Information;Judgment — ECLI:EU:T:2023:510
Date: 2023-09-06
Language of the case: English
Court formation: Second Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Spain

summary fashion, that it furnished proof of genuine use of the contested mark in connection with IT services, which is, it submits, sufficiently apparent from the annexed evidence. However, it must be observed that mere indications like Yomvi, JavaScript Engineer Volia or software on only five invoices are insufficient to establish that what is involved concerns IT services or computer software design and development services. As regards the commercial offers, it must be stated that they are unsigned and confidential and that no contract resulting from them has been annexed or even mentioned. That is true, a fortiori, of the screenshot of 30 August 2020 or the photographs of international trade fairs, which do not contain sufficient information to prove that the services invoiced may be regarded as IT services or computer software design and development services. 49 It must therefore be held that, contrary to what the applicant claims, the Board of Appeal took into account, and analysed, all the documents on which the applicant had relied in the present case, in order to assess whether the use of the contested mark was genuine. Since the applicant has not put forward any argument to dispute the merits of the Board of Appeal’s findings in that regard and has not adduced any additional evidence to prove genuine use of the contested mark, such genuine use, for the purposes of the case-law referred to in paragraphs 24 to 28 above, cannot be deduced from the documents on which the applicant relied in its written pleadings without recourse being had to presumptions. However, according to the case-law referred to in paragraph 27 above, genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned. 50 It must be borne in mind that, pursuant to the case-law cited in paragraph 28 above, in proceedings for revocation of a trade mark, it is, in principle, for the proprietor of the mark to prove genuine use of that mark and, in particular, the fact that the services at issue were IT services and computer software design and development services. 51 Consequently, the Board of Appeal did not make any error of assessment in finding that the evidence submitted by the applicant was not sufficient to prove genuine use of the contested mark in connection with ‘IT services; design and development of computer software; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’. The second complaint, alleging use of the mark in another form which does not alter its distinctive character 52 The applicant submits that use of the contested mark in a differing form, that of a black and white version which does not alter the distinctive character of the mark, has also been proved. It argues that that use of the contested mark was, however, completely ignored by the Board of Appeal. 53 The applicant thus submits that, although it has used the EU trade mark in a form which differs from that in which that mark was registered, the differences are minimal and do not alter the distinctive character of the mark, with the result that that use must be considered to be genuine use. It contends that the black and white version of the mark therefore complies with the concept of, and the criteria for, genuine use. To that end, it cites two decisions of the Boards of Appeal and states that images are publicly accessible on its social network accounts. 54 EUIPO and the intervener dispute that line of argument. 55 In the first place, it must be stated that the Board of Appeal neither refused to take into account the use of the contested mark in a form which differed from that in which it had been registered nor, more generally, addressed that issue. The contested decision is based solely on the ground that the evidence which the applicant adduced does not serve to prove that the contested mark has been put to genuine use in connection with the services in respect of which it was registered. 56 In that regard, it must be borne in mind that it is not for the Court, in its review of the legality of the contested decision, to carry out an assessment on which the Board of Appeal has not adopted a position (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72). 57 In those circumstances, the line of argument developed by the applicant in the context of this complaint is ineffective. 58 In the second place, it must be pointed out that the applicant’s reference to the various images relating to the use of the mark which are publicly accessible on its social media networks, by merely mentioning links to accounts on the social networks Instagram and Facebook, must be rejected. 59 In that regard, it is sufficient to note that it is not, first, for the adjudicating bodies of EUIPO to search on the applicant’s websites or social networks for the evidence which makes it possible to establish that the contested mark is well known and, secondly, for the Court to re-examine that evidence on the basis of information which the applicant did not provide to the adjudicating bodies of EUIPO in order to establish that there has been genuine use of the contested mark. 60 In the present case, the Board of Appeal did not therefore err in finding that the documents submitted by the applicant in the context of the revocation proceedings before EUIPO did not contain any evidence which made it possible to conclude that there had been genuine use as a trade mark or to know the scale of use of the mark. Consequently, the Board of Appeal was also right in finding, in paragraph 50 of the contested decision, that all the documents submitted by the applicant were, as a whole, incapable of showing genuine use of the contested mark for ‘IT services; design and development of computer software; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’ which was capable of ensuring that the rights were maintained. 61 The single plea in law must therefore be rejected and consequently the action must be dismissed in its entirety. Costs 62 Under Article 134(1) 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. 63 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only if the oral part of the procedure is opened, it is appropriate, since no hearing has been held, to order EUIPO to bear its own costs. On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Dismisses the action; 2. Orders Consultora de Telecomunicaciones Optiva Media, SL to bear its own costs and to pay those incurred by Optiva Canada Inc.; 3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs. Marcoulli Schwarcz Norkus Delivered in open court in Luxembourg on 6 September 2023. V. Di Bucci M. van der Woude Registrar President * Language of the case: English.