JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
15 July 2015 (*)
(Community trade mark — Revocation proceedings — Community figurative mark λ — Genuine use — Use as part of a composite mark — Proof of use — Articles 15 and 51(1) of Regulation (EC) No 207/2009)
In Case T‑215/13,
Deutsche Rockwool Mineralwoll GmbH & Co. OHG, established in Gladbeck (Germany), represented by J. Krenzel, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by L. Rampini, and subsequently by P. Bullock and N. Bambara, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Recticel SA, established in Brussels (Belgium),
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 4 February 2013 (Case R 112/2012-5), relating to cancellation proceedings between Deutsche Rockwool Mineralwoll GmbH & Co. OHG and Recticel SA,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 15 April 2013,
having regard to the response lodged at the Court Registry on 22 July 2013,
having regard to the decision of 7 October 2013 not to allow the lodging of a reply,
having regard to the change in the composition of the Chambers of the Court,
further to the hearing on 7 January 2015,
gives the following
Judgment
Background to the dispute
1 On 27 November 2002, Recticel SA filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to 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 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in Classes 17 and 19 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 17: ‘Insulating materials’;
– Class 19: ‘Building materials (non-metallic)’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 52/2003 of 23 June 2003.
5 The mark in respect of which registration was sought (‘the contested mark’) was registered on 6 February 2004 under the number 2960789.
6 On 9 September 2010, the applicant, Deutsche Rockwool Mineralwoll GmbH & Co. OHG filed an application for revocation of the contested mark, based on Article 51(1)(a) of Regulation No 207/2009, on the ground that that mark had not been put to genuine use for a continuous period of five years.
7 By decision of 30 November 2011, the Cancellation Division of OHIM partially revoked the rights of the proprietor of the contested trade mark as regards ‘building materials (non-metallic)’, with the exception of ‘building materials having insulating properties’ in Class 19. By contrast, it rejected the application for revocation in respect of the goods in Class 17.
8 On 16 January 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division and subsequently filed, on 27 March 2012, a statement setting out the grounds for the appeal.
9 By decision of 4 February 2013 (‘the contested decision’), the Fifth Board of Appeal of OHIM upheld the appeal in part by revoking the contested mark in respect of all of the goods in Class 19. By contrast, it confirmed the Cancellation Division’s assessment as regards the goods in Class 17.
10 In essence, as regards the goods in Class 17, the Board of Appeal found that, first, Recticel had proved genuine use of the contested mark as regards ‘insulating materials’ in Class 17, on the basis of all the items of evidence provided which were considered to be admissible, secondly, use could also be proved by the use of that mark in other word marks and, thirdly, such use did not detract in any way from the distinctive character of the contested mark. As regards the goods in Class 19, as Recticel had not provided proof of use of the mark with respect to building products, other than insulation boards, the Board of Appeal found that the revocation had to be confirmed with respect to the goods in that class.
11 Furthermore, as regards the applicant’s claim concerning the alleged infringement of its right to be heard, the Board of Appeal acknowledged that the fact that the applicant had not been given an opportunity to reply to the evidence submitted by Recticel constituted a procedural irregularity, but found that that was not capable of leading to the annulment of the Cancellation Division’s decision inasmuch as the applicant had been able to submit its comments on that evidence in the course of the proceedings before the Board of Appeal.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 The applicant puts forward two pleas in law in support of the action. The first alleges infringement of Article 51(1)(a) of Regulation No 207/2009 and of Rules 22 and 40(5) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4). The second alleges infringement of Article 75 of Regulation No 207/2009.
The first plea, alleging infringement of Article 51(1)(a) of Regulation No 207/2009 and of Rules 22 and 40(5) of Regulation No 2868/95
15 The applicant claims that the evidence of use which Recticel, as the proprietor of the contested mark, submitted to OHIM was not sufficient to establish genuine use of that mark within the meaning of Article 51(1)(a) of Regulation No 207/2009, with the result that Recticel’s rights should have been revoked. In essence, the applicant’s arguments seek to call into question, first, the evidential value of some of the items of evidence, having regard to the nature and the extent of use, and, secondly, the possibility of taking into account items of evidence which were submitted out of time.
