JUDGMENT OF THE GENERAL COURT (First Chamber)
6 September 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark GAME OF GLADIATORS – Earlier EU word mark Gladiator – Relative grounds for refusal – Article 8(1)(a) and (b) of Regulation (EU) 2017/1001 – No genuine use – Article 47(2) of Regulation 2017/1001)
In Case T‑350/22,
adp Merkur GmbH, established in Espelkamp (Germany), represented by K. Mandel, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Chylińska and M. Eberl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Play’n GO Marks ltd., established in Sliema (Malta), represented by F. Persson Winter and A. Bengtsson, lawyers,
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, V. Valančius (Rapporteur) and I. Gâlea, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, adp Merkur GmbH, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 April 2022 (Case R 2289/2020-4) (‘the contested decision’).
Background to the dispute
2 On 13 February 2019, the intervener, Play’n GO Marks ltd., filed an application for registration of an EU trade mark with EUIPO pursuant to 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).
3 Registration as a mark was sought for the word sign GAME OF GLADIATORS.
4 The mark applied for covered goods in, inter alia, following the restriction made in the course of proceedings before EUIPO, Classes 9 and 28 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 corresponding, for each of those classes, to the following description:
– Class 9: ‘Computer games and video games (software), hereunder software for slot machine games, betting and wagering games, video slot games and casino games provided online and via computer networks and playable on any type of computing device including arcade games, personal computers, handheld devices and mobile phones, on cruise ships and other physical casino locations; software for slot machine games, betting and wagering games, video slot games and casino games provided online and via computer networks and playable on any type of computing device including arcade games, personal computers and handheld devices, on cruise ships and other physical casino locations’;
– Class 28: ‘Videogaming apparatus, hereunder slot machines for gambling, gaming machines, poker machines and other video based casino gaming machines; arcade games; gaming machines, namely, devices that accept a wager; reconfigurable casino and lottery gaming equipment, hereunder gaming machines including computer games and software therefor sold as a unit’.
5 On 6 March 2019, the applicant filed a notice of opposition to registration of the mark applied for in respect of part of the goods referred to in paragraph 4 above, namely ‘video games (software), hereunder software for slot machine games, video slot games and casino games including arcade games, video slot games and casino games arcade games’ in Class 9 and ‘videogaming apparatus, hereunder slot machines for gambling, gaming machines, poker; arcade games; gaming machines’ in Class 28.
6 The opposition was based on the earlier EU word mark Gladiator, filed on 30 October 2008, registered on 13 July 2009 under No 7358203, then duly renewed until 30 October 2028, for goods in Classes 9 and 28 corresponding, for each of those classes, to the following description:
– Class 9: ‘Automatic vending machines, automatic distribution machines, reverse vending machines and juke boxes (coin-operated), and parts for the aforesaid automatic machines; automatic cash dispensers, automatic money counting and money changing machines; mechanisms for coin-operated apparatus; video games adapted for use with external screens or monitors only; electric, electronic, optical or automatic apparatus, for identifying data carriers, identity cards and credit cards, bank notes and coins; electric, electronic or optical alarm and monitoring installations, including video cameras and apparatus for image transmission and image processing; electric wiring harnesses; circuit boards, printed board assemblies (electronic components) and combinations thereof being assemblies and equipment parts’;
– Class 28: ‘Gaming apparatus (including coin-operated), sports equipment and sporting articles, all the aforesaid goods included in Class 28; coin-operated arcade games (machines); drawing apparatus for prize games and lotteries, draws or raffles; Apparatus for games (including video games), other than adapted for use with external screens or monitors only; games tables, in particular for table football; quoits and darts; hand-held units for playing electronic games; automatic gaming machines; including all the aforesaid automatic machines, machines and apparatus operating in networks; apparatus and devices for accepting and storing money, being fittings for the aforesaid automatic machines’.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of Regulation 2017/1001.
8 Following a request made by the intervener, EUIPO invited the applicant to furnish, in accordance with Article 47(2) of Regulation 2017/1001, proof of genuine use of the earlier mark relied on in support of the opposition. The applicant complied with that request within the prescribed period and also subsequently submitted additional evidence.
9 On 11 November 2020, the Opposition Division rejected the opposition, finding that the applicant had not demonstrated genuine use of the earlier mark in the European Union during the five-year period preceding the application for registration of the EU trade mark, namely from 13 February 2014 to 12 February 2019 inclusive (‘the relevant period’).
