JUDGMENT OF THE GENERAL COURT (Third Chamber)
5 March 2025 (*)
( EU trade mark – Revocation proceedings – EU word mark AMSTERDAM POPPERS – Lack of genuine use of the mark – Article 58(1)(a) and (2) of Regulation (EU) 2017/1001 – Action for annulment – Representation by a lawyer – Admissibility )
In Case T‑1187/23,
Funline International Corp., established in Wilmington, Delaware (United States), represented by S. Hejdová and J. Brauner, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
MS Trade s. r. o., established in Prague (Czech Republic), represented by A. Daňková, lawyer,
THE GENERAL COURT (Third Chamber),
composed of P. Škvařilová-Pelzl (Rapporteur), President, G. Steinfatt and D. Kukovec, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 14 October 2024,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Funline International Corp., seeks, in essence, the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 October 2023 (Case R 2265/2022-5) (‘the contested decision’).
Background to the dispute
2        On 22 October 2009, the applicant filed an application for registration of an EU trade mark in respect of the word sign AMSTERDAM POPPERS.
3        The goods in respect of which the mark was registered on 21 June 2010 were in Classes 1 and 3 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, for each of those classes, to the following description:
–        Class 1: ‘Chemicals for use in the manufacture of aphrodisiacs; chemical preparations for stimulating sexual activity; these goods not for medical or pharmaceutical use’;
–        Class 3: ‘Soaps, perfumery; essential oils; cosmetics; intimate gels; massage oils; room scents for aphrodisiac purposes’.
4        On 11 August 2021, the intervener, MS Trade s. r. o., filed an application for revocation of the contested mark in respect of all the goods for which it had been registered, on the basis of Article 58(1)(a) of Regulation 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).
5        On 7 October 2021, the applicant submitted a first set of evidence in order to prove genuine use of the contested mark.
6        By decision of 11 November 2022, the Cancellation Division found that the evidence of use of the contested mark related only to stimulant inhalers (poppers) which were in Class 5 and that they did not correspond to the goods in respect of which the mark was registered. It therefore revoked the contested mark in respect of all the goods referred to in paragraph 3 above.
7        On 21 November 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division and submitted a second set of evidence.
8        By the contested decision, the Board of Appeal dismissed the appeal. More specifically, it found that the evidence showed that the sign AMSTERDAM POPPERS covered ‘poppers’. In that respect, the Board of Appeal took the view that that product did not correspond to any of the goods for which the contested mark had been registered and, consequently, upheld the revocation of that mark in respect of all the goods covered by it.
Forms of order sought
9        The applicant claims, in essence, that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
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.
Law
Validity of the applicant’s representative’s power of attorney
12      Under Article 173(3) of the Rules of Procedure of the General Court, the intervener, referred to in Article 173(1) and (2), has the same procedural rights as the main parties. It may support the form of order sought by a main party and may apply for a form of order and put forward pleas in law independently of those applied for and put forward by the main parties.
13      In that respect, at the hearing, the intervener raised, in essence, a plea of inadmissibility concerning the validity of the power of attorney of one of the applicant’s representatives, J. Brauner. It maintains, in particular, that the representative originally appointed by the applicant, K. Bauer, a patent and trade mark agent, who was not competent to plead before the Court, irregularly transferred his power of attorney to J. Brauner, who represented the applicant on the day of the hearing. According to the intervener, that transfer had the effect of depriving J. Brauner of all power to represent the applicant before the Court.
14      In that connection, it must be borne in mind that the intervener raised its plea of inadmissibility at the beginning of its pleadings, with the result that the parties present had the possibility of submitting their observations on that plea. However, neither the applicant nor EUIPO have expressed a view on that plea.
15      Even though the intervener did not lodge a plea of inadmissibility by a separate document pursuant to Article 130 of the Rules of Procedure, the fact remains that the issue of the applicant’s representation is a matter of public policy (see, to that effect, order of 5 September 2013, ClientEarth v Council, C‑573/11 P, not published, EU:C:2013:564, paragraph 20) and is, therefore, decisive as regards the admissibility of the action for annulment brought before the Court, which it may consider at any time (see, to that effect, order of 13 December 2018, Euracoal and Others v Commission, T‑739/17, not published, EU:T:2018:959, paragraph 44 and the case-law cited).
