JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
5 October 2022 (*)
(EU trade mark – Invalidity proceedings – EU word mark ALDIANO – Earlier EU word marks and earlier international word registration ALDI – Genuine use of the earlier mark – Article 64 of Regulation (EU) 2017/1001)
In Case T‑429/21,
Aldi Einkauf SE & Co. OHG, established in Essen (Germany), represented by C. Fürsen, M. Minkner and A. Starcke, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO),
represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Cantina sociale Tollo SCA,
established in Tollo (Italy), represented by F. Celluprica, F. Fischetti and F. De Bono, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed, at the time of the deliberations, of A. Marcoulli, President, S. Frimodt Nielsen and J. Schwarcz (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action based on Article 263 TFEU, the applicant, Aldi Einkauf SE & Co. OHG, seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 May 2021 (Case R 1074/2020-4) (‘the contested decision’).
Background to the dispute
2        On 25 May 2018, the applicant filed an application with EUIPO for a declaration of invalidity of the EU trade mark which was registered following an application filed on 22 September 2017 for the word sign ALDIANO.
3        The goods covered by the mark at issue in respect of which a declaration of invalidity was applied for were, inter alia, in Class 33 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 to the following description: ‘Alcoholic beverages (except beers)’.
4        The application for a declaration of invalidity was based on the following earlier word marks and earlier international word registration:
–        the EU word mark ALDI, registered under the number 3360955 on 11 November 2004 (the ‘earlier mark No 3360955’), covering services in, inter alia, Class 35 and corresponding to the following description: ‘Retailing in all product areas; online retailing in all product areas; running supermarkets, retail outlets and discount retail outlets; advertising on the internet, for others; providing information on the internet, namely information about consumer products, consumer advice information and customer service information’;
–        the international word registration ALDI, registered under the number 870896 on 11 August 2005 (the ‘earlier registration’), covering services in, inter alia, Class 35 and corresponding to the following description: ‘Advertising; business management; business administration; office functions; retailing in all product areas; online retailing in all product areas; operating supermarkets, retail outlets and discount retail outlets; advertising on the internet, for others; providing information on the internet, namely information about consumer products, consumer advice information and customer service information; arranging of commercial transactions for third parties, also on the internet; arranging of contracts regarding the purchase and sale of goods as well as the providing of services for others, also via the internet’;
–        the EU word mark ALDI, registered under the number 2019867 on 3 August 2007 (the ‘earlier mark No 2019867’), in respect of goods and services in Classes 3, 4, 9, 16, 24, 25, 29 to 34 and 36, including ‘beers’ in Class 32 and ‘alcoholic beverages (except beers)’ in Class 33.
5        The ground relied on in support of the application for a declaration of invalidity was that set out in Article 60(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), read in conjunction with Article 8(1)(b) and (5) of that regulation.
6        Following the request made by the intervener, Cantina sociale Tollo SCA, before the Board of Appeal and in accordance with Article 64(2) and (3) of Regulation 2017/1001, EUIPO requested the applicant to provide proof of genuine use of the earlier marks and the earlier registration relied on in support of the application for a declaration of invalidity. The latter complied with that request within the prescribed period.
7        On 6 April 2020, the Cancellation Division upheld the application for a declaration of invalidity and declared the mark at issue invalid. It found, in essence, that genuine use of the earlier mark No 3360955 had been established for ‘retailing of foodstuffs including alcoholic and non-alcoholic beverages’ in Class 35 and that there was a likelihood of confusion between that mark and the mark at issue. It concluded that it was not necessary to examine the application for a declaration of invalidity on the basis of either the earlier registration or the earlier mark No 2019867.
8        On 27 May 2020, the intervener filed an appeal with EUIPO against the decision of the Cancellation Division.
9        By the contested decision, the Board of Appeal upheld the appeal, annulled the decision of the Cancellation Division and dismissed the application for a declaration of invalidity. In essence, it considered that the evidence submitted by the applicant did not establish genuine use of the earlier marks and the earlier registration for the goods and services in respect of which they had been registered. As regards the earlier mark No 3360955 and the earlier registration, it found, in essence, that the applicant claimed protection for retail services by using general wording ‘retailing in all product areas’ and ‘running supermarkets and discount retail outlets’, without providing details with regard to the goods or types of goods to which those services related. The Board of Appeal therefore considered that it was for that very broad specification that the applicant had to prove genuine use of the earlier marks and the earlier registration, which was impossible. As regards the earlier mark No 2019867, it found that the evidence submitted did not establish either the nature nor the extent of use of that mark for ‘beers’ in Class 32 and ‘wines’ in Class 33.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
11      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 64(2) of Regulation 2017/1001, divided into three complaints. The Board of Appeal erred in law in finding that there was no proof of genuine use, first, of the earlier mark No 3360955 and of the earlier registration for the services in Class 35, second, of the earlier mark No 2019867 for ‘wines’ in Class 33 and, third, of the earlier mark No 2019867 for ‘beers’ in Class 32.
13      The Court considers it appropriate to examine the second and third complaints first.
The second and third complaints relating to proof of use of the earlier mark No 2019867
14      The applicant alleges that the Board of Appeal infringed Article 64 of Regulation 2017/1001 by finding that the evidence submitted did not establish genuine use of the earlier mark No 2019867 for ‘wines’ in Class 33 and for ‘beers’ in Class 32.
Preliminary observations
15      Under Article 64(2) of Regulation 2017/1001, if the proprietor of the EU trade mark so requests, the proprietor of an earlier EU trade mark, being a party to the invalidity proceedings, is to furnish proof that that mark has been put to genuine use, failing which the application for a declaration of invalidity is to be rejected.
16      It must be borne in mind that, 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), evidence of a mark’s use must concern the place, time, extent and nature of use of the earlier mark and is to be 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 (see, to that effect, judgments of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 37, and of 10 September 2008, Boston Scientific v OHIM – Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 27).
17      In interpreting the concept of genuine use, account must be taken of the fact that the rationale for the requirement that the earlier mark must have been put to genuine use is neither to assess the commercial success of an undertaking or to monitor its economic strategy or, moreover, to reserve the protection of trade marks for large-scale commercial undertakings (see judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 32 and the case-law cited, and of 27 September 2007, La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 53 and the case-law cited).
18      As is apparent from the case-law, there is genuine use of a trade mark where it 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 was 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 27 September 2007, LA MER, T‑418/03, not published, EU:T:2007:299, paragraph 54 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 39; see, also, judgment of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 26 and the case-law cited).
19      More specifically, to assess whether the trade mark at issue has been put to genuine use in a particular case, an overall assessment of the documents in the file must be carried out, taking account of all the relevant factors in the case. In such an assessment, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of that 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 goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgments of 10 September 2008, CAPIO, T‑325/06, not published, EU:T:2008:338, paragraph 30 and the case-law cited, and of 15 September 2011, centrotherm Clean Solutions v OHIM – Centrotherm Systemtechnik (CENTROTHERM), T‑427/09, EU:T:2011:480, paragraph 27 and the case-law cited). Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or regular, and vice versa (see judgment of 15 September 2011, CENTROTHERM, T‑427/09, EU:T:2011:480, paragraph 28 and the case-law cited). In addition, the turnover and the volume of sales of goods under the earlier mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, the Court has stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to qualify as genuine, on condition that it is deemed to be justified, in the economic sector concerned, for the purpose of preserving or creating market share for the goods or services protected by the mark (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 39).
