JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
8 October 2014 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark FAIRGLOBE — Earlier national word marks GLOBO — Relative ground for refusal — No proof of genuine use of the earlier marks — Article 42(2) and (3) of Regulation (EC) No 207/2009 — Rule 22(3) and (4) of Regulation (EC) No 2868/95)
In Case T‑300/12,
Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented by M. Wolter and A. Berger, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
A Colmeia do Minho Ldª, established in Aldeia de Paio Pires (Portugal),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 2 April 2012 (Case R 1981/2010-2) concerning opposition proceedings between A Colmeia do Minho Ldª and Lidl Stiftung & Co. KG,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,
Registrar: S. Bukšek Tomac, Administrator,
having regard to the application lodged at the Court Registry on 9 July 2012,
having regard to the response lodged at the Court Registry on 15 November 2012,
having regard to the reply lodged at the Court Registry on 5 March 2013,
having regard to the rejoinder lodged at the Court Registry on 2 May 2013,
further to the hearing on 11 June 2014,
gives the following
Judgment
Background to the dispute
1 On 8 May 2008, the applicant, Lidl Stiftung & Co. KG, filed an application for registration of a Community trade mark at 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 The mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration was sought are in Classes 29 and 30 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 29: ‘Meat, fish, poultry and game, including the aforesaid goods frozen; meat products and charcuterie; meat extracts; shellfish; preserved, dried and cooked fruits and vegetables, including the aforesaid goods in sweet and/or sour (pickled) sauces; jellies; jams, marmalade; eggs, milk and milk products included in Class 29, mixed milk beverages with a high milk content; meat, sausage, fish, fruit and vegetable preserves; processed nuts; edible oils and fats; prepared meals and frozen meals included in Class 29; dietetic substances and foodstuffs, not adapted for medical use, included in Class 29’;
– Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; coffee, tea, cocoa or chocolate-based drinks; cappuccino coffees; coffee and cocoa preparations for making alcoholic and non-alcoholic beverages; flour and preparations made from cereals; bread, pastry and confectionery; sugar confectionery, chocolate and chocolate products; edible ices; honey, treacle; yeast, baking powder, starch for food; salt; mustard; mayonnaise, ketchup; vinegar, sauces (condiments), salad dressings; spices; prepared meals and frozen foodstuffs included in Class 30; dietetic substances and foodstuffs, not adapted for medical use, included in Class 30’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 29/2008 of 21 July 2008.
5 On 20 October 2008, A Colmeia do Minho Ldª (‘the opponent’) gave notice of opposition under Article 41 of Regulation No 207/2009 to registration of the mark applied for, in particular, in respect of goods referred to in paragraph 3 above.
6 The opposition was based, inter alia, on the following earlier national marks:
– Portuguese word mark GLOBO, registered on 3 June 1996 under number 311549 for goods in Class 29 and corresponding to the following description: ‘Jams, marmalade, confectionary products and fruit sauces’;
– Portuguese word mark GLOBO registered on 15 February 2001 under number 337398, inter alia, for goods in Classes 29 and 30, and corresponding, for each of those classes, to the following description:
– Class 29: ‘Preserved meat, preserved fish and preserved vegetables; concentrates, pulps of puréed fruit and vegetable; potato flakes and mashed potatoes; food jellies; palm oil and pulp; salted snacks; ready-made and pre-cooked meat, fish and vegetable dishes’;
– Class 30: ‘Sauces, condiments, including coconut milk, masses of cereals and derivatives, corn and cereal flakes for breakfast; manioc meal; pastilles, confectionary bars, sweets, chocolates, pralines, preparations covered in sugar or chocolate; food flavourings, sugar syrup, liquid caramel, powdered and granulated chocolate; ready meals made with brown sugar and pre-cooked cereal dishes; desserts (prepared and not included in any other class)’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8 At the applicant’s request, the opponent was required to provide proof of genuine use of the earlier trade marks for the goods in respect of which the earlier marks were registered and on which the opposition was based.
9 By letter of 14 January 2010, OHIM requested that the opponent provide that proof within a period of two months, that is to say by 15 March 2010 at the latest. On 18 February 2010, the opponent replied to OHIM indicating that, for the purposes of proof of genuine use of its earlier trade marks, OHIM should refer to the documents which the opponent had submitted in its observations dated 17 November 2009, consisting of a set of six invoices.
