JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

7 June 2018 (*)

(EU trade mark — Revocation proceedings — EU word mark DOLFINA — No genuine use of the mark — Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) — Obligation to state reasons — Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001))

In Case T‑882/16,

Sipral World, SL, established in Barcelona (Spain), represented by R. Almaraz Palmero and A. Ruo, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and D. Walicka, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

La Dolfina, SA, established in Buenos Aires (Argentina), represented by J. Carbonell Callicó, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 September 2016 (Case R 1897/2015-2), relating to revocation proceedings between La Dolfina and Sipral World,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, K. Kowalik-Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 15 December 2016,

having regard to the response of EUIPO lodged at the Court Registry on 15 March 2017,

having regard to the response of the intervener lodged at the Court Registry on 13 April 2017,

further to the hearing on 22 February 2018,

gives the following

Judgment

 Background to the dispute

1        On 9 March 2004, Mr Mauro Astengo filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) 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 European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by 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)).

2        Registration as a mark was sought for the word sign DOLFINA.

3        The goods in respect of which registration was sought are in Classes 3, 18 and 25 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 3: ‘Bleaching preparations and other substances, all for laundry use; cleaning, polishing, degreasing and abrasive preparations; dentifrices, preparations for cleaning waste pipes; perfumery, essential oils, cosmetics, hair lotions; preparations for cleaning waste pipes’;

–        Class 18: ‘Leather and imitations of leather, and goods made of these materials (not included in other classes); animal skins, hides; trunks and travelling bags; umbrellas, parasols, canes and walking sticks; whips, harness, saddlery’;

–        Class 25: ‘Clothing, headgear, footwear’.

4        The trade mark was registered on 26 February 2007 under No 3701828.

5        On 11 November 2010, EUIPO was informed that that mark had been assigned to Profit Good Ltd.

6        On 5 December 2012, the intervener, La Dolfina, SA, filed an application for revocation, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), in respect of the contested mark, in which it claimed that that mark had not been put to genuine use within a continuous period of five years.

7        Since Profit Good failed to submit evidence of genuine use of the mark within the prescribed period, the Cancellation Division upheld the application for revocation by decision of 26 July 2013.

8        On 14 and 15 March 2014, the applicant, Sipral World, SL, filed an application for registration of the transfer of that mark in its name, filed an application for restitutio in integrum, pursuant to Article 81 of Regulation No 207/2009 (now Article 104 of Regulation 2017/1001), whereby it requested that its rights to challenge the application for revocation filed by the intervener be re-established, and adduced documents for the purpose of establishing genuine use of the contested mark.

9        The transfer of the trade mark was registered on 25 March 2014.

10      By decision of 6 May 2014, the Cancellation Division granted the application for restitutio in integrum and stated, first, that the decision of 26 July 2013 would not produce any effects and, secondly, that the documents adduced by the applicant for the purpose of establishing genuine use of the contested mark would be taken into account. In addition, the Cancellation Division extended the period within which the applicant could submit further evidence of use of that mark.

11      By letter of 21 July 2014, the applicant adduced evidence of use of the contested mark, some of which had already been adduced on 14 March 2014. It also declared its surrender of the mark in respect of the goods in Class 3.

12      By decision of 23 July 2015, the Cancellation Division partially upheld the application for revocation by revoking the contested mark in respect of all the goods covered with the exception of T-shirts and caps in Class 25.

13      On 22 September 2015, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Cancellation Division’s decision of 6 May 2014 and, in the alternative, against the Cancellation Division’s decision of 23 July 2015 in so far as it did not revoke the contested mark in respect of T-shirts and caps in Class 25.

14      By decision of 22 September 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the appeal of the intervener brought in the alternative against the Cancellation Division’s decision of 23 July 2015 on the ground that the documents adduced by the applicant were insufficient to establish genuine use of the contested mark, within the meaning of Article 51(1)(a) of Regulation No 207/2009, between 5 December 2007 and 4 December 2012 (‘the relevant period’), in respect of T-shirts and caps in Class 25. More specifically, it considered that the evidence concerning the place and extent of use of that mark was insufficient.

