JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
25 April 2018 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark CHATKA — Earlier international figurative mark CHATKA — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Genuine use of the earlier mark — Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001))
In Case T‑312/16,
Walfood SA, established in Luxembourg (Luxembourg), represented by E. Cornu, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Romanov Holding, SL, established in La Moraleja (Spain), represented by S. García Cabezas and R. Fernández Iglesias, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 21 March 2016 (Case R 2870/2014-5), relating to opposition proceedings between Romanov Holding and Walfood,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović (Rapporteur), President, E. Bieliūnas and A. Marcoulli, Judges,
Registrar: X. Lopez Bancalari, Administrator,
having regard to the application lodged at the Court Registry on 20 June 2016,
having regard to the response of EUIPO lodged at the Court Registry on 30 August 2016,
having regard to the response of the intervener lodged at the Court Registry on 20 September 2016,
having regard to the written questions that were put to the parties by the Court and their responses to those questions, which were lodged at the Court Registry on 25 July and 10 and 11 August 2017,
further to the hearing on 8 September 2017,
gives the following
Judgment
Background to the dispute
1        On 12 January 2006, the applicant, Walfood SA, obtained, from the International Bureau of the World Intellectual Property Organisation (WIPO), international registration No 00876349, designating the European Union, in respect of the word mark CHATKA. Furthermore, the applicant was, at that time, already the proprietor of a series of marks containing the word sign CHATKA, which had been registered as Benelux trade marks or as national trade marks in a number of Member States of the European Union.
2        The goods in respect of which the international registration was sought are in Classes 29, 33 and 43 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 29: ‘Fresh fish and shellfish, deep-frozen and preserved, including fresh crab, deep-frozen and preserved, dishes made with fish and/or shellfish’;
–        Class 33: ‘Alcoholic drinks (except beers), including vodka’;
–        Class 43: ‘Services for providing food and drink, bars, cafés, tea rooms, catering services’.
3        On 16 March 2006, the international registration was notified to the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), itself 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)).
4        The international registration was published in Community Trade Marks Bulletin No 22/2006 of 29 May 2006.
5        On 27 February 2007, Arimpex Promoqualita SL, predecessor in title to the intervener, Romanov Holding SL, filed a notice of opposition to the mark applied for pursuant to Article 42(1) of Regulation No 40/94 (now Article 47(1) of Regulation 2017/1001).
6        The opposition was based on international registration No 554373A, designating Spain, of the figurative mark CHATKA, reproduced below, in respect of goods in Class 29 corresponding to ‘Preserved crab’:
7        In that regard, it is important to point out that the international registration of the sign reproduced in paragraph 6 above, bearing the number 554373, was filed by Caviar Petrossian on 18 May 1990 in respect of a number of territories, including Spain.According to the contested decision, Sadco France subsequently became the proprietor of that international registration in 1992. Furthermore, in 1992 Sadco France also obtained a licence from Sovrybflot authorising it to use trade marks containing the word sign CHATKA which were registered as Benelux trade marks or as national trade marks in various Member States of the European Union. In 2004, Sadco France transferred the abovementioned international registration to Arimpex Promoqualita, solely in so far as it designated Spain. That registration, bearing the number 554373A, is the registration on which the opposition proceedings are based. That registration, in so far as it designated Spain, was subsequently transferred, in 2009, to the intervener. Furthermore, on 8 November 2005, Sadco France transferred international registration No 554373, in so far as it designated territories other than Spain, to Chatka International. Chatka International subsequently transferred that international registration to the applicant.
8        The opposition proceedings were suspended between 15 January 2008 and 21 February 2012, on the ground that invalidity proceedings brought against the earlier mark, on the basis of bad faith, were pending before the Spanish courts. Those proceedings had been brought, in September 2005, before the Tribunal de marca comunitaria, dibujos y modelos de Alicante (Community Trade Mark and Design Court, Alicante, Spain) by Chatka International, the applicant’s predecessor in title. The invalidity proceedings in respect of the earlier mark were dismissed on 15 January 2010, this being confirmed on appeal by the Audiencia Provincial de Alicante (Provincial Court, Alicante) on 27 January 2011. That judgment became final after the dismissal of an appeal brought before the Tribunal Supremo (Supreme Court, Spain) on 17 January 2012.
9        On 19 April 2012, the applicant requested proof of use of the earlier mark, in accordance with Article 42(2) and (3) of Regulation No 207/2009.
10      The intervener produced a body of evidence concerning the use of the earlier mark by Chatka Hispania, SL and by Arimpex Promoqualita, and also an agreement between the latter company and Sadco France, dated 6 July 2004 (‘the protocol of agreement of 6 July 2004’), describing Arimpex Promoqualita as the distributor of the goods covered by the earlier mark since 1996.
11      By decision of 18 September 2014, the Opposition Division of EUIPO upheld the intervener’s opposition in so far as it was based on Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and related to the goods in Class 29. The Opposition Division rejected the opposition as to the remainder. It found, first, that the five-year period referred to in Article 42(2) of Regulation No 207/2009, which was relevant for the purposes of examining the evidence of use (‘the relevant period’), ran from 30 November 2001 to 29 November 2006. Secondly, it found that the intervener had established that the proprietor of the earlier mark had consented to the use of that mark by Arimpex Promoqualita and that the evidence of use, assessed as a whole, sufficiently indicated the duration, extent and nature of the use of the earlier mark during the relevant period. Thirdly, the Opposition Division found that there was a likelihood of confusion between the signs at issue, within the meaning of Article 8(1) of Regulation No 207/2009. Fourthly, the Opposition Division found that the opposition had to be rejected inasmuch as it was based on Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001), since the notice of opposition had not been accompanied by any evidence of the alleged reputation of the earlier mark.
12      On 15 January 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division, in so far as it had upheld the opposition in respect of the goods in Class 29.
13      By decision of 21 March 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal and found that the opposition was well founded in respect of the goods in Class 29.
14      In essence, the Board of Appeal observed, in the first place, that the use of the earlier mark by Arimpex Promoqualita had been made with the consent of the ‘opponent’.In that regard, the Board of Appeal, first, deduced from the ‘opponent’s ability’ to produce commercial documents originating from Arimpex Promoqualita as evidence of use that Arimpex Promoqualita’s use of the mark had been made with the consent of the ‘opponent’. Secondly, the Board of Appeal relied on the protocol of agreement of 6 July 2004 signed by Sadco France and Arimpex Promoqualita, which stated that Arimpex Promoqualita had been Sadco France’s distributor since 1996.
