JUDGMENT OF THE GENERAL COURT (Third Chamber)
14 December 2022 (*)
(EU trade mark – Invalidity proceedings – International registration designating the European Union – Figurative mark eurol LUBRICANTS – Earlier national word mark EUROLLUBRICANTS – Proof of genuine use of the earlier mark – Articles 15 and 57 of Regulation (EC) No 207/2009 (now Articles 18 and 64 of Regulation (EU) 2017/1001) – Use with the trade mark proprietor’s consent – No alteration of distinctive character – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001))
In Case T‑636/21,
Eurol BV, established in Nijverdal (Netherlands), represented by M. Driessen and G. van Roeyen, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
August Wolfgang Pernsteiner, residing in Feldkirchen an der Donau (Austria), represented by J. Öhlböck, lawyer,
THE GENERAL COURT (Third Chamber),
composed, at the time of the deliberations, of G. De Baere, President, K. Kecsmár and S. Kingston (Rapporteur), Judges,
Registrar: E. Coulon,
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, Eurol BV, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 July 2021 (Case R 2403/2020-2) (‘the contested decision’).
Background to the dispute
2        On 7 May 2014, the applicant designated the European Union for international registration No 1219171 in respect of the following figurative sign:
3        The goods in respect of which protection in the European Union was sought are in, inter alia, Class 4 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Industrial oils and greases; lubricants; lubricating oils and fats; oils, especially oils for motor vehicles, including synthetic oils for motor vehicles, semi-synthetic oils for vehicles, oils for motorcycles, tractor oil, truck oil, oil for ship engines, oil for machinery and installations, racing oils, mono-grade oil, diesel oil, transmission oil, gearbox oil, power steering oils, synthetic transmission oils, two stroke oil, mono-grade oils, mineral based oils, air conditioning oils, chainsaw oils, vacuum pump oils, hydraulic and bio-hydraulic oils in so far in this class, gear case oils, oils for turbines; metal treatment means with lubricating properties; metal treatment liquids in the form of oils; oils for metal treatment; cutting oils for industrial metal treatment; industrial cooling lubricants; food grade oils; non-toxic oils including non-toxic grease for food machinery, compressor oils, including synthetic compressor oils, non-chemical additives for fuels, lubricants and greases, including non-chemical antifreeze additives; chain oils; high temperature lubricants; guide way oils; heat transfer oils; paraffinic oils’.
4        The application for the international registration designating the European Union was published in Community Trade Marks Bulletin
No 2014/195 of 17 October 2014.
5        On 26 March 2019, the intervener, August Wolfgang Pernsteiner, filed with EUIPO an application for a declaration of invalidity of the effects of the international registration designating the European Union in respect of all of the goods referred to in paragraph 3 above.
6        The application for a declaration of invalidity was based on the earlier Austrian word mark EUROLLUBRICANTS, which was filed on 1 March 1995 and registered on 8 August 1995 under the number 159248 and covers goods in Class 4.
7        The grounds for the application for a declaration of invalidity were those set out in Article 60(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), read in conjunction with Article 8(1)(a) and (b) of that regulation.
8        Following a request made by the applicant before the Board of Appeal, and pursuant to Article 64(2) and (3) of Regulation 2017/1001, EUIPO invited the intervener to furnish proof of genuine use of the earlier mark which had been relied on in support of the application for a declaration of invalidity. The intervener complied with that request within the time limit set.
9        On 20 October 2020, the Cancellation Division upheld the application for a declaration of invalidity on the basis of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation. The Cancellation Division found that it was not necessary to examine the ground based on Article 8(1)(a) of that regulation.
10      On 16 December 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
11      By the contested decision, the Second Board of Appeal dismissed the appeal. In essence, it found, first, that the intervener had proved that the earlier mark was valid at the time when the application for a declaration of invalidity was filed and at the time when the contested decision was adopted. Secondly, it found that the intervener had proved genuine use of the earlier mark in connection with the relevant goods. In particular, the Board of Appeal found that the earlier mark had been used by third parties with the intervener’s consent; that that mark had been used in forms which did not alter the distinctive character of that mark in the form in which it had been registered; and that the evidence submitted by the intervener sufficiently proved that the use of the earlier mark was genuine. Furthermore, the Board of Appeal expressly referred to and endorsed the Cancellation Division’s reasoning relating to the genuine use of the earlier mark. Thirdly, the Board of Appeal found that there was, for the purposes of Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion on the part of a significant part of the relevant public.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order the intervener and EUIPO to pay the costs.
13      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 64(2) and (3) of Regulation 2017/1001, read in conjunction with Article 47(2) and (3) and Article 18(1) and (2) of that regulation, in that the Board of Appeal erred in finding that the earlier mark had been put to genuine use, and, secondly, infringement of Article 8(1)(b) of Regulation 2017/1001, in that the Board of Appeal erred in finding that there was a likelihood of confusion on the part of the relevant public.
