JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
6 September 2023 (*)
(EU trade mark – Opposition proceedings – Application for an EU figurative mark representing a bottle and an arrow – Earlier EU figurative mark representing a can, a bottle and an arrow – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – No genuine use of the earlier mark – Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001))
In Case T‑774/21,
DPG Deutsche Pfandsystem GmbH, established in Berlin (Germany), represented by J. Götz, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Hanf and A. Ringelhann, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Užstato sistemos administratorius VšĮ, established in Vilnius (Lithuania), represented by Ą. Čekanavičius, lawyer,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, G. De Baere and D. Petrlík (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, DPG Deutsche Pfandsystem GmbH, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 September 2021 (Case R 117/2020-2) (‘the contested decision’).
Background to the dispute
2        On 17 August 2015, the intervener, Užstato sistemos administratorius VšĮ, filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)) for the following figurative sign:
3        The mark applied for covered services in Classes 35, 40 and 42 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.
4        The trade mark application was published in Community Trade Marks Bulletin
No 2015/218 of 17 November 2015.
5        On 15 February 2016, the applicant filed a notice of opposition to registration of the mark applied for in respect of all the services covered by the mark.
6        The opposition was based on the earlier EU figurative mark number 4 564 993, reproduced below:
.
7        The earlier mark covers, inter alia, services in Classes 35, 39, 40 and 42, corresponding, for each of those classes, to the following description:
–        Class 35: ‘Waste management, technical waste consultancy and public relations, advertising’;
–        Class 39: ‘Transport (removal) and storage of waste and recycling materials; recycling of empty disposable packaging and disposable packaging containers; collection, acquisition, transport and intermediate storage of beverage containers; operating a deposit system (labelling, collection, acquisition, transportation and intermediate storage of drinks containers)’;
–        Class 40: ‘Recycling of waste and rubbish; sorting of drinks containers’;
–        Class 42: ‘Development and implementation of recycling systems for different types of packaging materials, of different sizes and origins, for different uses and from different sites, with regard to technical matters; engineering with regard to the development and implementation of recycling, treatment, use and waste disposal concepts for materials of all kinds; conducting security procedures to prevent the falsification of disposable packaging; technological services’.
8        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
9        Upon request of the intervener, EUIPO asked the applicant to adduce proof of genuine use of the earlier mark relied on in support of the opposition. The applicant complied with that request within the prescribed time limit by producing, on 21 November 2016, photographs of a drinks can, a plastic bottle, a label used on automatic recycling and sorting machines for packaging participating in the deposit system managed by the applicant, extracts from its website ‘www.pdg-pfandsystem.de’ and an English translation of a document entitled ‘Terms and Conditions of Participation in the DPG system’ in its version of 14 June 2016 (‘the terms and conditions of participation in the DPG system’).
10      On 18 April 2017, that is to say, after the prescribed time limit expired, the applicant produced additional proof of use of the earlier sign, including a photograph of part of a plastic bottle bearing that sign, four invoices concerning yearly participation fees for members of the DPG system for 2011 to 2015 and a screenshot of a third-party website (www.einweg-zukunft.de).
11      By decision of 22 November 2019, the Opposition Division rejected the opposition in its entirety, finding that proof of genuine use of the applicant’s earlier mark had not been shown.
12      On 16 January 2020, the applicant filed a notice of appeal against that decision with EUIPO, arguing that the earlier mark had been used at the very least in respect of the services referred to in paragraph 7 above. It filed additional items of evidence with its appeal, such as an affidavit by its director and another series of invoices.
13      By the contested decision, the Board of Appeal dismissed the appeal on the ground that the applicant had not shown that the earlier sign had been put to genuine use in accordance with the essential function of individual marks, that is to say, that of indicating the commercial origin of the goods and services in respect of which it was registered.
14      The Board of Appeal found, inter alia, that the earlier sign would not be perceived by the relevant public as indicating that the goods or services concerned came from a specific undertaking under the control of which they are manufactured or supplied. It found that the sign would be perceived as a descriptive indication providing the information that the goods belonged to a particular category of goods, namely goods with disposable packaging and subject to a mandatory deposit scheme. Moreover, for business consumers who had participated in that system and acquainted themselves with the applicant’s administrative and legal documents, the sign was used as an official marking, not as a mark indicating the commercial origin of the services covered by that sign. Last, on documents and on its website, the applicant and its services were identified by their name, while the use of the earlier sign served a merely decorative purpose.
