Judgment — ECLI:EU:T:2009:83
Date: 2009-03-25
Language of the case: English
Court formation: First Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Rights of the defence;Statement of reasons;Concept and criteria for assessment;Opposition proceedings
Procedure: Action for annulment - unfounded

Summary of the Judgment 1. Community trade mark – Appeals procedure – Decision on the appeal – Respect of the rights of the defence (Council Regulation No 40/94, Art. 73) 2. Community trade mark – Procedural provisions – Opposition proceedings (Council Regulation No 40/94, Art. 74(2)) 3. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Genuine use (Council Regulation No 40/94, Art. 43(2)) 4. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Genuine use (Council Regulation No 40/94, Art. 43(2)) 5. Community trade mark – Procedural provisions – Statement of reasons for decisions (Art. 253 EC; Council Regulation No 40/94, Art. 73) 1. Pursuant to the second sentence of Article 73 of Regulation No 40/94 on the Community trade mark, a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) may base its decision only on matters of fact or of law on which the parties have been able to set out their views. That provision lays down, in the Community trade mark law context, the general principle of the protection of rights of defence according to which a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known. In addition, the right to be heard covers all the matters of fact and law which form the basis for the decision‑making act but not the final position which the administration intends to adopt. Accordingly, the Board of Appeal is not obliged to hear an applicant with regard to a factual assessment which forms part of its final decision. (see paras 33-35) 2. It follows from the wording of Article 74(2) of Regulation No 40/94 on the Community trade mark that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time‑limits to which such submission is subject under the provisions of Regulation No 40/94 and that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is in no way prohibited from taking account of facts and evidence which are submitted or produced late. However, it is equally apparent from that wording that a party has no unconditional right to have facts and evidence which were submitted out of time taken into account by the Office. In stating that the latter ‘may’, in such a case, decide to disregard facts and evidence, Article 74(2) of Regulation No 40/94 grants the Office a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account. Where the Office is called upon to give a decision in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where the Office considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account. (see para. 82) 3. In interpreting the concept of genuine use within the meaning of Article 43(2) of Regulation No 40/94 on the Community trade mark, account should be taken of the fact that the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, in so far as there is no sound economic reason resulting from an actual function of the mark on the market. However, the purpose of the provision is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks. There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the registration. In that regard, the condition of genuine use of the mark requires that the mark, as protected on the relevant territory, be used publicly and externally. (see paras 99-100) 4. When assessing whether use of the trade mark is genuine within the meaning of Article 43(2) of Regulation No 40/94 on the Community trade mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark. As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use. The question whether use is sufficient to maintain or create market share for the goods or services protected by the mark thus depends on several factors and on a case‑by‑case assessment. The characteristics of those goods and services, the frequency or regularity of the use of the trade mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, or evidence of use which the proprietor is able to provide, are among the factors which may be taken into account. To examine whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. Moreover, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned. (see paras 101-105) 5. According to the first sentence of Article 73 of Regulation No 40/94 on the Community trade mark, decisions of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) are to state the reasons on which they are based. That duty has the same effect as that imposed by Article 253 EC. The duty to give reasons for a decision has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Community judicature to exercise its power to review the legality of the decision. Whether a statement of reasons 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. In particular, when the Office refuses registration of a sign as a Community trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal, absolute or relative, which precludes that registration and the provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify application of the provision relied on. However, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review. (see paras 125-128)