16      In that regard, according to the third paragraph of Article 19 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court pursuant to Article 53 of that statute, non-privileged parties must be represented before the Courts of the European Union by a lawyer. It is clear from the fourth paragraph of that Article 19 that two cumulative conditions must be met in order for a person to be validly permitted to represent parties, other than the Member States and the EU institutions, before the Courts of the European Union: first, that person must be a lawyer; and, second, he or she must be authorised to practise before a court or a tribunal of a Member State or of another State which is a party to the Agreement on the European Economic Area (EEA). Those requirements are substantive procedural requirements and failure to comply with them will render the action inadmissible (see order of 12 October 2018, Saga Furs v EUIPO – Support Design (SAGA), T‑313/18, not published, EU:T:2018:701, paragraph 9 and the case-law cited).
17      With regard to the first condition set out in the fourth paragraph of Article 19 of the Statute of the Court of Justice of the European Union, it is also clear from the case-law that the person who signs the application must be a member of the Bar in order to be regarded as a lawyer for the purposes of that provision; it is not sufficient that that person is entitled to represent parties in proceedings before the courts and tribunals of a Member State (see, to that effect, order of 11 May 2017, Neonart svetlobni in reklamni napisi Krevh v EUIPO, C‑22/17 P, not published, EU:C:2017:369, paragraphs 6 and 7 and the case-law cited).
18      The requirement imposed by Article 19 of the Statute of the Court of Justice of the European Union has its justification in the fact that a lawyer is regarded as collaborating in the administration of justice by the courts and as being required to provide, in full independence, and in the overriding interests of justice, such legal assistance as the client requires. The counterpart of that protection lies in the rules of professional ethics and discipline which are laid down and enforced in the general interest by institutions endowed with the requisite powers for that purpose. Such a conception reflects the legal traditions common to the Member States and is also to be found in the legal order of the European Union (order of 14 November 2016, Neonart svetlobni in reklamni napisi Krevh v EUIPO (neonart), T‑221/16, not published, EU:T:2016:673, paragraph 7).
19      In the first place, plainly, according to the case-law, patent and trade mark agents are not necessarily lawyers (order of 9 September 2004, Alto de Casablanca v
OHIM – Bodegas Chivite (VERAMONTE), T‑14/04, EU:T:2004:258, paragraph 11). Although K. Bauer is entitled to represent parties in certain actions before the courts and tribunals of the Czech Republic, it remains the case that he is not a lawyer. As it is clear from Article 19 of the Statute of the Court of Justice of the European Union that non-privileged parties must be represented by a lawyer before the Courts of the European Union, it must be held that K. Bauer, originally appointed by the applicant, was not authorised to represent the applicant before the Court.
20      However, in the second place, first, it should be observed that the application was duly signed and lodged by S. Hejdová, a lawyer registered at the Czech Bar Association, which is not disputed. Second, the applicant was represented at the hearing by S. Hejdová and J. Brauner, lawyers entered in the Register of lawyers of the Czech Bar Association and authorised to practise before a court or tribunal of a Member State or of another State which is a party to the EEA Agreement. Third, as is clear from the power of attorney granted by the applicant to K. Bauer, which was added to the file when the application was submitted, the applicant explicitly intended to grant him the right to appoint, in essence, a lawyer who satisfies all the conditions laid down in Article 19 of the Statute of the Court of Justice of the European Union to represent it, which is the case here. Therefore, J. Brauner was lawfully appointed to represent the applicant before the Court.