The evidential value of the evidence, having regard to the nature and extent of use
16 The applicant claims, in essence, first, that the evidence which Recticel provided before OHIM (which consisted mainly of advertising material and invoices relating to the purchase of that material) has no evidential value, having regard to the extent of use. It submits that those documents, taken individually, do not contain any clear reference to the goods at issue, the relevant period, the sale of those goods or (in the declaration from the external auditing undertaking relating to the sales of those goods) to the contested sign, whether on its own or where it is used in place of the first letter ‘o’ in the Community word marks EUROFLOOR, EUROWALL, POWERDECK, POWERROOF, POWERLINE and EUROTHANE, which are also registered in the name of Recticel. Secondly, the applicant claims that the documents referring to those marks which include the contested sign used in place of the first letter ‘o’ should not be taken into account since the use of those other marks may not be regarded as use of the contested mark. Thirdly, the applicant claims that the contested mark, which represents the Greek letter lambda, is devoid of any distinctive character because, on the one hand, signs consisting of a single letter are not distinctive according to OHIM’s decision-making practice and, on the other hand, it only describes the physical characteristic of the thermal conductivity of the goods in question.
17 OHIM disputes the applicant’s arguments.
18 It is clear from the first subparagraph of Article 15(1) and from Article 51(1)(a) of Regulation No 207/2009 that the rights of the proprietor of a Community trade mark are to be declared to be revoked on application to OHIM if, within a continuous period of five years, that trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and there are no proper reasons for its non-use.
19 Rule 40(5) of Regulation No 2868/95 provides that OHIM, in the case of an application for revocation, is to specify to the proprietor of the Community trade mark at issue a period within which it must provide proof of use of that mark. If the proof is not provided within the time limit set, that Community trade mark is to be revoked. Under Rule 22(3) of Regulation No 2868/95, which applies to applications for revocation pursuant to Rule 40(5) of the same regulation, the proof of use of the mark must relate to the place, time, extent and nature of use.
20 The rationale for the requirement that a mark must be the subject of genuine use in order to be protected under EU law is that OHIM’s register cannot be compared to a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see, to that effect and by analogy, order of 27 January 2004 in La Mer Technology, C‑259/02, ECR, EU:C:2004:50, paragraphs 18 to 22).
21 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 in Ansul, C‑40/01, ECR, EU:C:2003:145, 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 (judgment of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, ECR, EU:T:2004:225, paragraph 39; see also, to that effect and by analogy, judgment in Ansul, EU:C:2003:145, paragraph 37).
22 As regards the criteria for assessing whether use of the trade mark is genuine, it must be borne in mind that, in making such an assessment, 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 extent and frequency of use of the mark (judgment in VITAFRUIT, cited in paragraph 21 above, EU:T:2004:225, paragraph 40; see also, by analogy, judgment in Ansul, cited in paragraph 21 above, EU:C:2003:145, paragraph 43).
23 Furthermore, a global assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the low volume of goods marketed under the mark may be offset by the fact that use of the mark was very extensive or very regular and vice versa (judgment in VITAFRUIT, cited in paragraph 21 above, EU:T:2004:225, paragraph 42, and judgment of 8 July 2004 in MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, ECR, EU:T:2004:223, paragraph 36).
24 Moreover, Rule 22 of Regulation No 2868/95 does not state that each piece of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use (judgment of 16 November 2011 in Buffalo Milke Automotive Polishing Products v OHIM — Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, ECR, EU:T:2011:675, paragraph 61).
25 On the other hand, according to the case-law, it cannot be ruled out that an accumulation of evidence may allow the necessary facts to be established — such as the highly distinctive character which a mark has — even though each of those pieces of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see, by analogy, in the context of proof of the distinctive character of a mark, judgment of 17 April 2008 in Ferrero Deutschland v OHIM, C‑108/07 P, EU:C:2008:234, paragraph 36).
26 In any event, 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 in Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, ECR, EU:T:2002:316, paragraph 47, and 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 28).