Forms of order sought
15      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
16      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
17      Given the date on which the application for registration at issue was filed, namely 17 August 2015, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, in the version prior to amendment by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21) (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
18      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision, by the applicant in its arguments and by EUIPO and the intervener to Article 8(1)(b) and to Article 47(2) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) and to Article 42(2) of Regulation No 207/2009, respectively.
19      In support of its action, the applicant relies on a single plea in law alleging infringement of Article 42(2) of Regulation No 207/2009. It argues, in essence, that the Board of Appeal was wrong to consider that it had not proved genuine use of the earlier sign.
20      It argues, in the first place, that the Board of Appeal was wrong to find that the relevant public targeted by the recycling services in Classes 39 and 40 was composed exclusively of business consumers. According to the applicant, those services are directed at those consumers and at the general public, as the latter plays a vital role in the deposit system and in the recycling of drinks packaging.
21      EUIPO and the intervener challenge that line of reasoning.
22      In that connection, the Board of Appeal found, in paragraph 68 of the contested decision, that the use of the earlier sign in accordance with its essential function of indicating commercial origin can be assessed only from the perspective of the relevant public. Next, it considered, in paragraph 71 of that decision, that the recycling services in Classes 39 and 40 were not selected by the general public but by a public made up of professionals, namely commercial or administrative entities making use of the recycling services, and that the relevant public for those services was therefore made up of business consumers.
23      Although the applicant disputes that assessment, it does not put forward any argument or evidence to show that the analysis of genuine use of the earlier sign would have been different if the relevant public were also made up of the general public, with the result that the complaint must be rejected as ineffective (see, to that effect, judgments of 27 June 2018, NCL v EUIPO (FEEL FREE), T‑362/17, not published, EU:T:2018:390, paragraph 35, and of 28 May 2020, Martínez Albainox v EUIPO – Taser International (TASER), T‑341/19, not published, EU:T:2020:233, paragraph 62 and the case-law cited).
24      In any event, the evidence adduced by the applicant to prove genuine use of the earlier sign does not establish that the services in Classes 39 and 40 are also intended for the general public. First, the terms and conditions of participation in the DPG system are intended for business consumers, that is, operators specialising in the collection, treatment and recycling of waste that wish to participate in the applicant’s mandatory deposit scheme (‘the DPG system’). Similarly, the addressees of the invoices issued by the applicant from 2011 to 2015 (‘the invoices’) are economic operators that have joined the system. Second, although the general public has access to the applicant’s website, that site does not contain any information to establish how the services in Classes 39 and 40 are also intended for the general public. On the contrary, the information on that site concerns, inter alia, the role of business consumers in the functioning of the DPG system, as is apparent, inter alia, from the section entitled ‘frequently asked questions’ (FAQ).
25      In the second place, the applicant submits that the Board of Appeal was wrong to find that the earlier sign had not been put to genuine use in accordance with its essential function as an individual mark in respect of the services in Classes 35, 39, 40 and 42.
26      EUIPO and the intervener dispute the applicant’s arguments.
27      Under Article 42(2) of Regulation No 207/2009, a notice of opposition given against registration of an EU trade mark is to be rejected if the proprietor of the earlier trade mark at issue does not furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application, that mark has been put to genuine 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 the goods or services covered by the mark; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (judgments of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 32, and of 19 January 2022, Masterbuilders, Heiermann, Schmidtmann v EUIPO – Cirillo (POMODORO), T‑76/21, not published, EU:T:2022:16, paragraph 61).
29      As regards individual marks, the essential function is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him or her, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (judgment of 8 June 2017, W.F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraph 41).
30      In order to assess genuine use of an individual mark in accordance with its essential function, account should be taken of all the relevant factors, including the characteristics of the market concerned and the nature of the goods or services protected by the mark (see judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 29 and the case-law cited).
31      More specifically, where the relevant public perceives an individual mark as a sign intended to certify the composition or quality of the goods or services, without, however, guaranteeing to consumers that the goods or services come from a single undertaking under the control of which they are manufactured or supplied and which, consequently, is responsible for the quality of those goods or services, use of that sign is not made in accordance with the function of indicating commercial origin (judgment of 8 June 2017,
W. F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraph 45).
32      Last, it is clear from Article 42(2) of Regulation No 207/2009 that it is for the proprietor of the earlier mark to prove genuine use of that mark in accordance with its essential function (see, to that effect, judgment of 13 December 2018, C=Holdings v EUIPO – Trademarkers (C=commodore), T‑672/16, EU:T:2018:926, paragraph 21).
33      In that connection, genuine use of such a mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of that mark on the market concerned (see, to that effect, judgment of 6 November 2014, Popp and Zech v OHIM – Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 34).
