JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
12 June 2024 (*)
(EU trade mark – Revocation proceedings – EU figurative mark CRISTIANI – Genuine use of the mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Expiry of the five-year period – Obligation to state reasons)
In Case T‑149/23,
Georgi Kirov, residing in Prague (Czech Republic), represented by J. Matzner, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P. Villani and E. Markakis, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Pasticceria Cristiani Sas di Sergio Cristiani & C., established in Livorno (Italy), represented by L. Turini, lawyer,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik‑Bańczyk, President, G. Hesse and B. Ricziová (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By his action under Article 263 TFEU, the applicant, Mr Georgi Kirov, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 January 2023 (Case R 835/2022-1) (‘the contested decision’).
Background to the dispute
2 On 26 November 2014, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The figurative mark was registered on 28 May 2015 under the number 013498381 in respect of goods and services in Classes 14, 16, 21, 35 and 43 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.
4 On 3 June 2020, the intervener, Pasticceria Cristiani Sas di Sergio Cristiani & C., filed an application for revocation of that mark in respect of some of those goods and services, namely:
– Class 16: ‘Paper; cardboard; industrial paper and cardboard; paper boxes; tissues and towels of paper; garlands, streamers and figurines of paper; decorated paper; works of art of paper and cardboard’;
– Class 43: ‘Cafeterias; restaurants; catering’.
5 The ground relied on in support of the application for revocation was that set out in Article 58(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
6 By letter of 19 October 2020, the applicant provided evidence in order to prove genuine use of the contested mark during the relevant five-year period and, on 5 March 2021, he provided additional translations of the relevant parts of that evidence.
7 On 25 March 2022, the Cancellation Division upheld the application for revocation and partially revoked the contested mark in respect of the goods and services referred to in paragraph 4 above.
8 On 15 May 2022, the applicant filed a notice of appeal with the Board of Appeal against the decision of the Cancellation Division, requesting that that decision be annulled in so far as the contested mark had been revoked in respect of the services in Class 43, namely ‘cafeterias; restaurants; catering’ (‘the services at issue’).
9 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the applicant had neither proved genuine use of the contested mark in connection with the services at issue nor could he rely on a proper reason for non-use. As regards, in particular, the evidence of genuine use, first, it found that the services of ‘cafeterias’ and ‘restaurants’ had been provided as ancillary services to hotel services and not independently of them. Secondly, it added that the evidence did not refer to the use of the contested sign in its registered form in connection with the services of ‘cafeterias’ and ‘restaurants’, regardless of whether or not those services were regarded as being ancillary to hotel services. Thirdly, it stated that, regardless of the two previous considerations, the daily financial reports from the restaurant showed a very limited daily turnover and that, bearing in mind the size of the food and beverages services sector within the European Union, that very limited intensity of use should have been compensated for by other factors, such as a high frequency and broad geographical extent of use, which was not the case. Fourthly, it observed that the applicant had not submitted any evidence of use in connection with ‘catering services’, whether or not they had been provided independently of hotel services.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
12 The intervener contends, in essence, that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of his action, the applicant relies, in essence, on two pleas in law. The first plea alleges, in essence, infringement of Article 58(1)(a) of Regulation 2017/1001 and of Article 16 of the Charter of Fundamental Rights of the European Union (‘the Charter’). The second plea alleges infringement of the obligation to state reasons and of the right to an effective remedy and to a fair hearing.
The first plea, alleging, in essence, infringement of Article 58(1)(a) of Regulation 2017/1001 and of Article 16 of the Charter
14 The applicant submits, in essence, that the Board of Appeal infringed Article 58(1)(a) of Regulation 2017/1001 in so far as it found that the evidence which he had submitted did not serve to prove genuine use of the contested mark in connection with the services at issue and that he could not rely on a proper reason for non-use.
Preliminary observations
15 Article 58(1)(a) of Regulation 2017/1001 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings 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.
16 Under Article 10(3) and (4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), which is applicable to revocation proceedings pursuant to Article 19(1) of that regulation, the evidence of use must relate to the place, time, extent and nature of use of the trade mark for the goods or services in respect of which it is registered and is limited to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 97(1)(f) of Regulation 2017/1001.
