JUDGMENT OF THE GENERAL COURT (First Chamber)
19 March 2025 (*)
( EU trade mark – Revocation proceedings – EU figurative mark Dialoga – Genuine use of the mark – Point (a) of the second subparagraph of Article 18(1) and Article 58(1)(a) and (2) of Regulation (EU) 2017/1001 – Determination of independent subcategories of services – Proof of genuine use – Assessment of evidence )
In Case T‑1075/23,
e-dialog GmbH, established in Vienna (Austria), represented by C. Kletzer, W. Mosing and J. Muyldermans, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Dialoga Servicios Interactivos, SA, established in Bilbao (Spain), represented by L. Carlini, lawyer,
THE GENERAL COURT (First Chamber),
composed of I. Gâlea, acting as President, T. Tóth and S.L. Kalėda (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 19 November 2024,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, e-dialog GmbH, seeks the annulment and the alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 September 2023 (Case R 97/2023-5) (‘the contested decision’).
Background to the dispute
2        On 1 March 2010, the intervener, Dialoga Servicios Interactivos, SA, filed an application with EUIPO for registration of an EU trade mark in respect of the following figurative sign:
3        The trade mark was registered on 24 August 2010. It covered services in Class 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, corresponding to the following description: ‘Telecommunications services’.
4        On 24 September 2021, the applicant filed an application for revocation of that mark in respect of the services referred to in paragraph 3 above, on the basis of 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), on the ground that the contested mark had not been put to genuine use within a continuous period of five years.
5        By decision of 17 November 2022, the Cancellation Division of EUIPO rejected the application for revocation.
6        On 16 January 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7        By the contested decision, the Board of Appeal dismissed the appeal on the ground that the evidence submitted by the intervener showed that the contested mark had been put to genuine use in respect of the services referred to in paragraph 3 above.
Forms of order sought
8        The applicant claims, in essence, that the Court should:
–        annul the contested decision, with the consequence that EUIPO will revoke the contested mark;
–        order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.
9        At the hearing, the applicant clarified that it claimed that not only should the contested decision be annulled but that it also should be altered; this was recorded in the minutes of the hearing.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
11      The intervener contends that the Court should dismiss the action.
Law
The claim for annulment
12      The applicant relies on a single plea in law, alleging infringement of Article 58(1)(a) and (2) and of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, on the ground that the Board of Appeal incorrectly took the view that the contested mark had been put to genuine use in connection with all the services referred to in paragraph 3 above.
13      That plea in law is divided into three complaints, alleging errors of assessment and of law concerning, in essence, first, the extent of use of the contested mark, second, the use of the contested mark as registered and, third, the use of that mark in connection with the services in respect of which the mark is registered.
14      By the first complaint, in essence, the applicant alleges that the Board of Appeal made an incorrect overall assessment of the evidence when examining the extent of use of the contested mark. First, the Board of Appeal wrongly took into account evidence falling outside the relevant period. Second, given the considerable size of the relevant market in telecommunications services, the invoices produced by the intervener demonstrate only token use of that mark. In addition, the applicant alleges that the Board of Appeal inferred from the fact that the invoices produced did not bear consecutive numbers that there were further invoices that could establish the extent of use of the contested mark and, therefore, assessed the extent of use of that mark on the basis of a probability or a supposition.
15      EUIPO and the intervener dispute the applicant’s arguments.
16      Under Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings 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.
17      There is genuine use of a trade mark where the trade 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 (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
18      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 exploitation of the mark is real, particularly where such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market, and the scale and frequency of use of the mark (judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
19      Concerning the extent of the use made of the contested mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
20      To examine, in a particular case, whether a contested mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be offset by a high intensity or a certain consistency in time of the use of that trade mark, and vice versa (see, to that effect, judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
21      The requirement of genuine use does not seek 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 (see, to that effect, judgments of 26 September 2013, Centrotherm Systemtechnik v centrotherm Clean Solutions, C‑609/11 P, EU:C:2013:592, paragraphs 72 and 74, and of 29 November 2018, Alcohol Countermeasure Systems (International) v EUIPO, C‑340/17 P, not published, EU:C:2018:965, paragraph 90).