34      In the present case, during the relevant period, from 17 November 2010 to 16 November 2015, the German legislation on waste management, the Verordnung über die Vermeidung und Verwertung von Verpackungsabfällen (Ordinance on the prevention and recycling of packaging waste) of 21 August 1998 (BGBl. 1998 I, p. 2379) in particular, required the first distributors of disposable drinks packaging (‘the first distributors’) to participate in a deposit system for such packaging.
35      It is common ground that the applicant was the primary operator of such a deposit system in Germany in that it used the DPG system which the greater part of the first distributors joined. That system involves, in particular, a marking procedure in order to identify whether packing is subject to a mandatory deposit, it being specified that the marking on the packaging includes the earlier sign.
36      In that respect, it must be borne in mind that the earlier sign is not a certification mark within the meaning of Article 83 of Regulation 2017/1001 but was registered as an individual mark. Evidence of use produced by the applicant must therefore show genuine use of the earlier sign as an individual mark, that is, use in accordance with its essential function of indicating the commercial origin of the goods and services covered by that sign.
37      Regarding the goods covered by the earlier sign, the applicant does not dispute that the first distributors used that sign within the DPG system as an element in order to mark disposable drinks packaging and the first function of which was to identify the packaging which is part of that system.
38      In that connection, the applicant does not criticise, inter alia, the Board of Appeal’s finding that where the first distributors affixed the earlier sign to goods in Classes 6, 20 and 21 such as the goods with disposable packaging, that sign fulfilled a certification function by informing the relevant public that that packaging was covered by the DPG system and was therefore subject to a mandatory deposit.
39      In that regard, it is also clear from the applicant’s observations submitted to EUIPO that, during the relevant period, a significant number of first distributors affixed the earlier sign to an estimated 15 to 16 billion items of disposable drinks packaging per year which were placed on the German market. It follows that, from the beginning of that period, that sign was used extensively on that packaging, and it is clear that the extent of that use was confirmed throughout that period.
40      In those circumstances, business consumers had, during the relevant period, a high level of awareness of the earlier sign and of the fact that the sign was used primarily as a marking element certifying that the disposable drinks packaging was subject to a deposit system, that is, the DPG system.
41      That being said, it is appropriate to examine whether, beyond that function of certifying such goods, the earlier sign also fulfilled, in the light of the evidence adduced by the applicant, the function of identifying the commercial origin of the services covered by that sign.
42      In that connection, the applicant maintains that when business consumers saw the earlier sign on the terms and conditions of participation in the DPG system, on the invoices and on its website, they perceived it as an individual mark indicating the commercial origin of the services covered by that sign.
43      As a preliminary point, it must be stated that the applicant’s line of argument relates only to the nature of use of the earlier sign in relation to the services covered by that sign, that is, the services referred to in paragraph 7 above.
44      Regarding, first, the nature of use of the earlier sign on the terms and conditions of participation in the DPG system, it is true that all the pages of that document are marked with the sign.
45      However, the graphic elements of that sign such as the bottle, the can and the curving arrow pointing to the left are symbols used throughout the European Union to denote the recycling process or recycling services and are placed on items to be recycled (see, to that effect, judgment of 11 April 2019, Užstato sistemos administratorius v EUIPO – DPG Deutsche Pfandsystem (Representation of a bottle and an arrow), T‑477/18, not published, EU:T:2019:240, paragraphs 32 to 34).
46      Accordingly, when such a sign is affixed to a legal document such as the terms and conditions of participation in the DPG system, it will in all likelihood be understood as referring, on the part of business consumers, to the recycling process in itself and to the fact that certain goods are subject to a specific recycling system, that is, the DPG system, and not as indicating the commercial origin of the services covered by the earlier sign.
47      That perception is borne out by the wording of those terms and conditions of participation because, as noted by the Board of Appeal, those terms and conditions present the earlier sign systematically as a marking element of disposable drinks packaging for the purposes of certifying that those goods are covered by the DPG system.
48      Accordingly, inter alia, Article 1.2 of Part I of the terms and conditions of participation in the DPG system, which is part of the section entitled ‘Fundamental Principles of the DPG System and functions of the System Participants’, specifies that the earlier sign serves as a ‘symbol’ for the mandatory deposit. Similarly, Article 1.1 of Section 1 of Part II of those terms and conditions provides that the packaging concerned must be marked in such a way as not to impair the meaning of the earlier sign, that is, that that packaging is ‘subject to the mandatory deposit’.
