Information;Judgment — ECLI:EU:T:2023:98
Date: 2023-03-01
Language of the case: English
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful
Origin: Germany

summary of the grounds for the examiner’s decision, set out her position regarding that question, that the Board of Appeal had upheld the examiner’s decision in its entirety and that it had therefore implicitly confirmed the examiner’s position relating to the figurative element and rejected the applicant’s arguments challenging that position. 112 However, the same could not be true in the present case, as the Cancellation Division did not provide any assessment of the investigators’ report which had been submitted by the applicant. The Cancellation Division revoked the contested mark in its entirety, relying essentially, first, on the fact that the invoices submitted which only referred to the contested mark in their headers did not make it possible to establish that that mark had been used in conjunction with specific goods and, secondly, on the fact that the other evidence did not serve to prove that goods bearing the contested mark had actually been distributed or offered for sale. In the context of the appeal brought against that decision, the Board of Appeal partially annulled that decision as regards ‘shirts’ in Class 25, without referring to the investigators’ report. 113 Secondly, the Court pointed out, in paragraphs 26 and 27 of the judgment of 29 June 2022, bet-at-home (T‑640/21, not published, EU:T:2022:408), that the Board of Appeal had referred, in the summary of the applicant’s submissions, to all of the applicant’s arguments, including that relating to the figurative element of the mark, and that it had, moreover, referred, at the beginning of its own reasoning relating to the non-distinctiveness of the mark applied for, to the fact that that mark consisted, inter alia, of a green arc underlining the word elements ‘bet at home’. The Court added that that description of the mark applied for showed that the Board of Appeal had not disregarded the presence of the figurative element. 114 However, in the present case, the investigators’ report and the doubt which that report is capable of casting on the evidence submitted by the intervener are neither referred to in the contested decision nor examined by the Board of Appeal in its assessment of the relevant factors. Only the existence of additional exhibit No 6, namely the declaration by Detecami’s employee which the intervener submitted in response to the submission, by the applicant, of the investigators’ report, is referred to in paragraphs 9 and 32 of that decision. 115 Consequently, in the present case, in the light of the differences which have been identified, it cannot be held, as in the judgment of 29 June 2022, bet-at-home (T‑640/21, not published, EU:T:2022:408), that the Board of Appeal took the investigators’ report that had been submitted by the applicant into consideration and that it implicitly denied that it had any evidential value. 116 As regards the effect of the Board of Appeal’s errors on the legality of the contested decision, EUIPO submits that those errors concern only the invoices relating to Spain, with the result that they cannot, in any event, call into question the other invoices submitted regarding other clients located in other Member States, which, nevertheless, constitute the great majority of the invoices submitted by the intervener. 117 In that regard, it must be pointed out that, by not taking into consideration the investigators’ report submitted by the applicant, the Board of Appeal failed to examine a factor which is potentially relevant in the global assessment of the evidence of use of the contested mark (see paragraph 106 above) and, moreover, failed to do so in a context in which no other item of evidence provided by the intervener served to prove that sales of goods covered by the contested mark, which had been manufactured by the intervener’s predecessor in law and invoiced by that predecessor in law to Detecami, had been sold by Detecami on the market (see paragraph 97 above). 118 Where the Board of Appeal fails to examine a factor which is potentially relevant with regard to its assessment, the Court does not have all the information necessary in order to determine whether the global assessment carried out by the Board of Appeal in the contested decision was well founded (see judgment of 6 June 2018, SMATRIX, T‑264/17, not published, EU:T:2018:329, paragraph 84 and the case-law cited). 119 It cannot be ruled out that the examination of an item of evidence in the course of the proceedings before EUIPO could have led the Board of Appeal to adopt a decision with a content which is different from that of the contested decision (judgment of 6 June 2018, SMATRIX, T‑264/17, not published, EU:T:2018:329, paragraph 85). 120 It must be pointed out, in that context, that the territorial scope of the use is also one of the factors determining genuine use, which must be included in the overall analysis to be carried out by the Board of Appeal and examined at the same time as other such factors (see, to that effect, judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 76; of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 36; and of 7 November 2019, Intas Pharmaceuticals v EUIPO – Laboratorios Indas (INTAS), T‑380/18, EU:T:2019:782, paragraph 74). Consequently, the errors made by the Board of Appeal could be capable of calling its conclusion as regards the scope of the use into question. 121 In the light of those considerations, the Court holds that the Board of Appeal did not carry out an appropriate examination of all of the relevant factors and that the erroneous examination carried out by the Board of Appeal affects the contested decision and constitutes a sufficient basis for annulling it, without it being necessary to rule on the applicant’s other claims. 122 It follows that the applicant’s second plea must be upheld and the contested decision must be annulled. Costs 123 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. In the present case, since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay the costs which the applicant has incurred in the present proceedings, in accordance with the form of order sought by the applicant. 124 Furthermore, the applicant has claimed that EUIPO should be ordered to pay the costs relating to the proceedings before the Cancellation Division and the Board of Appeal. In that regard, it must be borne in mind that, pursuant to Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. That does not, however, apply to costs incurred for the purposes of the proceedings before the Cancellation Division. Accordingly, the applicant’s claim regarding the costs relating to the proceedings before the Cancellation Division, which do not constitute recoverable costs, is inadmissible. As regards the applicant’s claim relating to the costs of the proceedings before the Board of Appeal, it will be for the Board of Appeal to decide, in the light of the present judgment, on the costs relating to those proceedings (see, to that effect, judgment of 11 February 2020, Dalasa v EUIPO – Charité – Universitätsmedizin Berlin (charantea), T‑732/18, not published, EU:T:2020:43, paragraph 91 and the case-law cited). 125 In addition, in accordance with Article 138(3) of the Rules of Procedure, the intervener must bear his own costs. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 July 2021 (Case R 1548/2020-1) in so far as it maintained the registration of the EU trade mark in respect of ‘shirts’; 2. Orders EUIPO to bear its own costs and to pay those incurred by Worldwide Brands, Inc. Zweigniederlassung Deutschland in the course of the proceedings before the Court; 3. Orders Mr Eric Guangyu Wan to bear the costs he has incurred in the course of the proceedings before the Court. De Baere Kecsmár Kingston Delivered in open court in Luxembourg on 1 March 2023. E. Coulon S. Papasavvas Registrar President * Language of the case: English.