27 As regards the nature of use, it is important to point out that the Courts of the European Union have held, in the context of opposition proceedings, that, under point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 in conjunction with Article 42(2) and (3) of that regulation, proof of genuine use of an earlier national or Community trade mark which forms the basis of an opposition against a Community trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered (see, by analogy, judgment of 25 October 2012 in Rintisch, C‑553/11, ECR, EU:C:2012:671, paragraph 30; see also judgment of 8 December 2005 in Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, ECR, EU:T:2005:438, paragraph 30 and the case-law cited). Such a finding is applicable as regards the proof of use to be provided in the context of cancellation proceedings. The purpose of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (judgment of 23 February 2006 in Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, ECR, EU:T:2006:65, paragraph 50).
28 A finding that the distinctive character of the mark as registered has been altered requires an assessment of the distinctive and dominant character of the added elements, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the various elements within the arrangement of the mark (see, to that effect, judgments of 24 November 2005 in GfK v OHIM — BUS (Online Bus), T‑135/04, ECR, EU:T:2005:419, paragraphs 36 and 40, and 10 June 2010 in Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, EU:T:2010:229, paragraph 31).
29 In that regard, it is apparent from the case-law that the addition of elements which will not be perceived as forming a unit with the mark at issue does not constitute an alteration of the distinctive character of that mark (see, to that effect, judgment in ATLAS TRANSPORT, cited in paragraph 28 above, EU:T:2010:229, paragraphs 35 and 36). Furthermore, it has also been held that the fact that that mark is sometimes used with additional elements and sometimes without such elements may be one of the criteria which makes it possible to conclude that there has been no alteration of the distinctive character (see, to that effect, judgment in CRISTAL CASTELLBLANCH, cited in paragraph 27 above, EU:T:2005:438, paragraph 35, and judgment of 27 September 2007 in La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, EU:T:2007:299, paragraph 75).
30 Moreover, the Court has held that the condition of genuine use of a trade mark, within the meaning of Article 15(1) of Regulation No 207/2009, may be satisfied where a registered trade mark, which has become distinctive as a result of the use of another composite mark of which it constitutes one of the elements, is used only through that other mark and the combination of those two marks is, furthermore, itself registered as a trade mark (see, by analogy, judgments of 18 April 2013 in Colloseum Holding, C‑12/12, ECR, EU:C:2013:253, paragraph 36, and 18 July 2013 in Specsavers International Healthcare and Others, C‑252/12, ECR, EU:C:2013:497, paragraph 26). Regardless of whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark, the fundamental condition is that, as a consequence of that use, the sign of which the contested mark consists may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking (see, by analogy, judgment in Colloseum Holding, EU:C:2013:253, paragraph 28).
31 As to the extent or scale of the use to which the contested trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (see, to that effect, judgments in VITAFRUIT, cited in paragraph 21 above, EU:T:2004:225, paragraph 41, and HIPOVITON, cited in paragraph 23 above, EU:T:2004:223, paragraph 35).
32 The turnover and the volume of sales of the goods under the contested 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 (see, to that effect, judgments in VITAFRUIT, cited in paragraph 21 above, EU:T:2004:225, paragraph 42, and HIPOVITON, cited in paragraph 23 above, EU:T:2004:223, paragraph 36). 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 use is genuine or not, so that a de minimis rule, which would not allow OHIM or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot be laid down (judgment of 11 May 2006 in Sunrider v OHIM, C‑416/04 P, ECR, EU:C:2006:310, paragraph 72).
33 However, the smaller the commercial volume of the use of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use (judgment of 18 January 2011 in Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, EU:T:2011:9, paragraph 31).
34 It is in the light of the foregoing considerations and of the criteria set out above that it must be examined whether the Board of Appeal could reasonably conclude that genuine use of the contested mark in respect of the goods in Class 17 had been proved.
35 In the present case, in the first place, it must be pointed out that, as the application for revocation of the contested mark was filed on 9 September 2010, the five-year period referred to in Article 51(1)(a) of Regulation No 207/2009 runs, as the Board of Appeal rightly stated, from 9 September 2005 to 8 September 2010 (‘the relevant period’).