15      In the second place, the Board of Appeal considered whether the proof of use produced by the intervener sufficiently demonstrated the duration, extent and nature of use of the earlier mark in the relevant territory during the relevant period. In that regard, it found, in essence, that since preserved crab could not be regarded as an everyday consumer product, the quantities of goods sold during the relevant period were sufficiently large. It also found that the sign protected by the earlier mark, as a figurative mark, had been used during the relevant period. In the third place, the Board of Appeal found that there was a likelihood of confusion between the signs at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009. In the fourth place, the Board of Appeal found that, since the notice of opposition had not been accompanied by any evidence of the alleged reputation of the earlier mark, the opposition on the basis of Article 8(5) of Regulation No 207/2009 had to be rejected.
Forms of order sought
16      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
17      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
18      The applicant relies on a single plea in law, consisting of three parts, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009.
The first part of the single plea
19      By the first part of the single plea, the applicant, in essence, alleges infringement of Article 42(2) and (3) of Regulation No 207/2009, which is applicable by virtue of Article 156 of that regulation (now Article 196 of Regulation 2017/1001) to opposition proceedings brought against international registrations. It submits that the Board of Appeal erred in determining the relevant period with regard to which the question whether there had been genuine use of the earlier mark had to be examined and submits that that period should have run from 29 May 2001 to 28 May 2006 and not from 29 November 2001 to 28 November 2006.
20      EUIPO and the intervener dispute the applicant’s arguments.
21      In essence, the applicant and EUIPO are at odds over the starting point of the relevant period. The applicant takes the view that that period must be determined by taking into account the date of the first publication of the international registration, whereas EUIPO takes the view that the relevant period must be determined by taking into account the date on which the opposition period began to run.
22      It should be noted at the outset that Article 42(2) of Regulation No 207/2009, in the version applicable in the present case, provides that, in the context of opposition proceedings, the proprietor of the mark applied for may request that the proprietor of the earlier mark establish that that mark has been put to genuine use during the five-year period preceding the date of publication of the EU trade mark application. Pursuant to Article 156(1) of Regulation No 207/2009, that provision is applicable in the context of opposition proceedings relating to an international registration designating the European Union.
23      Furthermore, it is important to point out that, under Article 41(1) of Regulation No 207/2009 (now Article 46(1) of Regulation 2017/1001), the period granted to the proprietors of earlier marks for the purposes of filing a notice of opposition to an EU trade mark application runs from the date of publication of the trade mark application. In a situation where there is an international registration designating the European Union, Article 156(2) of Regulation No 207/2009 fixes the beginning of the opposition period at six months following the date of the first publication of the international registration, which is provided for by Article 152(1) of that regulation (now Article 190(1) of Regulation 2017/1001).
24      In the present case, the Board of Appeal found, in paragraph 23 of the contested decision, that the relevant period ran from 29 November 2001 to 28 November 2006. As the international registration designating the European Union was published in Community Trade Marks Bulletin on 29 May 2006, it must be stated that the Board of Appeal determined that period by reference to the date on which the opposition period began, namely 28 November 2006.
25      However, it must be stated that it is not in any way apparent from the wording of Article 42(2) of Regulation No 207/2009 that the relevant period is to be calculated by reference to the date on which the opposition period begins.
26      On the contrary, it is clear from the wording of Article 42(2) of Regulation No 207/2009 that the relevant period is to be determined by reference to the date of publication of the trade mark application.
27      As regards international registrations designating the European Union, it must be borne in mind that EUIPO, after receiving notification of an international registration designating the European Union, undertakes the first publication of that registration, in accordance with Article 152 of Regulation No 207/2009.
28      Consequently, as the applicant rightly submits, it must be held that, for the purposes of applying Article 156(1) of Regulation No 207/2009, the date of the first publication of an international registration designating the European Union, which is provided for by Article 152 of Regulation No 207/2009, is equivalent to the date of publication of the EU trade mark application to which Article 42(2) of that regulation refers.
29      Furthermore, that finding is borne out by the fact that it is apparent from Article 38 and Article 155(4) of Regulation No 207/2009 (now Article 43 and Article 195(4) of Regulation 2017/1001) that the publication of the EU trade mark application and the first publication of the international registration designating the European Union serve to inform the proprietors of earlier marks of the filing of the EU trade mark application or application for an international registration designating the European Union. They thus fulfil the same function, namely that of enabling the proprietor of an earlier mark, as the case may be, to file a notice of opposition or to comment on those applications.
30      It is therefore apparent from the foregoing that, in the context of opposition proceedings against an international registration designating the European Union, the relevant period with regard to which the question whether there has been genuine use of the earlier mark has to be examined must be determined by reference to the date of the first publication of the international registration designating the European Union and not the date on which the opposition period begins.
31      That finding cannot be called into question by any of EUIPO’s arguments.
32      First, as has been stated in paragraph 25 above, Article 42(2) of Regulation No 207/2009 does not refer in any way to the date on which the opposition period begins. EUIPO does not provide any explanation that is capable of establishing that the legislature intended to provide that the relevant period is to be determined by reference to the date on which the opposition period begins.
33      Secondly, contrary to what is submitted, in essence, by EUIPO, the fact that, pursuant to Article 41(1) of Regulation No 207/2009, the date of publication of the trade mark application coincides with the beginning of the opposition period as regards trade mark applications, is not sufficient for it to be held that Article 42(2) of Regulation No 207/2009, which expressly refers to the date of publication of the trade mark application, must be interpreted as identifying the date on which the opposition period begins as being the starting point of the relevant period.
34      In that regard, it is important to point out that one of the objectives pursued by Article 42(2) of Regulation No 207/2009 is that of preventing artificial use of the earlier mark (see, to that effect, judgment of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 37), inter alia, that to which opposition proceedings give rise. The date on which the opposition period against an international registration designating the European Union begins, namely six months after the first publication of the international registration, cannot therefore be the starting point of the relevant period.
35      Thirdly, contrary to what EUIPO submits, the fact that the date on which the opposition period begins is subsequent to the examination by EUIPO of possible absolute grounds for refusal is not capable of justifying the contention that the relevant period must be calculated by reference to that date. No provision of Regulation No 207/2009 requires the relevant period to be determined by reference to a date subsequent to the examination of the absolute grounds for refusal.
36      Fourthly, contrary to what EUIPO maintains, the argument that the interpretation suggested by EUIPO is consistent with its practice and with EUIPO’s examination guidelines has no bearing on the legality of the contested decision, since those guidelines cannot prevail over the provisions of Regulation No 207/2009 or over the EU judicature’s interpretation of those provisions (see, to that effect, judgment of 7 October 2015, Sonova Holding v OHIM (FLEX), T‑187/14, not published, EU:T:2015:759, paragraph 33).