Preliminary observations
The application ratione temporis of the regulations on the European Union trade mark
15      Given the date on which the application for the international registration designating the European Union was filed, namely 7 May 2014 (see paragraph 2 above), which is decisive for the purposes of identifying the applicable substantive law (see, to that effect, judgments of 30 June 2021, Zoom v EUIPO – Facetec (ZOOM), T‑204/20, not published, EU:T:2021:391, paragraph 17 and the case-law cited, and of 8 September 2021, SBG v EUIPO – VF International (GEØGRAPHICAL NØRWAY), T‑458/20, not published, EU:T:2021:543, paragraphs 1 and 13 and the case-law cited), the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which has been replaced by Regulation 2017/1001.
16      Consequently, so far as concerns the substantive rules, the references to the provisions of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the applicant, EUIPO and the intervener in their written pleadings must be understood as referring to the corresponding provisions of Regulation No 207/2009.
17      Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.
The general reference to the annexes and to the written submissions filed before EUIPO
18      In addition to the arguments which it puts forward in the application, the applicant refers generally to the written submissions which it filed before EUIPO, in particular its notice of appeal of 16 December 2020 against the Cancellation Division’s decision (Annex A.3), and requests that all the arguments and evidence which it submitted in the course of the proceedings before the Cancellation Division and the Board of Appeal be regarded as also having been submitted in the context of the present action.
19      In that regard, it must be borne in mind that, even though the application may be supported and supplemented, with regard to specific points, by references to extracts from documents appended thereto, the annexes have a purely evidential and instrumental function and cannot therefore serve as a basis for developing a plea set out in summary form in the application by putting forward complaints or arguments which are not contained in that application (see, by analogy, judgment of 31 January 2019, Thun v EUIPO (Fish), T‑604/17, not published, EU:T:2019:42, paragraph 46 and the case-law cited). Furthermore, it is not for the Court to take on the role of the parties by seeking to identify the relevant pleas and arguments in the documents they refer to (judgment of 17 April 2008, Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), T‑389/03, not published, EU:T:2008:114, paragraph 119).
20      It follows that the Court cannot, in the present case, take into account the arguments which the applicant submitted in the course of the proceedings before EUIPO, unless those arguments are also set out in the application before the Court.
The issue of whether the evidence submitted for the first time before the Court is admissible
21      EUIPO contends that the applicant did not submit the documents constituting Annexes A.4 and A.6 to A.11 to the application in the course of the proceedings before the Board of Appeal and requests that those annexes therefore be declared inadmissible.
22      In that regard, it must be pointed out that the applicant has submitted, as Annexes A.7 to A.11 to the application, various documents to claim that, in the light of the characteristics of the market for lubricants, which are inexpensive goods of mass consumption, the sales made under the earlier mark should have been higher for it to be possible to conclude that there had been genuine use of that mark. Those documents include figures regarding new motor vehicles which have been registered in the European Union and in Austria, the Austrian households which own at least one car, the quantities, expressed in metric tonnes, of lubricants sold in Austria and the sales of lubricants in the industrial oils sector. The applicant has also submitted Annex A.4 in order to prove the international registration of the contested figurative mark in the name of Eurol BV and Annex A.6 with the aim of proving the Austrian registration of the word mark EUROL in the name of EUROL‑LUBRICANTS-AUSTRIA GmbH. It is apparent from the file relating to the proceedings before EUIPO that those items of evidence were not submitted before it.
23      According to the case-law, the purpose of actions brought 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).
24      Therefore, it is not the Court’s function to review the facts in the light of evidence submitted for the first time before it. To allow 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 alter the subject matter of the proceedings before the Board of Appeal. Consequently, the evidence submitted for the first time before the Court must be declared inadmissible (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).
25      In view of the foregoing, the items of evidence submitted as Annexes A.4 and A.6 to A.11 to the application must be rejected as inadmissible, on the ground that they have been submitted for the first time before the Court.
The first plea, alleging infringement of Article 57(2) and (3) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) and Article 15(1) and (2) of that regulation, in that the Board of Appeal erred in finding that the earlier mark had been put to genuine use
26      By the first plea, the applicant submits, in essence, that the earlier mark has not been put to genuine use. That plea consists of three parts.
27      First, the applicant claims that the earlier mark has not been used with the intervener’s consent. Secondly, the applicant submits that the alleged use of two figurative signs cannot be considered to be use of the earlier word mark in its registered form. Thirdly, the applicant contends that genuine use of the earlier mark has not been sufficiently proved by the evidence submitted by the intervener.
Preliminary considerations
28      It must be pointed out that it is apparent from recital 10 of Regulation No 207/2009 that the legislature considered there to be no justification for protecting an earlier trade mark except where that mark was actually used.
