JUDGMENT OF THE GENERAL COURT (Second Chamber)
16 October 2024 (*)
( EU trade mark – Revocation proceedings – EU figurative mark e.plus – No proof of genuine use of the mark in connection with some of the services – Determination of independent subcategories of services – Article 58(1)(a) and (2) of Regulation (EU) 2017/1001 )
In Case T‑570/23,
Telefónica Germany GmbH & Co. OHG, established in Munich (Germany), represented by P. Neuwald, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
ePlus Inc., established in Herndon, Virginia (United States),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, V. Tomljenović and L. Spangsberg Grønfeldt (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Telefónica Germany GmbH & Co. OHG, seeks the partial annulment and the alteration of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 June 2023 (Joined Cases R 1199/2022-1 and R 1711/2022-1) (‘the contested decision’).
Background to the dispute
2        On 12 April 2021, ePlus filed an application for revocation with EUIPO in respect of the EU trade mark which had been registered following an application filed on 8 April 1999 by the applicant, claiming the seniority of German trade mark No 39 815 172, which had been registered on 29 May 1998, in respect of the following figurative sign:
3        The goods and services covered by the contested mark in respect of which revocation was sought were, following the partial surrender made in the course of the proceedings before EUIPO, in Classes 9 and 38 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:
–        Class 9: ‘Apparatus for recording, transmission or reproduction of sound or images, in particular subscriber terminals and accessories therefor, namely mains apparatus, mains charging apparatus, batteries, connecting cables, holding devices and auto-holding devices specially adapted to subscriber terminals, carriers, aerials; data-processing equipment and computers; SIM cards (Subscriber Identification Module)’;
–        Class 38: ‘Telecommunications, in particular mobile radiotelephone services; operating telecommunications networks, in particular mobile radiotelephone networks; message sending; value added services, namely services in connection with actual network services, in particular establishing a call answering system as a function of a central computer, a mailbox, transmission of short messages, call relaying, conferencing’.
4        The ground relied on in support of the application for revocation was that set out in Article 58(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), namely the lack of genuine use of the contested mark.
5        On 4 July 2022, the Cancellation Division partially revoked the contested mark, maintaining the registration solely in respect of the following goods and services:
–        Class 9: ‘SIM cards (Subscriber Identification Module)’;
–        Class 38: ‘Telecommunications, namely mobile telephone services; operating telecommunications networks, namely mobile telephone networks’.
6        On 6 July 2022, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision, in so far as the contested mark had been revoked in respect of the following services in Class 38: ‘telecommunications (except mobile telephone services); operating telecommunications networks (except mobile telephone networks); message sending’.
7        On 5 September 2022, ePlus filed a notice of appeal with EUIPO against the Cancellation Division’s decision, in so far as the application for revocation had been rejected in respect of all the goods and services referred to in paragraph 5 above.
8        By the contested decision, the First Board of Appeal of EUIPO joined the appeals and partially annulled the Cancellation Division’s decision. It found that genuine use of the contested mark had been proved in connection with the following services: ‘telecommunications, namely mobile telephone services, internet service provider [“ISP”] services; operating telecommunications networks, namely mobile telephone networks, ISP networks; message sending’. By contrast, it concluded that genuine use of that mark had not been proved in connection with the services of ‘telecommunications (except mobile telephone services, ISP services); operating telecommunications networks (except mobile telephone networks, ISP networks)’ and consequently dismissed the remainder of the applicant’s appeal. Furthermore, the Board of Appeal dismissed ePlus’s appeal in its entirety.
9        In particular, the Board of Appeal found that the evidence submitted by the applicant did not prove genuine use of the contested mark in connection with all the services falling within the broad category of telecommunications. In those circumstances, that mark could avoid revocation only in respect of the subcategories, distinguished by their intended purpose, their end users and their distribution channels, in connection with which use had been proved. In that regard, the Board of Appeal concluded that it was apparent from the overall assessment of the evidence submitted by the applicant that the contested mark had been used in connection with the three subcategories which have been referred to in paragraph 8 above (mobile telephone services and operating mobile telephone networks; ISP services and operating ISP networks; message sending).
Forms of order sought
10      The applicant claims that the Court should:
–        partially annul and alter the contested decision, in so far as genuine use of the contested mark has been proved in connection with the whole of the category of the services of ‘telecommunications’ and of ‘operating telecommunications networks’ in Class 38;
–        order EUIPO to pay the costs, including those incurred before the Board of Appeal and the Cancellation Division.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
Law
12      In support of its action, the applicant puts forward a single plea in law alleging infringement of Article 58(1) and (2) of Regulation 2017/1001.
