Opinion of the Advocate General — ECLI:EU:C:2018:266
Date: 2018-04-19
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible
Origin: United Kingdom

Summary — Judgment of the Court (Third Chamber), 25 July 2018 1. Appeal — Grounds — Form of order seeking a substitution of grounds — Inadmissibility (Rules of Procedure of the Court of Justice, Art. 169(1)) 2. Judicial proceedings — Res judicata — Scope 3. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Meaning — Criteria for assessment — Territorial extent of the use (Council Regulation No 207/2009, Art. 15(1), first para.) 4. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Distinctive character acquired through use — Trade mark devoid of distinctive character throughout the EU — Acquisition by use also throughout the EU (Council Regulation No 207/2009, Art. 7(3)) 5. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Distinctive character acquired through use — Probative value of the evidence (Council Regulation No 207/2009, Art. 7(3)) 1. See the text of the decision. (see paras 40-42) 2. The force of res judicata extends only to the grounds of a judgment which constitute the necessary support of its operative part and are, therefore, inseparable from it. Consequently, when a decision of the European Union Intellectual Property Office (EUIPO) is annulled by the General Court, the grounds on the basis of which that court dismissed certain arguments relied upon by the parties cannot be considered to have gained the force of res judicata. (see paras 52, 53) 3. The Court held that the requirements that apply to verification of the genuine use of a mark, within the meaning of Article 15(1) of Regulation No 40/94 on the Community trade mark — a provision that was reproduced without amendment in the first paragraph of Article 15(1) of Regulation No 207/2009 on the European Union trade mark — are analogous to those concerning the acquisition by a sign of distinctive character through use for the purpose of its registration, within the meaning of Article 7(3) of that regulation. However, it must be pointed out that, unlike the case that gave rise to the judgment of 19 December 2012, Leno Merken, C‑149/11, in which the Court noted that, in order to assess the existence of ‘genuine use in the Community’ within the meaning of Article 15(1) of Regulation No 207/2009, it is necessary to disregard the territorial borders of the Member States, the judgment of 18 April 2013, Colloseum Holding, C‑12/12, does not relate to the geographic scope that is relevant for the purposes of assessing the existence of genuine use within the meaning of that provision, but to the possibility of concluding that the requirement for genuine use of a trade mark within the meaning of that provision is satisfied when a registered mark that has acquired its distinctive character as a result of the use of another composite mark, of which it is one of the elements, is used only as part of that composite mark, or when it is used only in combination with another mark, the combination of the two marks being, in addition, itself registered as a mark. Therefore, paragraph 34 of the judgment of 18 April 2013, Colloseum Holding, C‑12/12, cannot be read as meaning that the requirements for assessing the territorial scope that permits the registration of a mark in consequence of its use are analogous to the requirements permitting the preservation of the rights of the proprietor of a registered mark. In addition, it must be noted that, with regard to the genuine use of an EU mark that is already registered, there is no analogous provision to that in Article 7(2) of Regulation No 207/2009, with the result that it cannot automatically be assumed that there is no such use simply because the mark concerned has not been used in part of the European Union. Thus, the Court found that whilst it was justified to expect that an EU trade mark should be used in a larger area than the territory of a single Member State in order for the use to be regarded as ‘genuine use’, it cannot be ruled out that, in certain circumstances, the market for the goods or services for which an EU trade mark has been registered is in fact restricted to the territory of a single Member State, with the result that use of that trade mark on that territory might satisfy the condition for genuine use of an EU trade mark. (see paras 70-74) 4. With regard to the acquisition by a mark of distinctive character in consequence of the use which has been made of it, it must be recalled that the Court has held previously that a sign can be registered as an EU trade mark under Article 7(3) of Regulation No 207/2009 of the European Union trade mark only if evidence is provided that it has acquired, in consequence of the use which has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such character for the purposes of Article 7(1)(b). The Court also stated that the part of the European Union referred to in Article 7(2) may be comprised, where necessary, of a single Member State. It follows that, with regard to a mark that is, ab initio, devoid of distinctive character across all Member States, such a mark can be registered pursuant to that provision only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union. Admittedly, in paragraph 62 of the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, the Court did find that even if it is true that the acquisition by a mark of distinctive character through use must be proved for the part of the European Union in which that mark did not, ab initio, have such character, it would be unreasonable to require proof of such acquisition for each individual Member State. However, it does not follow from that finding that, where a mark is devoid of inherent distinctive character throughout the European Union, it is sufficient, in order for it to be registered as an EU trade mark pursuant to Article 7(3) of Regulation No 207/2009, to prove that it has acquired distinctive character through use in a significant part of the European Union, even though such evidence has not been provided in respect of every Member State. (see paras 75-78) 5. No provision of Regulation No 207/2009 on the European Union trade mark requires that the acquisition of distinctive character through use, within the meaning of Article 7(3) of that regulation, be established by separate evidence in each individual Member State. Therefore, it is not inconceivable that the evidence provided to establish that a particular sign has acquired distinctive character through use is relevant with regard to several Member States, or even to the whole of the European Union. In particular, it is possible that, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned. The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has a sufficient knowledge of the products and services that are present on the national market of the second. It follows from those findings that, although it is not necessary, for the purposes of registering, on the basis of Article 7(3) of Regulation No 207/2009, a mark that is, ab initio, devoid of distinctive character throughout all the Member States of the European Union, that evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must be capable of establishing such acquisition throughout the Member States of the European Union. The question of whether the evidence submitted is sufficient to prove a particular sign’s acquisition through use of distinctive character in the part of the territory of the European Union in which that sign did not, ab initio, have distinctive character is a matter of the assessment of evidence, for which the bodies of European Union Intellectual Property Office (EUIPO) are primarily responsible. Such an assessment is subject to the scrutiny of the General Court, which, where an action is brought before it against a decision of a Board of Appeal, has exclusive jurisdiction to find the facts and, therefore, to appraise them. However, that assessment of the facts does not, save where the evidence has been distorted by the General Court, constitute a point of law which is subject, as such, to review by the Court of Justice in an appeal. Nevertheless, if the bodies of EUIPO or the General Court, after having assessed all of the evidence that has been submitted to them, find that some of that evidence is sufficient to prove the acquisition by a particular sign of distinctive character through use in the part of the European Union in which it is, ab initio, devoid of distinctive character and therefore to justify its registration as an EU trade mark, they must clearly state that that is the case in their respective decisions. (see paras 80-86)