21      In those circumstances, the plea of inadmissibility raised by the intervener is unfounded and must be rejected.
Substance
22      Under the guise of four formal pleas in law, the applicant relies, in essence, on two pleas, alleging, first, infringement of Article 58(1)(a) of Regulation 2017/1001 and, second, infringement of Article 47(2) of Regulation 2017/1001 and of Article 19(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of 15 April 1994 (OJ 1994 L 336, p. 214; ‘the TRIPS Agreement’), which forms Annex 1C to the Agreement establishing the World Trade Organization (WTO) (OJ 1994 L 336, p. 3).
The first plea, alleging infringement of Article 58(1)(a) of Regulation 2017/1001
23      In the first place, the applicant submits that the Board of Appeal incorrectly took into account the Nice Classification in order to define the scope of protection of the contested mark and to restrict that scope. According to Article 33(1) of Regulation 2017/1001, the Nice Classification serves only to register a mark and should therefore not serve to determine the scope of protection of a mark, which is solely defined by the heading of the goods which it covers. Furthermore, since that heading must be clear and precise in order for the mark to be registered, there is also no need to interpret the goods covered by the contested mark in the light of the Nice Classification. In that regard, according to the applicant, EUIPO misapplied the case-law of the Court. The Nice Classification is relevant only if the description of the goods covered by a mark includes a specific limitation which defines the class in which those goods belong.
24      In the second place, the applicant claims that the Board of Appeal incorrectly interpreted the nature of the goods marketed and that the evidence which has been submitted shows that those goods are multipurpose composite products and that they correspond to the goods in respect of which the contested mark has been registered.
25      EUIPO disputes the applicant’s arguments.
26      The intervener disputes the applicant’s arguments and also contends, in essence, that, in accordance with Article 95(2) of Regulation 2017/1001, EUIPO should not have accepted the second set of evidence.
27      In accordance with Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
28      There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 14 September 2022, Privatbrauerei Eichbaum v EUIPO – Anchor Brewing Company (STEAM), T‑609/21, not published, EU:T:2022:563, paragraph 46 and the case-law cited).
29      Moreover, 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 that regulation, proof of use of a mark must concern the place, time, extent and nature of use of the mark and is, in principle, to be limited 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.
30      As a preliminary point, it should be observed that the Board of Appeal, like the Cancellation Division, confined itself to examining whether the evidence adduced by the applicant related to the goods in respect of which the contested mark had been registered, without, however, examining the other factors relating, in particular, to the time, place and extent of use. Consequently, like the Board of Appeal, the Court will examine only whether it is clear from that evidence that the goods the marketing of which is claimed correspond to those in respect of which the contested mark has been registered.
31      In the first place, the applicant’s argument that, first, the Board of Appeal could not use the Nice Classification in order to determine the scope of protection of the contested mark and, second, that classification is relevant only if the description of the goods covered by a mark includes a specific limitation which states the class in which those goods belong must be rejected.
32      Contrary to what the applicant submits, the fact that the heading of the goods or services in respect of which registration of a mark is sought must be clear and precise, as follows from Article 33(2) and (4) of Regulation 2017/1001, does not mean that issues concerning the interpretation of those headings may not arise after registration of that mark, in particular, where it is necessary to determine whether the goods marketed in connection with that mark actually correspond to those for which it has been registered.
33      In that regard, it follows from the case-law that, even though the Nice Classification is purely administrative, reference should, however, be made to it in order to determine, where necessary, the range or the meaning of the goods in respect of which a mark has been registered. In particular, where the description of the goods for which a mark is registered is so general that it may cover very different goods, it is possible to take into account, for the purposes of interpretation or as a precise indication of the designation of the goods, the classes in that classification that the trade mark applicant has chosen (see judgment of 26 April 2023, Wenz Kunststoff v EUIPO – Mouldpro (MOULDPRO), T‑794/21, not published, EU:T:2023:211, paragraph 23 and the case-law cited). Moreover, the fact that the description of the goods covered by a mark does not contain a specific limitation stating the class in which they belong is, in that respect, irrelevant.