10 On 1 October 2010, the Opposition Division upheld the opposition in part. It found that genuine use of the earlier trade marks had been established for some of the goods referred to in paragraph 6 above and that there was a likelihood of confusion between those marks and the mark applied for concerning the goods at issue which were identical or similar. The opposition was rejected for the remaining goods.
11 On 12 October 2010 the applicant filed an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against the opposition decision.
12 By decision of 2 April 2012 (‘the contested decision’), the Second Board of Appeal of OHIM granted the appeal in part.
13 First, as regards proof of genuine use of the earlier marks, the Board of Appeal found that, by producing six invoices containing references to the word sign GLOBO, the opponent had demonstrated to the requisite legal standard that those earlier marks had been put to genuine use in Portugal. Essentially it found that invoices were a common and reliable means of proof, and that those submitted by the opponent in the present case gave an indication of the intensity of use; thus the sales figures contained in those invoices had to be regarded as sufficient for the purposes of proof of genuine use. However, the Board of Appeal found that that proof concerned only the following goods: ‘[j]ams, marmalade, confectionary products and fruit sauces’ and ‘[p]reserved vegetables; pureed fruit pulps; potato flakes; food jellies; salted snacks; ready-made and pre-cooked meat dishes’ in Class 29, and ‘[c]ondiments, including coconut milk, granulated chocolate’ in Class 30.
14 Secondly, concerning the assessment of the existence of a likelihood of confusion, the Board of Appeal found essentially that, having regard to the average level of attention of consumers towards the consumer goods in question, the marks at issue presented some degree of visual similarity, a low degree of phonetic similarity and a clear conceptual similarity for a significant part of the relevant public for whom the term ‘fair’ has no meaning. After stating that the distinctiveness of the earlier marks was normal, the Board of Appeal thus concluded that there was a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009 for the goods at issue which were identical and for those which presented a degree of similarity that was at least medium, that is to say: ‘[p]reserved, dried and cooked fruits and vegetables, including the aforesaid goods in sweet and/or sour (pickled) sauces; jellies; jams, marmalade; fruit and vegetable preserves; processed nuts; edible oils and fats’ in Class 29, and ‘[c]offee, cocoa; artificial coffee; coffee, cocoa or chocolate-based drinks; cappuccino coffees; coffee, cocoa and chocolate preparations for making alcoholic and non-alcoholic beverages; confectionary; sugar confectionery, chocolate and chocolate products; edible ices; mustard; mayonnaise, ketchup; vinegar, sauces (condiments), salad dressings; spices; dietetic substances and foodstuffs, not adapted for medical use, included in Class 30’ in Class 30.
Forms of order sought
15 The applicant claims that the Court should:
– annul the contested decision in so far as it upheld the opposition;
– order OHIM to pay the costs;
– order the opponent to pay the costs of the proceedings before OHIM.
16 OHIM contends that the Court should:
– dismiss the action for annulment in its entirety; and
– order the applicant to pay the costs incurred by OHIM.
17 At the hearing of 11 June 2014, in response to a question put by the Court, the applicant amended its last head of claim to the effect that the opponent should be ordered to pay the costs of the proceedings before OHIM, restricting it to the costs incurred in the proceedings before the Board of Appeal.
Law
18 In support of its action, the applicant puts forward two pleas in law, alleging, in essence, first, infringement of Article 42(2) and (3) of Regulation No 207/2009 in conjunction with Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), and, second, infringement of Article 8(1)(b) of Regulation No 207/2009.
19 As regards the first plea, the applicant criticises the Board of Appeal for having found that genuine use of the earlier marks had been proven. In its opinion, the evidence provided by the opponent falls short of the standard of proof required to demonstrate genuine use.
20 OHIM disputes the applicant’s arguments.
Outline of the general principles established by the case-law
21 It must be noted that, under Article 42(2) of Regulation No 207/2009, if the applicant for registration of a trade mark so requests, the proprietor of an earlier Community trade mark — or, under Article 42(3), the proprietor of an earlier national trade mark — who has given notice of opposition must furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier trade mark has been put to genuine use in the European Union or in the Member State in which it is protected, in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, 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 that effect, the opposition will be rejected. If the earlier mark has been used only in relation to part of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered only in respect of that part of the goods or services.
22 In accordance with settled case-law, the ratio legis of the requirement that the earlier mark must have been put to genuine use (or, if not used, that there be a proper economic reason for the non-use relating to its actual function on the market) if it is to be capable of being relied upon in opposition to a Community trade mark application is to restrict the number of conflicts that could arise between two marks (see, to that effect, judgment of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, ECR, EU:T:2004:225, paragraphs 36 to 38, and judgment of 30 November 2009 in Esber v OHIM — Coloris Global Coloring Concept (COLORIS), T‑353/07, ECR, EU:T:2009:475, paragraph 20).
