JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
8 July 2020 (*)
(EU trade mark — Revocation proceedings — EU word mark GNC LIVE WELL — Obligation to state reasons — First sentence of Article 94(1) of Regulation (EU) 2017/1001 — Genuine use of the mark — Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001))
In Case T‑686/19,
Euroapotheca UAB, established in Vilnius (Lithuania), represented by R. Žabolienė and E. Saukalas, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė, acting as Agent,
defendant,
The other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
General Nutrition Investment Company, established in Wilmington, Delaware (United States), represented by M. Rijsdijk, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 30 July 2019 (Case R 2189/2018-5) concerning revocation proceedings between Euroapotheca and General Nutrition Investment Company,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann, President, U. Öberg and O. Spineanu-Matei (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 7 October 2019,
Having regard to the response of EUIPO lodged at the Court Registry on 18 December 2019,
having regard to the response of the intervener lodged at the Court Registry on 9 December 2019,
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
Background to the dispute
1 On 24 September 1998 the intervener, General Nutrition Investment Company, 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 The mark in respect of which registration was sought is the word sign GNC LIVE WELL.
3 The goods and services for which registration was sought fall within Classes 5, 35 and 42 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, in relation to each of those classes, to the following description:
– Class 5: ‘Pharmaceutical preparations; dietetic substances adapted for medical use; including pharmaceutical and dietary food supplements, especially nutritional food supplements containing vitamins, minerals and herbs in the form of capsules, tablets, powders and liquids’;
– Class 35: ‘Business management consultancy, including assistance and advising in the establishment and management of retail stores in the field of health foods, supplements, vitamins, cosmetics, hair and skin care products, oral and body products, diagnostic and exercise equipment, calorie control products, and comfort and relaxation products’;
– Class 42: ‘Technical consultancy and advising in the establishment of retail stores in the field of health foods, supplements, vitamins, cosmetics, hair and skin care products, oral and body products, diagnostic and exercise equipment, calorie control products, and comfort and relaxation products’.
4 On 16 August 1999 the application for the EU trade mark was published in Community Trade Marks Bulletin No 1999/64. On 4 February 2000 the sign referred to in paragraph 2 above was registered as an EU trade mark under number 940981.
5 On 23 August 2016 the applicant, Euroapotheca UAB, filed an application for revocation of the registered mark based on Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001) with EUIPO, on the grounds that that mark had not been put to genuine use in the European Union within a continuous period of five years in connection with all the goods and services in respect of which it was registered.
6 On 10 February 2017, the intervener filed various documents with EUIPO for the purpose of establishing use of the registered mark.
7 By decision of 12 September 2018, the Cancellation Division upheld in part the application for revocation, declaring the trade mark to be revoked with effect from 23 August 2016 in respect of all the goods and services referred to in paragraph 3 above, except for some of the goods in Class 5, namely ‘dietetic substances adapted for medical use; including dietary food supplements, especially nutritional food supplements containing vitamins, minerals and herbs in the form of capsules, tablets, powders and liquids’ (‘the contested goods’).
8 On 9 November 2018, the applicant filed an appeal with EUIPO pursuant to Articles 66 to 71 of Regulation 2017/1001 against the decision of the Cancellation Division, supplemented by a document setting out the grounds of appeal filed on 14 January 2019, in that the registered mark was not revoked for all the goods and services referred to in paragraph 3 above.
9 By decision of 30 July 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal and confirmed the Cancellation Division’s decision in its entirety. In essence, first of all, on the one hand, it took the view that the intervener was required to prove genuine use of the registered mark during the period from 23 August 2011 to 22 August 2016 and, on the other hand, it established the place and the duration of use of the registered mark. Next, it took account of the body of the evidence provided by the intervener. First, it assessed the nature of use of the registered mark in a stylised letter font, different colours or highlighting the three grouped letters ‘gnc’ compared to the words ‘live well’ and it found that such use did not alter the distinctive character of the registered mark. Second, it found that there was sufficient evidence that proved genuine use of the registered mark during the relevant period. Finally, it confirmed that such use had been proved in respect of the contested goods.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
12 The intervener submits that the Court should:
– dismiss the application;
– accordingly, reject the cancellation in respect of all the goods to which the action relates;
– order the applicant to pay the costs, including the costs incurred in respect of the cancellation and appeal proceedings before EUIPO.
