Judgment — ECLI:EU:T:2018:668
Date: 2018-10-10
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Spain

summary table below, including invoices, labels, brochures, a manual, catalogues and extracts from Internet sites: Registered form Actual use 31 The applicant is of the view that, contrary to what EUIPO held, the elements which differ between the signs do not alter the distinctive character of the earlier trade mark TACK. First, it would be perceived as a mark independent of CEYS. Second, the element ‘ceys’ is clearly separate from the word ‘tack’ due to its smaller size and its colour. Last, the case-law acknowledges that several signs may be used simultaneously without altering the distinctive character of the registered sign. Such is the case here, since the addition of the figurative element ‘ceys’ to the mark TACK is merely the addition of the mark of the business or product group (‘house mark’), which is quite common in the stationery and household adhesives sector. 32 EUIPO disputes the applicant’s arguments while leaving open the question of the application by analogy of the case-law on the simultaneous use of two marks or signs, in particular the judgments of 18 April 2013, Colloseum Holding (C‑12/12, EU:C:2013:253); of 18 July 2013, Specsavers International Healthcare and Others (C‑252/12, EU:C:2013:497); and of 6 November 2014, Popp and Zech v OHIM — Müller-Boré & Partner (MB) (T‑463/12, not published, EU:T:2014:935). 33 The applicant is, in essence, implicitly complaining that the Board of Appeal infringed point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation. 34 In that regard, once raised by the applicant for the trade mark, the questionof genuine use of the earlier mark must be settled before a decision is given on the opposition proper (see, to that effect, judgment of 15 September 2015, Nestlé Unternehmungen Deutschland v OHIM — Lotte (Representation of a koala), T‑483/12, not published, EU:T:2015:635, paragraph 26 and the case-law cited). 35 Thus, it was a matter for the applicant, before EUIPO carried out its examination of the likelihood of confusion, to provide proof of genuine use of the earlier word mark TACK, such that, in the absence of that proof, the opposition had to be rejected, in accordance with Article 42(2) and (3) of Regulation No 207/2009. 36 In the case at hand, all the items of evidence furnished by the applicant associate the element ‘tack’ with the element ‘ceys’. Moreover, certain items of evidence involve one or more additional elements, such as ‘bricocinta’, ‘crick’ or ‘cristal’. Those additional elements are never associated with the element ‘tack’in isolation, but with the element ‘tackceys’. 37 First, it should be borne in mind that the question whether a trade mark has been put to genuine use requires that an overall assessment be carried out, taking into account all the relevant factors. Thus each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning (see, to that effect, judgment of 21 November 2013, Recaro v OHIM — Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 31 and the case-law cited). 38 Genuine use of a trade mark cannot be based on probabilities or assumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgment of 15 September 2015, Representation of a koala, T‑483/12, not published, EU:T:2015:635, paragraph 60). 39 Next, it should be noted that a word mark is a mark consisting entirely of letters, words or groups of words, without any specific figurative element. The protection which results from registration of a word mark thus relates to the word mentioned in the application for registration and not the specific figurative or stylistic aspects which that mark might have. As a result, the font in which the word sign might be presented must not be taken into account. It follows that a word mark may be used in any form, in any colour or font type (see judgment of 28 June 2017, Josel v EUIPO — Nationale-Nederlanden Nederland (NN), T‑333/15, not published, EU:T:2017:444, paragraphs 37 and 38 and the case-law cited). 40 According to the case-law, and as the parties note, there is no rule in the EU trade mark system that obliges the opponent to prove the use of the earlier mark on its own, independently of any other mark or sign. Therefore, the case could arise where two or more trade marks are used jointly and autonomously, with or without the name of the manufacturer’s company (see, to that effect, judgments of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraphs 33 and 34; of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 100; and of 6 November 2014, MB, T‑463/12, not published, EU:T:2014:935, paragraph 43). Thus, as contended by EUIPO, joint use of the company name or of a trade mark with the earlier trade mark cannot, in itself, undermine the function of the mark as a means of identifying the services at issue (see, to that effect, judgments of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraph 36, and of 6 November 2014, MB, T‑463/12, not published, EU:T:2014:935, paragraph 43). 41 However, it follows directly from the wording of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 that the use of the trade mark in a form which is different from the form in which it was registered is considered as a use for the purposes of the first subparagraph of that article, to the extent that the distinctive character of the trade mark in the form in which it was registered is not changed (see, to that effect, judgments of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 21; of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraph 30; and of 13 September 2016, hyphen v EUIPO — Skylotec (Representation of polygon), T‑146/15, EU:T:2016:469, paragraph 25). 