20      In addition, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgments of 23 September 2009, Cohausz v OHIM – Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 36 and the case-law cited; of 16 June 2015, Polytetra v OHIM – EI du Pont de Nemours (POLYTETRAFLON), T‑660/11, EU:T:2015:387, paragraph 47 and the case-law cited; and of 9 September 2015, Inditex v OHIM – Ansell (ZARA), T‑584/14, not published, EU:T:2015:604, paragraph 19 and the case-law cited).
21      It should be further stated that the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the proprietor of the mark to adduce additional evidence to dispel possible doubts as to the genuineness of the use of the mark at issue (see, to that effect, judgment of 18 January 2011, Advance Magazine Publishers v OHIM – Capela & Irmãos (VOGUE), T‑382/08, not published, EU:T:2011:9, paragraph 31).
22      Furthermore, Article 64(2) of Regulation 2017/1001 does not require continuous and uninterrupted use of the mark at issue during the relevant period, but only genuine use during that period (see, to that effect, judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraphs 40 and 41, and of 5 October 2017, Versace 19.69 Abbigliamento Sportivo v EUIPO – Gianni Versace (VERSACCINO), T‑337/16, not published, EU:T:2017:692, paragraph 51 and the case-law cited).
23      It is in the light of the abovementioned principles that it is necessary to examine whether the Board of Appeal correctly found that the evidence submitted by the applicant did not demonstrate genuine use of the earlier mark No 2019867 for ‘wines’ in Class 33 and ‘beers’ in Class 32, the only goods in respect of which the applicant relies on genuine use of that mark.
24      As a preliminary point, it should be noted that, as observed by the Board of Appeal in paragraph 45 of the contested decision, the applicant was required to prove genuine use of the earlier mark No 2019867 during the five years preceding the application for a declaration of invalidity, that is to say, between 25 May 2013 and 24 May 2018 (‘the relevant period’).
25      For the purposes of examining whether the earlier mark No 2019867 was put to genuine use during the relevant period, the Board of Appeal referred to the following evidence, submitted by the applicant, as described in paragraphs 8 and 10 of the contested decision:
–        an affidavit from an employee of Aldi central de compras SLU, of 4 December 2018 (‘the affidavit of 4 December 2018’) (item 1);
–        copies of advertisement magazines for several goods, in particular for Maternus beer and for ROSSO TOSCANO and BONUS wines, allegedly distributed between 2007 and 2018 (‘advertisement magazines’) (item 2);
–        copies of invoices issued by printing companies addressed to various Aldi group companies, allegedly relating to the printing of advertisement magazines from 2011 to 2014 and from 2016 to 2018 (‘the invoices for the printing of advertisement magazines’) (item 3);
–        one picture of a bottle of ROSSO TOSCANO wine bearing the handwritten words ‘7815’ and ‘II/05/12’, three copies of BONUS wine test packaging and one picture of a box of MATERNUS beer bottles, undated (item 4);
–        copies of invoices issued by printing companies addressed to various Aldi group companies, relating to the printing of labels allegedly bearing the sign ALDI from 2015 to 2017 (‘the invoices for printing labels’) (item 5);
–        copies of invoices issued by suppliers, addressed to various Aldi group companies, relating to the sales of goods known as ‘Aldi Maternus DD’, ‘VINO BONUS ALDI SLIM HELICAP’ and ‘ROSSO TOSCANO ALDI’ from 2011 to 2018 (item 6) and 2019 (‘the supplying invoices’) (item 7);
–        extracts from cash register tapes from 2014 to 2018 showing the sales of numerous foodstuffs, including beer and wine, in Spain (‘cash register tapes’) (item 8);
–        photographs of the presentation on shelves of an ALDI shop in Spain of MATERNUS beer and BONUS wine, undated (item 9).
26      In support of the second and third complaints, the applicant relies, in essence, on an incorrect assessment of the evidential value of the evidence in view of, first, the relevant period, second, the nature of the use of the earlier mark No 2019867 and, third, the extent of that use.
The evidence of use of the earlier mark No 2019867 taken into account by the Board of Appeal for ‘wines’ and ‘beers’
27      It should be noted that, among the items of evidence submitted by the applicant and referred to in paragraph 25 above, the Board of Appeal stated, in essence, that some of them lacked evidential value on the ground that they were undated. That is the case, in particular, with the advertisement magazines (item 2), the pictures and test packaging (item 4), and the photographs of the presentation on shelves of an ALDI shop of beer and wine (item 9). Furthermore, the Board of Appeal found that some of the items of evidence submitted lacked evidential value on the ground that they bore a date outside the relevant period. That is the case with some supplying invoices (items 6 and 7).
28      According to the applicant, the Board of Appeal incorrectly assessed the evidential value of the evidence. First, it submits that, contrary to what the Board of Appeal stated, the advertisement magazines are all dated. Second, even if it was established that items of evidence were undated or were subsequent to the relevant period, they nonetheless had evidential value and should have been assessed with the other evidence submitted.
29      In the first place, it is necessary to disregard, from the outset, the invoices for the printing of advertisement magazines issued between 27 October 2011 and 29 August 2012 (item 3), the supplying invoices issued between 3 October 2011 and 21 May 2013 (item 6), since those items bear a date before the relevant period. For the same reasons, the picture of a bottle of ROSSO TOSCANO wine bearing the handwritten words ‘7815’ and ‘II/05/12’ (item 4) must also be disregarded. Contrary to what the Board of Appeal stated in paragraph 62 of the contested decision, that picture is dated. On the other hand, it appears that the reference ‘II/05/12’ must be interpreted as meaning that that picture dates from May 2012, which is, moreover, supported by the only invoice of 18 April 2012 submitted for ROSSO TOSCANO wine in item 6.
30      In the second place, as regards the evidence allegedly undated, it must be stated that, as claimed by the applicant and contrary to what was stated by the Board of Appeal in paragraphs 58 to 60 and 75 of the contested decision, the advertisement magazines in item 2 are all dated.
31      The advertisement magazines are systematically presented with the first page, the page on which the wine or beer, in respect of which use is claimed, is displayed, and the last page. As regards the advertisement magazines from 2012 to 2014, they bear, on the first page, in the bottom right-hand corner, a number identifying the week, month and year of that magazine. By way of example, the advertising magazine on page 26 of item 2 contains, in the bottom right-hand corner of the first page, the number ‘I/12/13’, which corresponds to the first week of December 2013, as is confirmed unambiguously by the reference ‘from Saturday 07.12’ (‘a partir del sabado 07.12’) appearing on that same page. 7 December 2013 was indeed a Saturday. As to more recent advertisement magazines, they all mention the date or period of validity of offers. That is the case, for example, with the advertisement magazine on page 58 of item 2, which refers to ‘valid price from 16 to 22 July 2018’ (‘precio valido del 16 al 22 de julio de 2018’). It should be further stated, as submitted by the applicant, that the affidavit of 4 December 2018 also mentions the dates of publication of the advertisement magazines in item 2, by calendar week, which correspond to the dates mentioned on the advertisement magazines.
32      Therefore, the Board of Appeal incorrectly stated that the advertisement magazines were undated. The fact remains that it is necessary to determine their evidential value on the basis of their alleged date of publication. In that regard, of the 20 advertisement magazines submitted in item 2, 4 are before the relevant period and must therefore be disregarded, 13 relate to the relevant period and, last, 3 are subsequent to that period. It should therefore be ascertained whether, as submitted by the applicant, such evidence, subsequent to the relevant period, has evidential value.
