CELEX: 62012TJ0047
Community trade mark
Opposition proceedings
Application for the Community figurative mark EQUITER
Earlier Community word mark EQUINET
Relative ground for refusal
Genuine use of the earlier mark
Article 42(2) of Regulation (EC) No 207/2009
Obligation to state reasons

Background to the dispute
On 28 February 2008, the applicant, Intesa Sanpaolo SpA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 Community trade mark (
OJ 2009 L 78, p. 1
)).
The mark in respect of which registration was sought is the figurative sign reproduced below:
The goods and services in respect of which registration was sought fall within Classes 9, 16, 35, 36, 38, 41 and 42 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
—
Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus’;
—
Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks’;
—
Class 35: ‘Advertising; business management; business administration; office functions’;
—
Class 36: ‘Insurance; financial affairs; monetary affairs; real estate affairs’;
—
Class 38: ‘Telecommunications’;
—
Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’;
—
Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software’.
The Community trade mark application was published in
Community Trade Marks Bulletin
No 30/2008 of 28 July 2008.
On 27 October 2008, equinet Bank AG filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for in respect of the goods and services referred to in paragraph 3 above.
The opposition was based, inter alia, on the Community word mark EQUINET, the application for which was filed on 10 April 2000 and which was registered on 19 March 2003 for the services included in Classes 35, 36 and 38 and corresponding, in respect of each of those classes, to the following description:
—
Class 35: ‘Advertising; business management services; business administration; office functions; arranging of trade fairs and exhibitions for economic purposes, temporary employment agencies; drawing up of statistics; bookkeeping; auctioneering services; business investigations; marketing; market research and market analysis; shop-window dressing; business consultancy or organisation consultancy; business consultancy and advisory services; personnel consultancy; office machines and equipment rental; arranging and concluding commercial transactions for others; arranging contracts for the buying and selling of goods; distribution of goods for advertising purposes; document reproduction; advertising; advertising, radio and television advertising; cinema advertising; except services with regard to the providing of connections to the Internet’;
—
Class 36: ‘Insurance and finance; sales financing and credit risk insurance (factoring), credit card services, lending against security, debt collection agencies, financial affairs and issuing of travellers’ cheques, negotiation of securities, exchanging money, capital investment, credit consultancy, credit bureaux, enquiries into financial circumstances, safe deposit services, real estate and housing management, real estate agencies and mortgage brokerage, leasing, real estate appraisal, insurance brokerage, financial management, insurance, renting of flats’;
—
Class 38: ‘Communications and telecommunications; radio and television broadcasting, telex services, communications by telephone (operating of a telephone network), radio communication services (message sending), news agencies, transmission of sound or images by satellite, rental of modems, telephones and other telecommunications apparatus’.
The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
The opposition was based on all the services covered by the earlier mark and directed against a part of the goods and services applied for, namely those in Classes 9, 35, 36 and 38. By letter of 11 May 2009, the applicant requested that the opposing party submit proof of the genuine use of the earlier mark relied on in support of the opposition, in accordance with Article 42(2) of Regulation No 207/2009.
On 10 September 2010, the Opposition Division rejected the opposition on the ground that, even if the evidence lodged by the opposing party met the conditions relating to the place, time and extent of the use of the earlier mark, it did not meet the requirement relating to the nature of the use of that mark.
On 26 October 2010, the opposing party lodged an appeal before OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
By decision of 6 October 2011 (‘the contested decision’), the First Board of Appeal of OHIM upheld the appeal, annulled the Opposition Division’s decision and remitted the case to the Opposition Division.
In essence, the Board of Appeal held that the opposing party had submitted audited financial accounts for the years 2005 and 2007 which showed that the equinet group, composed of equinet Bank AG as parent company and a number of subsidiaries located in the European Union whose company name included the word ‘equinet’, had earned a sizeable income in the financial services field. The accounts in question were moreover supported by various relevant invoices addressed to clients of the same group. The Board of Appeal also observed that the earlier mark had been used in a form which did not alter its distinctive character. Furthermore, the opposing party had demonstrated that the earlier mark was used in the company names of companies in the equinet group in such a manner as to create a link between those company names and the services provided. In that context, the excerpts from the opposing party’s website and the press clippings produced showed use of the earlier mark for financial services. Thus the opposing party had proved genuine use of the earlier mark for financial services, valuation and research services, public relations services and business consultancy services and advisory services.
Forms of order sought
The applicant claims that the Court should:
—
annul the contested decision;
—
order OHIM to pay the costs.
OHIM contends that the Court should:
—
dismiss the action;
—
order the applicant to pay the costs.
Law
In support of its action, the applicant raises a single plea, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009, read in conjunction with Article 15(1)(a) of that regulation.
According to the applicant, the Board of Appeal’s assessment is vitiated by errors relating to the place, time, extent and nature of use of the earlier mark, the link between its use and the services for which it was registered and, lastly, the link between the earlier mark as registered and the mark used.
In this connection, it must first of all be pointed out that Article 42(2) of Regulation No 207/2009 provides that, ‘[i]f the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.’
