JUDGMENT OF THE GENERAL COURT (Second Chamber)
22 January 2025 (*)
( EU trade mark – Revocation proceedings – European Union figurative mark TES – Partial revocation – Genuine use of the mark – Proof of genuine use – Article 58(1)(a) and (2) of Regulation (EU) 2017/1001 – Evidence adduced for the first time before the General Court )
In Case T‑517/23,
Tes Electrical Electronic Corp., established in Taipei (Taiwan), represented by S. Bénoliel-Claux, lawyer,
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
Tes Touch Embedded Solutions (Xiamen) Co. Ltd, established in Xiamen (China), represented by J. Wernicke, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, J. Schwarcz and W. Valasidis (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Tes Electrical Electronic Corp., seeks the annulment in part and alteration in part of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 May 2023 (Case R 2250/2022-2) (‘the contested decision’).
Background to the dispute
2        On 24 January 2005, the applicant filed an application with EUIPO for registration of an EU trade mark in respect of the following figurative sign:
3        The goods covered by the mark referred to in paragraph 2 above fall
within Class 9 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 corresponded, following
amendment, to the following description: ‘Electronic testing equipment, namely, multimeters for electrical quantities, hand-held capacitance meters for electrical quantities, hand-held capacitance meters for sound level meters, battery testers; thermometers not for medical use; clamp meters, AD/DC
clamp meters, light meters, humidity and temperature meters; printers and dataloggers; insulation testers, earth/ground testers, EMF testers, [LAN]
cable testers, loop/PSC testers, RCD testers; pH meters, anemometers, [CO2] analysers, calibrators for sound’.
4        The trade mark application was published in the
Community Trade Marks Bulletin
No 33/2005 of 15 August 2005 and the trade mark was registered on 27 March 2006.
5        On 10 November 2020, the intervener, TES Touch Embedded Solutions (Xiamen) Co. Ltd, filed an application for revocation of the European Union figurative mark TES in respect of all goods covered by that mark pursuant to Article 58(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
6        On 21 September 2022, the Cancellation Division upheld the application for revocation in part, declaring the revocation of the trade mark in respect of the goods for which the applicant had not provided proof of genuine use of that trade mark, namely: ‘Electronic testing equipment, namely, multimeters for electrical quantities, hand-held capacitance meters for electrical quantities; clamp meters, AD/DC clamp meters, humidity and temperature meters; printers and dataloggers; insulation testers, earth/ground testers, EMF testers, [LAN] cable testers, loop/PSC testers, RCD testers; pH meters, anemometers, [CO2] analysers, calibrators for sound’.
The Cancellation Division found that the applicant had furnished proof of genuine use of that mark for the following goods: ‘Electronic testing equipment, namely, hand-held capacitance meters for sound level meters, battery testers; thermometers not for medical use; light meters’.
7        On 17 November 2022, the applicant brought an appeal against the decision of the Cancellation Division, in so far as it had declared the revocation of the mark at issue in respect of the goods listed in paragraph 6 above.
8        By the contested decision, the Board of Appeal, first, annulled in part the decision of the Cancellation Division, in so far as the latter had declared the revocation of the trade mark at issue for the following goods:
‘Electronic testing equipment, namely, multimeters for electrical quantities; clamp meters, AD/DC clamp meters; EMF testers’, and, second, dismissed the action as to the remainder.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision in so far as it confirms the revocation of the mark at issue for hand-held capacitance meters for electrical quantities; humidity and temperature meters; printers and dataloggers; insulation testers, earth/ground testers, LAN cable testers, loop/PSC testers, RCD testers, pH meters, anemometers, CO2 analysers and calibrators for sound;
–        alter the contested decision by declaring that genuine use of the trade mark at issue had been proven for the goods in respect of which that trade mark has been revoked;
–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
11      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The admissibility of the evidence adduced for the first time before the General Court
12      EUIPO requests the General Court to declare inadmissible Annex 18 to the application, taking the view that it constitutes evidence adduced for the first time before the Court by the applicant, namely an export authorisation and product packaging for a printing thermometer. EUIPO states that the lawfulness
of the contested decision must be reviewed solely on the basis of the evidence communicated in the course of the proceedings before it.