 Forms of order sought

15      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs, including those relating to the proceedings before the Board of Appeal.

16      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

17      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs;

–        confirm, in the alternative, the revocation of the contested mark.

 Law

18      In support of the action, the applicant raises two pleas in law, the first alleging infringement of Articles 15, 42, 51 and 78 of Regulation No 207/2009 (Articles 15, 42 and 78 are now, respectively, Articles 18, 47 and 97 of Regulation 2017/1001), read in conjunction with Rules 22 and 40 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (Rule 22 is now Article 10 and Rule 40 is now Articles 14, 17(1), (2) and (4) and 19 of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)), and the second alleging infringement of Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001).

19      It is appropriate to first examine the second plea alleging infringement of Article 75 of Regulation No 207/2009 and formally based on alleged inadequacy of the reasoning given in the contested decision.

 The second plea in law, alleging infringement of Article 75 of Regulation No 207/2009

20      The applicant claims that the Board of Appeal vitiated the contested decision by failing to provide an adequate statement of reasons. In essence, the applicant submits, first, that the Board of Appeal did not adequately state the reasons on which the contested decision was based since it merely stated that the information resulting from the evidence adduced to establish the extent of use of the contested mark was unreliable, yet that assessment was based on subjective and biased considerations. Secondly, the applicant maintains that the Board of Appeal failed to assess objectively the evidence adduced by the applicant, since it did not examine all of the evidence and confounded some pieces of evidence with others. Thirdly, the applicant claims that it was not given an opportunity to adduce additional evidence relating to the extent of use of the contested mark.

21      EUIPO and the intervener dispute the applicant’s arguments.

22      In the first place, it should be noted that, having examined the evidence adduced by the applicant, the Board of Appeal found that use of the contested mark in the European Union during the relevant period could be regarded, at most, as possible. Nevertheless, the Board of Appeal found that it had not been established that such use had been sufficiently extensive to qualify as genuine use. Thus, it concluded by stating that the evidence adduced had failed to provide objective and reliable information regarding the extent of use.

23      In that regard, the Board of Appeal confined itself to noting, in essence, that objective and reliable information was necessary in order to assess the extent of use of a contested mark and that the evidence submitted by the applicant had not provided such information.

24      The Court therefore finds that the applicant’s complaint to the effect that the Board of Appeal’s analysis was subjective and biased, inasmuch as it found that the information in the evidence adduced was not reliable, is based on an incorrect reading of the contested decision.

25      In the second place, first, it should be noted that the applicant does not specify which evidence the Board of Appeal failed to examine. On the contrary, at the hearing, the applicant admitted that the Board of Appeal had taken into account the entirety of the evidence adduced by the applicant.

26      Secondly, it was only at the hearing that the applicant specified which pieces of evidence it alleged the Board of Appeal to have confounded with others. In that regard, it is true that, in paragraph 86 of the contested decision, the Board of Appeal cited the annex number corresponding to the invoices issued by Universal Delta Consulting, SRL, and addressed to Profit Good, which were originally attached to the applicant’s letter, referred to in paragraph 11 above, of 21 July 2017, when it was in fact making reference to the invoices contained in a different annex, which had been issued by Universal Delta Consulting to addressees whose names had been redacted, but whose addresses were situated in the Czech Republic, Hungary and Poland.

27      Nevertheless, it must be pointed out that, according to the case-law of the Court, the obligation on EUIPO, under Article 75 of Regulation No 207/2009, to state reasons for its decisions has the dual purpose of enabling interested parties to know the purported justification for the measure taken so as to be able to defend their rights and of enabling the Courts of the European Union to exercise their jurisdiction to review the legality of the decision (judgments of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 111, and of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 86).