Law
13 As a preliminary point, given that ‘rejecting the cancellation in respect of all of the goods to which the action relates’ is tantamount to upholding the contested decision and therefore to dismissing the present proceedings, the intervener’s second head of claim should be understood as requesting, in essence, that the action be dismissed (see, to that effect, judgment of 24 September 2019, Roxtec v EUIPO — Wallmax (Representation of a black square containing seven concentric blue circles), T‑261/18, EU:T:2019:674, paragraph 16 and the case-law cited). It is therefore conflated with its first head of claim.
14 As regards the substantive rules applicable to the present case, it must be stated that, taking account of the date on which the application for revocation at issue was filed, namely 23 August 2016, and in the same way as, first, the Board of Appeal stated in paragraphs 14 to 16 of the contested decision and, second, the applicant and EUIPO confirmed in their written submissions, the relevant versions of the substantive provisions applicable to the present revocation proceedings and, consequently, to the examination of the evidence of use of the registered mark, are Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (replaced by Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p.1)).
15 However, since the relevant substantive provisions which apply to the present case are identical in the version following the adoption of Regulation No 207/2009 and Regulation 2017/1001 respectively, the fact that the parties referred to the provisions of the latter regulation is irrelevant for the purpose of the present proceedings.
16 In support of its action, the applicant relies on a single plea in law, claiming an infringement of Article 51(1)(a) of Regulation No 207/2009, which comprises, in essence, two parts, the first claiming that the reasoning of the contested decision was deficient, contrary to the first sentence of Article 94(1) of Regulation 2017/1001, and the second claiming that the Board of Appeal incorrectly assessed the evidence provided by the intervener regarding the use of the registered mark for the contested goods.
The reasoning of the contested decision
17 In the first part of its single plea in law, the applicant submits that the Board of Appeal did not state which evidence enabled it to confirm the Cancellation Division’s findings, as regards, first, the date and place of use of the registered mark, second, the nature of its use and, finally, its use in relation to the contested goods. In its view, the contested decision should, therefore be annulled because it infringes the first sentence of Article 94(1) of Regulation 2017/1001.
18 EUIPO and the intervener dispute the applicant’s arguments.
19 In the first place, it must be recalled that under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons, which also derives from Article 296 TFEU, has been the subject of settled case-law according to which the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable, first, the persons concerned to exercise effectively their right to request judicial review of the contested decision and, secondly, the EU Courts to exercise their power to review the legality of the decision (see, to that effect, judgment of 29 June 2017, Cipriani v EUIPO — Hotel Cipriani (CIPRIANI), T‑343/14, EU:T:2017:458, paragraph 34 and the case-law cited). The question whether a decision’s statement of reasons satisfies those requirements is to be assessed by reference not only to its wording but also to its context and the entire body of legal rules governing the matter in question (see, to that effect, judgment of 18 March 2015, Naazneen Investments v OHIM — Energy Brands (SMART WATER), T‑250/13, not published, EU:T:2015:160, paragraph 15 and the case-law cited).
20 In the second place, when the Board of Appeal confirms a decision of the Cancellation Division in its entirety, and given the continuity in terms of function between the Cancellation Divisions and the Boards of Appeal, to which Article 71(1) of Regulation 2017/1001 attests, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, a context which is known to the parties and enables the Court to carry out fully its review as to whether the Board of Appeal’s assessment was well founded (see, to that effect, judgments of 21 November 2007, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, not published, EU:T:2007:352, paragraph 64 and the case-law cited, and of 16 January 2019, Windspiel Manufaktur v EUIPO (Representation of the position of a bottle closure), T‑489/17, not published, EU:T:2019:9, paragraph 31 and the case-law cited).
21 In the third place, the duty to state reasons does not require the Boards of Appeal to provide an account which exhaustively follows, and one by one, all the lines of reasoning articulated by the parties before those boards. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision. In addition, the reasoning may be implicit provided that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see, to that effect, judgment of 12 March 2020, Maternus v EUIPO — adp Gauselmann (Jokers WILD Casino), T‑321/19, not published, EU:T:2020:101, paragraphs 16 and 17 and the case-law cited).
22 In the fourth place, it must be recalled that a claim that there is no, or only an inadequate, statement of reasons constitutes a plea of infringement of an essential procedural requirement, which, as such, is different from a plea that the grounds of the decision are inaccurate, the latter plea being a matter to be reviewed by the Court when it examines the substance of that decision (judgment of 23 September 2015, Mechadyne International v OHIM (FlexValve), T‑588/14, not published, EU:T:2015:676, paragraph 59).