It is apparent from that provision that the demonstration which must be given by the opposing party where a Community trade mark applicant submits an application to this effect concerns the use of the earlier mark relied upon in connection with the goods or services in respect of which it is registered and which are cited as justification for the opposition.
First, genuine use of the earlier mark is a preliminary matter which, once raised by the applicant for the trade mark, must be settled before a decision is given on the opposition proper (Case
T-364/05
Saint-Gobain Pam
v
OHIM - Propamsa (PAM PLUVIAL)
[2007] ECR II-757
, paragraph 37).
Second, the purpose of opposition proceedings founded on Article 8(1)(b) of Regulation No 207/2009 is to enable OHIM to assess whether there is a likelihood of confusion, which, where the conflicting marks are similar, entails an examination of the similarity between the goods and services designated by those marks. In that context, if the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it is, for the purposes of the examination of the opposition, deemed to be registered in respect only of that part of the goods or services, in accordance with the last sentence of Article 42(2) of Regulation No 207/2009. In the same context, it is also necessary for the Board of Appeal to assess, where use is proved only in respect of a part of the goods or services in a category in respect of which the earlier mark is registered and which is cited as justification for the opposition, whether that category includes independent sub-categories into which the goods and services in respect of which use is demonstrated may be classified, resulting in a finding that use has been proved only in respect of that sub-category of goods and services or, on the other hand, whether such sub-categories are not possible (see, to that effect, Case
T-483/04
Armour Pharmaceutical
v
OHIM - Teva Pharmaceutical Industries (GALZIN)
[2006] ECR II-4109
, paragraphs 26 and 27).
Consequently, there are two inseparable parts to the task of assessing whether a mark relied on in support of a notice of opposition has been put to genuine use within the meaning of Article 42(2) of Regulation No 207/2009. The first is intended to determine whether the mark at issue has been put to genuine use in the European Union, even in a form which differs by aspects which do not, however, alter the distinctive character of that mark in the form in which it has been registered. The second is intended to determine the goods or services in connection with which the earlier mark is registered and which are cited as justification for the opposition, to which the genuine use demonstrated relates.
In the present case, although the applicant stated, in points 14 and 17 of the application, that genuine use, within the meaning of Article 42(2) of Regulation No 207/2009, had to be demonstrated so far as concerned the services in respect of which the earlier mark was registered, it did not formally raise a plea alleging a failure to state reasons. However, an absence of or inadequate statement of reasons constitutes an infringement of essential procedural requirements for the purposes of Article 263 TFEU and is a plea involving a matter of public policy which may, and even must, be raised by the European Union judicature of its own motion (Case
C-89/08
Commission
v
Ireland and Others
[2009] ECR I-11245
, paragraph 34).
Since the parties were heard, at the hearing, on whether the contested decision contains sufficient reasons so far as concerns the correspondence between the services in respect of which the Board of Appeal held that genuine use of the earlier mark was demonstrated and those in respect of which that mark is registered and which are cited as justification for the opposition, that plea must be raised of the court’s own motion. If the contested decision does not contain the grounds relating to the two parts of the Board of Appeal’s task described in paragraph 21 above, it will be impossible for the General Court to review the lawfulness of the Board of Appeal’s finding on the genuine use of the earlier mark relied on in support of the opposition.
In this connection, the obligation to state reasons, laid down in the first sentence of Article 75 of Regulation No 207/2009, has the same scope as that enshrined in Article 296 TFEU and its purpose is to allow interested parties to know the reasons for the measure so as to enable them to protect their rights and to enable the European Union judicature to exercise its jurisdiction to review the legality of the decision. The question whether the statement of reasons for a decision satisfies those requirements is a question to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see, to that effect, Case
T-262/09
Safariland
v
OHIM - DEF-TEC Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR)
[2011] ECR II-1629
, paragraphs 90 and 91).
In that regard, according to point 19 of the contested decision, the opposing party claimed, before the Board of Appeal, genuine use of the earlier mark for financial services, valuation and research services, public relations services and business consultancy services and advisory services.
At the end of its reasoning on the evidence presented in support of genuine use, the Board of Appeal concluded, at point 45 of the contested decision, that that use had been proven ‘though not for all the relevant goods and services, but only for financial services, valuation and research services, public relations services and business consultancy services and advisory services’.
However, financial services, valuation and research services and public relations services are not included as such among the services in respect of which the earlier mark is registered. As is apparent from paragraphs 20 and 21 above, when the Board of Appeal examines the issue of whether an earlier mark has been put to genuine use within the meaning of Article 42(2) of Regulation No 207/2009, it must set out precisely to which goods and services in respect of which the earlier mark is registered and which are cited as justification for the opposition the genuine use shown relates. Failure to include such information vitiates, by reason of failure to state reasons, a decision which both concludes that an earlier mark has been put to genuine use within the meaning of Article 42(2) of Regulation No 207/2009 and refers to goods or services other than those in respect of which that mark was registered. That latter provision, which lays down the rules governing this question, requires that the goods or services in connection with which the Board of Appeal considers that genuine use has been demonstrated correspond to all or a part of the goods or services in respect of which that mark is registered, in order to allow a subsequent assessment of a likelihood of confusion, as set out in paragraph 20 above.
