JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
13 October 2021 (*)
(EU trade mark – Revocation proceedings – EU word mark INSTINCT – No genuine use of the trade mark – Extent of use – Overall assessment of the evidence – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001))
In Case T‑1/20,
M.I. Industries, Inc., established in Lincoln, Nebraska (United States), represented by M. Montañá Mora and S. Sebé Marin, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Natural Instinct Ltd, established in Camberley (United Kingdom), represented by A. Newman, E. Yates, J.-M. Fearnley, Solicitors, and J. Moss, Barrister,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 28 October 2019 (Case R 178/2019-5), relating to revocation proceedings between Natural Instinct and M.I. Industries,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, M. Kancheva and T. Perišin (Rapporteur), Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 2 January 2020,
having regard to the response of EUIPO lodged at the Court Registry on 13 March 2020,
having regard to the response of the intervener lodged at the Court Registry on 13 March 2020,
having regard to the measure of organisation of procedure of 16 November 2020 and the reply of the applicant lodged at the Court Registry on 2 December 2020,
further to the hearing on 19 March 2021,
gives the following
Judgment
Background to the dispute
1        On 19 July 2006, the applicant, M.I. Industries, Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign INSTINCT.
3        The goods in respect of which registration was sought are in Class 31 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Pet foods and pet treats’.
4        The application was published in Community Trade Marks Bulletin
No 2/2007 of 15 January 2007 and the mark was registered on 26 July 2007 under the number 5208418.
5        On 3 November 2015, the intervener, Natural Instinct Ltd, filed, on the basis of Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), an application for revocation of the EU word mark INSTINCT in respect of all of the goods covered by that mark.
6        On 15 April 2016, the applicant provided a series of items of evidence in order to prove genuine use of the contested mark.
7        The applicant also referred to the judgment of 15 February 2017, M.I. Industries v EUIPO – Natural Instinct (Natural Instinct Dog and Cat food as nature intended) (T‑30/16, not published, EU:T:2017:77), which had been delivered in the context of opposition proceedings between the same parties regarding, inter alia, the contested mark as an earlier mark. By that judgment, the Court annulled the Board of Appeal’s decision in so far as it had concluded that there was no genuine use of the contested mark in the course of the period from 11 February 2008 to 10 February 2013.
8        By decision of 26 November 2018, the Cancellation Division upheld the application for revocation by revoking the contested mark in respect of all of the goods referred to in paragraph 3 above as from 3 November 2015. The Cancellation Division found that the evidence provided by the applicant was insufficient to prove genuine use of the contested mark, since the applicant had not proved the extent of use of the contested mark during the relevant period, that is to say, between 3 November 2010 and 2 November 2015.
9        On 24 January 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
10      By decision of 28 October 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal.
11      In the first place, the Board of Appeal pointed out that the relevant evidence relating to the extent of use of the contested mark consisted of three affidavits signed by A, the applicant’s chief financial officer, and an affidavit signed by B, the owner and CEO of the company Cats’ Country, the distributor of the applicant’s products in Germany, which was accompanied by one invoice dated within the relevant period – an invoice dated 4 April 2012 for a total amount of EUR 33.
12      In the second place, the Board of Appeal observed that the affidavits signed by A did not refer to any specific sales under the contested mark in the European Union within the relevant period. The Board of Appeal also observed that the invoices referred to and attached to those affidavits did not relate to the relevant period.
13      In the third place, the Board of Appeal found that, although the applicant’s goods had been shipped within the European Union during the period from 2008 to 2010, there was no evidence of actual sales of those goods under the contested mark during the relevant period, except for a single invoice dated 4 April 2012 for an amount of EUR 33, which was manifestly insufficient to demonstrate genuine use.
14      In the fourth place, the Board of Appeal pointed out that the evidence submitted showed neither significant volumes nor frequent sales within the relevant period.
Forms of order sought
15      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener 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
The determination of the applicable substantive law
17      Given the date on which the application for revocation in question was filed, namely 3 November 2015, which is decisive for the purposes of identifying the applicable substantive law, the present case is governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 2, and of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.
18      Consequently, in the present case, so far as concerns the substantive rules, the references to Articles 18 and 58(1)(a) of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the parties in their written pleadings must be understood as referring respectively to Articles 15 and 51(1)(a)
of Regulation No 207/2009, the wording of which is identical.
Substance
19      In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009, read in conjunction with Article 15 of that regulation.
