JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
3 September 2025 (*)
( EU trade mark – Revocation proceedings – EU word mark Discovery – Genuine use of the trade mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Proof of genuine use – Nature of use – Use in connection with the goods in respect of which the trade mark was registered – Independent subcategory of goods )
In Case T‑404/24,
Starbuzz Tobacco Inc., established in Brea, California (United States), represented by C. Thomas and V. Adam, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Mayflix GmbH, established in Frankfurt am Main (Germany), represented by F. Pfefferkorn, lawyer,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, D. Petrlík and S. Kingston (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, Starbuzz Tobacco Inc., seeks the annulment and alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 June 2024 (Case R 157/2024-2) (‘the contested decision’).
Background to the dispute
2        On 25 November 2015, the applicant filed an application for registration of an EU trade mark in respect of the word sign Discovery.
3        The goods in respect of which registration was sought are in Classes 4, 21 and 34 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:
–        Class 4: ‘Candles; charcoal; perfumed candles; scented candles; illuminants; parts and fittings for the aforesaid’;
–        Class 21: ‘Vaporizers for perfume; glassware, porcelain and earthenware, and parts of the aforesaid goods’;
–        Class 34: ‘Tobacco substitute; smokers’ articles, in particular hookahs and e-hookahs and accessories, parts and fittings therefor; electronic cigarettes; electronic vaporizing smoking device; e-liquid for use in electronic smoking devices and electronic cigarettes, namely, refill liquid for electronic smoking devices and electronic cigarettes; smoking pipes; steam stones, in particular steam stones for water pipes; mineral carrier substances for flavorings, for use in water pipes; inhalable aerosols and carrier substances therefor, for use in water pipes; substances for inhalation using water pipes, in particular aromatic substances; cleaners and stands for pipes and hookahs; hookah bowls and hookah hoses; electronic vaporizers for smoking devices; vaporizers for smoking devices; fittings for the aforesaid; all the aforesaid goods not for medical purposes’.
4        The trade mark application was published in the Community Trade Marks Bulletin on 14 January 2016 and the trade mark was registered on 22 April 2016.
5        On 4 August 2022, the intervener, Mayflix GmbH, filed an application for revocation of the mark at issue under 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), in respect of all the goods for which it had been registered.
6        On 21 November 2023, the Cancellation Division upheld that application in part and revoked the contested mark in respect of all the goods for which that mark had been registered, except for certain goods in Class 34 corresponding to the following description: ‘hookahs; all the aforesaid goods not for medical purposes’.
7        On 19 January 2024, the intervener filed a notice of appeal against the Division’s decision and sought the annulment of that decision in part, in so far as the application for revocation had been rejected in respect of the goods in Class 34 corresponding to the description ‘hookahs; all the aforesaid goods not for medical purposes’. Consequently, that decision has become final in respect of the other goods covered by the contested mark.
8        By the contested decision, the Board of Appeal, first, annulled the decision of the Cancellation Division in part, in so far as the latter had not revoked the contested mark in respect of the goods in Class 34 corresponding to the description ‘hookahs; all the aforesaid goods not for medical purposes’, and, second, declared that mark ‘invalid’ for those goods.
Forms of order sought
9        The applicant claims, in essence, that the Court should:
–        annul the contested decision;
–        ‘dismiss the appeal’;
–        order EUIPO to pay the costs incurred in the present proceedings and order the intervener to pay the costs incurred in the proceedings before EUIPO.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
11      The intervener contends, in essence, that the Court should:
–        dismiss the action;
–        in the alternative, refer the case back to EUIPO in so far as the applicant contested further requirements of genuine use;
–        order the applicant to pay the costs incurred before the Court.
Law
The claim for annulment
12      The applicant relies on a single plea in law, alleging infringement of Article 58(1)(a) and (2) of Regulation 2017/1001.
13      As a preliminary point, as regards the admissibility of the documents submitted for the first time before the Court, EUIPO contends that the evidence produced in Annexes A.9 to A.15 to the application is inadmissible, in so far as it was produced for the first time before the Court.