10 On 21 December 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
11 By the contested decision, the Board of Appeal dismissed the appeal and, consequently, rejected the opposition, on the ground that the evidence produced was not sufficient to establish genuine use of the earlier mark during the relevant period in connection with the goods covered by that mark.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to bear the costs of the proceedings.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO in the event of the parties being summoned to attend an oral hearing.
14 The intervener contends that the Court should:
– dismiss the action;
– allow the application for registration;
– order the applicant to pay the costs.
Law
Admissibility of the evidence adduced for the first time before the Court
15 As EUIPO correctly submits, the applicant produced, for the first time before the Court, references to a number of websites belonging to companies in the gambling sector.
16 In that regard, it should be borne in mind that the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. Pursuant to Article 95 of Regulation 2017/1001, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
17 Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
18 It follows that the applicant’s evidence consisting of references to a number of websites belonging to companies in the gambling sector must be declared inadmissible in accordance with the case-law cited in paragraphs 16 and 17 above, in so far as it is adduced for the first time before the Court.
Substance
19 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 47(2) of Regulation 2017/1001. It submits, in essence, that the Board of Appeal erred in its assessment of the evidence in relation to the nature and extent of the use of the earlier mark.
20 EUIPO and the intervener dispute the applicant’s arguments.
21 Article 47(2) of Regulation 2017/1001 provides that, if the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition is to furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which he or she cites as justification for his or her opposition, or that there are proper reasons for non-use, provided that the earlier EU 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. If the earlier EU trade mark has been used in relation to only part of the goods or services for which it is registered it is, for the purposes of the examination of the opposition, to be deemed to be registered in respect only of that part of the goods or services.
22 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 are they intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (judgment of 8 July 2014, 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 the period during 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, 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, a low volume of goods marketed under the 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 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 in the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (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). Even minimal use can therefore be sufficient to be classified as genuine, provided that it is 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. 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 the use was genuine or not, so 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 must be determined whether the Board of Appeal erred in its assessment in finding that the evidence adduced by the applicant did not establish genuine use of the earlier mark in connection with the goods in Classes 9 and 28 covered by that mark.
Nature of use
30 In the first place, the Board of Appeal found, in paragraph 57 of the contested decision, that the evidence submitted by the applicant to establish use of the earlier mark in the course of trade showed a very scarce use of the ‘sign GLADIATORS or GLADIATORS PLUS’. According to the Board of Appeal, in the majority of the evidence, those words appeared among dozens of other game titles, which made them illegible or hardly legible. The Board of Appeal also endorsed the findings of the Opposition Division that the vast majority of the evidence submitted referred to slot machine games marketed ‘under the signs Magie or Multi’.
31 According to the applicant, the Board of Appeal did not take account of the specific features of the gambling sector, in that games producers offer the possibility of playing games as a single game or, as in the present case, as part of a games package. In that regard, the applicant claims that the websites of several companies in the sector are illustrative of that usual practice of offering games packages rather than single games. It submits that the Board of Appeal should also have taken account of the use in connection with those games packages, which has evidential value in establishing genuine use of the earlier mark.
32 EUIPO and the intervener dispute the applicant’s arguments.
33 In the present case, the Court notes that, when examining the evidence produced by the applicant, the Board of Appeal took into consideration all the characteristics of the sector. As EUIPO and the intervener rightly submit, the variety of marketing strategies among the companies in the relevant sector cannot change the criteria for assessing that evidence. More specifically, the registered sign must be used as a trade mark so as to enable consumers to identify the origin of the goods concerned. It follows that, in assessing the evidence, the Board of Appeal did not fail to take account of the specific features of the gaming sector in that the earlier sign could be offered as part of a games package.
34 In the second place, as is apparent from the contested decision, the Board of Appeal found that the word ‘gladiators’ was present only on some of the material submitted as evidence. In that regard, the Board of Appeal found, in paragraph 59 of the contested decision, that the ‘sign GLADIATORS’ was present, first, in a photograph of the screen of a gambling machine displaying that term in the centre.
35 Secondly, according to the Board of Appeal, the word ‘gladiators’ was also visible on three photographs of gambling machine start screens, which included, in many of the games, a game selection button displaying the word ‘gladiators’ in the centre of the screen, submitted as Exhibit 4 of the evidence. However, the Board of Appeal also noted that it was hardly legible.
36 Thirdly, the Board of Appeal found that the evidence containing the ‘sign GLADIATORS’ also included seven extracts from gaming instructions and winning plans for various games packages, which contained a number of basic game descriptions for dozens of games in alphabetical order and listings of games in the corresponding games packages or gambling devices, including information on games called GLADIATORS (Exhibits 2.1 to 2.7, 3 and 14, as well as Annexes 1 and 2). In the present case, the Board of Appeal found that it could not be concluded from that kind of evidence that consumers could have known the mark Gladiator as a sign of the commercial origin of the goods at issue and that the use demonstrated was purely illustrative and token use.