13      By its single plea, the applicant submits that genuine use of the contested mark should have been found to have been proved in connection with the whole of the category of ‘telecommunications’ services in Class 38. It claims that the Board of Appeal erred in breaking that category of services down into independent subcategories. It argues that it is impossible to subdivide ‘telecommunications’ services according to criteria which are not arbitrary, since those services are all closely linked. It submits that, consequently, the Board of Appeal should have acknowledged that the evidence of genuine use submitted by the applicant applied to the category of telecommunications services as a whole.
14      EUIPO disputes the applicant’s arguments.
15      Article 58(1)(a) of Regulation 2017/1001 provides that the rights of the proprietor of an EU trade mark are be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
16      According to Article 58(2) of Regulation 2017/1001, where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor are to be declared to be revoked in respect of those goods or services only.
17      As regards the concept of ‘some of the goods or services’ which is referred to in Article 58(2) of Regulation 2017/1001, it must be pointed out that a consumer who wishes to purchase a product or service in a category of goods or services that has been defined particularly precisely and narrowly, but within which it is not possible to make any significant subdivisions, will associate all the goods or services belonging to that category with a mark registered in respect of that category of goods or services, with the result that that trade mark will fulfil its essential function of guaranteeing the origin of those goods or services. Accordingly, it is sufficient to require the proprietor of such a mark to adduce proof of genuine use of his or her trade mark in relation to some of the goods or services in that homogeneous category. On the other hand, with regard to goods or services in a broad category of goods or services, which may be subdivided into several independent subcategories, it is necessary to require the proprietor of a mark registered in respect of that category of goods or services to adduce proof of genuine use of his or her mark for each of those independent subcategories, failing which he or she will be liable to forfeit his or her rights in that trade mark in respect of those independent subcategories for which he or she has not adduced such proof (judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraphs 42 and 43).
18      However, although the principle of ‘partial use’ operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the trade mark concerned being stripped of all protection for goods which, although not strictly identical to those in respect of which he or she has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. It must, in that regard, be observed that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods or services concerned by the registration. Consequently, the concept of ‘some of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 46, and of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 24).
19      Since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers employ the criterion of the purpose or intended use of the goods or services in question before making any purchase, that criterion is of fundamental importance in the definition of a subcategory of goods or services (judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 29, and of 16 May 2013, Aleris v OHIM – Carefusion 303 (ALARIS), T‑353/12, not published, EU:T:2013:257, paragraph 22).
20      By contrast, the nature of the goods or services at issue and their characteristics are not, as such, relevant with regard to the definition of subcategories of goods or services (see, to that effect, judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 31, and of 16 May 2013, ALARIS, T‑353/12, not published, EU:T:2013:257, paragraph 23).
21      In the present case, it must be borne in mind that the Board of Appeal found that the evidence of genuine use of the contested mark submitted by the applicant did not prove such use in connection with all of the telecommunications services in Class 38. In order to arrive at that finding, the Board of Appeal, at the outset of its analysis, observed that the category of telecommunications services had to be considered to be broad within the meaning of the case-law which has been referred to in paragraph 17 above (paragraph 82 of the contested decision). Secondly in its analysis, the Board of Appeal found that the applicant had proved genuine use of the contested mark as regards mobile telephone services, ISP services, operating mobile telephone networks, operating ISP networks and message sending (paragraphs 86 and 87 of the contested decision). Thirdly in its analysis, the Board of Appeal found that the category of telecommunications services had to be divided into independent subcategories, distinguished by the specific purpose of the various services in that category (paragraphs 88 to 96 of the contested decision). In particular, it found that radio broadcasting and television broadcasting services, telephone and messaging services and ISP services constitute three separate subcategories (paragraphs 96 to 100 of the contested decision). Lastly, following an overall assessment of all of the evidence of use submitted by the applicant, the Board of Appeal found that genuine use of that mark had been proved only in connection with mobile telephone services, ISP services, operating mobile telephone networks, operating ISP networks and message sending, and not in connection with the other telecommunications services and services of operating telecommunications networks (paragraphs 114 to 117 of the contested decision).
22      The applicant disputes the Board of Appeal’s assessment which led to the creation of subcategories within the category of ‘telecommunications’ in Class 38. According to the applicant, those services are closely linked, which makes it impossible to group them together in subcategories and to require that genuine use of the contested mark must be proved in connection with each of those subcategories.