36 In the second place, it must be borne in mind that the items of evidence provided by Recticel to prove genuine use of the contested mark consisted mainly of advertising material, of invoices for the purchase of such advertising material and of the declaration of an external auditing undertaking attesting to the turnover resulting from the sale of the goods at issue. The evidence in question includes, inter alia:
– a brochure in Polish, with a translation into English, presenting Recticel’s goods (insulating materials for building), which refers, on the first page, to the contested mark and Recticel’s website and, in the following pages, to the different goods sold under the Community word marks EUROFLOOR, EUROWALL, POWERDECK, POWERROOF, EUROTHANE Bi-3 and EUROTHANE G, in which the first letter ‘o’ has been replaced by the contested mark. The brochure is not dated but is linked to an invoice bearing the date 27 April 2010;
– advertisements from various magazines — some of which date from various periods included in the relevant period and some of which are not dated, but are linked to invoices which are — representing certain insulating materials sold, for example, under the mark POWERDECK or the mark EUROTHANE in which the first letter ‘o’ has been replaced by the contested mark;
– a picture of a stand at a fair, featuring a sticker representing the contested mark, which is attached to an invoice with a date, and a picture of a catalogue in binder form, featuring the word marks EUROWALL, POWERDECK, POWERROOF and EUROTHANE, in which the first letter ‘o’ has been replaced by the contested mark and which is linked to an invoice with a date;
– pictures of banners displaying, first, the contested mark and Recticel’s website and, secondly, the word marks in which the first letter ‘o’ has been replaced by the contested mark, and representing insulation boards;
– a declaration from the external auditing undertaking D. attesting to the turnover relating to the insulating products sold in Poland in 2008, 2009 and 2010 under the various word marks referred to above that incorporate the contested sign, which shows a total of more than EUR 2 million in 2008, almost EUR 1.5 million in 2009 and almost EUR 2.5 in 2010.
37 In the third place, as stated in paragraph 16 above, the applicant disputes the evidential value of most of those items of evidence on the ground that, taken individually, they cannot prove use of the contested mark in respect of the goods in Class 17 during the relevant period, because none of those items of evidence contains a reference to the goods at issue, a date or a representation of the contested mark itself.
38 As regards the evidential value of the items of evidence provided by Recticel, it is apparent from the case-law referred to in paragraphs 22 to 25 above that, as OHIM rightly states, they must be analysed as an accumulation of evidence which, as a whole, may make it possible to prove genuine use of the mark at issue. The Board of Appeal was therefore right to find that those items of evidence had to be assessed in conjunction with one another, rather than individually.
39 It follows from that that the fact that certain items of evidence do not individually contain information with regard to all the relevant aspects (the date, the goods, the volumes of sales, the contested mark) does not automatically deprive them of evidential value.
– The extent of use
40 The Court observes that the advertising material submitted by Recticel, examined as a whole, makes it possible to establish that the contested mark has been used to identify the origin of the insulating materials that Recticel produces under the word marks EUROFLOOR, EUROTHANE, EUROWALL, POWERDECK, POWERLINE and POWERROOF and therefore to guarantee the identity of the origin of the goods for which the contested mark is registered, which is the essential function of a mark in accordance with the case-law referred to in paragraph 21 above.
41 In that regard, it may be pointed out that the use of a reproduction of the contested mark in advertising carried out by means of the specialist press, on banners and in the context of a fair shows that it has been used outwardly for the purposes of the case-law referred to in paragraph 21 above.
42 Furthermore, it must be stated that the contested sign appears on most of the advertising material in association with the other word marks or other word marks in which the first ‘o’ has been replaced by the contested mark — which are also registered in the name of Recticel — on Recticel’s website and on pictures of the goods at issue.
43 That finding is not invalidated by the fact that some of the advertising material provided as evidence has no date.
44 First, it must be pointed out that the invoices relating to the purchase of that material make it possible to link that material to a date, even though that date is approximate.
45 The fact that some items of evidence are not dated does not affect their evidential value in so far as they are linked to other evidence, in the present case the invoices, which date from the relevant period. In any event, as OHIM rightly points out, even taking into account only the advertisements which are dated, it is possible to conclude that the contested mark was put to use between February 2009 and October 2010.
