JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
6 March 2014 (*)
(Community trade mark – Revocation proceedings – Community word mark ANNAPURNA – Application for annulment filed by the intervener – Article 134(1) to (3) of the Rules of Procedure of the General Court – Genuine use of the trade mark – Article 15(1)(a) and Article 51(1)(a) of Regulation (EC) No 207/2009 – Form of use of the trade mark – Proof of use for the registered goods)
In Case T‑71/13,
Anapurna GmbH, established in Berlin (Germany), represented by P. Ehrlinger and T. Hagen, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Annapurna SpA, established in Prato (Italy), represented by S. Verea, K. Muraro and M. Balestriero, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 3 December 2012 (Case R 2409/2011‑5), relating to revocation proceedings between Anapurna GmbH and Annapurna SpA,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude (Rapporteur), President, I. Wiszniewska-Białecka and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 7 February 2013,
having regard to the response of OHIM lodged at the Registry on 16 May 2013,
having regard to the response of the intervener lodged at the Registry of the General Court on 21 May 2013,
having regard to the decision of 15 July 2013 refusing leave to lodge a reply,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 18 April 2001, the intervener, Annapurna SpA, was granted registration of the word mark ANNAPURNA by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (’the mark at issue’), under 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)). That mark was registered under number 1368166.
2 The goods covered by the registration are in Classes 3, 18, 24 and 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 3: ‘Soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, bags, wallets, key‑cases, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;
– Class 24: ‘Textile and textile goods, not included in other classes; bed and table covers; household linen’;
– Class 25: ‘Clothing, footwear and headgear’.
3 On 9 April 2010, the applicant, Anapurna GmbH, submitted an application for revocation of the mark at issue under Article 51(1)(a) of Regulation No 207/2009. In that application, the applicant claimed that there was no genuine use of the mark at issue in the European Union for a continuous period of five years in respect of all the goods for which it had been registered.
4 By decision of 19 September 2011, the Cancellation Division declared the mark at issue to be revoked as regards the ‘soaps, perfumery, cosmetics, hair lotions, dentifrices’ in Class 3 and the ‘leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, bags, wallets, umbrellas, parasols and walking sticks; whips, harness and saddlery’ in Class 18. By contrast, it maintained the validity of the registration of the mark at issue in respect of the following goods:
– Class 3: ‘Essential oils’;
– Class 18: ‘Bags, key-cases, trunks and travelling bags’;
– Class 24: ‘Textile and textile goods, not included in other classes; bed and table covers; household linen’.
– Class 25: ‘Clothing, footwear and headgear’.
5 On 21 November 2011, the applicant lodged an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division in so far as that decision maintained the registration of the mark at issue in relation to the goods referred to in paragraph 4 above.
6 By decision of 3 December 2012 (‘the contested decision’), the Board of Appeal partially granted the appeal, by revoking the mark at issue in relation to the ‘essential oils’ in Class 3, the ‘key-cases, trunks and travelling bags’ in Class 18, the ‘textile and textile goods, not included in other classes; bed and table covers; household linen’ in Class 24 and the ‘footwear’ in Class 25. However, it maintained the registration of the mark at issue in relation to the following goods:
– Class 18: ‘Bags’;
– Class 24: ‘Bed covers and bed linen’;
– Class 25: ‘Clothing, slippers and headgear’.
7 In the contested decision, the Board of Appeal held, first, that the observations which the intervener claimed to have sent on 29 March 2012 were not admissible in so far as they had been received after 1 April 2012, which was the time-limit in accordance with Article 82(2) of Regulation No 207/2009. The Board of Appeal was not persuaded by the intervener’s explanations seeking to show that its observations had, in fact, been sent before that time-limit.
8 Since the mark at issue was registered on 19 April 2001, the Board of Appeal held in the contested decision that the five year grace period had expired by the time the application for revocation was submitted on 9 April 2010. Consequently, the Board of Appeal considered in the contested decision the evidence of use of the mark at issue relating to the period from 9 April 2005 until 8 April 2010 (‘the relevant period’).
9 After having specified in the contested decision the evidence submitted by the intervener before the Cancellation Division, the Board of Appeal held that that evidence concerned several Member States, including Germany, France and Italy, and that it all dated from the relevant period. The Board of Appeal also held, in relation to the nature of the use, that the use of the names ‘5+1_ANNAPURNA’ and ‘ANNAPURNAPULSE’ in a stylised form did not alter the distinctive character of the mark at issue and therefore constituted a use thereof.