17 As is apparent from the case-law, 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 judgment of 31 January 2019, Pandalis v EUIPO, C‑194/17 P, EU:C:2019:80, paragraph 83 and the case-law cited). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 26 and the case-law cited, and of 4 July 2014, Construcción, Promociones e Instalaciones v OHIM – Copisa Proyectos y Mantenimientos Industriales (CPI COPISA INDUSTRIAL), T‑345/13, not published, EU:T:2014:614, paragraph 21 and the case-law cited).
18 In interpreting the concept of genuine use, account should be taken of the fact that the ratio legis of the requirement that the contested mark must have been put to genuine use is not to assess the commercial success of an undertaking or to review its economic strategy, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 11 April 2019, Fomanu v EUIPO – Fujifilm Imaging Germany (Representation of a butterfly), T‑323/18, not published, EU:T:2019:243, paragraph 23 and the case-law cited).
19 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 10 September 2008, Boston Scientific v OHIM – Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 30 and the case-law cited).
20 In that regard, it must be stated that the turnover and the volume of sales of the goods under the contested 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 contested mark need not always be quantitatively significant in order to be deemed genuine. 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 (see, to that effect, judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 42; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 39, and order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 21).
21 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 in order to dispel any doubts as to the genuineness of its use (judgment of 18 January 2011, Advance Magazine Publishers v OHIM – Capela & Irmãos (VOGUE), T‑382/08, not published, EU:T:2011:9, paragraph 31).
22 Furthermore, it is not necessary that the mark be used in an extensive geographic area for the use to be deemed genuine, since such a qualification will depend on the characteristics of the product or service concerned on the corresponding market. It cannot be ruled out that, in certain circumstances, the market for the goods or services for which an EU trade mark has been registered is in fact restricted to the territory of a single Member State. In such a case, use of the EU trade mark in that territory might satisfy the condition for genuine use of an EU trade mark (see, to that effect, judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraphs 50 and 54). Even purely local use is capable of constituting genuine use (see, to that effect, judgment of 10 June 2020, Leinfelder Uhren München v EUIPO – Schafft (Leinfelder), T‑577/19, not published, EU:T:2020:259, paragraph 44 and the case-law cited).
23 Furthermore, even though the use of an EU trade mark in a single Member State or only part of the territory of a Member State does not in itself preclude that use within the European Union from being genuine, the territorial scope of the use of the mark is only one of several factors which must be taken into consideration when assessing whether or not the use of a trade mark is genuine (see judgment of 10 June 2020, Leinfelder, T‑577/19, not published, EU:T:2020:259, paragraph 45 and the case-law cited).
24 Consequently, it is not possible to determine a priori, and in the abstract, what quantitative threshold or territorial scope should be chosen in order to determine whether the use of the mark is genuine or not, so that a de minimis rule, which would not allow EUIPO or, following the bringing of an action, the Court, to appraise all the circumstances of the dispute before it, cannot be laid down (see, by analogy, judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72, and of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 55).
25 Moreover, as regards the duration of use, it is apparent from the first subparagraph of Article 18(1) of Regulation 2017/1001 that only trade marks the genuine use of which has been suspended during an uninterrupted period of five years are subject to the sanctions provided for by that regulation. Accordingly, it is sufficient that a trade mark has been put to genuine use during a part of the relevant period in order for it not to be subject to those sanctions (judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 40, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 45).
26 So far as concerns the burden of proof, the EU judicature has confirmed that, in proceedings for the revocation of a mark, it is, as a rule, for the proprietor of the mark, and not EUIPO of its own motion, to establish genuine use of that mark (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 63). Furthermore, according to Article 19(1) of Delegated Regulation 2018/625, in the context of such proceedings, EUIPO is to invite the proprietor of the EU trade mark to provide proof of genuine use of that mark or of proper reasons for non-use, within such period as it is to specify. Where the proprietor does not provide any evidence of genuine use or of reasons for non-use before the time limit expires or the evidence or reasons provided are manifestly irrelevant or manifestly insufficient, the EU trade mark is to be revoked.
27 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 actual and sufficient use of the trade mark on the market concerned (see judgment of 23 September 2009, Cohausz v OHIM – Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 36 and the case-law cited). It is necessary to carry out an overall assessment which takes into account all the relevant factors of the particular case and entails a degree of interdependence between the factors taken into account (see judgment of 18 January 2011, VOGUE, T‑382/08, not published, EU:T:2011:9, paragraph 30 and the case-law cited).
28 It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that the applicant had not proved genuine use of the contested mark in connection with the services at issue and that he could not rely on a proper reason for non-use.