23 Furthermore, under Rule 22(3) of Regulation No 2868/95, proof of use must relate to the place, time, extent and nature of use of the earlier mark.
24 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 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).
25 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 exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned in order to maintain or create market share 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 in VITAFRUIT, cited in paragraph 22 above, EU:T:2004:225, paragraph 40, and judgment in COLORIS, cited in paragraph 22 above, EU:T:2009:475, paragraph 22).
26 In order to examine whether use of the earlier trade mark is genuine, an overall assessment must be carried out which takes account of all the relevant factors in the particular case. That assessment implies a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be offset by a high intensity or a certain constancy over time in the use of that trade mark or vice versa. In addition, the turnover and volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be assessed 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 market concerned. Accordingly, use of the earlier mark need not always be quantitatively significant in order for it to be deemed genuine (judgment of 8 July 2004 in MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, ECR, EU:T:2004:223, paragraph 36; see also, to that effect and by analogy, judgment in Ansul, cited in paragraph 22 above, EU:C:2003:145, paragraph 39).
27 However, the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the party opposing new registration to produce additional evidence to dispel possible doubts as to the genuineness of the use of the mark in question (judgment in HIPOVITON, cited in paragraph 22 above, EU:T:2004:223, paragraph 37).
28 Furthermore, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (judgment of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 28, and judgment in COLORIS, cited in paragraph 22 above, EU:T:2009:475, paragraph 24).
29 The question whether the Board of Appeal was right to find that the evidence provided by the opponent demonstrated, to the requisite legal standard, genuine use of the earlier marks for the goods in question must be examined in the light of the above considerations.
Preliminary observations
30 It should first be observed that, since the applicant’s Community trade mark application was published on 21 July 2008, the period of five years referred to in Article 42(2) of Regulation No 207/2009 extends from 21 July 2003 until 20 July 2008 (‘the relevant period’). Since the earlier marks are national marks, the relevant territory for the purposes of proof of genuine use is limited to that of the Member State where they are protected, that is to say, Portugal.
31 In its observations dated 17 November 2009 (see paragraph 9 above), the opponent produced six invoices (‘the six invoices’) before the Opposition Division, that is to say:
– invoices FT0100713 and FT010716, of 21 April 2006;
– invoices FT0100489 and FT0100495, of 15 January 2007;
– invoice FT0100689, of 25 January 2008;
– invoice FT0100972, of 4 February 2008.
32 It is not in dispute that only these six invoices were produced. The Court notes that, in the proceedings before OHIM, the opponent, in spite of the letter which OHIM sent to it on 14 January 2010 (see paragraph 9 above), did not send any other document, and so proof of genuine use of the earlier marks is based solely on the six invoices referred to above.
The probative value of the six invoices
The recipient of the six invoices
33 The applicant claims that the six invoices are all addressed to the same customer about whom the opponent has provided no information.
34 OHIM disputes the applicant’s argument.
35 It must be stated, as OHIM essentially claims, that that argument has no factual basis. It is clear from the observations which the opponent submitted to OHIM in the action before the Board of Appeal that that customer is a subsidiary of the Auchan Group which then resells the products in question to shops belonging to that group established in a number of towns in Portugal.
36 In addition, the fact that in the present case proof of use of the earlier trade mark was established only for the sale of goods intended for a single customer does not a priori preclude the use being genuine (see judgment of 11 May 2006 in Sunrider v OHIM, C‑416/04 P, ECR, EU:C:2006:310, paragraph 76 and the case-law cited).
The legibility of the six invoices
37 The applicant claims that the fact that the six invoices are not legible puts in question the reliability of the information which they contain.
38 OHIM disputes the applicant’s arguments and, inter alia, claims that it is still possible, with the necessary magnification, to discern the relevant information about the six invoices.
39 In that regard, it is necessary to highlight the low level of intelligibility of those invoices. The Board of Appeal itself, in paragraph 23 of the contested decision, notes that the six invoices contain amounts that are ‘approximate’ and ‘very difficult to decipher’. At the hearing, OHIM also accepted that those invoices were ‘hardly legible’.
40 It is clear, furthermore, from the analysis of the documentation contained in the OHIM file forwarded to the Court that the six invoices were accompanied by translations that were incomplete. Those translations merely identify the goods covered by the transactions and do not include the sales figures, about which no information can thus be discerned.
