Judgments nº T-910/16 of Tribunal General de la Unión Europea, April 04, 2019

• Resolution Date: April 04, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-910/16

(EU trade mark - Revocation proceedings - EU figurative mark TESTA ROSSA - Partial revocation - Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) - Proof of use - Outward use of the contested mark - Equal treatment)

In Cases T-910/16 and T-911/16,

Kurt Hesse, residing in Nuremberg (Germany), represented by M. Krogmann, lawyer,

applicant in Case T-910/16,

Wedl & Hofmann GmbH, established in Mils (Austria), represented by T. Raubal, lawyer

applicant in Case T-911/16,

v

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

defendant,

the other parties to the proceedings before the Board of Appeal of EUIPO, interveners before the General Court, respectively in Case T-910/16 and Case T-911/16, being

Wedl & Hofmann GmbH,

and

Kurt Hesse,

ACTIONS brought against the decision of the First Board of Appeal of EUIPO of 5 October 2016 (Case R 68/2016-1), relating to revocation proceedings between Mr Hesse and Wedl & Hofmann,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, I. Labucka and I. Ulloa Rubio (Rapporteur), Judges,

Registrar: E. Coulon,

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

having regard to the responses of EUIPO lodged at the Court Registry on 15 March 2017,

having regard to the responses of the interveners lodged at the Court Registry on 9 March (Case T-910/16) and 23 March 2017 (Case T-911/16),

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 8 July 2008, the applicant in Case T-911/16 and intervener in Case T-910/16, Wedl & Hofmann GmbH, 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), 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 Registration as a mark was sought for the following figurative sign, for which the colours black and red (Pantone 186 C) were claimed:

3 The goods and services in respect of which registration was sought are in Classes 7, 11, 20, 21, 25, 28, 30, 34 and 38 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 7: ‘Electric coffee grinders (not hand-operated)’;

- Class 11: ‘Coffee machines, electric; electric cooking utensils, in particular apparatus for making hot beverages and cold beverages; ice machines and apparatus’;

- Class 20: ‘Furniture’;

- Class 21: ‘Household, kitchen utensils and containers; coffee filtering apparatus (non-electric); coffee pots (non-electric); coffee grinders (hand-operated); glassware, porcelain, in particular tableware; glass beverage ware’;

- Class 25: ‘Clothing, namely gymnastic wear and sportswear, aprons, shirts, polo shirts and tee-shirts; headgear’;

- Class 28: ‘Games and playthings; gymnastic and sporting articles, namely golf clubs, golf bags, balls for golf, footballs, racquets for tennis, tennis bags, balls for tennis, not included in the other classes’;

- Class 30: ‘Coffee, tea, cocoa, sugar; pastry and confectionery, ices; chocolate; chocolate-based beverages; sweets’;

- Class 34: ‘Smoker articles; matches’;

- Class 38: ‘Telecommunications, in particular providing telecommunications connections to global computer networks’.

4 The trade mark application was published in Community Trade Marks Bulletin No 43/2008 of 27 October 2008. The mark was registered on 11 May 2009 under the number 007070519 in respect of the goods and services referred to in paragraph 3 above.

5 On 15 October 2014, the applicant in Case T-910/16 and intervener in Case T-911/16, Mr Kurt Hesse, filed an application for partial revocation of the contested mark on the basis of Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001) in respect of the goods and services in Classes 7, 11, 20, 21, 25, 28, 30, 34 and 38, except for the goods ‘coffee, tea, cocoa, sugar; chocolate; chocolate-based beverages; sweets’ in Class 30.

6 On 17 February 2015, within the period given, Wedl & Hofmann submitted observations regarding the use of the contested mark and requested that the application for revocation be rejected, without, however, furnishing all the evidence of use. Wedl & Hofmann sent by post the evidence of use which arrived at EUIPO on 23 February 2015, after the expiry of the time limit. On 10 May 2015, Wedl & Hofmann submitted additional documents by which it sought to prove genuine use of the contested mark.