13      The applicant maintains
that the purpose of adducing that annex is to strengthen the evidence adduced
initially.
14      In that regard, it should be recalled that the purpose of bringing actions before the General Court is to review the legality of the decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001 and that, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted. Therefore, it is not the General Court’s function to re-examine the factual circumstances in the light of evidence adduced for the first time before it (see judgment of 13 May 2020, Peek & Cloppenburg v EUIPO – Peek & Cloppenburg (Peek & Cloppenburg), T‑444/18, not published, EU:T:2020:185, paragraph 36 and the case-law cited). In addition, to admit such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions
may not alter
the subject matter of the proceedings before the Board of Appeal (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).
15      The submission by the applicant of a claim for alteration cannot invalidate the considerations which precede it, since the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
16      It must be stated, in the present case, that the documents in Annex 18 were not part of the administrative file presented
by the applicant during the proceedings before EUIPO and that they were adduced
for the first time before the General Court.
17      Consequently, Annex 18, the content of which is not capable of
being linked to any of the exceptions accepted by the EU Courts
regarding the presentation
for the first time of evidence before the General Court, and which is merely alleged to be intended to strengthen the evidence submitted to EUIPO, cannot be taken into consideration and must be declared inadmissible.
The claim for annulment
18      The applicant relies on a single plea in law alleging, in essence, infringement of Article 58(1)(a) of Regulation 2017/1001.
19      The applicant submits that the Board of Appeal erred in law by failing to carry out an overall assessment of the evidence relating to the use of the mark at issue.
20      The applicant complains that the Board of Appeal based its assessment only on the number of sales of goods marketed under the TES mark without taking into account the information adduced by the applicant and intended to establish the use of that mark, such as the catalogue and distributors of goods located in the territory of the European Union, advertisements published on a website and invoices addressed to a French company for those advertisements. According to the applicant, the Board of Appeal ought to
have taken into consideration all the relevant factors such as the volume of commercial activity, the degree of diversification of the undertaking and the characteristics of the goods in question, as well as the investment in promoting them. The applicant states, accordingly, that digital testers are not everyday consumer products, that they are sometimes very costly
and that, although they can be purchased by the average consumer, most of the products concerned are nevertheless for use by professionals only and belong to a limited
market.
21      EUIPO and the intervener dispute the applicant’s arguments.
22      Under Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
23      Under 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 to revocation proceedings pursuant to Article 19(1) of Delegated Regulation 2018/625, proof of use of a trade mark must concern the place, time, extent and nature of use of the mark concerned and is limited, in principle, to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing as referred to in Article 97(1)(f) of Regulation 2017/1001.
24      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 and services for which it is registered, in order to create or preserve an outlet for those goods and those services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 31 January 2019, Pandalis v EUIPO, C‑194/17 P, EU:C:2019:80, paragraph 83 and the case-law cited).
25      When assessing whether use of a 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 whether such use is viewed
as warranted in the economic sector concerned
to maintain or create a share in the market for the products
or services protected by that mark, the nature of those products
or services, the characteristics of the market and the significance
and frequency of use of that mark (judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Even minimal use can be sufficient to be classified as 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. Accordingly, it is not possible to set
a priori, and in the abstract, what
quantitative threshold should be chosen in order to determine whether use was genuine or not, with the result
that a de minimis rule, which would not allow EUIPO or, on appeal, the General Court to appraise all the circumstances of the dispute before it, cannot be laid down (judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72).
26      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 that trade mark on the market concerned. It is therefore necessary to carry out a global assessment which takes into account all the relevant factors of the particular case and entails a degree of
interdependence between the factors taken into account (judgment of 8 July 2020, Euroapotheca v EUIPO – General Nutrition Investment (GNC LIVE WELL), T‑686/19, not published, EU:T:2020:320, paragraph 35).
27      It should be borne in mind that, in order to assess the extent of the use made of the trade mark concerned, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (judgment of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35).
