessment of the quotes
51 As regards the quotes submitted by the applicant (exhibit 17 before the Board of Appeal), the Board of Appeal found, in paragraphs 74 and 75 of the contested decision, that 12 of the quotes relied on before it contained the term ‘labcore’ as a watermark at the bottom of the page and as part of an email address and website address, but that 4 other quotes did not refer to that term at all. As regards those 12 quotes, the Board of Appeal found, in paragraph 76 of the contested decision and in line with its assessment of the invoices, that they did not prove that the services in question had been provided under the earlier marks. It also observed, in paragraphs 77 and 78 of the contested decision, that it was not certain that those quotes had been accepted and that the acceptance report for the contract for work and services concluded between the applicant and a third company did not make any reference to the term ‘labcore’.
52 The applicant criticises that analysis, stating that the Board of Appeal overlooked the fact that the term ‘labcore’ was depicted as a watermark at the bottom of each of the quotes, as stated in Mr Kindler’s affidavit. In addition, as the applicant argues with regard to the assessment of the invoices, the fact that the quotes also contain the figurative element ‘dr. neumann & kindler’ in the header will not prevent the public from understanding that the term ‘labcore’ indicates the commercial origin of the goods and services in question.
53 EUIPO and the intervener dispute the applicant’s arguments.
54 In that regard, first, and as is apparent from paragraph 51 above, it should be noted that, although it expressed doubts relating to the versions of the quotes submitted before it for the first time, the Board of Appeal, contrary to the applicant’s submission, did indeed take those quotes into account in its analysis of whether the earlier marks had been put to genuine use. It in fact found that the term ‘labcore’ appeared as a watermark at the bottom of the page on 12 of the quotes in the versions submitted for the first time before it and it examined the probative value of those documents.
55 Secondly, it is apparent from an examination of the quotes in question that the descriptions of the services in them do not refer to the earlier marks at all. Furthermore, for the reasons set out in paragraphs 46 to 50 above, the mere presence of the term ‘labcore’ as part of an email address and website address and as a watermark at the bottom of the documents is not sufficient to demonstrate use of the earlier marks for the goods and services in question.
56 Accordingly, the quotes submitted by the applicant were not capable of proving use of the earlier marks for the goods and services in question.
The assessment of the extracts from training documents
57 As regards the extracts from training documents (exhibits 8 and 9 before the Opposition Division), the Board of Appeal observed, in paragraph 79 of the contested decision, that the term ‘labcore’ appeared only once on those documents, as part of an email address, and that no conclusions could therefore be reached from those documents.
58 The applicant criticises that analysis, arguing, first, that the Board of Appeal failed to take account of the fact that the term ‘labcore’ appeared as a watermark at the bottom of the documents. Secondly, it states that the fact that those documents also contain the figurative element ‘dr. neumann & kindler’ in the header will not prevent the public from understanding that the term ‘labcore’ indicates the commercial origin of the presentation and training services.
59 EUIPO and the intervener dispute the applicant’s arguments.
60 In that regard, it is indeed apparent from the extracts from training documents submitted by the applicant that the term ‘labcore’ appears once in the contact email address, as the Board of Appeal pointed out, namely on the extract from the 2013 training document. In addition, although the reference is not very visible, it is possible to see on the extracts from the documents dated 2011, 2014 and 2015 the term ‘lab’ as a watermark at the bottom of those documents at the same height as the figurative element ‘dr. neumann & kindler’, which is very visible. The 2011 and 2015 documents also contain references to other terms, namely ‘delab’ and ‘labcentre’, respectively.
61 However, it must be pointed out, as EUIPO states in its response, that it is not possible to identify clearly on those documents the term ‘labcore’ as a watermark at the bottom of the page and that, even if that term were visible, that element would not be sufficient to demonstrate any use of the earlier marks for the goods and services in question. It is apparent from the analysis relating to the invoices carried out in paragraph 46 above that such a reference to the term ‘labcore’ does not, in any event, establish a sufficiently clear link with those goods and services, in particular in the light of the fact that it is not the only element capable of being described as a sign appearing on the documents.