22      Therefore, the turnover achieved and quantity of product sales under the contested mark cannot be assessed in absolute terms but must be assessed in relation to other relevant factors, such as the volume of commercial activity, the production or marketing capacities or the degree of diversification of the undertaking exploiting the mark, and the characteristics of the goods or services on the market in question. For that reason, use of the contested mark need not always be quantitatively significant for it to be deemed genuine (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42). Even minimal use of the trade mark can be deemed genuine, provided that such use is viewed as warranted, in the economic sector concerned, to maintain or create a share in the market for the goods or services protected by the mark. It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use had been genuine or not. A de minimis rule, which would not allow EUIPO or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72).
23      An accumulation of items of evidence may allow the necessary facts to be demonstrated, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 66 and the case-law cited).
24      Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).
25      In that regard, pursuant to Article 10(3) and (4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), applicable to revocation proceedings pursuant to Article 19(1) of that regulation, proof of use of a trade mark must relate to the place, time, extent and nature of the use made of the mark and is to be limited, in principle, to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing as referred to in Article 97(1)(f) of Regulation 2017/1001.
26      In the light of the foregoing, it is necessary to examine whether the Board of Appeal was entitled to take the view that the evidence produced by the intervener demonstrated genuine use of the contested mark.
27      Since the application for revocation was filed on 24 September 2021, the five-year period referred to in Article 58(1)(a) of Regulation 2017/1001 runs from 24 September 2016 to 23 September 2021 (‘the relevant period’).
28      To adduce proof of the genuine use of the contested mark, the intervener produced, in essence, in the course of the proceedings before EUIPO, the following documents:
–        19 invoices issued by it in Spain between 2012 and 2021, including six invoices dated during the relevant period;
–        extracts of pages from the Spanish newspaper Expansión from 2020 and from the Spanish newspaper Seguritecnia from 2019, including advertisements;
–        extracts from its website, including articles with illustrations referring to its presence at events and fairs in Berlin (Germany) in 2018 and Madrid (Spain) in 2017.
29      At the outset, it must be observed that those documents, in so far as they fall within the relevant period, demonstrate that the contested mark was used during that period.
30      With regard to the place of use, the Board of Appeal noted, without this being disputed by the applicant, that the evidence produced by the intervener, in particular the advertisements and the invoices, established use of the contested mark in Spain and therefore related to the relevant territory of the European Union, in accordance with Article 18(1) of Regulation 2017/1001.
31      As for the extent of use, it is necessary to examine the applicant’s arguments which seek, inter alia, to call into question the Board of Appeal’s assessment of the evidence.
32      With regard, first, to the account taken by the Board of Appeal of evidence before and after the relevant period, the Board of Appeal rightly took the view that, although that evidence could not, on its own, establish genuine use, it ought not however to be disregarded. Such evidence may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period (judgment of 27 September 2018, M J Quinlan & Associates v EUIPO – Intersnack Group (Shape of a kangaroo), T‑219/17, not published, EU:T:2018:610, paragraph 37; see also, judgment of 1 June 2022, Worldwide Machinery v EUIPO – Scaip (SUPERIOR MANUFACTURING), T‑316/21, not published, EU:T:2022:310, paragraph 34 and the case-law cited). In that regard, it is apparent from the contested decision that the Board of Appeal relied on evidence falling within the relevant period to establish that the contested mark had been put to genuine use and that it took into account evidence before and after the relevant period at the very most to support the continuous nature of the use.
33      Second, the applicant’s argument that the evidence points merely to token use of the contested mark, given the considerable size of the market in telecommunications services, cannot succeed.
34      It is true that a significant proportion of the invoices produced by the intervener show very low levels of income in the context of the relevant market. The invoices falling within the relevant period show a total amount of approximately EUR 60 000, with a single invoice accounting for the greater part of that amount.
35      However, in accordance with the case-law recalled in paragraphs 19 to 23 above, an overall assessment must be made which takes into account not only the commercial volume of all the acts of use, but also all the relevant factors in the particular case.