28      In that regard, it is important to note that the turnover and the volume of sales of the goods under cover of the trade mark concerned cannot be assessed in absolute terms, but must be assessed in relation to other relevant factors, such as the volume of commercial activity, the production or marketing capacities or the degree of diversification of the undertaking using that trade mark and the characteristics of the goods or services in question on the market concerned. As a result, use of the trade mark does not always have to be quantitatively significant in order to be regarded as genuine. Thus, the low volume of goods marketed under the mark concerned may be offset by the fact that use of the mark was very extensive or very regular and vice versa (see judgment of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 23 and the case-law cited, and of 23 September 2020, Polfarmex v EUIPO – Kaminski (SYRENA), T‑677/19, not published, EU:T:2020:424, paragraph 43). 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 7 July 2016, Fruit of the Loom v EUIPO – Takko (FRUIT), T‑431/15, not published, EU:T:2016:395, paragraph 28 and the case-law cited).
29      In the present case, the Board of Appeal determined the relevant period, for which the applicant had to demonstrate
genuine use of the trade mark at issue, to be the period from 10 November 2015 to 9 November 2020.
30      In order to verify whether there was such use, the Board of Appeal relied on various items of evidence, that is to say, in particular, product packaging, an undated catalogue, extracts from the websites of distributors established in six Member States dated 16 December 2020, extracts from Amazon’s German and Spanish websites dated 18 December 2020, export authorisations for the period from 2014 to 2020, invoices from advertising agencies for campaigns from 2017 to 2021, an invoice for sales in Germany dated 9 September 2020, statistics from the website ‘Webindustry.com’, covering the period from 3 August 2020 to 8 November 2020, undated printouts from the ‘instservices.com’ website, and an affidavit dated 10 October 2021 from the director of Tes Electrical Electronic Company concerning product sales in Europe between 2016 and 2020.
31      The Board of Appeal, in a statement of reasons sufficient for the purposes of Article 94(1) of Regulation 2017/1001, albeit regrettably succinct, concluded
that the sales figures produced by the applicant were either non-existent or very small in volume, and found that the evidence referred to in paragraph 30 above was insufficient to prove genuine use of the products to which it related.
32      It should be noted that the applicant does not challenge the Board of Appeal’s assessment of the relevant territory or its assessment of the nature of the use of the trade mark at issue, nor does it dispute the relevant period referred to in paragraph 29 above. The applicant confines itself to criticising the Board of Appeal’s assessment of the extent of the use made of the trade mark at issue in respect of the goods for which revocation of that mark was declared.
33      It is therefore important to examine, in the light of the applicant’s arguments, whether, in respect of each of those categories of goods, the Board of Appeal was entitled
to reach that conclusion in the light of the case-law cited in paragraphs 24 to 28 above.
34      In the first place, as regards hand-held capacitance meters for electrical quantities, the applicant maintains that the market for those goods is a niche market, which explains the limited references and the equally limited number of sales. It adds that the Board of Appeal, having acknowledged that the applicant had proved genuine use of the trade mark at issue in relation to multimeters for electrical quantities, which have the same function as hand-held capacitance meters for electrical quantities, ought
also to have acknowledged that genuine use of that mark had been proved in relation to those capacitance meters. Finally, the applicant states that the Board of Appeal ought to
have concluded
that, even if the volume of sales was not very high, the product packaging, catalogues and website extracts demonstrated
that the trade mark at issue was used in relation to those goods and, together with the other evidence relating to use, proved genuine use for those goods.
35      As for those arguments, it is important to recall that, with regard to goods or services in a broad category of goods, which may be sub-divided into several independent subcategories, it is, in principle, necessary to require the proprietor of a trade mark registered in respect of that category of goods or services to adduce
proof of genuine use of its trade mark for each of those autonomous subcategories, failing which it is liable to forfeit its trade mark rights in respect of those independent
subcategories for which it has not adduced
such proof (see, to that effect, judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraphs 42 and 43). It should be stated, however, that the criterion of the purpose and intended use of the goods at issue is an essential criterion for defining an independent subcategory of goods (see judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 44 and the case-law cited).