14      The purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. Pursuant to Article 95 of Regulation 2017/1001, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
15      Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ pleadings may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
16      In the present case, Annexes A.9 to A.13 to the application include extracts from websites relating to hookah accessories (Annex A.9), stems for hookahs designated by the term ‘hookahs’ (Annex A.10), beds (Annex A.11), bicycles (Annex A.12) and lamps and glasses (Annex A.13). Annexes A.14 and A.15 to the application include extracts from the Register of European Union designs.
17      It must be stated that, as is apparent from the file, Annexes A.9 to A.15 to the application were not submitted by the applicant during the proceedings before EUIPO and are, consequently, inadmissible.
18      Under Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
19      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).
20      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 use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
21      Under Article 58(2) of Regulation 2017/1001, where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor are to be declared to be revoked in respect of those goods or services only.
22      According to the case-law, the provisions of Article 47(2) of Regulation 2017/1001 allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use of the mark has been established (i) are a limitation on the rights which the proprietor of the earlier trade mark gains from his or her registration and (ii) must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his or her range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him or her. The same considerations apply by analogy to the provisions of Article 58(2) of Regulation 2017/1001 relating to partial revocation (see judgment of 23 September 2020, Polfarmex v EUIPO – Kaminski (SYRENA), T‑677/19, not published, EU:T:2020:424, paragraph 112 and the case-law cited).
23      It is also apparent from the case-law that, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to part of those goods or services affords protection only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category (see judgment of 1 February 2023, Brobet v EUIPO – Efbet Partners (efbet), T‑772/21, not published, EU:T:2023:36, paragraph 59 and the case-law cited).
24      Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not result in the proprietor of that mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he or she has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. In that regard, it is in practice impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (see judgment of 10 December 2015, Sony Computer Entertainment Europe v OHIM – Marpefa (Vieta), T‑690/14, not published, EU:T:2015:950, paragraph 62 and the case-law cited).
25      As regards the question whether goods are part of a coherent subcategory which is capable of being viewed independently, it is apparent from the case-law that, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service at issue is vital in directing their choices. Consequently, since consumers do employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a subcategory of goods or services. By contrast, the nature of the goods at issue and their characteristics are not, as such, relevant with regard to the definition of subcategories of goods or services (see judgment of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 116 and the case-law cited).
26      The applicant’s arguments must be examined in the light of those principles.
27      The Board of Appeal found, as regards the nature of use for the goods in Class 34 corresponding to the description ‘hookahs; all the aforesaid goods not for medical purposes’, that the evidence as a whole submitted by the applicant did not show use of the contested mark for ‘hookahs’, but only for certain specific parts of those ‘hookahs’, namely ‘stems for hookahs’. According to the Board of Appeal, ‘hookahs’ and ‘stems for hookahs’ constituted two separate and independent subcategories of ‘smokers’ articles’ in that class on account of their different purposes. The purpose of ‘stems for hookahs’ was not to be used directly for smoking, which, by contrast, was the purpose of ‘hookahs’. In addition, it stated that ‘stems for hookahs’ needed to be combined with other parts before they could be used. Consequently, one of the purposes of the ‘stems for hookahs’ was to combine them with other parts to obtain a customised ‘hookah’. Moreover, another purpose of ‘stems for hookahs’ was to be used as spare parts. In those circumstances, owing to their different purposes, ‘hookahs’ and ‘stems for hookahs’ constituted two independent subcategories of goods, so that the use of the contested mark for ‘stems for hookahs’ could be distinguished from the use of that mark for ‘hookahs’. Accordingly, the Board of Appeal did not carry out an analysis of the other conditions necessary for the application of Article 58(1)(a) of Regulation 2017/1001.
28      In that regard, the applicant submits, in essence, that, although the Board of Appeal correctly stated that, if a trade mark was registered for a broad category of goods, subcategories of goods could be defined where those subcategories were capable of being viewed independently, that was not the case here. It observes that, having regard to the economic sector in question and the perception of the relevant public, ‘hookahs’ and ‘stems for hookahs’ do not constitute two different or independent categories of goods. It submits that the reality of the commercial use of the contested mark shows that that public is aware that ‘stems for hookahs’, which constitute the centrepiece of a water pipe, are also referred to and offered for sale under the name ‘hookahs’. It infers therefrom, in essence, that the genuine use of that mark for ‘stems for hookahs’ justifies maintaining the registration of that mark also for ‘hookahs’.
