JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
10 November 2021 (*)
(EU trade mark – Invalidity proceedings – EU word mark NATIONAL GEOGRAPHIC – Earlier non-registered mark geographic – Relative ground for refusal – Use in the course of trade of a sign of more than mere local significance – Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009 (now Article 8(4) and Article 60(1)(c) of Regulation (EU) 2017/1001))
In Case T‑517/20,
VF International Sagl, established in Stabio (Switzerland), represented by T. van Innis and A. Van der Planken, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Fischer 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
National Geographic Society, established in Washington, District of Columbia (United States), represented by S. Malynicz QC and C. de Haas, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 21 May 2020 (Case R 1665/2019-1), relating to invalidity proceedings between VF International and National Geographic Society,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov, President, E. Buttigieg and G. Hesse (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 17 August 2020,
having regard to the response of EUIPO lodged at the Court Registry on 19 November 2020,
having regard to the response of the intervener lodged at the Court Registry on 16 November 2020,
having regard to the decision of 11 May 2021 joining Cases T‑517/20 and T‑518/20 for the purposes of the oral part of the procedure,
further to the hearing on 25 June 2021,
gives the following
Judgment
Background to the dispute
1        On 4 October 2010, the intervener, National Geographic Society, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2        Registration as a mark was sought for the word sign NATIONAL GEOGRAPHIC.
3        The goods in respect of which registration was sought are in, inter alia, Class 25 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 to the following description: ‘Clothing, footwear, headgear’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 2010/227 of 3 December 2010 and the contested mark was registered on 11 March 2011 in respect of the goods referred to in paragraph 3 above.
5        On 25 January 2017, the applicant, VF International Sagl, filed an application for a declaration of invalidity of the contested mark in respect of the goods referred to in paragraph 3 above, on the basis, inter alia, of Article 53(1)(c) of Regulation No 207/2009 (now Article 60(1)(c) of Regulation 2017/1001), read in conjunction with Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001).
6        The application for a declaration of invalidity was based on the earlier non-registered mark geographic used in the course of trade in Italy for ‘bags and clothing’.
7        By decision of 28 May 2019, the Cancellation Division dismissed the application for a declaration of invalidity. It found, in essence, that the applicant had not proved that the earlier non-registered mark had been used in the course of trade of more than mere local significance prior to the date on which the contested mark was filed.
8        On 29 July 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
9        By decision of 21 May 2020 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. More specifically, it found that the applicant had not shown that the non-registered sign geographic was an independent sign used in the course of trade under Article 8(4) of Regulation 2017/1001.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      Given the date on which the application for registration at issue was filed, namely 4 October 2010, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
13      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the provisions of Regulation 2017/1001 must be understood as referring to the identical provisions of Regulation No 207/2009.
14      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(4) of Regulation 2017/1001 by which it criticises the Board of Appeal for finding that it had not shown that the non-registered sign geographic had been used in the course of trade within the meaning of Article 8(4) of that regulation. That plea is divided, in essence, into three parts, alleging, first, an incorrect assessment of the evidence submitted by the applicant, second, an incorrect assessment of the relevant public’s perception of the composite sign NAPAPIJRI GEOGRAPHIC and, third, misapplication of the case-law.
15      As a preliminary point, it should be noted that, by virtue of Article 8(4) of Regulation No 207/2009, read in conjunction with Article 53(1)(c) of that regulation, the proprietor of a non-registered trade mark or of a sign other than a mark may apply for a declaration that an EU trade mark is invalid if that non-registered mark or that sign satisfies all of four conditions: (i) it must be used in the course of trade; (ii) it must be of more than mere local significance; (iii) the right to that mark or sign must have been acquired in accordance with EU law or the law of the Member State in which it was used prior to the date of application for registration of the EU trade mark; and (iv) the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those conditions are cumulative; thus, where a non-registered trade mark or a sign does not satisfy one of those conditions, the application for a declaration of invalidity based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) of Regulation No 207/2009 cannot succeed (see judgment of 24 October 2018, Bacardi
v EUIPO – Palírna U zeleného stromu (42 BELOW), T‑435/12, EU:T:2018:715, paragraph 43 and the case-law cited).