28      In the present case, it must be held that the error in paragraph 86 of the contested decision constitutes a clerical error which did not prevent the parties, and in particular the applicant, from properly identifying the pieces of evidence on which the reasoning at issue in the contested decision was in fact based. Accordingly, that error did not deprive the applicant of the opportunity to defend its rights.

29      In the third place, it is true that where evidence of use of a contested mark is submitted in addition to the evidence adduced within the time period set by EUIPO under Rule 40(5) of Regulation No 2868/95 (now Article 19(1) of Delegated Regulation 2017/1430), EUIPO is in no way prohibited from taking account of such belated evidence (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 88). However, in the present case, it should be noted that the applicant’s complaint to the effect that it was not given an opportunity to submit, before the Board of Appeal, additional evidence relating to the extent of use of the contested mark, including some of the invoices issued by Universal Delta Consulting that had already been submitted before the Cancellation Division but in which the addressee names that had previously been redacted were visible, is not borne out by the facts. As EUIPO correctly contends, the Board of Appeal, by letter of 4 December 2015, requested the applicant to submit, within two months, its observations on the appeal brought by the intervener against the decision of the Cancellation Division. Moreover, it should be noted that the applicant replied to that request by letter of 3 February 2016, to which it attached only evidence relating to its application for restitutio in integrum.

30      Accordingly, it follows from the foregoing that the second plea, alleging infringement of Article 75 of Regulation No 207/2009, must be rejected as unfounded.

 The first plea in law, alleging infringement of Articles 15, 42, 51 and 78 of Regulation No 207/2009, read in conjunction with Rules 22 and 40 of Regulation No 2868/95

31      The applicant claims that the Board of Appeal wrongly found that the contested mark had not been put to genuine use in respect of T-shirts and caps in Class 25. It submits that the Board of Appeal failed to examine the items of evidence adduced by the applicant, either individually or as a whole.

32      EUIPO and the intervener dispute the applicant’s arguments.

 Preliminary observations

33      It should be noted that, as is apparent from recital 10 of Regulation No 207/2009 (now recital 24 of Regulation No 2017/1001), the legislature considered that there was no justification for protecting an EU trade mark, except where the mark had actually been used. In accordance with that recital, Article 51(1)(a) of Regulation No 207/2009 provides that the rights of a proprietor of an EU trade mark are to be declared revoked, in particular, on application to EUIPO, 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. That provision adds that the commencement or resumption of use within a period of three months preceding the filing of the application for revocation which began at the earliest on expiry of the continuous period of five years of non-use is to be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application for revocation may be filed.

34      Rule 22(3) of Regulation No 2868/95 (now Article 10(3) of Delegated Regulation 2017/1430), which applies to applications for revocation pursuant to Rule 40(5) of that regulation, provides that evidence of use must concern the place, time, extent and nature of use of the contested mark (see judgments of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 27, and of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 17).

35      The rationale for the requirement that a mark must have been put to genuine use in order to be protected under EU law is that EUIPO’s register cannot be regarded as a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, and in accordance with recital 10 of Regulation No 207/2009, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see, to that effect and by analogy, order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraphs 18 to 22).

36      In interpreting the concept of ‘genuine use’, account must be taken of the fact that the rationale for the requirement that the contested mark must have been put to genuine use is not to assess commercial success or to review the economic strategy of an undertaking, 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 24 May 2012, MAD, T‑152/11, not published, EU:T:2012:263, paragraph 18 and the case-law cited).

37      As is apparent from paragraph 43 of the judgment of 11 March 2003 in Ansul (C‑40/01, ECR, EU:C:2003:145), 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. Moreover, the condition relating to genuine use of the mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 24 May 2012, MAD, T‑152/11, not published, EU:T:2012:263, paragraph 19 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).