29      Under Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 10(3) and (4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), which is applicable mutatis mutandis in invalidity proceedings pursuant to Rule 40(6) of Regulation No 2868/95 (now Article 19(2) of Delegated Regulation 2018/625), the evidence of genuine use is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing sworn or affirmed, as referred to in Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001).
30      The ratio legis for the requirement that a mark must have been put to genuine use in order to be protected under EU law is that EUIPO’s register cannot be regarded as a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 20 and the case-law cited).
31      In interpreting the concept of genuine use, account should be taken of the fact that the ratio legis of the requirement that the earlier mark must have been put to genuine use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (judgments of 26 September 2013, Centrotherm Systemtechnik v centrotherm Clean Solutions, C‑609/11 P, EU:C:2013:592, paragraphs 72 and 74, and of 29 November 2018, Alcohol Countermeasure Systems (International) v EUIPO, C‑340/17 P, not published, EU:C:2018:965, paragraph 90; see also, judgment of 2 February 2016, Benelli Q.J. v OHIM – Demharter (MOTOBI B PESARO), T‑171/13, EU:T:2016:54, paragraph 68 and the case-law cited).
32      As is clear from the case-law, 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 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
33      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that the evidence submitted by the intervener proved genuine use of the earlier mark as regards the goods at issue.
34      In the present case, according to the findings in the Cancellation Division’s decision, which the Board of Appeal endorsed, the intervener was required to prove that the earlier mark had been put to genuine use in Austria during the period from 17 February 2009 to 16 February 2014 (‘the first relevant period’) and during the period from 26 March 2014 to 25 March 2019 (‘the second relevant period’ and, as regards those two periods taken together, ‘the relevant periods’), findings which the parties do not dispute.
The first part of the first plea, alleging that there is a lack of evidence proving that the earlier mark has been used by third parties with the intervener’s consent
35      By the first part, the applicant submits that the Board of Appeal erred in finding that the earlier mark had been used by EUROL‑LUBRICANTS‑AUSTRIA and EUROLLUBRICANTS oil tec GmbH with the intervener’s consent and that the use of that mark by those companies could therefore be deemed to be use by the intervener. In that context, the applicant puts forward, in essence, four arguments.
36      First, the applicant submits that the Board of Appeal erred in relying, in paragraph 31 of the contested decision, on the presumption allegedly established in the judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT) (T‑203/02, EU:T:2004:225), that, where the proprietor of an earlier mark maintains that the use of that mark by a third party constitutes genuine use of that mark, it is implicit that the proprietor consented to that use. Secondly, the applicant claims that the Board of Appeal took into account, in paragraph 32 of the contested decision, an arbitrary criterion of a sufficient economic link between all the parties from which the evidence of use of the earlier mark came in order to determine that there had been consent on the part of the intervener. Thirdly, according to the applicant, the intervener’s statements as regards the period during which he was the proprietor of the earlier mark are not consistent, credible and sufficiently precise for it to be concluded, as the Board of Appeal did, that genuine use had been proved. In particular, the applicant submits that there is no evidence which proves that the intervener’s consent was given prior to the use of the earlier mark by the third parties concerned. Fourthly, the applicant contends that the proprietor’s consent must be expressly given, which was not, it submits, the case here.
37      EUIPO and the intervener dispute the applicant’s arguments.
38      First of all, it must be pointed out that it is common ground between the parties and is, moreover, apparent from the evidence provided that, during the relevant periods, the earlier mark was used not by the intervener, but by third parties, namely EUROL‑LUBRICANTS‑AUSTRIA and EUROLLUBRICANTS oil tec. Another company, ECOINVEST Beteiligungs GmbH, was the proprietor of the earlier mark for most of the relevant periods. According to an agreement between the intervener and ECOINVEST Beteiligungs, dated 16 August 2017 (‘the agreement of 16 August 2017’), the earlier mark was transferred to that company with the consent of the intervener and the intervener retained the exclusive right to sublicense that mark during the period from 2 July 2008 to 31 August 2018.
39      In that regard, it must be pointed out that under Article 15(2) of Regulation No 207/2009 (now Article 18(2) of Regulation 2017/1001) use of the EU trade mark with the consent of the proprietor is to be deemed to constitute use by the proprietor.
40      In paragraph 31 of the contested decision, the Board of Appeal referred to the case-law which states that, where the proprietor of a mark maintains that the use of that mark by a third party constitutes genuine use, he claims, by implication, that he consented to that use (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 24). If the use of that mark was without the consent of the proprietor of that mark and consequently in infringement of trade mark law, it would have been in the interests of the entities that used it not to disclose evidence of such use to the proprietor (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 25). It is also unlikely that the proprietor of that mark could have had that evidence and submitted it as proof of use of that mark if that use had taken place against his wishes (judgments of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 25, and of 22 March 2017, Windrush Aka v EUIPO – Dammers (The Specials), T‑336/15, EU:T:2017:197, paragraph 56).