36      In that regard, the applicant relies on an example of a digital multimeter which also measures capacitance in order to argue that multimeters for electrical quantities and hand-held capacitance meters for electrical quantities have the same purpose within the meaning of the case-law cited in paragraph 35 above. However, the mere fact that a device is capable of performing a number of
functions does not in any way allow the inference that products which perform each of those functions separately have the same purpose. In addition, it is apparent from the file that those two types of goods are presented separately in the catalogues submitted to EUIPO by the applicant. They are also presented separately in the statement made by the director of the applicant. It follows that, contrary to the applicant’s submission, those products fall within independent subcategories. Therefore, in accordance with the case-law cited in paragraph 35 above, genuine use of the trade mark at issue must be established by the trade mark proprietor for each of those types of goods.
37      In order to establish proof of such use in the case of hand-held capacitance meters for electrical quantities, the applicant justified the small number of devices sold, namely 20 units, by the fact that a capacitance meter would be
used only by a limited segment
of the public, namely professionals. In that regard, it should be recalled that it is apparent from the case-law cited in paragraph 25 above that even minimal use can be sufficient to be classified as genuine, provided that it is viewed
as warranted, in the economic sector concerned to maintain or create a share in the market for the products
or services protected by the mark. However, the applicant has not provided EUIPO with any evidence capable of justifying the very modest number of devices sold, in particular with regard to their selling price. In that regard, the mere allegation
that there is a niche market is not sufficient to satisfy the conditions referred to in paragraph 25 above. Therefore, by relying, in paragraph 59 of the contested decision, on the particularly low volume of sales of that type of good in order to conclude that there was no genuine use of the trade mark at issue in relation to those goods, the Board of Appeal did not err in its assessment.
38      In the second place, as regards humidity and temperature meters, the applicant maintains
that it has proved genuine use of the trade mark at issue by relying on evidence such as export authorisations, extracts from internet catalogues or e-commerce sites and product packaging. It therefore considers that the Board of Appeal erred in its assessment.
39      It should be stated that the expression ‘humidity and temperature meters’ refers to a single product which measures both the temperature and the humidity of the air.
40      Although the applicant has adduced the evidence listed in paragraph 38 above concerning the availability of such goods on the market, the fact remains that, unlike hand-held capacitance meters for electrical quantities, they are not intended solely for professionals but are also known to be sought after by the general public. However, it is common ground that the applicant has proved the sale of 7 units of that type of goods, those sales having taken place in the United Kingdom and in Poland in 2016 and in France in 2019. Given the characteristics of those goods, that sales figure in no way demonstrates efforts to maintain itself on the market or, a fortiori, to strengthen its position on it. That finding is supported by the fact that only 3 of the export authorisations adduced by the applicant relate to the European Union. Those figures therefore reflect purely symbolic use of the trade mark at issue.
41      In addition, the applicant did not mention any advertising measures designed to increase sales of the goods bearing the trade mark at issue. In that regard, the mere fact that those goods were referred to
in the applicant’s catalogue and offered for sale on websites cannot be such as to demonstrate that use of the trade mark was very extensive or very regular, capable of offsetting the very low volume of sales, as referred to in the case-law cited in paragraph 28 above.
42      Consequently, the Board of Appeal did not commit an error of assessment in finding that genuine use of the trade mark at issue for humidity and temperature meters had not been demonstrated.
43      In the third place, as regards printers and dataloggers, the applicant is of the view
that printer thermometers and data logger thermometers also demonstrate use of the trade mark at issue for printers and dataloggers. Its argument is based, in part, on evidence such as reproductions of product packaging and of the product catalogue, extracts from e-commerce sites and export authorisations, as well as the affidavit from its director.
44      It should be recalled that, pursuant to the case-law referred to in paragraph 35 above, where goods fall within different sub-categories, genuine use of the trade mark at issue must be proved in respect of the goods in each sub-category concerned, it being specified that the purpose and intended use of those goods constitute an essential criterion for defining an independent subcategory of goods.
