Judgment — ECLI:EU:T:2018:697
Date: 2018-10-18
Language of the case: English
Court formation: Sixth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded

summary of the pleas in law relied on; new pleas in law may not be introduced in the course of the proceedings unless they are based on matters of law or of fact which come to light in the course of the procedure. In the present case, the arguments at issue put forward by the applicant were not submitted at the application stage even though they are based on information that was already known to the applicant when the application was lodged. Moreover, those arguments do not present a sufficiently close connection with the pleas raised in the application. 42 It follows that the question whether ‘sports cars in kit form’, for which the earlier mark was found to have been used by the Board of Appeal, constitute an independent subcategory of the broader category of ‘sports cars’ does not fall within the scope of the present dispute. 43 Secondly, in so far as the applicant submits that the evidence provided by the applicant for a declaration of invalidity does not prove the use in the course of trade of the earlier mark for conventional cars, which are sold completely assembled, that argument must be rejected as ineffective, in so far as the Board of Appeal did not find such use to have occurred. Indeed, the latter merely found that the products sold under the earlier mark were sports cars in kit form which, in principle, must be assembled by the customers themselves. 44 Thirdly, the applicant submits, in essence, that the evidence submitted by the applicant for a declaration of invalidity does not show use of the earlier mark in relation to complete component kits enabling a purchaser to assemble a car. 45 The Board of Appeal found, in paragraph 20 of the contested decision, that the goods sold under the earlier mark were kit cars, although a donor vehicle was necessary in order to build a sports car called VIPER. It stated, relying in particular on the articles from specialist magazine kitcar, that the activity carried out by the applicant for a declaration of invalidity was not the sale or advertising of mere vehicle parts. In addition, it is apparent from paragraph 22 of the contested decision that the initial evidence was considered sufficient in order to conclude that the applicant for a declaration of invalidity had offered and sold kits for the building of VIPER sports cars. That conclusion, concerning the goods for which the earlier mark was used, is repeated at paragraph 30 of the contested decision, in the context of the assessments relating to additional evidence. Finally, in paragraph 25 of the contested decision, the Board of Appeal referred to particularities of sports cars proposed by the applicant for a declaration of invalidity, and to the fact that those cars were offered in a niche market for car enthusiasts seeking to build their own car. 46 As a preliminary point, it should be noted that the applicant does not dispute that ‘sports cars in kit form’ existed on the market or the fact that the market for such goods is niche. However, it denies that the evidence produced by the applicant for a declaration of invalidity proves the sale of complete component kits enabling a purchaser to assemble a complete car. It states that some parts, such as a donor vehicle and the engine, must come from other sources than the applicant for a declaration of invalidity. It also points out that the Board of Appeal incorrectly referred to the complete nature of kits sold by the applicant for a declaration of invalidity. Furthermore, the applicant submits that the Board of Appeal incorrectly relied on the definition of the term ‘kit car’ in the Oxford English Dictionary in order to conclude that the goods sold by the applicant for a declaration of invalidity corresponded to that definition. 47 In that regard, first, it must be held that the Board of Appeal correctly defined kit cars as cars which, in principle, must be assembled by the customers themselves. As EUIPO contends, these are car enthusiasts who are ready to devote considerable time and resources in order to assemble a vehicle themselves using the particular concept developed and sold by the supplier of the kit cars. Their purpose is thus to have a specific car, which may, following assembly, be deemed roadworthy. It is also apparent from articles published in specialist magazine kitcar that such cars may take several months or even years to build. 48 Therefore, kit cars have certain specificities and are, moreover, niche products, as the Board of Appeal correctly held, without being challenged by the applicant. 49 In accordance with the case-law referred to in paragraph 22 above, when assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, including in particular 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 the goods or services at issue, and the characteristics of the market. 50 It follows that the Board of Appeal correctly took account, in the assessment of the genuine use of the earlier mark, of the nature of the goods for which the mark was found to have been used as well as the characteristics of the relevant market. 51 Next, it must be held that the Board of Appeal did not define, contrary to what the applicant submits, a kit car as a kit which includes all the parts necessary for assembling a car. It found that the earlier mark had been used for sports cars in kit form despite the need for, in respect of certain vehicle components, a donor vehicle. 52 Admittedly, the Board of Appeal referred, in response to the applicant’s arguments, to the ‘comprehensive nature’ of the kits proposed by the applicant for a declaration of invalidity under the earlier mark. 53 However, that fact does not make it possible to conclude that, in the present case, the Board of Appeal found that the goods sold by the applicant for a declaration of invalidity were kits containing all the components necessary to build a car. 54 In the passage in question, reference is also made to the particularities of the kit cars market, including the fact that the relevant public is composed of persons who wish to build their own car and to whom the applicant for a declaration of invalidity offers kits, the precise content of which may vary depending on the customer’s request, making it possible to build a specific car, namely the sports cars known under the trade mark VIPER. 55 It follows that the applicant’s arguments alleging the incomplete nature of kits offered by the applicant for a declaration of invalidity are based on a misreading of the contested decision. 56 The applicant’s other arguments do not call into question the Board of Appeal’s finding that the applicant for a declaration of invalidity offers sports cars in kit form in the relevant market. 