23 In the present case, first of all, in paragraphs 38 and 39 of the contested decision, the Board of Appeal stated that it is clear from the invoices and advertising material provided by the intervener that the place of use of the registered mark was the European Union and that there was sufficient dated evidence to prove the use of the mark during the relevant period. Subsequently, in paragraphs 44 and 46 of that decision, it concluded that the form in which the registered mark was used did not alter its distinctive character and that the entire body of evidence established a sufficiently serious extent of use of that mark. Finally, in paragraphs 48 and 49 of that decision, it found that the evidence provided by the intervener demonstrated use of the registered mark for the contested goods.
24 In that regard, it is true that the reasoning provided by the Board of Appeal in paragraphs 38, 39, 44, 46, 48 and 49 of the contested decision does not provide details of the evidence that it took into account in reaching the conclusions in that decision. However, in the light of the case-law mentioned in paragraph 20 above, since the Board of Appeal confirmed the Cancellation Division’s decision in its entirety, the statement of reasons concerning that evidence contained in the Cancellation Division’s decision must be taken into account. It is apparent from that decision that the Cancellation Division analysed all the evidence provided by the intervener. The Board of Appeal sets out the Cancellation Division’s analysis in paragraph 9 of the contested decision and lists that evidence in paragraph 6 of the contested decision, referring to the evidence which bears out the place and duration of use of the registered mark, the nature and scope of such use, and use of the registered mark in relation to the contested goods.
25 Accordingly, without prejudice to the question whether the evidence provided by the intervener enables the Board of Appeal’s finding to be confirmed, a question which does not relate to the statement of reasons for the contested decision but rather to its substance, which is analysed in the context of the second part of the single plea relied on by the applicant, there is no indication that the applicant was not in a position to understand the reasoning of the contested decision and to challenge it before the General Court.
26 Therefore, the first part of the applicant’s single plea cannot succeed.
The Board of Appeal’s assessment of the evidence of use of the registered mark for the contested goods
27 In the second part of its single plea, the applicant submits that the Board of Appeal was incorrect in taking the view that the intervener had provided evidence of genuine use of the registered mark in the European Union during the relevant period for the contested goods.
28 EUIPO and the intervener dispute the applicant’s arguments.
29 It should be noted that it is apparent from recital 10 of Regulation No 207/2009 (now recital 24 of Regulation 2017/1001) that the legislature was of the view that protecting a registered mark was justified only where that mark is actually used. In keeping with that recital, Article 51(1)(a) of Regulation No 207/2009 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked 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.
30 Rule 22(2) of Regulation No 2868/95 (now Article 10(3) of Delegated Regulation 2018/625, which applies to applications for revocation under Rule 40(5) of that regulation (now Article 19(1) of Delegated Regulation 2018/625), provides that the indications and evidence for the furnishing of proof of use shall consist of indications concerning the place, time, extent and nature of use of the mark for the goods and services in respect of which it is registered.
31 In accordance with the case-law, there is genuine use of a trade mark where it 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 trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 23 March 2017, Cryo-Save v EUIPO — MedSkin Solutions Dr Suwelack (Cryo-Save), T‑239/15, not published, EU:T:2017:202, paragraph 29 and the case-law cited).
32 Although the concept of genuine use therefore excludes all minimal and insufficient use as the basis for a finding that a mark is being put to real and effective use on a given market, nevertheless the requirement of genuine use does not seek 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 15 September 2011, centrotherm Clean Solutions v OHIM — Centrotherm Systemtechnik (CENTROTHERM), T‑427/09, EU:T:2011:480, paragraph 26 and the case-law cited).
33 More specifically, when assessing, in relation to a particular case, whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market 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 13 February 2015, Husky CZ v OHIM — Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 63 and the case-law cited).
34 As regards the extent of the use made of a mark, account must be taken, in particular, of the commercial volume of all the acts of use, on the one hand, and the duration of the period in which those acts of use occurred and the frequency of those acts, on the other (judgment of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35).
35 Furthermore, genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned. It is therefore necessary to carry out a global 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, to that effect, judgment of 23 October 2017, Galletas Gullón v EUIPO — O2 Holdings (Shape of a packet of biscuits), T‑404/16, not published, EU:T:2017:745 paragraph 40 and the case-law cited).