36      In that regard, contrary to what the applicant submits, the Board of Appeal could take into account the fact that the intervener had produced at least one invoice for each year of the relevant period and beyond that period, made out to different customers and bearing numbers which are very far apart, in order to find that they had been submitted by way of illustration and, therefore, to take the view that they did not represent exhaustively the income derived from the marketing of the services offered under the contested mark (see, to that effect, judgment of 27 September 2007, La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraphs 87 and 88). Accordingly, the Board of Appeal cannot be criticised for having relied on probabilities or suppositions to establish genuine use of the contested mark.
37      In addition, account must be taken of the fact that the intervener provided extracts of pages from Spanish newspapers from 2019 and 2020, including advertisements showing the contested mark. It also furnished evidence that the contested mark had been used at trade fairs which took place in 2017 in Madrid and in 2018 in Berlin.
38      The Board of Appeal was therefore entitled to take the view, in accordance with the case-law cited in paragraph 22 above, that, taken as a whole, the evidence showed that the contested mark had been used to a sufficiently quantitative extent. Thus, the Board of Appeal’s overall assessment, in the contested decision, of the extent of use did not contain errors of assessment. The first complaint of the single plea in law must therefore be rejected.
39      By the second complaint, the applicant contests the Board of Appeal’s assessment that the contested mark was used in the form in which it had been registered. In the applicant’s view, the evidence does not display the figurative sign corresponding to the contested mark, but rather the following variation, which alters the distinctive character of the contested mark and represents another EU trade mark which is also held by the intervener:
40      The applicant claims that the insertion of a red dot between the letters ‘o’ and ‘g’ in the word ‘dialoga’ indicates that the sign is a domain name, which, moreover, the intervener uses to allow access to its website. According to the applicant, since the sign is at the very most distinctive to a low degree in so far as it calls to mind the concept of ‘dialogue’, the relevant public is likely to perceive the insertion of the red dot as an attempt to move away from that concept and to refer not to the service provider but rather to an address indicating how to access those services.
41      EUIPO and the intervener dispute the applicant’s arguments.
42      Under point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, use of an EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor, also constitutes use of that trade mark within the meaning of the first subparagraph of Article 18(1) of that regulation.
43      For a trade mark to possess distinctive character within the meaning of Regulation 2017/1001, 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).
44      The purpose of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, 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 such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the provision cited above envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgment of 23 February 2006, Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 50; see also, judgment of 29 April 2020, Lidl Stiftung v EUIPO – Plásticos Hidrosolubles (green cycles), T‑78/19, not published, EU:T:2020:166, paragraph 66 and the case-law cited).
45      Thus, in order to find that the distinctive character of the trade mark as registered has been altered, an assessment must be made of the distinctive and dominant character of the components added, based on the intrinsic qualities of each of those components as well as on the relative position of the different components within the arrangement of the trade mark (see judgment of 10 June 2010, Atlas Transport v OHIM – Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 31 and the case-law cited).
46      In addition, for the purposes of such a finding, account must also be taken of the greater or lesser degree of distinctive character of the trade mark registered. The weaker the distinctive character of that mark, the easier it will be to alter it by adding a component that is itself distinctive, and the more the mark in question will lose its ability to be perceived as an indication of the origin of the goods (see judgment of 2 March 2022, Mood Media Netherlands v EUIPO – Tailoradio (MOOD MEDIA), T‑615/20, not published, EU:T:2022:109, paragraph 41 and the case-law cited).
47      It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was right to take the view, in paragraphs 68 to 73 of the contested decision, that the presence of the dot in the variation of the figurative sign did not alter the distinctive character of the contested mark in the form in which it had been registered.
48      First of all, as the Board of Appeal observed, without this being contested by the applicant, the distinctive character of the contested mark essentially stems from the word element ‘dialoga’.