46 Secondly, it is apparent from the case-law that the affixing of a trade mark on a magazine, periodical, review, journal or catalogue is in principle capable of constituting ‘valid use of the sign’ as a trade mark for the goods and services designated by that mark, if the content of those publications confirms the use of the sign for goods and services covered by the mark in question (judgment of 5 October 2010 in Strategi Group v OHIM — RBI (STRATEGI), T‑92/09, EU:T:2010:424, paragraph 32).
47 As regards the applicant’s claim, made for the first time at the hearing, by which it appears to wish to maintain that proof of use has been furnished only in respect of some of the insulation boards in Class 17 and in particular in respect of insulation boards made of foam, it is sufficient to point out that the applicant does not establish that its claim is true or explain how such materials constitute a sub-category which is sufficiently independent, coherent and distinct (see, to that effect and by analogy, judgment of 14 July 2005 in Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, ECR, EU:T:2005:288, paragraph 46) for the proof of use to afford protection only for the sub-category to which the goods for which the mark has actually been used belong (see, to that effect and by analogy, judgment in ALADIN, EU:T:2005:288, paragraph 45).
48 Furthermore, the Board of Appeal was right to find that the goods at issue had been marketed under the contested mark. It could legitimately reach such a conclusion even though there were no invoices proving the sale of those goods, on the basis of the declaration of the external auditing undertaking D. which attests that they were sold by Recticel, during the relevant period, in the European Union in volumes which are not too small or minimal, according to the case-law referred to in paragraphs 31 to 33 above. It must be borne in mind in that regard that that declaration was the outcome of a check which the external auditing undertaking D. carried out on a sample of randomly selected invoices relating to the relevant period. Furthermore, the result was compared with the turnover in Recticel’s accounting software.
49 That conclusion is not invalidated by the applicant’s argument alleging that that declaration refers only to the word marks which are also registered in the name of Recticel and not to the contested mark.
50 Notwithstanding that claim by the applicant, the fact remains that that declaration establishes that the goods in question were marketed in the course of the relevant period and, consequently, the extent of use of the contested mark, with the result that it constitutes an item of evidence which is relevant, in conjunction with the other evidence, within the context of an accumulation of evidence, in accordance with the case-law cited in paragraphs 22 to 25 above.
51 First, it must be held that that declaration retains its evidential value, like the invoices on the basis of which it was drawn up, in respect of which it has been held that the absence of a reference to the contested mark among the information which those invoices contain does not establish that those invoices are irrelevant for the purposes of proving genuine use of that mark (see, to that effect, judgment in LA MER, cited in paragraph 29 above, EU:T:2007:299, paragraph 65; judgment of 24 May 2012 in TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, EU:T:2012:263, paragraph 60; and judgment of 27 February 2014 in Advance Magazine Publishers v OHIM — López Cabré (TEEN VOGUE), T‑37/12, EU:T:2014:96, paragraph 50).
52 Secondly, as is the case for the other items of evidence submitted by Recticel, the declaration of the external auditing undertaking D., although it does not provide information about all the relevant elements in question, may be taken into account by the court in the context of the assessment of the accumulation of evidence. In that context, that declaration makes up for the lack of other evidence as regards the marketing of the goods promoted by Recticel under the contested sign in association with its other word marks or other word marks in which the first ‘o’ has been replaced by the contested mark.
53 In so far as the applicant disputes the admissibility of that declaration as evidence which was submitted out of time, reference should be made to paragraphs 63 to 70 below.
54 In the light of the foregoing considerations, it must be held that the extent of use of the contested mark has been proved in the present case.
– The nature of the use
55 In so far as the applicant disputes the relevance of the evidence referring to the word marks in which the first letter ‘o’ has been replaced by the contested mark, it must be pointed out that, in accordance with the case-law referred to in paragraphs 27 to 30 above, the use of an earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered may be taken into account in order to ascertain whether the condition of genuine use is satisfied.
56 In the first place, the use of the word marks in question in which the contested figurative mark is incorporated reflects the commercial need of being able to refer to that mark orally without its losing its distinctive and recognisable character.