36 As regards the relevant period for assessing use of the registered mark, in paragraph 33 of the contested decision the Board of Appeal stated that the intervener was required to show genuine use of the registered mark during the period from 23 August 2011 to 22 August 2016. That finding is not challenged by the applicant.
37 As regards the evidence of use of the registered mark, it must be noted that it is apparent from the administrative file and from paragraph 6 of the contested decision that in the administrative proceedings, in order to prove genuine use of the registered mark, in particular for the contested goods, the intervener provided several documents which, grouped by category, contained the following evidence:
– an affidavit dated 9 February 2017 signed by the Vice-President of General Nutrition Centers, Inc., the parent company of the intervener, containing, inter alia, a table setting out annual global revenue achieved between 2008 and 2016 relating to the registered mark and a table showing the revenue generated by European sales (excluding UK sales) between 2008 and 2013;
– a product catalogue relating to the registered mark in Spanish and intended for the Spanish market; advertisements, photographs and a brochure relating to the Romanian market or intended for it; photos, a leaflet, two product catalogues bearing the registered mark relating to the Bulgarian market;
– print-outs from social media and from Romanian, Bulgarian, Spanish, United Kingdom and Irish versions of the intervener’s website;
– examples of product packaging bearing the registered mark;
– screenshots from websites offering goods under the registered mark, in particular in Spain, Bulgaria, Latvia, the United Kingdom, Ireland and Romania; examples of use of the registered mark for promotional, advertising and commercial purposes including via social media;
– examples of product labels bearing the registered mark within the European Union;
– sales invoices containing photographs of products bearing the registered trade mark.
38 Whether the Board of Appeal was correct in taking the view in the contested decision that the evidence provided by the intervener in the revocation proceedings could prove genuine right-preserving use of the registered mark in respect of the contested goods during the relevant time period must be assessed in the light of those considerations.
The place and duration of use of the registered mark
39 The applicant submits that the Board of Appeal was incorrect in taking the view that the invoices and advertising material provided by the intervener proved use of the registered mark in Bulgaria, Romania, Ireland and Spain, so that the place of use was the European Union. According to the applicant, first of all, only a low number of the invoices provided can be regarded as falling within the relevant territory and are, however, insufficient to prove genuine use of the registered mark. Next, as regards the advertising material, the catalogues, advertisements and the extracts from the intervener’s website did not, in its view, prove use of the registered mark in the European Union. While some of the evidence refers to the actual territory, that evidence does not however demonstrate use of the registered trade mark for the contested goods. Finally, the product labels provided neither prove that the contested goods were actually sold under the registered mark, nor that those labels were actually used on the market.
40 The applicant also maintains that the Board of Appeal was incorrect in taking the view that the invoices, social media posts and photographs provided by the intervener constituted an indication of the duration of use. According to the applicant, some documents are undated, others fall outside the relevant period and others do no more than show the expiry date of the goods. In addition, the simple confirmation provided by the intervener’s affidavit that all the identified uses fall within the relevant period cannot, in its view, be accepted as objective evidence.
41 As regards the place of use of the registered mark for the contested goods, the Court takes the view that reference must be made, first, to the advertising material provided by the intervener, which is available in various languages and in hard copy catalogues and brochures, as well as in digital format on websites and social media, as contained in the print-outs and screenshots. That material demonstrates that the registered trade mark is aimed at a wide audience and is distributed at least in Romania, Bulgaria, the United Kingdom, Ireland and Spain.
42 Second, the invoices provided by the intervener constitute evidence of actual sales of the products bearing the registered mark in the territory of the European Union, even on the basis solely of the four invoices identified by the applicant, in that they are issued to addressees in Bulgaria, Latvia and Spain.
43 Furthermore, as EUIPO submits, a number of invoices disregarded by the applicant on the basis that they do not indicate clearly the place of use may actually be identified as deriving from Ireland by virtue of the VAT number, the Irish address and telephone code on those invoices. Even the invoices which relate to territories outside the European Union remain relevant since, in accordance with point (b) of the second subparagraph of Article 15(1) of Regulation No 207/2009 (now point (b) of the second subparagraph of Article 18(1) of Regulation 2017/1001), the affixing of the EU trade mark to goods or to the packaging thereof in the Union solely for export purposes also constitutes use of the registered trade mark.