49      In addition, the applicant’s claim that the evidence exclusively shows the variation of the contested mark reproduced in paragraph 39 above must be rejected. It is apparent from paragraphs 49 and 56 of the contested decision and from the evidence produced by the intervener that the intervener also used the sign in the following forms:
50      Next, although it is true that the contested mark has weak distinctive character, a fact which the Board of Appeal does not dispute, the element ‘dialoga’, which is reproduced in its entirety in all the variations of the contested mark used by the intervener, does however remain, as the Board of Appeal correctly observed, an independent element that is easily and immediately identifiable in those variations, despite the inserted dot. In addition, the Board of Appeal rightly took the view that, in view of the initial upper-case letter and the stylised font, the variations of the contested mark differed from how domain names were usually represented. Accordingly, the Board of Appeal did not make an error of assessment in taking the view that the added dot was a negligible element that does not alter the distinctive character of the contested mark, and therefore the usage of the variations of the contested mark had to be regarded as usage of that mark within the meaning of the first subparagraph of Article 18(1) of Regulation 2017/1001.
51      Lastly, as regards the applicant’s argument that the variation as reproduced in paragraph 39 above was covered by another trade mark held by the intervener, it must be observed that it follows from the wording of point (a) of the second subparagraph of Article 18(1), in fine, of Regulation 2017/1001 that that fact is irrelevant for the purpose of determining whether the trade mark was used in the form in which it was registered.
52      The applicant’s second complaint must therefore be rejected.
53      By the third complaint, the applicant submits that the limited use of the contested mark means that its protection cannot be extended to all telecommunications services, but only, at the very most, to one or more subcategories corresponding to the services to which the evidence refers, that is, audio and video communication services via SMS, fax2mail, making and receiving calls, voice messages, video conferencing and WebRTC (web real-time communication) (‘the services at issue’). The services at issue have different purposes and characteristics from those of many other telecommunications services, such as radio or television broadcasting services, fixed-line and mobile telephone services and, at a higher technical level, webmail services, chat services, interactive websites other than WebRTC, e-marketing communications and targeted online advertising.
54      EUIPO, supported by the intervener, contends that, since a concrete assessment had to be made as to whether the services at issue constituted an independent subcategory in relation to the category of telecommunications services as a whole, the Board of Appeal was entitled to take the view that the services at issue were sufficiently broad and representative of the category of telecommunications services to allow the use of that category as a whole, without it having been necessary, or even possible, to define one or more independent subcategories in advance.
55      With regard to the services invoked by the applicant as examples of independent subcategories within telecommunications services, first, EUIPO argues that they cannot, in the light of their purpose, be considered as substantially different from the services at issue. Second, it is in practice impossible for the intervener to prove that the trade mark had been used for all conceivable variations of telecommunications services.
56      According to EUIPO, any division between the services at issue would be arbitrary, because they are all intended to allow one person to talk to another, to transmit messages from one person to another and to place one person in oral or visual communication with another.
57      It must be recalled that, under 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 shall be declared to be revoked in respect of those goods or services only.
58      The breadth of the categories of goods or services for which the contested mark was registered is a key element of the balance between, on the one hand, the maintenance and preservation of the exclusive rights conferred on the proprietor of the contested mark and, on the other hand, the limitation of those rights in order to prevent a trade mark which has been used in relation to part of the goods or services being afforded extensive protection merely because it has been registered for a wide range of goods or services (judgments of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 39, and of 2 March 2022, Apologistics v EUIPO – Kerckhoff (apo-discounter.de), T‑140/21, not published, EU:T:2022:110, paragraph 22).
59      A consumer who wishes to purchase a product or service in a category that has been defined particularly precisely and narrowly, but within which it is not possible to make any significant sub-divisions, will associate all the goods or services belonging to that category with a registered trade mark for that category of goods or services, such that that trade mark will fulfil its essential function of guaranteeing the origin of those goods or services. In those circumstances, it is sufficient to require the proprietor of such a mark to adduce proof of genuine use of that trade mark in relation to part of the goods or services in that homogeneous category (judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 42).
60      However, with regard to goods or services brought together within a broad category, which may be subdivided into several independent subcategories, it is necessary to require the proprietor of a trade mark registered for that category of goods or services to adduce proof of genuine use of its trade mark for each of those independent subcategories, failing which that proprietor’s rights in the trade mark may be revoked in respect of the independent subcategories for which the proprietor has not adduced such proof (see, to that effect, judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 43).