57 First, as regards the question whether it is necessary that all the components of a kit car are manufactured or sold by their suppliers in order for it to be deemed that they offer a kit car on the market, it must be noted that the applicant merely indicates that the kits offered by the applicant for a declaration of invalidity do not contain all the components necessary to build a car, and does not put forward any specific arguments capable of establishing that the sale of a kit car necessarily requires the sale of kits containing all components needed for assembly of the car. 58 Furthermore, the applicant’s argument that, in essence, some elements required in order to build VIPER sports cars come from sources other than the applicant for a declaration of invalidity and hence are not sold by the latter cannot succeed, since it is apparent from the file that the kits proposed by the applicant also include components from other manufacturers, such as the engine or suspension. 59 In any event, it should be noted that even the use of the earlier trade mark for partial kits only, sold for the building of specific sports cars in kit form, namely the VIPER sports car, may be considered, taking account of the purpose of the goods, as falling within the scope of ‘sports cars in kit form’ (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 41). Accordingly, the question whether all the components of the VIPER sports cars in kit form are manufactured or sold by the applicant for a declaration of invalidity is not decisive. 60 Secondly, as regards the applicant’s argument that, in essence, the Board of Appeal relied on a dictionary definition of the term ‘kit-car’ in order to establish that the goods sold by the applicant for a declaration of invalidity were sports cars in kit form, it should be noted that it is clearly apparent from the contested decision that the Board of Appeal based its analysis on the evidence submitted by the applicant and dating from the relevant period, and, in particular, on the articles published in specialist magazine kitcar as well as on the frequent and regular insertion of advertisements concerning the earlier mark in that magazine. 61 In those circumstances, it must be held that the Board of Appeal did not err in finding that the earlier mark had been used for sports cars in kit form. Accordingly, the applicant’s complaint alleging lack of use of the earlier mark for the goods covered by it must be rejected. The complaint challenging the extent of use of the earlier mark 62 In the contested decision, the Board of Appeal found that the initial evidence was sufficient in respect of the extent of the use of the earlier mark. It based its finding, in essence, on articles published in specialist magazine kitcar, on the frequent and regular insertion of advertisements in respect of the earlier mark in the magazine and on the presence of that mark at motor shows. In that context, the Board of Appeal took account of the particularities of the market for kit cars and stated that those particularities could have a bearing on the assessment of the evidence of use. 63 As regards the further evidence, the Board of Appeal found that it strengthened and clarified the initial evidence. It pointed out that the invoices produced were evidence of transactions by the applicant for a declaration of invalidity with seven different clients in the United Kingdom and that the items supplied provided evidence of that party’s long presence in the market for kit cars. 64 The applicant submits that the evidence produced by the applicant for a declaration of invalidity did not adequately prove genuine use of the earlier mark and disputes, in essence, the extent to which it had been used. 65 In that regard, it should be noted that, in accordance with the case-law referred to in paragraph 21 above, 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 was registered, in order to create or preserve an outlet for those goods and services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. 66 First, in so far as the applicant submits that a large quantity of the evidence produced does not fall within the relevant period, it must be held that the initial evidence taken into account by the Board of Appeal does relate to that period. 67 Secondly, in so far as the applicant submits observations on the additional evidence, it must be noted that it neglects information that may be obtained from the initial evidence (see paragraph 28 above) which makes it possible to conclude, as found by the Board of Appeal, that the presence of the earlier mark on the market was sufficiently shown. 68 It is apparent from the initial evidence and, in particular, from the articles published in specialist kit car magazines, that the applicant for a declaration of invalidity offered and sold, during the relevant period, kits for building VIPER cars to car enthusiasts. That fact is inter alia apparent from articles referring to personal stories of customers who built such a car. Consequently, those articles are indirect evidence of the presence of the earlier mark on the market of cars in kit form. 69 In addition, it is apparent from the initial evidence that the applicant for a declaration of invalidity regularly promoted the VIPER sports car in specialist magazine kitcar during the relevant period. The initial evidence also provided sufficient evidence to show that the VIPER sports car and, therefore, the earlier mark, were present at several kit car showrooms during the relevant period. 70 Moreover, the initial evidence is corroborated by exhibits 2 and 5 produced among the additional evidence (see paragraph 29 above), since those documents constitute conclusive evidence of use of the earlier mark during the relevant period in respect of kits for the construction of a VIPER sports car. 71 In those circumstances, the evidence produced by the applicant for a declaration of invalidity, taken into account by the Board of Appeal in the context of the assessment of the extent of the use of the earlier mark, shows that kits for building VIPER sports cars were consistently sold or, at least, offered on the relevant niche market during the relevant period. It follows that the earlier mark was used publicly and outwardly. 72 Admittedly, none of the evidence pertaining to the relevant period, taken individually, demonstrates the volume of goods sold under the earlier mark, and the invoices referring, in essence, to partial kits for the construction of the VIPER sports car are few. However, given the specificities of the relevant market, it is apparent from the evidence, taken as a whole, that the earlier mark was used for the purposes of creating business opportunities and that the use shown cannot be considered symbolic or for the sole purpose of preserving the rights conferred by the mark. 73 Thirdly, in so far as the applicant reiterates that the evidence provided is not such as to prove the use of the earlier mark for assembled cars or kits making it possible to build an assembled car, it is sufficient to refer to the findings in paragraphs 43 to 59 above. 74 In the light of all of the foregoing, the applicant’s second complaint must be rejected and, consequently, the action must be dismissed in its entirety. Costs 75 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 76 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders FCA US LLC to pay the costs. Berardis Spielmann Csehi Delivered in open court in Luxembourg on 18 October 2018. E. Coulon D. Gratsias Registrar President * Language of the case: English.