– The relevant period and the proper reason for non-use
29 In the contested decision, the Board of Appeal found that, since the application for revocation had been filed on 3 June 2020, the applicant had to prove genuine use of the contested mark between 3 June 2015 and 2 June 2020.
30 In that regard, the applicant submits that the five-year grace period referred to by Article 47(2) and Article 58 of Regulation 2017/1001 ended on 15 August 2020 and not on 28 May 2020, although the contested mark was registered on 28 May 2015. He observes that that five-year period had stopped for a period of 79 days, between 13 March 2020 and 1 June 2020, during which he had a proper reason for non-use of the contested mark in connection with the services at issue because of restrictions due to the COVID-19 pandemic in Bulgaria and in the rest of the European Union, in particular the closure of restaurants and cafeterias decided on by Bulgaria. He deduces from this that the application for revocation should have been rejected as inadmissible or unfounded, since that application was filed on 3 June 2020, that is to say, before the expiry of that five-year period. In that regard, the applicant refers to the Guidelines for examination of European Union trade marks adopted by EUIPO (‘the EUIPO guidelines’).
31 EUIPO and the intervener dispute the applicant’s arguments.
32 In paragraph 38 of the contested decision, the question of whether the inability to provide the services at issue for 79 days constituted a proper reason for non-use for the purposes of Article 58(1)(a) of Regulation 2017/1001 was examined. According to the contested decision, although there was no doubt that, during the 79 days, those services could not be provided, that reason did not appear to constitute a ‘proper reason’. First of all, the Board of Appeal found that those 79 days constituted a relatively short period of time. Secondly, it stated that none of the evidence indicated that the applicant intended to start using the contested mark with respect to the services of ‘restaurants’ independently of hotel services. Furthermore, it observed that most of the period to which the COVID-19 pandemic restrictions related was, in any event, in the low season, that is to say, outside the months of May to September. It found that, as the extent of the provision of food and beverages was negligible, the limited capacity of the restaurant did not serve to compensate, in the last month of the five-year period, for the insufficient extent of use in the previous years.
33 In that regard, it must be stated that, so far as concerns the date as from which genuine use of the contested mark must be demonstrated, it is apparent from the wording and purpose of the first subparagraph of Article 18(1) of Regulation 2017/1001 and from Article 58(1)(a) of that regulation that, until the period of five years following registration of the EU trade mark has expired, the rights of the proprietor cannot be declared to be revoked. Those provisions thus confer on the proprietor a grace period within which to begin genuinely using his or her mark, during which he or she may rely on the exclusive rights which the mark confers, pursuant to Article 9 of that regulation, in respect of all the goods and services covered by that mark, without having to demonstrate such use (judgment of 21 December 2016, Länsförsäkringar, C‑654/15, EU:C:2016:998, paragraph 26). However, when that period ends, the proprietor of an EU trade mark may have his or her rights revoked if, at the request of any person, he or she does not provide proof of genuine use of his or her mark during a continuous period of five years in connection with the goods or services in respect of which it is registered and if there are no proper reasons for non-use (judgment of 14 February 2019, Beko v EUIPO – Acer (ALTUS), T‑162/18, not published, EU:T:2019:87, paragraph 48).
34 As regards the taking into account of the proper reason for non-use, it must be pointed out that only obstacles having a sufficiently direct relationship with a trade mark making its use impossible or unreasonable, and which arise independently of the will of the proprietor of that mark, may be described as ‘proper reasons’ for non-use of that mark within the meaning of Article 58(1) of Regulation 2017/1001 (judgments of 14 June 2007, Häupl, C‑246/05, EU:C:2007:340, paragraph 54; of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 96; and of 7 September 2022, KTM Fahrrad v EUIPO – KTM (R2R), T‑353/21, not published, EU:T:2022:527, paragraph 57).
35 First, in so far as the applicant submits that he had a proper reason for non-use of the contested mark in connection with the services at issue on account of restrictions due to the COVID-19 pandemic in Member States of the European Union other than Bulgaria, it must be observed that he does not, in his application, provide any specific information regarding those restrictions, in particular as regards their nature or duration. It follows that the applicant has not proved that those restrictions could be classified as ‘proper reasons’ for non-use.
36 Secondly, there is no doubt that the restrictions imposed for the period of 79 days by the Bulgarian authorities on account of the COVID-19 pandemic directly prevented the provision of services of ‘cafeterias’ and ‘restaurants’ and, consequently, the use of the contested mark, irrespective of the will of its proprietor. However, in order for those facts to be classified as ‘proper reasons’ exempting the applicant from the burden of proof as regards genuine use of the contested mark in the European Union, it is necessary to take into account the context of which they are part.
