62024TJ0144
JUDGMENT OF THE GENERAL COURT (Eighth Chamber, Extended Composition)
9 July 2025 (
*1
)
(EU trade mark – Revocation proceedings – EU word mark BIENENBEISSER – Genuine use of the mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Proof of genuine use – Use in connection with the goods in respect of which the mark is registered – Role of the Nice classification – Homogeneous category of goods – Air vents – Obligation to state reasons)
In Case T‑144/24,
Bouwbenodigdheden Hoogeveen BV, established in Hoogeveen (Netherlands), represented by H. Roerdink, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Sören Pürschel, residing in Frankfurt am Main (Germany),
THE GENERAL COURT (Eighth Chamber, Extended Composition),
composed of S. Papasavvas, President, A. Kornezov (Rapporteur), D. Petrlík, K. Kecsmár and S. Kingston, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 9 January 2025,
gives the following
Judgment
1
By its action under Article 263 TFEU, the applicant, Bouwbenodigdheden Hoogeveen BV, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 January 2024 (Case R 793/2023-5) (‘the contested decision’).
Background to the dispute
2
On 26 November 2009, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign BIENENBEISSER. The application was published on 23 June 2010 and, after partial surrender on 8 January 2010, the mark was registered on 6 October 2010.
3
The mark at issue covered goods in Classes 6 and 19 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 corresponding, for each of those classes, to the following description:
–
Class 6: ‘Metal building materials, including air vents; ironmongery, small items of metal hardware, including air vents; goods of common metal not included in other classes, namely air vents’;
–
Class 19: ‘Building materials (non-metallic), including air vents’.
4
On 29 April 2021, the other party to the proceedings before the Board of Appeal of EUIPO, Sören Pürschel, filed an application for revocation of the mark at issue for the goods referred to in paragraph 3 above, pursuant to Article 58(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
5
On 14 February 2023, the Cancellation Division upheld that application in part and revoked the contested mark as regards ‘metal building materials, with the exception of air vents; ironmongery, small items of metal hardware, with the exception of air vents’ in Class 6 and as regards all the goods in Class 19 covered by the contested mark.
6
On 13 April 2023, the applicant filed a notice of appeal against the decision of the Cancellation Division, seeking to have that decision set aside in so far as its rights in the contested mark had been revoked in respect of ‘building materials (non-metallic) including air vents’ in Class 19.
7
By the contested decision, the Board of Appeal dismissed the appeal.
Forms of order sought
8
The applicant claims that the Court should:
–
partially annul the contested decision, in so far as the Board of Appeal revoked the contested mark for the goods in Class 19;
–
order EUIPO to pay the costs.
9
EUIPO contends that the Court should:
–
dismiss the action;
–
order the applicant to pay the costs in the event that a hearing is convened.
Subject matter of the action
10
As a preliminary point, it should be noted that, at the end of the proceedings before EUIPO, and as is apparent from paragraphs 5 to 7 above, registration of the contested mark was maintained in respect of ‘metal building materials, namely air vents; ironmongery, small items of metal hardware, namely air vents; goods of common metal not included in other classes, namely air vents’ in Class 6 (‘the metallic air vents’). That decision has therefore become final as regards those goods, which are not the subject of the present action.
11
In addition, in paragraph 1.2 of the application, the applicant seeks the partial annulment of the contested decision, in so far as the Board of Appeal dismissed its action and revoked the contested mark in respect of ‘building materials (non-metallic), including air vents’ in Class 19. However, in the same paragraph, and in paragraphs 1.3 and 1.6 of the application, the applicant states, in essence, that it is seeking the partial annulment of the contested decision only in so far as it relates to ‘building materials (non-metallic), namely air vents’ in Class 19 (‘the non-metallic air vents’).
12
Therefore, by its first head of claim, the applicant does not dispute the revocation of the contested mark in respect of non-metallic building materials other than the air vents in Class 19, which it confirmed at the hearing.
Law
13
In support of the action, the applicant relies on three pleas in law, alleging, first, incorrect application of the classification system established by the Nice Agreement, second, misinterpretation of the case-law and, third, application by analogy of Article 33(7) of Regulation 2017/1001 to proof of genuine use. Since those pleas are linked, it is appropriate to examine them together.
