JUDGMENT OF THE GENERAL COURT (Second Chamber)
16 October 2024 (*)
( EU trade mark – Revocation proceedings – EU figurative mark e.plus – Genuine use – Article 58(1)(a) of Regulation (EU) 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 )
In Case T‑604/23,
ePlus Inc., established in Herndon, Virginia (United States), represented by V. von Bomhard, J. Fuhrmann and A. Malkmes, lawyers,
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, intervener before the General Court, being
Telefónica Germany GmbH & Co. OHG, established in Munich (Germany), represented by P. Neuwald, lawyer,
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, ePlus Inc., 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, the applicant filed a request with EUIPO for a declaration of revocation of the EU trade mark that had been registered on 5 March 2002, following an application filed on 8 April 1999 by the intervener, Telefónica Germany GmbH & Co. OHG, claiming seniority of German trade mark No 39 815 172, registered on 29 May 1998, for 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 a declaration of 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 lack of genuine use of the contested mark.
5        On 4 July 2022, the Cancellation Division partially revoked the contested mark, maintaining the registration only for 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 intervener filed an appeal with EUIPO against the Cancellation Division’s decision, in so far as the contested mark was revoked for 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, the applicant filed an appeal with EUIPO against the Cancellation Division’s decision, in so far as the application for revocation was 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, dismissed the applicant’s appeal and partially upheld the intervener’s appeal. Consequently, it partially annulled the Cancellation Division’s decision. It found, in particular, that genuine use of the contested mark had been demonstrated for the following services: ‘Telecommunications, namely mobile telephone services, internet service provider services; operating telecommunications networks, namely mobile telephone networks, internet service provider networks; Message sending.’
9        In particular, the Board of Appeal found that the items of evidence in the file, when taken as a whole, provided sufficient indications to conclude that the contested mark had been used in Germany during the relevant period (paragraphs 57, 67 and 68 of the contested decision). According to the Board of Appeal, the evidence submitted by the intervener also made it possible to establish that that mark had been used as a trade mark capable of establishing a connection with the goods and services designated by it and that its actual use had not altered its distinctive character (paragraphs 72 and 74 of the contested decision). In its view, since the data provided in the affidavits were sufficiently supported by other evidence, it was apparent from the overall assessment of the evidence provided that the contested mark had not been used for all telecommunications services in Class 38, but only for certain sub-categories, namely the services mentioned in paragraph 8 above (paragraphs 81, 82, 86, 106, 107 and 110 of the contested decision).
Forms of order sought
10      The applicant claims, in essence, that the Court should:
–        annul points 2 and 4 to 6 of the operative part of the contested decision;
–        dismiss the intervener’s appeal before the Board of Appeal (Case R 1199/2022‑1) and order the Board of Appeal to pay all the costs relating to those proceedings;
–        uphold its appeal before the Board of Appeal (Case R 1711/2022‑1) and order each party to bear its own costs relating to those proceedings;
–        order EUIPO and the intervener to pay the costs incurred in the present proceedings.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
12      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      The applicant relies on two pleas in law alleging, first, infringement of Article 94(1) of Regulation 2017/1001 and, secondly, infringement of Article 58(1)(a) of that regulation.
The first plea, alleging infringement of Article 94(1) of Regulation 2017/1001
14      The first plea is made up of two parts, which it is appropriate to examine together. By the first part, the applicant claims that the contested decision is vitiated by a failure to state reasons as regards mobile telephone services, operating mobile telephone networks and message sending. By the second part, it submits that the contested decision is also vitiated by a failure to state reasons as regards internet service provider (‘ISP’) services and operating ISP networks.
15      In both cases, the applicant submits that the evidence on which the Board of Appeal based its finding that genuine use of the contested mark had been shown is not clear from the contested decision. Thus, the Board of Appeal provided insufficient reasons for its conclusion that genuine use of that mark had been proved as regards mobile telephone services, operating mobile telephone networks, message sending, ISP services and operating ISP networks.
16      In the first place, first, the applicant claims that the statement of reasons for the contested decision as regards mobile telephone services, operating mobile telephone networks and message sending is set out only in paragraphs 86, 87 and 97 of that decision. That statement of reasons is insufficient.
17      Secondly, the applicant disputes that certain items of evidence mentioned in the contested decision could justify the Board of Appeal’s assessment that genuine use of the contested mark was sufficiently established in connection with mobile telephone services, operating mobile telephone networks and message sending.
18      In the second place, the applicant claims that the statement of reasons for the contested decision as regards ISP services and operating ISP networks is set out only in paragraph 98 and that that statement of reasons is insufficient.
19      EUIPO and the intervener dispute that line of argument.
20      According to Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based.
21      The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent court to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgments of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65, and of 13 June 2019, MPM-Quality v EUIPO – Elton Hodinářská (MANUFACTURE PRIM 1949), T‑75/18, not published, EU:T:2019:413, paragraph 25 and the case-law cited).