37 In that regard, the Board of Appeal found, in paragraph 38 of the contested decision, inter alia, that 79 days constituted a relatively short period of time, that most of that 79-day period had been in the low season and that the negligible extent of the services concerned and the limited capacity of the restaurant did not serve to compensate for the insufficient extent of use in the previous years.
38 The applicant does not, in his application, dispute those findings of the Board of Appeal.
39 It follows that the applicant has not proved that he could rely on a proper reason for non-use of the contested mark. Accordingly, his arguments must be rejected, without it being necessary to rule on the question of whether a proper reason for non-use could stop the five-year grace period from running or on the Board of Appeal’s alleged infringement of the EUIPO guidelines.
40 Consequently, it must be held that the applicant is not justified in claiming that the Board of Appeal should have rejected, as inadmissible or unfounded, the application for revocation on the ground that that application had been filed before the expiry of the grace period referred to in paragraph 33 above. It follows that the Board of Appeal was fully entitled to ascertain whether the contested mark had been put to genuine use between 3 June 2015 and 2 June 2020.
– The use of the contested mark in connection with the services of ‘cafeterias’ and ‘restaurants’
41 In the contested decision, the Board of Appeal found that the applicant had not proved genuine use of the contested mark in connection with the services of ‘cafeterias’ and ‘restaurants’. In particular, it observed, first, that those services had been provided as ancillary services to hotel services and not independently of them. Secondly, it noted that the evidence provided, such as screenshots from websites which are primarily intended for hotel services, did not refer to use of the sign in its registered form in connection with those services, regardless of whether or not those services were regarded as being ancillary to hotel services. Thirdly, regardless of the two previous considerations, the Board of Appeal observed that the daily financial reports from the restaurant showed a very limited daily turnover ranging from approximately EUR 35 to EUR 286 and that, bearing in mind the size of the food and beverages services sector within the European Union, that very limited intensity of use should have been compensated for by other factors, such as a high frequency and broad geographical extent of use, which was not the case. In particular, it found that a trade mark licence agreement, without proof that the licensee had used the contested mark, did not broaden the assessment of use in terms of territory.
42 The applicant submits that he has proved genuine use of the contested mark in connection with the services of ‘cafeterias’ and ‘restaurants’. In that regard, he argues that he has proved that that mark was used to a sufficient extent during the relevant period in connection with those services. He claims that the Board of Appeal did not assess the other relevant criteria or examine all the evidence which he had provided. The applicant also submits that whether or not those services were provided in conjunction with hotel services is irrelevant. In addition, he contends that individual meals in his restaurant were also offered to visitors to his hotel and that it is clear that that restaurant provided its services not only to the hotel’s guests but also to other customers, including locals. Lastly, the applicant disputes the Board of Appeal’s assessment of the geographical extent and the advertising.
43 EUIPO and the intervener dispute the applicant’s arguments.
44 In the light of the reasoning in the contested decision, it is necessary at the outset to ascertain whether, as the Board of Appeal, in essence, found, the evidence submitted by the applicant did not serve to prove genuine use of the contested mark in connection with the services of ‘cafeterias’ and ‘restaurants’, irrespective of whether those services had been provided as ancillary to hotel services or whether that mark had been used in its registered form in connection with those services.
45 In the first place, the applicant does not dispute the finding in paragraph 30 of the contested decision that it is apparent from the evidence submitted that the daily turnover in respect of the services of ‘cafeterias’ and ‘restaurants’ was approximately between EUR 35 and EUR 286. It is true that, in accordance with the case-law cited in paragraph 20 above, even minimal use can be sufficient to be classified as genuine if, in the relevant economic sector, it is regarded as warranted as a means of maintaining or creating market shares for the goods or services protected by the mark. However, it must be stated that, in the present case, the daily turnover is very low in view of the size of the sector concerned within the European Union and of the fact that that turnover concerns the applicant’s main period of business.