20      That plea seeks to dispute the Board of Appeal’s finding that the evidence submitted by the applicant was not sufficient to prove genuine use of the contested mark during the relevant period. The applicant claims that the Board of Appeal did not carry out an overall assessment of the evidence that it had submitted and therefore erred in assessing the extent of use of the contested mark.
21      The applicant’s analysis is based, in essence, on three parts. The first part alleges that the Board of Appeal excluded certain items of evidence which did not relate to the relevant period from the assessment of the proof of use. The second part alleges that the Board of Appeal did not carry out an overall assessment of all the evidence submitted. The third part alleges that the Board of Appeal did not take into account the findings in the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77).
22      It should be noted at the outset that, since, in the present case, the application for revocation was filed by the intervener on 3 November 2015, the five-year period referred to in Article 51(1)(a) of Regulation No 207/2009 ran, as the Board of Appeal correctly pointed out in paragraph 21 of the contested decision, from 3 November 2010 to 2 November 2015. There is no need to call that finding into question as it is not disputed by the parties and is, moreover, correct.
23      In order to prove genuine use of the contested mark, the applicant, in the course of the administrative proceedings before EUIPO, submitted, inter alia:
–        three invoices, dated 22 September 2008, 4 October 2009 and 24 September 2010, issued by the company Nature’s Variety, which is established in the United States, indicating that goods under the contested mark were sold to the company Cats’ Country,
which is domiciled in Germany;
–        a set of three affidavits by A stating that the abovementioned invoices were issued to the company Cats’ Country, which is a distributor of cat and dog food in Germany, pointing out that the applicant is the parent company of Nature’s Variety, which is the issuer of the abovementioned invoices, and explaining that delivery problems stopped the goods sold under the contested mark from being a commercial success;
–        an affidavit by B, the German distributor of the goods bearing the contested mark, confirming A’s statements and also confirming the independence of the activity of the company Cats’ Country in relation to the applicant;
–        an invoice, which was appended to B’s affidavit and is dated 4 April 2012, regarding the sale of 15 boxes of goods bearing the contested mark to an individual for a total of EUR 33;
–        printouts from the website ‘www.amazon.co.uk’ regarding offers for sale of goods bearing the contested mark by third-party distributors to British consumers via Amazon’s website, which date from 2015 and 2016;
–        a list of goods bearing the contested mark which were available on the internet and were aimed at British consumers in 2014;
–        a spreadsheet of sales made on the British market during the years 2015 and 2016, which was, according to the applicant, supplied by Amazon.
24      It is apparent from recital 10 of Regulation No 207/2009 that the legislature considered that there is no justification for protecting an earlier trade mark except where that mark is actually used. In accordance with that recital, Article 51(1)(a) of Regulation No 207/2009 provides that the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
25      Article 15(1) of Regulation No 207/2009 provides that ‘if, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use’.
26      As regards the criteria for assessing whether there has been genuine use, under Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now 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 applications for revocation pursuant to Rule 40(5) of that regulation (now Article 19(1) of Delegated Regulation 2018/625), the proof of use must concern the place, time, extent and nature of use of the contested mark and is to be confined 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 78(1)(f) of Regulation No 207/2009.
27      As is apparent from the case-law, 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 and services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 31 January 2019, Pandalis v EUIPO, C‑194/17 P, EU:C:2019:80, paragraph 83 and the case-law cited). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgment of 4 July 2014, Construcción, Promociones e Instalaciones v OHIM – Copisa Proyectos y Mantenimientos Industriales (CPI COPISA INDUSTRIAL), T‑345/13, not published, EU:T:2014:614, paragraph 21 and the case-law cited).
28      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 covered 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 10 September 2008, Boston Scientific v OHIM – Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 30 and the case-law cited). Thus, a low volume of goods or services marketed under the trade mark may be compensated for by a high intensity of use or a period of regular use of that mark or vice versa (see judgment of 15 September 2011, centrotherm Clean Solutions v OHIM – Centrotherm Systemtechnik (CENTROTHERM), T‑427/09, EU:T:2011:480, paragraph 28 and the case-law cited).
29      Furthermore, according to the case-law, 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 actual and sufficient use of the trade mark on the market concerned (see judgment 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).
It is therefore necessary to carry out an overall assessment which takes into account all the relevant factors of the particular case and entails a degree of interdependence between the factors taken into account (judgment of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 36).
30      Furthermore, Article 51 of Regulation No 207/2009 does not require continuous and uninterrupted use of the contested mark within the relevant period, but only genuine use in the course of that period (see judgment of 3 October 2019, 6Minutes Media v EUIPO – ad pepper media International (ADPepper), T‑668/18, not published, EU:T:2019:719, paragraph 77 and the case-law cited).
