JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
15 February 2017 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark Natural Instinct Dog and Cat food as nature intended — Earlier EU word marks INSTINCT and NATURE’S VARIETY — Genuine use of the earlier mark — Nature of the use — Article 42(2) of Regulation No 207/2009 — Rule 22(3) and (4) of Regulation (EC) No 2868/95)
In Case T‑30/16,
M. I. Industries, Inc., established in Lincoln, Nebraska (United States), represented initially by T. Elias, Barrister, and B. Cookson, Solicitor, and subsequently by M. Montañá Mora, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Zaera Cuadrado, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Natural Instinct Ltd, established in Camberley (United Kingdom), represented by C. Spintig, S. Pietzcker, lawyers, and B. Brandreth, Barrister,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 26 November 2015 (Case R 2944/2014-5), relating to opposition proceedings between M. I. Industries and Natural Instinct,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, I. Labucka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 26 January 2016,
having regard to the response of EUIPO lodged at the Court Registry on 6 April 2016,
having regard to the response of the intervener lodged at the Court Registry on 11 April 2016,
having regard to the change in the composition of the Chambers of the General Court,
having regard to the fact that no request for a hearing was submitted by the main 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
Background to the dispute
1        On 19 December 2012, the intervener, Natural Instinct Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the following figurative sign:
3        The goods for which registration was sought fall within Class 31 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 correspond, for each of those classes, to the following description: ‘Foodstuffs for dogs and cats; dog food; cat food; dog biscuits; bone and chewing bones for dogs; treats (foods) for dogs and cats; litter for dogs and cats.’
4        The EU trade mark application was published in Community Trade Marks Bulletin No 29/2013 of 11 February 2013.
5        On 7 May 2013, the applicant, M. I. Industries Inc., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier trade marks:
–        the EU word mark INSTINCT, registered under number 5208418 on 26 July 2007, covering goods in Class 31 corresponding to the following description: ‘Pet foods and pet treats in Class 31;’
–        the EU word mark NATURE’S VARIETY, registered under number 5208401 on 20 July 2007, covering goods in Class 31 corresponding to the following description: ‘Pet foods and pet treats in Class 31’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8        The intervener requested that the applicant furnish proof of use of the mark on which the opposition was based. The applicant produced several documents in order to establish use of the earlier marks.
9        By decision of 18 September 2014, the Opposition Division rejected the opposition in its entirety. It found that the evidence produced was insufficient to prove genuine use of the earlier word mark INSTINCT for the goods for which it had been registered. As regards the earlier word mark NATURE’S VARIETY, the Opposition Division found that there was no likelihood of confusion between that mark and the mark applied for.
10      On 18 November 2014, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11      By decision of 26 November 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the opposition for all of the contested goods. In essence, it found that none of the evidence adduced by the applicant showed the genuine use of the earlier marks for the goods in respect of which they were registered. In particular, it found, in essence, that the nature of the use of the earlier marks had not been proven, since the evidence adduced, with the exception of unsupported affidavits, did not show that the earlier marks had been used publicly and outwardly. Furthermore, as regards the earlier mark NATURE’S VARIETY, the Board of Appeal found that the evidence adduced did not establish that that trade mark had been used as a trade mark.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        uphold the applicant’s opposition and reject the application for registration of the EU trade mark;
–        in the alternative, declare that the applicant had produced proof of use for the earlier marks;
–        in the further alternative, refer the case in its entirety to the Fifth Board of Appeal;
–        order EUIPO to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs;
14      The intervener contends that the Court should:
–        confirm the contested decision and dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the evidence adduced for the first time before the General Court
15      EUIPO maintains that the colour copies of a label and the three invoices produced by the applicant in Annex A6 to the application must be declared inadmissible because they were not produced during the administrative procedure. It states that the only copies of those documents provided by the applicant were black and white copies.
16      In that regard, it should be noted that it is settled case-law that the purpose of bringing an action before the General Court is to secure a review of the legality of the decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 and that, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it. To admit such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, which prohibits the parties from changing the subject matter of the proceedings before the Board of Appeal (see judgment of 22 January 2015, MIP Metro v OHIM — Holsten-Brauerei (H), T‑193/12, not published, EU:T:2015:44, paragraph 16 and the case-law cited).
