Case T‑361/13

(publication by extracts)

Menelaus BV

v

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

(Community trade mark — Invalidity proceedings — Community word mark VIGOR — Earlier Community figurative mark and earlier international figurative mark VIGAR — Admissibility of evidence of use submitted on a CD-ROM — Taking into account of additional evidence which was not submitted within the time-limit set — Genuine use of the earlier marks — Articles 15 and 57(2) of Regulation (EC) No 207/2009 — Form differing in elements which do not alter the distinctive character)

Summary — Judgment of the General Court (Ninth Chamber), 18 November 2015

1.      Community trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment — Requirement of solid and objective evidence — Methods and means of proof — No limitation — Admissibility of proof of use submitted on CD-ROM

(Council Regulation No 207/2009, Art. 57(2) and (3); Commission Regulation No 2868/95, Art. 1, Rules 22(4), and 40(6))

2.      Community trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — OHIM’s previous decision-making practice — Principle of legality — Need for a strict and complete examination in each particular case

1.      It follows from Rule 22(4) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark, as amended, that the list of pieces of evidence (packages, catalogues, invoices, etc.) which it contains is not exhaustive, given that it states that those pieces of evidence ‘shall, in principle, be confined’ to the list of examples mentioned. Furthermore, the case-law confirms that there is no limit on the methods and means of proving genuine use of a mark. In that regard, it is clear that pieces of evidence like audio or video material, such as advertisements broadcast by radio or on television, are not precluded. However, they are generally available on a data carrier like a CD-ROM or a USB stick and cannot be submitted on paper or in a scanned file of such a document.

The same does not apply to other pieces of evidence, such as invoices or a catalogue, which could have been submitted on paper or by means of a file containing scanned documents, but which were stored on a CD-ROM for submission. Even though the principles referred to above do not preclude evidence in the form of a CD-ROM, the question raised concerns, above all, the methods of submitting evidence to the Office for Harmonisation in the Internal Market (Trade Marks and Designs). However, the provisions of Regulation No 2868/95 which relate specifically to the submission of communications to OHIM do not preclude the submission of evidence on a CD-ROM.

It is conceivable that the submission of evidence on a CD-ROM containing a number of electronic files may make the analysis of the items of evidence which have been submitted in that way more difficult than that of paper media or a straightforward file containing a scanned version of documents, which makes it possible for them easily to be reproduced identically by printing. In that regard, it is for the parties submitting evidence of use on CD-ROMs to make sure that the legibility of that evidence does not undermine its evidential value.

(see paras 23-29, 34, 35)

2.      See the text of the decision.

(see paras 37, 38)