14
Article 58(1)(a) of Regulation 2017/1001 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
15
Under Article 10(3) and (4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), which is applicable to revocation proceedings pursuant to Article 19(1) of Delegated Regulation 2018/625, proof of use of a mark must concern the place, time, extent and nature of use of the mark and is, in principle, to be limited to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing as referred to in Article 97(1)(f) of Regulation 2017/1001.
16
When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 63 and the case-law cited).
17
Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 11 January 2023, Hecht Pharma v EUIPO – Gufic BioSciences (Gufic), T‑346/21, EU:T:2023:2, paragraph 24 (not published) and the case-law cited).
18
The applicant’s arguments must be examined in the light of those considerations.
19
The applicant submits, in essence, that it made genuine use of the contested mark in connection with the homogeneous category of goods ‘air vents’ in both Classes 6 and 19. According to the applicant, the proof of use of that mark which it provided for metallic air vents means that the registration of that mark can also be maintained for non-metallic air vents. The fact that metallic and non-metallic air vents come within two different classes of the Nice Classification does not call into question the fact that ‘air vents’ constitute one and the same homogeneous category of goods. First, that classification was adopted for purely administrative purposes. Second, metallic and non-metallic air vents have the same purpose and intended use, namely to prevent pests from entering spaces in brick structures, while maintaining the ventilation of those structures, with the result that those two types of air vent are interchangeable. Furthermore, the applicant submits that it has a legitimate interest in extending its product range also to non-metallic air vents in the future. In addition, according to the applicant, Article 33(7) of Regulation 2017/1001 permits the inference that, if goods share the same purpose and intended use, proof of genuine use of a mark for a product in a given class could justify maintaining the protection of the mark for other similar goods in other classes.
20
EUIPO submits that, although the Nice Classification was adopted for purely administrative purposes, reference should be made to it in order to determine, where necessary, the range and meaning of the goods in respect of which a mark has been registered. Similarly, that classification and its explanatory notes may be taken into consideration for the purposes of interpretation or as an indication of precision as regards the designation of the goods. In particular, according to EUIPO, the different classification of building materials according to the material of which they are made, namely metallic and non-metallic materials, must be taken into account when assessing the scope of protection of the contested mark. In addition, Article 33(7) of Regulation 2017/1001 is irrelevant in the assessment of genuine use of a mark.
21
At the hearing, EUIPO tempered its argument by stating, in essence, that, in revocation proceedings, it was necessary, in the first place, to determine the scope of protection of the contested mark, on the basis of the Nice Classification and its explanatory notes and, in the second place, to identify the goods or services in respect of which use of the contested mark on the market during the relevant period has been demonstrated, on the basis of the evidence submitted by the proprietor of that mark. In EUIPO’s view, the Board of Appeal did not err in finding that that classification and its explanatory notes were relevant in determining the scope of protection of the contested mark. By contrast, it accepted, in essence, that, in so far as the contested mark was registered for both metallic and non-metallic air vents, it could not be ruled out that it was necessary to analyse, at the stage of examining the goods in respect of which that mark was used on the market during the relevant period, whether those goods formed part of the same homogeneous category of goods, conceding that, to that end, the relevance of that classification was, according to the case-law, limited. According to EUIPO, the Board of Appeal failed to examine that issue, with the result that it is possible that the contested decision may be vitiated by a failure to state reasons.
22
In the contested decision, the Board of Appeal noted, first of all, that the proof of use of the contested mark related to a single type of product, namely a metallic air vent, intended to be placed in the spaces of brick structures in order to prevent bees, wasps, mice and other pests from entering them, while maintaining the ventilation of those structures. It also stated that that product was designated under various terms, but was a single product, namely an air vent. Those findings are not disputed by the parties.
23
Next, the Board of Appeal noted that the evidence provided by the applicant related specifically to metallic air vents in Class 6, and not to non-metallic air vents in Class 19, which is also not disputed by the parties. It concluded that use of the contested mark had been proven only in respect of metallic air vents. In support of that conclusion, it underlined the importance of the Nice Classification in determining the scope of protection of a trade mark, emphasising that the rights conferred by that mark could be maintained only if that mark has been used on the market for the goods or services for which it was registered. It noted that that classification distinguished Class 6 and Class 19 according to the material of the building materials covered by those classes. In such a case, according to the Board of Appeal, the impact of that classification was ‘even more apparent’ and the class chosen by the applicant was ‘crucial’.