42 For a trade mark to possess distinctive character for the purposes of Regulation No 207/2009, it must serve to identify the product, in respect of which registration is applied for, as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited; see also, to that effect, judgments of 29 April 2004, Procter & Gamble v OHIM, C‑468/01 P to C‑472/01 P, EU:C:2004:259, paragraph 32; of 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraph 66; and of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 23). 43 The Court of Justice has also held that the condition of genuine use of a trade mark, within the meaning of Article 15(1) of Regulation No 207/2009, may be satisfied where the trade mark is used only through another composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark, provided that the trade mark continues to be perceived as indicative of the origin of the product at issue (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 26 and the case-law cited). 44 Furthermore, it is apparent from paragraph 57 of the judgment of 13 September 2016, Representation of a polygon (T‑146/15, EU:T:2016:469), that, where several signs are used simultaneously, steps must be taken to ensure that, for the purposes of the application of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, such use does not alter the distinctive character of the registered sign, having regard inter alia to business practices in the relevant sector. 45 As the Board of Appeal observed, in essence, in paragraph 55 of the contested decision, point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 relates to a situation where, inter alia, a national registered trade mark is used in trade in a form slightly different from the form in which registration was effected. The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, 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 sign used in trade differs from the form in which it was registered only ininsignificant respects, and the two signs can therefore 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, to that effect, judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 27 and the case-law cited). 46 Thus, a finding that the distinctive character of the mark as registered has been altered requires an assessment of the distinctive and dominant character of the added elements based on the intrinsic qualities of each of those elements and the relative position of the various elements within the arrangement of the trade mark (judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraphs 28 and 37). 47 For the purposes of that finding, account must be taken of the intrinsic qualities and, in particular, the greater or lesser degree of distinctive character of the earlier mark used solely as part of a complex trade mark or jointly with another mark. The weaker the distinctive character, the easier it will be to alter it by adding a component that is itself distinctive, and the more the mark will lose its ability to be perceived as an indication of the origin of the product it designates. The reverse is also true (judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 29). 48 In addition, it must be remembered that, in order for point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 to apply, the additions to the registered mark must not alter the distinctive character of the mark in the form in which it was registered, in particular because of their ancillary position in the sign and their weak distinctive character (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 31 and the case-law cited). 49 Last, it is apparent also from the case-law that the fact that the registered mark is used sometimes with and at times without additional elements is one of the criteria on which to base a finding that there has been no alteration of the distinctive character (see, to that effect, judgment of 7 September 2016, Victor International v EUIPO — Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 42 and the case-law cited). 50 It is in the light of the considerations recalled above that it must be determined whether the Board of Appeal was correct in finding, in paragraph 62 of the contested decision, that the applicant had not proved that the earlier word mark TACK had been put to genuine use, either in the form registered or in any other form that constituted an acceptable difference in accordance with point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, and, accordingly, in dismissing the action before it. 51 In the first place, it is appropriate to note — and it is not disputed — that the relevant public in the case at hand is the Spanish public. 52 In the second place, it should be considered that, in view of the goods at issue, the words ‘tack’ and ‘ceys’ have at least an average distinctive character. 53 In the third place, it is appropriate to distinguish, among the items of evidence produced by the applicant relating to the use of the earlier word mark TACK, the invoices and text of the brochures and catalogues, on the one hand, from the packaging, extracts from Internet sites and images contained in the brochures and catalogues, on the other hand. Use of the earlier word mark TACK on the invoices and in the text of the brochures and catalogues 54 The Board of Appeal correctly concluded, in paragraph 56 of the contested decision, that the invoices did not contain any indication of the earlier word mark TACK as such; that reference was made instead to product names; that the juxtaposition of the element ‘ceys’ could not be seen as an irrelevant or negligible addition to the element ‘tack’ and that, on the invoices and in the brochures and catalogues, the elements ‘tack’ and ‘ceys’ appeared together as one single term or as a single word element made up of eight letters. 