Judgments nº T-78/19 of Tribunal General de la Unión Europea, April 29, 2020

• Resolution Date: April 29, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-78/19

(EU trade mark - Revocation proceedings - European Union figurative mark green cycles - Genuine use of the mark - Article 18(1) of Regulation (EU) 2017/1001 - Article 58(1)(a) of Regulation 2017/1001 - Article 10(3) and (4) of Delegated Regulation (EU) 2018/625 - Form differing in elements which do not alter the distinctive character - Lack of use of the sign as a company logo)

In Case T-78/19,

Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented by A. Marx, K. Bonhagen and M. Wolter, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Scardocchia and J. Crespo Carrillo, acting as Agents,

defendant,

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

Plásticos Hidrosolubles, SL, established in Rafelbuñol (Spain), represented by C. Sueiras Villalobos, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 29 November 2018 (Case R 778/2018-5) relating to revocation proceedings between Lidl Stiftung and Plásticos Hidrosolubles,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and T. Perišin, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Registry of the General Court on 8 February 2019,

having regard to the response of EUIPO lodged at the Court Registry on 16 April 2019,

having regard to the response of the intervener lodged at the Court Registry on 6 May 2019,

further to the hearing on 16 January 2020,

gives the following

Judgment

Background to the dispute

1 On 13 January 2010, the intervener, Plásticos Hidrosolubles, SL, filed an application for registration of an EU 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), as amended (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:

3 The goods and services for which registration was sought are in Classes 17, 20, 40 and 42 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 17: ‘Plastics in extruded form for use in manufacture; semi-processed goods of plastic; semi-processed goods of water-soluble, biodegradable and compostable plastic; plastic fibres, plastic film, plastic sheeting, plastic plates; Plastic semi-worked products’;

- Class 20: ‘Articles made of plastics; goods of water-soluble, biodegradable and compostable plastic’;

- Class 40: ‘Treatment of materials; in particular treatment, processing of plastic and decoration of plastic surfaces’;

- Class 42: ‘Engineering for the plastic processing industry, design and development of products of plastic or made using plastic; scientific and technological services and research for goods of plastic; Engineering, namely consultancy relating to the design, development and manufacture of injection moulded parts of plastic’.

4 The application was published on 17 May 2010 and the contested mark was registered on 2 September 2010 under No 8807265 in respect of all the goods and services referred to in paragraph 3 above.

5 On 3 September 2015, the applicant, Lidl Stiftung & Co. KG, filed, under Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), an application for revocation of the EU trade mark referred to above in respect of all of the goods and services covered by that mark.

6 On 16 September 2016, the intervener submitted a series of items of evidence to prove genuine use of its mark. That evidence was submitted in four documents, under the headings ‘self-advertising’ (document No 1), ‘advertising’ (document No 2), ‘commercial activity’ (document No 3) and ‘trade mark management’ (document No 4), which were annexed to the file of the proceedings before EUIPO.

7 On 15 March 2018, the Cancellation Division of EUIPO partially upheld the application for revocation, in so far as it declared the intervener’s mark to be revoked, with effect from 3 September 2015, in respect of certain services in Class 40, namely ‘treatment of materials with the exception of plastics’.

8 On 26 April 2018, the applicant 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, seeking the partial annulment thereof in so far as that decision allowed the contested mark to stay registered for the remaining goods and services in Classes 17, 20, 40 and 42.

9 By decision of 29 November 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed that appeal and upheld the decision of the Cancellation Division. The Board of Appeal considered that the evidence adduced by the intervener, considered as a whole, was sufficient to prove genuine use of the contested mark during the relevant period for Classes 17, 20 and 42 and partially for Class 40, in accordance with Article 58(1)(a) and (2) of Regulation 2017/1001 and with the criteria in 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 (now Article 10(3) and (4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation [2017/1001], and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)).

Forms of order sought

10 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs incurred in the context of the present proceedings before the Court;

- order the intervener to pay the costs incurred in the context of the proceedings before the EUIPO.

11 EUIPO contends that the Court should:

- annul the contested decision in so far as the Board of Appeal concluded that genuine use of the contested mark had been shown by the intervener in respect of all of the goods included in Class 20;

- dismiss the action as to the remainder;

- order each party to bear its own costs.

12 The intervener contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

13 In support of its action, the applicant puts forward a single plea, alleging, in essence, infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Rule 22(3) and (4) of Regulation No 2868/95. It should be noted that, as the applicant stated in paragraph 13 of the application, the content of those provisions is identical to that, respectively, of Article 18(1) of Regulation 2017/1001 and of Article 10(3) and (4) of Delegated Regulation 2018/625.

14 That plea is divided, in essence, into three parts, the first alleging the existence of errors made during the assessment of the use of the contested mark in connection with all of the goods and services designated by that mark, the second alleging an erroneous assessment relating to the use of the contested mark in the form in which it was registered, and the third alleging an erroneous assessment relating to the use of the contested mark as a trade mark.

The first part, alleging the existence of errors made during the assessment of the use of the contested mark in connection with all of the goods and services designated

15 The applicant criticises the Board of Appeal for having committed an error by concluding that the intervener had shown, during the revocation proceedings, genuine use of the contested mark with respect to all the goods and services designated by it. According to it, the Board of Appeal focused its analysis on the ‘sales of one or two products’, instead of analysing each category of goods or services covered by that mark.

16 In particular, the applicant claims, first of all, that the invoices provided by the intervener relate only to plastic bags and plastic films, but that they concern no other goods or services, in particular, as the Board of Appeal noted, golf balls, plastic bottles or the wads for cartridges. Likewise, contrary to the Board of Appeal, it considers that neither the advertising material nor the material about sponsorships of events produced by the intervener for the purposes of showing use of the contested mark proves that the goods covered by that mark have been put on the market and sold. In that regard, it adds that the evidence of use originating from the sphere of the proprietor of the trade mark has, according to the case-law, less evidential value than evidence deriving from a third party. On that basis, it alleges that the majority of the documents provided by the intervener do not emanate from an independent source that could support their authenticity.

17 Next, as regards the goods in Classes 17 and 20, the applicant considers that, in accordance with the case-law, the Board of Appeal should have examined more closely the different subcategories forming part of those two classes in more detail and not found use of the contested mark for those classes of goods in such a broad manner. According to it, there is hardly any article which cannot be made out of plastic, so that the Board of Appeal should have identified, in relation to Classes 17 and 20, subcategories capable of being viewed independently in the context of its examination.

18 Finally, the applicant alleges that the Board of Appeal wrongly considered that the contested mark had been used publicly and outwardly, as is required by settled case-law. More particularly, it considers that the documents provided by the intervener were never publicly used in the context of a commercial...