45      In the present case, as regards, first, printers, it must be noted that, as the Board of Appeal stated in paragraph 58 of the contested decision, even if certain thermometers have an integrated printing function, that function remains secondary and very limited in relation to their purpose, which is to measure temperature. Contrary to the applicant’s specious assertions, the fact that a thermometer can print out the result of a temperature reading is not sufficient to give it the function of a printer within Class 9, if only in the light of the multiple functions which the consumer expects of a printer, both in terms of quality and quantity.
46      It was therefore for the applicant to prove genuine use of the trade mark at issue in relation to printers.
47      In that regard, it is sufficient to note that, according to the statement made by the director of the applicant, only 3 units
were sold under the trade mark at issue during the relevant period, in this case in the United Kingdom in 2017. For the same reasons as set out in paragraphs 40 and 41 above, such a minimal number of sales of a product intended for both professionals and the general public cannot be justified on grounds relating to there being a restricted or niche market, nor can it be offset by the fact that the use of the mark was very extensive or very regular. The applicant is therefore not entitled to challenge the Board of Appeal’s assessment that it has not established genuine use of the trade mark at issue in relation to printers.
48      As regards, second, dataloggers, it should first of all be stated that the applicant is right in
disputing the Board of Appeal’s assessment in paragraph 58 of the contested decision that the datalogger models which it submitted are in fact thermometers and other testing equipment with specific data collection functions. Indeed, as the applicant states, a datalogger can be defined, in general terms, as an electronic device which records measurements at specified intervals over a given period. The Board of Appeal therefore erred in holding, by analogy with its reasoning in the same paragraph of the contested decision concerning thermometers with a printing function (see paragraph 45 above), that the marketing of thermometers and other testing equipment with specific data collection functions did not concern dataloggers.
49      Next, as regards proof of genuine use of the trade mark at issue for such devices, it must be observed
that, according to the evidence provided by the applicant, 29 dataloggers were sold between 2017 and 2020 in the United Kingdom and in Poland. As a result, even if those figures are not considerable, they cannot, in view of the market to which those products relate and their nature, be regarded as corresponding to a small or non-existent volume of sales. The Board of Appeal therefore erred in finding that proof
of genuine use of the trade mark at issue had not been adduced in respect of dataloggers.
50      In the fourth place, as regards insulation testers, the applicant maintains
that it has adduced evidence capable of establishing genuine use of the trade mark at issue in respect of those goods, in particular packaging for two goods, a statement to the effect that 93 units were sold within the European Union and export authorisations relating to 94 units. It adds that, since the Board of Appeal accepted genuine use of the trade mark at issue in respect of other goods, 40 of which were sold, the number of insulation testers sold is, in addition, sufficient in itself to demonstrate such use in respect of those goods.
51      The applicant’s line of argument based on a simple comparison between the number of units sold during the relevant period must be rejected at the outset, since, given that the products in question are different and have a different purpose, simply treating them in the same way would fail to take account, first, of the fact that it is not possible to set a priori, in the abstract, a
quantitative threshold to be used to establish
whether or not the use was genuine and, second, of the Board of Appeal’s duty to make an global
assessment, which requires it to take into account all the relevant factors in the case, as recalled in paragraphs 25 and 26 above.
52      In the present case, however, it appears that the Board of Appeal erred in its assessment when it concluded that the evidence of the sale, during the relevant period, of 93 units of that type of goods ought to be regarded as a ‘very small number of sales’, without having first provided an analysis of that type of goods and of whether the market in question was open or restricted, which would have enabled it, where appropriate, to indicate why that volume of sales, which, while not large, was nevertheless not insignificant, could not make it possible to establish genuine use of the trade mark at issue. In the present case, the volume of sales of insulation testers cannot be said to be minimal
or non-existent and the Board of Appeal therefore erred in holding that proof of genuine use of the trade mark at issue had not been adduced in respect of those goods.