61      Nevertheless, although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods or services are not rendered unavailable, it must not, however, result in the proprietor of the trade mark concerned being stripped of all protection for goods or services 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. In that regard, it must be observed that it is in practice impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods and services concerned by the registration. Consequently, the concept of ‘part 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 (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 24 and the case-law cited).
62      As regards the question whether goods or services are part of a coherent subcategory which is capable of being viewed independently, it is apparent from the case-law that, since consumers are searching primarily for goods or services which can meet their specific needs, the purpose or intended use of the goods or services in question is vital in directing their choices. Consequently, since consumers do employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a subcategory of goods or services (judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 29). In contrast, the nature of the goods at issue and their characteristics are not, as such, relevant to the definition of subcategories of goods or services (judgment of 13 September 2018, ACTC v EUIPO – Taiga (tigha), T‑94/17, not published, EU:T:2018:539, paragraph 32).
63      In that regard, it is important to assess in a concrete manner – principally in relation to the goods or services for which the proprietor of a trade mark has furnished proof of use of his mark – whether those goods or services constitute an independent subcategory in relation to the goods or services falling within the class of goods or services concerned, so as to link the goods or services for which genuine use of the trade mark has been proved to the category of goods or services covered by the registration of that trade mark (judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 46).
64      It is in the light of the foregoing that it is necessary to assess whether the Board of Appeal was entitled to take the view that proof of use of the contested mark had been adduced for the category of ‘telecommunications services’, taken as a whole.
65      In the present case, the Board of Appeal noted, in paragraph 104 of the contested decision, that the category concerned was broad and included a variety of services that can, in principle, be divided into subcategories.
66      In relying on that finding, which is not as such called into question in the present case, the Board of Appeal should have examined, in a concrete manner, whether the services at issue, having regard to their purpose or their intended use, were part of one or more coherent subcategories capable of being viewed independently, in particular by linking the services for which genuine use of the trade mark had been proven with the category of services covered by the registration of that mark. In accordance with the case-law cited in paragraphs 58 to 63 above, proof of genuine use affords protection only in respect of the subcategory or subcategories covering the goods or services for which the trade mark has in fact been used. Such an assessment, which is intended to determine whether the services at issue are part of one or more independent subcategories, is especially important in the present case, given the constant and rapid evolution of the field of telecommunications services.
67      Furthermore, the requirement of such a specific assessment, in each individual case, dovetails with the case-law of the General Court on proof of use of a trade mark in the field of telecommunications services (see, to that effect, judgments of 16 October 2024, Telefónica Germany v EUIPO – ePlus (e.plus), T‑570/23, not published, EU:T:2024:694, paragraphs 21 to 33, and of 16 October 2024, Fractal Analytics v EUIPO – Fractalia Remote Systems (FRACTALIA), T‑194/23, not published, EU:T:2024:696, paragraphs 118 to 159), which was discussed at the hearing.
68      However, in the present case, the Board of Appeal simply assessed the proof of use adduced by the intervener in relation to the category of telecommunications services taken as a whole. Relying on the wording of the explanatory note to the ninth edition of the Nice Classification dating from 2007, which was in force on the date of the application to register the contested mark, it asserted that the services at issue were all intended to allow one person to talk to another, to transmit messages from one person to another and to place one person in oral or visual communication with another. Lastly, it concluded that, based on an overall assessment of the evidence submitted, the contested mark had been used in connection with various services which have the objective of placing one person in oral or visual communication with another, and that, therefore, the intervener had proved, to the requisite legal standard, that the contested mark had been used in connection with the category of telecommunications services as a whole.
69      In carrying out such an analysis, the Board of Appeal simply provided a general description of the services at issue and repeated, without further clarification, the wording of the explanatory note to the ninth edition of the Nice Classification. It failed to determine, in accordance with the case-law cited in paragraphs 58 to 63 above, by relying on the evidence on the file, whether, having regard to their purpose and their intended use, the services at issue fell within one or more objective subcategories of the category of telecommunications services.