37 The applicant disputes the Board of Appeal’s findings relating to the use of the sign Gladiator for video games in Class 9. According to the applicant, the terms ‘gladiator’, ‘gladiators’ or ‘gladiators plus’ correspond to the name of a video game which is included in the various games packages offered by the applicant, such as Magie 2011/I, Magie 2011/Deluxe I, Magie DeLuxe and Magie (HD) DeLuxe 2016. In that regard, it submits that, when the end consumer, namely the player, sits in front of a gaming machine, he or she will see that there is, among the various games packages offered, inter alia, the game Gladiator, GLADIATORS or GLADIATORS PLUS. In particular, the applicant claims that the evidence submitted makes it possible to establish genuine use of the earlier mark.
38 EUIPO and the intervener dispute the applicant’s arguments.
39 It must be held, first of all, that the Board of Appeal was correct in finding that some of the evidence did not contain any reference to the earlier mark. Accordingly, the Board of Appeal was fully entitled to base its analysis on the evidence, referred to in paragraphs 34 to 36 above, in which the terms ‘gladiator’ or ‘gladiators’ were visible.
40 Next, as regards the applicant’s argument that the end consumer, namely the player, will see the name corresponding to the earlier mark, contained in the various games packages, when sitting in front of the gaming machines, the Court notes that, in the present case, it is apparent from the evidence that the word ‘gladiators’ is not used independently, but forms part of games packages comprising more than a hundred games, which prevents the relevant public from perceiving it as a separate, independent mark. Accordingly, the Board of Appeal made no error of assessment in finding that the sign Gladiator would not be perceived by the consumer as an indication of commercial origin, but as an element that would go unnoticed among the dozens of other game names.
41 In the third place, the Board of Appeal found that the earlier mark was also visible in marketing leaflets, produced as Exhibits 9.1, 9.3 and 10.2, which included, in a large number of games, a selection button for the GLADIATORS games, which was, however, illegible or hardly legible. The Board of Appeal noted, in particular, that Exhibits 9.1 and 9.3 contained other words, such as ‘roulette’ with a yellow sun in the title, ‘magie III de luxe’, also with a yellow sun, or the name of the group Die Spielemacher Gauselmann. In particular, as regards the image contained in Exhibit 9.1, the Board of Appeal found that the GLADIATORS game was not identifiable among the dozens of different games and that it was completely illegible. In addition, the Board of Appeal found that the invoices for advertisements (Exhibits 9.2 and 9.3) did not contain any specific reference to the earlier mark.
42 The Board of Appeal also noted that all the marketing materials submitted as evidence referred only to the advertising of the Magie or Multi games packages, whereas the word ‘gladiators’ was difficult to perceive. Similarly, the Board of Appeal found, in paragraphs 74 and 75 of the contested decision, that in all the evidence submitted, with the exception of an undated photograph of a screenshot of a start screen, the sign Gladiator was not used independently.
43 Accordingly, the Board of Appeal found, in paragraph 78 of the contested decision, that, instead of the earlier mark Gladiator, the evidence showed a very scarce use of the terms ‘gladiators’ or ‘gladiators plus’. More specifically, in the majority of the evidence submitted, the terms were illegible or hardly legible due to the fact that they appeared among dozens of other game titles and the relevant public identified either the name of the games package, namely Magie or Multi, or the name of the group Die Spielemacher Gauselmann Gruppe. According to the Board of Appeal, that constituted use of the trade mark in a form differing from the form in which it was registered.
44 The applicant disputes those findings of the Board of Appeal and, referring to Exhibit 9.3, submits that ‘the GLADIATOR(S) mark’ has been used on the games market and, more specifically, in a specialist journal in the gaming sector. According to the applicant, even though the name of the GLADIATORS game was one among many other names in the journal, it has been used on the market, which constitutes simultaneous use.
45 EUIPO and the intervener dispute the applicant’s arguments.
46 As regards the evidence relating to marketing and, in particular, Exhibit 9.3, the Board of Appeal was correct in stating that the sign Gladiator was difficult to identify from among dozens of different games. Moreover, it is sufficient to observe, as EUIPO and the intervener submit, that that sign is displayed in a small size and surrounded by a large number of names of other, different games. Accordingly, it may well go unnoticed by consumers.