10 As regards the extent of the use of the mark at issue, the Board of Appeal carried out an examination in the light of each of the classes of goods in relation to which that mark was registered. During that examination, it considered that the evidence of use showed genuine use of the mark at issue only in relation to the ‘bags’ in Class 18, the ‘bed covers and bed linen’ in Class 24 and the ‘clothing, slippers and headgear’ in Class 25.
Forms of order sought by the parties
11 The applicant claims that the Court should:
– annul the contested decision in so far as it maintained the registration of the mark at issue;
– order OHIM to provide all the evidence of use submitted by the intervener during the revocation proceedings before it;
– order the intervener to bear the costs incurred during the present proceedings and during the proceedings before the Board of Appeal.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– dismiss the action;
– confirm the contested decision in so far as it maintains the registration of the mark at issue;
– annul the contested decision in so far as the Board of Appeal refused to admit the comments submitted by the intervener at the stage of the appeal;
– order the applicant to pay the costs.
Law
14 First of all, it should be noted that OHIM submitted to the Registry of the Court the evidence of use of the mark at issue presented by the intervener during the revocation proceedings. The applicant was informed of that submission and the possibility to consult that evidence of use by letter of 16 October 2013. It follows that the request set out in the applicant’s second head of claim, on the basis of Article 64(3)(d) of the Rules of Procedure of the Court, has become devoid of purpose.
15 In support of the action, the applicant raises a single plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009. For that purpose, it submits that the intervener has failed to prove the place, duration and extent of the use which was made of the mark at issue in accordance with Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1).
16 Before examining the applicant’s arguments in support of its application for annulment of the contested decision, it is necessary to respond to the application for annulment made by the intervener on the basis of Article 134(3) of the Rules of Procedure of the Court.
The application for annulment of the contested decision presented by the intervener
17 The intervener contends that the observations which it submitted to the Board of Appeal were sent by telefax on 29 March 2012 and thus before the expiry of the time-limit on 1 April 2012 which had been set for it to present them. It requests the Court to annul the contested decision in so far as it declares those comments to be inadmissible.
18 The intervener states that it indeed sent its observations on 29 March 2012, and produces the copy of its fax transmission report and a copy of the transmission log of that machine between 21 March 2012 and 2 April 2012. It contends that the applicable legislation in no way requires transmission reports to state the number of the sender’s machine. Since it was thus certain that its comments had been sent before the time-limit, the intervener had no reason to request an extension to that period.
19 Finally, the intervener considers that the Board of Appeal was not entitled to maintain, in point 8 of the contested decision, that its comments did not add any new evidence to the proceedings. Such a claim is not substantiated and therefore infringes Article 75 of Regulation No 207/2009. That also constitutes unlawful behaviour and infringes the intervener’s rights of defence.
20 The applicant and OHIM did not make use of the possibility to present a statement in response to the claims made, on the basis of Article 134(3) of the Rules of Procedure, for the first time in the intervener’s response.
21 According to Article 134(3) of the Rules of Procedure, an intervener may, in its response, seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application and put forward pleas in law not raised in the application (see, also, Case C‑609/11 P Centrotherm Systemtechnik v centrotherm Clean Solutions [2013] ECR, paragraph 38).
22 Where an intervener has set out a head of claim seeking the annulment of a decision, in accordance with Article 134(3) of the Rules of Procedure, it should be noted that such an application must refer to an error in the contested decision which, in the particular circumstances of the present case, has an effect on a part of the wording of that decision. Where an error has not been capable of having a decisive effect regarding the outcome of the contested decision, the error is irrelevant and could not suffice to justify the annulment of the contested decision (see, to that effect, Case T‑301/01 Alitalia v Commission [2008] ECR II‑1753, paragraph 307, and the case-law cited).