46 In this respect, as regards the decisions of the Boards of Appeal relied on by the applicant in order to show that a low commercial volume does not necessarily preclude the use from being classified as genuine, it must be borne in mind that the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
47 Furthermore, as regards the judgments of the Court of Justice and of the General Court relied on by the applicant, the latter cites the low amounts at issue in other cases in which genuine use was recognised. However, he provides no explanation regarding the similarities between the circumstances of the present case and those of the other cases relied on. It must be borne in mind that it is not possible to determine a priori, and in the abstract, a quantitative threshold in order to determine whether the use was genuine and that whether the use was genuine must be assessed in the light of all the circumstances of the dispute, as stated in paragraph 24 above. The applicant cannot therefore simply rely on proximity between the amounts at issue in the present case and those in other cases, in order to show that, in the present case, the commercial volume is sufficient to prove genuine use of the contested mark.
48 In the second place, the smaller the commercial volume of the use of the mark, the more necessary it is, according to the case-law referred to in paragraph 21 above, for the proprietor of the mark to produce additional evidence in order to dispel any doubts as to the genuineness of its use. Consequently, it is necessary to determine whether other factors are capable of compensating for the very low turnover in respect of the services of ‘cafeterias’ and ‘restaurants’.
49 First, as regards the geographical extent, although it is common ground that the restaurant is located in Sozopol (Bulgaria) and although the applicant states, in his application, that that town is ‘the oldest city in Bulgaria’ and ‘a widely known tourist destination, with hundreds of thousands of yearly visitors’, that point, even if it were proved, cannot, on its own, make it possible to ascertain the geographical extent of the use of the contested mark in connection with the services of ‘cafeterias’ and ‘restaurants’.
50 Furthermore, in so far as the applicant cites a licence agreement relating to the use of the contested mark in Italy, it must be stated that the mere production of that agreement is not sufficient to show that that use is genuine, since the existence of that agreement does not, by itself, show that the mark at issue was actually used on the market (see, to that effect, judgments of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 48, and of 14 March 2017, IR v EUIPO – Pirelli Tyre (popchrono), T‑132/15, not published, EU:T:2017:162, paragraph 84). As the Board of Appeal pointed out in paragraph 35 of the contested decision, the applicant has not provided any evidence regarding the use of the contested mark by the licence holder in Italy. Consequently, that licence agreement cannot be taken into account in the analysis of the geographical extent of the use of the contested mark.
51 Lastly, although the comments regarding the restaurant, which are from screenshots of websites which are primarily intended for hotel services, come from customers from Bulgaria and from other countries of the European Union, it must be stated that some of them are not dated and that those which include a date – even taking into account those which do not fall within the relevant period – cover only a relatively short period, namely, with regard to almost all of them, the 2019 and 2020 high seasons. Consequently, they cannot suffice for it to be held that the contested mark has validly been used in connection with the services of ‘cafeterias’ and ‘restaurants’ beyond the town of Sozopol.
52 Secondly, as regards the advertising of the services of ‘cafeterias’ and ‘restaurants’, the applicant has not provided any evidence other than the page dedicated to his restaurant on his website and the referencing of those services on websites primarily intended for hotel services. It is not apparent from that evidence that the applicant actually sought to increase, by means of advertising, his very low turnover with regard to his services of ‘cafeterias’ and ‘restaurants’.
53 In the light of all of the foregoing considerations, it must be held that the applicant’s arguments are not capable of invalidating the Board of Appeal’s finding, following an overall assessment of the evidence, that the very limited intensity of use of the contested mark, taking into account the daily turnover in connection with the services of ‘cafeterias’ and ‘restaurants’ and the size of the sector concerned within the European Union, had not been compensated for by other factors in order to prove that there had been genuine use of that mark.
54 Consequently, there is no need to examine the applicant’s other arguments regarding the questions of whether the services of ‘cafeterias’ and ‘restaurants’ had been provided as ancillary services to hotel services and not independently of those services or whether the contested mark had been used in its registered form in connection with those services. There is also no need to reply to the applicant’s argument that the Board of Appeal, by requiring that those services be provided independently of hotel services, unreasonably interfered with his right to conduct a business, as recognised in Article 16 of the Charter.
– The use of the contested mark in connection with ‘catering’ services
55 In the contested decision, the Board of Appeal found that the applicant had not provided any evidence of use of the contested mark in connection with ‘catering’ services, whether or not those services were provided independently of hotel services.
56 The applicant submits, first, that ‘catering’ services constitute a subcategory of the services of ‘restaurants’. He deduces from that that, since he has proved genuine use of the contested mark as regards the services of ‘restaurants’, he has also proved such use in connection with ‘catering’ services. Secondly, he contends that, in any event, he provided a licence agreement, which serves to prove genuine use of that mark in connection with those services.
