Judgment — ECLI:EU:T:2017:745
Date: 2017-10-23
Language of the case: English
Court formation: Second Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful
Origin: Spain

summary of the pleas in law relied on. That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action. In order to ensure legal certainty and the sound administration of justice, if an action is to be admissible, the essential facts and points of law on which it is based must be apparent from the text of the application itself, at the very least as a summary, provided that it is coherent and comprehensible. Although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the lack of essential information in the application itself, even if those documents are attached to the application (see order of 25 May 2016, MEGABUS.COM, T‑805/14, not published, EU:T:2016:336, paragraph 16 and the case-law cited). 17 In the present case, it must be pointed out that the applicant, in paragraph 7 of the application, submits, as a plea, that the Fourth Board of Appeal infringed Article 51(1)(a) of Regulation No 207/2009. According to the applicant, the Board of Appeal wrongly concluded that the documents submitted did not prove genuine use of the contested mark. In that regard, after detailing the items of evidence produced before the Board of Appeal, the applicant submits, in essence, that, first, in the light of the advertisements, packets and invoices provided, genuine use of the contested mark was proved. Secondly, it submits that the differences between the mark used and the registered mark did not alter the distinctive character of the registered mark. 18 It is apparent that, in spite of the brevity of the applicant’s arguments, the application makes it possible to identify a single plea in law, alleging infringement, by the Board of Appeal, of Article 51(1)(a) of Regulation No 207/2009, which consists, in essence, of two claims, alleging that there has been genuine use of the contested mark and that there has been use which did not alter the distinctive character of the contested mark as registered. 19 The Court thus considers itself to be in a position to rule on the action and to assess the legality of the contested decision in the light of the claims made by the applicant. 20 Furthermore, it must be held that EUIPO and the intervener were in a position, in their respective written pleadings, to submit structured arguments in defence. 21 It follows that, in view of all of the foregoing, the plea of inadmissibility put forward by the intervener must be rejected on the ground that the application satisfies the requirements of Article 76(d) of the Rules of Procedure of the General Court and Article 65(2) of Regulation No 207/2009. The single plea in law, alleging infringement of Article 51(1) of Regulation No 207/2009 22 This plea in law is divided into two claims. The first claim alleges that there has been genuine use of the contested mark. The second claim alleges that there has been use which did not alter the distinctive character of the contested mark as registered. 23 The Court considers it appropriate to reverse the order in which the claims are to be examined and to follow the structure of the contested decision. The second claim, alleging that there has been no alteration of the distinctive character of the mark 24 The applicant submits, in essence, that the differences that exist between the mark used and the registered mark do not alter the distinctive character of the registered mark. It takes the view that the mark used is simply an evolution of the registered mark, as is shown by the case-law of the Court. 25 EUIPO and the intervener submit, in essence, that the applicant has not validly challenged the findings of the Board of Appeal, to which they refer. They take the view that the distinctive character of the contested mark has been altered, since the changes made to that mark concern its distinctive and dominant elements, such as the colours of the packaging and the house mark. Furthermore, they maintain that the case-law referred to by the applicant in support of its arguments does not help the applicant, since the shape of the packaging is not, in the present case, in itself highly distinctive with regard to the goods covered by the mark. 26 It must be borne in mind that, first, point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001) provides that use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered must also be regarded as use within the meaning of the first subparagraph of Article 15(1) of that regulation. 27 Secondly, the purpose of that provision, which avoids imposing strict conformity between the form of the EU trade mark as used and the form in which that mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the form of the sign used in trade differs from the form in which that sign was registered only in negligible elements, with the result that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the registered trade mark may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgment of 10 June 2010, Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 30 and the case-law cited). 