38      When assessing whether use of the 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 (judgment of 24 May 2012, MAD, T‑152/11, not published, EU:T:2012:263, paragraph 20; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

39      As to the extent of the use to which the contested mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (see judgment of 24 May 2012, MAD, T‑152/11, not published, EU:T:2012:263, paragraph 21 and the case-law cited).

40      In order to examine, in a particular case, whether an EU 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 implies a certain interdependence between 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. In addition, the turnover and the volume of sales of goods marketed 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 mark and the characteristics of the products or services on the relevant market. As a result, the Court has stated that use of the contested mark need not always be quantitatively significant in order to be deemed genuine. Thus even minimal use can be sufficient to be classified as genuine, provided that it is justified, in the economic sector concerned, to maintain or create market share for the goods or services protected by the mark (see judgment of 24 May 2012, MAD, T‑152/11, not published, EU:T:2012:263, paragraph 22 and the case-law cited).

41      The Court of Justice also added, in paragraph 72 of the judgment of 11 May 2006 in Sunrider v OHIM (C‑416/04 P, EU:C:2006:310) that it is not possible to determine a priori and in the abstract a quantitative threshold for the purposes of determining whether use is genuine or not and, therefore, a de minimis rule, which would not allow EUIPO or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot be laid down. Thus, the Court of Justice has held that, when it serves a real commercial purpose, even minimal use of a mark may be sufficient to establish genuine use (see judgment of 24 May 2012, MAD, T‑152/11, not published, EU:T:2012:263, paragraph 23 and the case-law cited).

42      However, the smaller the commercial volume of the use of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use (see, to that effect, judgment of 18 January 2011, Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, not published, EU:T:2011:9, paragraph 31).

43      Furthermore, the Court has held that genuine use of a mark cannot be established by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the mark on the market concerned (see judgment of 24 May 2012, MAD, T‑152/11, not published, EU:T:2012:263, paragraph 24 and the case-law cited). In that regard, it may be inferred from a combined reading of Article 15, Article 42(2), Article 51(1) and Article 57(2) of Regulation No 207/2009 (Article 42(2) and Article 57(2) now being Article 47(2) and Article 64(2) of Regulation 2017/1001) that, in proceedings for the revocation of an EU trade mark, as a rule, it is for the proprietor of the mark to establish genuine use of that mark in relation to the goods for which it is registered (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 63).

44      The question whether the Board of Appeal was correct in concluding that the contested mark had not been put to genuine use in the five years preceding the date of the application for revocation of that mark must be assessed in the light of those considerations.

 Use of the contested mark

45      Since the application for revocation of the contested mark was filed on 5 December 2012, the five-year period referred to in Article 51(1)(a) of Regulation No 207/2009 covers, as the Board of Appeal rightly noted, the period from 5 December 2007 to 4 December 2012.

46      Moreover, it should be noted that it is only in relation to T-shirts and caps in Class 25 that the applicant disputes that the contested mark was not put to genuine use.

47      In that regard, it must be observed that the evidence submitted by the applicant during the administrative proceedings before the Cancellation Division consisted in photographs, a sworn statement, a licence agreement, invoices and catalogues.

48      In the light of that evidence, the Board of Appeal found that the contested mark had been used, during the relevant period, as a trade mark in relation to T-shirts and caps in a form which did not substantially alter its distinctive character. However, it found that genuine use of that mark, within the meaning of Article 51(1)(a) of Regulation No 207/2009, had not been established, on the ground that first, without unlawfully resorting to probabilities or presumptions, the Board of Appeal could not consider use of that mark within the European Union to have been proven and, secondly, sufficient extent of use of the contested mark had not been demonstrated.

49      The applicant claims that that assessment is erroneous. It submits that the sworn statement, the invoices issued by Universal Delta Consulting and the licence agreement concluded between Profit Good and Confezioni Green Teen, Srl, establish use of the contested mark in the Czech Republic, Italy, Hungary, Poland, Romania and the United Kingdom. It also maintains that, taken as a whole, the evidence adduced demonstrates that use of the mark was sufficiently extensive to qualify as genuine use, in particular considering that T-shirts and caps are inexpensive goods and are mainly sold over limited periods of time, namely spring and summer.