16      The first two conditions, namely those concerning the use in the course of trade and significance of the sign or mark relied on, which must be more than merely local, arise from the wording itself of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. That regulation thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (see judgment of 24 October 2018, 42 BELOW, T‑435/12, EU:T:2018:715, paragraph 44 and the case-law cited).
17      As regards the first condition for application of Article 8(4) of Regulation No 207/2009, it should be noted that, according to the case-law, a sign is used in the course of trade where that use occurs in the context of commercial activity with a view to economic advantage and not as a private matter (see judgment of 3 March 2016, Ugly
v OHIM – Group Lottuss (COYOTE UGLY), T‑778/14, not published, EU:T:2016:122, paragraph 28 and the case-law cited).
18      By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to the law of the Member State governing that sign’ that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is justified, given that Regulation No 207/2009 allows signs which fall outside of the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark (see judgment of 24 October 2018, 42 BELOW, T‑435/12, EU:T:2018:715, paragraph 45 and the case-law cited).
19      It is in the light of those considerations that the merits of the present action must be examined.
20      It must thus be held, as a preliminary point, that the applicant’s action relates solely to the first condition for the application of Article 8(4) of Regulation No 207/2009, namely that the sign must be used in the course of trade. Since the Board of Appeal concluded that that condition was not satisfied, it did not examine the other conditions set out in paragraph 15 above.
21      Furthermore, in the circumstances of the present case, it is appropriate to begin by examining the second part of the single plea in law.
The second part of the single plea in law, concerning an incorrect assessment of the relevant public’s perception of the composite sign NAPAPIJRI GEOGRAPHIC
22      In paragraph 60 of the contested decision, the Board of Appeal found that the documents produced by the applicant show use of the composite sign
or, in which the sign napapijri is even more dominant when it is used with the non-registered sign geographic, mainly in relation to clothing goods associated, most of the time, with the Norwegian flag. The Board of Appeal thus concluded, in paragraph 65 of that decision, that, in view of the subordinate position of the non-registered sign geographic in the composite sign at issue and the evidence submitted, the applicant had not shown that the non-registered sign geographic constituted an independent sign under Article 8(4) of Regulation 2017/1001.
23      The applicant submits that the average consumer will perceive the composite sign NAPAPIJRI GEOGRAPHIC as a configuration of two independent marks, namely the mark NAPAPIJRI and the mark GEOGRAPHIC. Thus, according to the applicant, the non-registered sign geographic, when used as part of the composite sign NAPAPIJRI GEOGRAPHIC, does not lose its visual, phonetic or conceptual ‘individuality’ or its ‘distinctive character’, with the result that the average consumer will perceive the non-registered sign geographic independently of the other elements.
24      EUIPO and the intervener dispute the applicant’s arguments.
25      In the present case, it should be noted that the non-registered sign geographic has a clearly subordinate position in the composite sign NAPAPIJRI GEOGRAPHIC in so far as it is represented in a small font in simple lower-case letters, without any particular striking stylisation. By contrast, the sign napapijri, given its much larger size and its high graphic stylisation, constitutes the dominant element of that sign. Its dominant position is highlighted in most of the evidence provided by the applicant.
26      Consequently, it must be held that the Board of Appeal correctly found, in paragraph 65 of the contested decision, that the relevant public, faced with the composite sign NAPAPIJRI GEOGRAPHIC, will not perceive the non-registered sign geographic as an independent sign under Article 8(4) of Regulation No 207/2009.
The first part of the single plea in law, concerning the incorrect assessment of the evidence submitted by the applicant
27      In paragraphs 61 to 65 of the contested decision, the Board of Appeal observed that it had been shown that the applicant had promoted its goods under the composite sign NAPAPIJRI GEOGRAPHIC by means of intensive publicity campaigns, but that it was not, however, apparent from the evidence that the non-registered sign geographic had been used independently in the course of trade.
28      The applicant claims, in essence, that the Board of Appeal erred in finding that the evidence produced did not show that the earlier non-registered national mark geographic was used in the course of trade. It submits that it produced several items of evidence showing that the non-registered sign geographic had been used in the course of trade for a long time, by it and by its predecessor, in Italy and outside Italy, in respect of clothing and bags.