44 As regards the duration of use of the registered mark for the contested goods, the invoices dated from 2014 to 2016, posts on social media from 2011 to 2016, the website print-outs giving an indication of their status between 2009 and 2016, the labels to be applied to the contested goods and their packaging dated from 2014 to 2016 demonstrate that the contested goods were offered for sale throughout the relevant period.
45 Furthermore, as regards the applicant’s claim that the undated material cannot be taken into account in establishing genuine use of the registered mark during the relevant period, it must be recalled that, as stated in paragraph 35 above, all the factors on the basis of which the Board of Appeal made its assessment must be taken into account to establish proof of genuine use of the registered mark. In the present case, the labels, the photographs of shop windows and the other posts on social media to which the applicant referred as examples of undated documents may be intended to show the range of goods in respect of which the registered mark was used and how that mark was displayed on the contested goods, which does not require that they be dated (see, to that effect, judgment of 13 February 2015, HUSKY, T‑287/13, EU:T:2015:99, paragraph 68). Consequently, that argument must be rejected.
46 Nor is it possible to accept the applicant’s argument that seeks to disregard the invoices submitted by the intervener which do not correspond to the relevant period. Indeed, as maintained by EUIPO, the invoices dated September and November 2016 and January and February 2017 post-date the relevant period only by a few weeks or a few months. It is possible to take account of matters only just after the period defined as relevant by the applicable regulation since that enables the scope of use of the registered mark and the actual intentions of the holder during the latter period to be borne out or more accurately assessed. Provided that there is proof of use which relates to the relevant period, as in the present case, the documents from only just outside that period, far from being irrelevant, can be taken into account and evaluated together with the rest of the evidence, since they can offer proof of real and genuine commercial exploitation of the mark (see, to that effect, judgment of 8 April 2016, Frinsa del Noroeste v EUIPO — Frisa Frigorífico Rio Doce (FRISA), T‑638/14, not published, EU:T:2016:199, paragraphs 38 to 40 and the case-law cited).
47 The applicant’s argument claiming that the affidavit of the Vice-President of the intervener’s parent company lacked objectivity must also be rejected. It is true that that affidavit has been established as being in the intervener’s interest and that according to settled case-law, affidavits from a person who has close links with the party concerned are of lower evidential value than those from third parties and they cannot therefore, on their own, constitute sufficient proof of use of the mark (see, to that effect, judgment of 18 March 2015, SMART WATER, T‑250/13, not published, EU:T:2015:160, paragraph 30 and the case-law cited). However, the affidavit in question is corroborated by other relevant factors (see, to that effect, judgment of 12 March 2020, Jokers WILD Casino, T‑321/19, not published, EU:T:2020:101, paragraph 46 and the case-law cited).
48 Indeed, it is clear that the affidavit contains detailed and sound information regarding the place and duration of use of the registered mark for the contested goods which is borne out by the data found in other evidence submitted by the intervener. Specifically, first of all, the statement contained in it that the registered mark is used for nutritional, diet, energy and sports nutrition products, including vitamins, minerals, herbs and other specialised supplements is borne out, inter alia, by catalogues, advertising material and pictures of products bearing the registered mark. Next, the statement that the registered mark may be found in retail outlets and in advertising is confirmed, inter alia, by the photographs of shop signs, displays, stands in pharmacies and shops, and by the advertising material provided by the intervener. Finally, the actual sale of goods bearing the registered mark can be borne out by the invoices provided by the intervener.
49 To that extent, the affidavit and the evidence that supports the claims made in it constitute credible evidence, making it possible for the numerous items of evidence submitted by the intervener proving the use of the registered mark during the relevant period within the territory of the European Union to be placed within a specific context.
50 Accordingly, the Board of Appeal, taking account of the affidavit and all the evidence provided by the intervener, was fully entitled to conclude that the registered mark was objectively present on the market during the relevant period and in the territory of the European Union.
The nature of use of the registered mark
51 The applicant disputes the Board of Appeal’s assessment of the nature of use of the registered mark. It submits that the registered mark was used in a form altering its distinctive character, first, due to the change to the typeface, colour and style of the grouped letters ‘gnc’ in relation to the words ‘live well’, secondly, due to figurative elements being added and, thirdly, due to the words ‘live well’ being omitted and other words being added. According to the applicant, those significant variations preclude use of the registered mark preserving the intervener’s rights.