23 In the present case, it is apparent from the last paragraph of point 8 of the contested decision that the Board of Appeal held, for the sake of completeness, that the intervener’s comments before the Board of Appeal merely responded to the applicant’s arguments against the annulment decision of the Cancellation Division and did not add any new evidence to the proceedings which could alter the facts, the body of evidence or the interpretation thereof already at its disposal. Even if that statement of reasons is brief, it should be noted, in contrast to the intervener’s arguments, that it nevertheless allows the Board of Appeal’s reasoning to be understood and it would be unreasonable to require the latter to provide a longer statement of reasons in the light of the nature of the intervener’s observations before the Board of Appeal. As the Board of Appeal pointed out in the contested decision, those observations presented no new evidence or arguments in relation to those already presented before the Cancellation Division. Therefore, the answer to the question whether the intervener’s observations were received before or after 1 April 2012 and therefore whether they were admissible or not, could not have influenced the outcome of the analysis made by the Board of Appeal of the genuine use of the mark at issue.
24 The intervener’s application for annulment is based therefore on an error which, in any event, could not influence the wording of the contested decision and must therefore be dismissed.
The application for annulment of the contested decision presented by the applicant
25 The single plea in law alleging infringement of Article 51(1)(a) of Regulation No 207/2009 concerning genuine use of the mark, put forward by the applicant consists, in essence, of three parts. First, the applicant maintains the wrongful assessment of the evidence relating to the place and duration of the use of the mark at issue. Secondly, it claims that the nature of the use was not consistent with the registered form of the mark at issue. Third, the use of the mark at issue was not demonstrated in relation to the goods in respect of which the registration of that mark was maintained in the contested decision and which are set out in paragraph 6 above.
26 The Court will examine those three parts in the light of the following rules and principles.
27 Article 51(1)(a) of Regulation No 207/2009 provides:
‘(1) The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to [OHIM] or on the basis of a counterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the 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 non-use … .’
28 According to the second paragraph of Article 15(1)(a) of Regulation No 207/2009, proof of genuine use of a trade mark also includes proof of its use in a form differing in ways which do not alter the distinctive character of the mark in the form in which it was registered.
29 According to Rule 22(3) of Regulation No 2868/95, which applies mutatis mutandis to revocation proceedings pursuant to Rule 40(5) of that regulation, evidence of use of a trade mark must concern the place, time, extent and nature of use of the trade mark (Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraph 37, and Case T‑325/06 Boston Scientific v OHIM – Terumo (CAPIO) [2008], not published in the ECR, paragraph 27).
30 To examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence of the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (VITAFRUIT, paragraph 42, and Case T‑334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 36).
31 Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (Case T‑39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II‑5233, paragraph 47, and Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 28).
– The wrongful assessment of the evidence relating to the place and duration of the use of the mark at issue
32 According to the applicant, the Board of Appeal failed to analyse specifically the evidence provided by the intervener. The Board of Appeal failed both to identify the place and duration of the use of the goods at issue and to check whether the mark at issue was affixed to that evidence.
33 OHIM and the intervener contest the applicant’s arguments.
34 First of all, it should be noted that the intervener submitted, during the procedure before OHIM, various items of evidence, such as invoices sent to distributors, newspaper and magazine clippings, photographs, labels and packaging, and that that evidence, taken as a whole, demonstrates the use of the mark at issue in the European Union. As the intervener points out, those hundreds of items of evidence are, in general, dated and show the use of the mark at issue throughout the relevant period. At issue are, in particular, invoices made available in Annex 2 of the evidence presented before OHIM from which it is apparent that the intervener sold goods to distributors not only in Italy but also in several other Member States, such as Belgium, Denmark, Germany, Greece, France, Lithuania, the Netherlands and Austria.
35 Next, with regard to the argument that the Board of Appeal was obliged to state, in the contested decision, the place and date of use of the mark at issue with respect to each item of evidence, it should be observed that that argument relates in fact to a failure to state reasons. In the present case, the Board of Appeal, during its analysis of the place and duration of the use of the mark at issue at point 18 of the contested decision, referred to all of the evidence presented to the Cancellation Division by the intervener and set out in point 17 of the contested decision. It follows that the Board of Appeal gave reasons for its conclusion.
36 As regards the question whether that statement of reasons must include an individual assessment of each item of evidence admitted by the Board of Appeal, OHIM correctly contends that such an analysis is not necessary, given that the question whether there has been genuine use of a mark must be assessed globally, taking into account all the available evidence (see, to that effect, VITAFRUIT, paragraphs 40 and 42, and Case T‑324/09 J & F Participações v OHIM – Plusfood Wrexham (Friboi) [2011], not published in the ECR, paragraphs 27 to 31).