24
Lastly, the Board of Appeal found that the applicant’s arguments seeking to show that metallic and non-metallic air vents belonged to the same homogeneous category of goods had no impact on the determination of the scope of protection of the contested mark and, in addition, rejected them as irrelevant, on the ground that proof of use had to be provided in respect of the goods as they appeared in the list of goods classified in accordance with the Nice Classification, and not on the basis of market practices or an analysis of the market situation. It added that, in any event, the documents produced by the applicant were not sufficient to prove that there were ‘identical alternatives’, made of plastics or other materials, to metallic air vents on the market.
25
In that regard, it should be noted, as EUIPO correctly explained at the hearing, that it follows from Article 58(1)(a) of Regulation 2017/1001 that, in order to assess whether a trade mark has been put to genuine use ‘in connection with the goods or services in respect of which it is registered’ within the meaning of that article, it is necessary to determine, in the first place, the scope of protection of the mark at issue and, in the second place, the type of goods or services for which that mark has actually been used on the market during the relevant period, in order to ascertain whether that type of goods or services is included in the scope of protection of the mark at issue.
26
As regards, in the first place, the determination of the scope of protection of the contested mark, it should be emphasised that the Board of Appeal may use the Nice Classification in order to determine that scope (see, to that effect, judgment of 5 March 2025, Funline International v EUIPO – MS Trade (JUNGLE JUICE), T‑26/24, not published, EU:T:2025:206, paragraph 33).
27
In that regard, it follows from the case-law that, although the Nice Classification is purely administrative, reference should, however, be made to it in order to determine, where necessary, the range or the meaning of the goods in respect of which a mark has been registered (judgment of 10 September 2014, DTM Ricambi v OHIM – STAR (STAR), T‑199/13, not published, EU:T:2014:761, paragraph 35).
28
In particular, where the description of the goods or services for which a mark is registered is so general that it may cover very different goods or services, it is possible to take into account, for the purposes of interpretation or as a precise indication of the designation of the goods or services, the classes in the classification that the trade mark applicant has chosen (judgment of 19 June 2018, Erwin Müller v EUIPO – Novus Tablet Technology Finland (NOVUS), T‑89/17, not published, EU:T:2018:353, paragraph 33; see also judgment of 6 October 2021, Allergan Holdings France v EUIPO – Dermavita Company (JUVEDERM), T‑397/20, not published, EU:T:2021:653, paragraph 35 and the case-law cited).
29
To that end, the headings of the goods covered by the contested mark must be interpreted from a systematic point of view, having regard to the logic and the system inherent in the Nice Classification, while taking into account the descriptions and explanatory notes to the classes, which are relevant in determining the nature and purpose of the goods in respect of which that mark was registered (see, to that effect, judgment of 10 September 2014, STAR, T‑199/13, not published, EU:T:2014:761, paragraph 36 and the case-law cited).
30
In the present case, as is apparent from paragraph 23 above, the Board of Appeal referred to the Nice Classification and its explanatory notes in order to determine the scope of protection of the contested mark. It observed that it was apparent from the respective explanatory notes to the classes covered by that mark that Class 6 included metallic building materials and that Class 19 included building materials (non-metallic). Consequently, the Board of Appeal could, without erring, have recourse to that classification and its explanatory notes in order to determine the scope of protection of that mark.
31
As regards, in the second place, the determination of the type of goods or services in respect of which the contested mark was actually used on the market during the relevant period, in order to ascertain whether that type of goods or services is included in the scope of protection of the mark at issue, it should be noted, in the present case, that it is common ground that the applicant used that mark only in relation to some of the goods for which it was registered.
32
In that regard, it should be borne in mind that, under Article 58(2) of Regulation 2017/1001, where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor are to be declared to be revoked in respect of those goods or services only.
33
The provisions of Article 58(2) of Regulation 2017/1001 allowing a contested trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use of the mark has been established (i) are a limitation on the rights which the proprietor of the contested trade mark gains from his or her registration and (ii) must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his or her range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him or her (see, to that effect, judgment of 23 September 2020_Polfarmex v EUIPO – Kaminski (SYRENA), T‑677/19, not published, EU:T:2020:424, paragraph 112 and the case-law cited; see also, to that effect and by analogy, judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 51).