31      As to the assessment of the extent of the use to which a contested trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (see judgment of 8 November 2007, Charlott v OHIM – Charlo (Charlott France Entre Luxe et Tradition), T‑169/06, not published, EU:T:2007:337, paragraph 36 and the case-law cited).
32      The question whether use is quantitatively sufficient to maintain or create market share for the goods or services protected by the mark thus depends on a number of factors and on a case-by-case assessment. The characteristics of those goods or services, the frequency or regularity of the use of the trade mark, whether the mark is used for the purpose of marketing all the identical goods or services of the undertaking which is the proprietor of that mark or merely some of them, or evidence of use of the mark which the proprietor is able to provide, are among the factors which may be taken into account (see, to that effect, judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 71).
33      Furthermore, the turnover and the volume of sales of the goods under the contested 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, use of the contested mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be classified as genuine, provided that it is 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. It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not, with the result that a de minimis rule, which would not allow EUIPO or, on appeal, the Court, to appraise all the circumstances of the dispute before it, cannot be laid down (see judgment of 7 July 2016, Fruit of the Loom v EUIPO – Takko (FRUIT), T‑431/15, not published, EU:T:2016:395, paragraph 26 and the case-law cited).
34      In interpreting the concept of genuine use, account must be taken of the fact that the ratio legis of the requirement that the contested mark must have been put to genuine use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 27 and the case-law cited).
35      However, the smaller the commercial volume of the use of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use (see judgment of 7 July 2016, FRUIT, T‑431/15, not published, EU:T:2016:395, paragraph 28 and the case-law cited).
36      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that the evidence submitted by the applicant did not prove genuine use of the contested mark during the relevant period in connection with the goods in respect of which it was registered.
The first part, alleging that the Board of Appeal excluded certain items of evidence which did not relate to the relevant period from the assessment of the proof of use
37      The applicant complains that the Board of Appeal excluded the items of evidence which do not relate to the relevant period. Relying on the principles established by the case-law, the applicant claims that that evidence must, on the contrary, be taken into account, because it may contribute towards further proving genuine use of the contested mark on the market during the relevant period.
38      In particular, the applicant submits that the Board of Appeal should, in assessing the continuity of use of the mark on the market, have taken into account the invoice of 24 September 2010, which predates the relevant period, and the offers for sale of goods published on the websites ‘Amazon.co.uk’ and ‘Amazon.de’, which postdate the relevant period.
39      In the first place, as regards the invoice of 24 September 2010, the applicant argues that that invoice proves that 1 895 cans of pet food bearing the contested mark were sold, through its subsidiary Nature’s Variety, to the company Cats’ Country for an amount of USD 37 630.
40      According to the applicant, that invoice, in conjunction with B’s affidavit stating that all the goods bearing the contested mark which had been acquired in 2010 were marketed until April 2012 and the invoice of 4 April 2012 referring to the last units of goods bearing the contested mark which were sold by the company Cats’ Country, prove that Cats’ Country distributed pet foods bearing the contested mark on the German market until 4 April 2012, that is to say, during the first two years of the relevant period.
41      In the second place, as regards the offers for sale of goods published on the websites ‘Amazon.co.uk’ and ‘Amazon.de’, the applicant submits that, although the extracts from the Amazon websites containing offers for sale of goods bearing the contested mark which were aimed at the British and German markets postdate the relevant period, they serve further to prove the extent of use of the contested mark by showing that that use continued beyond the relevant period and that the use of the contested mark was not mere token use, but, on the contrary, use aimed at acquiring a commercial position on the relevant market.
42      EUIPO and the intervener dispute the applicant’s arguments.
43      In that regard, it must be pointed out that the applicant’s interpretation of the contested decision is incorrect inasmuch as, although the Board of Appeal, in paragraph 25 of the contested decision, did indeed take the view that the items of evidence which did not relate to the relevant period could not substantiate the extent of use of the contested mark, it nevertheless, in paragraphs 27 and 28 of the contested decision, correctly took those items of evidence into account in the context of its overall assessment of the evidence submitted.
44      It is true that, since the market life of a product usually extends over a given period of time and continuity of use is one of the indications relevant for establishing whether that use has been objectively intended to create or maintain a market share, the documents which are not from the relevant period, far from being irrelevant, must be taken into account and assessed in conjunction with the rest of the evidence, because they can offer proof of real and genuine commercial use of the mark (judgment of 16 June 2015, Polytetra v OHIM – EI du Pont de Nemours (POLYTETRAFLON), T‑660/11, EU:T:2015:387, paragraph 54).