33      Furthermore, it should be noted that, contrary to what is suggested by the Board of Appeal in paragraph 62 of the contested decision and what is submitted by the intervener, the three copies of BONUS wine test packaging (item 4) mention a date of creation, namely 26 February 2016, with the result that it must be held that that wine test packaging falls within the relevant period.
34      In the third place, as regards the taking into account of evidence of use subsequent to the relevant period, it is true that, first, some of the supplying invoices date from June to October 2018 and January and February 2019 (items 6 and 7) and, second, that the three advertisement magazines from July, August and October 2018 (item 2) bear a date outside the relevant period. However, it is not excluded, according to the case-law, that the assessment of whether a trade mark was put to genuine use during the relevant period, may, where appropriate, take account of any circumstances subsequent to that period, which may make it possible to confirm or better assess the extent to which that trade mark was used during the relevant period (see judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 63 and the case-law cited; see also, by analogy, orders of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 31, and of 5 October 2004, Alco v OHIM, C‑192/03 P, EU:C:2004:587, paragraph 41).
35      In that regard, first, it must be stated that, in the present case, various items of evidence fell within the relevant period and referred to that period. That is apparent from the evidence listed in paragraphs 8 and 10 of the contested decision (see paragraph 25 above) and, in particular, some invoices for the printing of advertisement magazines (item 3), the invoices for the printing of labels from 2015 to 2017 (item 5), some supplying invoices (item 6), and the cash register tapes from 2014 to 2018 (item 8). It should be further stated that, as is apparent from paragraph 32 above, of the 20 advertisement magazines submitted in item 2, 13 fell within the relevant period.
36      Second, the supplying invoices from June to October 2018 and January and February 2019 and the three advertisement magazines from July, August and October 2018 make it possible to confirm or better assess the extent of use of the earlier mark No 2019867 for the goods claimed to have been used, during the relevant period, and to support the uncontested items of evidence referred to in paragraph 35 above. Those documents, which refer to both the earlier mark No 2019867 and the goods in respect of which use is claimed, support, in particular, the eight supplying invoices referring to BONUS wine in item 6 and the 13 advertisement magazines which fall within the relevant period. In those circumstances, it must be stated that the contested items of evidence, referred to in paragraph 34 above, are relevant for the purposes of assessing genuine use of the mark at issue in the light of the evidence which they support and which fall within the relevant period.
37      By contrast, that is not the case with the invoices for the printing of advertisement magazines between 7 July and 6 October 2018 (item 3), since they are subsequent to the relevant period and, without any reference whatsoever to the earlier mark No 2019867 and the goods in respect of which use is claimed, they do not make it possible to confirm or better assess the extent to which that mark was used during the relevant period.
38      In the fourth place, as regards the taking into account of undated evidence of use, it should be noted that that includes the picture of a box of MATERNUS beer bottles (item 4) and the photographs of the presentation on shelves of an ALDI shop in Spain of MATERNUS beer and BONUS wine (item 9). As is apparent from the case-law, in the context of the assessment of proof of genuine use of a trade mark, Article 10 of Delegated Regulation 2018/625 does not state that every item of evidence must necessarily contain information on each of the four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use (judgment of 16 November 2011, Buffalo Milke Automotive Polishing Products v OHIM – Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, EU:T:2011:675, paragraph 61).
39      An accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (judgment of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 36; see also judgment of 16 June 2015, POLYTETRAFLON, T‑660/11, EU:T:2015:387, paragraph 94 and the case-law cited). Thus, although the evidential value of an item of evidence is limited to the extent that, individually, it does not show with certainty whether, and how, the goods or services concerned were placed on the market, and although that item of evidence is therefore not in itself decisive, it may nevertheless be taken into account in the overall assessment as to whether the use is genuine. That is also the case, for example, where that evidence corroborates the other relevant factors of the present case (see, to that effect, judgments of 6 March 2014, Anapurna v OHIM – Annapurna (ANNAPURNA), T‑71/13, not published, EU:T:2014:105, paragraph 45, and of 23 September 2015, L’Oréal v OHIM – Cosmética Cabinas (AINHOA), T‑426/13, not published, EU:T:2015:669, paragraph 53).
40      In the present case, it must be held that the picture of a box of MATERNUS beer bottles (item 4) and the photographs of the presentation on shelves of an ALDI shop in Spain of MATERNUS beer and BONUS wine (item 9) corroborate the other relevant factors of the present case. That is the case, in particular, of item 9, which contains photographs of the shelves of a shop, since that item of evidence, which is generally undated, shows external use directed at the applicant’s customers and represents the earlier mark No 2019867 in a graphic form, identical to that depicted on various items of uncontested evidence, which fall within the relevant period. Accordingly, although the picture of a box of MATERNUS beer bottles and the photographs of the presentation on shelves of an ALDI shop of beer and wine are undated, they support other items of evidence which fall within the relevant period.
41      It is therefore in the light of the evidence dated of the relevant period and the items of evidence which are undated or subsequent to the relevant period and referred to in paragraphs 34 and 38 above, while taking into account their respective evidential value, that the applicant’s arguments seeking to call into question the Board of Appeal’s assessment relating to proof of genuine use of the earlier mark No 2019867 for ‘wines’ in Class 33 and ‘beers’ in Class 32 must be examined.
The nature of genuine use of the earlier mark No 2019867 for ‘wines’
42      The Board of Appeal found, in essence, that none of the evidence submitted established that the goods were marketed under the earlier mark No 2019867 and that the documents submitted were not sufficient as regards the nature of use. According to the Board of Appeal, those documents demonstrated that the applicant provided different types of wine in its supermarkets, including ROSSO TOSCANO and BONUS wines for which genuine use was claimed. However, the Board of Appeal observed that the earlier mark No 2019867, which is present on the advertisement magazines and the photographs, was never, with some exceptions and in very small lettering, affixed to the goods and that it was not used to designate the goods.
43      The applicant disputes those findings of the Board of Appeal and submits, in essence, that it is apparent from all the documents submitted that the earlier mark No 2019867 was used for wines. Specifically, it alleges that the Board of Appeal assessed each document in isolation.
44      In the first place, as regards ROSSO TOSCANO wine, it should be pointed out that the only advertising magazine on which that wine is represented (item 2), the picture of a bottle of ROSSO TOSCANO wine (item 4) and the only supplying invoice on which that wine is referred to (item 6) cannot be taken into account in the present case since those three items of evidence are before the relevant period. Therefore, as regards ROSSO TOSCANO wine, the only item of evidence which may be taken into account is the affidavit of 4 December 2018. However, since that affidavit mentions, for ROSSO TOSCANO wine, a sales figure for 2012, which is before the relevant period, and since, in any event, it does not demonstrate the actual marketing of that wine, that evidence is insufficient to establish the nature of the use of the earlier mark No 2019867 for that wine.