41      First, contrary to what the applicant submits, as regards the relevance of the judgment of 8 July 2004, VITAFRUIT (T‑203/02, EU:T:2004:225), EUIPO correctly points out that the mere fact that, during the course of the proceedings before it, the applicant expressly disputed the use of the earlier mark by third parties is not sufficient to call into question the principle set out in paragraph 40 above.
42      It is true that, as is apparent from paragraph 27 of the judgment of 8 July 2004, VITAFRUIT (T‑203/02, EU:T:2004:225), in the case which gave rise to that judgment, the applicant did not dispute the use of the mark concerned by a third party or express doubts as regards the fact that the proprietor of that mark had consented to that use (judgments of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 27), which the applicant has, by contrast, done in the context of the present action.
43      However, contrary to what the applicant submits, it is apparent from paragraphs 24 to 26 of the judgment of 8 July 2004, VITAFRUIT (T‑203/02, EU:T:2004:225), that, in that judgment, it was only for the sake of completeness that the Court took into account the fact that the applicant in that case had not disputed the use of the mark concerned by third parties with the consent of its proprietor, and not as an essential part of the reasoning.
44      Consequently, it must be held that the Board of Appeal did not err in relying, in paragraph 31 of the contested decision, on the principle laid down in paragraphs 24 to 26 of the judgment of 8 July 2004, VITAFRUIT (T‑203/02, EU:T:2004:225), that, where the proprietor of an earlier mark maintains that the use of that mark by a third party constitutes genuine use of that mark, it is implicit that the proprietor consented to that use, unless there is evidence to the contrary.
45      Secondly, as regards the link between the intervener and the companies EUROL-LUBRICANTS-AUSTRIA and EUROLLUBRICANTS oil tec, it is common ground that such a link existed during parts of the relevant periods. The applicant expressly admits that, during those periods, the intervener was the sole shareholder in EUROLLUBRICANTS oil tec as from 20 October 2016 and the sole shareholder in EUROL-LUBRICANTS-AUSTRIA from 5 to 10 April 2013 and then as from 15 June 2018. It is also common ground that the intervener was the managing director of EUROLLUBRICANTS oil tec as from 23 September 2016 and the managing director of EUROL-LUBRICANTS-AUSTRIA from 14 June to 8 December 2017 and then as from 15 December 2017.
46      Consequently, it must be held that sufficient economic links between the intervener and the two companies which actually used the earlier mark existed during a significant part of the relevant periods, namely during approximately half of the second relevant period and during five days of the first relevant period.
47      In that regard, the applicant’s argument that the contested decision is based on a purely arbitrary criterion relating to the economic links between the intervener and the companies which used the earlier mark must be rejected.
48      It is sufficient to point out that, according to settled case-law, the use of a trade mark by a company which is economically linked to the proprietor of the mark is presumed to be use of that mark with the consent of the proprietor and is therefore to be deemed to constitute use by the proprietor, in accordance with Article 15(2) of Regulation No 207/2009 (see judgment of 25 June 2020, Dermavita v EUIPO – Allergan Holdings France (JUVÉDERM), T‑104/19, not published, EU:T:2020:283, paragraph 50 and the case-law cited).
49      Consequently, that criterion relating to the economic links between the intervener and the companies which used the earlier mark is a relevant indication for the purpose of concluding that there was consent on the part of the intervener, even though those links did not cover the whole or most of the relevant periods.
50      It follows that the Board of Appeal was right in relying on, inter alia, the existence of an economic link between the intervener and the companies which used that mark.
51      Thirdly, the applicant’s criticism relating to the intervener’s affidavit dated 19 March 2020 and the agreement of 16 August 2017 must be rejected. By those two documents, the intervener states that he orally granted a licence to the companies which used the earlier mark and orally granted them a sub-licence during the period in which ECOINVEST Beteiligungs was the proprietor of that mark.
52      The applicant submits, in essence, that the affidavit and the agreement of 16 August 2017 are not credible in that, first, they do not prove that the intervener was entitled to grant a licence or a sub-licence to use the earlier mark to the third-party companies and, secondly, they do not substantiate the argument that the intervener actually granted such a licence and sub-licence. It contends that, in any event, those documents do not suffice to show that the required consent existed.
53      However, it must be stated that those two documents did not play a decisive role in the Board of Appeal’s assessment that the intervener had consented to the use of the earlier mark by the abovementioned companies. The Board of Appeal endorsed the Cancellation Division’s finding that proof that licence agreements had actually been concluded was not a necessary condition for finding that there was prior consent to the use of the earlier mark. The applicant’s complaint regarding the evidential value of those two documents therefore has no effect on the legality of the contested decision.