53      In the fifth place, as regards earth/ground testers, the applicant is of the view
that genuine use of the trade mark at issue has been established irrespective of the small number of units sold, since offering goods intended to extend, supplement or strengthen the range of existing goods would be
part of an undertaking’s commercial strategy. The applicant states that the market for those goods is not developed and that earth/ground testers are not common instruments.
54      It should be noted, however, that the applicant has produced no
evidence to demonstrate the accuracy of such assertions, whether they relate to its alleged commercial strategy or to the market itself. The assertion that earth/ground testers are not commonly used is inaccurate, as it is well known that the installation of electricity or significant work on electrical equipment in professional or private premises requires the use of that type of equipment. In those circumstances, it must be stated that the two export authorisations adduced by the applicant and the statement issued by it stating that 15 units were sold during the relevant period on the territory of the European Union appear, as the Board of Appeal pointed out, to represent a very small number of sales. According to the case-law referred to in paragraphs 27 and 28 above, in order to be classified
as genuine, limited use must be 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 trade mark concerned. That is clearly not so in the present case.
55      Consequently, there is nothing to establish that the trade mark at issue has been put to genuine use for earth/ground testers and the Board of Appeal therefore made no error of assessment in relation to that use.
56      In the sixth place, as regards LAN cable testers, the applicant maintains
that the trade mark at issue has been put to genuine use in relation to those products, which are used to connect different network components. The applicant states that a low turnover may be sufficient with regard to
an exclusive market, given that it is necessary to take into account the characteristics of the market. It adds that wireless connectivity is becoming increasingly common and that cable testers are less in demand.
57      In the present case, it is not disputed that only 6 units of LAN cable testers were sold by the applicant between 2016 and 2017, in Germany and in the United Kingdom.
58      In addition, even if the applicant relies on the declining popularity of those goods, in the absence of more precise data on the size of the market, that does not permit the inference that such a negligible number of sales is sufficient to establish genuine use of the trade mark at issue for LAN cable testers.
59      Consequently, the Board of Appeal was entitled to conclude that genuine use of the trade mark at issue had not been established in relation to LAN cable testers.
60      In the seventh place, as regards loop/PSC testers and RCD testers, the applicant acknowledges having marketed 18 loop/PSC testers and no RCD testers. In order to justify the very modest nature of those figures, it maintains, first, that the two types of tester belong to the same category of goods and, second, that minimal use may be sufficient to establish genuine use of the trade mark. The applicant adds that it sought
to acquire a commercial position on the relevant market by referring to the catalogue it produced.
61      It should be recalled in that regard that, while it is true that there is no quantitative threshold which ought to
be used to determine whether or not the use is genuine, as pointed out in paragraphs 25 and 51 above, and while it is therefore possible, in certain circumstances, to acknowledge
genuine use notwithstanding even minimal use, as pointed out in paragraphs 25 and 37 above, the applicant fails to establish that the Board of Appeal made an error of assessment in concluding
that there were no such circumstances in the present case. In particular, the fact that the applicant had a catalogue and that the two types of testers were reproduced in it cannot suffice to establish a desire on the part of the applicant to maintain or gain a position on the market, unlike, for example, the carrying out of advertising campaigns, as indicated in paragraph 41 above. Furthermore, the production of that catalogue does not in itself demonstrate that it was made available to the relevant public in the relevant territory for the purposes of assessing genuine use of the trade mark at issue (see, to that effect, judgment of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 42). Moreover, the statement by the applicant’s director contains no reference to sales of those two types of goods.
62      Consequently, the Board of Appeal made no error of assessment in finding that the applicant had failed to
adduce proof
of genuine use of the trade mark at issue in relation to loop/PSC testers and RCD testers.
63      In the eighth and final
place, it is necessary to examine the applicant’s arguments concerning genuine use of the trade mark at issue in relation to pH meters, anemometers, CO2 analysers and calibrators for sound.
64      As regards pH meters, the applicant refers to its catalogue, 54 export authorisations and the statement by
its director showing that 42 units were sold, in order to maintain that, since the Board of Appeal acknowledged that the sale of 40 units of multimeters for electrical quantities made it possible to establish genuine use of the trade mark at issue for those goods, the same ought to
apply to pH meters.