45      In the second place, as regards BONUS wine, it should be noted that the earlier mark No 2019867 was affixed to the packaging of that wine. While it is true that the advertisement magazines only once show BONUS wine bearing the earlier mark No 2019867 directly on the packaging, the fact remains that, in all the other advertisement magazines on which BONUS wine appears, that wine is accompanied by the earlier mark No 2019867, namely ‘BONUS Vino de mesa blanco ALDI 11% vol 1 L’ or ‘BONUS ALDI VINO DE MESA BLANCO 11% vol 1 L’ or ‘BONUS ALDI VINO DE MESA TINTO 11% vol 1 L’. Furthermore, because of the three copies of BONUS wine test packaging submitted by the applicant, the authenticity of which has not been questioned by the Board of Appeal, it is possible to find that the earlier mark No 2019867 was affixed to the goods which have been the subject of advertising (see, by analogy, judgment of 15 December 2016, Aldi v EUIPO – Cantina Tollo (ALDIANO), T‑391/15, not published, EU:T:2016:741, paragraph 29). It must be stated that the evidential value of one of the test packaging samples is supported by the advertising magazine which appears on page 26 of item 2 dated December 2013. Although that advertising magazine is prior to the BONUS wine test packaging, it appears that one of those test packaging samples is identical to the packaging on that advertising magazine, which tends to show that, during the relevant period, the applicant produced packaging for BONUS wines on which the earlier mark No 2019867 appeared. Last, it must be stated that the supplying invoices (item 6) refer to that wine accompanied by the earlier mark No 2019867, namely ‘VINO BONUS ALDI SLIM HELICAP 1 L BCO’ or ‘VINO BONUS ALDI SLIM HELICAP 1 L TTO’ or ‘VINO BONUS ALDI SLIM HELICAP 1 L TINTO’. As is apparent from the case-law referred to in paragraph 19 above, the evidence intending to demonstrate genuine use and, in particular, the nature of that use must be assessed as a whole. The Board of Appeal therefore incorrectly found that the earlier mark No 2019867 was not used to designate the goods in respect of which genuine use had been claimed. In that regard, it is not relevant that the mark affixed is small (see, by analogy, judgment of 15 December 2016, ALDIANO, T‑391/15, not published, EU:T:2016:741, paragraph 31).
46      Consequently, contrary to what the Board of Appeal found in paragraph 68 of the contested decision, it must be held that the evidence relating to BONUS wine, that is to say, the affidavit of 4 December 2018, to which the advertisement magazines, the supplying invoices and the three copies of BONUS wine test packaging are affixed, taken as a whole, give sufficient information as to the nature of the use of the earlier mark No 2019867. Since the applicant has adduced sufficient evidence of the nature of the use of the earlier mark for BONUS wine, it is necessary to assess whether the applicant has proved the extent of use of the earlier mark No 2019867 for that wine, contrary to the view taken by the Board of Appeal.
The extent of genuine use of the earlier mark No 2019867 for ‘wines’
47      In essence, the Board of Appeal found that, in view of the links between the signatory of the affidavit of 4 December 2018 and the applicant, that affidavit was not to be accorded any evidential value unless it would be supported by additional evidence (paragraph 56 of the contested decision). It further stated that the sales figures referred to in that affidavit also lacked evidential value since they referred in general terms to ‘beers’ and ‘wines’ and could therefore include any wine product in the range of goods provided by the applicant (paragraph 57 of the contested decision).
48      Moreover, the Board of Appeal stated, in essence, that the other items of evidence provided by the applicant did not substantiate the content of the affidavit of 4 December 2018 and that, consequently, the extent of use of the earlier mark had not been established (paragraphs 56 and 58 to 68 of the contested decision).
49      The applicant disputes that assessment and argues that, taken as a whole, the affidavit of 4 December 2018 combined with the other documents provided are capable of demonstrating use, which justifies the maintenance of the rights in the mark relied on and alleges that the Board of Appeal assessed each document in isolation.
50      It should be noted that, in the affidavit of 4 December 2018, A, the applicant’s employee, asserted that the earlier mark No 2019867 had been used from 6 June 2007 to 25 May 2018, as is apparent from the advertisement magazines submitted in the annex. He further stated that those magazines had been placed in more than 293 ALDI branches in northern Spain on various dates from the 38th calendar week of 2011 to the 42nd calendar week of 2018. In addition, he stated that the goods had been identified by labels bearing the earlier mark No 2019867 and that they had been sold in more than 293 ALDI branches in northern Spain. Likewise, that affidavit includes a table of sales figures for the one-litre white and red table wines and for beer for the years 2011 to 2018.
51      In that regard, in order to assess the evidential value of a document, regard should be had first and foremost to the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (judgment of 13 June 2012, Süd-Chemie v OHIM – Byk-Cera (CERATIX), T‑312/11, not published, EU:T:2012:296, paragraph 29).
52      Furthermore, it follows from the case-law that, first, even when an affidavit has been drawn up for the purposes of Article 97(1)(f) of Regulation 2017/1001 by a manager of the applicant, evidential value may be given to that affidavit only if it is supported by further evidence. Second, the circumstance that such an affidavit comes from an employee of the applicant cannot in itself render it worthless (see judgment of 13 June 2012, CERATIX, T‑312/11, not published, EU:T:2012:296, paragraph 30 and the case-law cited).
53      In the present case, although A’s affidavit of 4 December 2018 has a formal character and contains information relating, in particular, to the extent of use of the earlier mark in Spain, it should be noted that it comes from a manager of the applicant and not a third party who would provide more guarantees of objectivity. Consequently, in accordance with the case-law set out in paragraphs 51 and 52 above, the Board of Appeal found, in essence, in paragraphs 56 and 57 of the contested decision, that, in view of, first, the links between the signatory of that affidavit and the applicant and, second, the fact that the sales figures referred to ‘beers’ and ‘wines’ in general terms, that affidavit could be accorded evidential value only if it was supported by additional evidence.
54      It is therefore necessary to examine whether the Board of Appeal correctly found that the other evidence submitted by the applicant during the administrative procedure did not establish that the earlier mark No 2019867 had been put to genuine use for ‘wines’.
55      In the first place, the Board of Appeal correctly found, in essence, in paragraphs 61 and 63 of the contested decision, that the invoices for the printing of advertisement magazines (item 3) and the invoices for the printing of labels (item 5) did not establish genuine use of the earlier mark No 2019867 for ‘wines’, since that mark is not referred to on any of those invoices and they could therefore refer to the printing of any advertisement magazines or labels.
56      In the second place, as regards BONUS wine, the Board of Appeal found, in paragraph 60 of the contested decision, in essence, that the advertisement magazines did not establish genuine use of the earlier mark No 2019867 for ‘wines’.
57      After finding, in paragraph 59 of the contested decision, that the advertisement magazines showed a wine under the trade mark BONUS 13 times, ‘vino de mesa blanco’ (white table wine) 10 times, and ‘vino de mesa tinto’ (red table wine) 3 times, without any date being specified, with one exception, the Board of Appeal made the following findings in paragraph 60 of the contested decision:
‘Thus, already because they are undated, the advertising magazines cannot prove that the [earlier mark No 2019867] was used for “BONUS” wine during the relevant period. This does not alter the fact that the evidence does not prove that the [earlier mark No 2019867] was indeed used for those goods, i.e. affixed to their packaging. Also, the evidence does not prove that the wines under the trade mark “BONUS” were actually sold to the end consumers, let alone when and to which extent. In this respect the Board notes that the [13] references to “BONUS” wine over the [relevant] period to which the advertisements according to the [applicant] refer, is extremely limited for a fast-moving consumer product like wine.’
58      It is therefore apparent from paragraph 60 of the contested decision that the Board of Appeal found that the advertisement magazines submitted by the applicant could not demonstrate any use of the earlier mark No 2019867.
59      However, as the applicant rightly submits, the examination carried out by the Board of Appeal is incorrect.
60      First of all, the Board of Appeal was under a duty to consider whether the evidence other than the affidavit of 4 December 2018 substantiated the information contained in that affidavit and should not have confined itself to considering whether that evidence, on its own, without the affidavit, established the extent of use of the earlier mark No 2019867. If the Board of Appeal were to proceed in that way, it would deprive the affidavit of 4 December 2018 of any evidential value.