52 In that regard, it must be borne in mind that, under point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001), proof of genuine use of a trade mark also includes proof of its use in a form differing in elements which do not alter the distinctive character of that mark in the form in which that mark was registered, in particular because of their ancillary position in the sign and their weak distinctive character (see judgment of 13 September 2016, hyphen v EUIPO — Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 31 and the case-law cited).
53 The purpose of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, which avoids imposing strict conformity between the form of the trade mark used and the form in which the mark was registered is to allow its proprietor in the commercial exploitation of the sign to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be limited to situations in which the sign actually used by the proprietor of a trade mark to identify goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgment of 3 October 2019, 6Minutes Media v EUIPO — ad pepper media International (ADPepper), T‑668/18, not published, EU:T:2019:719, paragraph 34 and the case-law cited).
54 In the present case, as a preliminary point, it must be observed that the registered trade mark is a word mark. In accordance with the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. Consequently, the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (see judgment of 16 September 2013, Müller Boré & Partner v OHIM — Popp and Others (MBP), T‑338/09, not published, EU:T:2013:447, paragraph 54 and the case-law cited). In addition, it is settled case-law that the specific presentation of such a mark is irrelevant. Indeed, the specific representation of a word mark is not generally of such a nature as to alter the distinctive character of that mark as registered (see judgment of 23 September 2015, L’Oréal v OHIM — Cosmética Cabinas (AINHOA), T‑426/13, not published, EU:T:2015:669, paragraph 28 and the case-law cited).
55 In paragraph 42 of the contested decision, the Board of Appeal reproduced three graphic representations used for the registered mark. The first image consists of the grouped letters ‘gnc’, written in upper case and in bold, and below to the right, the words ‘live well’, written in smaller upper-case letters. The second consists of the grouped letters ‘gnc’, written in upper case and in bold, and below, the words ‘live well’, centred and written in smaller upper-case letters. The three letters and the words are red in colour, on a grey rectangular background. The third image consists of the grouped letters ‘gnc’, in upper-case letters in black and in bold, followed on the same line by the words ‘live well’ in grey, with the letters ‘l’ and ‘w’ in upper case, and the other letters in lower case against a red rectangular background.
56 In the first place, it must be stated that since the registered trade mark is a word mark, the intervener was free to choose its particular presentation and to prove use of it by means of actual representations of that mark. Accordingly, graphic representations used in respect of the registered mark may be taken into consideration for the purposes of proving its use, provided that they do not alter the distinctive character of that mark as registered. That applies equally to its components represented in upper- or lower-case letters.
57 Consequently, the Board of Appeal was fully entitled to take account of the graphic representations used for the registered mark which are reproduced in paragraph 42 of the contested decision, in that the relevant public continues to be capable of understanding the registered mark ‘GNC LIVE WELL’, since the word element comprising three letters and two words is clearly legible and appears in the same sequence and that their being associated, whether written on one line or two, does not alter the distinctiveness of the word mark as registered.
58 In the second place, as regards the possible alteration of the distinctive character of the registered trade mark by the addition of figurative elements, first, it must be stated that the graphic representations used for the registered mark which are reproduced in paragraph 42 of the contested decision consistently include the word element comprising three letters and two words ‘gnc live well’, in the same way as the registered trade mark.
59 Second, as regards the figurative elements of the graphic representations used for the registered mark which are reproduced in paragraph 42 of the contested decision, it must be held that, on the one hand, the figurative elements at issue are limited to the use of distinct colours, a different typeface, a coloured background surrounding the word element comprising three letters and two words ‘gnc live well’ and the positioning of the three letters and the two words on one or two lines. Accordingly, those figurative elements are not particularly imposing, they have a decorative function, do not play a significant role in the overall impression of the sign and have no inherent semantic content of their own which would lend the mark distinctive character or designate the contested goods.
60 On the other hand, the presence of those figurative elements in the graphic representations used in respect of the registered mark does not change the order in which the word element is read, nor its semantic content or the pronunciation of the word element comprising three letters and two words ‘gnc live well’, constituting the registered mark, which remains clearly identifiable.
61 The addition of figurative elements is not, therefore, by its nature nor by its meaning or its size, capable of altering the overall impression created by the representations used by the intervener, the most distinctive element of which continues to be the word element comprising three letters and two words ‘gnc live well’, which constitutes the registered mark and preserves its function of indicating the commercial origin of the contested goods. As submitted by EUIPO, the figurative elements at issue play only a secondary role.