34
As regards the concept of ‘some of the goods or services’ which is referred to in Article 58(2) of Regulation 2017/1001, it should be noted that, according to case-law, a consumer who wishes to purchase a product or service in a category that has been defined particularly precisely and narrowly, but within which it is not possible to make any significant subdivisions, will associate all the goods or services belonging to that category with the contested mark, such that that trade mark will fulfil its essential function of guaranteeing the origin of those goods or services. Accordingly, it is sufficient to require the proprietor of the mark to adduce proof of genuine use of that trade mark in relation to some of the goods or services in that homogeneous category (judgments of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 42, and of 16 October 2024, Telefónica Germany v EUIPO – ePlus (e.plus), T‑570/23, not published, EU:T:2024:694, paragraph 17).
35
On the other hand, as regards goods or services which form part of a broad category, which may be subdivided into several independent subcategories, it is necessary to require the proprietor of a mark registered in respect of that category of goods or services to adduce proof of genuine use of his or her mark for each of those independent subcategories, failing which he or she will be liable to forfeit his or her rights in that trade mark in respect of those independent subcategories for which he or she has not adduced such proof (see judgment of 16 October 2024, e.plus, T‑570/23, not published, EU:T:2024:694, paragraph 17 and the case-law cited).
36
In that regard, it should be recalled that, although the principle of ‘partial use’, within the meaning of Article 58(2) of Regulation 2017/1001 operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he or she has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. It is in practice impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘some of the goods or services’, within the meaning of Article 58(2) of Regulation 2017/1001, cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories (judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 46; see also judgment of 16 May 2013, Aleris v OHIM – Carefusion 303 (ALARIS), T‑353/12, not published, EU:T:2013:257, paragraph 19 and the case-law cited).
37
As regards the question whether goods are part of a homogeneous category of goods which may be subdivided into several independent subcategories, it follows from case-law that, since consumers are searching primarily for goods or services which can meet their specific needs, the purpose or intended use of the goods or services at issue is vital in directing their choices. Consequently, since consumers employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a homogeneous category of goods or services (see, to that effect, judgments of 16 May 2013, ALARIS, T‑353/12, not published, EU:T:2013:257, paragraph 22, and of 7 November 2019, Intas Pharmaceuticals v EUIPO – Laboratorios Indas (INTAS), T‑380/18, EU:T:2019:782, paragraph 94 (not published) and the case-law cited).
38
It follows that, in defining a homogeneous category of goods or services, EUIPO cannot be required to limit itself to the indications of goods and services expressly included in the Nice Classification (see, to that effect, judgment of 16 October 2024, Fractal Analytics v EUIPO – Fractalia Remote Systems (FRACTALIA), T‑194/23, not published, EU:T:2024:696, paragraph 155).
39
In order to assess whether the goods or services in respect of which the proprietor of a trade mark has used that mark come within an independent category, the only relevant question is whether a consumer who wishes to purchase a product or service coming within the category of goods or services covered by the trade mark in question will associate all the goods or services belonging to that category with that mark (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 43). In those circumstances, it is for the Board of Appeal to place the evidence within the context of the economic sector in question (see, to that effect, judgment of 8 May 2017, Les Éclaires v EUIPO – L’éclaireur International (L’ECLAIREUR), T‑680/15, not published, EU:T:2017:320, paragraph 85).
40
In the present case, it should be noted that, before the adjudicating bodies of EUIPO, the applicant had put forward arguments and submitted various items of evidence intended to demonstrate that metallic and non-metallic air vents, in respect of which the contested mark was registered, had the same intended use and purpose, namely to prevent bees and other insects or vermin from entering the spaces of brick structures, while maintaining ventilation of those structures, irrespective of the material in which those vents were manufactured. In addition, the applicant argued that metallic and non-metallic air vents – the latter of which could be made, for example, of hard plastic – had the same appearance, shared the same distribution channels and were equally effective, resistant and efficient, with the result that, when those goods were purchased, their material played only a secondary role in the relevant public’s choice. On that basis, the applicant claimed that metallic and non-metallic air vents belonged to the same homogeneous category of goods, namely that of ‘air vents’.
41
The Board of Appeal rejected those arguments, as recalled in paragraph 24 above, stating, in paragraph 97 of the contested decision, that they do not have any impact on the determination of the scope of protection of the contested mark with regard to the goods in respect of which it was registered and, in paragraph 98 of that decision, that the fact that metallic air vents can have some similarities with air vents made of other materials was not relevant in the present case, in that the subject of the Board of Appeal’s assessment related to whether use had been proven for the registered goods and not the analysis of the market situation. It added, in the same paragraph of that decision, that, in any event, the documents produced by the applicant were not sufficient to prove that there were ‘identical alternatives’, made of plastics or other materials, to metallic air vents on the market.