When a written question was put to OHIM on this issue in the context of measures of organisation of procedure, it replied, by letter of 10 April 2013, that it was not possible for it to ascertain whether the services in connection with which the earlier mark was considered to have been put to genuine use corresponded with the services in respect of which that mark was registered. In particular, the contested decision covered only the services in respect of which the earlier mark had been used, whereas the issue of whether those services were included in the services in respect of which that mark was registered would be examined by the Opposition Division, to which the case had been remitted.
However, that answer misinterprets the scope of Article 42(2) of Regulation No 207/2009, which defines genuine use as use in connection with the goods or services in respect of which the mark is registered and which are cited as justification for the opposition, thereby preventing a finding confirming such use from being justified by reference to other goods and services. In addition, the effect of OHIM’s approach is to increase the number of procedures aimed at examining the existence of genuine use, in a way that is contrary both to the letter and to the spirit of the abovementioned provision.
OHIM’s file moreover does not indicate either that there is any correspondence between financial services, valuation and research services and public relations services, on the one hand, and the services in respect of which the earlier mark is registered, on the other. As is apparent from page 159 of OHIM’s file, the Board of Appeal seems to have simply repeated that terminology from the grounds of the action brought before it.
In these circumstances, it must be found that the contested decision is vitiated by a failure to state reasons in so far as the Board of Appeal concludes in it that genuine use of the earlier mark within the meaning of Article 42(2) of Regulation No 207/2009 was demonstrated while stating that that use concerns financial services, valuation and research services and public relations services, which are not included among the services in respect of which that mark is registered (see paragraph 27 above).
It must be added that the fact that certain services in Class 36 listed in paragraph 6 above could be described as financial services does not remedy the failure to state reasons in the contested decision so far as concerns that type of services. In this connection, first, the Board of Appeal does not imply in any part of the contested decision that by the expression ‘financial services’ it is referring to all or even part of the services in Class 36 in respect of which the earlier mark is registered. OHIM’s letter of 10 April 2013 confirms that assessment (see paragraph 28 above). Secondly, such a lack of precision renders it impossible to apply both the last sentence of Article 42(2) of Regulation No 207/2009, according to which ‘[i]f the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services’ and, if applicable, the examination described in the last sentence of paragraph 20 above. In that regard, OHIM stated, at the hearing, that certain services in Class 36 and referred to in paragraph 6 above, such as real estate and housing management, cannot be described as financial services, which prevents the contested decision from being interpreted as referring to all those services. Thus, since it is impossible to know whether, by referring to ‘financial services’, the Board of Appeal is designating all or even a part of the services in Class 36 in respect of which the earlier mark was registered, it is impossible in practice to ascertain for which services the earlier mark must be deemed to be registered for the purposes of the opposition, which is liable to prevent any subsequent assessment of the likelihood of confusion.
As regards business consultancy and advisory services, in Class 35, referred to at paragraph 6 above, although the Board of Appeal concludes, at point 45 of the contested decision, that the earlier mark was put to genuine use with regard to such services, it does not refer to the evidence produced which would demonstrate that use.
Specifically, as is apparent from points 29, 30, 40 and 42 of the contested decision, the Board of Appeal, in order to justify its findings, relied on the evidence set out below.
This evidence is composed, first of all, of financial statements and a series of invoices from the owner of the earlier mark. However, according to points 29 and 31 of the contested decision, those items of evidence show genuine use in respect of financial services.
The same is true, next, of the excerpts from the website of the owner of the earlier mark and of the press clippings which demonstrate, according to the Board of Appeal, genuine use of that mark in respect of financial services (see points 40 and 42 of the contested decision).
Furthermore, since points 33 to 39 of the contested decision concern the form in which the earlier mark was used and the issue of whether the use of that mark as a company name may constitute genuine use, it must be stated that the contested decision does not set out the grounds for its finding that the earlier mark was put to genuine use for business consultancy and advisory services.
It must therefore be held that the contested decision is vitiated by a failure to state reasons in so far as, first, it is not possible to identify from it the services, among those in respect of which the earlier mark is registered and which are cited as justification for the opposition, in connection with which that mark was put to genuine use and, second, it does not state the grounds on which the Board of Appeal held that genuine use of the earlier mark had been demonstrated in connection with business consultancy and advisory services, falling within Class 35.
The contested decision must accordingly be annulled.
Costs
Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has applied for costs and OHIM has been unsuccessful, the latter must be ordered to bear its own costs and to pay those incurred by the applicant.

On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:

1.
Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 October 2011 (Case R 2101/2010-1);

2.
Orders OHIM to bear its own costs and to pay those incurred by Intesa Sanpaolo SpA.

Papasavvas
Forwood
Bieliūnas
Delivered in open court in Luxembourg on 27 March 2014.
[Signatures]
(
*1
)	Language of the case: English.