47 In the fourth place, with regard to the evidence containing approval documents submitted by the applicant (Exhibits 1, 1.1 and 1.2, and their translations, as well as Exhibits 1.3 to 1.5), the Board of Appeal found, in essence, that those approvals had been granted only for gambling devices but not for specific games packages. In the present case, the Board of Appeal examined the approval documents for various gaming devices, namely ADP 1123, ADP 1584 and ADP 1697, and found that they showed a version of the playing field design, but the gaming devices as such did not contain the earlier sign, which could have been perceived as identifying their origin. In addition, the Board of Appeal found that the three applications for approval of the gaming devices and two annexes containing a list of games attached to the applications for approval (Exhibits 3, 3.1 and 3.2, as well as Annexes 1 and 2) did not contain any mention of the earlier mark or its variation.
48 The applicant claims that the Board of Appeal failed to take into account the applications for approval for several types of devices, such as, for example, the ADP 1697 gaming machine, in which the Gladiator game was stored. The applicant submits, in essence, that the approval documents relate to the relevant period or at least the period up to 13 October 2018.
49 However, it is sufficient to note, as observed by EUIPO, that the applicant offers slot machines identified by various numbers to distributors and other professional customers in the gambling sector and those machines come with software licences for games packages. In the present case, as the Board of Appeal correctly stated in paragraph 60 of the contested decision, those approvals were granted only for gambling devices, not for specific games packages. Accordingly, the Court cannot accept the applicant’s argument that the applications for approval of the gaming machines in which the Gladiator game is stored have evidential value regarding the extent of use during the relevant period.
50 Consequently, in the light of the foregoing, the Board of Appeal made no error of assessment in finding that the applicant had not proved that the sign Gladiator was used independently or in finding that the evidence produced was not sufficient to show that the earlier mark was used in the form in which it had been registered.
Extent of use
51 In the present case, the Board of Appeal noted, in paragraph 86 of the contested decision, that the evidence consisting of three invoices for the games packages (Exhibits 8.1 to 8.3), submitted by the applicant, related only to a period of one calendar month, that is, from 1 December 2018 (Exhibits 8.1 and 8.3) to 1 January 2019 (Exhibit 8.2), out of the entire relevant period of five years. It also observed that those three invoices, sent to two customers in Germany, related to the rental of ten games packages containing the GLADIATORS game, at a cost of EUR 250 per games package, for a total amount of EUR 2 500.
52 In particular, the Board of Appeal noted, in essence, that those invoices referred to ten games packages, namely eight Merkur Magie 2016 DeLuxe games packages (Exhibits 8.1 and 8.3) and two Merkur Magie III DeLuxe 2015 games packages (Exhibit 8.2), which also included the GLADIATORS or GLADIATORS PLUS games, but did not display the earlier mark next to the business name Merkur Freizeit Leasing and did not feature a single product on which that mark appeared.
53 The Board of Appeal further observed that the applicant had not quantified how much of its turnover was attributable to the GLADIATORS game, ‘which [corresponded] to the earlier trade mark’. It found in that regard that, from a quantitative point of view, since the rental price of a games package was EUR 250, the proportionate fee for the GLADIATORS game would correspond only to EUR 4.17, that is to say, a total of EUR 41.70 for ten games packages. In addition, it found that, in view of the size of the market in Germany, the very low and sporadic sales were insufficient to prove the extent of use of the earlier mark for those goods.
54 The applicant submits that there is no limit on the methods and means of proving genuine use of the earlier mark and that, in certain circumstances, even evidence such as catalogues featuring that mark can be enough to prove that the extent of that genuine use was sufficient. In that regard, it submits that the two invoices, dated 12 January 2018 (Exhibit 8.1) and 1 January 2019 (Exhibit 8.2), referred to in paragraph 51 above, establish that the gaming machines on which the Magie 2016 DeLuxe games packages were stored were provided for an amount of EUR 250 per month.
55 The applicant further claims that, even if the Gladiator game is only one game included in a games package, namely the Magie 2016 DeLuxe package, the invoices show that the sign was placed on the market and that the game was available to play. In addition, the applicant submits that the rental rates on the invoices prove that they are not one-off payments for insignificant amounts, but recurrent payments.
56 EUIPO and the intervener dispute the applicant’s arguments.
57 As a preliminary point, the Court notes that the Board of Appeal found, in paragraph 85 of the contested decision, that the evidence relating to approval documents, photographs of gambling machine start screens, game instructions and internal tables did not provide any information on the quantity of goods actually sold under the earlier mark, which, moreover, is not disputed by the applicant.
