Judgments nº T-722/18 of Tribunal General de la Unión Europea, December 09, 2020

• Resolution Date: December 09, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-722/18

(EU trade mark - Invalidity proceedings - EU figurative mark BASIC - Earlier national trade names basic and basic AG - Relative grounds for refusal - Use in the course of trade of a sign of more than mere local significance - Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009 (now Article 8(4) and Article 60(1)(c) of Regulation (EU) 2017/1001) - Declaration of partial invalidity - Decision taken following the annulment of an earlier decision by the General Court - Referral of the case back to a Board of Appeal - Lack of competence of the authority referring the case - Article 1(d) of Regulation (EC) No 216/96 - Cross-claim)

In Case T-722/18,

Repsol, SA, established in Madrid (Spain), represented by J.-B. Devaureix and J.C. Erdozain López, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and V. Ruzek, acting as Agents,

defendant,

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

Basic AG Lebensmittelhandel, established in Munich (Germany), represented by D. Altenburg, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 August 2018 (Case R 178/2018-2), relating to invalidity proceedings between Basic Lebensmittelhandel and Repsol,

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins (Rapporteur), President, V. Kreuschitz and G. De Baere, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 7 December 2018,

having regard to the response of EUIPO lodged at the Court Registry on 4 March 2019,

having regard to the response of the intervener lodged at the Court Registry on 27 February 2019,

having regard to the cross-claim of the intervener lodged at the Court Registry on 27 February 2019,

having regard to the response of the applicant to the cross-claim, lodged at the Court Registry on 10 July 2019,

having regard to the response of EUIPO to the cross-claim, lodged at the Court Registry on 28 June 2019,

having regard to the replies to the measures of organisation of procedure, lodged at the Court Registry by EUIPO on 4 March 2020 and by the applicant on 6 March 2020,

further to the hearing on 3 July 2020,

gives the following

Judgment

Background to the dispute

1 On 29 January 2007, the applicant, Repsol, SA, 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), as amended, 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, claiming the colours blue, red, orange and white:

3 The services in respect of which registration was sought are in, inter alia, Classes 35 and 39 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, inter alia, for each of those classes, to the following description:

- Class 35: ‘Commercial retailing of tobacco, press, batteries, playthings’;

- Class 39: ‘Distribution of staple foodstuffs, pastry and confectionery, ices, prepared meals, tobacco, press, batteries, playthings’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 34/2007 of 16 July 2007.

5 The mark at issue was registered on 4 May 2009 under number 5648159.

6 On 26 September 2011, the intervener, Basic AG Lebensmittelhandel, submitted an application for declaration of partial invalidity of the mark at issue for the services referred to in paragraph 3 above.

7 That application was based on Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001), and on Article 53(1)(c) of Regulation No 207/2009 (now Article 60(1)(c) of Regulation 2017/1001), read in conjunction with Article 8(4) of that regulation (now Article 8(4) of Regulation 2017/1001).

8 In support of its application for a declaration of invalidity, to the extent that it was based on Article 53(1)(a) in conjunction with Article 8(1)(b) of Regulation No 207/2009, the intervener relied on the following earlier EU figurative trade mark, filed on 15 January 2004, registered on 29 April 2005 and duly renewed:

9 That earlier mark covered goods and services in Classes 29 to 33, 35, 42 and 43.

10 In support of its application for a declaration of invalidity, to the extent that it was based on Article 53(1)(c) in conjunction with Article 8(4) of Regulation No 207/2009, the intervener relied on the ‘business signs’, within the meaning of Paragraph 5 of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz) (German Law on the protection of trade marks and other distinctive signs) of 25 October 1994 (BGBl. 1994 I, p. 3082 and BGBl. 1995 I, p. 156), ‘basic’ and ‘basic AG’, which, it claims, it uses in the course of trade in Germany and Austria to provide services of ‘retail of foodstuffs, drugstore articles, organic and other consumer products, restaurant services’.

11 To substantiate its rights over those business signs, the intervener annexed a series of enclosures to its application for a declaration of invalidity, including screenshots from its website, its annual reports for the years 2004 to 2006, letters from a supplier, a delivery note, invoices, sales statistics, an affidavit sworn by a member of the intervener’s marketing department, tables detailing its turnover, marketing brochures, promotional and advertising material, an ‘Entrepreneur of the Year 2006’ certificate awarded to two of its directors, press clippings from 2003 to 2006 and a judgment of the Landgericht München I (Regional Court, Munich I, Germany) of 9 September 2006.

12 In its application for a declaration of invalidity, the intervener also cited the relevant provisions of Paragraphs 5 and 15 of the Law on the protection of trade marks and other distinctive signs, and decisions of German courts interpreting those provisions.

13 On 24 May 2012, the intervener responded to observations filed by the applicant on 29 December 2011 and produced various items of evidence intended to establish that the earlier EU figurative mark reproduced in paragraph 8 above had been put to genuine use. It also furnished additional evidence, annexed to its observations lodged on 4 March 2013.

14 By decision of 8 October 2013, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation and declared the partial invalidity of the mark at issue to the extent that it was registered in respect of the services referred to in paragraph 3 above. The Cancellation Division held that, as a result, it was not necessary to examine the ground for invalidity based on Article 53(1)(a) in conjunction with Article 8(1)(b) of Regulation No 207/2009.

15 On 2 December 2013, 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 Cancellation Division’s decision.

16 By decision of 11 August 2015, the First Board of Appeal of EUIPO confirmed the Cancellation Division’s decision and dismissed the appeal. It found that the Cancellation Division had correctly applied the ground for invalidity laid down in Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation. In that regard, it found, inter alia, that the evidence furnished by the intervener established to the requisite legal standard that the earlier signs ‘basic’ and ‘basic AG’ had been used in the course of trade of more than mere local significance, within the meaning of that provision. It held, as the Cancellation Division had done, that it was not necessary to examine the ground for invalidity based on Article 53(1)(a) in conjunction with Article 8(1)(b) of Regulation No 207/2009.

17 By application lodged at the Court Registry on 29 October 2015, the applicant brought an action for annulment of the Board of Appeal’s decision of 11 August 2015, registered as Case T-609/15.

18 By judgment of 21 September 2017, Repsol YPF v EUIPO - Basic (BASIC) (T-609/15, EU:T:2017:640), the Court annulled the Board of Appeal’s decision of 11 August 2015 on the grounds that the Board of Appeal, on the sole basis of the evidence on which it had based that decision, namely that set out in paragraph 11 above, could not conclude that the condition requiring use of the signs in the course of trade was satisfied. The Court noted, as regards the relevant period, that it was for the intervener to establish that the signs ‘basic’ and ‘basic AG’ were used in the course of trade in Germany, not only on the date of filing the application for registration of the mark at issue, but also on the date of filing the application for a declaration of invalidity. While the evidence in question proved to the requisite legal standard that those signs were used in the course of trade in Germany on the first date, it did not establish that they were still used on the second date.

19 On 24 January 2018, following the judgment of 21 September 2017, BASIC (T-609/15, EU:T:2017:640), the case was referred by the President of the Boards of Appeal back to the Second Board of Appeal, under reference number R 178/2018-2, on the basis of Commission Delegated Regulation (EU) 2017/1430 of 18 May...