17      In the present case, it should be pointed out that, as is clear from the file before the Court and EUIPO’s reply, the black and white copies of the documents in question were produced during the administrative procedure. The allegedly new nature of the copies produced before the General Court lies in their colour printing. That circumstance alone is insufficient to regard those copies as being new facts, presented for the first time before the General Court within the meaning of the case-law cited in paragraph 16 above. Accordingly, they should be declared admissible.
18      Furthermore, in so far as the present dispute concerns proof of the use of the earlier marks and none of the arguments put forward by the parties specifically relate to the colour of that evidence, their colour is irrelevant for the settlement of the present dispute.
Substance
19      In support of the action, the applicant relies on three pleas in law, alleging, first, infringement of Article 42(2) of Regulation No 207/2009 and Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 laying down detailed rules for the application of Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), second, infringement of Article 8(1)(b) of Regulation No 207/2009 and, third, infringement of Article 75 of that regulation.
The first plea in law, alleging infringement of Article 42(2) of Regulation No 207/2009 and Rule 22(3) and (4) of Regulation No 2868/95
20      The applicant submits that the Board of Appeal erred in law by holding that the evidence adduced did not enable the applicant to prove genuine use of the earlier mark.
21      EUIPO and the intervener dispute the applicant’s arguments.
22      Under Article 42(2) of Regulation No 207/2009, if the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition is to furnish proof that, during the last five years preceding the date of publication of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition. In the absence of proof to this effect, the opposition is to be rejected.
23      Rule 22(3) of Regulation No 2868/95 states that the evidence for the furnishing of proof of use of a trade mark is to consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based. Rule 22(4) of that regulation provides that that evidence of use is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing sworn or affirmed.
24      Moreover, it is settled case-law that there is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether there is real commercial exploitation of the mark in the course of trade, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating market share 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 (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 70; of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 29; and of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 29). However, the analysis of whether use of an earlier trade mark is genuine cannot be confined merely to establishing that that mark has been used in the course of trade, since the use must also be genuine, in accordance with the wording of Article 42(2) of Regulation No 207/2009. Moreover, whether a mark is deemed to have been put to ‘genuine use’ will depend on the characteristics of the goods or service concerned on the corresponding market. Not all proven commercial exploitation can therefore automatically be deemed genuine use of the mark in question (see, to that effect, judgment of 17 July 2014, Reber Holding v OHIM, EU:C:2014:2089, paragraph 32).
25      It is also apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of the tenth recital of that regulation, and from Rule 22(3) of Regulation No 2868/95, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of those provisions is not 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 judgment of 8 July 2014, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 38 and the case-law cited).
26      The question whether the Board of Appeal was right to consider that the evidence adduced by the applicant did not show genuine use of the earlier marks for the goods for which they were registered must be examined in the light of those principles.
27      Given that the application for registration of the trade mark filed by the intervener was published on 11 February 2013, the five-year period referred to in Article 42(2) of Regulation No 207/2009 spans the period from 11 February 2008 to 10 February 2013 inclusive, as the Board of Appeal correctly found in paragraph 27 of the contested decision.
28      In order to prove the genuine use of the earlier marks, the applicant, in the course of the administrative procedure before EUIPO, in particular produced:
–        a graphic presentation in German for a can packaging containing the word ‘instinct’ and a picture of a cat;
–        three invoices dated 22 September 2008, 4 October 2009 and 24 September 2010, containing the sign NATURE’S VARIETY and the name ‘instinct’ concerning the products mentioned in them, addressed to the company Cats’ Country, established in Germany;
–        a set of three affidavits from the applicant’s financial director stating, inter alia, that the graphic presentation of the can packaging was identical to the labels placed on the goods referred to in the invoices explaining delivery problems;
–        an affidavit from the owner of Cats’ Country, Ms S., confirming the contents of the affidavits made by the applicant’s financial director and confirming the independence of Cats’ Country’s business from the applicant. An invoice dated 4 April 2012 concerning the sale of 15 boxes of goods bearing the PRAIRIE or INSTINCT mark to an individual was appended to that affidavit.