54      It must be stated that the Board of Appeal relied in paragraphs 31 and 32 of the contested decision on other considerations in order to conclude that that there was consent on the part of the intervener, such as the implicit consent of the intervener deriving from the principle laid down in the judgment of 8 July 2004, VITAFRUIT (T‑203/02, EU:T:2004:225), which has been referred to in paragraph 40 above and the economic links between the intervener and the companies which used the earlier mark. Those factors support the intervener’s affidavit and suffice to prove his claim that he consented to the use of the mark.
55      Fourthly, as regards the applicant’s argument that the intervener has not provided any proof of his express prior consent to the use of the earlier mark by EUROL-LUBRICANTS-AUSTRIA and EUROLLUBRICANTS oil tec, it is true that there is no direct evidence dating from the material time. However, contrary to what the applicant submits in referring to the judgment of 20 November 2001, Zino Davidoff and Levi Strauss (C‑414/99 to C‑416/99, EU:C:2001:617, paragraph 53), such express consent is not required, as consent can also be given implicitly (see, to that effect and by analogy, judgment of 15 October 2009, Makro Zelfbedieningsgroothandel and Others, C‑324/08, EU:C:2009:633, paragraph 19). That argument on the part of the applicant must therefore be rejected.
56      In the light of the foregoing considerations, it must be held that the Board of Appeal did not err in finding that the companies EUROL‑LUBRICANTS-AUSTRIA and EUROLLUBRICANTS oil tec used the earlier mark with the intervener’s consent. Consequently, the first part of the first plea must be rejected.
The second part of the first plea, alleging that there was no use of the mark in its registered form
57      By the second part, the applicant submits that the evidence provided does not prove use of the earlier mark in its registered form. That evidence related to the two signs reproduced below.
58      EUIPO and the intervener dispute the applicant’s arguments.
59      It must be pointed out, first of all, that it follows directly from the wording of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 that use of the trade mark in a form which differs from the form in which it was registered is regarded as use for the purposes of the first subparagraph of Article 15(1) provided that the distinctive character of the mark in the form in which it was registered is not altered (judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 21; see also, judgment of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 25 and the case-law cited).
60      For a trade mark to possess distinctive character for the purposes of Regulation No 207/2009, it must serve to identify the goods in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgments of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited, and of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 26 and the case-law cited).
61      It must be noted that point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 relates to a situation in which a registered national or EU trade mark is used in trade in a form which is slightly different from the form in which it was registered. The purpose of that provision, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotional requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the form of the sign used in trade differs from the form in which that sign was registered only in insignificant respects, with the result that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the registered trade mark may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 27; see also, to that effect, judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 29, and, to that effect, by analogy, judgment of 25 October 2012, Rintisch, C‑553/11, EU:C:2012:671, paragraphs 21 and 22).
62      Consequently, a finding that the distinctive character of the registered trade mark has been altered requires an assessment of the distinctive and dominant character of the elements which have been added, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the various elements within the arrangement of the mark (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 28 and the case-law cited).
63      Furthermore, according to the case-law, where a mark is constituted or composed of a number of elements and one or more of them is not distinctive, the alteration of those elements or their omission is not capable of altering the distinctive character of that trade mark as a whole (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 30 and the case-law cited).
64      It must also be borne in mind that, in order for point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 to apply, the additions to the registered mark must not alter the distinctive character of the mark in the form in which it was registered, in particular because of their ancillary position in the sign or their weak distinctive character (judgments of 21 June 2012, Fruit of the Loom v OHIM – Blueshore Management (FRUIT), T‑514/10, not published, EU:T:2012:316, paragraph 38, and of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 31).
65      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding, in paragraph 39 of the contested decision, that the use which had been made of the earlier mark did not alter the distinctive character of that mark for the purposes of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009.
66      In the present case, the Board of Appeal found that the relevant public consisted both of business customers in Austria with specific professional knowledge or expertise and of the general public in Austria. It took the view that the level of attention of that public could vary from average to high, depending on the price, sophistication or terms and conditions of the goods or services purchased.
67      Next, the Board of Appeal found, in paragraph 39 of the contested decision, that part of the relevant public broke down the earlier mark into two elements, namely ‘eurol’ and ‘lubricants’, on account of the descriptiveness of the latter word, which was understood by that part of that public. As EUIPO points out, since the forms in which that mark has been used, as set out in paragraph 57 above, contain the same two elements, they will be regarded as equivalent to the earlier mark as registered, EUROLLUBRICANTS. According to the Board of Appeal, another part of the relevant public perceived the earlier mark as registered and the forms in which it had been used as being composed of meaningless terms. As EUIPO points out, those forms will also be perceived as being equivalent overall to the earlier mark as registered on account of the presence of the same sequence of letters. The Board of Appeal concluded that the forms in which the earlier mark had been used did not alter the distinctive character of that mark.
