Judgment — ECLI:EU:T:2018:926
Date: 2018-12-13
Language of the case: English
Court formation: Seventh Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful
Origin: Netherlands

Summary — Judgment of the General Court (Seventh Chamber), 13 December 2018 1. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Absence of genuine use of a trade mark — Concept of ‘proper reasons’ for non-use — Independent and uniform interpretation — Obstacles bearing a direct relation to the trade mark rendering its use unreasonable or impossible and independent of the volition of the trade mark proprietor (Council Regulation No 207/2009, Arts 15(1) and 51(1)(a)) 2. EU trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Genuine use — Examination by EUIPO of its own motion — None (Council Regulation No 207/2009, Arts 15, 42(2), 51(1), 57(2)) 3. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Absence of genuine use of a trade mark — Figurative mark C=commodore (Council Regulation No 207/2009, Arts 51(1)(a), 158(2)) 4. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Absence of genuine use of a trade mark — Proof of use of the earlier mark — Proof of use for certain goods and services — Proper reasons for non-use of that mark in relation to other goods or services — Effect (Council Regulation No 207/2009, Arts 15(1) and 51(1)(a)) 5. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Absence of genuine use of a trade mark — Existence of proper reasons for non-use during a part of the five-year period — No revocation (Council Regulation No 207/2009, Arts 15(1) and 51(1)(a)) 1. See the text of the decision. (see paras 18-20) 2. See the text of the decision. (see para. 21) 3. See the text of the decision. (see paras 34, 37, 38, 42, 44-48, 52-62, 69) 4. The existence of genuine use in respect of some of the goods and services covered by the contested mark in revocation proceedings, does not preclude, in law or fact, the presence of proper reasons for non-use of the same mark in relation to other goods or services covered by it. In that regard, it is clear from the case-law that genuine use, within the meaning of Article 51(1)(a) of Regulation No 207/2009 on the European Union trade mark, must be established in connection with each type of goods or services covered by the contested mark which may be considered independently. However, there is nothing in the wording of that provision, or any other provision of EU law, which precludes genuine use of a trade mark from being established in relation to certain goods or services covered by it, while justifying the absence of such use in relation to other goods or services by proper reasons for non-use. (see para. 41) 5. Where, within a ‘continuous’ period of five years, there is neither genuine use of the mark at issue nor proper reasons for non-use of that mark, the rights of the proprietor are to be declared to be revoked, within the meaning of Article 51(1)(a) of Regulation No 207/2009. By contrast, where the mark at issue was put to genuine use or where such use was prevented for proper reasons during a part of the five-year period, that period is no longer ‘uninterrupted’. Thus, it is sufficient that there are proper reasons for non-use of a trade mark during a part of the relevant period in order for the proprietor to avoid revocation of its rights to that mark. A contrary interpretation would go against the wording of Article 51(1)(a) of Regulation No 207/2009, which makes no distinction between proprietors of an EU trade mark who have made genuine use of their mark and those who were prevented from doing so for proper reasons. The objective underlying that article confirms that interpretation. In providing for the possibility of justifying non-use of an EU trade mark for proper reasons, the EU legislature sought to avoid the trade mark proprietor having its rights to the mark revoked where that proprietor was objectively unable to put the mark to genuine use for reasons beyond its control and thus external to that proprietor. To insist that those reasons must cover the whole of the relevant five-year period would undermine that objective. Indeed, the occurrence of such reasons, even where they have lasted for only part of the relevant period, may prevent or at least delay, the genuine use of the trade mark beyond the period during which those reasons arose. Thus, the fact that the events that could be categorised as proper reasons, within the meaning of Article 51(1)(a) of Regulation No 207/2009, came to an end at some point during the relevant period does not mean that the trade mark proprietor could reasonably resume genuine use of that mark immediately after that. Similarly, the fact that such events take place not at the start of the relevant period but later during that period does not permit the rights of the trade mark proprietor to be declared to be revoked. (see paras 63, 65-68)