29      The Board of Appeal, which concentrated on the nature of the use of the earlier marks, found, in essence, that the evidence submitted as a whole did not establish that the earlier marks had been used publicly and outwardly, that is to say that the goods bearing them had actually entered the German market.
30      It should be noted, at the outset, that it is through that prism that the Board of Appeal assessed the evidence submitted by the applicant in order to establish genuine use of the two earlier marks.
31      As regards the earlier mark INSTINCT, the Board of Appeal based its reasoning, implicitly, but necessarily, on the premiss that the use of a mark can be classified as genuine use only if its proprietor adduces evidence that the goods covered by it have been marketed to end consumers. In paragraphs 34 and 36 of the contested decision, it successively stated that ‘given the claims made in the affidavits, that the cited products sold well, it would be reasonable to assume that a paper trail in proportion to the trade represented should exist’, and that ‘all this should have been easy to provide, given the extent of claimed sales under the signs to final German consumers’, whereas all the affidavits submitted merely indicated that the goods bearing the earlier mark INSTINCT were sold to Cats’ Country which, in turn, had sold them to German consumers.
32      Likewise, the Board of Appeal assessed all of the evidence submitted by the applicant and also took into account the close links which it believed existed between the applicant and Cats’ Country (see paragraph 38 of the contested decision).
33      The Board of Appeal found that the same conclusions were valid in respect of the earlier mark NATURE’S VARIETY (see paragraph 42 of the contested decision). It stated, however, that the nature of the use of the earlier mark NATURE’S VARIETY had not been established for an additional reason, namely that the evidence produced by the applicant did not enable it to be considered that it had been used as a mark for the goods concerned (see paragraph 43 of the contested decision).
34      In the light of the foregoing, it is necessary to examine, for each of the two earlier marks, the global assessment of the evidence submitted by the applicant which the Board of Appeal carried out. Taking account of the fact that the Board of Appeal relied in its assessments on Ms S.’s affidavit, it is necessary, first of all, to reply to the arguments put forward by the applicant on the probative value the Board of Appeal gave to that affidavit.
The probative value of Ms S’s affidavit
35      The applicant disputes the Board of Appeal’s assessment of the probative value to be given to Ms S.’s affidavit. It submits that too little importance was attached to the sworn statement of a third party, on the ground that the latter had close links with the applicant, although there was no contractual relationship between them on the date of that statement. According to the applicant, the circumstances of the present case differ from those in the case which gave rise to the judgment of 18 March 2015, Naazneen Investments v OHIM — Energy Brands (SMART WATER) (T‑250/13, not published, EU:T:2015:160). Thus, Ms S’s affidavit should be given the same importance as that given to the evidence of third parties.
36      EUIPO acknowledges that the facts in the case which gave rise to the judgment of 18 March 2015, SMART WATER (T‑250/13, not published, EU:T:2015:160) were very specific and could not be fully transposed in the present case. However, it is of the view that, in the present case, Cats’ Country could not be regarded as a third party totally independent of the applicant in so far as it was the applicant’s sole customer, which also appeared to be the importer and the distributor of the applicant’s products in Germany. Consequently, EUIPO is of the opinion that the Board of Appeal was right to give Ms S.’s statement a lower value than that of third-party statements.
37      The intervener submits that the Board of Appeal did not err in finding that a contractual link between parties warrants, on its own, treating the evidence which it submits with caution.
38      As regards the affidavit of the owner of Cats’ Country, the Board of Appeal stated, by referring, in particular, to the judgment of 18 March 2015, SMART WATER (T‑250/13, not published, EU:T:2015:160, paragraph 30), that ‘material from a person who has close links with the party concerned [were] of lower evidential value than those from third parties and they [could] not therefore, on their own, constitute sufficient proof of use of the mark’. It stated, in essence, that, in the present case, the existence of close links between the applicant and Cats’ Country was characterised by the contractual links between the parties.
