JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
8 July 2020 (*)
(EU trade mark — Revocation proceedings — EU word mark AIR — Genuine use of the mark — Article 18(1) of Regulation (EU) 2017/1001 — Article 58(1)(a) of Regulation 2017/1001 — Alteration of distinctive character)
In Case T‑800/19,
Austria Tabak GmbH, established in Vienna (Austria), represented by J.L. Gracia Albero and R. Ahijón Lana, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Mignot & De Block BV, established in Eindhoven (Netherlands), represented by S. Körber, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 16 September 2019 (Case
R 1665/2018‑4), concerning revocation proceedings between Mignot & De Block and Austria Tabak,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, J. Schwarcz (Rapporteur) and R. Norkus, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 20 November 2019,
having regard to the response of EUIPO lodged at the Court Registry on 3 February 2020,
having regard to the response of the intervener lodged at the Court Registry on 11 February 2020,
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
Background to the dispute
1        On 16 July 2001, the predecessor in title to the applicant, Austria Tabak GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign AIR.
3        The goods in respect of which registration was sought are in Class 34 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Tobacco, whether manufactured or unmanufactured; smoking tobacco, pipe tobacco, hand rolling tobacco, chewing tobacco; cigarettes, cigars, cigarillos; substances for smoking sold separately or blended with tobacco, none being for medicinal or curative purposes; snuff; smokers’ articles included in class 34; cigarette papers, cigarette tubes and matches’.
4        The contested mark was registered on 30 May 2005.
5        On 25 August 2016, the intervener, Mignot & De Block BV, filed an application for revocation in respect of the contested mark, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), on the ground that that mark had not been put to genuine use within a continuous period of five years. That application was directed against all the goods covered by the contested mark.
6        On 26 June 2018, the Cancellation Division upheld the intervener’s application and revoked the contested mark as of 25 August 2016 in respect of all the goods concerned.
7        On 24 August 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision, in so far as it had revoked the applicant’s rights to the contested mark in respect of the goods concerned.
8        By decision of 16 September 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and upheld the revocation of the contested mark as from the date of the application for revocation. The Board of Appeal found, in essence, that the differences between the contested mark and the mark as used were such as to alter the distinctive character of the contested mark.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to bear the costs of the present proceedings, including the costs deriving from the proceedings before the Opposition Division and the Fourth Board of Appeal.
10      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
11      In support of its action, the applicant puts forward a single plea in law alleging, in essence, that, in finding that the contested mark had not been put to use in a way that preserved the acquired rights, the Board of Appeal infringed Article 58(1)(a) of Regulation 2017/1001, read in conjunction with point (a) of the second subparagraph of Article 18(1) of that regulation.
12      First, it should be borne in mind that the question whether a trade mark has been put to genuine use requires that an overall assessment be carried out, taking into account all the relevant factors. Thus each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning (judgment of 21 November 2013, Recaro v OHIM — Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 31 and the case-law cited).
13      Next, it should be noted that a word mark is a mark consisting entirely of letters, words or groups of words, without any specific figurative element. The protection offered by the registration of a word mark applies to the word in the application for registration and not to the individual figurative or stylistic characteristics which that mark might possess. As a result, the font that the sign might be presented in must not be taken into account. It follows that a word mark may be used in any form, in any colour or font type (see judgment of 28 June 2017, Josel v EUIPO — Nationale-Nederlanden Nederland (NN), T‑333/15, not published, EU:T:2017:444, paragraphs 37 and 38 and the case-law cited).
14      According to the case-law, and as the applicant notes, there is no rule in the EU trade mark system that obliges the opponent to prove the use of the trade mark on its own, independently of any other mark or sign. Therefore, the case could arise where two or more trade marks are used jointly and autonomously, with or without the name of the manufacturer’s company (judgment of 6 November 2014, Popp and Zech v OHIM — Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 43; see, to that effect, judgments of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraphs 33 and 34, and of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 100). Thus, as argued by the applicant, joint use of the name of a company or a mark with the earlier mark cannot, in itself, undermine the function of the trade mark as a means of identifying the goods at issue (see, to that effect, judgments of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraph 36, and of 6 November 2014, MB, T‑463/12, not published, EU:T:2014:935, paragraph 43).
15      However, it follows directly from the wording of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 that the use of the trade mark in a form which is different from the form in which it was registered is considered as a use for the purposes of the first subparagraph of Article 18(1) of that regulation, to the extent that the distinctive character of the trade mark in the form in which it was registered is not changed (see, to that effect, judgments of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 21; of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraph 30; and of 13 September 2016, hyphen v EUIPO — Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 25).
16      For a trade mark to possess distinctive character for the purposes of Regulation 2017/1001, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited; see, also, to that effect, judgment of 29 April 2004, Procter & Gamble v OHIM, C‑468/01 P to C‑472/01 P, EU:C:2004:259, paragraph 32).