29      EUIPO and the intervener dispute the applicant’s arguments.
30      It should be noted that, according to the case-law of the Court of Justice, as regards the function to be performed by use of the sign, the latter must be used as a distinctive element in that it must serve to identify an economic activity engaged in by its proprietor (judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 149).
31      Moreover, according to the same judgment of the Court of Justice, the common purpose of the two conditions laid down in Article 8(4) of Regulation No 207/2009 is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite – that is to say, important and significant in the course of trade – from preventing registration of a new Community trade mark. A right of opposition of that kind must be reserved to signs which actually have a real presence on their relevant market (judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 157).
32      It must be observed that, in order to prove that the non-registered sign geographic was used in the course of trade, the applicant submitted to EUIPO several items of evidence, including the following:
–        documents 1 and 6: catalogues and advertising for goods distributed before and after 2001;
–        document 2: press articles;
–        document 3: a list of stores distributing ‘Napapijri/Geographic’ clothing in March 2001;
–        document 5: screenshots of the ‘Napapijri/Geographic’ website dated 2001;
–        document 10: a copy of a transaction between the applicant and the company Green Sport Monte Bianco dated 29 December 2004, referring to the ‘de facto mark’ GEOGRAPHIC;
–        Annex A.1 to the application (document 12): examples of the independent use of the non-registered sign geographic.
33      In the present case, first, it is clear that documents 1 and 6 refer to catalogues and advertisements concerning footwear, clothing and bags, on which the composite sign NAPAPIJRI GEOGRAPHIC appears, whereas document 2 refers to press articles which also mention the sign napapijri. Similarly, document 3 refers to a list of stores distributing ‘NAPAPIJRI GEOGRAPHIC’ clothing in March 2001 and document 5 shows screenshots of the website entitled ‘NAPAPIJRI GEOGRAPHIC’ of the same year.
34      As regards Annex A.1 to the application (document 12), presented as referring to examples of independent use of the non-registered sign geographic, it must be stated that the website extracts which appear in that annex (pages 2 to 10), dating from 2000 and 2001, show use of the sign napapijri in the URL address. Furthermore, the word ‘geographic’ appears in isolation in those extracts only very sporadically and, where that is the case, it refers to the name of a ‘collection’ of the trade mark for napapijri clothing, with the result that, even in that case, it appears to be subordinate to the latter mark, which is used to indicate the commercial origin of the applicant’s goods. Lastly, in the photos on pages 11 to 16 of that annex, it must be held that the non-registered sign geographic appears together with the sign napapijri.
35      Finally, document 10, which contains documents relating to a transaction between the applicant and an undertaking dating from 2004, refers to the ‘de facto mark’ geographic. First, that document is marked as ‘confidential’ and, consequently, is not capable of showing that the relevant public perceives the non-registered sign geographic, taken in isolation, as an indication of the commercial origin of the applicant’s goods. Second, and in any event, it concerns merely an isolated case, which relates to a single transaction by the applicant.
36      It thus follows from the foregoing that almost all the evidence relates to the use of the non-registered sign geographic together with the sign napapijri or the Norwegian flag. Accordingly, the evidence does not show that the goods covered were marketed under the non-registered sign geographic taken in isolation, and, therefore, is not capable of showing that the relevant public would perceive that sign as an indication of the commercial origin of those goods.
37      Furthermore, the applicant acknowledged at the hearing that there was no specific evidence showing that the non-registered sign geographic was used for the purposes of identification by the relevant class of persons of the goods concerned as originating from a particular undertaking, namely its undertaking, with the exception of Annex A.1, which, however, as was noted in paragraph 34 above, is not capable of demonstrating that the relevant public would perceive that sign as an indication of the commercial origin of those goods.
38      Consequently, in view of the fact that the non-registered sign geographic has no actual and real independent presence on the relevant market, but only together with the sign napapijri, which is dominant, and with the Norwegian flag, with the result that it has not been proved that a substantial part of the relevant public would know the non-registered sign geographic and would associate it, without any effort, with the goods marketed by the applicant, the Board of Appeal was fully entitled to find that that word did not constitute an independent sign used in the course of trade within the meaning of Article 8(4) of Regulation No 207/2009.