68      The applicant does not put forward any arguments which make it possible to call the Board of Appeal’s assessment into question.
69      First, the applicant submits that the first word element of the forms in which the earlier mark has been used is likely to be perceived as ‘elrol’, and not ‘eurol’, as stated in the contested decision.
70      However, as EUIPO points outs, that word element will be perceived by the majority of the relevant public as the stylised word element ‘eurol’, because the signs corresponding to the forms in which the earlier mark has been used often appear next to the word ‘eurol’, which is used as part of the name of the product or of the name of the company selling the goods concerned. The applicant’s argument must therefore be rejected.
71      Secondly, the applicant submits that, in the forms in which the earlier mark has been used, the dominant word element, which attracts attention, is the first word (‘eurol’), which is written in red in a very eye-catching font and in thick upper-case letters, whereas the distinctive element ‘lubricants’, which is positioned below it, is insignificant. According to the applicant, the fact that the relevant public disregards the element ‘lubricants’ in the forms in which the earlier mark has been used alters the distinctive character of that mark.
72      However, as EUIPO correctly points out and as the Board of Appeal found in paragraph 39 of the contested decision, the part of the relevant public for which the word ‘lubricants’ is not meaningless, for example the professional public in the lubricants sector, will perceive the forms used as consisting of the two words ‘eurol’ and ‘lubricants’. The fact that the word elements in the forms in which the earlier mark has been used are separate and positioned one above the other and the fact that the word ‘lubricants’ is represented in smaller letters cannot, in the present case, alter the distinctive character of the earlier mark, EUROLLUBRICANTS, which consists of the same two words.
73      Even if, as the applicant claims, most of the relevant Austrian public, which is German-speaking, does not know the meaning of the English word ‘lubricants’, that likewise cannot call into question the Board of Appeal’s assessment, in paragraph 39 of the contested decision, that that part of the relevant public perceives the earlier mark as registered and the forms in which it has been used as consisting of meaningless terms and therefore as being equivalent overall on account of the fact that they comprise the same sequence of letters.
74      The Board of Appeal’s assessment in paragraph 39 of the contested decision is therefore correct.
75      Thirdly, in support of its argument that the word ‘lubricants’ in the forms in which the earlier mark has been used is a descriptive element which alters the distinctive character of the earlier mark, the applicant points out parallels with a decision of the Fourth Board of Appeal of EUIPO of 30 March 2007 (Case R 159/2005-4), in which the mark MEXAVIT was registered and the sign MEXA-VIT C was used. It submits that, in the context of that case, the Board of Appeal found that the use of the mark in a form which had been split into two elements and had a different spelling, combined with the addition of the letter ‘C’, altered the distinctive character of the mark concerned as registered.
76      In that regard, it must be borne in mind that EUIPO is required to adopt its decisions on the basis of the circumstances of each specific case and is not bound by previous decisions taken in other cases. The legality of the decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65). Furthermore, in its review of legality, the Court is not bound by the decision-making practice of EUIPO (judgment of 22 April 2008, Casa Editorial el Tiempo v OHIM – Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, not published, EU:T:2008:121, paragraph 48).
77      In any event, it must be stated that the decision of EUIPO on which the applicant relies is part of a factual context which differs from that of the contested decision. As is stated by EUIPO, in that case, the element ‘vit’ in the registered mark could not be easily perceived and was merely part of the word element ‘mexavit’, which was meaningless. The separation of that element ‘vit’ by means of a hyphen in the mark as used and the addition of the letter ‘c’ made the element ‘vit c’ clearly descriptive, by referring to vitamin C, which had the effect of altering the distinctive character of the mark concerned as registered. By contrast, in the present case, the mere fact that the word ‘lubricants’ has been separated and positioned below the word ‘eurol’ does not have the same effect.
78      In view of the foregoing considerations, it must be held that the Board of Appeal was right in finding that the forms in which the earlier mark had been used did not alter its distinctive character.
79      The second part of the first plea must therefore be rejected.
The third part of the first plea, alleging that the evidence regarding genuine use of the earlier mark is insufficient
80      In the context of the third part, the applicant submits that the Board of Appeal erred in finding that genuine use of the earlier mark had been proved. According to the applicant, the Board of Appeal relied on probabilities and presumptions, and not on solid and objective evidence of actual and sufficient use of the earlier mark.