65      In that regard, with regard to the numerical comparison proposed by the applicant, it is appropriate first of all simply to repeat the considerations set out in paragraph 51 above. It was therefore with regard to all the characteristics of the goods in question, in the present case pH meters, that the Board of Appeal had to assess whether or not the use of the trade mark at issue was genuine, without abstractly transposing the solution it had adopted for multimeters for electrical quantities. Next, as regards those characteristics, it is clear from the statement made by the applicant’s director that the pH meters were sold at an average price of approximately 100 United States dollars (USD) (approximately EUR 95) per unit, a price which, while significant, does not in itself justify the goods being confined to a very limited market. However, the number of products sold, which was limited
but neither small nor, a fortiori, minimal, and the turnover generated by those sales establish that the applicant was actually present on the market, albeit in embryonic form. The Board of Appeal therefore erred in holding that proof of genuine use of the trade mark at issue had not been adduced in respect of ‘pH meters’ solely because of a ‘very small number of sales’.
66      As regards anemometers, the applicant submits that it has adduced evidence capable of establishing genuine use of the trade mark at issue for those goods, namely its catalogue, extracts from websites and export authorisations for 43 anemometers. It adds that anemometers, like all its goods, were the subject of a general marketing campaign.
67      However, there is no concrete evidence to support such assertions. In particular, the invoices of a company specialising in referencing for professionals establish
only that the applicant entered into one-year contracts on four occasions for worldwide referencing between 2018 and 2021. However, there is nothing to identify the goods concerned by that referencing campaign. Providing a screenshot is not sufficient to demonstrate that anemometers were the subject of that internet referencing campaign. Furthermore, the statement by the applicant’s director shows that only three units were sold during the relevant period, in Sweden, in 2017.
68      Nor does the applicant provide any evidence that that use, which is very limited, is regarded as
warranted, in the relevant economic sector, as a means of maintaining or creating market shares for the goods protected by the trade mark, in accordance with the case-law referred to in paragraphs 27 and 28 above.
69      Consequently, it must be held that the Board of Appeal made no error of assessment in finding that genuine use of the trade mark at issue had not been established in respect of anemometers.
70      As regards CO2 analysers/testers, the applicant maintains, in the same way, that its catalogue, extracts from websites and export authorisations relating to 37 CO2 analysers/testers constitute evidence of genuine use of the trade mark at issue. It adds that it has made a serious attempt to acquire a commercial position on the relevant market, as is apparent from that catalogue, and submits that the low level of sales ought
not to be an obstacle to acknowledging genuine use of the trade mark at issue in respect of those goods.
71      The applicant’s allegations
are not, however, supported by the documents in EUIPO’s file. Accordingly, the evidence concerning CO2 analysers/testers consists of (i) the 37 export authorisations referred to
by the applicant and (ii) the statement made by the director of the applicant indicating that only 6 CO2 analysers/testers were sold, a figure which may be described as symbolic, despite the relatively high selling price (several hundred USD per unit) of that type of device.
72      Nor does the applicant provide evidence of use regarded as warranted, in the relevant economic sector, as a means of maintaining or creating market shares for the goods protected by the trade mark at issue, nor does it demonstrate
that the nature of those goods and the characteristics of the market would permit the inference that such minimal use
is sufficient, even though the applicant maintains that the market is reserved for professionals.
73      Consequently, there is nothing to establish that the trade mark at issue has been put to genuine use in relation to CO2 analysers/testers and the Board of Appeal therefore made no
error of assessment as regards the absence of genuine use.
74      As regards calibrators for sound, the applicant once more
refers to its catalogue in order to establish that they have been marketed. It states that those products cannot be separated from the sound level meters on which they are placed in order to calibrate their frequency. Accordingly, in the applicant’s view, since calibrators for sound and sound level meters have the same function, they must be considered together. The applicant therefore is of the view
that the 16 calibrators for sound sold during the relevant period ought to
be added to the 172 units of sound level meters sold during the same period.
