Judgment — ECLI:EU:T:2003:198
Date: 2003-07-09
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Likelihood of confusion with an earlier mark;Other questions of substantive law
Procedure: Action for annulment - unfounded
Origin: Spain

Summary of the Judgment 
1. Community trade mark — Surrender, revocation and invalidation — Consideration 
of the application — Proof of use of the earlier mark — Genuine use — Meaning 
(Council Regulation No 40/94, Art. 56(2)) 
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SUMMARY — CASE T-156/01 
2. Community trade mark — Surrender, revocation and invalidation — Consideration 
of the application — Proof of use of the earlier mark — Genuine use — Criteria for 
assessment — Particular circumstances of owners — Not relevant 
(Council Regulation No 40/94, Art. 56(2); Commission Regulation No 2868/95, Art. 1, 
Rules 22(2) and 40(5» 
3. Community trade mark — Surrender, revocation and invalidation — Causes of 
relative invalidity — Existence of an earlier identical or similar mark registered for 
identical or similar products or services — Risk of confusion with the earlier mark — 
Word mark 'GIORGIO AIRE' and figurative marks including the word 'GIORGI' 
(Council Regulation No 40/94, Arts 8(1)(b) and 52(1)(a)) 
1. Genuine use of an earlier Community 
trade mark, for the purposes of 
Article 56(2) of Regulation No 40/94 
on the Community trade mark implies 
real use of the mark on the market 
concerned for the purpose of identify­
ing goods or services. It therefore 
excludes all use which is minimal and 
insufficient for regarding a mark as 
being actually used in a given market. 
In that regard, even if it is the owner's 
intention to make real use of his trade 
mark, if the trade mark is not objec­
tively present on the market in a 
manner that is effective, consistent over 
time and stable in terms of the con­
figuration of the sign, so that it cannot 
be perceived by consumers as an indi­
cation of the origin of the goods or 
services in question, there is no genuine 
use of the trade mark. 
(see para. 35) 
2. For the purposes of assessing whether a 
Community trade mark is being genu­
inely used for the purposes of 
Article 56(2) of Regulation No 40/94 
on the Community trade mark, 
account must be taken, under Rule 
40(5) of Regulation No 2868/95 imple­
menting Regulation No 40/94, of the 
facts and circumstances of each case, 
regard being had to the wording of 
Rule 22(2) of Regulation No 2868/95, 
which states that the indications and 
evidence for the furnishing of proof of 
use are to consist of indications con­
cerning the place, time, extent and 
nature of the use. 
The particular circumstances of the 
current or previous proprietors of the 
trade marks are irrelevant, since evi­
dence of genuine use must establish 
that the trade mark was effectively 
present on the market concerned dur­
ing the five years preceding the date of 
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LABORATORIOS RTB v OHIM — GIORGIO BEVERLYHILLS (GIORGIO AIRE) 
the application for a declaration of 
invalidity, irrespective of who owned 
them during that period. 
As for the concept of 'proper reasons' 
for non-use referred to in Article 56(2) 
of Regulation No 40/94, this essentially 
refers to circumstances unconnected 
with the trade mark owner which 
prohibit him from using the mark, 
rather than to circumstances associated 
with his commercial difficulties. 
(see paras 36, 40-41) 
3. There is no risk of the Spanish public 
being confused between the word mark 
'GEORGIO AIRE', for which regis­
tration as a Community trade mark is 
sought in respect of toilet articles and 
soaps falling within class 3 of the Nice 
Agreement , and figurative marks 
including the word signs 'GIORGI 
LINE' and 'MISS GIORGI', previously 
registered in Spain to designate per­
fumes and cosmetics in the same class. 
Even though there is identity or simi­
larity between the goods covered by the 
conflicting marks, the visual, aural and 
conceptual differences between the 
signs constitute sufficient grounds for 
discounting the existence of that risk, 
so that the conditions for applying 
Articles 8(1)(b) and 52(1)(a) of R e g u ­
lation No 40/94 on the Community 
trade mark arc not satisfied. 
(see paras 83-84) 
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