–       The photographs and the sworn statement

50      In the first place, it should be noted that the photographs adduced by the applicant cannot serve as proof of the use of or, a fortiori, the extent of use of the contested mark in so far as it is not possible to ascertain, either from the photos themselves or from the other pieces of evidence submitted by the applicant, that those photographs were taken in the European Union during the relevant period. Moreover, as the Board of Appeal rightly noted, the possibility that the people in those photographs may have been employees of the proprietor of the contested mark cannot be ruled out. Thus, such photographs are not capable of proving that the mark has been used publicly and outwardly, in accordance with the case-law cited in paragraph 37 above.

51      In the second place, it should be borne in mind, as regards the sworn statement, that Rule 22 of Regulation No 2868/95, cited in paragraph 34 above, relating to the supporting documents and items which may be submitted for the purpose of proving use of a mark, specifically mentions statements in writing sworn or affirmed as referred to in Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001). Furthermore, according to the case-law, sworn statements that have evidential value under national legislation constitute, in principle, admissible evidence in the context of revocation proceedings (see, to that effect, judgment of 16 July 2014, Nanu-Nana Joachim Hoepp v OHIM — Stal-Florez Botero (la nana), T‑196/13, not published, EU:T:2014:674, paragraph 30 and the case-law cited).

52      In the present case, according to the sworn statement made by a bartender of a nightclub and adduced by the applicant, items of clothing bearing the contested mark were given free of charge to the best customers of that nightclub, located in the United Kingdom, during the summer of 2009.

53      However, first, that sworn statement gives no indication as to the number of items distributed. Secondly, even though that statement suggests that clothes bearing the contested mark were acquired in advance by the nightclub in question and thus implies use of the mark, it has not been established, or even asserted, that the then proprietor of the mark consented to such an acquisition. It cannot be held, in particular in the light of the case-law cited in paragraphs 68 and 69 below, that, by adducing the sworn statement in question, which was not made by either the nightclub or the proprietor of the contested mark, the applicant was seeking to prove, by implication, that the proprietor of that mark had consented to such use. Thirdly, the gifting of clothing described in the sworn statement does not constitute use per se of the contested mark given that, according to the case-law, a mark is not regarded as being put to genuine use where it is affixed to promotional items that are handed out as a reward for the purchase of other goods and to encourage the sale of the latter (see, to that effect, judgment of 15 January 2009, Silberquelle, C‑495/07, EU:C:2009:10, paragraph 20).

54      It follows that the sworn statement is not capable of establishing the use of or, a fortiori, the extent of the use of the contested mark, as correctly pointed out by the Board of Appeal. Accordingly, in view of the findings in paragraph 50 above, the Court must also reject the applicant’s argument to the effect that the photographs, taken in conjunction with the sworn statement, prove that the contested mark has given rise to commercial activity.

–       The licence agreement concluded between Profit Good and Confezioni Green Teen

55      It is important to note that the licence agreement concluded between Profit Good and Confezioni Green Teen relates to commercial exploitation of the contested mark throughout the European Union. However, even though the conclusion of such an agreement may serve as proof that the proprietor of that mark, Profit Good, gave its consent to use of the mark by the licensee, Confezioni Green Teen, the mere adduction of that agreement is not sufficient to demonstrate that such use was genuine, since the existence of such an agreement does not in itself establish actual use of the contested mark 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).