62 In the third place, as regard the applicant’s argument that some of the evidence refers to a ‘GNC’ sign without the words ‘live well’ or accompanied by other words, it must be observed that the Board of Appeal took into consideration solely the evidence which referred to the use of the word element comprising three letters and two words ‘gnc live well’ in taking the view that that was sufficient to prove use of the registered mark. Accordingly, while there is sufficient evidence referring to the use of the word element comprising three letters and two words ‘gnc live well’, such as photographs, print-outs of websites and from social media, advertising material and pictures of the products actually sold bearing the registered mark, the Court cannot also assess such other evidence.
63 In the light of all the above factors, the Board of Appeal was correct in holding in paragraph 44 of the contested decision that, despite the addition of figurative elements and variations to the registered mark, the form in which that mark was used did not alter its distinctive character, so that the proof of use related to that mark constituted evidence of the use of that mark.
The extent of use
64 The applicant submits that the Board of Appeal was incorrect in stating that the evidence provided by the intervener established a sufficiently serious extent of use of the registered mark for the contested goods. In the first place, it claims that the affidavit is not supported by evidence and that other material does not confirm that the contested goods were distributed to potential consumers. In the second place, it maintains (i) that the invoices are limited in time and prove only token sales considering the size of the market and (ii) that they cannot be related to the contested goods. More precisely, in its view, the four invoices which relate to the relevant territory prove a relatively low total amount of income. In the third place, it submits that the presence of the registered mark on websites is not in itself sufficient to prove genuine use of the registered mark. In the fourth place, the applicant argues (i) that the photographs provided were not capable of proving that the registered mark was used publicly and outwardly for the contested goods, and (ii) that the use of signs other than the registered mark cannot be taken into consideration.
65 In that regard, the case-law referred to in paragraph 35 above must be recalled, which states clearly that in assessing evidence of the genuine use of a mark, each piece of evidence is not to be analysed in isolation, but rather as part of an overall assessment, in order to determine the most likely and coherent meaning.
66 In the first place, it should be recalled that the affidavit constitutes credible evidence, as was observed in paragraphs 47 to 49 above.
67 In addition, contrary to the applicant’s claim, the lack of evidence bearing out the market share held by the registered mark and the turnover achieved as set out in that statement is not capable of showing, in itself, that the use of the registered mark in the economic sector concerned did not make it possible to maintain or create a market share for the goods or services protected by that mark (see, to that effect, judgment of 24 October 2017, Keturi Kambariai v EUIPO — Coffee In (coffee inn), T‑202/16, not published, EU:T:2017:750, paragraph 62).
68 In the second place, in accordance with the case-law, the turnover achieved and the volume of sales of the goods under the registered mark cannot be assessed in absolute terms but must be assessed in relation to other relevant factors, such as the volume of commercial activity 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 (see judgment of 18 March 2015, SMART WATER, T‑250/13, not published, EU:T:2015:160, paragraph 49 and the case-law cited), to the extent that, in accordance with the case-law referred to in paragraph 32 above, the requirement of genuine use is not intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks.
69 The assessment of the extent of use accordingly does not have to be based exclusively on the amount of income expressly stated in the invoices, since even the turnover achieved and the volume of sales of goods under the registered mark must be assessed in relation to other relevant factors.
70 In that regard, it must be stated, first, as regards the requirement for public and outward use of the registered mark, that the invoices provided by the intervener had different addressees, which demonstrates that that mark was used publicly and outwardly (see, to that effect, judgment of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 87).
71 Second, even taking account solely of the invoices identified by the applicant as being the only invoices relating to the relevant territory, the overall volume of income they prove, namely 34 733.82 United States dollars (USD), cannot be regarded as token, considering the unit price of between USD 2.57 to 34.37 at which the contested goods are sold and which is set out in those invoices.
72 Third, it must be noted that the invoices provided by the intervener are not numbered consecutively and relate to different years and months. They are, therefore, examples which do not represent the overall amount of the actual sales of the products bearing the registered mark. In addition, they cover a significant part of the relevant period, namely the years 2014 to 2016 and the beginning of 2017.
73 Fourth, the products mentioned in the invoices can be found in the pictures which are reproduced in those invoices and some of the invoiced products can be matched to where they appear in the catalogues and brochures bearing the name of the registered mark. It can therefore reasonably be regarded as having been established that the registered mark was actually affixed to the contested goods which were the subject of an invoice.