28 It is in the light of those considerations that it must be assessed whether the Board of Appeal was right in finding that the changes which had been observed between the contested mark as used and the contested mark as registered altered the distinctive character of the latter. The Board of Appeal found, in essence, that the changes which had been made were to dominant elements, such as the colours of the packaging and the graphic representation of the house mark. 29 In the first place, it must be borne in mind that the contested mark as registered is a three-dimensional sign in blue, green, red, white, yellow and black, which includes the word elements ‘GULLON’ and ‘mini O2’. More specifically, the mark represents a blue and yellow package with a prismatic-rectangular shape. On the front of that package there are, going from top to bottom, first, on a blue background, a green rectangle with a red rectangular band, which is folded at the ends and has the element ‘GULLON’ written in it in white upper case letters, superimposed on it; secondly, on a yellow background, a rectangular-horizontal band, the outer edges of which are wavy and in which the element ‘mini O2’ is written in blue lower case letters with a white outline, except for the letter ‘O’ which is in upper case; and, thirdly, on a blue background, the graphic representation, on a lightly coloured white background, of six black biscuits with a white filling surrounding a seventh biscuit. On the left-hand side of the package there are, going from top to bottom, first, a band which is identical to that on the front of the package and on which it is possible to make out the element ‘mini O2’; secondly, a white rectangle; and, thirdly, a circle with a yellow and blue interior and a black border. 30 In the second place, it must be pointed out that it is apparent from the case file that the mark as used is a three-dimensional sign in blue, green, white, yellow and black, which includes the word elements ‘gullón’ and ‘mini O2’. More specifically, the mark represents a white, yellow and blue package with a prismatic-rectangular shape. On the front of that package there are, going from top to bottom, first, on a white background, a green square with the element ‘gullón’ written in it in white lower case letters; secondly, on a yellow background, a rectangular-horizontal band, the outer edges of which are wavy and in which the element ‘mini O2’ is written in lower case letters, except for the letter ‘O’ which is in upper case (the word ‘mini’ is in blue, whereas the letter ‘O’ and the number ‘2’ of the term ‘O2’ are in white with a blue outline); and, thirdly, on a blue background, the graphic representation, on a lightly coloured white background, of six black biscuits with a white filling surrounding a seventh biscuit. 31 It is apparent that the only elements which differentiate the registered mark from the mark used are, first, the white colour in the upper part of the packaging and, secondly, the stylisation of the element ‘gullón’ and of the letter ‘O’ and the number ‘2’ in the element ‘mini O2’. 32 Contrary to what the Board of Appeal found, those changes were not capable of altering the distinctive character of the registered mark. The changes made to the elements ‘GULLON’ and ‘mini O2’ in the registered mark, more specifically, the use of lower case rather than upper case, the presence of a green square rather than a green rectangle, the removal of a red band and the fact that the letter ‘O’ and the number ‘2’ in the element ‘mini O2’ are written in white with a blue outline rather than in blue, are minor changes, which are ornamental in nature, do not in any way stand out by virtue of their originality and do not therefore significantly alter the overall impression created by the registered mark. 33 That finding cannot be altered by the fact that the combination of colours ‘blue-yellow-blue’ on the packaging of the registered mark was replaced by the combination of colours ‘white-yellow-blue’ on the packaging of the mark as used. Contrary to what the Board of Appeal found, the combination of colours ‘blue-yellow-blue’ is not a distinctive or dominant element of the registered mark. In that regard, it must be borne in mind that, according to settled case-law, whilst colours are capable of conveying certain associations of ideas and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (see judgment of 7 September 2016, Beiersdorf v EUIPO (Q10), T‑4/15, not published, EU:T:2016:447, paragraph 22 and the case-law cited), including goods such as those in question in the present case. It must added that those colours are rather commonplace. They are not, in themselves, so exceptional that they will be perceived by the consumer as particularly striking and will be remembered in connection with the goods in question. They will be understood more as elements for purely aesthetic purposes or as presentational features and not as an indication of the commercial origin of the goods. It follows that that change was not capable of altering the distinctive character of the registered mark. 34 It follows from all of the foregoing that the use of the mark as used by the applicant must be considered to be use of the registered mark for the purposes of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009. 35 It follows that the present claim must be upheld. The first claim, alleging that there has been genuine use of the mark 36 The applicant submits, in essence, that, in the light of the evidence provided, genuine use of the contested mark has been proved. The applicant maintains, inter alia, that the contested mark has been used in connection with the designated goods and that those goods have been offered to consumers throughout Spanish territory. Furthermore, the applicant states that, in assessing the extent of use, the characteristics of the market in question must be taken into consideration. It maintains, in that regard, that the number of units sold, as set out in the invoices submitted, should, in the light of the modest price of the goods in question, be regarded as sufficient. 37 EUIPO and the intervener submit, in essence, that the applicant has not validly challenged the Board of Appeal’s findings in that regard, to which they refer. They take the view that the applicant has not proved the extent of use of the contested mark. They maintain, first, that the contested mark cannot be linked to the invoices that were provided in respect of the relevant period. Secondly, they submit that no information relating to turnover or market share was provided. 38 It must be borne in mind that, first, according to settled case-law, 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 mark. In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgment of 18 March 2015, Naazneen Investments v OHIM — Energy Brands (SMART WATER), T‑250/13, not published, EU:T:2015:160, paragraph 25 and the case-law cited). 