56      Accordingly, the invoices relating to that agreement must also be assessed. It must be pointed out, first, as rightly noted by the Board of Appeal, that the invoice of 31 January 2011 relates to an advance payment made solely on account of the conclusion of that agreement. Thus, that invoice is not capable of demonstrating actual use of the contested mark. Secondly, the invoices of 14 September and 31 December 2012 fail to establish either that the sale of T-shirts and caps took place or, if any, the quantity of T-shirts and caps sold. The licence agreement concerns all the goods covered by the contested mark, as referred to in paragraph 3 above, therefore it is impossible to determine whether T-shirts and caps were among the goods marketed under the licence agreement or what share of the sales they accounted for. In addition, the invoices of 14 September and 31 December 2012 refer to Article 7 of the licence agreement, which has been partly redacted and, thus, it is not possible to establish how the fee was calculated or, if any, the sales taken into account in calculating that fee. For those reasons, the invoices of 31 January 2011, 14 September 2012 and 31 December 2012 are not capable of establishing the use of, or, a fortiori, the extent of the use of, the contested mark in relation to T-shirts and caps.

–       The invoices issued by Confezioni Green Teen

57      It should first be observed, as the Board of Appeal rightly pointed out, that only one of the invoices issued by Confezioni Green Teen, that of 1 June 2012, demonstrates use of the contested mark during the relevant period. The other two invoices, those of 11 and 20 December 2012, postdate the relevant period. In that regard, the applicant merely submits that, in accordance with the usual time frame for designing and manufacturing clothing, a period of several months was required from the time the customer placed an order until Confezioni Green Teen sent the invoice. However, it is important to note that such a contention is based on two premises. First, that the goods to which those invoices relate had not yet been designed or manufactured at the time they were ordered and, secondly, that those invoices were not sent until the time of delivery. Given that the applicant has not adduced any evidence in support of those two premises, they cannot be accepted.

58      Next, as regards the invoice of 1 June 2012, it must be observed that the Board of Appeal was wrong to find that the reference numbers included in that invoice did not correspond to those of the goods in the catalogues referred to by the applicant. It is therefore possible that that invoice relates to the sale of goods marketed under the contested mark. However, it is apparent from the Fall-Winter 2012/2013 catalogue that the reference numbers correspond only to shirts, thus that invoice does not establish use of the contested mark in relation to T-shirts and caps.

59      Lastly, it should be pointed out, as rightly observed by the Board of Appeal, that the names of the addressees of the invoices issued by Confezioni Green Teen have been redacted and that, as the applicant noted before the Board of Appeal, the licence agreement is non-exclusive pursuant to Article 2 thereof. In those circumstances, as the intervener essentially contends, it cannot be excluded that those invoices were addressed to licensees under other licence agreements concerning the contested mark, or even to the proprietor of that mark, namely Profit Good, especially since the applicant maintains that Profit Good had already concluded a manufacturing agreement with another licensee of the contested mark, namely Universal Delta Consulting. It follows that those invoices do not establish that the contested mark was used publicly and outwardly within the meaning of the case-law cited in paragraph 37 above.

–       The Profit Good catalogues

60      As regards the catalogues produced by the applicant, it must be recalled that use of the mark in question cannot be demonstrated simply by producing copies of advertising material mentioning that mark in connection with the relevant goods or services. It is also necessary to demonstrate that that material, regardless of its nature, has been sufficiently distributed to the relevant public in order to establish the genuine nature of the use of the mark at issue (judgment of 8 March 2012, Arrieta D. Gross v OHIM — International Biocentric Foundation and Others (BIODANZA), T‑298/10, not published, EU:T:2012:113, paragraph 68; see also, to that effect, judgment of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 34). In the present case, the applicant has not adduced any evidence relating to the distribution of the catalogues. Accordingly, such catalogues alone cannot establish use of the contested mark.

–       The invoices issued by Universal Delta Consulting

61      It is important to note that the invoices issued by Universal Delta Consulting were addressed to either Profit Good or to addressees whose names have been redacted, but whose addresses were situated in the Czech Republic, Hungary and Poland.

62      First, as regards the invoices addressed to Profit Good, such invoices cannot prove that the contested mark was used publicly and outwardly, within the meaning of the case-law cited in paragraph 37 above, since Profit Good was the owner of that mark at the time.