42
It must be borne in mind that the statement of reasons on which a decision adversely affecting a person is based must provide that person with the information necessary in order to know whether that decision is well founded and must enable the Courts of the European Union to exercise their power of judicial review of that decision. Accordingly, the fact that a statement of reasons is lacking or is inadequate constitutes a matter of public interest which may, and even must, be raised of the Court’s own motion (see, to that effect, judgments of 20 February 1997, Commission v Daffix, C‑166/95 P, EU:C:1997:73, paragraphs 23 and 24, and of 23 October 2002, Institut für Lernsysteme v OHIM – Educational Services (ELS), T‑388/00, EU:T:2002:260, paragraph 59).
43
At the hearing, the Court heard the parties as to a possible failure to state reasons vitiating the contested decision as regards the question whether ‘air vents’ could constitute a homogeneous category of goods and, as has been noted in paragraph 21 above, EUIPO acknowledged that it was possible that the contested decision might be vitiated by a failure to state reasons on that point.
44
In that regard, it should be noted that, admittedly, the applicant’s arguments, set out in paragraph 40 above, do not have any impact on the determination of the scope of protection of the contested mark, as is apparent from paragraphs 26 to 30 above. However, as the Board of Appeal correctly stated in paragraph 97 of the contested decision, it is clear that those arguments did not relate to the determination of the scope of protection of that mark, but to the question whether the goods for which it had actually been used on the market during the relevant period formed part of one and the same homogeneous category of goods, namely that of ‘air vents’. Those arguments therefore concerned the second stage of the analysis referred to in paragraph 25 above.
45
The grounds set out in paragraph 97 of the contested decision, in so far as they concern the determination of the scope of protection of the contested mark, therefore do not enable the applicant to understand the reasons why the Board of Appeal rejected its arguments or enable the Court to exercise its power of review in that regard.
46
Similarly, by merely stating, in paragraph 98 of the contested decision, that the fact that metallic air vents can have some similarities with air vents made of other materials was not relevant to the present case, the Board of Appeal, in so far as its assessment did not relate to the analysis of the market situation, and, in any event, the evidence submitted by the applicant was not ‘sufficient’ to prove that on the market there were ‘identical alternatives’, made of plastics or other materials, to metallic air vents, did not set out to the requisite standard the reasons why it reached that conclusion. The reasons why the arguments referred to in paragraph 40 above, supported by various items of evidence, were not ‘sufficient’ or the reasons why the analysis of the market situation was irrelevant, in the light, in particular, of the specific features of the present case and the case-law cited in paragraph 39 above, are likewise not apparent from that decision.
47
Accordingly, it must be held that the contested decision is vitiated by a failure to state reasons.
48
That conclusion is not called into question by the other considerations set out in the contested decision.
49
First, in so far as the Board of Appeal states in the contested decision that, in the present case, the class ‘chosen’ is crucial, the applicant cannot be criticised for having ‘chosen’ two different classes for the purpose of registering the contested mark. Moreover, as the applicant correctly noted, the Nice Classification does not allow a trade mark to be registered for the category of goods ‘air vents’ in a single class, but requires such registration to be made in two different classes, depending on the material in which those vents are manufactured, which EUIPO also confirmed at the hearing.
50
Second, the references to the judgment of 26 April 2023, Wenz Kunststoff v EUIPO – Mouldpro (MOULDPRO) (T‑794/21, not published, EU:T:2023:211), in the contested decision do not remedy the failure to state reasons found in paragraph 47 above.
51
The factual and legal context of the case which gave rise to the judgment of 26 April 2023, MOULDPRO (T‑794/21, not published, EU:T:2023:211), differs from that of the present dispute. In that case, in order to prove genuine use of the mark for goods in Class 17, which includes only plastic goods, the proprietor of that mark had submitted evidence relating to metallic goods, even though that mark was not registered for such goods. Therefore, in essence, that proprietor had not used the mark at issue for the goods for which that mark had been registered, but for other goods which were not covered by that mark.
52
It was in those specific circumstances, and in order to determine the scope of protection of the mark at issue, that the General Court held, relying on the Nice Classification and its explanatory notes, that the scope of protection of the mark at issue was limited solely to goods made of non-metallic materials and that, since that mark had not been used in relation to such goods, the proprietor’s rights in that mark had to be revoked.