39 Secondly, 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 use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares 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 (see judgment of 18 March 2015, SMART WATER, T‑250/13, not published, EU:T:2015:160, paragraph 26 and the case-law cited). 40 Thirdly, 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 effective and sufficient use of the trade mark on the market concerned. It is therefore necessary to carry out a global assessment which takes into account all the relevant factors of the particular case and entails a degree of interdependence between the factors taken into account (see judgment of 9 September 2015, Inditex v OHIM — Ansell (ZARA), T‑584/14, not published, EU:T:2015:604, paragraph 19 and the case-law cited). Thus, a low volume of goods marketed under the trade mark may be compensated for by a high intensity of use or a period of very regular use of that trade mark or vice versa (see judgment of 7 July 2016, Fruit of the Loom v EUIPO — Takko (FRUIT), T‑431/15, not published, EU:T:2016:395, paragraph 23 and the case-law cited). 41 Fourthly, as regards the extent or scale of the use to which the contested 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 (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 25 and the case-law cited). 42 Fifthly, the turnover and the volume of sales of the goods under the contested trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. Accordingly, use of a mark need not always be quantitatively significant in order for it to be deemed genuine. Even minimal use can therefore be sufficient to be classified as genuine, provided that it isregarded as warranted, in the relevant economic sector, as a means of maintaining or creating market shares for the goods or services protected by the mark. It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not, so that a de minimis rule, which would not allow EUIPO or, on appeal, the Court, to appraise all the circumstances of the dispute before it, cannot be laid down (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 26 and the case-law cited). 43 In interpreting the concept of genuine use, account must be taken of the fact that the rationale for the requirement that the earlier mark must have been put to genuine use 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 (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 27 and the case-law cited). 44 However, the smaller the commercial volume of the use of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 28 and the case-law cited). 45 It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that the evidence submitted by the applicant did not satisfy the criterion relating to the extent of use and consequently did not prove genuine use of the contested mark in connection with the goods in question. 46 It must be pointed out at the outset that, having regard to the filing by the intervener of the application for revocation on 17 July 2014, the relevant period of five years referred to in Article 51(1)(a) of Regulation No 207/2009, during which the applicant is required to prove that there was use of its mark in connection with the goods in Class 30, runs from 17 July 2009 to 16 July 2014. 47 With regard to the relevant period, the applicant submitted before the Board of Appeal advertisements, press articles, copies of invoices issued to Spanish clients, screenshots of its website and an image of the packaging of a packet of biscuits representing the contested mark. 48 After analysing those documents, the Board of Appeal found that, as regards the relevant period, proof of genuine use of the contested mark in connection with the goods at issue had not been provided. More specifically, the Board of Appeal found, in view of the evidence submitted, that the criterion relating to the extent of use had not been satisfied in the present case. 49 In the first place, the Board of Appeal found that the contested mark, first, did not appear on the invoices submitted and, secondly, could not be linked to the goods mentioned on those invoices. In the second place, the Board of Appeal stated that the number of packets sold under the contested mark and the turnover were not significant, although the goods in question were mass-consumption products and daily consumer goods. In the third place, the Board of Appeal found that the applicant had not proved constant use of the contested mark. In the fourth place, the Board of Appeal observed that genuine use of the contested mark that was aimed at end consumers could not be established. 50 That analysis on the part of the Board of Appeal cannot be upheld. 51 It should be noted at the outset that, according to the case-law, the fact that the earlier mark is not referred to on invoices cannot prove that the latter are irrelevant for the purposes of proving genuine use of that mark (see judgment of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 60 and the case-law cited). 52 It must be pointed out that the invoices submitted in respect of the relevant period showed that there had been orders for the goods in question. Contrary to what the Board of Appeal states in paragraph 34 of the contested decision, the goods referred to on the invoices could be linked to the goods marketed by the applicant under the contested mark as used. The Board of Appeal erred in finding that the goods referred to on the invoices under the name ‘mini O2 relleno blanco’ referred to three different products of the applicant’s. Although it is indeed apparent from the advertisements and press articles provided by the applicant that three products contain the element ‘O2’, only two, however, contain the element ‘mini O2’ and only one of them contains biscuits with a white filling (‘relleno blanco’), as represented on the contested mark as registered or used. 53 It follows that, first, the invoices submitted, on the one hand, showed a total turnover, for the relevant period, of EUR 2 498.95 in respect of the goods in question, corresponding to the sale of 5 892 packets and, on the other hand, showed that the contested mark had been used regularly, between 4 February 2010 and 31 November 2013, for a period of more than three and a half years. The applicant submitted three invoices for each of those years. 