61      In the present case, as is apparent from paragraphs 58 to 60 of the contested decision, the Board of Appeal determined whether the advertisement magazines, on their own, could prove the extent of use of the earlier mark and concluded that that was not the case. Nothing in the contested decision demonstrates that the Board of Appeal examined the content of the affidavit of 4 December 2018 in conjunction with those magazines.
62      It must therefore be held that the Board of Appeal did not conduct a proper examination of the affidavit of 4 December 2018 and of the advertisement magazines.
63      It must be stated that that is also the case as regards the examination of the three copies of BONUS wine test packaging (item 4), the supplying invoices (items 6 and 7), the cash register tapes (item 8) and the photographs of the presentation on shelves of an ALDI shop of beer and wine (item 9). Like the advertisement magazines, nothing in the contested decision shows that the Board of Appeal examined the content of the affidavit of 4 December 2018 in conjunction with those various items of evidence.
64      As regards the test packaging for BONUS wine, the Board of Appeal found, in paragraph 62 of the contested decision, that it remained ‘unclear whether they [had] indeed [been] used in the market during the relevant period’. As regards the supplying invoices, it noted, in paragraph 64 of the contested decision, that those ‘invoices [did] not prove at all that the sign ALDI indeed appeared on their packaging [and that] moreover, they [did] not prove either that this product [had] actually [been] distributed to the end consumers, let alone when and to which extent’. As regards the cash register tapes, the Board of Appeal found, in paragraph 65 of the contested decision, that, without making any reference to the signs BONUS or ALDI, those tapes ‘could refer to any other wine product’. It further stated that ‘the number of products sold according to these [tapes] which cover[ed] a period of more than four years [was] very low, namely around 80 products of white wine and around 20 products of red wine’. Last, as regards the photographs of the presentation on shelves of an ALDI shop of beer and wine, the Board of Appeal found, in paragraph 66 of the contested decision, that they were undated and that they ‘[did] not prove use within the relevant period, leaving aside that they miss[ed] any concrete reference to the extent of use’.
65      In the present case, since the Board of Appeal had before it a number of items of evidence from various sources, submitted by the applicant, it was under a duty to consider whether those items of evidence substantiated the content of the affidavit of 4 December 2018 and confirmed the accuracy of the information provided therein, which it refrained from doing (see, by analogy, judgment of 9 December 2014, Inter-Union Technohandel v OHIM – Gumersport Mediterranea de Distribuciones (PROFLEX), T‑278/12, EU:T:2014:1045, paragraph 65).
66      That incorrect examination made by the Board of Appeal affects the contested decision and constitutes a sufficient basis for annulling it as regards the earlier mark No 2019867 for ‘wines’ in Class 33.
67      Moreover, irrespective of that incorrect examination, the Court considers that the Board of Appeal also made several errors as regards the assessment of the evidential value of some items of evidence submitted by the applicant.
68      First, as regards the advertisement magazines (item 2), it is apparent from paragraph 60 of the contested decision that the Board of Appeal found that they could not prove use of the earlier mark No 2019867 on the ground that they were undated, that they did not prove that that mark was affixed to the packaging of BONUS wines and, last, that they did not demonstrate that BONUS wines had actually been sold to end consumers, let alone to what extent.
69      In that regard, as mentioned in paragraph 32 above, the Board of Appeal incorrectly stated that the advertisement magazines were undated. All of those magazines bear a date and 13 of them fall within the relevant period. Furthermore, it cannot be held that those magazines do not prove that the earlier mark No 2019867 was affixed to the packaging of BONUS wine. It is clear from the advertising magazine of December 2013, appearing on page 27 of item 2, that BONUS wine bears the earlier mark No 2019867 directly on its packaging. As to the other advertisement magazines, while it is true that BONUS wine is not represented with the earlier mark No 2019867 on the packaging, the fact remains that that mark is systematically associated with that wine in the description of the product, as noted in paragraph 45 above.
70      Last, as regards the argument that the advertisement magazines did not show that BONUS wines had actually been sold to end consumers, let alone to what extent, it should be noted that the reproduction of a mark on goods covered by that mark, in advertisements directed at consumers who make up the relevant public constitutes public and external use of that mark, within the meaning of the case-law referred to in paragraph 18 above. In an assessment carried out in accordance with the case-law referred to in paragraphs 18 to 22 above, such use is capable of demonstrating that that mark has been put to genuine use, as required under Article 64(2) of Regulation 2017/1001. The fact remains that such use of the mark at issue cannot be proved by the mere production of copies of advertising material referring to that mark in relation to the goods or services covered. It must also be demonstrated that that material, regardless of its nature, has been sufficiently distributed to the relevant public to establish the genuine nature of the use of the trade mark at issue (see judgment of 28 May 2020, Diesel v EUIPO – Sprinter megacentros del deporte (Representation of a curved and angled line), T‑615/18, not published, EU:T:2020:223, paragraph 72 and the case-law cited).
71      In the present case, it is well known that retail supermarket chains, such as that of the applicant, usually distribute their advertisement magazines both in their supermarkets and in the letterboxes of potential customers around their supermarkets.
72      Moreover, in the overall assessment required by the case-law referred to in paragraph 19 above, regard must also be had to the affidavit of 4 December 2018 which, while not sufficient on its own, may be supported by other items of evidence, in accordance with the case-law referred to in paragraph 52 above.
73      In those circumstances, it must be held that the Board of Appeal erred in finding that the advertisement magazines in item 2 lacked evidential value.
74      Second, as regards the three copies of BONUS wine test packaging (item 4), the Board of Appeal also incorrectly found, in essence, that they lacked evidential value on the ground that it was ‘unclear whether they [had] indeed [been] used in the market during the relevant period’. As is apparent from paragraph 45 above, it must be stated that the evidential value of one of the test packaging samples is supported by the advertising magazine appearing on page 26 of item 2 dated December 2013.
75      Third, as regards the supplying invoices (item 6), it cannot validly be maintained that they lack evidential value, as observed, in essence, by the Board of Appeal in paragraph 64 of the contested decision. As rightly noted by the applicant, that type of evidence does not generally contain information relating to the appearance of the product. Furthermore, it is common ground that such invoices cannot, on their own, demonstrate that the goods ordered were actually distributed to end consumers. However, it must be stated that the supplying invoices relating to the relevant period all refer to the earlier mark No 2019867 added near the name of the product, namely ‘BONUS Vino de mesa blanco ALDI 11% vol 1 L’ or ‘BONUS ALDI VINO DE MESA BLANCO 11% vol 1 L’ or ‘BONUS ALDI VINO DE MESA TINTO 11% vol 1 L’. There is no doubt that those references on the invoices correspond to the white and red BONUS wine which appears both on the advertisement magazines (item 2) and on the test packaging copies (item 4), with the result that a link between those items can easily be established.
76      It must be further stated, as regards the fact mentioned by the Board of Appeal that only eight supplying invoices relate to BONUS wine, that their limited number may be explained by the fact that they were provided by way of example. Assessed globally with other items of evidence, in particular the advertisement magazines, they confirm that the applicant ordered from its suppliers significant quantities of white and red BONUS wine since each of the invoices mentioning BONUS wine refers to orders of at least 300 units of 12 one-litre boxes. Furthermore, as is apparent from paragraph 36 above, the supplying invoices from June to October 2018 and January and February 2019, despite being subsequent to the relevant period, support the use of the earlier mark No 2019867 for the goods in respect of which use is claimed during the relevant period.
