Information;Judgment — ECLI:EU:T:2022:16
Date: 2022-01-19
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Germany

summary of the pleas in law relied on. It is settled case-law that, although specific points in the text of the application can be supported and supplemented by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for a failure to set out the essential elements of the legal argument, which must, under the provisions referred to above, appear in the application itself (see judgments of 16 November 2017, Nanogate v EUIPO (metals), T‑767/16, not published, EU:T:2017:809, paragraph 31, and of 8 July 2020, Scorify v EUIPO – Scor (SCORIFY), T‑328/19, not published, EU:T:2020:311, paragraph 20). 58 Similarly, it is not for the Court to assume the role of the parties by seeking to identify the relevant material in the documents to which they refer (judgments of 16 November 2017, metals, T‑767/16, not published, EU:T:2017:809, paragraph 32, and of 8 July 2020, SCORIFY, T‑328/19, not published, EU:T:2020:311, paragraph 21). 59 Consequently, the applicant’s arguments in the observations which it submitted during the administrative proceedings before EUIPO, to which it merely refers, must be rejected as inadmissible. 60 In the second place, it should be noted that it is not disputed that the five-year period preceding the application for revocation, within which the trade mark proprietor was required to prove genuine use of the mark at issue, extended from 18 February 2014 to 17 February 2019 inclusive, as mentioned in paragraph 33 of the contested decision. 61 As regards, in the third place, the extent of use of the mark at issue in connection with the timers, it is clear from case-law that 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 (judgments of 21 November 2013, Recaro v OHIM – Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 19, and of 23 September 2020, Polfarmex v EUIPO – Kaminski (SYRENA), T‑677/19, not published, EU:T:2020:424, paragraph 39). 62 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 extent and frequency of use of the mark (judgments of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 22, and of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 42). 63 As to the extent or scale of the use to which the 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 (judgments of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 31, and of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 45). 64 In the present case, the trade mark proprietor initially produced, before the Cancellation Division, a statement, referred to in paragraph 43 of the contested decision, to which is attached a report entitled ‘Pomodoro Timer Sales Report for the Period 18.02.2014‑18.02.2019’ indicating that 2 765 timers were sold during the period referred to in paragraph 60 above. That document distinguishes between sales of timers by the unit (9 items sold), in crates of eight (2 056 items sold) and by the unit together with a book on the method developed by the trade mark proprietor (700 items sold). 65 Next, before the Board of Appeal, the trade mark proprietor produced a report from e-commerce platform ‘Shopify’ (‘the Shopify report’), drawn up for that period, from which it is apparent that 970 items were sold with the help of that platform in 23 Member States for a total sum of approximately EUR 28 000. 66 Lastly, in order to corroborate the sales apparent from the above documents, the trade mark proprietor produced, again before the Board of Appeal, 100 sample invoices, not numbered consecutively, in respect of the sales of 1 645 timers during the same period in 23 Member States. 67 As regards the probative value of those documents, the applicant cannot claim that there is a significant contradiction between the evidence produced before the Cancellation Division, on the one hand, and that produced before the Board of Appeal, on the other. It is true that, in paragraph 45 of the contested decision, it is noted that the Shopify report shows a sales volume of 970 items. However, apart from the fact that this sales volume might represent only a portion of the sales of timers during the period referred to in paragraph 60 above, that sales volume, namely 970 items, is accounted for by the fact that that report identifies certain sales of crates of eight timers as a single item sold rather than eight items sold. It is apparent from the ‘Pomodoro Timer Sales Report for the Period 18.02.2014‑18.02.2019’, produced before the Cancellation Division, that each sale of a crate of eight timers is assigned a code, namely 002‑001‑G‑S, and that 2 056 timers were sold in crates of eight. The same code also appears in the Shopify report to identify the sale of 258 items, which, in respect of crates of eight timers, means the sale of 2 064 timers. 68 It follows that there is no significant contradiction between the evidence produced during the proceedings before EUIPO. 69 In addition, apart from the argument relating to such a contradiction, the applicant has put forward no other evidence calling into question the probative value of the documents referred to in paragraphs 64 to 66 above. 70 In those circumstances, it must be held that, as is apparent from paragraph 43 of the contested decision, the trade mark proprietor has sufficiently proved that he sold approximately 2 700 timers within the period referred to in paragraph 60 above, with those sales covering the entirety of that period and being made in 23 Member States. 