23      It is therefore necessary to examine whether the Board of Appeal was justified in finding that the category of ‘telecommunications’ in Class 38 could be divided into various subcategories of services. If it were established that the services in connection with which the Board of Appeal acknowledged that the contested mark had been put to genuine use constitute coherent subcategories, which are capable of being viewed independently, it would follow that the evidence allowed by the Board of Appeal could not apply to ‘telecommunications’ as a whole. By contrast, if it were established that those services do not constitute such coherent subcategories capable of being viewed independently, the applicant cannot be required, in accordance with the case-law cited in paragraph 18 above, to prove that the contested mark has been put to genuine use in connection with all the other conceivable variations of the services belonging to the category of ‘telecommunications’ in Class 38, since it would be impossible in practice to furnish such proof.
24      In the first place, the Board of Appeal found that, in the light of the case-law and of the description of the services in Class 38 given by the explanatory note to the seventh edition of the Nice Classification, which was in force as at the date of registration of the contested mark, the services in the category of ‘telecommunications’ in that class included a broad variety of services. Without expressly disputing the broad nature of that category, the applicant submits that the Board of Appeal could not rely on the judgment of 6 July 2022, Les Éditions P. Amaury v EUIPO – Golden Balls (BALLON D’OR) (T‑478/21, not published, EU:T:2022:419, paragraph 39), in order to justify the creation of subcategories within that general category. According to the applicant, that judgment does not provide for the possibility of creating such subcategories and the Board of Appeal could not therefore rely on it in order to create subcategories corresponding to the various services listed in paragraph 39 of that judgment.
25      In that regard, it is apparent from paragraph 95 of the contested decision that the Board of Appeal only relied on paragraph 39 of the judgment of 6 July 2022, BALLON D’OR (T‑478/21, not published, EU:T:2022:419), in order to indicate that the category of telecommunications services in Class 38 covered a broad variety of services, including certain services of the diffusion of radio and television programmes. By contrast, the Board of Appeal did not deduce from that judgment that it was possible to create independent subcategories within telecommunications services. Consequently, the applicant’s argument is the result of a misreading of the contested decision and must be rejected.
26      In the second place, the applicant relies on the existence of a close link between the various services in the category of ‘telecommunications’ in Class 38, which, according to the applicant, renders arbitrary the Board of Appeal’s division of that category into subcategories in the contested decision.
27      In that regard, it must be borne in mind that the Board of Appeal found that the services in Class 38 could be divided into subcategories based on their purpose, end users and distribution channels. According to the Board of Appeal, for example, radio or television broadcasting services, consisted of the transmission of programmes to listeners or viewers, whereas telephone and messaging services connected a number of persons. As regards internet access services, the Board of Appeal found that they served different purposes and were not as a matter of course sold with the other services in Class 38. It found that those three separate purposes therefore meant that those three types of telecommunications services could be grouped together in separate and independent subcategories.
28      None of the applicant’s arguments makes it possible to call those assessments into question.
29      First, the applicant claims that radio or television broadcasting services and telephone and messaging services have the same purpose, namely to allow at least two persons to communicate by a sensory means and to place a person in oral or visual communication with another. Moreover, the end users and distribution channels are, according to the applicant, identical.
30      It must be pointed out, as the Board of Appeal found in paragraph 96 of the contested decision, that those two types of services do not have the same purpose. As EUIPO rightly submits, radio or television broadcasting services consist of the transmission of radio or television programmes and not of direct communication between a number of persons, which is the case with regard to telephone and message-sending services. That distinction is made, inter alia, in the explanatory note to the Nice Classification which has been referred to in paragraph 24 above, to which the applicant also refers. The Board of Appeal was therefore right in finding that, since telephone and messaging services, on the one hand, and radio or television broadcasting services, on the other hand, served different purposes, those services had to be regarded as falling within separate subcategories.
31      Secondly, the applicant complains that the Board of Appeal drew an arbitrary distinction between ISP services, radio and television broadcasting services, and telephone services, since, first, those three types of services may be sold as a package and, secondly, users can watch television or listen to the radio via the internet.
32      It must be borne in mind that, according to the case-law referred to in paragraph 19 above, the criterion of the purpose or intended use of the services in question is of fundamental importance in the definition of a subcategory of services. It must be held, as is apparent from paragraph 98 of the contested decision, that the three types of services at issue here serve different purposes.