63      Furthermore, the applicant’s argument to the effect that those invoices establish use of the contested mark for export purposes, within the meaning of the second subparagraph of Article 15(1)(b) of Regulation No 207/2009 (now the second subparagraph of Article 18(1)(b) of Regulation 2017/1001) has no factual basis. The fact that, on those invoices, Profit Good’s address is stated as being in Hong Kong (China) is insufficient to prove such use. In that regard, it is sufficient to note, as stated by EUIPO, that those invoices contain the indication ‘ex work’ meaning that the client, namely Profit Good, was to take delivery of the sold goods at the address of the manufacturer, namely Universal Delta Consulting, which is situated in Romania. Therefore, it must be found that the address given on those invoices is merely a billing address, which is not capable of proving that the goods were marketed outside the European Union.

64      Secondly, as regards the other invoices issued by Universal Delta Consulting, it should first be noted that, even though the addresses of the addressees were situated in the European Union, the names of those addressees have been redacted, and therefore it cannot be ruled out that those invoices demonstrate no more than purely internal use of the contested mark, which is not capable of establishing genuine use of the mark under the case-law cited in paragraph 37 above.

65      In that regard, the applicant goes no further than to argue that the production of a large quantity of clothing, such as that attested by the invoices in question, could have no other purpose than the outward use of the mark.

66      However, that argument is not borne out by the facts since the applicant has produced only four invoices, each of which relate to the sale of a restricted number of items, ranging between 400 and 650 items in relation to T-shirts and between 200 and 400 items in relation to caps, which is not incompatible with a purely internal use of the contested mark. Moreover, it cannot be deduced merely from the quantity of clothing sold that the addressees of those invoices were external to the undertaking that owned the contested mark.

67      Even assuming that those invoices proved that the contested mark was used publicly and outwardly, it has not been established that Profit Good gave its consent to such use.

68      It must be observed that the Court has consistently held that taking account of the significance of its effect of extinguishing the exclusive right of a proprietor of a mark to use that mark, consent must be expressed in such a way that an intention to renounce that right is unequivocally demonstrated. Such an intention generally follows from an express giving of consent. However, it is conceivable that consent may, in some cases, be inferred from facts and circumstances prior to, simultaneous with or subsequent to the use of the mark at issue by a third party which unequivocally demonstrate that the proprietor has renounced his rights (see judgment of 13 January 2011, Park v OHIM — Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 61 and the case-law cited; see, also, judgments of 30 January 2015, Now Wireless v OHIM — Starbucks (HK) (now), T‑278/13, not published, EU:T:2015:57, paragraph 35, and of 6 October 2017, Falegnameria Universo dei F.lli Priarollo v EUIPO — Zanini Porte (silente PORTE & PORTE), T‑386/16, not published, EU:T:2017:706, paragraph 70).

69      In that regard, it also follows from the case-law that, when the proprietor of an EU mark maintains that the use of that mark by a third party constitutes genuine use, he claims, by implication, that he consented to that use (see, to that effect, judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 24). As to the truth of what that implies, it must be borne in mind that it is unlikely that the proprietor of a mark would be in a position to submit proof that the mark had been used against his wishes (see, to that effect, judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 25).

70      Nevertheless, in the present case, it should be noted, as correctly pointed out by the Board of Appeal, that Profit Good’s consent is not explicitly apparent from the documents before the Court and therefore could only be implicitly inferred from the adduction, by the applicant, of invoices issued by Universal Delta Consulting and addressed to clients in the Czech Republic, Hungary and Poland.

71      The situation in the present case is not exactly comparable to that which gave rise to the case-law cited in paragraph 69 above since the names of the addressee clients on the invoices at issue have been redacted and the applicant, who adduced those invoices, was not the proprietor of the contested mark, whose consent was required when those invoices were issued.