74 In the third place, the other evidence provided by the intervener in relation to the relevant period, namely the numerous print-outs from websites on which the contested goods were offered for sale, the brochures and advertising material, the photographs of retail outlets and the pages from social media are equally relevant for establishing that the contested products bearing the registered mark were actually offered for sale.
75 In the fourth place, the use of the company name or trade name or of a shop name can also be regarded as genuine use of the registered mark where the sign is affixed to the goods marketed or, even where the sign is not affixed, there is use in relation to goods or services when that sign is used in such a way that a link is established between the sign constituting the company, trade or shop name and the goods marketed or the services provided (see, by analogy, judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraphs 22 and 23).
76 That is so in the present case, since pictures of shop names in sales outlets or use of the registered mark in online shops are used to identify sales of the contested goods under the registered mark. Indeed, as submitted by EUIPO, the intervener does not provide retail or advertising services in respect of any product to external customers, but rather sells its own products and advertises them in order to create and maintain market share for the contested goods.
77 For all the above reasons, it must be found that the Board of Appeal was correct in reaching the conclusion that the intervener had provided proof of genuine use of the registered mark, without examining the use of signs or registrations other than the registered mark.
78 In that regard, contrary to what the applicant appears to maintain, the Board of Appeal was fully entitled to evaluate all the evidence submitted within a global assessment rather than to examine each item of evidence in isolation. All the facts of the present case have been taken into account and all the documents submitted which could be related specifically to the registered mark and to the contested products have been examined together, by reference to the case-law referred to in paragraph 35 above.
The use of the registered mark in relation to the contested goods
79 The applicant submits that the goods identified in the invoices are not related to the registered mark and that most of the evidence does not concern the contested goods. According to the applicant, only a small amount of the evidence provided can be related to use of the registered mark, without any specific indication of the goods in respect of which that mark was used.
80 As has been noted in paragraph 35 above, the evidence must be subject to a global assessment. It is clear that the documents relating to online and retail sales concern the contested goods. Indeed, the online shops clearly offer a variety of food and dietary supplements, which also appear in the brochures and are listed in the invoices, as has been noted in paragraph 73 above. In addition, all that evidence is interrelated and demonstrates use of the registered mark for the contested goods.
81 It follows that, taken as a whole, the evidence provided by the intervener is sufficient to prove genuine use of the registered mark for the contested goods.
82 In light of the above, the second part of the applicant’s single plea must also be rejected as unfounded.
83 The applicant’s argument — that the evidence not translated into the language of the proceedings is inadmissible and that the rule that the parties should be heard has been infringed in that it was not able to put forward its position in respect of that evidence — cannot succeed either.
84 Indeed, it is clear from a number of the applicant’s claims that it had understood the content of the evidence, even when submitted in a language other than the language of the proceedings. That was the case, for example, when it argued that certain documents relating to the online shops, either in Spanish or in Bulgarian, did not concern use of the registered mark for the contested goods. In addition, it must be stated that most of the evidence submitted was in English, that is to say in the language of the revocation proceedings.
85 In those circumstances, there has been compliance with the rule that the parties should be heard and with the principle of equality of arms between the parties in inter partes proceedings. Nor can the view be taken that the lack of a translation of some of the items of evidence in question affected the exercise of the applicant’s rights of defence, since it was in a position to challenge the documents in question before the Court (see, to that effect, judgment of 8 May 2017, Les Éclaires v EUIPO — L’éclaireur International (L’ECLAIREUR), T‑680/15, not published, EU:T:2017:320, paragraph 23).
86 The single plea in law raised by the applicant must therefore be rejected and, as a consequence, the appeal dismissed in its entirety.
Costs
87 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.
88 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
89 The intervener additionally claimed that the applicant should be ordered to repay to it the costs which it incurred for the purposes of the proceedings before the Cancellation Division and before the Fifth Board of Appeal of EUIPO. In that regard, first, it must be recalled that under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows that the costs incurred in respect of the proceedings before the Cancellation Division cannot be regarded as recoverable costs. Therefore, the intervener’s claims must be rejected since they seek to have the applicant bear the costs incurred before the Cancellation Division. Second, in so far as the intervener’s request concerns the costs of the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of the contested decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO — Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraphs 193 and 194 and the case-law cited).
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Euroapotheca UAB to pay the costs.
Spielmann | Öberg | Spineanu-Matei |
Delivered in open court in Luxembourg on 8 July 2020.