37 In any event, all the invoices in Annex 2 of the evidence presented before OHIM contain the mark at issue affixed to the top of the page, are dated and state the goods sold and the address of the distributor concerned by the transaction.
38 The first part of the plea raised by the applicant must therefore be rejected as unfounded.
– The nature of the use of the mark at issue
39 The applicant claims that the use of the signs 5+1_ANNAPURNA and ANNAPURNAPULSE do not constitute use of the mark at issue within the meaning of the second paragraph of Article 15(1)(a) of Regulation No 207/2009. According to the applicant, those signs alter the distinctive character of the mark as it was registered. In the first sign, the element ‘5+1_’ is distinctive and attracts the attention of consumers more than the element ‘annapurna’ because it is at the beginning of the sign. As regards the second sign, the element ‘pulse’ adds a five‑letter word to the mark as it was registered and creates therefore a significant difference in the overall impression consumers have of the mark.
40 OHIM and the intervener contest the applicant’s arguments.
41 It should be noted that the majority of the evidence submitted to OHIM, such as the invoices in Annex 2 of the evidence presented before the latter, the newspaper and magazine clippings included in Annex 5 and the copies of advertisements in Annex 6, represent the mark at issue in its registered form. Consequently, even if it were accepted that the use of the signs 5+1_ANNAPURNA and ANNAPURNAPULSE is not consistent with the use of the mark at issue as it is registered, such an error on the part of the Board of Appeal cannot, in itself, lead to the annulment of the contested decision.
42 The second part of the present plea is therefore irrelevant and must be rejected.
– The use of the mark at issue in relation to the registered goods
43 The applicant maintains that the use of the mark at issue has not been demonstrated in relation to the ‘bags’, ‘bed covers and bed linen’ and ‘clothes, slippers and headgear’ in, respectively, Classes 18, 24 and 25. The Court will examine the applicant’s arguments in relation to each of those classes of goods in the following paragraphs.
44 Before carrying out that examination, it should be recalled, first, that a connection between the use of the mark at issue and the goods concerned can be established without it being necessary for the mark to be affixed on the goods (see, to that effect, Case C‑17/06 Céline [2007] ECR I‑7041, paragraphs 21 to 23, and Case T‑132/09 Epcos v OHIM – Epco Sistemas (EPCOS) [2010], not published in the ECR, paragraphs 38 to 40).
45 Secondly, although the probative value of an item of evidence is limited to the extent that, individually, it does not show with certainty whether, and how, the goods concerned were placed on the market, and although that item of evidence is therefore not in itself decisive, it may nevertheless be taken into account in the overall assessment as to whether the use is genuine. That is also the case, for example, where that evidence corroborates the other relevant factors of the present case (see, to that effect, Joined Cases T‑77/10 and T‑78/10 Certmedica International and Lehning entreprise v OHIM – Lehning entreprise and Certmedica International (L112) [2012], not published in the ECR, paragraphs 57 and 58).
– The ‘bags’ in Class 18
46 The applicant claims with regard to the ‘bags’ in Class 18 that the Board of Appeal could not establish genuine use by relying on several invoices which refer to leather bags with cashmere lining and woven bags. According to the applicant, despite photographs and statutory declarations, it is not certain that the bags have in fact been sold under the mark ANNAPURNA.
47 OHIM and the intervener contest the applicant’s arguments.
48 It should be observed that the mark at issue is affixed, in large letters and at the top of the page, on each of the invoices included in Annex 2 of the evidence presented before OHIM. Those invoices establish therefore a clearly visible connection between the mark at issue and the goods mentioned on the invoices, more than ten of which refer to the sale of bags. Furthermore, other items of evidence also refer to bags. Annex 4 of the evidence presented before OHIM includes, for example, lists of goods referring ten times to bags, and six photographs of those articles. If it is the case that the probative value of that annex is limited, in so far as the photographs it includes are not dated and do not allow it to be concluded that there was in fact a sale of the photographed goods, it nevertheless confirms the finding resulting from the analysis of the invoices included in Annex 2 (see, to that effect, the case-law cited in paragraph 45 above). That is the case in relation to the pictures included in Annexes 5 and 6 of the evidence presented before OHIM. Those pictures, taken from fashion reviews, show bags of the mark ANNAPURNA.
49 It follows that the Board of Appeal was correct to hold that the use of the mark had been demonstrated in relation to the ‘bags’ in Class 18.