49      Likewise, where Annex 1 to the terms and conditions of participation in the DPG system in its 2013 version – which does not differ substantially from the 2016 version – describes the characteristics of the earlier sign, it does not do so in relation to the services covered by that sign. That annex, entitled ‘Specifications for First Distributors regarding the Marking of DPG Packaging’, merely sets out the various components of the earlier sign in order to assist first distributors in marking disposable drinks packaging. The way in which the earlier sign is presented within that annex thus refers to its function of certifying that the goods concerned are subject to the DPG system.
50      Further, the terms and conditions of participation in the DPG system associate the earlier sign more closely with the activities of the professionals participating in the DPG system than with the services covered by that sign. In particular, according to Article 2 of Section 1 of Part V of those terms and conditions, collectors are encouraged to display the sign in the context of their operations in order to ‘disclose [their] participation in the DPG System’. From that perspective, the earlier sign serves to indicate that certain operators specialising in the collection, treatment and recycling of waste contribute to the implementation of the DPG system as collectors rather than to designate the services concerned.
51      In those circumstances, there is nothing to suggest that business consumers will perceive the marking of the earlier sign on the terms and conditions of participation in the DPG system, irrespective of its certification function, as an indication of the commercial origin of the services covered by that sign.
52      Regarding, second, the invoices submitted by the applicant, it must first be stated that they are marked by the earlier sign on the top right and that sign is juxtaposed with the applicant’s business name, that is, ‘DPG Deutsche Pfandsystem GmbH’, which is set out in large underlined letters in bold type on the top left.
53      As is apparent from paragraphs 45 and 46 above, the elements making up the earlier sign are not designed to refer, on the part of business consumers, to the commercial origin of a specific category of services, but rather to the fact that certain goods are subject to a specific recycling system, that is, the DPG system.
54      Moreover, the applicant submits that, according to case-law, the use of the earlier sign together with the business name of its proprietor on invoices does not, in principle, preclude that sign from being able to refer to the commercial origin of the services covered by that sign.
55      In that connection, it must be stated that, in paragraphs 74 and 77 of the contested decision, the Board of Appeal did not assert that the earlier sign marking the invoices was not perceived as indicating the commercial origin of the services covered by that sign on the ground that it was used together with the applicant’s business name.
56      Regarding the content of the invoices, they display the amount of the participation fees payable by the participants in the DPG system. The invoices thus stated that those fees are calculated according to the approximate amount of items of DPG packaging that the first distributor intends to put into circulation on the German market. Having regard to that wording, the invoicing of the services provided by the applicant and, moreover, covered by the earlier sign have a merely indirect link to that sign, as the sign was associated more closely with the activity of the first distributors and thereby with its use of certifying that the packaging concerned is covered by the DPG system.
57      Having regard to the foregoing, the applicant, which bears the burden of proof, has not shown that, in addition to the earlier sign’s primary function of certification, business consumers perceived the affixing of that sign to the invoices as an indication of commercial origin of the services covered by that sign.
58      Third, the use of the earlier sign on the applicant’s website is similarly not sufficient to show that the relevant public perceives the sign as referring to the commercial origin of the services designated by that sign.
59      As considered by the Board of Appeal, on the applicant’s website, the services which it provides and which are, moreover, designated by the earlier sign are associated, inter alia, with the applicant’s business name, that is, ‘DPG Deutsche Pfandsystem GmbH’. By contrast, the earlier sign is present only at the top left of that website, with the result that business consumers are not guided on the applicant’s website by any element that is sufficiently clear to enable them to associate the services concerned with that sign.
60      What is more, that site states in its FAQ that, in essence, in order to comply with regulatory requirements concerning marking of disposable drinks packaging, it is necessary to display the earlier sign on the packaging in question. Thus, the sign is presented as being a marking element used for the purposes of certifying that the packaging concerned was part of the DPG system.
61      In those circumstances, there is nothing to suggest that, in addition to the earlier sign’s primary function of certifying that the packaging concerned is part of the DPG system, business consumers perceived the use of that sign on the applicant’s website as an indication of commercial origin of the services covered by that sign.
62      Having regard to all the foregoing, the Court holds that the applicant has not submitted sufficient evidence to establish that the earlier sign has been put to genuine use in accordance with the essential function of individual marks within the European Union in respect of the services for which it was registered.
63      Consequently, the applicant’s single plea must be rejected and, as a result, the action in its entirety must be dismissed.
Costs
64      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.
65      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders DPG Deutsche Pfandsystem GmbH to pay the costs.
Kornezov
De Baere
Petrlík
Delivered in open court in Luxembourg on 6 September 2023.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.