77      Fourth, as regards the cash register tapes (item 8), the Board of Appeal incorrectly found, in essence, that they lacked evidential value on the ground that, without making any reference to the signs BONUS or ALDI, those tapes ‘could refer to any other wine product’.
78      It must be stated that each item mentioned on those tapes corresponds to a code. White table wine corresponds systematically to item code 1600 and red table wine corresponds to item code 1815. Those codes are identical to those which appear on the photographs of the presentation on shelves of an ALDI shop of beer and wine (item 9), which may be taken into account although they are undated, as is apparent from paragraph 40 above. It is thus clear that each product sold under item codes 1600 and 1815 refers to white and red BONUS wine, sold under the earlier mark No 2019867. That is, moreover, supported by the comparison, which may be drawn with the prices stated on the advertisement magazines. By way of example, the cash register tape of 31 August 2015 refers to a sale price for item 1600 ‘VINO DE MESA BLANCO’ of EUR 0.59, identical to that mentioned on the advertising magazine which contains the offers valid for September 2015 for BONUS wine, sold under the earlier mark No 2019867. As for the cash register tape of 27 November 2017, it refers to a sale price for item 1600 ‘VINO DE MESA BLANCO’ of EUR 0.68, which corresponds to the price appearing on the advertising magazine containing the valid offers from 11 to 17 December 2017 for BONUS wine, sold under the earlier mark No 2019867.
79      In those circumstances, it must be held that a link between the cash register tapes, the advertisement magazines and the photographs of the presentation on shelves of an ALDI shop of beer and wine can easily be established and that it is apparent from them that the applicant sold its goods, as is, moreover, stated in the affidavit of 4 December 2018, in its shops during the relevant period.
80      It should be further stated that the items of evidence analysed in paragraphs 68 to 79 above, incorrectly considered by the Board of Appeal as lacking evidential value, provide information relating to the extent of use of the earlier mark No 2019867 for ‘wines’ in Class 33 and constitute a body of evidence capable of establishing the facts to be proved, even though each of those items of evidence, taken individually, would be insufficient to prove the accuracy of those facts. Moreover, they make the information contained in the affidavit of 4 December 2018 credible, including that relating to the sales figures mentioned in the form of a table.
81      In that regard, contrary to what the Board of Appeal maintains in paragraph 57 of the contested decision, the sales figures in the affidavit of 4 December 2018 cannot be regarded as lacking evidential value since they refer in general terms to ‘beers’ and ‘wines’ and could therefore include any wine product in the range of goods provided by the applicant. As is apparent from the case-law referred to in paragraph 19 above, evidence intended to demonstrate genuine use must be assessed as a whole. When assessed globally with other items of evidence, it is apparent that the sales figures mentioned in the affidavit of 4 December 2018 actually relate to white and red table BONUS wine, as claimed by the applicant.
82      It must be observed at the outset that, in view of the fact, first, that the sole purpose of the affidavit of 4 December 2018 was to prove genuine use of MATERNUS beer, ROSSO TOSCANO wine and BONUS wine and, second, that those three goods were systematically identified in the documents annexed to that affidavit, it seems clear that, when A stated that the minimum sales figures per item could be seen in the table of sales figures, he indeed referred to white and red table BONUS wine sold under the earlier mark No 2019867 and not any other wine. That finding is, moreover, supported by all the advertisement magazines from which it is apparent that only BONUS wine is sold as table wine and that it is the only one to be sold in one-litre packaging, as is also apparent from reading the supplying invoices.
83      Therefore, assessed globally with other items of evidence, it is clear that when, in the table of the affidavit of 4 December 2018, reference is made to ‘table wine white 1 L’ or ‘table wine red 1L’, the sales figures stated refer to white and red table BONUS wine and not to any wine.
84      It is apparent from paragraphs 60 to 66 above that, by failing to examine whether the advertisement magazines, the BONUS wine test packaging, the supplying invoices, the cash register tapes and the photographs of the presentation on shelves of an ALDI shop of beer and wine substantiated the content of the affidavit of 4 December 2018, the Board of Appeal made an incorrect examination of those items of evidence. It is also apparent from paragraphs 67 to 78 above that the Board of Appeal erred in finding that the advertisement magazines, the three test packaging designs for BONUS wine, the supplying invoices and the cash register tapes which contain relevant information for the purposes of assessing the extent of use of the earlier mark No 2019867 for BONUS wines lacked evidential value. It cannot be ruled out that, if the Board of Appeal had not made those errors and had not found that the abovementioned items of evidence lacked evidential value, it would have concluded that the earlier mark No 2019867 had been put to genuine use for ‘wines’. Therefore, it must be held that the Board of Appeal infringed Article 64(2) of Regulation 2017/1001 and that the contested decision must be annulled as regards the earlier mark No 2019867 for ‘wines’ in Class 33.
85      That conclusion cannot be called into question by the principle ne bis in idem relied on by the intervener, which prohibits the imposition of a penalty on the same person more than once for a single unlawful course of conduct in order to protect the same legal interest and which constitutes a general principle of EU law with which the courts ensure compliance. It is sufficient to find, in that regard, that that principle is applicable only to penalties, which is not the case for decisions rendered by EUIPO in the context of invalidity proceedings (see, to that effect, judgment of 8 December 2015, Giand v OHIM – Flamagas (FLAMINAIRE), T‑583/14, not published, EU:T:2015:943, paragraph 19 and the case-law cited). Consequently, reliance on that principle is, in the present case, ineffective.
The nature of genuine use of the earlier mark No 2019867 for ‘beers’
86      The Board of Appeal found, in essence, that none of the evidence submitted established that the goods were marketed under the earlier mark No 2019867 and that the documents submitted were not sufficient as regards the nature of use. It observed, in essence, that the earlier mark No 2019867 was not used to designate the goods on the ground that it was not affixed to the beer bottles. It further stated that it could not be ruled out that the Brouwerij Martens brewery brewed MATERNUS beer exclusively for the applicant, which would explain the very small, almost illegible, reference to the sign ALDI in the corner of the outer packaging, as shown by the evidence submitted.
87      The applicant disputes those findings of the Board of Appeal and submits, in essence, that the Board of Appeal made the same errors as in its assessment of the genuine use of the earlier mark No 2019867 for ‘wines’.
88      In that regard, it should be noted that, while it is true that the earlier mark No 2019867 is not affixed to the beer bottles individually, the fact remains that that is the case on each packaging of boxes of beer bottles, as the Board of Appeal states, moreover, in paragraph 71 of the contested decision.
89      That is also apparent from the evidence submitted by the applicant, namely the advertisement magazines (item 2), the picture of a box of MATERNUS beer bottles (item 4) and the photographs of the presentation on shelves of an ALDI shop in Spain of MATERNUS beer (item 9). As regards, in particular, the advertisement magazines, not only does it appear that MATERNUS beer is always sold in boxes and that those boxes bear the earlier mark No 2019867 on the top right-hand corner but that those magazines refer, in the description of that product, systematically to that earlier mark as follows: ‘MATERNUS Cerveza Premium ALDI’ or ‘MATERNUS CERVEZA PILSENER ALDI’.
90      Furthermore, it must be stated that the supplying invoices (item 6) refer to that beer accompanied by the earlier mark No 2019867, namely ‘ALDI Maternus DD 6X0.50 L’. As is apparent from the case-law referred to in paragraph 19 above, the evidence intended to demonstrate genuine use and, in particular, the nature of that use must be assessed as a whole.