37      Fifthly, contrary to what EUIPO submits, the determination of the relevant period by taking into account the date of the first publication of the international registration designating the European Union is not capable of resulting in an infringement of the principle of equal treatment with regard to the proprietors of earlier marks, depending on whether they are opposing an international registration designating the European Union or an EU trade mark. On the contrary, the proprietors of earlier marks are placed in the same position, since they are required to prove genuine use as from the day on which they are informed of the EU trade mark application or the international registration designating the European Union.
38      Sixthly, EUIPO relies on Article 42(2) of Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Regulation No 40/94, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), in order to claim that informing the proprietors of earlier marks is irrelevant for the purposes of determining the relevant period. The amended version of that article provides that the relevant period is now to be calculated by reference to the date of filing of the application and no longer to the date of publication of the application. However, that amended version of Article 42 of Regulation No 207/2009, which came into force on 23 March 2016, that is to say subsequent to the opposition proceedings to which the present case relates, cannot be taken into account for the purposes of interpreting the earlier provision, which is applicable in the present case. Furthermore, even if Regulation 2015/2424 could be taken into account, it must be pointed out that the amendments made confirm the interpretation that the date on which the opposition period began is irrelevant for the purposes of determining the relevant period.
39      In the light of the considerations set out above, it must be held that the Board of Appeal infringed Article 42(2) of Regulation No 207/2009 by finding that the relevant period had to be determined by reference to the date on which the opposition period began. The Board of Appeal should have calculated the relevant period by taking into account the date of the first publication of the international registration designating the European Union, namely 28 May 2006. The relevant period should therefore have run from 29 May 2001 to 28 May 2006.
40      As regards the consequences of the illegality arising out of the Board of Appeal’s error in determining the relevant period, which has been established in paragraph 39 above, it must be stated that, according to the case-law of the Court, that error is capable of resulting in the annulment of the contested decision only if it has an effect on the outcome of the present case (see, to that effect, judgments of 3 June 2015, Giovanni Cosmetics v OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraph 135 (not published), and of 28 January 2016, Novomatic v OHIM — Simba Toys (African SIMBA), T‑687/14, not published, EU:T:2016:37, paragraph 143).
41      In that regard, it is important to point out that the error regarding the relevant period means that documents which cannot be linked to the period as it should have been determined by the Board of Appeal, that is to say the period from 29 May 2001 to 28 May 2006, must be excluded. In the present case, only the certificate issued by Alimentaria Exhibitions and 10 of the 76 invoices from Arimpex Promoqualita and Chatka Hispania do not fall within that period.
42      Since the third part of the single plea in law relates to the Board of Appeal’s actual assessment as to whether the use of the earlier mark is genuine, the effect of the error relating to the relevant period on the outcome of the present case will be examined in the context of that part.
The second part of the single plea
43      By the second part of the single plea, the applicant complains, in essence, that the Board of Appeal erred in finding that the use of the earlier mark by Arimpex Promoqualita, before it became the proprietor of that mark, had been authorised by the then proprietor, Sadco France, and that the Board of Appeal consequently erred in finding that the evidence of use from Arimpex Promoqualita which predated 6 July 2004, was relevant for the purposes of examining whether there had been genuine use of the earlier mark.
44      EUIPO and the intervener dispute the applicant’s arguments.
45      Pursuant to Article 42(2) of Regulation No 207/2009, which is applicable to proceedings relating to international registrations designating the European Union, in accordance with Article 156(1) of that regulation, the proprietor of the mark applied for may request that the proprietor of the earlier mark furnish proof that the earlier mark has been put to genuine use.
46      In the first place, according to Article 15(2) of Regulation No 207/2009 (now Article 18(2) of Regulation 2017/1001), use of the trade mark with the consent of the proprietor is to be deemed to constitute use by the proprietor.
47      However, Article 17(6) of Regulation No 207/2009 (now Article 20(11) of Regulation 2017/1001) provides that the new proprietor of a trade mark which has been transferred may not invoke the rights arising from the registration of the EU trade mark as long as that transfer has not been entered in the EU trade marks register. It follows that, in the specific case where the mark has been transferred once or a number of times, Article 15(2) of Regulation No 207/2009 must be interpreted as meaning that the consent must come from the entity which was the proprietor of the mark at the time when that mark was used by a third party. That is not, moreover, called into question by the parties.
48      In the second place, it is for the proprietor of the earlier mark to furnish proof that he consented to the alleged use of that trade mark by a third party (see, to that effect, judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 44).
49      In that regard, it must be pointed out that, in view of the significance of its effect of extinguishing the exclusive right of the proprietor of an EU trade mark to use that mark, the consent must be expressed in such a way that an intention to renounce that right is unequivocally demonstrated. Such an intention generally follows from an express giving of consent. However, it is conceivable that consent may, in some cases, be inferred from circumstances and facts prior to, simultaneous with or subsequent to the use of the mark at issue by a third party which also unequivocally demonstrate that the proprietor has renounced his right (see judgment of 13 January 2011, Park v OHIM — Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 61 and the case-law cited; judgment of 16 April 2015, Matratzen Concord v OHIM — KBT (ARKTIS), T‑258/13, not published, EU:T:2015:207, paragraph 39).
50      Furthermore, in order to assess the evidential value of a document, it is necessary to check the likelihood and the veracity of the account it contains. It is necessary to take account of, in particular, 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 (judgment of 7 October 2015, Atlantic Multipower Germany v OHIM — Nutrichem Diät + Pharma (NOxtreme), T‑186/14, not published, EU:T:2015:754, paragraph 25).
51      In the present case, it is important to state that the Board of Appeal based its examination as to whether there had been genuine use of the earlier mark primarily on commercial documents from Chatka Hispania and Arimpex Promoqualita, although those two companies were not the proprietors of the earlier mark. Arimpex Promoqualita became the proprietor of the earlier mark in the course of the relevant period, the transfer of that mark having been registered on 14 December 2004.
52      It is important to point out that the Board of Appeal examined, in paragraphs 27 to 32 of the contested decision, whether Arimpex Promoqualita was authorised to use the earlier mark during the part of the relevant period when it was not the proprietor of that mark (‘the first part of the relevant period’). The Board of Appeal found, on two separate grounds, that that use had been authorised and, consequently, that the documents from Arimpex Promoqualita were relevant for the purposes of the examination as to whether there had been genuine use of the earlier mark.
53      First, in paragraphs 28 to 30 of the contested decision, the Board of Appeal referred to the case-law that where the proprietor of a trade mark maintains that use of that mark by a third party constitutes genuine use, he is claiming, by implication, that that use was made with his consent (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraphs 24 and 25). In paragraph 32 of the contested decision, the Board of Appeal then found, in accordance with that case-law, that ‘the opponent’ had consented to the use of the earlier mark by Arimpex Promoqualita.