75      The applicant concludes from this that, since the Board of Appeal considered that the sale of 108 AD/DC clamp meters and 40 multimeters for electrical quantities made it possible to establish genuine use of the trade mark at issue, evidence relating to genuine use of that trade mark for calibrators for sound has also been provided.
76      In the present case, the applicant merely asserts, without providing any evidence, that sound level meters and calibrators for sound have the same function and cannot be separated from each other. That assertion appears, moreover, to be invalidated by the considerable disparity in the sales figures provided by the applicant and referred to in paragraph 74 above. In the event of the goods being functionally identical or inseparable, the applicant’s sales of those two types of good
would have been approximately the same. However, that is not so, as the applicant’s respective sales of those two types of products (16 calibrators for sound compared with 172 sound level meters) are in a ratio of approximately 1 to 10.
77      Furthermore, the sale of only 16 calibrators for sound does not make it possible, in the absence of any details provided by the applicant capable of justifying the minimal nature of those sales in relation to the market or the characteristics of those goods, to establish genuine use of the trade mark at issue for those goods. With regard to the applicant’s reference to the number of units sold of multimeters for electrical quantities and of AC/DC clamp meters, it is necessary once again to repeat the considerations set out in paragraph 51 above.
78      Consequently, in the light of the evidence before the General Court, there is nothing to establish that the trade mark at issue has been put to genuine use in relation to anemometers, CO2 analysers/testers and calibrators for sound. The Board of Appeal therefore did not err in its assessment of the genuine nature of that use.
79      In the light of all the foregoing considerations, the applicant’s single plea in law must be upheld in so far as it relates to the Board of Appeal’s assessment that there was no proof
of genuine use of the trade mark at issue for dataloggers, insulation testers and pH meters, and that plea and, consequently, the
claim for annulment must be rejected as to the remainder.
The claim for alteration
80      As has been stated in paragraph 15 above, the power of review conferred on the General Court by Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on the General Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
81      In the present case, it must be pointed out that the Board of Appeal examined, in the contested decision, all the evidence which the applicant had submitted in order to substantiate the claim that there had been genuine use of the trade mark at issue in connection with the goods in respect of which it had been registered, with the result that, contrary to EUIPO’s assertions, the Court has the power to alter that decision in that regard (see, to that effect, judgment of 5 June 2024, Supermac’s v EUIPO – McDonald’s International Property (BIG MAC), T‑58/23, not published, EU:T:2024:360, paragraph 109).
82      As is apparent from paragraphs 49, 52 and 65 above, the Board of Appeal was obliged to conclude, following an overall assessment of the evidence provided by the applicant, that the evidence
was sufficient to demonstrate genuine use of the trade mark at issue for ‘dataloggers’, ‘insulation testers’ and ‘pH meters’.
83      In those circumstances, by way of alteration of the contested decision, it must be held, following an overall assessment of the evidence provided by the applicant before EUIPO and examined by the latter, that the evidence was sufficient to demonstrate genuine use of the trade mark at issue for ‘dataloggers’, ‘insulation testers’ and ‘pH meters’.
Costs
84      Under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.
85      Furthermore, Article 138(3) of the Rules of Procedure provides that the General Court may order an intervener to bear its own costs.
86      In the present case, since both the applicant and EUIPO have been unsuccessful in part, each of those parties must be ordered to bear its own costs. The intervener is also ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls in part and alters the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 May 2023 (Case R 2250/2022-2) to the effect that the appeal brought before that Board of Appeal of EUIPO by TES Electrical Electronic Corp. against the decision of the Cancellation Division of 21 September 2022 is upheld as regards the proof of genuine use of the figurative EU trade mark TES for ‘dataloggers’, ‘insulation testers’ and ‘pH meters’ in Class 9;
2.      Dismisses the action as to the remainder;
3.      Orders each party to bear its own costs.
Marcoulli
Schwarcz
Valasidis
Delivered in open court in Luxembourg on 22 January 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*Language of the case: English.