55 Even though, as EUIPO notes, the form of use of a trade mark on invoices cannot be considered decisive, it must be stated that the element ‘tackceys’ on the invoices, and in the text of the brochures and catalogues, will be perceived as an indivisible unit, the two words being conjoined. Furthermore, the applicant advances no specific argument regarding the representation of the earlier word mark TACK on the invoices or in the text of the brochures and catalogues. Its arguments that the element ‘ceys’ is clearly separate from the term ‘tack’ due to its smaller size and its colour are not relevant in relation to those items of evidence and according to the case-law cited in paragraph 39 above. 56 It follows that the Board of Appeal’s conclusion that the use of the word ‘tackceys’ in the invoices and in the text of the brochures and catalogues alters the distinctive character of the earlier word mark TACK and cannot be regarded as an acceptable variation of the use must be approved. Use of the earlier word mark TACK on the packaging, on the extracts from Internet sites and in the images contained in the brochures and catalogues 57 First of all, it must be pointed out, regarding the packaging, the extracts from Internet sites, the brochures and the catalogues, that the word ‘tack’ systematically appears in combination with the word ‘ceys’ and in a figurative manner, and that that combination ‘tackceys’ may, moreover, be associated with other elements, in particular with product names. None of the items of evidence referred to above shows the earlier word mark TACK used in isolation or, at least, away from the element ‘ceys’. The applicant has therefore failed to provide any solid and objective evidence to show effective and sufficient use of that trade mark on the market, within the meaning of the case-law recalled in paragraphs 37 and 38 above. Next, it must be stated that the figurative manner in which the combination ‘tackceys’ is used in the items of evidence put forward in the case alters the distinctive character of the earlier word mark TACK as it is registered. 58 In that regard, it should be highlighted, first of all, as the Board of Appeal noted in paragraph 58 of the contested decision, that the two elements ‘tack’ and ‘ceys’ are systematically juxtaposed and thus always appear conjoined, forming an indivisible unit. Even though the element ‘ceys’ is smaller and represented in a different colour and font type, that added element is still clearly visible and does not occupy a secondary or ancillary position in the overall impression produced by the combination ‘tackceys’. 59 In addition, as the Board of Appeal rightly found in paragraph 57 of the contested decision, the last letter, ‘k’, appears to frame the following part of the sign, namely, the band or arrow pointed towards the term ‘tack’ on which the element ‘ceys’ appears. 60 Last, the finding that the distinctive character of the earlier word mark TACK, as registered, has been altered is supported by the addition of other terms like ‘crick’, ‘cristal’ or ‘bricocinta’, as the Board of Appeal found in paragraph 59 of the contested decision. Those additions introduce extra differentiation factors in relation to the earlier word mark TACK. 61 It follows that the situation in the case at hand is not the same as that in which the form of the sign used in trade differs only in insignificant respects from the form in which that sign was registered. Therefore, the earlier word mark TACK and the combination ‘tackceys’ cannot be regarded as broadly equivalent (see, to that effect, judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 27). 62 Those findings are not called into question by the applicant’s arguments in its application. First, apart from the argument regarding their different colours and sizes, it advances no specific argument to support its claim that the earlier word mark TACK would be perceived as a mark independent of the element ‘ceys’. Even though it is not disputed that the element ‘ceys’ corresponds also to a mark used by the applicant, it must be stated that that element is still clearly visible and does not occupy a secondary position in the overall impression produced by the combination ‘tackceys’. Second, the applicant’s argument that the element ‘ceys’ is merely the addition of the mark of the business or product group in no way invalidates the alteration by that term — as well as by the other additions such as the elements ‘crick’, ‘cristal’ or ‘bricocinta’ — of the distinctive character of the earlier word mark TACK, since it cannot be ruled out that the relevant public will not perceive the element ‘tack’ as an indication of the origin of the goods at issue, in accordance with the case-law cited in paragraph 43 above). In particular, the commercial rationale which, in the applicant’s view, explains the simultaneous use of the elements ‘tack’ and ‘ceys’, namely, the differentiation of its goods, does not call into question the Board of Appeal’s reasoning, based on which it concluded that the applicant had not provided proof of use of the earlier word mark TACK. 63 In those circumstances, the variations in use shown alter the distinctive character of the earlier word mark TACK as it is registered, as the Board of Appeal rightly found. 64 It follows that the Board of Appeal did not infringe point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation, given the alteration of the earlier word mark TACK in the evidence produced by the applicant. 65 It follows from the foregoing that it is necessary to reject the second plea, alleging infringement of the rules on proof of use of the earlier word mark TACK and, accordingly, to dismiss the action in its entirety. Costs 66 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. 67 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 (Ninth Chamber) hereby: 1. Dismisses the action; 2. Orders LA Superquimica, SA to pay the costs. Gervasoni Kowalik-Bańczyk Mac Eochaidh Delivered in open court in Luxembourg on 10 October 2018. E. Coulon S. Gervasoni Registrar President * Language of the case: English.