54      Secondly, in paragraph 31 of the contested decision, the Board of Appeal found that, according to the terms of the protocol of agreement of 6 July 2004, Arimpex Promoqualita was the distributor, in Spain, of crab-based products bearing the mark CHATKA and had been since 1996. It took the view that, as the agreement was signed and dated, it could not be called into question.
55      The applicant submits that the Board of Appeal erred in finding that Arimpex Promoqualita’s use of the earlier mark, prior to 6 July 2004, had been authorised by Sadco France, the proprietor at the time.
56      In the first place, the applicant criticises the Board of Appeal for finding that it could infer from the intervener’s ability to prove that the earlier mark had been used by Arimpex Promoqualita that the intervener had consented to that use, although the intervener was not the proprietor of the mark at the time.
57      In that regard, it must be noted that it is apparent from paragraphs 28 and 32 of the contested decision that the Board of Appeal stated that the fact that the ‘opponent’ before EUIPO, that is to say, the intervener, was able to produce Arimpex Promoqualita’s commercial documents proved that it had consented to Arimpex Promoqualita’s use of the earlier mark.
58      It is common ground that neither Arimpex Promoqualita, which initially filed the notice of opposition, nor the intervener, which succeeded it in the context of the opposition proceedings, was the proprietor of the mark during the first three years of the relevant period, as the transfer of that mark to Arimpex Promoqualita was registered on 14 December 2014. It is also common ground that only Sadco France, the proprietor of the mark during the first part of the relevant period, could authorise the use of the earlier mark during that period.
59      Furthermore, it must be stated that Arimpex Promoqualita was the third party which used the mark during the relevant period and was, following the transfer of the earlier mark, the proprietor of the mark at the time of the notification of the opposition. It follows that the original opponent, namely Arimpex Promoqualita, was necessarily in possession of its own invoices, which were issued when it was a third party with regard to the earlier mark. Consequently, the fact that the intervener, to which Arimpex Promoqualita transferred the earlier mark in the course of the proceedings, has been able to provide Arimpex Promoqualita’s invoices is not capable of proving that it consented to Arimpex Promoqualita’s use of the earlier mark, let alone of proving that the proprietor at the time, namely Sadco France, consented to that use.
60      Accordingly, in the light of the specific circumstances of the present case, which are connected with the successive transfers of the earlier mark, it must be held that the Board of Appeal incorrectly applied the case-law set out in paragraph 53 above, in finding that Arimpex Promoqualita’s use of the earlier mark had been authorised. It must, moreover, be stated that even EUIPO declared, at the hearing, that that case-law was not applicable in the present case.
61      However, as stated in paragraph 54 above, the Board of Appeal also based its assessment of whether Arimpex Promoqualita’s use of the earlier mark had been authorised on the protocol of agreement of 6 July 2004. Consequently, the Board of Appeal’s error, which has been established in paragraph 60 above, is capable of calling into question the Board of Appeal's assessment only if the Board of Appeal also erred in finding that that protocol of accord was sufficient to establish that Sadco France had consented to the use of the earlier mark, a matter which it is appropriate to examine hereafter.
62      In the second place, the applicant thus submits that the Board of Appeal erred in finding, in paragraph 31 of the contested decision, that the protocol of agreement of 6 July 2004, which was drawn up in the course of the relevant period and in tempore suspecto, constituted sufficient proof of the prior consent of the mark’s proprietor.
63      In that regard, it is important to point out, first, that the protocol of agreement of 6 July 2004 states that Sadco France ‘has trade relationships with the Spanish company Arimpex Promoqualita ..., his distributor in Spain of Royal Russian Crab under the trademark [Chatka] since 1996’.
64      Secondly, the protocol of agreement provides that, ‘considering the ongoing unfair competition and denigrating acts that Arimpex Promoqualita, S.A. is suffering in the Spanish territory by companies without any legitimate right to the trademark CHATKA, both companies emphasise their willing to formalize shortly the partial transfer of the aforementioned international trademark in favour of Arimpex Promoqualita, within a wider framework of a mutual collaboration in the Spanish territory’.
65      As the Board of Appeal stated in paragraph 31 of the contested decision, the protocol of agreement of 6 July 2004 is signed and dated.
66      As regards, first, the finding that the protocol of agreement of 6 July 2004 is signed, it is important, first of all, to point out that Sadco France, the proprietor of the earlier mark, signed that protocol whereas it stated clearly that Arimpex Promoqualita had, since 1996 been Sadco France’s distributor in Spain of the goods to which the earlier mark was affixed. Therefore, the protocol of agreement of 6 July 2004 unequivocally demonstrates that Sadco France renounced its exclusive right and therefore unequivocally shows its consent to Arimpex Promoqualita’s use of the earlier mark as from 1996.
67      Next, it is also important to point out that the protocol of agreement of 6 July 2004 was signed by both Arimpex Promoqualita and Sadco France, with the result that the two signatories confirmed the account of the facts set out in that protocol. The signature of that protocol by the two entities thus makes its content more credible.
68      Lastly, it is important to point out that the protocol was signed in a pre-litigation context, as is apparent from the actual wording of that protocol, as reproduced in paragraph 64 above. That pre-litigation context therefore explains that Arimpex Promoqualita and Sadco France needed to record the nature of their relationship in writing and that they paid attention to ensure that it reflected their understanding of the situation.
69      As regards, secondly, the date of the protocol of agreement of 6 July 2004, it is important to point out that that protocol was signed more than two years before the opposition proceedings were brought on 27 February and around eight years before the applicant requested, on 19 April 2012, that proof of use be provided, with the result that the reason for the signature of the protocol of agreement of 6 July 2004 could not have been the necessity of producing evidence of use before EUIPO.
70      It is therefore apparent from that evidence that the Board of Appeal did not make an error of assessment in finding that the protocol of agreement of 6 July 2004 proved that the use of the earlier mark by Arimpex Promoqualita prior to 6 July 2004 had been authorised and that the evidence of use from Arimpex Promoqualita was relevant to the examination of whether there had been genuine use of the earlier mark.
71      None of the applicant’s arguments is capable of calling that finding into question.
72      In the first place, the fact that the protocol of agreement of 6 July 2004 was signed subsequent to the use of the earlier mark has no bearing on the probative value of that protocol in establishing Sadco France’s consent. It is apparent from the case-law set out in paragraph 53 above, that consent may be proved by evidence which dates from after the use of the mark by the third party.
73      In the second place, the applicant’s arguments that the protocol of agreement of 6 July 2004 was signed in tempore suspecto are not capable of calling into question the reliability and credibility of that protocol.