45      It is clear from the case-law that it is possible to take such evidence relating to use made before or after the relevant period into consideration, in so far as it makes it possible to confirm or better assess the extent to which the earlier mark was used and the actual intentions of the proprietor during that period. However, such evidence can be taken into consideration only if other evidence relating to the relevant period has been produced (see judgment of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 41 and the case-law cited).
46      In the present case, however, as EUIPO rightly points out, apart from a single invoice dated 4 April 2012 for an amount of EUR 33, which is attached as an annex to B’s affidavit, and the spreadsheet from Amazon, which indicates the sale of 18 items bearing the contested mark (see paragraph 59 below), the applicant has not provided any other evidence referring to the sales actually made during the relevant period.
47      As regards the applicant’s argument that it is apparent from the invoice of 24 September 2010, in conjunction with B’s affidavit and the invoice of 4 April 2012, that all the goods distributed by the applicant were actually sold during the relevant period, it must be pointed out, as observed by EUIPO and the intervener, that it is not possible to ascertain what proportion of those goods was actually sold during that period and thus to establish the volume of those sales. As stated by the intervener, it was for the applicant to prove the extent of use during the relevant period and to provide evidence as to how many of those 1 895 units had been sold by the company Cat’s Country during the relevant period.
However, the only documents referring to the sales actually made during the relevant period are the invoice dated 4 April 2012 for an amount of EUR 33 and the spreadsheet from Amazon indicating the sale of 18 items bearing the contested mark (see paragraph 59 below).
48      Furthermore, it must be stated that, in the absence of other items of evidence which are sufficient to prove genuine use of the contested mark during the relevant period, the extracts from Amazon’s websites cannot be regarded as proving that there was real and genuine commercial use of the contested mark.
49      It is apparent from the case-law referred to in paragraph 44
above and in paragraph 59 below that, although evidence which does not relate to the relevant period may be taken into account and assessed in conjunction with other evidence in order further to substantiate the proof of real and genuine commercial use of the mark, that does not mean that proof of genuine use of the contested mark can be based solely on evidence which does not relate to the relevant period. A different finding would have the effect that the requirement to prove genuine use during the relevant period would be deprived of any meaning.
50      Furthermore, as submitted by EUIPO and the intervener, the offers for sale on websites of goods bearing the contested mark, which postdate the relevant period, do not contain any reference to actual sales, their volume or their intensity and do not prove that those goods were actually sold during the relevant period. Consequently, that evidence cannot substantiate the conclusion that the use of that mark during the relevant period was of a sufficient extent to be regarded as genuine.
51      In view of all of the foregoing considerations, the Board of Appeal did not err in taking into account all the evidence submitted and in finding that it did not prove genuine use of the mark during the relevant period, on the ground that that evidence showed neither significant volumes nor frequent sales within the relevant period.
52      The first part of the single plea put forward by the applicant must therefore be rejected as unfounded.
The second part, alleging that the Board of Appeal did not carry out an overall assessment of all the evidence submitted
53      The applicant argues that the Board of Appeal did not, for the purposes of examining the extent of use of the contested mark during the relevant period, assess all the evidence which it had submitted and essentially focussed on A and B’s affidavits. According to the applicant, by relying on a partial assessment of the evidence which it had provided, the Board of Appeal clearly infringed the principle of the overall assessment of the evidence.
54      In particular, the applicant submits that the Board of Appeal should have taken into account other documents which relate to the relevant period, inter alia, the printouts of extracts from the website ‘Amazon.co.uk’, which show that goods bearing the contested mark were offered on the British market during the relevant period, and the spreadsheet provided by Amazon, which proves the existence of sales of pet food bearing the contested mark during the period from 3 January 2015 to 6 February 2016.
55      EUIPO disputes the applicant’s arguments.
56      In that regard, it must be pointed out that, even though some of the evidence which comes from Amazon relates to the relevant period, its evidential value is insufficient to dispel the doubts regarding genuine use of the contested mark.
57      As EUIPO rightly points out, the extracts from the website ‘Amazon.co.uk’ merely show that the goods in question were put up for sale, but do not, however, prove that they were actually sold and do not provide any information regarding the volume of any sales.
58      It is also important to state that, as is pointed out by EUIPO, even assuming that some of the goods were actually sold on the internet during the relevant period, the extracts from the website ‘Amazon.co.uk’, which do not quantify the volume of sales, do not, as a result, prove that there was a sufficient volume of sales.