34      Accordingly, the headings of the goods covered by the contested mark must be interpreted from a systematic point of view, having regard to the logic and the system inherent in the Nice Classification, while taking into account the descriptions and explanatory notes to the classes, which are relevant in determining the nature and purpose of the goods in question (see, to that effect, judgment of 26 April 2023, MOULDPRO, T‑794/21, not published, EU:T:2023:211, paragraph 25 and the case-law cited).
35      In the present case, it follows that registration of the contested mark must be understood in the light of the Nice Classification in its ninth edition, which was in force at the time of the application for registration of that mark, and that it is not necessary to confine that analysis to the literal meaning of the descriptions in question. Contrary to what the applicant claims, the Board of Appeal’s assessments are, consequently, in that regard, free from errors of law.
36      In the second place, it should be noted that the applicant does not dispute the Board of Appeal’s finding that all the evidence relates, in so far as concerns the contested mark, to the marketing of a finished product, the product being poppers. It should, however, be examined whether the Board of Appeal was entitled to find that use of the contested mark to describe poppers did not make it possible to establish use in connection with the goods in respect of which that mark had been registered.
–       The goods in Class 1
37      As a preliminary point, it must be borne in mind that, according to well-established case-law, the raw materials subject to a transformation process are essentially different from the finished products which incorporate, or are covered by, those raw materials, both by their nature and by their aim and intended purpose (judgments of 9 April 2014, EI du Pont de Nemours v OHIM – Zueco Ruiz (ZYTeL), T‑288/12, not published, EU:T:2014:196, paragraph 43, and of 17 April 2024, DDP Specialty Electronic Materials US 8 v EUIPO – Taniobis (AMBERTEC), T‑76/23, not published, EU:T:2024:248, paragraph 52; see also, to that effect, judgment of 3 May 2012, Conceria Kara v OHIM – Dima (KARRA), T‑270/10, not published, EU:T:2012:212, paragraph 53).
38      As regards the goods in Class 1 and described as being ‘chemicals used in the manufacture of aphrodisiacs’, the applicant’s argument that, in so far as it manufactures aphrodisiacs itself, it must be regarded as a manufacturer of chemicals used in the manufacture of aphrodisiacs, must be rejected. It follows from the description of the goods at issue that they concern goods marketed with the aim of being used in the manufacture of aphrodisiacs and that they therefore differ in their purpose from the mere marketing of aphrodisiacs as finished products. Accordingly, the Board of Appeal was right to find, in paragraph 49 of the contested decision, that the applicant was a supplier of finished products for use by end consumers and that it was not clear from the evidence that it was a manufacturer of ‘chemicals used in the manufacture of aphrodisiacs’ or that it had already sold chemicals to a manufacturer of aphrodisiacs.
39      As regards the goods in Class 1 and described as being ‘chemical preparations for stimulating sexual activity, these goods not [being] for medical or pharmaceutical use’, the applicant maintains that poppers are a chemical preparation which must belong to Class 1 even if they are sold as a finished product.
40      As the Board of Appeal recalls in paragraphs 50 to 52 of the contested decision, it is clear from the explanatory note to Class 1 of the ninth Nice Classification that that class includes mainly chemical products for use in industry, science and agriculture, including those which go to the making of products belonging to other classes. Consequently, that Board of Appeal was entitled to uphold the findings of the Cancellation Division that ‘chemical preparations for stimulating sexual activity’ could be interpreted as referring to chemical preparations for stimulating sexual activity that go to the making of products belonging to other classes.
41      The evidence relating to the use of the mark AMSTERDAM POPPERS relates to poppers only as a finished product, which is not disputed by the applicant, and not as a raw material to be used in further processing.
42      Accordingly, the Board of Appeal was right to find that no use had been established as regards the goods in Class 1 and described as being ‘chemicals for use in the manufacture of aphrodisiacs; chemical preparations for stimulating sexual activity; these goods not [being] for medical or pharmaceutical use’.
–       The goods in Class 3
43      First, as regards ‘perfumery; essential oils; cosmetics; intimate gels; massage oils’ in Class 3, it should be noted that the applicant has not submitted any argument to call into question the Board of Appeal’s finding that no use could be established in connection with those goods, since they did not have the same purpose as poppers. As that finding appears to be correct in the light of the evidence in the case file, there is no need to call it into question.