74      In that regard, it must be pointed out that the applicant does not dispute the authenticity of the protocol of agreement of 6 July 2004, but only the reliability of and credibility of the content thereof.
75      According to the applicant, the protocol of agreement of 6 July 2004 was signed in tempore suspecto, inasmuch as Arimpex Promoqualita was threatened by infringement proceedings on the part of Chatka International, the applicant’s predecessor at the time of the facts. Although the intervener disputes that claim, it must be stated that it is, in any event, apparent from the terms in which the protocol of agreement of 6 July 2004 is couched, as set out in paragraph 64 above, that Arimpex Promoqualita was in a pre-litigation situation at the time when that protocol was signed.
76      However, contrary to what the applicant submits, those circumstances are not such as to call into question the reliability and credibility of the protocol of agreement.
77      First of all, as is apparent from paragraphs 65 to 70 above, the reliability and credibility of the protocol of agreement of 6 July 2004 is borne out by the fact that that protocol is signed both by Arimpex Promoqualita and by Sadco France and that it is dated.
78      It must be stated that, whereas the protocol of agreement is a concrete piece of evidence which clearly establishes that Sadco France consented to Arimpex Promoqualita’s use of the earlier mark, the applicant does not provide any concrete evidence that is capable of calling its reliability or credibility into question and bases its reasoning solely on assumptions.
79      In any event, it must be pointed out that, by signing the protocol of agreement of 6 July 2004, Sadco France gave up the option of taking action against any unauthorised use of the earlier mark by Arimpex Promoqualita and claiming damages. The declaration would thus have been made contrary to the interests of Sadco France, if, as the applicant submits, Arimpex Promoqualita had not been authorised to use the earlier mark before the signature of the protocol of agreement of 6 July 2004. Consequently, the fact that Sadco France signed that protocol proves that its content is particularly credible.
80      Secondly, as EUIPO rightly submits, the fact that it is apparent from the terms in which the protocol of agreement of 6 July 2004 is couched that the reason for the transfer of the earlier mark was the necessity of providing Arimpex Promoqualita with a title that could be invoked against its competitors, does not mean that the use which was made of the earlier mark before it was transferred took place without Sadco France’s consent.
81      Lastly, as EUIPO rightly points out, it is important to state, first, that it is not apparent from the case-file before the Court that Sadco France opposed Arimpex Promoqualita’s use of the earlier mark in the period from 1996 to 2004, even though that use was a matter of common knowledge, as is shown by the certificate of the Official Chamber of Commerce and Industry of Madrid, which is among the evidence of use provided by the intervener. That document, dated 8 July 2004, certifies that ‘the trade mark Chatka has been known for distinguishing royal Russian crab in the Madrid marketplace since 1997’ and that it is ‘associated with Chatka Hispania ... and Arimpex Promoqualita ... in terms of distribution and supply’. Secondly, the transfer of the earlier mark by Sadco France to Arimpex Promoqualita shows that relations between the two entities were not contentious. Although those facts are not, by themselves, capable of proving Sadco France’s consent, they bear out the content of the declaration in the protocol of agreement of 6 July 2004 and thus strengthen its credibility and reliability.
82      Furthermore, contrary to what the applicant submits, the fact that Sovrybflot granted a licence, in 1992, to Sadco France to use national marks containing the element ‘chatka’ in various territories, with the exception of Spanish territory, is not capable of calling into question the Board of Appeal’s finding that Sadco France consented to Arimpex Promoqualita’s use of the earlier mark. It is common ground that Sadco France was the proprietor of the earlier mark during the first part of the relevant period and consequently that it was able to authorise the use of that mark by a third party.
83      In the third place, contrary to what the applicant submits, it was not, in the present case, necessary for solid and objective evidence showing the commercial relationship between Sadco France and Arimpex Promoqualita, such as, for example, a licence agreement, purchase orders or exchanges of correspondence, to be provided. As has been stated in paragraphs 65 to 82 above, the protocol of agreement of 6 July 2004, which is a concrete piece of evidence the content of which is credible, is sufficient to prove that Sadco France waived its exclusive right in the earlier mark.
84      Furthermore, the applicant’s argument that the Board of Appeal erred in finding that the protocol of agreement of 6 July 2004 could not be called into question because it was signed and dated must be rejected since the applicant has not proved that that document is unreliable.
85      Consequently, it is apparent from all of the findings set out in paragraphs 62 to 81 above that the applicant’s arguments are not capable of calling into question the reliability and credibility of the protocol of agreement of 6 July 2004 or the fact that the earlier mark was, for the purposes of Articles 15(2) and 42(2) of Regulation No 207/2009, used with the consent of Sadco France. Furthermore, the error which has been established in paragraph 60 above is not capable of calling into question the taking into account of the evidence of use from Arimpex Promoqualita or of leading to the annulment of the contested decision.
86      It follows that the Board of Appeal did not make an error of assessment in finding that Sadco France’s consent to Arimpex Promoqualita’s use of the earlier mark during the relevant period had been proved and in taking the evidence of use from Arimpex Promoqualita into account.
87      The second part of the single plea in law must therefore be rejected as unfounded.
The third part of the single plea
88      By the third part of the single plea, the applicant submits that the Board of Appeal erred in finding that the evidence provided by the intervener proved that there had been genuine use of the earlier mark.
89      EUIPO and the intervener dispute the applicant’s arguments.
90      It must be borne in mind that Article 156(1) of Regulation No 207/2009 provides that international registrations designating the European Union are to be subject to opposition in the same way as published EU trade mark applications.
91      As is apparent from recital 10 of Regulation No 207/2009, the EU legislature considered that there was no justification for protecting an earlier trade mark, except where it was actually used. In keeping with that recital, Article 42(2) and (3) of Regulation No 207/2009 provides that the applicant for an EU trade mark may request proof that the earlier mark has been put to genuine use in the territory in which it is protected during the relevant period.
92      Under Rule 22(3) of Commission Regulation No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 10(3) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Commission Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1), proof of use must relate to the place, time, extent and nature of use of the earlier mark.
93      According to settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of that regulation and of 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 is to restrict the number of conflicts between two marks, unless there is 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 the commercial success of an undertaking or to review its economic strategy, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see judgments of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 38 and the case-law cited, and of 17 December 2015, Bice International v OHIM — Bice (bice), T‑624/14, not published, EU:T:2015:998, paragraph 35 and the case-law cited).
94      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 (judgment of 17 December 2015, bice, T‑624/14, not published, EU:T:2015:998, paragraph 36; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (judgment of 17 December 2015, bice, T‑624/14, not published, EU:T:2015:998, paragraph 36; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
95      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 (see judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 34 and the case-law cited, and of 17 December 2015, bice, T‑624/14, not published, EU:T:2015:998, paragraph 37 and the case-law cited).