33      Thus, as EUIPO correctly submits, ISP services allow users to access the internet, by means of different devices, for purposes which may be other than oral and written communication. As regards telephone services, those services allow at least one person to speak and transmit messages to another. Lastly, broadcasting services make it possible to access radio or television content. Those different purposes justify, in principle, treatment by means of subcategories.
34      As regards the argument based on the sale as a package of the three types of services referred to in paragraph 31 above, it is apparent from paragraph 98 of the contested decision that ‘telephone companies … offer both call and message services together with Internet access and a wide range of auxiliary services, often as a full package of integrated solutions’. Nevertheless, the Board of Appeal also pointed out that, although such a fact was established, it also had to be noted that ISP services could be sold independently of telephone services. In that regard, the Board of Appeal observed, referring to Annex 15, which the applicant had submitted before the Cancellation Division, that the applicant itself sold ISP services independently of its telephone services. In any event, it must be borne in mind that, according to the case-law, the main criterion determining subcategorisation is the purpose of the services concerned. The existence of shared distribution channels can, at the very most, only play a subsidiary role in that regard. The fact that the three types of services at issue are sometimes sold as a bundle cannot therefore suffice to call into question the merits of the subcategorisation made in the contested decision on the basis of the purpose of each of those three types of services.
35      The judgment of 30 January 2015, Now Wireless v OHIM – Starbucks (HK) (now) (T‑278/13, not published, EU:T:2015:57), on which the applicant relies, cannot call that assessment into question. It is true that, in paragraph 28 of that judgment, the Court held that consumers sought electronic network access services as a bundle and not as individual services. However, it must be stated that the Board of Appeal did not, in the present case, make a subcategorisation within electronic network access services, but drew a distinction between three types of telecommunications services distinguished by different purposes, namely telephony, internet access and the broadcasting of radio and television content.
36      As regards the argument that it is possible for users to watch television or listen to the radio via the internet, it must be stated, as observed by EUIPO, that the mere fact that television or radio content can be broadcast and consulted via the internet is not sufficient to preclude those services from being distinguished from each other from the point of view of their purpose.
37      Furthermore, the applicant complains that the Board of Appeal did not regard the term ‘telecommunications’ and the concept of ‘electronic communications services’ provided for by Directive (EU) 2018/1972 of the European Parliament and of the Council of 11 December 2018 establishing the European Electronic Communications Code (OJ 2018 L 321, p. 36) and the Telekommunikationsgesetz (Law on Telecommunications) of 23 June 2021 (BGBl. I, p. 1858) as synonymous. The applicant submits that those two pieces of legislation provide that ‘electronic communications services’ include three types of services, which may, however, overlap and must be regarded as related services, namely internet access services, interpersonal communications services and services consisting wholly or mainly in the conveyance of signals.
38      In that regard, the Board of Appeal correctly stated, in paragraph 99 of the contested decision, that the criteria on which Directive 2018/1972 and the Telekommunikationsgesetz are based, namely a functional approach and the end user, do not coincide with those laid down by the case-law with regard to the subcategorisation of services, namely the purpose of those services. It must also be borne in mind that the nature of the goods or services at issue and their characteristics are not, as such, relevant with regard to the definition of subcategories of goods or services, as stated in the case-law referred to in paragraph 20 above. The definitions set out in the two pieces of legislation relied on by the applicant therefore have no bearing in the context of the application of Article 58(2) of Regulation 2017/1001 (see, by analogy, judgments of 18 November 2020, Dermavita v EUIPO – Allergan Holdings France (JUVEDERM ULTRA), T‑643/19, not published, EU:T:2020:549, paragraph 27 and the case-law cited, and of 30 November 2022, Hasco TM v EUIPO – Esi (NATURCAPS), T‑12/22, not published, EU:T:2022:733, paragraph 35).
39      It is apparent from the foregoing that the Board of Appeal was right in finding that the category of ‘telecommunications’ in Class 38 consists of services which can be divided into subcategories and that telephone and messaging services and ISP services constitute such subcategories, on account of the specific purposes which they serve. Since the Board of Appeal set out sufficiently the reasons justifying that subcategorisation, the applicant is not justified in complaining that it is arbitrary.
40      It follows from the foregoing that the applicant’s single plea must be rejected as unfounded and that, consequently, the action must be dismissed in its entirety.
Costs
41      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.
42      EUIPO has applied for the applicant be ordered to pay the costs only in the event that a hearing is convened. Since no hearing has been organised, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Marcoulli
Tomljenović
Spangsberg Grønfeldt
Delivered in open court in Luxembourg on 16 October 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.