62 Furthermore, it should be noted that the applicant does not dispute the Board of Appeal’s analysis that the presence of the term ‘labcore’ in the contact email address on the extract from the 2013 training document does not demonstrate use of the earlier marks for the goods and services at issue.
63 In addition, it should be noted, as EUIPO states in its response, that the applicant did not provide any information relating to the addressees of the training documents in question. Those documents cannot, therefore, constitute evidence of the use of the earlier marks on the market, as required pursuant to the case-law cited in paragraphs 23 and 24 above.
64 It follows that the extracts from training documents submitted by the applicant were not capable of proving use of the earlier marks for the goods and services in question.
The assessment of extracts from lab books
65 As regards the extracts from lab books marked ‘LABBOOK’ (exhibit 10 before the Opposition Division), the Board of Appeal found, in paragraph 80 of the contested decision, that the term ‘labcore’ appeared in the publications only as part of an email address and website address in a section where information about the publisher is given and that the relevant consumers would not perceive that information as an indication of the commercial origin of the publication.
66 The applicant criticises that analysis, arguing that the Board of Appeal overlooked the fact that the second page of the extracts submitted contained two references to the term ‘labcore’, in addition to the references in the form of part of an email address and website address.
67 EUIPO and the intervener dispute the applicant’s arguments.
68 In that regard, it should be noted that the extract from the publication dated 2015 contains a reference to the term ‘labcore’, as part of the email address and website address below the applicant’s company name and contact details, and a figurative element on which the term ‘labcore’ is depicted in a box advertising the provision of certain services. The 2016 publication contains only the reference to the term ‘labcore’ as part of the email address and website address below the company name of the undertaking.
69 Although the Board of Appeal did not take account of the presence of the figurative element on the third page of the extracts, on which the term ‘labcore’ is depicted in the 2015 publication, the fact remains that that element likewise cannot demonstrate use of the earlier marks for the goods and services in question. The term ‘labcore’ on that page may give the impression of designating a trade name and, in accordance with the analysis set out in paragraph 48 above, that type of use does not make it possible to identify the earlier marks in connection with the goods and services in question. That element cannot, contrary to the applicant’s submissions, cast doubt on the Board of Appeal’s assessment relating to those extracts.
70 Furthermore, the applicant does not dispute the Board of Appeal’s finding that the reference to the term ‘labcore’ as part of the email address and website address in the publications in question lacks probative value.
71 Accordingly, the extracts from the publications submitted by the applicant were not capable of proving use of the earlier marks for the goods and services in question.
72 Lastly, as regards the applicant’s argument that the term ‘labcore’ is depicted on its business cards and the stands at the trade fairs in which it participates, it should be pointed out, as EUIPO submits in its response, that the applicant does not adduce any evidence in support of that assertion and that no such evidence was submitted before the Board of Appeal either. That argument of the applicant cannot, therefore, succeed.
73 It follows from the foregoing that the applicant has not established that the Board of Appeal made an error of assessment in concluding, on the basis of the evidence submitted before it, that the applicant had not proved, to the requisite legal standard, use of the earlier marks for the goods and services in question. On that basis, in accordance with Article 42(2) of Regulation No 207/2009 and Article 10(3) of Delegated Regulation 2018/625, and with the case-law referred to in paragraph 23 above, the Board of Appeal was entitled to conclude that the earlier marks had not been put to genuine use.
74 It follows that the applicant’s single plea in law must be rejected and, consequently, the action must be dismissed in its entirety, without the need to examine the applicant’s arguments relating to the second complaint, concerning the assessment of the extent of use of the earlier marks, or to rule on the intervener’s arguments disputing the admissibility of the applicant’s appeal before the Board of Appeal and the admissibility of Annex A.5 to the application.
Costs
75 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
76 Since the applicant has been unsuccessful and a hearing has been held, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Dr. Neumann & Kindler GmbH & Co. KG to pay the costs.
Kowalik-Bańczyk | Hesse | Dimitrakopoulos |
Delivered in open court in Luxembourg on 24 April 2024.
V. Di Bucci | | M. van der Woude |