96      As regards the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
97      In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of that case. That assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under the trade mark may be offset by a high intensity of use or a period of very regular use of that trade mark or vice versa. In addition, the turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. Accordingly, the EU judicature has stated that use of the earlier mark need not always be quantitatively significant in order for it to be deemed genuine (see judgment of 17 December 2015, bice, T‑624/14, not published, EU:T:2015:998, paragraph 39 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 39).
98      However, genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgment of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47).
99      Lastly, it cannot be ruled out that an accumulation of evidence may allow the necessary facts to be established, even though each of those pieces of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 30 September 2014, Scooters India v OHIM — Brandconcern (LAMBRETTA), T‑132/12, not published, EU:T:2014:843, paragraph 25 and the case-law cited).
100    It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that the earlier mark had been put to genuine use.
101    For the purposes of the examination as to whether there had been genuine use of the earlier mark, the intervener filed the following evidence of use, a list of which is set out in the contested decision:
–        a certificate issued by the Official Chamber of Commerce and Industry of Madrid (Spain);
–        price lists from 2002 to 2005 in respect of goods covered by the trade mark CHATKA;
–        around 45 orders, dated between 2004 and 2005, from clients in Spain;
–        around 75 invoices to clients in Spain dated between 30 November 2001 and 23 October 2006;
–        an extract from the website ‘http://www.chatka.com’;
–        a certificate issued by Alimentaria Exhibitions, dated 2006;
–        product labels;
–        a catalogue.
102    It is important to state at the outset that it is apparent from paragraphs 33 to 46 of the contested decision that the Board of Appeal carried out a global assessment of the evidence of use of the earlier mark, which the intervener had provided, by examining each of the four criteria identified in Rule 22(3) of Regulation No 2868/95, namely the place, time, extent and nature of use of the earlier mark in turn. It thus found, in essence, that the evidence of use proved that there had, during the relevant period, been sufficient use in Spain of the sign protected by the earlier mark.
103    As regards the place of use, the Board of Appeal found, in paragraph 36 of the contested decision, that the evidence certainly showed that the earlier mark had been used in Spain.
104    As regards the duration of use, the Board of Appeal pointed out, in paragraphs 33 to 35 of the contested decision, first, that the intervener had to furnish proof of genuine use of its mark during the relevant period and, secondly, that most of the evidence provided by the intervener was dated and fell within the relevant period.
105    As regards the nature of use, the Board of Appeal found, in paragraphs 42 to 45 of the contested decision, that the evidence, namely the catalogues and product labels, showed that the earlier mark had been used, as registered or in a slightly different form, to identify the goods ‘preserved crab’.
106    As regards the extent of use, the Board of Appeal found, in paragraph 37 of the contested decision, that the evidence of use provided by the intervener included around 75 invoices drawn up within the relevant period, representing a total of more than 12 000 units, and orders from several companies, representing approximately 5 890 units ordered.
107    The Board of Appeal accepted, in paragraph 39 of the contested decision, that, taking into account the documents drawn up in the name of Arimpex Promoqualita, the invoices and order forms showed a really significant volume of sales. It also pointed out, in paragraph 40 of the contested decision, that preserved crab was a luxury gastronomic product and not an everyday consumer product.
108    The Board of Appeal concluded, in paragraph 41 of the contested decision, after pointing out that the sale of more than 12 000 units was important and that the sales were constant, that the intervener had provided sufficient indications concerning the earlier mark’s extent of use.
109    It should be noted at the outset, first, that, as has been held in paragraph 39 above, the Board of Appeal erred in finding that the relevant period ran from 29 November 2001 to 28 November 2006 when that period should have run from 29 May 2001 to 28 May 2006. The error as regards the determination of the relevant period means that the following documents included in the evidence of use provided by the intervener must be excluded:
–        the certificate issued by Alimentaria Exhibitions, which refers to an exhibition that took place in 2006, without stating the exact day or month in which that exhibition was held;
–        10 of the 76 invoices provided by the intervener, showing, taken together, the sale of 732 tins.
110    In that regard, it must be stated, as regards the certificate referred to in paragraph 109 above, that it is not apparent from the contested decision that the Board of Appeal based its assessment as to whether the use of the earlier mark was genuine specifically on that document, with the result that its exclusion necessarily has no bearing on the outcome of the present case.
111    As regards the 10 invoices that postdate 28 May 2006, it is apparent from paragraphs 37 to 41 of the contested decision that the Board of Appeal took them into account, together with the other invoices, for the purposes of assessing the criterion of the ‘extent of use’ of the earlier mark. The influence of the Board of Appeal’s error as regards the determination of the relevant period will therefore be examined in conjunction with the applicant’s arguments seeking to call into question the Board of Appeal's assessment of the criterion of the extent of use.
112    Secondly, it is important to point out that the evidence of use, provided by the intervener, consists mainly of commercial documents from the undertakings Chatka Hispania and Arimpex Promoqualita.
113    In the first place, as regards the place and duration of use, it is important to state that the applicant does not call into question the fact that the mark has been used in Spain or the fact that the evidence of use, taken as a whole, proves that the earlier mark has been used for at least a part of the relevant period. It is, however, important to state that, contrary to what the applicant submits and as has been held in paragraph 85 above, the evidence from Arimpex Promoqualita which predates 6 July 2004 is relevant for the purposes of examining whether there has been genuine use of the earlier mark.
114    In the second place, as regards the extent of use and, in particular, the applicant’s arguments that the sales volumes established by the order forms and invoices are too low, it is necessary to bear in mind the case-law set out in paragraph 97 above, according to which, first, a low volume of goods marketed under the trade mark may be offset by a high intensity of use or a period of very regular use of that trade mark or vice versa. Secondly, the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the characteristics of the goods at issue.
115    In the present case, it is important to note at the outset, first, as has been indicated in paragraph 106 above, that the Board of Appeal based its assessment of the extent of use of the earlier mark on 76 invoices, 36 of which were drawn up by Arimpex Promoqualita and 40 of which were drawn up by Chatka Hispania, which together represent a total of more than 12 000 tins. It also took into account the order forms addressed to Arimpex Promoqualita and Chatka Hispania, which together represent a total of approximately 5 890 tins.
116    Secondly, as has been stated in paragraphs 109 and 111 above, of the 76 invoices provided by the intervener, 10 were issued after 28 May 2006, that is to say outside of the relevant period as it should have been determined by the Board of Appeal. Those 10 invoices, which show the sale of 732 tins, could not therefore be taken into account by the Board of Appeal. Of the 10 invoices that postdate 28 May 2006, six invoices, showing the sale of 396 tins, are from Arimpex Promoqualita and four invoices, showing the sale of 336 tins, are from Chatka Hispania.
