Judgments nº T-680/15 of The General Court, May 08, 2017

• Resolution Date: May 08, 2017
• Issuing Organization: The General Court
• Decision Number: T-680/15

(EU trade mark - Revocation proceedings - EU word mark L’ECLAIREUR - Genuine use of the mark - Article 15(1), Article 51(1)(a) and Article 76(1) of Regulation (EC) No 207/2009 - Rule 22(6) of Regulation (EC) No 2868/95 - Alleged divergence from Part C, Section 6, of the EUIPO Guidelines for examination)

In Case T-680/15,

Les Éclaires GmbH, established in Nuremberg (Germany), represented by S. Bund, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

defendant,

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

L’éclaireur International, established in Luxembourg (Luxembourg), represented by M. Decker, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 3 September 2015 (Case R 2266/2014-1), relating to revocation proceedings between Les Éclaires and L’éclaireur International,

THE GENERAL COURT (Fourth Chamber),

composed of H. Kanninen, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 20 November 2015,

having regard to the response of EUIPO lodged at the Court Registry on 17 March 2016,

having regard to the response of the intervener lodged at the Court Registry on 13 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 31 October 2003, the intervener, L’éclaireur International, 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)).

2 The trade mark for which registration was sought is the word sign L’ECLAIREUR.

3 The goods in respect of which registration was sought are in Classes 3, 4, 9, 14, 18, 20 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. As regards Class 25, which is the only class to which the present dispute relates, the goods correspond to the following description: ‘Clothing, shoes, headgear’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 6/2005 of 7 February 2005. The mark was registered for all of the goods concerned on 23 August 2005, under number 3494028.

5 On 1 August 2013, the applicant, Les Éclaires GmbH, filed an application for revocation of the mark at issue. The grounds relied on in support of that application were those referred to in Article 51(1)(a) of Regulation No 207/2009, namely that the mark at issue had not been put to genuine use in the European Union in connection with the goods protected by the mark within a continuous period of five years.

6 On 12 August 2013, EUIPO notified the intervener of the application for revocation. On 10 January 2014, the intervener submitted a body of evidence of use of the mark at issue.

7 By decision of 2 July 2014, the Cancellation Division revoked the intervener’s rights in respect of all of the goods for which the mark had been registered on 23 August 2005.

8 On 1 September 2014, the intervener filed an appeal against the decision of the Cancellation Division. On 6 November 2014, it submitted its statement setting out the grounds for its appeal and ‘further evidence’.

9 By decision of 3 September 2015 (‘the contested decision’), the First Board of Appeal of EUIPO partially annulled the decision of the Cancellation Division ‘to the extent that it revoked [the mark at issue] for “clothing” and “shoes” in Class 25’. Consequently, it concluded that the registration of that mark should be maintained for those goods. In essence, the Board of Appeal found that, in general, the evidence of use proved the use of the mark at issue for ‘clothing’ and ‘shoes’, but not for the other goods in Classes 3, 4, 9, 14, 18, 20 and 25.

Forms of order sought

10 The applicant claims that the Court should:

- annul the contested decision ‘so that the [mark at issue] is revoked entirely’;

- order EUIPO to pay the costs.

11 EUIPO contends that the Court should:

- dismiss the application; and

- order the applicant to pay the costs.

12 The intervener claims that the Court should:

- declare the application for annulment unfounded and dismiss it;

- confirm the contested decision; and

- in any event, order the applicant to pay the costs, including those incurred by the intervener before the Court and before EUIPO.

Law

13 In support of its action, the applicant puts forward, in essence, three pleas in law. The first plea in law alleges infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 51(1) of that regulation. The second plea in law alleges a ‘discordance’ between the contested decision and Part C, Section 6, of the EUIPO Guidelines for examination of EU trademarks (‘the EUIPO Guidelines’) and infringement of Article 76(1) of Regulation No 207/2009. The third plea in law alleges infringement of Rule 22(6) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1).

14 The Court considers it appropriate to begin by examining the applicant’s third plea in law, before assessing the first and second pleas in law, in the order indicated.

The third plea in law, alleging infringement of Rule 22(6) of Regulation No 2868/95

15 The applicant argues, first of all, that it is apparent from Rule 22(6) of Regulation No 2868/95 that, if the evidence supplied in accordance with paragraphs 1 to 3 of that rule was not drafted in the language of the opposition proceedings, EUIPO could require the opposing party to submit a translation of that evidence in that language, within the specified period. The applicant submits that, in accordance with that provision, it is left to the discretion of EUIPO whether the opposing party had to submit a translation of the evidence of use in the language of the proceedings. According to the applicant, it was for EUIPO to balance, in the exercise of its discretion, the interests of both parties.

16 The applicant submits, in particular, that, since the invoices adduced by the intervener before EUIPO were not drafted in the language of the proceedings and their content was not correctly interpreted by the Board of Appeal, EUIPO should have requested a translation of those documents.

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

18 In that respect, the Court notes, first of all, that, with regard to ‘proof of use’, pursuant to Rule 40(5) of Regulation No 2868/95, the rule applicable mutatis mutandis in the present case is Rule 22(6) of that regulation, which provides, in the context of the application of Article 42(2) and (3) of Regulation No 207/2009, that EUIPO ‘may’ require the opposing party to submit a translation of that evidence in the language of the proceedings (judgment of 13 February 2015, Husky CZ v OHIM - Husky of Tostock (HUSKY), T-287/13, EU:T:2015:99, paragraphs 54 and 55). Thus, it is not appropriate to apply Rule 19(3) of Regulation No 2868/95 (see, to that effect, judgment of 15 December 2010, Epcos AG v OHIM - Epco Sistemas (EPCOS), T-132/09, not published, EU:T:2010:518, paragraph 53), which is more stringent (see, to that effect, judgment of 9 September 2016, Puma v EUIPO - Gemma Group (Representation of a bounding feline), T-159/15, EU:T:2016:457, paragraphs 23 to 25).

19 It follows from the foregoing that, as EUIPO rightly submits, in accordance with the applicable rules, cited in paragraph 18 above, it is not obliged, but rather entitled, to request the party supplying evidence to submit a translation of that evidence. In the first place, it must be noted, in the present case, as EUIPO argues, that even the invoices drafted in languages other than English, which are the only documents specifically referred to in the applicant’s allegation made before the Court, may be understood as they are, since they contain information relating to the contracting parties, the quantities, the nature of the products sold and the prices paid. In addition, the comprehension of some of those invoices is further facilitated by the fact that other items of evidence, which may be read in conjunction with those invoices, were submitted by the intervener before EUIPO. Although the products in question cannot be clearly determined from some invoices, that is not due directly to the absence of a translation. Furthermore, it must be noted that a significant number of the invoices submitted were drafted in English, that is to say, in the language of the opposition proceedings.

20 In the second place, as EUIPO rightly submits, it must be noted that the applicant, in a letter to EUIPO of 18 March 2014, on the one hand, criticised the fact that some evidence of use was submitted in languages other than the language of the proceedings, while asserting, on the other hand, that the Board of Appeal had to decide on the basis of the evidence as submitted, in order to avoid any further delay in the resolution of the case.

21 In that respect, it must be pointed out that, even though that latter assertion may be understood as meaning that the applicant had asked EUIPO not to specify additional periods for the intervener to submit further evidence on the use of the mark at issue, it is also clear that the applicant...