91      As regards the Board of Appeal’s finding, supported by EUIPO, that, in essence, that product was not marketed under the earlier mark No 2019867 but under the mark MATERNUS and that that earlier mark was not used to distinguish those goods, but as the company name of the retailer of that product, it should be borne in mind that the Court of Justice has already held that there is use ‘in relation to goods’ where a third party affixes the sign constituting its company name, trade name or shop name to the goods which it markets (see, to that effect, judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraph 22).
92      As has been observed in paragraph 88 above, the earlier mark No 2019867, which is also the applicant’s company name, was affixed to the packaging of the goods at issue. It follows that the Board of Appeal incorrectly found that the earlier mark was not used to distinguish the goods for which genuine use had been claimed. The Board of Appeal therefore incorrectly found that the earlier mark No 2019867 was not used to designate ‘beers’ in respect of which genuine use had been claimed. In that regard, it is not relevant that the mark affixed is small (see, by analogy, judgment of 15 December 2016, ALDIANO, T‑391/15, not published, EU:T:2016:741, paragraph 31).
93      Consequently, contrary to what the Board of Appeal found in paragraph 83 of the contested decision, it must be held that the evidence relating to ‘beers’, that is to say, the affidavit of 4 December 2018 to which the advertisement magazines, the supplying invoices, the picture of a box of MATERNUS beer bottles and the photograph of the presentation on shelves of an ALDI shop in Spain of beer and wine, taken as a whole, provide sufficient information as to the nature of the use of the earlier mark No 2019867. Since the applicant has adduced sufficient evidence of the nature of the use of the earlier mark for MATERNUS beer, it is necessary to assess whether it has proved the extent of use of the earlier mark No 2019867 for that beer, contrary to the view taken by the Board of Appeal.
The extent of genuine use of the earlier mark No 2019867 for ‘beers’
94      As is apparent from paragraph 83 of the contested decision, the Board of Appeal concluded that the applicant had not proved to the requisite legal standard the extent of genuine use of the earlier mark No 2019867 for ‘beers’. In reaching that conclusion, it relied on the same evidence as that taken into account in order to assess the genuine use of the earlier mark No 2019867 for ‘wines’, followed the same reasoning and expressed the same criticisms. In essence, it stated that the affidavit of 4 December 2018 could be accorded evidential value unless it would be supported by other evidence, which is not the case.
95      The applicant disputes that assessment and submits that the Board of Appeal made the same errors as for the assessment of genuine use of the earlier mark No 2019867 for ‘wines’. It argues that, assessed globally, the affidavit of 4 December 2018, combined with the other documents provided, provided proof of genuine use of the earlier mark No 2019867 for ‘beers’ and alleges that the Board of Appeal assessed each document in isolation.
96      At the outset, it should be noted that, as regards the extent of genuine use of the earlier mark No 2019867 for ‘beers’, the applicant rightly submits that the examination made by the Board of Appeal is vitiated by the same errors as those relating to the examination of genuine use for ‘wines’ found in paragraphs 56 to 84 above.
97      The Board of Appeal was under a duty to consider whether the evidence, other than the affidavit of 4 December 2018, supported the information contained in that affidavit and should not have confined itself to examining whether that evidence, on its own, without that affidavit, established the extent of use of the earlier mark No 2019867 (see paragraph 60 above).
98      In the present case, as is apparent from paragraphs 71 to 81 of the contested decision, the Board of Appeal determined, in the same way as for ‘wines’, whether the various items of evidence submitted by the applicant, on their own, could prove the extent of use of the earlier mark and concluded that that was not the case.
99      As regards the advertisement magazines (item 2), the Board of Appeal merely found, in paragraph 75 of the contested decision, that they could not demonstrate the fact, let alone the extent, of use of the earlier mark on the ground that they were undated and that they did not demonstrate that MATERNUS beer had actually been sold to end consumers, let alone to what extent. As regards the picture of a box of MATERNUS beer bottles (item 4) and the photographs of the presentation on shelves of an ALDI shop in Spain of the MATERNUS beer (item 9), it stated, in essence, in paragraphs 77 and 81 of the contested decision, that they were undated and that they did not give any indication as to the extent of use. As for the supplying invoices (item 6), the Board of Appeal found, in paragraph 79 of the contested decision, that they showed that a brewery actually brewed beer under the MATERNUS trade mark which was sold to the applicant’s group of companies. However, it took the view that they provided no evidence as to the use of the earlier mark No 2019867 for that product, nor did they prove that that product was actually distributed to end consumers. Last, as regards the cash register tapes (item 8), the Board of Appeal merely stated, in paragraph 80 of the contested decision, that they actually mentioned ‘CERVEZA MATERNUS’, but that the number of 14 boxes of six bottles sold for a period of more than four years was extremely low for a fast-moving consumer product such as beer.
100    It must be stated that nothing in the contested decision demonstrates that the Board of Appeal examined the content of the affidavit of 4 December 2018 in conjunction with the various items of evidence referred to in paragraph 93 above. In the present case, since the Board of Appeal was faced with several items of evidence, of various kinds, submitted by the applicant, it was required to examine whether those items of evidence substantiated the content of the affidavit of 4 December 2018 and confirmed the accuracy of the information contained therein, which it failed to do.
101    That incorrect examination made by the Board of Appeal affects the contested decision and constitutes a sufficient basis for annulling it as regards the earlier mark No 2019867 for ‘beers’ in Class 32.
102    Moreover, irrespective of that incorrect examination, the Court considers, in the same way as for the assessment of the use for ‘wines’, that the Board of Appeal also made several errors as regards the assessment of the evidential value of some items of evidence submitted by the applicant.
103    As regards the advertisement magazines (item 2), reference should be made to paragraphs 69 to 73 above. As for the supplying invoices, it is appropriate to refer to paragraphs 75 and 76 above and to further state that it is apparent from those invoices that they confirm that the applicant ordered substantial quantities of MATERNUS beer from its suppliers throughout the relevant period. It appears that each of the invoices, between 1 July 2013 and 31 January 2018, refers to the order of 4 860 units of ‘Aldi Maternus DD’ beer boxes.
104    As for the picture of a box of MATERNUS beer bottles (item 4) and the photographs of the presentation on shelves of an ALDI shop in Spain of MATERNUS beer (item 9), while it is true that they bear no date, the fact remains that they support other evidence relating to the relevant period, as is apparent from paragraph 40 above, and in particular the advertisement magazines on which the picture of the box of beers is identical to that of the abovementioned photographs.
105    Last, as regards the cash register tapes (item 8), the Board of Appeal found that they lacked evidential value on the ground that they demonstrated the sale of 14 boxes of six bottles sold for a period of more than four years, which is extremely low. However, in that regard, irrespective of the fact that the number of boxes sold found by the Board of Appeal is higher, it should be noted that the limited number of cash register tapes may be explained by the fact that they were provided by way of example. Furthermore, it must be stated that each item referred to on those tickets corresponds to a code. MATERNUS beer systematically corresponds to item code 0510. That code is identical to that which appears on the supplying invoices. Accordingly, a link between the cash register tapes, the advertisement magazines and the suppling invoices can easily be established, from which it is apparent that the applicant ordered a significant quantity of ‘Aldi Maternus’ beer (see paragraph 103 above) and sold its goods, as is, moreover, stated in the affidavit of 4 December 2018, in its shops during the relevant period. The Board of Appeal therefore incorrectly found that the cash register tapes lacked evidential value.