117    In that context, first, as regards the invoices and order forms from Arimpex Promoqualita, it is important to point out that it is apparent from the protocol of agreement of 6 July 2004 that Arimpex Promoqualita had been the distributor of the goods covered by the earlier mark since 1996. Furthermore, Arimpex Promoqualita became the proprietor of the mark in the course of the relevant period, as the transfer of the mark was registered at WIPO on 14 December 2014. Consequently, contrary to what the applicant submits and as has been held in paragraph 85 above, the Board of Appeal did not err in taking the invoices issued by Arimpex Promoqualita into account.
118    It must therefore be held, in the light of the findings made in paragraphs 116 and 117 above, that 30 of the invoices from Arimpex Promoqualita provided by the intervener, attesting to the sale of approximately 3 700 tins, were relevant for the purposes of examining whether there had been genuine use of the earlier mark. Furthermore, it is apparent from EUIPO’s case-file that the intervener provided 28 order forms dating from 2004 and 2005, which are addressed to Arimpex Promoqualita and represent an order volume of approximately 6 000 tins of preserved crab.
119    First of all, the 30 invoices issued by Arimpex Promoqualita between 30 November 2001 and 28 May 2006 make it possible to hold that the goods were marketed in a relatively regular manner over a period of four years and six months, that is to say over most of the relevant period as it should have been determined by the Board of Appeal, namely the period from 29 May 2001 to 28 May 2006.
120    Next, the 28 order forms addressed to Arimpex Promoqualita in the period 2004 to 2005, which relate to approximately 6 000 tins, also show that the mark was used regularly during the last two years of the relevant period and was used with a sufficiently high degree of intensity for it to be held that there has been genuine use of the earlier mark.
121    Lastly, as EUIPO rightly points out, the invoices provided by the intervener were addressed to different undertakings, which shows, moreover, that the earlier mark was used publicly and outwardly and not solely within the undertaking which owned the earlier trade mark or within a distribution network owned or controlled by that undertaking (see, to that effect, judgment of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 87).
122    Furthermore, as the Board of Appeal rightly pointed out in paragraph 40 of the contested decision, preserved Russian king crab cannot be regarded as an everyday consumer product, but, on the contrary, as a gastronomic product. It is apparent from EUIPO’s case-file (see, in particular, the invoices provided by the intervener) that the wholesale price of preserved king crab — which varies between EUR 12 and 15 for a quantity of 185 grams — is high for small quantities. When sold at retail, the price for the consumer could, according to the intervener, even reach between EUR 25 and 30.
123    Moreover, as Russian king crab is a specific product from a limited geographical area, it must be regarded as forming a niche market.
124    Consequently, according to the case-law set out in paragraphs 95 to 97 above, the findings set out in paragraphs 113 to 121 above are capable of showing that a sales volume of around 3 700 units over a period of five years, plus an order volume of around 6 000 units over two years, although relatively low, cannot be considered to be token in nature.
125    The sales effected by Arimpex Promoqualita constitute use which is objectively such as to create or preserve an outlet for the goods in question, the commercial volume of which, in relation to the period and the regular nature of the sales, the diversity in the addressees of the invoices, the gastronomic and specific nature of the goods is not so low that it may be concluded that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.
126    Secondly, as regards the invoices and order forms from Chatka Hispania, it is important to point out, first, that the Board of Appeal did not in the contested decision examine whether Chatka Hispania was authorised to use the earlier mark during the relevant period, even though the applicant had disputed that point before the Board of Appeal. Moreover, EUIPO confirmed this finding at the hearing.
127    Second, the applicant submits that Chatka Hispania’s use of the earlier mark until 2004 did not constitute use by the proprietor of the mark or use with the proprietor’s consent. Although the applicant admits that Chatka Hispania was authorised to use the earlier mark as from 12 January 2005, the date on which the licence granted to it by Arimpex Promoqualita became effective, it submits, in essence, that, prior to that date, Chatka Hispania did not have any legitimate right or any commercial relationship with the proprietor of the earlier mark.
128    In that regard, it is important to state that, even if the Board of Appeal were not entitled to base its decision on any of the evidence from Chatka Hispania, it is apparent from the findings made in paragraphs 117 to 126 above that the evidence of use from Arimpex Promoqualita alone, in particular the invoices and order forms, was sufficient for it to be held that the criterion of the extent of use was satisfied.
129    In any event, it must be pointed out that, in paragraph 15 of the contested decision, the Board of Appeal identified Chatka Hispania as being the ‘licensee [of Arimpex Promoqualita]’.
130    Consequently, assuming, as the applicant, moreover, admits, that the Board of Appeal was entitled to take into account the documents from Chatka Hispania that postdate 12 January 2005, the date on which the licence over the earlier mark granted to Chatka Hispania became effective according to the extract from the database ‘Romarin’, 39 of the invoices provided by the intervener, representing a sales volume of around 4 500 tins, would be relevant for the purposes of examining whether there had been genuine use of the earlier mark. It is apparent from the findings set out in paragraphs 117 to 125 above that, a fortiori, such a volume would be sufficient to prove genuine use of the earlier mark.
131    It therefore follows from paragraphs 114 to 130 above that the relevant evidence of use provided was sufficient to establish the extent of use of the earlier mark. Furthermore, even though the Board of Appeal did not correctly determine the relevant period and based its assessment on evidence which was not relevant for the purposes of establishing whether the earlier mark had been used by the proprietor of that mark or by an authorised third party, those errors are not such as to lead to the annulment of the contested decision.
132    In the third place, as regards the assessment of the nature of use of the earlier mark, it must be pointed out that the Board of Appeal found, in essence, that the catalogues and product labels were sufficient to prove that the sign protected by the earlier mark had been used, as registered or in a slightly different form, to identify the goods ‘preserved crab’. Furthermore, the Board of Appeal took the invoices, order forms and price lists provided by the intervener into account for the purposes of finding that the earlier mark had been used as a word mark.
133    First, the applicant criticises the Board of Appeal for basing its assessment as to whether there had been genuine use on the labels, although those labels, which came from Chatka Hispania and dated from 2004, did not constitute proof of genuine use which came from the proprietor of the mark or an authorised third party. In that regard, it is sufficient to state that the evidence of use provided by the intervener also included a label stating that the tinned food was distributed by Arimpex Promoqualita (‘the label from Arimpex Promoqualita’). That label includes the words ‘best before end 2005’.