39      In that regard, it should be stated that the affidavit is a ‘[statement] in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up’ for the purposes of Article 78(1)(f) of Regulation No 207/2009. Having regard to the combined reading of that provision and Rule 22(4) of Regulation No 2868/95, it must be held that that affidavit constitutes one of the means of proving the use of the trade mark (see, to that effect, judgments of 7 June 2005, T‑303/03, Lidl Stiftung v OHIM — REWE-Zentral (Salvita), T‑303/03, EU:T:2005:200, paragraph 40, and of 28 March 2012, Rehbein v OHIM — Dias Martinho (OUTBURST), T‑214/08, EU:T:2012:161, paragraph 32).
40      It must also be recalled that, in order to assess the evidential value of a document, regard should be had, first, to the credibility of the account it contains. It is then necessary to take account of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (judgments of 7 June 2005, Salvita, T‑303/03, EU:T:2005:200, paragraph 42, and of 13 June 2012, Süd-Chemie v OHIM — Byk-Cera (CERATIX), T‑312/11, not published, EU:T:2012:296, paragraph 29).
41      It is clear from the case-law that affidavits by a person with close links to the party concerned are of lesser probative value than those of third parties and cannot on their own constitute sufficient evidence (see judgment of 16 June 2015, H.P. Gauff Ingenieure v OHIM — Gauff (Gauff JBG Ingenieure), T‑585/13, not published, EU:T:2015:386, paragraph 28 and the case-law cited).
42      It should be pointed out in that regard that, contrary to what the Board of Appeal appears to submit and to what the intervener submits, the existence of contractual links between two distinct entities, as is the case here, does not, on its own, mean that the affidavit from one of those entities is not that of a third party, but that of a person having close links with the party concerned, so that such a statement has less probative value.
43      It must be borne in mind that, as regards a written statement of the managing director of a customer of an opponent, the Court has already held that such a statement was from a third company in relation to the opponent and was sufficient on its own to attest certain facts (see, to that effect, judgment of 28 March 2012, OUTBURST, T‑214/08, EU:T:2012:161, paragraph 38).
44      EUIPO maintains that the latter judgment is not applicable to the present dispute, for, unlike the case giving rise to the judgment of 28 March 2012, OUTBURST (T‑214/08, EU:T:2012:161), in the present case Cats’ Country appears to be more than a customer. That company is the applicant’s sole importer and distributor in the European Union.
45      In the present case, however, it should be held that Ms S.’s affidavit should have been regarded as coming from an independent source (see, in that respect, judgment of 25 October 2013, Biotronik SE v OHIM — Cardios Sistemas (CARDIO MANAGER), T‑416/11, not published, EU:T:2013:559, paragraph 41 and case-law cited), that is to say, by a third party, within the meaning of the case-law cited in paragraph 41 above. The probative value of that document should therefore not be considered to be less than that of a third-party document. EUIPO’s arguments to the contrary cannot be accepted.
46      Even if Cats’ Country were the applicant’s sole importer and distributor, its links with the applicant cannot be compared to those of an external consultant having contractual links with the proprietor of the earlier mark as in the case which gave rise to the judgment of 18 March 2015, SMART WATER (T‑250/13, not published, EU:T:2015:160). An outside consultant cannot be considered to be a customer of a company.
47      It should also be pointed out that, both in the case which gave rise to the judgment of 18 March 2015, SMART WATER (T‑250/13, not published, EU:T:2015:160) and in the case which gave rise to the judgment cited in paragraph 41 of the present judgment and the case-law cited in it, the expression ‘a person with close links to the party concerned’ refers, in essence, to employees of the party concerned, to employees of its subsidiary or to an external service provider which, in that regard, may be treated in the same way as an employee of the party concerned. The persons referred to in the judgments cited in the present paragraph, unlike Cats’ Country, were not independent of the party concerned. Consequently, Cats’ Country cannot be regarded as a person with close links to the applicant, within the meaning of the case-law cited above.
48      Furthermore, although the Board of Appeal stated, in paragraph 34 of the contested decision, that the statements in the affidavits that the goods supplied to Cats’ Country were marketed on the German market are not supported by the other evidence produced by the applicant, that assessment, as will be demonstrated below, is incorrect.