7 On 17 November 2015, the Cancellation Division revoked Wedl & Hofmann’s rights in respect of all of the goods and services covered by the application for revocation, with effect from 15 October 2014.

8 On 13 January 2016, Wedl & Hofmann filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.

9 By decision of 5 October 2016 (‘the contested decision’), the First Board of Appeal of EUIPO partially upheld Wedl & Hofmann’s appeal and partially annulled the Cancellation Division’s decision in so far as the Board of Appeal maintained the registration of the contested mark in respect of ‘household, kitchen containers; glassware, porcelain, in particular tableware; glass beverage ware’ in Class 21 and ‘clothing, namely aprons, shirts, polo shirts and tee-shirts; headgear’ in Class 25 (‘the contested goods in Classes 21 and 25’). In particular, first of all, the Board of Appeal found that the evidence of use which Wedl & Hofmann had submitted late was admissible on the basis of Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001). In that regard, it stated, in paragraph 22 of the contested decision, that Article 76 of Regulation No 207/2009 granted EUIPO a discretion to decide whether or not to take facts and evidence submitted late into account and added that the Court of Justice had held that, as a general rule and unless otherwise specified, the submission of facts and evidence remained possible after the expiry of the time limits to which such submission was subject under the provisions of Regulation No 207/2009, and that EUIPO was in no way prohibited from taking account of facts and evidence which were submitted or produced late. Secondly, the Board of Appeal pointed out that outward use of a mark did not necessarily mean use aimed at end consumers and that it could not be ruled out that the use relied upon by Wedl & Hofmann was genuine solely because the commercial acts invoked by it were not directed at end consumers, but at industrial customers like licensees and franchisees. Consequently, the Board of Appeal found that Wedl & Hofmann had, on the basis of the evidence provided, proved genuine use of the contested mark as regards the contested goods in Classes 21 and 25. Lastly, the Board of Appeal found that the evidence was insufficient to prove that the contested mark had been used in connection with the remainder of the goods and services covered by the application for revocation.

Forms of order sought

Case T-910/16

10 Mr Hesse claims that the Court should:

- annul the contested decision and declare Wedl & Hofmann’s rights to be revoked also in respect of the contested goods in Classes 21 and 25;

- order EUIPO to pay the costs.

11 EUIPO and Wedl & Hofmann contend that the Court should:

- dismiss the action;

- order Mr Hesse to pay the costs.

Case T-911/16

12 Wedl & Hofmann claims that the Court should:

- annul or alter the contested decision;

- order EUIPO to pay the costs.

13 EUIPO and Mr Hesse contend that the Court should:

- dismiss the action;

- order Wedl & Hofmann to pay the costs.

Law

14 Having heard the parties on the matter, the Court considers it appropriate to join the present cases for the purposes of the decision which closes the proceedings, in accordance with Article 19(2) and Article 68(1) of the Rules of Procedure of the General Court.

15 It must be stated at the outset that the Board of Appeal found that the evidence of use showed that there had been genuine use of the contested mark in connection with the contested goods in Classes 21 and 25. By contrast it found that there had been no genuine use of the contested mark in connection with the remainder of the goods and services covered by the application for revocation. By their respective actions, Mr Hesse seeks to have the application for revocation upheld in respect of all the goods and services covered by that application and Wedl & Hofmann seeks to have that application dismissed in its entirety.

16 In support of his action in Case T-910/16, Mr Hesse relies on a single plea in law, alleging, in essence, infringement of Article 51(1)(a) of Regulation No 207/2009.

17 In Case T-911/16, Wedl & Hofmann relies on two pleas in law, the first alleging infringement of Article 51(1)(a) of Regulation No 207/2009, Article 15(1)(a) of Regulation No 207/2009 (now Article 18(1)(a) of Regulation 2017/1001) and Rule 40(5) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article...