29      EUIPO observes that the applicant does not dispute that ‘hookahs’ and ‘stems for hookahs’ are different goods and even accepts that the stem is ‘the centrepiece of a water pipe’. According to EUIPO, the applicant’s arguments do not demonstrate that there is a market practice, of which consumers are aware, consisting in labelling and offering ‘stems for hookahs’ as ‘hookahs’.
30      The intervener maintains that the contested mark has not been used for ‘hookahs’, but only for parts thereof. According to the intervener, the examples of shops offering ‘stems for hookahs’ as ‘hookahs’, cited by the applicant, appear to be exceptions that do not represent the general semantic understanding within the relevant public and do not call into question the fact that the term ‘hookah’ describes a water pipe composed of several of its main parts. Moreover, the ‘stems for hookahs’ mainly refer to producers with the word ‘hookah’ in their company or trade name.
31      In the first place, as regards the relevance of the need to combine ‘stems for hookahs’ with other parts in determining their purpose, it must be borne in mind that the Board of Appeal found, in paragraph 41 of the contested decision, that ‘hookahs’ and ‘stems for hookahs’ belonged to independent subcategories of goods in that they did not have the same purpose, within the meaning of the case-law, given, in particular, that ‘stems for hookahs’ first needed to be combined with other parts before they could be used, whereas ‘hookahs’ could be used directly for smoking. However, the mere fact that a product must be combined with other parts before it can be used does not, in itself, lead to the conclusion that that product has a different purpose to the other parts of the whole product and that it constitutes, for that reason alone, an independent subcategory of goods, within the meaning of the case-law cited in paragraphs 23 to 25 above. The purpose of a product must be assessed on the basis of all the facts and circumstances of the case relevant to establishing whether the commercial use of the mark is real (see case-law cited in paragraph 20 above).
32      First, it follows from the case-law cited in paragraph 25 above that the criterion of purpose, which is of fundamental importance in the definition of a subcategory of goods, must be determined not by reference to whether or not goods must be combined with other parts before they can be used, but according to the specific needs of the relevant public which those goods meet.
33      Second, to hold, on the sole ground that ‘stems for hookahs’ must be combined with other parts before they can be used, that those parts and ‘hookahs’ belong to independent subcategories of goods, without taking into account, in particular, the importance of that part in the combined product or the specificities of the market at issue, would not be consistent with the case-law cited in paragraph 22 above, according to which account must be taken, in the interpretation of Article 58(2) of Regulation 2017/1001, of the legitimate interest of the trade mark proprietor in being able, in the future, to extend its range of goods or services. Thus, in the present case, in so far as it is common ground that the applicant has used the contested mark for the main part of a hookah, namely the stem, it is necessary to take into consideration its interest in marketing, in the future, whole hookahs under the same mark.
34      It follows that the Board of Appeal erred in concluding that the purpose of ‘stems for hookahs’ was different from that of ‘hookahs’ on the ground that the former must first be combined with other parts before they can be used.
35      In the second place, it is common ground between the main parties that the stem of a ‘hookah’ is the main part of the latter product. Furthermore, contrary to what the Board of Appeal found, both ‘stems for hookahs’ and ‘hookahs’ are intended to be used for smoking. The mere fact that it is necessary to add accessory parts, such as a bowl or a hose, is not sufficient for it to be considered that those goods have different purposes.
36      In the third place, it is apparent from the file that the applicant has shown that ‘stems for hookahs’ are marketed by certain undertakings under the term ‘hookah’.
37      In that regard, first, as the applicant has submitted, ‘stems for hookahs’ sometimes appear, in the catalogues and on the website printouts, in the categories of goods entitled ‘Hookah’ or are described and referred to either as ‘hookahs’ or by using synonyms for the term ‘hookahs’, such as ‘water pipes’, ‘cachimbas’ or ‘narguilés’.
38      In addition, it is apparent from the evidence in the file that, even as regards ‘stems for hookahs’ which do not include the term ‘hookah’ in their model name, some sellers choose to describe them as a ‘water pipe’ in the product description.