22      In that regard, the Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (see, to that effect, judgments of 9 December 2010, Tresplain Investments v OHIM – Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 46 and the case-law cited, and of 29 November 2016, Chic Investments v EUIPO (eSMOKING WORLD), T‑617/15, not published, EU:T:2016:679, paragraph 102 and the case-law cited).
23      Furthermore, the statement of reasons for the decision under appeal before the Board of Appeal, in so far as it is confirmed by the Board of Appeal, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the EU judicature to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well founded (see judgments of 14 December 2011, Völkl v OHIM – Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 93 and the case-law cited, and of 30 June 2021, Wolf Oil v EUIPO – Rolf Lubricants (ROLF), T‑531/20, not published, EU:T:2021:406, paragraph 79 and the case-law cited).
24      Furthermore, the review of compliance with the obligation to state reasons for a decision subject to review by the EU judicature, which relates to the infringement of essential procedural requirements and to the question whether the decision discloses in a clear and unequivocal fashion the reasoning followed by the institution which adopted it, must be distinguished from the review of the merits of that decision, which relates to the infringement of the applicable rules of law (see, to that effect, judgments of 2 April 1998, Commission v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraphs 63 and 67, and of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 35 and the case-law cited).
25      As the applicant submits, the Board of Appeal’s assessments relating specifically to the examination of the evidence of genuine use of the contested mark with regard to mobile telephone services, operating mobile telephone networks and message sending are set out in paragraphs 86, 87 and 97 of the contested decision. Those indications alone are sufficient to make it clear that, on the basis of an overall assessment of the evidence in the file, in particular certain invoices, extracts from web pages, affidavits, posters and advertisements, the Board of Appeal considered that genuine use of that mark had been established in respect of all the abovementioned services.
26      Furthermore, as the intervener submits, the Board of Appeal also referred to the general considerations that led to the conclusion that the contested mark had been used. Thus, after indicating, as a preliminary point, which evidence it intended to take into consideration (paragraphs 37 to 48 of the contested decision), the Board of Appeal set out the reasons why, first, it considered that genuine use of that trade mark, during the relevant period, between 12 April 2016 and 11 April 2021, had been proved (paragraphs 53 and 55 to 58 of the contested decision), secondly, it considered that use of that mark had not been discontinued for mobile communication networks (paragraphs 59 to 66 of the contested decision) and, thirdly, it was necessary to state, on the one hand, that the contested mark had been used for mobile telephone services, operating mobile telephone networks and message sending as well as for ISP services and operating ISP networks (paragraphs 75 to 100 of the contested decisions) and, on the other hand, that the evidence in the file showed the extent of that use (paragraphs 101 to 113).
27      All of those findings are such as to enable the Court to review the merits of the contested decision and to enable the applicant to challenge its legality. As regards the claims by which the applicant disputes, in support of the present plea, the probative value of certain items of evidence concerning which the Board of Appeal stated that it based its assessments, it follows from the case-law cited in paragraph 24 above, and as EUIPO correctly submits, that they are not capable of establishing that the statement of reasons for the contested decision is insufficient.
28      It follows that the first plea in law, alleging failure to state reasons, must be rejected.
The second plea, alleging infringement of Article 58(1) of Regulation 2017/1001
29      The applicant submits that the use of the contested mark for the telecommunications services in Class 38 had ceased prior to the five-year period laid down in Article 58(1)(a) of Regulation 2017/1001 owing to the acquisition by the intervener of the E-Plus group in 2014. Since then, it has no longer been marketing telecommunications services under the contested mark, but only under the mark O2.
30      The second plea is made up of two parts, which it is appropriate to examine together. The first part relates to mobile telephone services, operating mobile telephone networks and message sending, and the second part concerns ISP services and operating ISP networks.
31      First, the applicant submits that the Board of Appeal, in finding that the intervener had proved genuine use of the contested mark for mobile telephone services, operating mobile telephone networks and message sending, infringed Article 58(1)(a) of Regulation 2017/1001. In the applicant’s view, proof of both the nature and the extent of that use has not been adduced.
32      Secondly, as regards ISP services and operating ISP networks, the applicant submits that genuine use of the contested mark has not only not been proved, but has not even been claimed by the intervener.
33      EUIPO and the intervener dispute that line of argument.
34      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 (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39 and the case-law cited).
35      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 whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40 and the case-law cited).
36      As to the extent of the use to which the earlier 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 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).
37      Moreover, an accumulation of items of evidence may allow the necessary facts to be established, 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).
38      In the first place, it is undisputed that, as the Board of Appeal correctly pointed out, the relevant period during which the intervener had to prove genuine use of the contested mark is that between 12 April 2016 and 11 April 2021, since, in the present case, the application for revocation was lodged on 12 April 2021.
39      In the second place, in order to take the view that proof of genuine use of the contested mark has not been adduced in respect of mobile telephone services, operating mobile telephone networks and message sending, the applicant relies on the premiss that, from the time of the intervener’s purchase of E-Plus from KPN in 2014, the intervener ceased all operation of mobile telephone services under the contested mark. The applicant does not dispute, by contrast, that SIM cards continued to be sold under the contested mark throughout the relevant period.