Genuine use of the earlier mark INSTINCT
49      First of all, the applicant claims that the Board of Appeal erred when it assessed the sufficiency of the evidence before it by reference to the types of evidence which it assumed to be available, rather than by reference to the evidence actually before it. In particular, it criticises the Board of Appeal for having assumed that the applicant could produce evidence which was in the possession of a third party, namely Cats’ Country, and claims, in that regard, that Cats’ Country, was not under its control.
50      Secondly, the applicant submits, in essence, that, in considering that it was obliged to make assumptions and presumptions relating to the use of the earlier marks, whereas the genuine use of the marks at issue had been demonstrated in the present case by specific evidence, the Board of Appeal failed to have regard to the judgment of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT) (T‑39/01, EU:T:2002:316). It also criticises the Board of Appeal for failing to make a global assessment of the evidence produced in order to establish genuine use of the earlier marks.
51      As regards the first claim, EUIPO submits that it results from an incorrect reading of the contested decision, since the Board of Appeal did not base its conclusion of a lack of evidence solely on the evidence which could be provided by Cats’ Country.
52      As regards the other complaints, EUIPO maintains in particular that the Board of Appeal took due account of the affidavits filed by the applicant and of the other evidence produced. However, these elements did not support the content of the affidavits according to which the products ‘sold well’.
53      The intervener submits that the Board of Appeal’s finding that the evidence produced by the applicant was inadequate was not based on the lack of evidence under the control of Cats’ Country but on the lack of evidence which should have been under the control of the applicant. It contends that the Board of Appeal correctly made a global assessment of the evidence, but submits that, in the present case, no evidence supporting the content of the affidavits was presented by the applicant.
54      It must be borne in mind that the Board of Appeal found, in essence, in paragraph 34 of the contested decision, that the applicant was not in a position to provide any evidence, apart from the affidavits, proving that the goods delivered to Cats’ Country actually made their way on to the German market.
55      In that regard, the evidence adduced by the applicant during the administrative procedure demonstrates that the applicant sold to Cats’ Country goods bearing the INSTINCT mark from 2008 to 2010 (affidavits and invoices addressed to Cats’ Country), that those goods were marketed by Cats’ Country (affidavits and an invoice addressed to an individual) and that those goods bore the INSTINCT mark (affidavits, body of invoices, mock-up of a label). It follows that the evidence submitted by the applicant permits a finding that the goods bearing the INSTINCT mark actually made their way on to the German market. The Board of Appeal therefore erred in its assessment by holding, in paragraph 34 of the contested decision, that the evidence produced by the applicant was not sufficient to prove that the goods delivered to Cats’ Country had actually entered the German market.
56      With regard to EUIPO’s argument that the absence of invoices addressed to end consumers was not compensated by other relevant evidence, it is appropriate to bear in mind that, as is moreover recognised by EUIPO, outward use of a mark does not necessarily mean that its use is aimed at end consumers. Accordingly, the relevant public to which the trade marks are addressed comprises not only end consumers but also specialists, industrial clients and other professional users (see judgment of 21 November 2013, Recaro v OHIM — Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 25 and the case-law cited).
57      In that regard, it must be pointed out that, in a market such as that of the European Union, in order to create or preserve outlets for everyday consumer goods such as those at issue in the present case, it is necessary, in particular, where a manufacturer of such goods does not have its own distribution channel, to turn, by means of commercial measures, to professionals in the sector, namely re-sellers. It cannot therefore be ruled out as a matter of principle that the use of a mark shown by commercial measures addressed solely to professionals in the sector concerned can be regarded as a use consistent with the essential function of the trade mark, within the meaning of the case-law cited in paragraph 24 of the present judgment.
58      In the present case, the Board of Appeal found, in essence, as stated in paragraph 31 above, that evidence relating to the sale of the goods bearing the earlier mark INSTINCT to German end consumers should have been submitted in order to prove that that mark had been used publicly and outwardly. In so doing, it made a mistake.