41 It follows that the amounts of the sales appearing in the originals of the six invoices are cited by the parties as they identified them, and the Court points out that it cannot verify those figures.
Extent of use
42 The applicant claims that the evidence of the extent of use must be provided for each product covered by the earlier marks. The Board of Appeal wrongly found that the sales of the various goods could be aggregated until a minimum acceptable volume of sales has been reached in order to demonstrate genuine use. The evidence provided, therefore, makes it possible only to make conjectures of little probative value concerning both the commercial value and the frequency of the sales.
43 OHIM disputes the applicant’s arguments. It claims that the Board of Appeal could carry out an examination of the extent of use by taking into account the product categories. In that regard, it states that a sufficient volume of sales for the categories of goods in question was found by the Board of Appeal, supporting its argument with the amounts of the sales taken from the six invoices. Furthermore, whilst the sales figures may be relatively low, they are counterbalanced by various factors, in particular the fact that the figures are merely illustrative of the actual amounts of the sales. According to OHIM, it can be concluded that the use in the present case is not merely token but is objectively such as to create or preserve an outlet for the goods.
44 It must be noted that the total amount of the six invoices, which comes to EUR 44 000 (see paragraph 20 of the contested decision), is not the relevant amount to be taken into account in the present case, since the items appearing in the six invoices do not all refer to the sign GLOBO, as was confirmed by the parties at the hearing. It is therefore necessary to refer to the amounts of the sales of the items which refer to the sign GLOBO in their description, as the Board of Appeal itself found in paragraph 23 of the contested decision.
45 First, it must be observed, as the applicant argues, that the Board of Appeal was wrong merely to rely, as is apparent from paragraph 23 of the contested decision, on the total amounts of the invoices (such as EUR 8 300, EUR 2 000 and EUR 3 900) corresponding to the aggregation of the sales figures for all the items referring to the sign GLOBO that were specified in each invoice.
46 In that regard, it must be noted that, in certain circumstances, the Board of Appeal is indeed not obliged to require proof of use for all the goods within the same category or subcategory of goods.
47 According to the case-law, it follows from Article 42(2) and (3) of Regulation No 207/2009 that, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection in opposition proceedings only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. On the other hand, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for those goods or services necessarily covers the entire category for the purposes of the opposition (judgment of 14 July 2005 in Reckitt Benckiser (Spain) v OHIM — Aladin (ALADIN), T‑126/03, ECR, EU:T:2005:288, paragraph 45, and judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 23). In that regard, it should be observed that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (see, to that effect, judgments in ALADIN, EU:T:2005:288, paragraph 46, and RESPICUR, EU:T:2007:46, paragraph 24).
48 That case-law therefore permits the conclusion that proof of genuine use for goods coming within a coherent and homogeneous category can be regarded as covering the whole of that category. In the present case, it must be observed that a number of coherent and homogeneous categories or subcategories of goods can be identified within the list of goods covered by the earlier marks, and proof of genuine use must be provided for each of them through sales figures relating to the relevant goods in those categories or subcategories.
49 As has been stated in paragraph 45 above, the Board of Appeal took into account the total amounts of each invoice corresponding to the aggregation of the sales figures for all the items referring to the sign GLOBO, even though the goods referred to in those invoices did not all come within the same coherent and homogeneous category of goods. In particular, it is clear from the partial translation of invoice FT0100495, whose total amount of EUR 8 300 is cited by the Board of Appeal in paragraph 23 of the contested decision, that the goods listed in that invoice are preserved vegetables or fruits, but also, by way of example, food jelly and granulated chocolate. However, those goods do not come within the same categories of goods, nor even within the same classes of goods. Furthermore, the Board of Appeal appears to have also taken into account products such as vanilla sugar and sodium bicarbonate which, whilst they appear on the invoice accompanied by the sign GLOBO, do not, however, come within the list of goods for which the Board found that genuine use had been demonstrated (see paragraph 13 above).
50 It follows that the Board of Appeal should have taken account of the sales figures relating to the relevant goods coming within a coherent and homogeneous category or subcategory instead of referring to the sum resulting from the sale of all the goods coming under the sign GLOBO in each of the six invoices.
51 That constitutes an error which vitiated its reasoning concerning the examination of the extent of use.
52 Secondly, it must be noted that, even if the Court took account of the detailed sales figures relating to the categories and subcategories of goods, as OHIM claims in its response, those figures amount only to hundreds of euros for each product.