The third part of the single plea in law, alleging misapplication of the case-law
39      The applicant submits that, according to the case-law of the Court of Justice and the General Court, a sign may still function as a trade mark when it is used ‘as part of or in conjunction with a registered trade mark’. In support of its argument, it refers to the judgments of 7 July 2005, Nestlé (C‑353/03, EU:C:2005:432); of 10 June 2010, Atlas Transport v OHIM – Hartmann (ATLAS TRANSPORT) (T‑482/08, not published, EU:T:2010:229); and of 21 September 2010, Villa Almè v OHIM – Marqués de Murrieta (i GAI) (T‑546/08, not published, EU:T:2010:404), and the decisions of the Board of Appeal.
40      EUIPO and the intervener dispute the applicant’s arguments.
41      As regards the judgment of 7 July 2005, Nestlé (C‑353/03, EU:C:2005:432), it should be noted that, in that judgment, the Court of Justice stated that the distinctive character of a mark referred to in Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) may be acquired in consequence of the use of that mark as part of or in conjunction with a registered trade mark. That is the case where, in consequence of such use, the relevant class of persons perceive the product or service designated by that mark as originating from a given undertaking (judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraphs 30 and 32).
42      In the judgment of 10 June 2010, Atlas Transport v OHIM – Hartmann (ATLAS TRANSPORT) (T‑482/08, not published, EU:T:2010:229), the General Court examined whether the evidence in the file submitted by the applicant contained additional evidence in relation to the contested mark capable of altering its distinctive character with the result that that evidence cannot constitute proof of genuine use of the contested mark under Article 15(2)(a) of Regulation No 40/94. The Court found that such was not the case, since, in particular, the elements added to the contested mark occupied a secondary position in the overall impression produced by that mark and the majority of those elements had a weak distinctive character (paragraphs 32, 37 and 43 of the judgment). Likewise, in the judgment of 21 September 2010, Villa Almè v OHIM – Marqués de Murrieta (i GAI) (T‑546/08, not published, EU:T:2010:404), the Court clarified that there was no rule in the trade mark system obliging the opponent to prove genuine use of the earlier mark separately and independently of any other mark. The Court found that, even though some of the evidence provided by the intervener concerned use of the earlier mark in conjunction with other elements, it was apparent from that evidence that the earlier mark was also used on its own and that it was capable of identifying the goods marketed by the intervener (paragraphs 19, 20 and 25 of the judgment).
43      While it is true that, unlike the present case, the judgments cited above did not concern Article 8(4) of Regulation No 207/2009, the fact remains that, as the applicant submits, the proprietor of a non-registered trade mark may show use thereof in the course of trade, within the meaning of that provision, on the basis of evidence relating to the use of that mark in conjunction with other marks. However, it is also necessary that the non-registered mark thus relied on does not occupy an ancillary position in the overall impression created by the composite mark of which it forms part and that the relevant public perceives it, considered in isolation, as an indication of the commercial origin of the goods in question.
44      That is not the case here. Unlike the cases which gave rise to the judgments cited in paragraph 39 above, the evidence provided by the applicant shows that the non-registered mark geographic is, in fact, always or almost always used together with the sign napapijri and occupies a clearly subordinate position within the composite sign NAPAPIJRI GEOGRAPHIC. Accordingly, that evidence is not capable of showing that the sign geographic, taken in isolation, is perceived by the relevant public as an indication of the commercial origin of the applicant’s goods. Therefore, the applicant cannot validly base any argument on the judgments cited above.
45      Consequently, in view of the differences between those cases, the applicant’s complaint on that point must be rejected. Moreover, it should be noted that EUIPO is not bound by its decision-making practice and that the application of the principles of equal treatment and sound administration must be reconciled with the principle of lawfulness, with each specific case having to be examined thoroughly (see, by analogy, judgment of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 50 and the case-law cited).
46      In that context, the arguments raised by the applicant in order to demonstrate that the Board of Appeal incorrectly assessed the evidence submitted to prove use in the course of trade of the non-registered sign geographic cannot therefore succeed.
47      In the light of all of the foregoing, it must be held that the Board of Appeal correctly found that proof of use in the course of trade of the earlier non-registered national sign geographic had not been adduced in the present case. Accordingly, the action must be dismissed in its entirety.
Costs
48      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders VF International Sagl to pay the costs.
Kornezov
Buttigieg
Hesse
Delivered in open court in Luxembourg on 10 November 2021.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.