59      Furthermore, it should be borne in mind that the fact that evidence of use of the earlier trade mark was adduced only for the sale of goods to a single customer, namely Cats’ Country, does not a priori preclude the use being genuine (see, to that effect, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 76 and the case-law cited).
60      Accordingly, in view of what has been stated above concerning the probative value of Ms S.’s affidavit and the findings referred to in paragraphs 55, 58 and 59 above, it is necessary to find that the Board of Appeal’s global assessment of the genuine use of the earlier mark INSTINCT is vitiated by errors as a whole (see paragraphs 35 to 38 of the contested decision).
61      In contrast, as will be shown below, that is not the case as regards the Board of Appeal’s conclusions as to the nature of the use of the word mark NATURE’S VARIETY.
The use of the earlier mark NATURE’S VARIETY
62      The applicant submits that the Board of Appeal erred in finding that the word sign NATURE’S VARIETY was not used as a trade mark. Referring to the judgment of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER) (T‑418/03, not published, EU:T:2007:299), it submits that, in the present case, the mark was placed prominently on the invoices submitted and the symbol ‘®’ was included there.
63      The Board of Appeal found, in essence, in paragraphs 43 to 46 of the contested decision, that it appeared from the evidence presented by the applicant that the sign NATURE’S VARIETY was used as the applicant’s business name and that it had the effect, in the eyes of the end consumer, of identifying the undertaking which manufactured the goods that bore it.
64      In that regard, it is indeed true that, as the applicant submits, where a word mark, such as the NATURE’S VARIETY mark, is also a business name, it cannot be ruled out that the name is being used as a mark (see, to that effect, judgment of 27 September 2007, LA MER, T‑418/03, not published, EU:T:2007:299, paragraph 74, and of 2 February 2012, Goutier v OHIM — Euro Data ARANTAX), T‑387/10, not published, EU:T:2012:51, paragraph 37).
65      However, it should be noted that the purpose of a company name is to identify a company and not, of itself, to distinguish goods or services. Accordingly, there is use in relation to goods or services where a third party affixes the sign constituting its company name to the goods which it markets, or where, even if the sign is not affixed, the third party uses that sign in such a way that a link is established between the sign which constitutes the company name and the goods marketed or the services provided by the third party (see, to that effect, judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraphs 21 to 23).
66      In the present case, it must be pointed out that the use of the sign NATURE’S VARIETY, as is apparent from the evidence adduced by the applicant, is not that of a trade mark.
67      It is true that, as regards the invoices submitted by the applicant, the sign NATURE’S VARIETY appears at the top of those invoices. However, that use is exclusively that of the applicant’s company name, namely the entity which sold to Cat’s Country the goods referred to in the invoice, the goods themselves bearing different marks. The presence of the symbol ‘®’ next to the sign NATURE’S VARIETY does not change that finding.
68      Similarly, it must be stated, as the Board of Appeal did, that in her affidavit, Ms S referred to the goods sold by the applicant under the mark INSTINCT and not to those sold under a NATURE’S VARIETY mark.
69      As regards the mock-up of a label presented by the applicant, it must be concluded, as the Board of Appeal stated, in paragraph 45 of the contested decision, that the sign NATURE’S VARIETY appears, for the consumer, only on the rear of the can and in very small print and will be understood as a company name whose aim is to identify the company that manufactures the product.
70      In that regard, the applicant claims that it appears from the mock-up of a label that the sign at issue was present not only on the rear of the can but also on the front of it. However, it must be pointed out that the presence of the sign on the mock-up of a label submitted by the applicant is not clearly discernible because of the vagueness of the printing.
71      Therefore, it was after examining the evidence as a whole, in which it assessed the content of the affidavits, invoices and the mock-up of a label produced by the applicant, that the Board of Appeal concluded that there was no concrete evidence to support the assertion that the goods bearing the trade mark NATURE’S VARIETY had been used commercially in Germany, so that the genuineness of the use of that trade mark was not established.
72      In that regard, even assuming that the Board of Appeal, in its global assessment of the use of the earlier mark NATURE’S VARIETY, took account of the considerations referred to in paragraph 60 above, such a finding cannot be sufficient to call into question the conclusion set out in paragraph 71 above. The Board of Appeal was therefore justified to consider that the production of additional evidence was necessary in that regard.