72      Those two facts result in proof of Profit Good’s consent being more indirect. Thus, its consent is not clearly established by those invoices in the light of the case-law cited in paragraph 68 above.

73      That conclusion cannot be called into question by the applicant’s argument that it should not be criticised for having redacted the names of the addressee clients on the invoices at issue since that was confidential information and Universal Delta Consulting had not authorised its disclosure in the context of the present proceedings. That argument, which is, moreover, unsubstantiated, is not capable of challenging the burden of proof, referred to in paragraph 43 above, for the purposes of the application of Article 51(1)(a) of Regulation No 207/2009.

74      Finally, in the light of the case-law cited in paragraph 39 above, it should be noted, first, as observed in paragraph 66 above, that those invoices relate to the sale of a restricted number of items. Secondly, it should be pointed out that those invoices are dated either 14 April or 28 June 2011, thus they represent isolated sales, which, moreover, took place over a very short period of time of less than three months. In those circumstances, the fact that the four invoices, taken together, demonstrate sales worth EUR 37 000 in relation to T-shirts and EUR 12 150 in relation to caps, does not establish sufficiently extensive use of the mark to qualify as genuine use within the meaning of the case-law cited in paragraph 38 above.

75      That finding cannot be called into question by the applicant’s argument that T-shirts and caps are inexpensive goods that are mainly sold over limited periods of time, namely during spring and summer. It should be noted, first, that the invoices issued by Universal Delta Consulting and adduced by the applicant, that is to say, the invoices addressed to Profit Good and to addressees whose addresses are situated, respectively, in the Czech Republic, Hungary and Poland, date from January, February, March, April, May, June, September, November and December, and, secondly, that the amounts of those invoices do not demonstrate that the sales of T-shirts and caps are significantly lower in autumn and winter. Therefore, it is not apparent that the marketing of the goods in question was limited to a particular period of the year. In addition, it should be pointed out that T-shirts and caps are goods of mass consumption with large markets, despite the possible seasonal fluctuations such markets may face.

76      Thus, having regard to all the evidence adduced by the applicant before EUIPO, taken as a whole, and to the lack of information regarding the extent of the use of the contested mark on behalf of its proprietors during the relevant period, it must be concluded that the Board of Appeal did not err in finding that the applicant had failed to demonstrate effective and sufficient use of the contested mark during the relevant period for the purposes of establishing that the mark had been put to genuine use within the meaning of Article 51(1)(a) of Regulation No 207/2009 in respect of T-shirts and caps in Class 25.

77      Furthermore, the Court must reject the applicant’s argument to the effect that, in relation to ‘use of the [contested mark] in connection with the goods or services in respect of which it is registered’, the Board of Appeal infringed Article 42 of Regulation No 207/2009, Rule 22(3), Rule 22(4) (now Article 10(4) of Delegated Regulation 2017/1430) and Rule 40(5) of Regulation No 2868/95. By merely noting that the Board of Appeal found, in paragraph 71 of the contested decision, that the contested mark was used as a mark for the goods concerned and in a form which did not substantially alter its distinctive character, the applicant does not, in any event, demonstrate that the Board of Appeal infringed those provisions.

78      Consequently, it follows from all the foregoing that the first plea in law, alleging infringement of Articles 15, 42, 51 and 78 of Regulation No 207/2009, read in conjunction with Rules 22 and 40 of Regulation No 2868/95, must be dismissed. Accordingly, the action must be dismissed in its entirety without it being necessary to rule on the intervener’s third head of claim, which was submitted in the alternative, seeking confirmation of the revocation of the contested mark.

 Costs

79      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and by the intervener, in accordance with the forms of order sought by those parties.

ON THOSE GROUNDS

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Sipral World, SL, to pay the costs.


Gervasoni

Kowalik-Bańczyk

Mac Eochaidh

Delivered in open court in Luxembourg on 7 June 2018.


E. Coulon

 

A. M. Collins

Registrar

 

President


*      Language of the case: English.