– The ‘bed covers and bed linen’ in Class 24
50 Concerning the ‘bed covers and bed linen’ in Class 24, the applicant puts forward arguments similar to those relating to the ‘bags’ in Class 18. The references in the invoices to woven blankets and throws and pillow knitwear do not suffice in order to prove that those goods were in fact sold under the mark at issue. In addition, the Board of Appeal erred in law by holding that there was genuine use of the mark at issue in relation to the ‘bed linen’ in Class 24, although that mark was never registered in relation to such goods.
51 OHIM and the intervener contest the applicant’s arguments.
52 In the first place, it should be noted that a large number of invoices included in Annex 2 of the evidence presented before OHIM refer to woven or knitted blankets and throws and pillow knitwear. As was stated in paragraphs 44 and 48 above, that evidence may suffice in order to demonstrate the use of the mark at issue in relation to the goods concerned. It is also necessary to point out the presence of those goods in the photographs and lists of goods included in Annex 4 of the evidence presented before OHIM. That annex includes five photographs of pillows and blankets and the lists of goods which refer hundreds of times to pillows and various types of blanket. Despite its limited probative value on account of the fact that it does not show whether those goods were in fact sold under the mark at issue, that evidence supports the conclusion arising from the analysis of the invoices. It should be noted also that Annexes 5 and 6 of the evidence presented before OHIM include, respectively, eight newspaper and magazine clippings and four copies of advertisements which appeared in magazines and catalogues referring to blankets and pillows sold by the intervener.
53 In the second place, concerning the applicant’s argument that the Board of Appeal extended the protection of the mark at issue to ‘bed linen’, which is a category of goods in relation to which the mark was not registered, OHIM claims, correctly, that ‘bed linen’ can be considered to be part of a larger category of ‘household linen’, which is a category of goods in relation to which the mark was indeed registered. The Board of Appeal therefore did not extend the protection of the mark beyond the list of registered goods. On the contrary, it decided, in the light of the evidence of use of the mark at issue which was presented to it, to limit it to a more precise and narrow category, namely ‘bed linen’, as it is entitled to do (see, to that effect, Case T‑126/03 Reckitt Benckiser (España) v OHIM – Aladin (ALADIN) [2005] ECR II‑2861, paragraphs 44 and 45).
54 The applicant’s arguments relating to the goods in Class 24 must therefore be rejected.
– The ‘clothes, slippers and headgear’ in Class 25
55 According to the applicant, the evidence of use of the mark at issue is inadequate in relation to the ‘clothes, slippers and headgear’ in Class 25. It is not clear, according to the applicant, that the mark was used in relation to the sale of those goods. The invoices presented by the intervener before OHIM have only a small probative value. The photographs and the lists of goods included on compact discs also do not show that those goods were sold under the mark at issue. That is also the case in relation to the copies of press articles and advertisements. First of all, some of the articles and advertisements appear to be drafts, which raises doubts as to their publication. Next, the mark at issue does not appear on the clothes shown in the pictures, so that it does not fulfil its function as a mark. Finally, other articles and advertisements make no reference to the mark at issue.
56 In addition, if the Court were to consider that genuine use of the mark at issue is demonstrated in relation to goods in Class 25, the applicant claims that the category of goods concerned is too broad. That category should be sub-divided into sub-categories, so as to reduce the range of goods in relation to which the mark enjoys protection. According to the applicant, the wording of the category of goods concerned is so broad that several sub-categories can be identified. Referring to the judgment in ALADIN, the applicant considers that the protection of the mark at issue should apply only to the sub-categories in relation to which genuine use of the mark has in fact been demonstrated. If the Court holds that there is genuine use of the mark at issue in relation to goods in Class 25, the protection granted should therefore apply only to outerwear made of cashmere or outerwear made of knitwear.
57 OHIM and the intervener contest the applicant’s arguments.
58 Concerning, in the first place, the use of the mark at issue in relation to ‘clothes, slippers and headgear’ in Class 25, the intervener has submitted conclusive evidence. Hundreds of invoices included in Annex 2 of the evidence presented before OHIM refer to clothes, whilst dozens of invoices refer to headgear and slippers. As was pointed out in paragraphs 44 and 48 above, that evidence is capable of proving use of the mark at issue in relation to the goods concerned.