39      It follows that ‘stems for hookahs’ are, at least by some sellers, also referred to by the term ‘hookahs’ in the economic sector concerned.
40      Second, that conclusion is not invalidated by the fact that some of the website printouts in the file specify, in the detailed product descriptions, the exact parts included in the delivery. The applicant does not claim that the ‘stems for hookahs’ marketed under the contested mark are equivalent to complete ‘hookahs’, but merely claims that consumers are aware that a seller referring to a product using the term ‘hookah’ does not necessarily mean that a complete product will be delivered and that the list of products included under that term must be checked each time.
41      Third, that conclusion is supported by the fact that the catalogues of the applicant’s goods in the file contain two distinct categories, one relating to ‘hookahs’ and the other relating to ‘hookah accessories’. As the applicant submits, it should be noted that ‘stems for hookahs’ are not included in the latter category, which lists the following goods as such accessories: ‘hoses, glass vases, bowls, foil, tongs, grommets, lighters’.
42      It may be inferred therefrom that ‘stems for hookahs’ differ from the accessory parts of ‘hookahs’, such as vases or hoses, which are considered to be ‘accessories, parts and fittings’ for hookahs in Class 34.
43      Fourth, it must be noted that, in the statements in the file that were made by the distributors of the applicant’s goods, the sellers refer only to ‘hookahs’ to designate the goods sold under the contested mark.
44      Fifth, as regards the Board of Appeal’s finding that the applicant offers for sale complete ‘hookahs’ under the trade mark Egyptian, it is sufficient to observe that the present action concerns the genuine use of the trade mark Discovery. The mere fact that the applicant’s business practice may differ between some of its trade marks does not show that the purpose of ‘stems for hookahs’ and the purpose of ‘hookahs’ are different.
45      In the light of the foregoing, it must be concluded that, contrary to what the Board of Appeal found, ‘stems for hookahs’ do not have a different purpose from that of ‘hookahs’. Thus, the Board of Appeal’s conclusion that ‘stems for hookahs’ and ‘hookahs’ constitute ‘separate and independent’ subcategories is incorrect.
46      In the light of all the foregoing considerations, the single plea in law must be upheld and, consequently, the contested decision must be annulled.
The claim for alteration
47      By its second head of claim, requesting that the Court ‘dismiss the appeal’, the applicant asks the Court, in essence, to dismiss the appeal brought before the Board of Appeal by the intervener and, thus, to adopt the decision which the Board of Appeal should lawfully have taken. It must therefore be concluded that, by that head of claim, the applicant is requesting alteration of the contested decision (see judgment of 7 February 2024, Quatrotec Electrónica v EUIPO – Woxter Technology (WOXTER), T‑792/22, not published, EU:T:2024:69 paragraph 13 and the case-law cited).
48      In that regard, it must be borne in mind that the power of the Court to alter decisions does not have the effect of conferring on it the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the 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).
49      In the present case, the Board of Appeal did not adopt a position, in the contested decision, on the conditions for establishing genuine use other than the condition relating to the nature of the goods, with the result that it is not for the Court to carry out an assessment of those other conditions in examining the request for alteration of that decision.
50      The claim for alteration must therefore be dismissed.
Costs
51      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.
52      Since EUIPO has, in essence, been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
53      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.
54      With regard to the applicant’s claim relating to the costs incurred in the proceedings before EUIPO, in the circumstances of the present case, it will be for the Board of Appeal to decide, in the light of the present judgment, on the costs relating to the proceedings before the Cancellation Division and to the proceedings before it (see, to that effect, judgment of 29 May 2018, Uribe-Etxebarría Jiménez v EUIPO – Núcleo de comunicaciones y control (SHERPA), T‑577/15, EU:T:2018:305, paragraph 94 and the case-law cited).
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 June 2024 (Case R 157/2024-2);
2.      Dismisses the action as to the remainder;
3.      Orders EUIPO to bear its own costs and to pay those incurred by Starbuzz Tobacco Inc.;
4.      Orders Mayflix GmbH to bear its own costs.
Kornezov
Petrlík
Kingston
Delivered in open court in Luxembourg on 3 September 2025.
V. Di Bucci
O. Porchia
Registrar
President
*      Language of the case: English.