57 EUIPO and the intervener dispute the applicant’s arguments.
58 First, even if ‘catering’ services were included in the services of ‘restaurants’, as the applicant claims, it is apparent from paragraph 53 above that the applicant has not succeeded in calling into question the Board of Appeal’s finding that genuine use of the contested mark in connection with the services of ‘restaurants’ had not been proved. Consequently, he cannot claim that he has proved that there has been such use in connection with ‘catering’ services.
59 Secondly, it is apparent from Article 18(2) of Regulation 2017/1001 that use of a trade mark with the consent of the proprietor is to be deemed to constitute use by the proprietor. However, as stated in paragraph 50 above, the existence of a licence agreement does not, by itself, show that the mark at issue was actually used on the market. As has been stated above, the applicant has not provided any evidence of use of the contested mark by the licence holder.
60 Consequently, it must be held that the Board of Appeal was right in finding that genuine use of the contested mark had not been proved in connection with ‘catering’ services.
61 It follows that the first plea must be rejected.
The second plea, alleging infringement of the obligation to state reasons
62 According to the applicant, the contested decision is vitiated by a failure to state reasons. First, he submits that the Board of Appeal did not explain why it departed from the EUIPO guidelines, from which it is apparent that the five-year grace period should have stopped for a period of 79 days on account of a proper reason for non-use. Furthermore, the applicant deduces from that failure to state reasons that the Board of Appeal also infringed his right to an effective remedy and to a fair hearing, which are provided for in Article 47 of the Charter. Secondly, he submits that the Board of Appeal did not sufficiently explain why the licence agreement which has been referred to in paragraph 50 above did not serve to prove use of the contested mark.
63 EUIPO and the intervener dispute the applicant’s arguments.
64 As regards the obligation to state reasons, it must be borne in mind that the first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation, which also follows from the right to good administration laid down in Article 41(2) of the Charter, has the dual purpose of enabling the persons concerned to know the purported justification for the measure taken so as to be able to defend their rights and of enabling the EU judicature to exercise its power to review the legality of the decision concerned. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU, which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law. The question whether the statement of reasons meets those requirements must be assessed with regard not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 2 March 2022, Distintiva Solutions v EUIPO – Makeblock (Makeblock), T‑86/21, not published, EU:T:2022:107, paragraph 97 and the case-law cited).
65 It must be stated that, in the present case, the statement of reasons set out in the contested decision is clear in that it, first, has allowed the applicant to know the reasons for that decision so as to enable him to defend his rights and, secondly, has enabled the Court to exercise its power to review the legality of that decision. That is shown by the arguments which the applicant has been able to put forward in the context of the present proceedings.
66 In that regard, first, so far as concerns the five-year grace period, it is apparent from paragraphs 32 and 37 above that the Board of Appeal sufficiently explained, in paragraph 38 of the contested decision, why it took the view that the proper reason relied on by the applicant had not been established. In addition, paragraphs 15 and 37 of that decision constitute a sufficient explanation allowing the applicant to understand why the Board of Appeal rejected his other arguments regarding the grace period.
67 Secondly, as regards the licence agreement referred to in paragraph 50 above, it is apparent from that paragraph, from paragraph 59 above and from paragraph 35 of the contested decision that the Board of Appeal sufficiently explained that the applicant had not provided any evidence regarding the use of the contested mark by the licence holder and that, by itself, a trade mark licence agreement, without proof that the licensee had used the contested mark, ‘d[id] not broaden the assessment of use in terms of territory’.
68 Consequently, the Board of Appeal did not infringe the obligation to state reasons and therefore also did not infringe the right to an effective remedy and a fair hearing, for the purposes of Article 47 of the Charter.
69 In the light of the foregoing, the second plea must be rejected as unfounded. In consequence, the action must be dismissed in its entirety, without it being necessary to rule on whether it is admissible, which the intervener disputes.
Costs
70 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.
71 Since the applicant has been unsuccessful, he must be ordered to pay the costs which the intervener has incurred before the Court, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, since no hearing has been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Mr Georgi Kirov to bear his own costs and to pay those incurred by Pasticceria Cristiani Sas di Sergio Cristiani & C.;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Kowalik-Bańczyk | Hesse | Ricziová |
Delivered in open court in Luxembourg on 12 June 2024.
V. Di Bucci | | S. Papasavvas |