81      First, the applicant claims that the intervener has not submitted any evidence showing any use of the earlier word mark in its registered form, because all the evidence submitted concerns the figurative signs used. Secondly, the applicant submits, in the alternative, that the intervener has submitted evidence of only five possibly relevant sales made during the first relevant period and two possibly relevant sales with regard to the second relevant period, which have a total commercial value of EUR 1 196. It argues that the remainder of the sales submitted by the intervener did not specifically concern the sale of lubricants. Thirdly, the applicant contends that the Board of Appeal erred in assuming that the invoices submitted by the intervener constituted representative examples of a large number of invoices. Fourthly, the applicant states that, since lubricants are inexpensive goods of mass consumption, the sales made under the earlier mark should have been higher in order for it to be possible to uphold the Board of Appeal’s finding that the use of that mark was genuine. Fifthly, it claims that the price lists and catalogues on which the Board of Appeal relied in paragraph 46 of the contested decision are not capable of proving use of the earlier mark, because there is no proof that they were actually distributed in the course of the relevant periods. Sixthly and lastly, the applicant submits that the statement of a tax consultant regarding the alleged revenues of the companies EUROL‑LUBRICANTS-AUSTRIA and EUROLLUBRICANTS oil tec can also not justify the Board of Appeal’s finding that the earlier mark has been put to genuine use.
82      EUIPO and the intervener dispute the applicant’s arguments.
83      It must, first of all, be borne in mind that, 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 judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 70 and the case-law cited).
84      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 71 and the case-law cited). As regards the duration, it is sufficient that a trade mark has been put to genuine use during a part of the relevant period (see, to that effect, judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 40, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 45).
85      In order to examine, in a particular case, whether an EU trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular 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 compensated for by a high intensity of use or a period of very regular use of that trade mark or vice versa. Furthermore, 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. As a result, use of that mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be deemed genuine, provided that it is 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 (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 72 and the case-law cited).
86      In that regard, it must be stated that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether the use was genuine or not, so that a de minimis rule, which would not allow EUIPO or, following the bringing of an action, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down. Thus, when it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 73 and the case-law cited).
87      However, the smaller the commercial volume of the use of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 74 and the case-law cited).
88      Lastly, genuine use of a mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the mark on the market concerned (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 75 and the case-law cited).
89      For the purposes of the examination of whether the use of the earlier mark during the relevant periods was genuine, the intervener submitted evidence consisting essentially of sales invoices, delivery notes, catalogues, price lists, an advertisement in an automotive magazine published in 2011, sponsorship of a sporting event which took place in 2015 and a statement from a tax consultant presenting the revenues for the years 2009 to 2019 of two companies which had used the earlier mark.
90      First, as regards the applicant’s argument that the intervener has not submitted any relevant evidence showing use of the earlier mark during the relevant periods, because all the evidence submitted related to the figurative signs used, and not to the earlier word mark, it must be stated that that argument is based on the presupposition that the second part of the first plea, namely that the use of the figurative signs used does not constitute use of the earlier mark, is well founded.
91      However, the second part of the first plea has been rejected. Consequently, the Board of Appeal did not err in taking into account the evidence of genuine use of the earlier mark which related to the figurative signs used, inter alia, in the form of evidence of actual sales of the goods at issue which took place in the course of a number of years included in the relevant periods. The applicant’s first argument must therefore be rejected.
92      Secondly, even though it is true that the seven invoices and delivery notes submitted show sales for relatively low amounts, namely EUR 719.35 in respect of the first relevant period and EUR 477.15 in respect of the second relevant period, they prove actual sales of the relevant goods covering a number of years included in the relevant periods (2009, 2010, 2011, 2013, 2015 and 2018). It must therefore be held that, in the context of the present case, the sales established, even though not particularly high, constitute use which objectively is such as to create or preserve an outlet for the goods concerned, the commercial volume of which, in relation to the period and frequency of use, is not sufficiently low that it leads the Court to conclude that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (see, to that effect and by analogy, judgments of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 49, and of 27 September 2007, La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraphs 87 to 90). It must also be borne in mind that, as has been pointed out in paragraphs 85 and 86 above, no quantitative threshold can be relied on in order to determine whether the use of the earlier mark was genuine or not, with the result that even minimal use can be sufficient to establish genuine use.
93      Thirdly, as the Board of Appeal stated in paragraph 46 of the contested decision, the invoices submitted constitute examples of sales of various lubricants made under the earlier mark and the numbers of those invoices suggest that a larger number of invoices was issued. As is apparent from the file submitted to the Board of Appeal, first, the invoices submitted have random numbers (for example, 4179/2013 or 2797/2010) and, secondly, the lubricants have been offered to consumers regularly, as is apparent from the catalogues and price lists provided. Since those invoices are illustrative, it can reasonably be deduced that they do not represent the actual number of sales of goods bearing the earlier mark.
94      Fourthly, as regards the applicant’s argument that the value of the actual sales of lubricants made under the earlier mark is rather low given that the relevant goods are inexpensive goods of mass consumption, it must be stated that the characteristics of the relevant lubricants market are not capable of altering the Board of Appeal’s finding.
95      First of all, the documents which the applicant has submitted as Annexes A.7 to A.11 in order to support its position that the sales made under the earlier mark should, in the light of the very high overall figures in respect of the lubricants market, have been higher, are inadmissible for the reasons set out in paragraphs 22 to 25 above.