70      Since the Board of Appeal relied on the wording of the explanatory note to the ninth edition of the Nice Classification, it must be observed that, according to the case-law, the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes. The scope of protection under trade mark law is therefore not determined by a term’s inclusion in a taxonomic information structure but by the usual meaning of that term. The purpose of the Nice Classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. By contrast, the headings of the classes do not constitute a system in which goods or services included in one class or category are precluded from also forming part of another class or category (see judgment of 19 April 2018, Rintisch v EUIPO – Compagnie laitière européenne (PROTICURD), T‑25/17, not published, EU:T:2018:195, paragraph 70 and the case-law cited).
71      It is true that reference may be made to the Nice Classification in order to determine, where necessary, the range or the meaning of the goods and services in respect of which a trade mark has been registered (see 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 36 and the case-law cited). However, that does not exempt the Board of Appeal from its task of examining, in a concrete manner, whether the services at issue, taking into account their purpose or their intended use, are part of one or more coherent subcategories capable of being viewed independently.
72      Contrary to what EUIPO argued at the hearing, the mere fact that the proof of genuine use concerns a broad and diverse range of services is not in itself sufficient to justify the conclusion that use has been established for the category of telecommunications services as a whole. Such an argument would in fact render redundant the determination of a subcategory of goods or services for which the contested mark was actually used and would result in that partially used mark enjoying protection that is too extensive, in breach of the case-law cited in paragraph 58 above (see, to that effect, judgment of 1 February 2023, Brobet v EUIPO – Efbet Partners (efbet), T‑772/21, not published, EU:T:2023:36, paragraph 74).
73      Accordingly, by concluding that the evidence produced by the intervener, considered as a whole, was sufficient to show that the contested mark had been used for the category of telecommunications services as a whole, the Board of Appeal erred in law in its application of Article 58(2) of Regulation 2017/1001.
74      It follows that the third complaint must be upheld, as must the claim for annulment of the contested decision.
The claim for alteration
75      When asked at the hearing about the scope of its claims, the applicant clarified that it claimed that the Court should alter the contested decision so as to declare the contested mark to be revoked in its entirety or, in the alternative, in respect of the services for which it had been registered with the exception of ‘audio and video communication services via SMS, fax2mail, making and receiving calls, voice messages and video conferencing’.
76      It must be borne in mind that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
77      In the contested decision, the Board of Appeal erred in law by failing to determine, in a concrete manner, whether the services in respect of which use had been proven fell within one or more subcategories of telecommunications services. It simply found that proof of use had been furnished for that category taken as a whole. Thus, the sole purpose of the Board of Appeal’s reference to a series of services such as ‘audio and video communication services, including SMS, fax2mail, sending and reception of calls, voice messages, video conferencing, WebRTC (Web Real-time communication)’ (paragraph 106 of the contested decision) was to list the services at issue, as is apparent from the evidence adduced by the intervener. Furthermore, when asked about this matter at the hearing, both the applicant and EUIPO expressed the view that that list of services was not, on its own, sufficiently precise to be regarded, as it stands, as constituting one or more coherent subcategories of the services at issue. The applicant suggested inter alia amending that reference by substituting the word ‘including’ with the word ‘via’.
78      Since the Board of Appeal simply provided a general description of the services at issue, the Court is not in a position to determine, on the basis of the facts established by the Board of Appeal, the subcategory or subcategories in respect of which proof of use has been furnished. In order to determine one or more coherent subcategories, the Court would be required to carry out an assessment on which the Board of Appeal has not yet adopted a position.
79      Therefore, the conditions for altering the contested decision are not satisfied.
80      In the light of all of the foregoing, the application for annulment must be upheld and the application for alteration dismissed.
Costs
81      Under Article 134(3) of its Rules of Procedure, where each party succeeds on some and fails on other heads, the General Court may order that the costs be shared or that each party bear its own costs.
82      In the present case, since the applicant, EUIPO and the intervener have, respectively, been unsuccessful on some heads, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 September 2023 (Case R 97/2023-5);
2.      Dismisses the action as to the remainder;
3.      Orders e-dialog GmbH_EUIPO andDialoga Servicios Interactivos, SA to bear their own costs, including those incurred before the Board of Appeal of EUIPO.
Gâlea
Tóth
Kalėda
Delivered in open court in Luxembourg on 19 March 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.