134    In the first place, as the applicant confirmed in its response to the written questions put to it by means of a measure of organisation of procedure, the tinned food is produced at the latest two years before the expiry date. It must be held that the label from Arimpex Promoqualita, which mentions an expiry date of ‘end 2005’, would have been issued at the latest at the end of 2003, that is to say during the relevant period.
135    In the second place, as has been held in paragraph 85 above, Arimpex Promoqualita was authorised by Sadco France to use the mark in 2003.
136    It therefore follows that the label from Arimpex Promoqualita can be linked to the relevant period and, consequently, that it is sufficient to prove that the sign was used during that period.
137    Secondly, the applicant criticises the Board of Appeal for having relied on the catalogue, submitted as proof of use No 10, although that document is not dated.
138    In that regard, it is sufficient to state that, although an undated document has no evidential value in itself, it is, however, capable of supporting other evidence (see, to that effect, judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 53). Consequently, even though the catalogue submitted as proof of use No 10 is undated and thus has no evidential value, the Board of Appeal did not make an error of assessment by taking that document into account for the purposes of examining the nature of use, since that document is capable of supporting the label from Arimpex Promoqualita in proving that the earlier sign has been used.
139    Moreover, as the Opposition Division rightly pointed out, the 2004 price list proves that the sign was used during the relevant period. That document, on which the name and address of Arimpex Promoqualita and the date 2004 appear, reproduces the product labels and, consequently, the sign itself.
140    In that regard, it is important to point out that, since the Board of Appeal did not contradict that finding and in view of the continuity in terms of functions between the Opposition Division and the Board of Appeal, the Board of Appeal therefore endorsed the Opposition Division’s view (see, to that effect, judgments of 10 July 2006, La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, EU:T:2006:197, paragraphs 57 and 58, and of 21 November 2007, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, not published, EU:T:2007:352, paragraph 64).
141    It is thus apparent from paragraphs 133 to 140 above that the Board of Appeal did not make an error of assessment in finding that the evidence of use provided was satisfactory with regard to the criterion of the nature of use.
142    Consequently, it must be held, in the light of the findings set out in paragraphs 113, 131 and 141 above, that the Board of Appeal was right in finding, after carrying out a global assessment of the evidence of use provided by the intervener, that the earlier mark had been put to genuine use during the relevant period.
143    Furthermore, none of the other arguments put forward by the applicant is capable of calling the Board of Appeal’s findings into question.
144    In the first place, as regards the applicant’s arguments seeking to dispute the evidential value of each of the various items of evidence, it is important to point out that, according to the case-law set out in paragraph 97 above, the evidence of use of the earlier mark must be assessed globally, taking into account all the relevant factors of the particular case. None of the applicant’s arguments is capable of calling into question the Board of Appeal’s global assessment of the evidence of use.
145    More specifically, as regards the applicant’s claim that ‘[t]he license granted to Chatka Hispania ... only establishes that a license existed starting as from 12 January 2005’, it is important to point out that, to the extent that it disputes the taking into account of the evidence from Chatka Hispania that predates 12 January 2005, it has been held that the evidence from Arimpex Promoqualita is sufficient to prove that there has been genuine use of the earlier mark.
146    Next, as regards the applicant’s argument that the Board of Appeal was not entitled to take into consideration the price lists dating from 2002, 2003 and 2004 and the invoices issued by Arimpex Promoqualita prior to 6 July 2004, it is sufficient to point out that, as has been held in paragraph 85 above, the Board of Appeal did not make an error of assessment in finding that those documents were relevant.
147    In addition, as regards the applicant’s argument that there was no significant advertising in respect of the earlier mark, it is sufficient to state that, contrary to what the applicant seems to claim, the requirement that the mark be used publicly and outwardly does not mean that it must necessarily be advertised. Furthermore, as pointed out in paragraph 121 above, the fact that the invoices provided by the intervener were addressed to different persons is sufficient to show that the earlier mark was used publicly and outwardly.
148    Lastly, as regards the certificate from the Official Chamber of Commerce and Industry of Madrid, it must be stated that the applicant does not show in what way the content of that document is unreliable and could not be taken into account by the Board of Appeal. Moreover, as regards the applicant’s argument that the screen shots from the website ‘http://www.chatka.com’ are not dated, it must be stated, in addition to the fact that the evidence has been examined globally, first, that it is not apparent from the contested decision that the Board of Appeal based its reasoning specifically on that document and, secondly, that that document could be taken into account for the purposes of supporting the other evidence of use provided by the intervener.
149    In the second place, contrary to what the applicant, in essence, submits, the fact that the goods have been marketed in large stores, such as El Corte Inglés or Carrefour, does not call into question the genuine nature of the use of the earlier mark. First, that fact does not call into question the finding that preserved crab is a product which is gastronomic in nature, all the more given that, as the intervener points out, those stores generally provide specific shelves for gourmet goods. Secondly, the mere fact that a number of large stores market the preserved crab covered by the earlier mark and likewise the contention that the Spanish market represents more than 46 million consumers do not justify the view that the sale of more than 3 700 tins and the ordering of around 6 000 of those tins are token in nature. As has been stated in paragraph 93 above, the purpose of the requirement that the earlier mark must have been put to genuine use is not to assess the commercial success of an undertaking or to review its economic strategy, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks, but solely to ensure that the earlier mark has actually been used.
150    In the third place, as regards the applicant’s argument that Sadco France was an important company which operated in many European countries and had significant means, it is important to point out, first, that it is common ground that the earlier mark was not directly used by Sadco France. Secondly, the applicant does not furnish any evidence which is capable of showing that Sadco France was an important undertaking in Spain, the only territory which has to be taken into consideration for the purposes of the assessment as to whether there was genuine use.
151    In the fourth place, as regards the argument that the Board of Appeal erred in being sensitive to the opponent’s difficulty in gathering evidence of use several years after the relevant period, it must be stated, first, that that claim is not apparent from paragraph 29 of the contested decision, to which the applicant refers. Secondly, the applicant does not furnish any arguments or particulars that are capable of establishing that the Board of Appeal took that factor into account in the analysis of the evidence of use.
152    In the light of the findings set out in paragraphs 102 to 151 above, the Board of Appeal was right in finding that the use of the earlier mark during the relevant period was genuine. It follows that the third part of the single plea is unfounded. Furthermore, it is apparent from the findings set out in paragraphs 85 and 131 above, that the Board of Appeal’s error in determining the relevant period, which was established in the context of the first part of the single plea, has no bearing on the outcome of the case and is not capable of resulting in the annulment of the contested decision. Consequently, the single plea in law must be rejected and the action must be dismissed in its entirety.
Costs
153    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.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Walfood SA to pay the costs.
Tomljenović
Bieliūnas
Marcoulli
Delivered in open court in Luxembourg on 25 April 2018.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.