58 Next, as the Board of Appeal rightly observed, the two rental invoices (Exhibits 8.1 and 8.2) do not contain a single product under the name Gladiator, but refer to the Merkur Magie 2016 DeLuxe and Merkur Magie III DeLuxe 2015 games packages.
59 In that regard, it should be borne in mind that, in accordance with the case-law referred to in paragraph 22 above, the purpose of the requirement for genuine use is not to assess the commercial success of an undertaking or to review its economic strategy, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks. Likewise, as is apparent from the case-law cited in paragraph 27 above, even minimal use can be sufficient to be classified as genuine, provided that it is 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 in question.
60 In the present case, as regards the invoices produced by the applicant relating to the games package rental services, it must be stated, as EUIPO observed, that it is impossible to ascertain, without a doubt, the actual amount corresponding to the part of the fee connected with the GLADIATORS game, given that those invoices refer only to the games packages. However, as the Board of Appeal correctly found in paragraphs 92 and 93 of the contested decision (see also paragraphs 51 to 53 above), sales volumes for a sum of approximately EUR 2 500 during the relevant period cannot be regarded as sufficient to establish genuine use of the earlier mark. That finding cannot be invalidated by the applicant’s argument that the issuance of those invoices shows recurrent payments over a rental period of more than one calendar month.
61 Next, as regards the evidence corresponding to internal documents prepared by the applicant, namely a sworn statement of one of its employees (Exhibit 12) and an internal table (Exhibit 7), the Board of Appeal found, in paragraph 91 of the contested decision, that that evidence did not indicate the territory to which the relevant sale related or what part of the turnover corresponded to the sales of the Gladiator game.
62 The applicant disputes the Board of Appeal’s assessment and submits that the sworn statement of its employee and the internal table produced should also be taken into consideration.
63 EUIPO and the intervener dispute the applicant’s arguments.
64 It is apparent that the evidence submitted by the applicant as Exhibits 7 and 12 consists, first, of an internal table on sales of games packages representing a total turnover of approximately EUR 351 million and, secondly, of a sworn statement by its commercial manager.
65 It must be held that the Board of Appeal was correct in excluding the table prepared by the applicant from its analysis. In that regard, it should be borne in mind that a statement drawn up in the interests of its author, such as that at issue in the present case, must, in order to have evidential value, be corroborated by other evidence (see, to that effect, judgments of 23 September 2009, Cohausz v OHIM – Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 57, and of 13 January 2011, Park v OHIM – Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 68). In the present case, the Board of Appeal specifically found that the internal table had been prepared by the applicant, so that it was not possible to assess its accuracy, in that the internal table did not indicate the territory to which the sale related or what part of the turnover corresponded to the sales of the Gladiators game.
66 Next, it must be held that the Board of Appeal was fully entitled not to take into consideration the sworn statement of the applicant’s commercial manager, dated 8 January 2020, affirming that the GLADIATORS game had been distributed in the games packages and attesting to the accuracy of the turnover. None of the applicant’s arguments invalidates the Board of Appeal’s approach whereby it found that the sworn statement was not supported by solid evidence produced before EUIPO.
67 Accordingly, the Board of Appeal made no error of assessment in classifying the use of the earlier mark as insufficient to constitute genuine use in the European Union within the meaning of Article 47(2) of Regulation 2017/1001.
68 It follows from all the foregoing considerations that the applicant has not shown, in connection with its single plea in law, that the Board of Appeal’s assessments concerning the genuine use of the earlier mark, based on the evidence produced during the administrative procedure, were vitiated by any error of assessment. The Board of Appeal was therefore correct in dismissing the appeal brought before it against the decision of the Opposition Division.
69 Accordingly, the single plea in law must be rejected and the action must be dismissed in its entirety, without it being necessary to examine the merits of the further arguments put forward by the applicant regarding the comparison of the signs at issue and the goods at issue, or to rule on the admissibility of the intervener’s second head of claim requesting that the Court reject the opposition and allow the registration of the mark applied for (judgment of 6 April 2022, Agora Invest v EUIPO – Transportes Maquinaria y Obras (TRAMOSA), T‑219/21, not published, EU:T:2022:219, paragraph 126 and the case-law cited).
Costs
70 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.
71 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has requested that the applicant be ordered to pay the costs only in the event of the parties being summoned to attend an oral hearing, EUIPO must, in the absence of a hearing, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders adp Merkur GmbH to bear its own costs and to pay the costs incurred by Play’n GO Marks ltd.;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Delivered in open court in Luxembourg on 6 September 2023.
V. Di Bucci | | M. van der Woude |