106    It should be further stated that the items of evidence analysed in paragraphs 103 to 105 above, incorrectly considered by the Board of Appeal as lacking evidential value, provide information relating to the extent of use of the earlier mark No 2019867 for ‘beers’ in Class 32 and constitute a body of evidence capable of establishing the facts to be proved, even though each of those items of evidence, taken individually, would be insufficient to prove the accuracy of those facts. Moreover, they make the information contained in the affidavit of 4 December 2018 credible, including that relating to the sales figures mentioned in the form of a table.
107    It is apparent from paragraphs 99 to 101 above that, by failing to examine whether the advertisement magazines, the picture of a box of MATERNUS beer bottles, the photographs of the presentation on shelves of an ALDI shop in Spain of MATERNUS beer, the supplying invoices and the cash register tapes substantiated the content of the affidavit of 4 December 2018, the Board of Appeal made an incorrect examination of those items of evidence. It is also apparent from paragraphs 103 to 106 above that the Board of Appeal erred in finding that the advertisement magazines, the picture of a box of MATERNUS beer bottles, the photographs of the presentation on shelves of an ALDI shop in Spain of MATERNUS beer, the supplying invoices and the cash register tapes, which contain relevant information for the purposes of assessing the extent of use of the earlier mark No 2019867 for MATERNUS beer, lacked evidential value. It cannot be ruled out that, if the Board of Appeal had not made those errors and had not found that the abovementioned items of evidence lacked evidential value, it would have concluded that the earlier mark No 2019867 had been put to genuine use for ‘beers’. It must therefore be held that the Board of Appeal infringed Article 64(2) of Regulation 2017/1001 and that the contested decision must be annulled as regards the earlier mark No 2019867 for ‘beers’ in Class 32.
108    It follows from the foregoing considerations that the second and third complaints of the single plea in law must be upheld.
The first complaint relating to proof of use of the earlier mark No 3360955 and of the earlier registration
109    The applicant alleges that the Board of Appeal infringed Article 64 of Regulation 2017/1001 by finding, in essence, that the broad scope of the words ‘retailing in all product areas’ precluded proof of genuine use of the earlier mark No 3360955 and the earlier registration for the services in Class 35 to be made. It complains, in particular, that the Board of Appeal found, in paragraph 41 of the contested decision, that it should have specified the goods to which the retailing were supposed to relate, at least after the registration of that earlier mark and the earlier registration. According to the Board of Appeal, that finding is contrary to the judgment of 4 March 2020, Tulliallan Burlington v EUIPO (C‑155/18 P to C‑158/18 P, EU:C:2020:151), in which the Court held that such clarification could not be required for trade marks registered before the delivery of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425).
110    EUIPO acknowledges that the Board of Appeal erred in finding that it was impossible to prove use of the earlier mark No 3360955 and of the earlier registration for the services in Class 35 since the goods concerned by those services were not defined, but takes the view that that error has no bearing on the outcome of the contested decision. As for the intervener, it disputes the merits of the applicant’s arguments.
111    It should be noted that, in order to reach the conclusion that the applicant did not establish genuine use of the earlier mark No 3360955 and of the earlier registration for the services in Class 35, the Board of Appeal made the following findings in paragraphs 41 and 42 of the contested decision:
‘41      Despite the judgments [of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425)], and [of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361)], the [applicant] maintained its registration for the earlier marks for undefined retail services, i.e. without any specification of the goods or types of goods to which those services relate. It could have amended its specification in Class 35, for instance at the time of renewal, after the filing of the proof of use request in the case at hand, or at any other moment, but it did not do so. Instead it maintained at all instances that it has protection of retail services for an indefinite variety of products. It is therefore for this very broad specification that it has to prove genuine use of the earlier marks.
42      Obviously, it is impossible to prove retail services in all product areas as long as these product areas are not defined; even the reference to a very wide range of products does not make the impossible possible. Furthermore, the fact that amongst these many products alcoholic beverages sporadically appear excludes the proof that the earlier marks would have been used “only in relation to part of the goods or services for which the mark is registered” as required by Article 64(2) of [Regulation 2017/1001].’
112    In that regard, as submitted by the applicant and acknowledged, moreover, by EUIPO, it must be stated that the Board of Appeal’s reasoning in paragraph 41 of the contested decision contradicts paragraphs 133 to 136 of the judgment of 4 March 2020, Tulliallan Burlington v EUIPO (C‑155/18 P to C‑158/18 P, EU:C:2020:151).
113    It must be noted that, while it is true that the Court of Justice has held that, for the purposes of registration of a trade mark covering services provided in connection with retail trade, it is not necessary to specify in detail the service or services for which that registration is sought, the applicant must, however, be required to specify the goods or types of goods to which those services relate (judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte, C‑418/02, EU:C:2005:425, paragraphs 49 and 50). However, first, the Court has stated that the line of authority derived from that judgment concerned only applications for registration as trade marks and did not concern the protection of trade marks registered at the date of that judgment’s delivery (judgment of 11 October 2017, EUIPO v Cactus, C‑501/15 P, EU:C:2017:750, paragraph 45). Since, in the present case, the earlier mark No 3360955, relied on by the applicant in support of its application for a declaration of invalidity, was registered before the date of delivery of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), it was not, in any event, concerned by the obligation arising from that judgment. Secondly, it cannot be inferred from the considerations of that judgment that, when a trade mark covering retail services, registered after that judgment’s delivery – which is the case with the earlier registration – is relied on in support of a ground for invalidity referred to in Article 60(1)(a) of Regulation 2017/1001, that ground may be rejected from the outset, simply by invoking the absence of any precise statement of the goods to which the retail services covered by the earlier mark may relate (see, by analogy, judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 134). Lastly, it must be further stated that proof of genuine use of the earlier mark No 3360955 and of the earlier registration is one of the ways to determine the precise goods covered by the retail services for which those goods were registered (judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 136).
114    The Board of Appeal therefore erred in finding, in paragraph 41 of the contested decision, that it was for the very broad specification of retail trade in all product areas that the applicant had to prove genuine use of the earlier mark No 3360955 and of the earlier registration. That error affects the contested decision and constitutes a sufficient basis for annulling it as regards the earlier mark No 3360955 and the earlier registration for the services in Class 35.
115    Contrary to what EUIPO argues, it cannot be validly maintained that, by asserting in paragraph 42 of the contested decision that ‘the fact that amongst these many products alcoholic beverages sporadically appear excludes the proof that the earlier marks would have been used only in relation to part of the goods or services for which the mark is registered’, the Board of Appeal examined the evidence submitted by the applicant but found it insufficient to prove the extent of genuine use of the earlier mark No 3360955 and of the earlier registration for services in Class 35. No details are given in the contested decision as to any analysis of the four items of evidence submitted by the applicant, as referred to in paragraph 9 of the contested decision, to prove use of the earlier mark No 3360955 and of the earlier registration on the basis of which the Cancellation Division had, moreover, taken the view that the applicant had established use. Therefore, the laconic claim contained in paragraph 42 of the contested decision clearly cannot be regarded as equivalent to an examination made in accordance with the case-law referred to in paragraphs 18 to 22 above.
116    It follows from the foregoing considerations that the first complaint of the single plea in law, and the single plea in law in its entirety, must be upheld, and that the contested decision must be annulled.
Costs
117    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 EUIPO and the intervener have been unsuccessful, first, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant, and, second, the intervener must bear its own costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 May 2021 (Case R 1074/2020‑4);
2.      Orders EUIPO to bear its own costs and to pay those incurred by Aldi Einkauf SE & Co. OHG;
3.      Orders Cantina sociale Tollo SCA to bear its own costs.
Marcoulli
Frimodt Nielsen
Schwarcz
Delivered in open court in Luxembourg on 5 October 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.