73      In the light of all the foregoing, it must be concluded that the present plea is well founded in so far as it relates to the earlier mark INSTINCT, but must be rejected in so far as it relates to the earlier mark NATURE’S VARIETY. Consequently, the contested decision should be annulled in so far as it relates to the earlier mark INSTINCT and the other pleas should be examined solely in relation to the other earlier mark.
The second plea, alleging infringement of Article 8(1) of Regulation No 207/2009
74      In its second plea, the applicant claims that the Board of Appeal did not examine the question of the existence of the likelihood of confusion between the marks at issue. It asks the Court to rule on the infringement of Article 8(1)(b) of Regulation No 207/2009 and claims, in that regard, in essence, that there is a likelihood of confusion between the marks at issue.
75      EUIPO contends that the present plea is inadmissible and would lead the Court to assess the facts on which the Board of Appeal did not take a position.
76      The intervener submits that, if the Court were of the opinion that the question of the likelihood of confusion had to be taken into account, the matter should be referred to EUIPO. It also considers that there is no likelihood of confusion for all the marks at issue.
77      In the present case, it should be noted that, as is apparent from the contested decision, the Board of Appeal found that there was no evidence of genuine use of the earlier marks. In so far as the question of proof of use of those marks constitutes a preliminary question as to whether there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal was right to find, in paragraph 47 of the contested decision, that it was not necessary to examine the applicant’s arguments alleging infringement of that provision.
78      In the light of the foregoing, in the context of the present dispute, the applicant cannot usefully rely on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. It follows that the present plea must be rejected as being ineffective.
The third plea in law, alleging infringement of Article 75 of Regulation No 207/2009
79      By the third plea, the applicant claims that the Board of Appeal infringed Article 75 of Regulation No 207/2009. First, the applicant claims that the Board of Appeal relied on an assumption that it was able to produce evidence under the control of third parties even though it had not had the opportunity to comment on that assumption. Second, the applicant maintains that, if the Court considers that the Board of Appeal ought to have formulated considerations concerning the extent of the use of the earlier marks, a failure to state reasons for its decision should be found in that regard, and, consequently, an infringement of Article 75 of Regulation No 207/2009.
80      EUIPO and the intervener take the view that the applicant’s arguments must be rejected.
81      In the present case, it must be recalled that, under Article 75 of Regulation No 207/2009, decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.
82      As regards the applicant’s first complaint, that the Board of Appeal relied on an assumption that the applicant was able to produce evidence under the control of a third party, it should be noted, as EUIPO does, that the applicant was in a position, during the administrative procedure and in particular during its appeal before the Board of Appeal, to comment on that question. As is apparent from paragraph 33 of the contested decision, the decision of the Opposition Division concerned the insufficiency of evidence as to the genuine use of the earlier marks. Its rights to be heard have, therefore, not been infringed in that regard.
83      As regards the second complaint, alleging infringement of the Board of Appeal’s obligation to state reasons in so far as the Board of Appeal considered that the extent of the use of the earlier marks had not been proven, it must be held that that complaint results from a misinterpretation of the contested decision.
84      It is sufficient in that regard to observe that, as is clear from paragraphs 29 to 34 above and contrary to EUIPO’s submission, the Board of Appeal did not adopt a position on the extent of the use of the earlier mark NATURE’S VARIETY, but concentrated on the nature of its use. It is therefore not possible to find that there was a failure to state reasons.
85      In that regard, it must be emphasised that, in accordance with the rule cited in paragraph 23 above, proof of use must relate to the place, time, extent and nature of the use which has been made by the earlier marks for the goods in respect of which they have been registered. The Board of Appeal could therefore reasonably conclude that the genuine use of the earlier mark NATURE’S VARIETY had not been proven, for the evidence submitted by the applicant was insufficient to prove that the sign in question had been used as mark, without examining the question of the extent of the use of the contested mark.