53
Unlike the proprietor of the mark in the case which gave rise to the judgment of 26 April 2023, MOULDPRO (T‑794/21, not published, EU:T:2023:211), in the present case, the applicant is not claiming use of the contested mark for goods in respect of which it is not registered. The present case does not therefore concern use of the trade mark for goods that do not come within the scope of its protection.
54
Third, it must also be stated that the facts of the case which gave rise to the judgment of 15 January 2009, Silberquelle (C‑495/07, EU:C:2009:10), to which the Board of Appeal referred in the contested decision, were also different from those of the present dispute, as EUIPO acknowledged at the hearing. That case concerned the question whether a mark registered in respect of both clothing in Class 25 and alcohol-free drinks in Class 32 had to be regarded as having been put to genuine use for the latter where the only use of the mark at issue in connection with such drinks was made in the context of a promotional offer, consisting in gifting a drink free of charge with the purchase of an item of clothing sold under that mark. The question referred to the Court of Justice for a preliminary ruling was therefore whether such use was consistent with the essential function of a trade mark. It is in that specific context that the Court held that it was necessary, in the light of the number of marks that are registered and the conflicts that are likely to arise between them, to maintain the rights conferred by a mark for a given class of goods or services only where that mark had been used on the market for goods or services belonging to that class and that, therefore, where the proprietor of a mark affixes that mark to items that it gives, free of charge, to purchasers of its goods, it does not make genuine use of that mark in respect of the class covering those items (judgment of 15 January 2009, Silberquelle, C‑495/07, EU:C:2009:10, paragraphs 19 and 22). By contrast, the question whether goods appearing in different classes of the Nice Classification may constitute a homogeneous category of goods for the purpose of assessing genuine use of the mark for the goods in respect of which it was registered did not arise in that case.
55
Fourth, the reasons set out in paragraph 102 of the contested decision, by which the Board of Appeal rejected as irrelevant the applicant’s arguments based on the judgment of 16 July 2020, ACTC v EUIPO (C‑714/18 P, EU:C:2020:573), likewise do not remedy the failure to state reasons found in paragraph 47 above.
56
In the judgment of 16 July 2020, ACTC v EUIPO (C‑714/18 P, EU:C:2020:573), the Court of Justice dismissed the appeal brought against the judgment of 13 September 2018, ACTC v EUIPO – Taiga (tigha) (T‑94/17, not published, EU:T:2018:539), which had refused to recognise the existence of an independent subcategory of goods in Class 25, consisting of ‘weather-protective outdoor clothing’, on the ground that all clothing has the same purpose or intended use, because it is intended to cover the human body, to conceal, adorn and protect it against the elements.
57
In the light of the considerations set out in paragraphs 25 and 31 to 39 above, the Board of Appeal could not, without examining the question whether the metallic and non-metallic air vents covered by the contested mark were likely to belong to the same homogeneous category of goods, reject as irrelevant the applicant’s arguments to that effect, including its argument based on the judgments of 16 July 2020, ACTC v EUIPO (C‑714/18 P, EU:C:2020:573), and of 13 September 2018, tigha (T‑94/17, not published, EU:T:2018:539), which specifically concerned the criteria relating to the definition of a homogeneous category of goods.
58
In the light of all the foregoing considerations, the contested decision must be annulled in so far as it dismissed the applicant’s appeal as regards non-metallic air vents in Class 19, without it being necessary to examine the applicant’s other arguments.
Costs
59
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.
60
Since EUIPO has been unsuccessful, it must be ordered to pay the costs, as applied for by the applicant.
On those grounds,
THE GENERAL COURT (Eighth Chamber, Extended Composition)
hereby:
1.
Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 January 2024 (Case R-793/2023‑5) in so far as it dismissed the appeal brought before it by Bouwbenodigdheden Hoogeveen BV in respect of ‘building materials (non-metallic), namely air vents’, in Class 19;
2.
Orders EUIPO to bear its own costs and to pay those incurred by Bouwbenodigdheden Hoogeveen.
Papasavvas
Kornezov
Petrlík
Kecsmár
Kingston
Delivered in open court in Luxembourg on 9 July 2025.
V. Di Bucci
Registrar
S. Papasavvas
President
(
*1
)	Language of the case: English.