Judgments nº T-110/16 of Tribunal General de la Unión Europea, July 18, 2017

• Resolution Date: July 18, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-110/16

(EU trade mark - Revocation proceedings - EU word mark SAVANT - Genuine use of the mark - Article 51(1)(a) of Regulation (EC) No 207/2009 - Duty to state reasons - Article 75 of Regulation No 207/2009) In Case T-110/16,

Savant Systems LLC, established in Osterville, Massachusetts (United States), represented by O. Nilgen and A. Kockläuner, 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 Court, being

Savant Group Ltd, established in Burton in Kendal (United Kingdom), represented by G. Hollingworth, Barrister, K. Gilbert and G. Lodge, Solicitors,

ACTION against the decision of the Fourth Board of Appeal of EUIPO of 18 January 2016 (Case R 33/2015-4), relating to revocation proceedings between Savant Systems and Savant Group,

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová, President, V. Valančius and U. Öberg (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 18 March 2016,

having regard to the response of EUIPO lodged at the Court Registry on 27 June 2016,

having regard to the response of the intervener lodged at the Court Registry on 5 July 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 25 May 1998, the intervener, Savant Group Ltd, obtained the registration, under the number 32318, of the EU word mark SAVANT from 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 goods and services in respect of which that mark was registered are in Classes 9, 16, 41 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 July 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 9: ‘Computers and computing apparatus and instruments; data processing equipment, communications equipment and apparatus; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, magnetic tapes, cards and discs; cartridges and cassettes adapted for use with the aforesaid tapes, cards and discs; computer software; parts and fittings for all the aforesaid goods’;

- Class 16: ‘Printed publications; books, journals, periodicals, magazines and manuals, instructional and teaching materials; paper and paper products relating to computers’;

- Class 41: ‘Educational, instructional, training and teaching services relating to databases, data processing, computers, information apparatus and instruments; information and advisory services relating to the aforesaid services’;

- Class 42: ‘Computer software services; computer programming services; analytical and research services including technical analysis relating to communication and communication services and to information services, computers, data processing, databases, communication apparatus and instruments; consultancy, information and advisory services relating to the aforesaid including computer software, data processing and databases’.

3 On 9 September 2013, the applicant, Savant Systems LLC, filed an application for revocation of the mark at issue in its entirety pursuant to Article 51(1)(a) of Regulation No 207/2009, on the ground that that mark had not been put to genuine use during the five years preceding the filing of the application for revocation, that is to say, between 9 September 2008 and 8 September 2013 (‘the relevant period’).

4 By decision of 3 November 2014, the Cancellation Division partially upheld the application for revocation. It revoked the mark at issue for the goods and services referred to in paragraph 2 above, with the exception of ‘computer software services; computer programming services, consultancy services relating to computer software’ in class 42, for which the application for revocation was rejected.

5 On 2 January 2015, the intervener filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division in order to have the application for revocation dismissed in respect of all the goods and services referred to in paragraph 2 above, other than those referred to in paragraph 4 above.

6 On 3 March 2015, the intervener filed a statement setting out the grounds of the appeal.

7 By decision of 18 January 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the appeal in part. It concluded that the intervener had proved genuine use of the mark at issue, not only in respect of ‘computer software services; computer programming services, consultancy services relating to computer software’ in class 42, which were not covered by the appeal, but also in respect of the other services, referred to in paragraph 2 above, included in classes 41 and 42, and in respect of the ‘computer software’ in class 9.

Forms of order sought

8 The applicant claims that the Court should:

- annul the contested decision, in so far as it dismissed the application for revocation of the mark at issue in respect of the ‘computer software’ in class 9 and all the services referred to in paragraph 2 above in classes 41 and 42.

- order EUIPO to pay the costs.

9 EUIPO and the intervener contend that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

10 In support of its application, the applicant puts forward two pleas in law.

11 By its first plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009, read in conjunction with Article 15 of that regulation, the applicant claims that the Board of Appeal was incorrect to hold that the owner of the mark in question had provided proof of genuine use of that mark for the ‘computer software’ in class 9 and all the services referred to in paragraph 2 above in classes 41 and 42.

12 The second plea in law alleges infringement by the Board of Appeal of its duty to state reasons in that it did not take into consideration the report on the use of the mark at issue annexed to the application for revocation.

Admissibility of the action

13 The EUIPO and the intervener argue that the present appeal is inadmissible in so far as it covers ‘computer software services; computer programming services; consultancy services relating to computer software’ in class 42, since these were not the subject of the proceedings before the Board of Appeal.

14 Under Article 65(1) of Regulation No 207/2009, actions may be brought before the European Union judicature only against decisions of the Boards of Appeal. Therefore, it is only pleas directed against the decision of the Board of Appeal itself which are admissible in such an action (judgments of 7 June 2005, Lidl Stiftung v OHIM - REWE-Zentral (Salvita), T-303/03, EU:T:2005:200, paragraph 59, and of 2 February 2016, Benelli Q. J. v OHIM - Demharter (MOTOBI B PESARO), T-171/13, EU:T:2016:54, paragraph 23).

15 The services for which the application for revocation was rejected by the Cancellation Division, that is to say, ‘computer software services; computer programming services; consultancy services relating to computer software’ in class 42, were not the subject of the action brought before the Board of Appeal against the decision of the Cancellation Division.

16 Accordingly, the Court, first, dismisses as inadmissible the applicant’s claim in respect of those services, and secondly, allows the applicant’s claim in respect of all the other goods and services covered by the present action (‘the goods and services concerned’).

The first plea, alleging that there had been no genuine use of the mark at issue in respect of the goods and services concerned

17 By its first plea, the applicant claims, in essence, that the evidence produced by the intervener does not demonstrate genuine use of the mark at issue in respect of all the goods and services concerned. It argues, in particular, that that evidence demonstrates use of the intervener’s company name and not the mark at issue. Furthermore, it claims that that evidence does not establish a link between the mark at issue and the goods and services offered by the intervener under the different marks.

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

19 In the present case, the application for revocation was lodged on 9 September 2013. Accordingly, it is necessary to establish whether the intervener provided proof that, between 9 September 2008 and 8 September 2013, the mark at issue was put to genuine use in the European Union in respect of the goods and services concerned for which the application for revocation was declared to be admissible.

20 The first plea in law is essentially divided into two complaints.

The first complaint, alleging that the evidence demonstrates use of the intervener’s company name rather than use of the mark at issue

21 In that regard, the applicant claims, in particular, that, in the documents produced by the intervener, the presence of the figurative form of the word sign SAVANT, together with the contact details of the company at the top and bottom of those documents, is solely a reference to the owner of the mark at issue and that it does not refer in any way to the goods or services covered by the mark at issue. In the light of...