86      Having regard to the foregoing, the present plea must be rejected.
The application for alteration
87      The applicants’ second head of claim asks the Court to uphold the opposition filed by the applicant and to reject the application for registration of the trade mark applied for. By its third head of claim, formulated in the alternative, it seeks a declaration by the Court that proof of the use of the earlier marks had been adduced. It must be held that, by those heads of claim, the applicant seeks to apply for alteration of the contested decision.
88      In that regard, it should be recalled that the power of the Court to alter decisions pursuant to Article 65(3) of Regulation No 207/2009 does not have the effect of conferring on the Court the power to carry out an assessment on which the 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 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).
89      First, in so far as the Court has confirmed the contested decision as regards the earlier mark NATURE’S VARIETY in that no ground for annulment amongst those set out in Article 65(2) of Regulation No 207/2009 was found in the examination of the applicant’s application for annulment, it is necessary also to dismiss its application for alteration in so far as it relates to the earlier mark NATURE’S VARIETY.
90      Second, as regards the earlier mark INSTINCT, as is clear from the contested decision and as is stated in paragraph 77 above, the Board of Appeal, which dismissed the appeal brought by the applicant on the basis of the absence of evidence of the use of the earlier marks, did not examine the likelihood of confusion between the marks at issue. To the extent that the assessment of the genuine use of the earlier mark INSTINCT constitutes a preliminary question as to whether there is, in the present case, a likelihood of confusion between that mark and the mark applied for, and that it is not for the Court to assess, for the first time, matters not examined by the Board of Appeal, the Court is not in a position to determine the decision which the Board of Appeal was required to take and, therefore, to exercise its power of alteration. Similarly, as regards the applicant’s third head of claim, the Court is not in a position to exercise its power of alteration with regard to the finding that the evidence of genuine use of the earlier mark INSTINCT has been adduced in the present case. As was pointed out in paragraphs 11 and 29 of the present judgment, the Board of Appeal did not assess all of the conditions relating to the genuine use of the earlier mark INSTINCT and, in any event, based its conclusions as a whole on incorrect considerations relating to the nature of the use of that mark. It follows that, as regards in particular the extent of the use of the earlier mark INSTINCT, the Court is not in a position to determine the decision which the Board of Appeal was required to take.
91      The applicant’s application for alteration must therefore be dismissed.
92      As regards, finally, the fourth head of claim, also brought in the alternative, by which the applicant asks the Court to refer the case in its entirety to the Fifth Board of Appeal, it is sufficient to observe that, in the context of an appeal brought before the Court against the decision of a Board of Appeal of EUIPO, the latter is required, in accordance with Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with the judgment of the Court. It is for EUIPO to draw the appropriate inferences from the operative part and grounds of judgments of the EU judicature (see, to that effect, judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PirañAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited).
93      It follows that, in so far as the contested decision is annulled by the present judgment, it will be for the EUIPO to draw the inferences from its operative part and grounds.
Costs
94      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Furthermore, under Article 134(3) of the Rules of Procedure, the parties are to bear their own costs where each party succeeds on some and fails on other heads. However, if it appears justified in the circumstances of the case, the Court may order that one party, in addition to bearing his own costs, pay a proportion of the costs of the other party.
95      In the present case, the applicant requested that EUIPO be ordered to pay the costs. As the applicant’s action has been upheld only as regards the earlier word mark INSTINCT, EUIPO must be ordered to bear, in addition to its own costs, half of the applicant’s costs.
96      Under Article 138(3) of the Rules of Procedure, the Court may order an intervener to bear its own costs. In this case, the intervener, which intervened in support of EUIPO, is to bear its own costs.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 November 2015 (Case R 2944/2014-5) in so far as it concludes that there is no genuine use of the earlier word mark INSTINCT;
2.      Dismisses the action as to the remainder;
3.      Orders EUIPO to bear, in addition to its own costs, half of the costs incurred by M. I. Industries Inc.;
4.      Orders M. I. Industries to bear half of its own costs;
5.      Orders Natural Instinct Ltd to bear its own costs.
Gratsias
Labucka
Ulloa Rubio
Delivered in open court in Luxembourg on 15 February 2017.
E. Coulon
D. Gratsias
Registrar
President
* Language of the case: English.