96      Furthermore, even though it is true that lubricants are inexpensive goods of mass consumption, it is sufficient, in order to conclude that there has been genuine use of the earlier mark, to point out that the intervener provided, by way of examples, proof of actual sales under the earlier mark covering most of the relevant periods and other evidence showing that he made significant efforts to market lubricants under that mark.
97      Furthermore, it must be pointed out that, as EUIPO states, lubricants are not frequently purchased by end users, which could explain why the turnovers submitted are relatively low. In that regard, it must be borne in mind, as has been stated in paragraphs 31 and 32 above, that the purpose of the requirement that the earlier mark must have been put to genuine use is not to assess commercial success. It is sufficient that that mark has been used to create or preserve an outlet for the goods which it covers, excluding token use for the sole purpose of preserving the rights conferred by the mark.
98      Fifthly, it must be held that the Board of Appeal took into account other relevant evidence which, in conjunction with the actual sales of relevant goods made under the earlier mark, constitute an accumulation of evidence which is sufficiently specific, precise and consistent to prove genuine use of the earlier mark.
99      In that regard, it must be pointed out that, according to the case-law, it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though none of those items of evidence, taken individually, would be capable of establishing the accuracy of those facts (see judgment of 22 November 2018, Fruit of the Loom v EUIPO – Takko (FRUIT), T‑424/17, not published, EU:T:2018:824, paragraph 39 and the case-law cited).
100    In the present case, the price lists and catalogues submitted prove that a large number of lubricants covered by the earlier mark were available for purchase during a number of years which are among those included in the relevant periods. As the Board of Appeal correctly stated in paragraph 46 of the contested decision, those documents also include specific information concerning the goods offered for sale under that mark, such as their detailed description, their prices, the types of car for which they should be used and the details of the sales office.
101    It must be held that, contrary to what the applicant claims, the lack of proof of the fact that those price lists and catalogues were distributed in the course of the relevant periods does not affect their evidential value as regards genuine use of the earlier mark. Those documents are dated (for example, ‘catalogue valid as from 1 January 2019’ or ‘price list valid as from 15 July 2017’) and it is therefore reasonable to assume that they were actually distributed during those periods.
102    Furthermore, the intervener also advertised the lubricants sold under the earlier mark in an automotive magazine and sponsored sporting events. Those are two other relevant items of evidence which the Board of Appeal rightly took into account in the contested decision in order to conclude that there had been genuine use of the earlier mark.
103    Sixthly, as regards the statement of a tax consultant regarding the revenues of the companies EUROL-LUBRICANTS-AUSTRIA and EUROLLUBRICANTS oil tec, it must be stated that that item of evidence did not play a decisive role in the Board of Appeal’s reasoning. The applicant’s argument relating to that statement therefore has no effect on the legality of the contested decision.
104    In any event, the Cancellation Division did not err in taking the statement of revenues into account in its assessment, which the Board of Appeal endorsed. Even though it shows the total revenues without specifying which part is to be attributed to the sale of lubricants, that statement could be relevant in the overall assessment of whether there had been genuine use, since lubricants constituted a large part of the two companies’ catalogue of goods.
105    In the light of the foregoing considerations, the third part of the first plea, and therefore the first plea in its entirety, must be rejected.
The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, in that the Board of Appeal found that there was a likelihood of confusion
106    By the second plea, the applicant submits that the Board of Appeal erred in finding that there was, for the purposes of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion on the part of the relevant public. It submits that the marks at issue are not similar.
107    In support of that plea, the applicant refers, in essence, to the arguments put forward in the context of the second part of the first plea, namely that the figurative signs used altered the distinctive character of the earlier mark and therefore did not prove that there had been use of that mark (see paragraph 57 above).
108    EUIPO disputes the applicant’s arguments.
109    In the present case, the Board of Appeal, after comparing the goods at issue and the marks at issue, took the view, in paragraph 83 of the contested decision, that it had to be found that a significant part of the relevant public would be misled into thinking that the goods bearing the signs at issue came from the same undertaking or, as the case may be, from economically linked undertakings.
110    It must be stated that the applicant’s line of argument is contained in one single paragraph of the application and is based essentially on the premiss that the second part of the first plea is well founded, whereas it is clear from the examination of that part that that is not the case (see paragraphs 68 to 79 above). It cannot be held to be sufficient to call into question the Board of Appeal’s analysis relating to the similarity of the signs at issue and its finding that there is a likelihood of confusion.
111    Consequently, the second plea must be rejected as unfounded and the action must therefore be dismissed in its entirety.
Costs
112    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.
113    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Eurol BV to pay the costs.
De Baere
Kecsmár
Kingston
Delivered in open court in Luxembourg on 14 December 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.