Judgment — ECLI:EU:T:2019:245
Date: 2019-04-11
Language of the case: English
Court formation: Sixth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Spain

summary of the evidence adduced by the applicant during the administrative procedure. 115 It should be recalled that the evidence must relate to the period between 2 October 2003, the date of the application for registration of the contested mark, and 25 March 2014, the date of the application for a declaration of invalidity, and must relate to the Spanish territory. 116 First, the evidence produced, referred to in the contested decision, concerns affidavits by a representative of the applicant establishing the total revenue within the European Union for the contested mark and advertising expenditure incurred from 2008 to 2013 as well as accounting documents, invoices, part of which concerns Spain, advertising and promotional material concerning Spain in particular, specialised magazines and certificates relating to knowledge of the ADAPTA marks. 117 In that regard, the Board of Appeal found that the applicant’s turnover, of EUR 10 million per year from 2008 to 2013, was not so significant for the sector concerned and that the applicant had not provided sufficient information as to its market share and the percentage of the relevant market represented by its commercial activities under the contested mark. 118 In doing so, the Board of Appeal did not err. The sales figures for the applicant’s goods and the publicity costs which it incurred are not sufficient, in the absence of information relating to the market share which they represent in respect of both the global market for the goods and services in question and the global amount of advertising costs in that market in the relevant territory, to show that the contested mark has acquired distinctive character as a result of the use which has been made of it (see, to that effect, judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 79, and of 30 November 2017, Hanso Holding v EUIPO (REAL), T‑798/16, not published, EU:T:2017:854, paragraph 49). These are the applicant’s internal data which, although they may constitute secondary evidence to be evaluated together with the other evidence, do not, as such, prove distinctive character acquired through use of the contested trade mark. 119 The applicant states in its application that the total percentage of sales made in Spain since 2004 under the contested trade mark ranges from 14.18% to 16.42%. That argument is unsubstantiated, however. In that regard, the applicant has produced only the documents listed by the Board of Appeal, none of which make it possible to determine the market share held by the contested mark. 120 Secondly, the Board of Appeal examined the statements from various sources. That consists of a letter from a director of a publishing house for specialised magazines stating that ‘Adapta Powder Coatings is a recognised mark in coatings, and has a high degree of reputation, credibility and prestige’, accompanied by a list of some 80 instances of advertising dating from 2005 to 2014; a statement by an editor-in-chief of a magazine that the applicant has been promoting the contested mark in that magazine since 2010; a similar statement for other magazines, proof of a sales manager for a French publication, in which it is stated that advertising activities have been carried out since 2013; a statement from the Italian trade association for the coatings industry confirming that the contested mark is recognised in the coating sector and has a high degree of reputation, credibility and prestige, and that ‘[s]ince the launch of the ADAPTA powder coatings mark on the market, the mark, the company and its products have been involved in many conferences and trade shows organised by the association’; a statement from a Spanish trade association of paint manufacturers referring to the applicant’s role within that organisation; evidence that the applicant is a member of two Spanish trade associations, in particular in the furniture, wood and packaging sector. 121 In the present case, those statements have rightly been taken into account as direct evidence of high probative value. 122 However, the Board of Appeal was also right to find that a large part of those statements only proved the fact that the applicant was advertised in such publications, that it was not always specified to what extent and that there was no information concerning the circulation of those magazines. Furthermore, not all the publications in question are Spanish and do not give an indication of where the reputation of the mark has been acquired. 123 It is thus without committing any error that the Board of Appeal found that they added little weight to the assertion that the contested mark enjoyed a reputation with the relevant public. That evidence does not make it possible to demonstrate that the contested trade mark serves to identify in Spain the goods and services concerned as originating from a specific undertaking and thus of distinguishing those goods and services from those of other undertakings. 124 Thirdly, the Board of Appeal referred to press articles, specialised publications and other brochures and catalogues. It is apparent from those documents that the mark is used and that the applicant enjoys a certain reputation, in particular as an innovative company in the field of powder coating. 125 However, the Board of Appeal correctly held that the evidence produced was not sufficient to demonstrate that the contested trade mark enjoyed a reputation, in particular for goods and services other than the manufacture of powder coating, and in particular for specialised delivery, distribution and the delivery service included in Class 39. This evidence remains insufficient to establish the actual perception of the contested mark. 126 Having regard to all of the foregoing and in view of all the evidence produced, it must be concluded that the Board of Appeal did not err in finding that the applicant had failed to demonstrate that the contested mark had acquired distinctive character in Spain through its use, within the meaning of Article 7(3) of Regulation No 207/2009. 127 Consequently, the fourth plea in law must be rejected, as must, therefore, the action as a whole. Costs 128 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. 129 Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders Adapta Color, SL to pay the costs. Berardis Spielmann Csehi Delivered in open court in Luxembourg on 11 April 2019. E. Coulon G. Berardis Registrar President Table of contents Background to the dispute Forms of order sought Law Admissibility of the documents produced for the first time before the Court Substance The first plea, alleging infringement of Articles 75 and 76 of Regulation No 207/2009 – Infringement of the right to be heard in relation to the Portuguese and Romanian public – Breach of the obligation to state reasons The second plea, alleging infringement of the general principles of legal certainty, equal treatment and sound administration The third plea in law, alleging infringement of Article 52(1)(a) and of Article 7(1)(b) and (c) of Regulation No 207/2009 The fourth plea in law, alleging infringement of Article 7(3) of Regulation No 207/2009 Costs * Language of the case: English.