54 Secondly, the goods in question were sold at a price per unit of between EUR 0.35 and EUR 0.48, exclusive of tax, that is to say at a relatively low price. 55 Thirdly, the invoices submitted do not bear consecutive numbers, and date from different years and months. That leads to the conclusion that the applicant only filed evidence corresponding to examples of sales. Furthermore, it must be pointed out that those invoices were addressed to various distributors. That shows that the extent of use was sufficiently widespread to amount to a real and serious commercial effort, and that it was not a mere attempt to simulate genuine use by always using the same customers (see, to that effect, judgment of 16 November 2011, Buffalo Milke Automotive Polishing Products v OHIM — Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, EU:T:2011:675, paragraph 71). 56 It follows that, although the commercial volume of the use of the contested mark is limited, the invoices submitted nevertheless make it possible to conclude, in view of the fact that they were issued very regularly, that the goods at issue were, in the course of the relevant period, marketed for a sufficient length of time to establish that that use was genuine. 57 Furthermore, it must be pointed out that the applicant had provided, in respect of the relevant period, numerous press articles and advertisements relating to the marketing of the goods in question under the contested mark as used. 58 Accordingly, it must be held that the invoices submitted, examined in conjunction with the other items of evidence, were sufficient to prove that the contested mark had been put to genuine use in order to create or preserve an outlet for the goods covered by the mark. 59 That finding cannot be called into question by the Board of Appeal’s argument, reproduced by EUIPO and the intervener, that, in the light of the nature of the goods, the sales made are not sufficiently significant, with respect to both the number of units and the turnover, to characterise the use as genuine. 60 It is sufficient to bear in mind that the provision of accounting documents setting out sales figures or invoices is not necessary for the purposes of establishing genuine use of the mark. According to the case-law, the assessment of the extent of use entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under the trade mark may be compensated for by a high intensity of use or a period of very regular use of that trade mark or vice versa (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 23 and the case-law cited). In certain circumstances, even circumstantial evidence such as catalogues referring to the mark, although it does not provide direct information as to the quantity of goods actually sold, may, by itself, suffice to show the extent of use in the context of an overall assessment (judgment of 15 July 2015, TVR Automotive v OHIM — TVR Italia (TVR ITALIA), T‑398/13, EU:T:2015:503, paragraphs 57 and 58). 61 The finding set out in paragraph 58 above can also not be called into question by the fact that the evidence submitted does not show whether the goods in question finally reached the end consumers. 62 First, it must be noted that, according to the case-law, genuine use of a mark requires that that mark be used publicly and outwardly (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 48 and the case-law cited). However, that outward use of a mark does not necessarily mean use aimed at end consumers. Genuine use of the mark relates to the market on which the proprietor of the EU trade mark pursues its commercial activities and on which it hopes to put its mark to use. Accordingly, taking the view that outward use of a mark, within the meaning of the case-law, must consist of use aimed at end consumers would effectively mean that marks used only in inter-corporate relations cannot enjoy the protection of Regulation No 207/2009. The relevant public at which marks are aimed does not comprise only end consumers, but also specialists, industrial customers and other professional users (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 49 and the case-law cited). 63 Secondly, it must be borne in mind that, according to the case-law, by having drawn up an invoice, the proprietor of the trade mark shows that the trade mark was used publicly and outwardly (see, to that effect, judgment of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 47 and the case-law cited). 64 Furthermore, the numerous press articles and advertisements provided by the applicant make it possible to assume, with some degree of certainty, that consumers have directly or indirectly come into contact with the goods in question marketed by the applicant under the contested mark as used. 65 In view of all of the foregoing considerations, it must be held that the Board of Appeal erred in finding that the contested mark had not been put to genuine use. 66 It follows that the present claim must also be upheld. 67 As the two claims of which the single plea in law consists have been upheld, the contested decision must therefore be annulled in its entirety. Costs 68 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. 69 Since EUIPO and the intervener have been unsuccessful, they must be ordered to pay the costs, in accordance with the form of order sought by the applicant. On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 May 2016 (Case R 1613/2015-4), relating to revocation proceedings between O2 Holdings Ltd and Galletas Gullón; 2. Orders EUIPO and O2 Holdings Ltd to pay the costs. Prek Schalin Costeira Delivered in open court in Luxembourg on 23 October 2017. E. Coulon M. Prek Registrar President * Language of the case: English.