Judgments nº T-672/16 of Tribunal General de la Unión Europea, December 13, 2018

• Resolution Date: December 13, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-672/16

(EU trade mark - Revocation proceedings - International registration designating the European Union - Figurative mark C=commodore - Application for invalidation of the effects of the international registration - Article 158(2) of Regulation (EC) No 207/2009 (now Article 198(2) of Regulation (EU) 2017/1001) - Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001) - No genuine use concerning certain goods and services covered by the international registration - Presence of proper reasons for non-use)

In Case T-672/16,

C=Holdings BV, established in Oldenzaal (Netherlands), represented initially by P. Maeyaert and K. Neefs and then by P. Maeyaert and J. Muyldermans, lawyers,

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 being

Trademarkers NV, established in Antwerp (Belgium),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 13 July 2016 (Case R 2585/2015-4), relating to revocation proceedings between Trademarkers and C=Holdings,

THE GENERAL COURT (Seventh Chamber),

composed of V. Tomljenović, President, A. Marcoulli and A. Kornezov (Rapporteur), Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 21 September 2016,

having regard to the response lodged at the Court Registry on 23 December 2016,

further to the hearing on 4 May 2018,

gives the following

Judgment

Background to the dispute

1 On 26 April 2006, Commodore International BV, the predecessor in title to the applicant, C=Holdings BV, obtained, from the World Intellectual Property Organisation (WIPO), international registration No 907082 designating, inter alia, the European Union (‘the international registration’).

2 The mark in respect of which the international registration was granted was the following figurative sign:

3 The international registration covers certain products and services in Classes 9, 25, 38 and 41 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.

4 The international registration reached the European Union Intellectual Property Office (EUIPO) on 21 December 2006, was published in the Community Trade Marks Bulletin No 52/2006 of 25 December 2006 and was accepted on 25 October 2007 for protection with the same effects as the registration of an EU trade mark (Community Trade Marks Bulletin No 60/2007 of 29 October 2007).

5 On 26 September 2014, Trademarkers NV filed an application for invalidation of the effects of the international registration with EUIPO, in accordance with Article 158(2) of Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (now Article 198(2) of 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)), read in conjunction with Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001).

6 Trademarkers sought the revocation of the applicant’s rights to the international registration on the basis that it had not been put to genuine use as an EU trade mark for a continuous period of five years.

7 Although, by decision of 3 November 2015, the Cancellation Division had upheld the application for revocation in respect of all the goods and services covered by the international registration, the Fourth Board of Appeal of EUIPO, by decision of 13 July 2016 (Case R 2585/2015-4) relating to revocation proceedings between Trademarkers and C=Holdings (‘the contested decision’), partially annulled the decision of 3 November 2015, holding that the applicant had established genuine use of the international registration for the relevant period, namely, from 26 September 2009 to 25 September 2014, as an EU trade mark for programs for electronic games for use in combination with computers, televisions and monitors, and game console software in Class 9.

8 However, the Board of Appeal found, as had the Cancellation Division, that the applicant had failed to establish genuine use in relation to the other goods and services and that the reasons put forward for non-use could not be regarded as proper reasons within the meaning of Article 51(1)(a) of Regulation No 207/2009. Consequently, the Board of Appeal annulled the decision of 3 November 2015 concerning the goods mentioned in paragraph 7 above, for which the international registration remains registered, dismissed the action as to the remainder and ordered each party before it to bear its own costs.

Procedure and forms of order sought

9 By application lodged at the Court Registry on 21 September 2016, the applicant brought the present action.

10 The applicant claims that the Court should:

- annul the contested decision to the extent that the Board of Appeal dismissed its appeal and refer the case back to the Board of Appeal;

- order EUIPO to pay the costs.

11 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

Subject matter of the proceedings

12 It should be pointed out from the outset, as is expressly stated in paragraphs 15 and 46 of the application, that that application is not directed against the part of the contested decision that recognised the existence of genuine use of the international registration as an EU trade mark for the goods in Class 9 listed in paragraph 7 above. Nor does the applicant dispute paragraphs 18 to 26 of the contested decision, concerning the fact that, according to the Board of Appeal, the applicant had not established genuine use in relation, first, to services and, secondly, to goods other than those listed in paragraph 7 above (‘the goods and services in question’). The applicant therefore centres its arguments on the existence of proper reasons for non-use of the international registration as an EU trade mark for the goods and services in question.

13 In its response, EUIPO agrees with this delimitation of the subject matter of the dispute.

Substance

14 In support of its action, the applicant puts forward ‘a single plea in law’ alleging infringement of the provisions of Article 15(1) and (2) of Regulation No 207/2009 (now Article 18(1) and (2) of Regulation 2017/1001) and of Article 51(1)(a) of Regulation No 207/2009. It also relies on infringement of Article 17 of the Charter of Fundamental Rights of the European Union and of Articles 75 and 76 of Regulation No 207/2009 (now Articles 94 and 95 of Regulation 2017/1001).

15 It is appropriate to examine, first of all, the plea alleging infringement of the provisions of Article 15(1) and (2) and of Article 51(1)(a) of Regulation No 207/2009.

16 Article 15(1) of Regulation No 207/2009 provides that ‘if, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use’.

17 Under Article 51(1)(a) of that regulation, ‘the rights of the proprietor of the EU trade mark shall be declared to be revoked ... : (a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use ... ’.

18 According to the case-law, only obstacles which have a sufficiently direct relationship with a trade mark, making its use impossible or unreasonable, and which arise independently of the will of the proprietor of that mark, may be described as ‘proper reasons’ for non-use of that mark. A case-by-case assessment is necessary in order to determine whether a change in the strategy of the undertaking with a view to circumventing the obstacle under consideration would make the use of that mark unreasonable (judgments of 17 March 2016, Naazneen Investments v OHIM, C-252/15 P, not published, EU:C:2016:178, paragraph 96, and of 29 June 2017, Martín Osete v EUIPO - Rey (AN IDEAL WIFE and Others), T-427/16 to T-429/16, not published, EU:T:2017:455, paragraph 50; see also, by analogy, judgment of 14 June 2007, Häupl, C-246/05, EU:C:2007:340, paragraph 54).

19 The Court of Justice notes, as regards the concept of unreasonable use, that if an obstacle is such as to jeopardise seriously the appropriate use of the mark, its proprietor cannot reasonably be required to use it nonetheless. Thus, for example, the proprietor of a trade mark cannot reasonably be required to sell its goods in the sales outlets of its competitors. In such cases, it does not appear reasonable to require the proprietor of a trade mark to change its corporate strategy in order to make the use of that mark nonetheless possible (judgment of 14 June 2007, Häupl, C-246/05, EU:C:2007:340, paragraph 53).

20 It is also apparent from the case-law that the concept of ‘proper reasons’ refers to circumstances unconnected with the trade mark proprietor rather than to circumstances associated with his commercial difficulties (see judgment of 18 March 2015, Naazneen Investments v OHIM (SMART WATER) (T-250/13, not published, EU:T:2015:160, paragraph 66 and the case-law cited).

21 In addition, it should be noted that Article 42(2) and Article 57(2) of Regulation No 207/2009 (now Article 47(2) and Article 64(2) of Regulation 2017/1001, respectively) state specifically that it is for the proprietor of the mark to furnish proof of genuine use or proper reasons for non-use. According to the case-law, the fact that, unlike Article 42(2) and...