59 The Board of Appeal also found several hundred references to various articles of clothing in the lists of goods included in Annex 4 of the evidence presented before OHIM and in the copies of articles and advertisements included in Annexes 5 and 6. As was pointed out in paragraphs 45 and 48 above, the limited probative value of that evidence, resulting in particular from the fact that the intervener has not shown that all the articles and advertisements were in fact published, does not prevent it from being taken into consideration as supporting evidence in the overall assessment of the genuine use of the mark at issue. There exists also such supporting evidence relating to the genuine use of the mark at issue in relation to the slippers and headgear. In that regard, there are nine photographs and more than one hundred references to those two types of goods in the lists of goods in Annex 4 of the evidence presented before OHIM. There are also ten references to headgear in the magazine clippings and the advertisements included, respectively, in Annexes 5 and 6 of that evidence.
60 Regarding the applicant’s argument that the pictures do not show the mark at issue affixed on the goods and cannot therefore constitute proof of use of the mark in relation to the goods, it is necessary to note the finding made in paragraph 44 above that it is not necessary that the mark at issue be affixed on the goods for there to be genuine use of it in relation to those goods. It suffices that the use of the mark establishes a connection between the mark and the sale of its goods. The presence of the mark at issue on the invoices, articles and advertisements relating to the goods concerned establishes that connection.
61 With regard, in the second place, to the applicant’s arguments that the protection granted to the mark at issue in relation to the ‘clothes’ should apply to a narrower category of goods, namely outerwear made of cashmere or outerwear made of knitwear, the following case-law should be noted.
62 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 sub‑categories 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 only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (ALADIN, paragraph 45, and Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 23).
63 However, although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of that mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single category which cannot be divided other than in an arbitrary manner. The Court observes in that regard 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 sub‑categories (ALADIN, paragraph 46).
64 First of all, regarding the applicant’s argument that the protection accorded to the mark at issue in relation to outerwear should apply only to cashmere goods, it should be noted that, according to the general remarks of the World Intellectual Property Organisation (WIPO) accompanying the Tenth edition of the Nice Classification 2013, the categorisation of finished goods in the Nice Classification is in principle carried out in accordance with its function or intended use and not the materials used in its production. It is also apparent from the case-law that the criterion of purpose or intended use is of fundamental importance in the definition of a sub-category of goods or services in so far as consumers search primarily for goods or services which can meet their specific needs (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 29, and Joined Cases T‑493/07, T‑26/08 and T‑27/08 GlaxoSmithkline and Others v OHIM – Serono Genetics Institute (FAMOXIN) [2009], not published in the ECR, paragraph 37).
65 Those principles imply that it is not necessary to define a sub-category of outerwear made of cashmere in the present case. That conclusion is all the more appropriate since some of the outerwear sold under the mark at issue contains not only cashmere, but other materials as well. It is apparent from the descriptions of those goods on the invoices included in Annex 2 of the evidence presented before OHIM that they are materials such as cotton, wool, polyester and silk.
66 It is also not necessary to define a sub-category of outerwear made of knitwear. In the light of the case-law cited in paragraph 64 above, consumers search, in the present case, for goods in accordance with their specific needs and not their method of manufacture.
67 In addition, it is wrong to assert that the evidence of use concerns only outerwear made of cashmere and/or outerwear made of knitwear. The evidence referred to in paragraphs 58 and 59 above concerns also socks, tights, breeches, bras and pyjamas. That evidence demonstrates, at the very least, a certain variety in the underwear sold by the intervener during the relevant period.
68 The applicant’s arguments relating to the ‘clothes, slippers and headgear’ in Class 25 must therefore be rejected as unfounded.
69 Consequently, the third part of the plea in law raised by the applicant must be rejected.
70 In the light of the foregoing, the applicant’s single plea must be dismissed and also the action in its entirety.
Costs
71 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.
72 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM, in accordance with the forms of order sought by the latter. The intervener, which has been unsuccessful in its application for partial annulment of the contested decision, on the basis of Article 134(3) of the Rules of Procedure, must bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action.
2. Rejects Annapurna SpA’s application for annulment.
3. Orders Anapurna GmbH to pay the costs, with the exception of those incurred by Annapurna SpA.
4. Orders Annapurna SpA to bear its own costs.
Van der Woude | Wiszniewska-Białecka | Ulloa Rubio |
Delivered in open court in Luxembourg on 6 March 2014.
[Signatures]