Judgments nº T-691/15 of The General Court, February 02, 2017

Resolution DateFebruary 02, 2017
Issuing OrganizationThe General Court
Decision NumberT-691/15

(EU trade mark - Opposition proceedings - Application for EU figurative mark Cremcaffé by Julius Meinl - Earlier EU figurative mark café crem - Relative ground for refusal - Lack of genuine use of the earlier mark - Article 42(2) of Regulation (EC) No 207/2009) In Case T-691/15,

Marcas Costa Brava, SL, established in Sils (Spain), represented by E. Manresa Medina and J. Manresa Medina, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Fischer, acting as Agent,

defendant,

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

Excellent Brands JMI Ltd, established in Baar (Switzerland), represented by D. Majer, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 29 September 2015 (Case R 2756/2014-5), relating to opposition proceedings between Marcas Costa Brava and Excellent Brands JMI,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, R. da Silva Passos and K. Kowalik-Bańczyk (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 29 November 2015,

having regard to the response of EUIPO lodged at the Court Registry on 21 March 2016,

having regard to the response of the intervener lodged at the Court Registry on 15 March 2016,

having regard to the fact that no request for a hearing was submitted by the main 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 7 December 2012 the intervener, Excellent Brands JMI Ltd, filed an application for registration of a European Union trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 Registration as a mark was sought for the following figurative sign:

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3 The goods and services for which registration was sought are in Classes 21, 30 and 35 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 21: ‘Mugs; Containers for beverages (household and kitchen); Enamel tins for household purposes; Boxes of bone china; Boxes of ceramics; Boxes of earthenware; Containers for household or kitchen use; Dinnerware; Boxes of glass; Glasses [drinking vessels]; Glassware (painted); Utensils for household purposes; Coffee services of ceramic; Jugs; Decanters; Cups of paper or plastic; Porcelain ware; Porcelain articles for decorative purposes; Crockery; Tableware, other than knives, forks and spoons; Dinner services; Cups, not of precious metal; Drinking vessels; Drinking glasses; Sugar bowls’;

- Class 30: ‘Coffee; Flavoured coffee; Ice beverages with a coffee base; Decaffeinated coffee; Extracts of coffee for use as flavours in beverages; Coffee based fillings; Freeze-dried coffee; Ground coffee beans; Ground coffee; Roasted coffee beans; Beverages made of coffee; Coffee-based beverages; Coffee essences; Coffee, roasted, powdered, granulated, or in drinks; Coffee in whole-bean form; Coffee in brewed form; Coffee in ground form; Coffee flavorings [flavourings]; Coffee beans; Coffee mixtures; Aerated beverages with coffee base; Artificial coffee; Instant coffee; Coffee-based beverage containing milk; Chocolate coffee; Beverages consisting principally of coffee; Prepared coffee and coffee-based beverages; Sugar’;

- Class 35: ‘Advertising; Business management; Business administration’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 38/2013 of 22 February 2013.

5 On 22 May 2013 the applicant, Marcas Costa Brava, SL, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods in Class 30 referred to in paragraph 3 above.

6 The opposition was based on the following EU figurative mark, registered on 4 June 2003 under number 2423705 and covering goods in Class 30 ‘Coffee, sugar and infusions’:

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7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8 At the request of the intervener, the applicant submitted, as an annex to its observations lodged with EUIPO on 4 February 2014, documents designed to prove genuine use, within the meaning of Article 42(2) of Regulation No 207/2009, in respect of the goods for which the earlier mark was registered.

9 By decision of 23 September 2014, the Opposition Division of EUIPO upheld the opposition for all of the contested goods.

10 On 28 October 2014 the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

11 By decision of 29 September 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the appeal, annulling the decision of the Opposition Division and rejecting the opposition in its entirety, on the ground that the evidence submitted by the applicant was not sufficient to prove genuine use of the earlier trade mark.

Forms of order sought by the parties

12 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO and the intervener to pay the costs.

13 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

14 The applicant raises two pleas in law, alleging infringement of point (a) of the second subparagraph of Article 15(1) and of Article 8(1)(b) of Regulation No 207/2009, respectively.

The first plea, alleging infringement of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009

15 By its first plea, which is divided into three parts, the applicant claims, in essence, that the Board of Appeal erred in concluding that it had not provided evidence that the earlier mark had been put to genuine use. In support of that plea, it argues (i) that the Board of Appeal incorrectly assessed the territorial scope of the use of the earlier mark, (ii) that the form of that use differs only minimally from the form under which the mark was registered, and (iii) that the evidence which it submitted is capable of proving the reality of that use.

16 It follows from the application that, although, by the second part of the plea, the applicant alleges infringement of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, it also criticises the Board of Appeal, by the first and third parts of the plea, for having infringed Article 42(2) of Regulation No 207/2009.

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

Preliminary observations

18 It is necessary to recall that, by virtue of Article 42(2) of Regulation No 207/2009, an applicant for an EU trade mark, against which opposition has been filed, may require proof that the earlier mark, relied on in support of that opposition, has been put to genuine use in the European Union, in connection with the goods or services in respect of which it is registered and on which the opposition is based, during the five years preceding publication of the application.

19 In addition, according to Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), proof of use must consist of indications concerning the place, time, extent and nature of use of the earlier trade mark.

20 According to settled case-law, it follows from the abovementioned provisions, read also in the light of recital 10 of Regulation No 207/2009, that the ratio legis for the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks where there is no sound economic reason resulting from an active function of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM - Wedi & Hofmann (Walzer Traum), T-355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).

21 There is genuine use of a 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, however, include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C-40/01, EU:C:2003:145, paragraph 43).

22 When assessing whether use of the trade mark is genuine, regard must be had to all of 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 market shares for the goods or services protected by the mark (judgment of 8 July 2004, Sunrider v OHIM - Espadafor Caba (VITAFRUIT), T-203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C-40/01, EU:C:2003:145, paragraph 38).

23 In order to ascertain whether use is significant enough to maintain or create market shares for those goods or services, an overall assessment must be carried...

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