53 It is clear from the case-law cited in paragraph 26 above that, although use does not have to be quantitatively significant in order for it to be deemed genuine, it must still be proved by use which objectively is such as to create or preserve an outlet for the goods. However, it must be stated that, in the present case, the sales figures are very low and are therefore not enough to exclude the possibility of use that is merely token.
54 In that regard, OHIM’s argument that the low amounts of the sales are explained by the fact that the invoices are merely illustrative of the actual commercial volume cannot be upheld.
55 Although a proprietor of an earlier mark cannot be required to provide proof of every transaction which took place under that mark during the relevant period of five years referred to in Article 42(2) of Regulation No 207/2009, it is nevertheless necessary for a proprietor relying on invoices as evidence to submit a quantity of examples which makes it possible to discount any possibility of merely token use of that mark and, consequently, is sufficient to prove that it has been genuinely used (see, to that effect, judgment of 16 January 2014, Aloe Vera of America v OHIM — Detimos (FOREVER), T‑528/11, ECR, EU:T:2014:10, paragraph 43).
56 In the present case, however, it must be stated that the opponent has not submitted a quantity of examples which makes it possible to discount any possibility of merely token use of those earlier marks. Furthermore, since the opponent has not submitted any other evidence, as was noted in paragraph 40 above, the low volume of sales in the six invoices cannot constitute conclusive evidence of use which is not minimal at the level of actual sales. The invoices are, therefore, not illustrative of actual amounts.
57 Moreover, it must be noted that, by the Board of Appeal’s own admission, the six invoices provide only a ‘prima facie’ indication (see paragraph 22 of the contested decision) of the intensity of use, even though, as stated in paragraph 28 above, in accordance with the case-law, genuine use could not be presumed.
58 It follows that, in the light of the observations made above concerning the Board of Appeal’s error of reasoning, the six invoices do not permit the conclusion that there is proof of a sufficient volume of use for the goods and categories of goods referred to in paragraph 13 above.
The overall assessment of the relevant factors in the present case
59 In accordance with settled case-law, as set out in paragraph 26 above, in order to examine the genuine nature of the use of the earlier mark, an overall assessment must be carried out which takes account of all the relevant factors in the present case. That assessment implies a degree of interdependence between the factors taken into account.
60 It is therefore necessary to examine whether the very small volume of sales of those goods under the earlier marks could be offset by other factors.
61 With regard to intensity or constancy over time, it must be noted that the six invoices concern sales which took place between the end of April 2006 and the start of February 2008.
62 Although OHIM claims that this demonstrates that the transactions had a degree of uniformity and regularity over time, it is important to note that the six invoices prove only four specific acts of use, bearing in mind that some transactions took place on the same day (see paragraph 31 above).
63 Since the six invoices prove only four specific acts of use over a period of 22 months, it cannot be concluded that there was high intensity or a certain constancy over time in the use of those marks.
64 With regard to the characteristics of the relevant market and the nature of the goods in question, it must be observed, first of all, that since most of the relevant products in the present case are consumer products, they are sold at a very moderate price. They are therefore not expensive luxury goods, sold in limited numbers in a narrow market, but goods to be sold to a large number of consumers throughout Portugal (see, to that effect, judgment of 30 April 2008 in Rykiel création et diffusion de modèles v OHIM — Cuadrado (SONIA SONIA RYKIEL), T‑131/06, ECR, EU:T:2008:135, paragraph 54).
65 Therefore, the nature of the goods in question cannot explain the low commercial volume demonstrated in the present case.
66 Next, with regard to the structure of the relevant market, the Court must reject the argument made by OHIM in its response and at the hearing, relying on that occasion on the judgment of 13 January 2011 in Park v OHIM — Bae (PINE TREE), T‑28/09, ECR, EU:T:2011:7, that the low commercial volume of goods examined by category is explained by the small size of the market, that is to say, the ethnic foods market.
67 It is not apparent from the list of relevant goods covered by the earlier marks, as it appears in paragraph 13 above, that they are only ethnic foods.
68 In that regard, as stated in paragraph 14 above, the Board of Appeal considered, after having found that the goods in question were consumer goods, that the targeted public in the present case was the general public in Portugal and it did not state that that public was restricted to a specific category of consumers.
69 Moreover, it must be noted that the opponent never claimed that the sale of its goods was directed towards a limited market for ethnic foods.