40      However, in that regard, it is apparent from the Board of Appeal’s findings in paragraphs 64 to 66 of the contested decision that, although the intervener intended to promote the coexistence of the contested mark with its mark O2 in order to enable the transition from one to the other, it continued, in order to do so, to market SIM cards and prepaid mobile phone cards under the contested mark and to allow the SIM cards marketed under each of those marks to be topped up with credit from either mark. The Board of Appeal was entitled to infer from those findings that the intervener provided mobile telephone services and services relating to operating mobile telephone networks and message sending under the contested mark using its own network. That finding is borne out by the report of the Bundesnetzagentur (BNetzA, Federal Network Agency, Germany) of 2 March 2017, produced by the intervener before the Cancellation Division, from which it is apparent that, in 2017, the intervener provided telephone services to ‘E-Plus subscribers’.
41      In the third place, as EUIPO and the intervener correctly submit, the marketing of SIM cards and prepaid mobile phone cards cannot be equated with the situations to which the applicant refers, in which it was held that the rendering of telecommunications services could not be inferred from the sale of devices. The applicant does not dispute that the contested mark is well known for mobile telephone services. As regards a mark under which telecommunications services are also marketed, consumers do not ordinarily purchase SIM cards, starter packages and prepaid mobile phone cards as such, but make those purchases only in order to benefit from the associated telephone services to which they give access.
42      The Board of Appeal was therefore entitled to find that purchasers of SIM cards, starter packages and prepaid mobile phone cards marketed under the contested mark benefited from telephone services in respect of which the same mark has a reputation. In those circumstances, the fact put forward by the applicant that, in some cases, certain SIM cards enable their customers to use telephone networks marketed under other marks is not such as to prevent consumers who have acquired SIM cards marketed under the mark e.plus from establishing a link with the mobile telephone services marketed under that same mark.
43      It follows that the Board of Appeal was entitled to infer from the sale of SIM cards, starter packages and prepaid mobile phone cards under the contested mark that that mark was also used for mobile telephone services, operating mobile telephone networks and message sending.
44      In the fourth place, as regards the extent of use of the contested mark for the services mentioned in paragraph 43 above, the applicant submits, in essence, that the evidence in the file, other than the affidavits submitted by the intervener, does not establish that that use was sufficient. In that regard, it should be noted, as the Board of Appeal did in paragraphs 106 and 107 of the contested decision, that the affidavits show that SIM cards and prepaid mobile phone cards marketed under the contested mark represented significant sales volumes and turnover figures between 2016 and 2020. It is also apparent from the report drawn up by the Bundesnetzagentur that subscribers to the telephone networks operated by the intervener represented, in 2017, a 38% market share of mobile network operators in Germany.
45      It follows that, first, the Board of Appeal was entitled to find that the contested mark had, during the relevant period, been put to genuine use for mobile telephone services, operating mobile telephone networks and message sending and, secondly, the first part of the second plea must therefore be rejected.
46      In the fifth place, first, as EUIPO correctly submits, the contested mark, since it was registered for ‘operating telecommunications networks’, necessarily designates ISP services and services relating to operating ISP networks. The latter services are included in the more general category of telecommunications networks and differ from mobile telephone services only in terms of their specific purpose, namely to enable access to the internet.
47      Secondly, as is apparent from paragraphs 16 and 24 of the contested decision, the intervener maintained in its appeal before the Board of Appeal that it operated internet access services under the contested mark, which is borne out by the documents in the file relating to the proceedings before EUIPO.
48      Consequently, the applicant’s claims that, first, the contested mark did not relate to ISP services or services relating to operating ISP networks and, secondly, the intervener did not rely on the operation of such services before EUIPO has no factual basis.
49      In the sixth place, it should be noted that, as the Board of Appeal sets out in paragraphs 86 and 87 of the contested decision, the evidence submitted by the intervener before the Cancellation Division shows that the contested mark was used, inter alia, for internet access services. The affidavits produced are supported by several independent items of evidence, including flyers and posters relating to the use of that mark in association with the applicant’s mark Ortel Mobile. Moreover, the numerous items of evidence produced relating to the ALDI TALK offer, on which the contested mark also appears, show that, through that mark in particular, that offer enabled its customers to access the internet.
50      It follows that, first, the Board of Appeal was entitled to find that the contested mark was put to genuine use for ISP services and operating ISP networks and, secondly, the second part of the second plea and, consequently, the second plea in its entirety, must be rejected.
51      Accordingly, it follows from all the foregoing that neither of the pleas in law relied on by the applicant can be upheld and that the action must be dismissed in its entirety.
Costs
52      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.
53      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders ePlus Inc., in addition to bearing its own costs, to pay those incurred by Telefónica Germany GmbH & Co. OHG;
3.      Orders the European Union Intellectual Property Office (EUIPO) 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.