71 Admittedly, that sales volume does not appear to be very significant. 72 Nevertheless, the turnover and the volume of sales of the goods under a 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, with the result that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine and even minimal use can therefore be sufficient to be classified as genuine, provided that it is 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 (judgments of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 32, and of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 46). 73 In the present case, that sales volume was achieved for specific goods, which are not everyday consumer goods, namely timers, in the online retail sector. Next, that volume was reached during the first years of marketing those goods, which began in 2013. Furthermore, given that the timers were sold in 23 Member States throughout the entire period referred to in paragraph 60 above, those sales were very regular and covered a broad territorial scope. 74 Those circumstances thus offset the low volume of timers sold, with the result that such a volume may therefore be considered sufficient, in the online retail sector, as a means of maintaining or creating a market share for those goods; the requirement that the mark must have been put to genuine use is not intended 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 (judgment of 10 June 2020, Leinfelder Uhren München v EUIPO – Schafft (Leinfelder), T‑577/19, not published, EU:T:2020:259, paragraph 24). 75 That conclusion is not called into question by the applicant’s argument that the number of persons who purchased timers – whether by the item, crates of eight or together with a book – amounts to fewer than 200 per year. That fact alone is not such as to show that the mark at issue was not put to genuine use since, first, such a figure is not negligible, and, secondly, a finding of genuine use results from an overall assessment which takes into account all the relevant factors of the case (see, to that effect, judgments of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 23, and of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 43), in particular the fact that use of the mark was very regular, which implies a degree of interdependence between those factors, which, as is apparent from paragraph 73 above, is the case here. In that regard, an overall assessment must be carried out which takes into account all the relevant factors of the present case. That assessment implies a degree of interdependence between the factors taken into account. Thus, the low volume of goods sold under the mark may be offset by the fact that use of the mark was very extensive or very regular and vice versa (see judgments of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 23 and the case-law cited, and of 23 September 2020. SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 43). 76 Likewise, while the applicant maintains that the Board of Appeal erred in describing the timers as ‘countdown timers’ instead of ‘kitchen timers, non-electric’, it provides no details informing the Court of the effect of such an error, even if proved, on the legality of the contested decision. 77 In the fourth place, as regards genuine use of the application, it should be noted first of all that, contrary to the applicant’s assertion, the trade mark proprietor did not prove genuine use solely by presenting the page from a website on which there is an icon for making an application download request. 78 The trade mark proprietor also submitted, in Annex 4 to his statement setting out the grounds of appeal, a list of the number of application downloads emanating from the Gmail email service, from which it is apparent that 1 621 download requests were made within the period referred to in paragraph 60 above. 79 Furthermore, as the Board of Appeal pointed out in paragraph 49 of the contested decision, the trade mark proprietor submitted to the Board of Appeal 100 sample application download requests with the aim of corroborating that volume of 1 621 requests. 80 As EUIPO states, first, such a sample is sufficiently large and reliable to corroborate the fact that there were 1 621 application download requests. Secondly, the very high proportion, within that sample, of download requests from persons residing or established in the European Union, namely 99%, supports the Board of Appeal’s assessment that the application was downloaded mainly by customers ‘in the EU’. 81 The applicant has not adduced evidence capable of calling into question the probative value of that evidence. 82 It merely asserts that there was no ‘download’ of the application from the trade mark proprietor’s website, since it was necessary to send a download request by email. 83 However, such a fact is not capable, in itself, of showing that the application was not downloaded, since there is no reason why such a download should not be subject to the prior authorisation of the trade mark proprietor. 84 In those circumstances, it must be held that, within the period referred to in paragraph 60 above, the mark at issue was used for the exploitation of the application, in respect of which there were 1 621 download requests, mainly in the European Union. 