44      Second, concerning ‘soaps’ and ‘room scents for aphrodisiac purposes’ in Class 3, the applicant claims that the evidence submitted shows genuine use of the contested mark for those goods. More specifically, it submits that poppers constitute multipurpose composite products used as liquid incense, room scents and leather cleaner. According to the applicant, liquid incense and room scents correspond to a use in connection with ‘room scents for aphrodisiac purposes’ and leather cleaners to a use in connection with ‘soaps’.
45      However, as regards ‘room scents for aphrodisiac purposes’, it should be noted, as the Board of Appeal observed in paragraph 56 of the contested decision, that nothing in the evidence submitted by the applicant refers to a perfumed nature of poppers. In addition, the purpose of ‘room scents for aphrodisiac purposes’ does not consist in producing feelings of euphoria and relaxation by dilating the blood vessels, as is the case with poppers.
46      Moreover, in respect of ‘soaps’, it must be stated that the applicant’s argument is limited solely to noting that some poppers, marketed under the mark AMSTERDAM POPPERS, give the indication ‘leather cleaner’ on their label and that leather cleaners are ‘soaps’. As the Board of Appeal correctly observed, poppers are not ‘leather cleaners’. In that respect, the indications contained on the labels of the goods bearing the contested mark cannot alter their real intended purpose. In addition, all of the evidence suggests that the applicant does not promote poppers for their alleged cleaning properties, but solely for their stimulating or euphoriant properties.
47      The Board of Appeal was therefore correct in finding, in paragraphs 53 to 63 of the contested decision, that no use had been established as regards ‘soaps, perfumery, essential oils, cosmetics, intimate gels, massage oils, room scents for aphrodisiac purposes’ in Class 3 and covered by the contested mark.
48      Therefore, without it being necessary to examine whether poppers are multipurpose composite products, as the applicant claims, it follows from the foregoing that the purpose of poppers does not correspond to the goods in respect of which the contested mark has been registered and that no use has thus been established as regards those goods.
49      The first plea must therefore be rejected, without it being necessary to examine the intervener’s claim, alleging infringement, by EUIPO, of Article 95(2) of Regulation 2017/1001, inasmuch as it should have declared the second set of evidence inadmissible.
The second plea, alleging infringement of Article 47(2) of Regulation 2017/1001 and of Article 19(1) of the TRIPS Agreement
50      The applicant submits that there are proper reasons for non-use of the contested mark and refers, in that regard, to the concept of circumstances arising independently of the will of the owner of a mark, as follows from Article 19(1) of the TRIPS Agreement and from Article 47(2) of Regulation 2017/1001.
51      EUIPO and the intervener dispute the applicant’s arguments.
52      It must be borne in mind that it is not the Court’s function to examine new pleas introduced before it or to review the facts in the light of documents adduced for the first time before it. To allow the examination of those new pleas or such evidence would be contrary to Article 188 of the Rules of Procedure, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the pleas introduced and the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine them (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).
53      In that respect, it follows from the file relating to the proceedings that the applicant has not relied before EUIPO on the fact that there are proper reasons for non-use of the contested mark. Therefore, it is not for the Court to rule on that issue, which did not form part of the subject matter of the proceedings before the Board of Appeal.
54      The second plea must thus be rejected as being inadmissible and, accordingly, the action must be dismissed in its entirety.
Costs
55      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.
56      As a hearing took place and the applicant has been unsuccessful, it must be ordered to pay the costs of EUIPO, in accordance with the form of order sought by latter.
57      Since the intervener has not applied for costs against the applicant, it must be ordered to bear its own costs, in accordance with Article 138(3) of the Rules of Procedure.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Funline International Corp. to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);
3.      Orders MS Trade s. r. o. to bear its own costs.
Škvařilová-Pelzl
Steinfatt
Kukovec
Delivered in open court in Luxembourg on 5 March 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.