17      The Court has already held that the condition of genuine use of a trade mark, within the meaning of Article 18(1) of Regulation 2017/1001, may be satisfied where the trade mark is used only through another composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark, provided that the mark continues to be perceived as an indication of the origin of the product in question (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 26 and the case-law cited).
18      Furthermore, it is apparent from paragraph 57 of the judgment of 13 September 2016, Representation of a polygon (T‑146/15, EU:T:2016:469), that, where several signs are used simultaneously, steps must be taken to ensure that, for the purposes of the application of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, such use does not alter the distinctive character of the registered sign, having regard inter alia to business practices in the relevant sector.
19      Point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 relates to a situation where a national or EU registered trade mark is used in trade in a form slightly different from the form in which registration was effected. The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion 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 by the proprietor of a trade mark 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 sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see, to that effect, judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 27 and the case-law cited).
20      Thus, a finding that the distinctive character of the mark as registered has been altered requires an assessment of the distinctive and dominant character of the added elements based on the intrinsic qualities of each of those elements and the relative position of the various elements within the arrangement of the trade mark (judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraphs 28 and 37).
21      For the purposes of that finding, account must be taken of the intrinsic qualities and, in particular, the greater or lesser degree of distinctive character of the earlier mark used solely as part of a composite mark or jointly with another mark. The weaker the distinctive character, the easier it will be to alter it by adding a component that is itself distinctive, and the more the mark will lose its ability to be perceived as an indication of the origin of the product it designates. The reverse is also true (judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 29).
22      It must also be remembered that, in order for point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 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 and their weak distinctive character (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 31 and the case-law cited).
23      Lastly, it is also apparent from the case-law that the fact that the registered mark is sometimes used with additional elements and sometimes without can be one of the criteria from which it may be inferred that there has been no alteration of distinctive character (see, to that effect, judgment of 7 September 2016, Victor International v EUIPO — Ovejero Jiménez et Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 42 and the case-law cited).
24      It is in the light of the considerations recalled above that it must be determined whether the Board of Appeal was correct in finding, in paragraph 51 of the contested decision, that the applicant had not proved that the contested mark AIR had been put to genuine use, either in the form registered or in any other form that constituted an acceptable difference in accordance with point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, and, accordingly, in dismissing the appeal brought before it.
25      In that regard, it follows from the contested decision that the Board of Appeal reached that conclusion on two grounds. First, in paragraphs 31 and 33 of the contested decision, it found, in essence, that, in the form in which the trade mark is used on the packaging of the goods, the alteration of the distinctive character of the contested mark is obvious since the word ‘memphis’ has a normal degree of distinctive character and is markedly more dominant than the words ‘air blue’. Second, in paragraph 35 of the contested decision, the Board of Appeal found, in essence, that, if it is argued that the words ‘memphis’ and ‘air blue’ are used as independent marks in an autonomous way and at the same time, the presence of the word element ‘blue’ is in itself sufficient to alter the distinctive character of the contested mark.
26      The applicant challenges that assessment and claims that the distinctive character of the contested mark is not altered by the use of the signs MEMPHIS AIR BLUE and MEMPHIS AIR BLUE 100, or the following sign:
27      The case-law acknowledges that several signs may be used simultaneously without altering the distinctive character of the registered sign. According to the applicant, that is the case here, since the evidence submitted shows simultaneous use of two autonomous and clearly differentiated signs, namely use of the ‘house mark’ MEMPHIS and use of another sign consisting of the contested mark AIR and the descriptive element ‘blue’.
28      EUIPO contests the applicant’s arguments while leaving open the question of whether the case-law on simultaneous use of two marks or signs is applicable. EUIPO recalls, in that regard, that the Board of Appeal did not expressly find that that case-law was applicable to the present case. The Board of Appeal found, in essence, that, regardless of whether the word element ‘memphis’ was perceived by the relevant public as having an autonomous position in the mark as used, as the applicant submits, the presence of the word element ‘blue’ is in itself sufficient to alter the distinctive character of the contested mark.
29      In the present case, in the first place, it must be noted that, as the application for revocation of the contested mark was filed on 25 August 2016, the five-year period referred to in Article 58(1)(a) of Regulation 2017/1001 ran, as the Board of Appeal correctly observed in paragraph 15 of the contested decision, from 25 August 2011 to 24 August 2016.