85 Although that volume is not particularly significant, it is not a token volume either. Having regard to uses that are viewed as warranted in the online retail sector for downloadable software applications as a means of maintaining or creating market shares for such goods, such a volume, emanating mainly from Member States, must be regarded as sufficiently significant to demonstrate the frequency and territorial scope of the use of the mark at issue in the marketing of the application, in particular in circumstances where, as is apparent from paragraph 35 of the contested decision, that application has been available for download only since October 2018, that is to say, for less than six months within the period referred to in paragraph 60 above. 86 Next, use of the mark at issue in connection with the application cannot be called into question, as the applicant maintains, on the ground that that mark was used, to that end, in the form ‘Pomodoro Timer Project – Request Software’. 87 Proof of genuine use of a mark, in cancellation proceedings, also includes proof of use of that mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered. In that regard, it must be borne in mind that the purpose of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 is to avoid imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, and 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 (see, to that effect, judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 27 and the case-law cited). 88 In the present case, it is common ground that the mark at issue appeared on the application download requests, accompanied by other terms such as ‘technique’, ‘timer’ and ‘project’, which should be regarded, as the Board of Appeal stated in paragraph 61 of the contested decision, as descriptive additions which do not alter the distinctive character of the mark at issue. In that regard, the fact that it has not been proved that the application was actually downloaded is not capable of calling into question the proof of use of the mark at issue provided by the documents referring to download requests and, more broadly, to the trade mark proprietor’s website, since it is sufficient that the use of the mark relates to goods about to be marketed and for which preparations by the undertaking to secure customers are under way. 89 Lastly, the applicant claims that the Board of Appeal failed to demonstrate the link between various items of evidence produced before the Board of Appeal and the trade mark proprietor, in that some of that evidence, which comes from third parties, relates to Cirillo Consulting GmbH and not to the trade mark proprietor. That is the case, it is argued, with the application download requests and with the testimony in Annex 6 to the statement setting out the grounds of appeal, in which an engineer sets out proposals for developing the trade mark proprietor’s website from which the application may be downloaded. 90 In that regard, it is sufficient to bear in mind that use of the mark by a company which is economically linked to the trade mark proprietor is presumed to be use of that mark with the consent of the proprietor and is therefore to be deemed to constitute use by the proprietor, in accordance with Article 18(2) of Regulation 2017/1001 (judgments of 17 February 2011, J & F Participações v OHIM – Plusfood Wrexham (Friboi), T‑324/09, not published, EU:T:2011:47, paragraph 32, and of 30 January 2015, Now Wireless v OHIM – Starbucks (HK) (now), T‑278/13, not published, EU:T:2015:57, paragraph 38). 91 It is clear from the examination of the various items of evidence produced by the trade mark proprietor, in particular the heading of the invoices for the sale of the timers, that the proprietor is the manager of Cirillo Consulting and of FC-Garage GmbH, which appear to be the entities marketing both the timers and the application to the public, such evidence showing that the use of the mark at issue is outwardly directed and is not just internal use within the trade mark proprietor’s undertaking (see, to that effect, judgments of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 39, and of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 41). 92 Therefore, the use of the mark at issue by those two companies, whether to market the timers or the application, is presumed to be use of that mark with the consent of its proprietor. 93 It follows from all of the foregoing that it is necessary to dismiss the third plea and, with it, the action in its entirety. Costs 94 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. In the present case, the applicant has been unsuccessful and EUIPO has applied for costs in the present proceedings. Accordingly, the applicant must be ordered, in addition to bearing its own costs, to pay all of the costs incurred by EUIPO in the present proceedings. On those grounds, THE GENERAL COURT (Tenth Chamber) hereby: 1. Dismisses the action; 2. Orders Masterbuilders, Heiermann, Schmidtmann GbR to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) in the proceedings before the General Court. Kornezov Buttigieg Petrlík Delivered in open court in Luxembourg on 19 January 2022. E. Coulon M. van der Woude Registrar President * Language of the case: English.