70 Furthermore, the contested decision makes no mention of any other relevant factor for the purposes of that overall assessment, and the six invoices provide no additional information in that regard.
71 While producing invoices may be an acceptable means of proving genuine use, as is apparent from Rule 22(4) of Regulation No 2868/95, it is nevertheless the case that the opponent chose only to produce six invoices for the purposes of proving genuine use of its earlier marks.
72 However, it is clear from the case-file in the proceedings before OHIM that the opponent had the opportunity to file further evidence concerning the genuine use of its marks. It must be observed that the additional evidence, which could have not only provided further information relating to the extent of the use of the earlier marks, but also substantiated the nature of that use, such as brochures, catalogues or advertising mentioning the goods covered by the earlier marks, is not of a kind which it would have been difficult for the opponent to obtain; nor has the opponent claimed that it was impossible to produce such evidence (see, to that effect, judgment of 18 January 2011 in Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, ECR, EU:T:2011:9, paragraph 51 and the case-law cited).
73 Furthermore, in accordance with the case-law cited in paragraph 27, given that the commercial volume of the exploitation of the mark was small, it was all the more necessary for the opponent to provide that additional evidence.
74 Finally, it must be observed that, despite what it claimed at the hearing, OHIM cannot rely on the 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, in which the Court found that the evidence presented in the proceedings before OHIM, and in particular nine invoices showing small amounts of sales, was sufficient to demonstrate genuine use of the earlier mark in question. Those invoices were not, unlike in the present case, the only means of evidence used, as the proprietor of the earlier mark had produced to the opposition division other evidence, including brochures, copies of packaging, a solemn declaration and reports on turnover. It is only in conjunction with that evidence that the invoices were regarded as being capable of demonstrating genuine use of the earlier mark, as is clear from paragraphs 67 and 76 of that judgment.
75 The criterion of the extent of use in the case which gave rise to that judgment was therefore assessed by linking the low commercial volume, shown in the invoices, with the other evidence, such as the price lists, the reports on turnover and the solemn declaration, and also by taking into account the fact that the invoices concerned small amounts sold to a number of distributers, which made it possible to put into perspective the small amount of the sales in comparison with, in particular, the frequency of those sales and their potential geographical scope.
76 Furthermore, as the applicant maintains, it is valid to refer to the judgment of 15 September 2011 in centrotherm Clean Solutions v OHIM — Centrotherm Systemtechnik (CENTROTHERM), T‑427/09, ECR, EU:T:2011:480, in which the Court found that invoices which showed only a low degree of use that was limited in time, even accompanied by other documents, admittedly of low probative value, did not enable the Board of Appeal to find that the evidence of genuine use was sufficient. It can be concluded, a fortiori, that in the present case the six invoices alone, demonstrating only four specific acts of use and a low volume of sales, respectively, for each coherent and homogeneous category of goods, do not make it possible to establish, to the requisite legal standard, the genuine nature of the use.
77 It follows from the foregoing that, in the present case, there is no factor, for the purposes of the case-law cited in paragraph 26, which makes it possible to offset the deficiencies of the six invoices as proof of genuine use of the earlier marks.
78 Thus, there is no need to rule on the applicant’s argument that the six invoices do not establish the nature of the use, since they do not demonstrate actual presence on the market of goods sold under the earlier marks, especially having regard to sales to a single business customer and therefore with no direct link to the end consumer, and it follows from all of the foregoing that the Board of Appeal erred in finding that proof of genuine use of the earlier marks had been provided by the opponent in the present case.
79 Accordingly, the first plea must be accepted and the contested decision must be annulled, and there is no need to examine the second plea put forward by the applicant.
Costs
80 Under Article 87(2) 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.
81 Since OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
82 So far as concerns the application by the applicant in relation to the costs of the proceedings before the Board of Appeal, it is for the Board of Appeal to rule on the costs relating to those proceedings in the light of the present judgment (see, to that effect, judgment of 5 December 2012 in Consorzio vino Chianti Classico v OHIM — FFR (F.F.R.), ECR, T‑143/11, EU:T:2012:645, paragraph 74).
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 2 April 2012 (Case R 1981/2010-2), concerning opposition proceedings between A Colmeia do Minho Ldª and Lidl Stiftung & Co. KG, in that it found that genuine use of the earlier marks had been demonstrated to the requisite legal standard;
2. Orders OHIM to bear its own costs and to pay those incurred by Lidl Stiftung & Co.
Delivered in open court in Luxembourg on 8 October 2014.
[Signatures]