57 In the second place, it must be pointed out that the contested mark is not altered when it is used in the word marks referred to in paragraph 36 above. It does not lose its distinctive character since it is rather a juxtaposed element, which is substituted for a letter, retains its independence and does not constitute a unit in connection with those other marks. The fact that the Greek letter lambda is used in the field of physics to refer to thermal conductivity does not in any way detract from the distinctive character of the mark as that mark consists of a figurative sign made up of that letter — as it appears in the Greek alphabet — in white written in a red circle, which replaces the letter ‘o’ and which also confers enhanced distinctiveness on the word marks of which it is part.
58 In the third place, it must be pointed out that the contested mark is sometimes used on its own and sometimes as an element which is part of the word marks referred to in paragraph 16 above (paragraph 24 of the contested decision).
59 In the fourth place and in any event, the case-law has clarified the fact that the condition of genuine use may be satisfied even where a registered trade mark, which has become distinctive as a result of the use of another composite mark of which it constitutes one of the elements, is used only through that other mark and the combination of those two marks is, furthermore, itself registered as a trade mark (see, by analogy, judgments in Colloseum Holding, cited in paragraph 30 above, EU:C:2013:253, paragraph 36, and Specsavers International Healthcare and Others, cited in paragraph 30 above, EU:C:2013:497, paragraph 26).
60 It is apparent from the foregoing that, contrary to what the applicant claims, the Board of Appeal was right to find, in paragraphs 24 to 27 of the contested decision, that the use of the word marks with the first ‘o’ replaced by the contested mark, referred to in paragraph 36 above, could prove genuine use of the contested mark.
61 That finding cannot be called into question by the applicant’s argument that the contested mark has no dominant character in the word marks in which it is incorporated, since the only decisive factor, in accordance with the case-law referred to in paragraph 30 above, is that the composite mark may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking. Likewise, in accordance with that case-law, the applicant’s claim that the main point is to determine whether customers will understand the use of the contested mark within other trade marks as use of that mark as such or as use of all the other trade marks is also irrelevant.
The taking into account of the evidence submitted out of time
62 The applicant disputes that the declaration of the external auditing undertaking D. may be taken into account, since it was provided after the expiry of the time-limit set by OHIM, and maintains that, in the absence of such evidence, the other items of evidence provided do not show the extent of use.
63 Under Article 57(1) of Regulation No 207/2009, which concerns the examination of the application for revocation of rights, OHIM is to invite the parties, as often as necessary, to file observations, within a period to be fixed by OHIM, on communications from the other parties or issued by itself.
64 In addition, Article 76(2) of Regulation No 207/2009 provides that OHIM may disregard facts or evidence which are not submitted in due time by the parties concerned.
65 As the Court has found, it follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of Regulation No 207/2009 and that OHIM is in no way prohibited from taking account of facts and evidence which are thus submitted or produced late (judgment of 13 March 2007 in OHIM v Kaul, C‑29/05 P, ECR, EU:C:2007:162, paragraph 42).
66 In stating that OHIM ‘may’, in such a case, decide to disregard such evidence, Article 76(2) of Regulation No 207/2009 grants OHIM a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take that evidence into account (judgment in OHIM v Kaul, cited in paragraph 65 above, EU:C:2007:162, paragraph 43).
67 Admittedly, it follows from the wording of Rule 40(5) of Regulation No 2868/95 that, if no proof of genuine use of the mark concerned is provided within the time-limit set by OHIM, OHIM must revoke that mark. Such a conclusion is not, on the other hand, inevitable if proof of that use has indeed been provided within that time-limit (judgment of 26 September 2013 in Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 86).
68 In the present case, it is common ground that Recticel submitted relevant items of evidence within the time-limit set by OHIM. However, after receiving the applicant’s observations in which the applicant took the view that that evidence was insufficient to prove genuine use of the contested mark, OHIM, on 8 July 2011, gave Recticel the opportunity to file its observations with regard to the applicant’s position within the following two months, namely, before 8 September 2011. On that date, Recticel submitted its observations and provided additional evidence which was taken into account by the Cancellation Division.