30      In the second place, it should be considered that, having regard to the goods at issue, the words ‘memphis’ and ‘air’ have average distinctive character. Contrary to what is claimed by the applicant, that is also the case of the word ‘blue’. While it is true that the evidence submitted shows that that word is often used on the tobacco market by various manufacturers, the fact remains that that evidence is not capable of establishing that the word ‘blue’ or the colour blue are perceived by the relevant public as having a descriptive purpose and that they indicate a milder taste, as claimed by the applicant. As contended, in essence, by EUIPO and the intervener, the fact that the word ‘blue’ is frequently used on the tobacco market could, at most, be considered as evidence of the fact that that element has only weak distinctive character, but not that it directly describes the characteristics of the goods in question, namely that they have a milder taste. It must be added that the fact that the word ‘blue’ appears on invoices in abbreviated form, namely ‘bl’, does not demonstrate that it is descriptive in relation to the goods concerned, as argued by the applicant. First, the descriptive character of the word ‘blue’ must be assessed in the light of the goods concerned and not of details on invoices and, second, as correctly contended by EUIPO, the recipients of invoices are professionals and not the general public in relation to which the genuine use of the contested mark must be assessed in the present case.
31      In the third place, it must be stated that, for the purposes of its reasoning relating to the alteration of the distinctive character of the contested mark, the Board of Appeal took account of all the evidence submitted by the applicant as referred to in paragraph 3 of the contested decision, namely printouts of websites (Enclosures Nos 1 to 3); a distribution agreement (Enclosure No 5); various invoices (Enclosures No 4 and No 6); photographs of cigarette packets (Enclosures No 7 and No 8); undated photographs of products at the point of sale (Enclosure No 9) and a graph showing the sales history of the cigarettes ‘Memphis Air Blue’ (Enclosure No 10).
32      The Board of Appeal correctly observed in paragraph 25 of the contested decision that the evidence in Enclosures Nos 1 to 3 and No 9 contained no indication of, or variation on, the contested mark. Furthermore, it must be stated, as regards the other evidence submitted by the applicant, that the word ‘air’ appears invariably in combination with the words ‘memphis’ and ‘blue’ or ‘blue 100’. None of the evidence referred to above shows the earlier word mark AIR used in isolation or, at the very least, clearly apart from the element ‘blue’ or ‘blue 100’. It must therefore be held that the way in which the combination ‘air blue’ or ‘air blue 100’ is used in the evidence submitted in the present case alters the distinctive character of the contested mark AIR as registered.
33      In that regard, as stated by the Board of Appeal in paragraph 43 of the contested decision, it must be noted that both elements ‘air’ and ‘blue’ are systematically juxtaposed and, consequently, always appear together and very close to each other, forming a unit. Furthermore, in so far as the element ‘blue’ consists of four letters and the element ‘air’ consists of three letters, that added element is always clearly visible and does not have a secondary or ancillary position in the overall impression created by the combination ‘air blue’. The element ‘blue’ is therefore visually equally important as the element ‘air’.
34      Moreover, the finding that the distinctive character of the contested mark AIR, as registered, has been altered is reinforced by the fact that the combination ‘air blue’ is always subordinated to the element ‘memphis’ on the packaging of the goods, as correctly stated by the Board of Appeal in paragraph 46 of the contested decision. That addition introduces a further differentiating factor in comparison with the contested mark AIR.
35      That finding cannot be called into question by the argument that, in essence, the element ‘memphis’ is a trade mark used by the applicant to sell goods and that it corresponds solely to the addition of the ‘house mark’. Indeed, it must be stated that that element is always clearly visible in that it has a dominant position in the overall impression produced by the trade mark as used. In any event, even if it were established that that element is a ‘house mark’, that circumstance does not call into question the fact that that word alters the distinctive character of the contested mark AIR, since the relevant public no longer perceives the element ‘air’ as an indication of the origin of the goods in question, in accordance with the case-law cited in paragraph 17 above.
36      Therefore, the situation in the case at hand is not the same as that in which the form of the sign used in trade differs only in insignificant respects from the form in which that sign was registered. Accordingly, the contested mark AIR cannot be regarded as broadly equivalent to the combinations MEMPHIS AIR BLUE and MEMPHIS AIR BLUE 100, or the following combination:
37      In the light of the foregoing assessment of the distinctive and dominant character of the added elements, based on the intrinsic qualities of each of those elements and on the relative position of the various elements, it must be held that the variations of use shown alter the distinctive character of the contested mark AIR as registered, as correctly found by the Board of Appeal.
38      It follows that the Board of Appeal did not infringe Article 58(1)(a) of Regulation 2017/1001, read in conjunction with point (a) of the second subparagraph of Article 18(1) of that regulation, bearing in mind the alteration of the contested mark AIR in the evidence submitted by the applicant.
39      It follows from the foregoing that the single plea in law put forward by the applicant must be rejected.
Costs
40      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Austria Tabak GmbH to pay the costs.
Marcoulli
Schwarcz
Norkus
Delivered in open court in Luxembourg on 8 July 2020.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.