69 It follows inter alia from the foregoing that it remains possible to submit evidence of use of the mark, in addition to the evidence provided within the time-limit set by OHIM pursuant to Rule 40(5) of Regulation No 2868/95, after the expiry of that time‑limit and that OHIM is in no way prohibited from taking into account additional evidence which is submitted out of time (judgment in Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, cited in paragraph 67 above, EU:C:2013:593, paragraph 88).
70 Consequently, the Board of Appeal could legitimately take into consideration the evidence which Recticel provided out of time.
71 It follows from all of the foregoing that the Board of Appeal was right, on the basis of the items of evidence correctly taken into account, to reject the application for revocation of the contested mark as regards the goods in Class 17.
72 The first plea must therefore be rejected.
The second plea, alleging infringement of the second sentence of Article 75 of Regulation No 207/2009
73 The applicant claims that OHIM, after accepting evidence submitted by Recticel out of time, did not permit the applicant to submit its observations on that evidence, which constitutes a procedural infringement and an infringement of the second sentence of Article 75 of Regulation No 207/2009. Furthermore, it complains that the Board of Appeal, after finding that there had been such an infringement, did not remit the case to the Cancellation Division, thus depriving it of the opportunity to put forward its arguments in respect of the documents submitted and of the benefit of two tiers of appeal against a decision based mainly on those documents.
74 OHIM disputes those arguments.
75 As stated in paragraph 68 above, it is common ground that on 8 September 2011, following a communication from OHIM informing it that the applicant did not regard the evidence submitted initially as sufficient to prove genuine use of the contested mark and requesting that it submit its observations, Recticel submitted further proof of genuine use of the contested mark after the expiry of the first time-limit set by OHIM. It is also common ground that on 16 September 2011, OHIM merely informed the applicant of the submission of additional evidence, explaining that no further observations could be submitted.
76 Under Article 75 of Regulation No 207/2009, decisions of OHIM are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. Consequently, OHIM, by depriving the applicant of the opportunity to submit its observations on the additional evidence that it had accepted, committed a procedural irregularity, which was, moreover, admitted in paragraph 10 of the contested decision.
77 However, it must be pointed out that, pursuant to Article 65(1) of Regulation No 207/2009, actions may be brought before the Courts of the European Union only against decisions of the Boards of Appeal. It must accordingly be held that it is only pleas directed against the decision of the Board of Appeal itself which are admissible in such an action (judgment of 7 June 2005 in Lidl Stiftung v OHIM — REWE-Zentral (Salvita), T‑303/03, ECR, EU:T:2005:200, paragraph 59).
78 It follows that the present plea is inadmissible because the procedural irregularity, which affected the Cancellation Division’s decision, cannot be invoked before the Court.
79 In any event, as was rightly pointed out by the Board of Appeal, as well as by OHIM in the response, such a procedural irregularity could entail the annulment of a decision in whole or in part only if it were shown that, had it not been for that irregularity, the decision might have been substantively different (see, to that effect, judgment of 8 June 2005 in Wilfer v OHIM (ROCKBASS), T‑315/03, ECR, EU:T:2005:211, paragraph 33 and the case-law cited).
80 However, the applicant was able to submit its observations on that evidence before the Board of Appeal which duly took them into consideration before adopting the contested decision. Consequently, in accordance with the principle of functional continuity, the Board of Appeal was able to correct that irregularity (see, in respect of the principle of functional continuity between the examiner and the Boards of Appeal, judgments of 16 February 2000 in Procter & Gamble v OHIM (Shape of a soap), T‑122/99, ECR, EU:T:2000:39, paragraph 27, and 5 June 2002 in Hershey Foods v OHIM (Kiss Device with plume), T‑198/00, ECR, EU:T:2002:140, paragraph 25). It has not therefore been shown that, had it not been for that procedural irregularity the decision might have been substantively different.
81 Consequently, the second plea must be rejected as inadmissible and the action must be dismissed in its entirety.
Costs
82 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Deutsche Rockwool Mineralwoll GmbH & Co. OHG to pay the costs.
Delivered in open court in Luxembourg on 15 July 2015.
[Signatures]