59      Furthermore, it must be stated, as pointed out by EUIPO, that the spreadsheet, even if it were provided by Amazon, as the applicant claims, could not prove a sufficient volume of sales, because it refers to the sale of only 18 items bearing the contested mark in the course of the end of the relevant period. In the light of the nature of the goods at issue, which are everyday consumer goods, and of their modest price, such a volume of sales cannot be considered to be sufficient to prove genuine use of the contested mark (see, to that effect, judgment of 30 April 2008, Rykiel création et diffusion de modèles v OHIM – Cuadrado (SONIA SONIA RYKIEL), T‑131/06, not published, EU:T:2008:135, paragraph 54).
60      Consequently, it must be examined, in accordance with the abovementioned case-law, whether the very low volume of sales might have been compensated for by a high intensity of use or a period of regular use of that mark. In that respect, it must be stated that, by a measure of organisation of procedure, which was adopted on the basis of Article 89 of the Rules of Procedure of the General Court, the applicant was requested to provide the Court with clarifications regarding the content and dates of the extracts from the Amazon websites contained in EUIPO’s case file.
61      In that regard, it must be stated that, as regards the extracts from the website ‘Amazon.de’, the applicant has not proved that that evidence related to the relevant period. As regards the extracts from the website ‘Amazon.co.uk’, even though some of the extracts appear to relate to the relevant period, that is to say, from 3 November 2010 to 2 November 2015, they merely show that the goods in question were put up for sale, but do not, however, prove that they were actually sold and do not provide any information regarding the volume of any sales.
62      Furthermore, as the intervener submitted at the hearing, it must be pointed out that the ratings in the extracts at issue relate to the resellers rather than to the goods in question. It is also important to point out that, at the hearing, in reply to a question put by the Court, the applicant reiterated the view that it had expressed in its reply to the measure of organisation of procedure, namely that it was more than likely that some of the ratings were given during the relevant period. However, it was not in a position to state with certainty the number of ratings which were given during the relevant period.
63      However, according to the case-law referred to in paragraph 29 above, 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 actual and sufficient use of the trade mark on the market concerned.
64      It must also be borne in mind that, according to the case-law referred to in paragraph 35 above, the smaller the commercial volume of the use of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use.
65      However, in the present case, the applicant has not provided any additional evidence to dispel the doubts as to the genuineness of the use of the contested mark.
66      The clarifications provided by the applicant are not therefore capable of calling into question the Board of Appeal’s assessment, in paragraph 29 of the contested decision, that the evidence submitted does not prove genuine use of the contested mark during the relevant period, on the ground that that evidence shows neither significant volumes nor frequent sales within the relevant period.
67      Consequently, in accordance with the case-law referred to in paragraphs 31 and 32 above and in the light of the characteristics of the goods at issue, the low commercial volume of the overall use of the contested mark and the limited frequency of that use, it must be held that the Board of Appeal did not make an error of assessment in finding that the evidence submitted by the applicant was not sufficient to prove genuine use of the contested mark.
68      In view of all of the foregoing considerations, the applicant’s argument that the Board of Appeal did not carry out an overall assessment of all the evidence submitted must be rejected and the second part of the applicant’s single plea must therefore be rejected as unfounded.
The third part, alleging that the Board of Appeal did not take into account the findings in the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16)
69      The applicant submits that the Board of Appeal did not take into account the findings which the Court reached in its judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), or the case-law according to which proof of genuine use of a mark does not need to extend to the entire relevant period.
70      In particular, the applicant complains that the Board of Appeal did not give any weight to the information contained in B’s affidavit and did not therefore take into account the findings of the Court in its judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77).
71      In that regard, the applicant states that the Court, in its judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), expressly found that B’s affidavit had to be assessed as evidence that came from a third party and that, as such, it was evidence that was sufficient to attest certain facts. According to the applicant, the Board of Appeal should have found that B’s affidavit proved not only the sales of goods bearing the contested mark by the applicant to the company Cats’ Country in 2008 to 2010, but also the sales of 1 895 cans of goods during part of the relevant period, that is to say, until April 2012, on the German market, and that that item of evidence should be considered to be sufficient evidence to prove those facts.
72      Furthermore, the applicant submits that, in its judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), the Court found that the evidence filed by the applicant in the proceedings before it, namely B’s affidavit together with the invoice of 4 April 2012 and A’s affidavits with the invoices from 2008 to 2010, demonstrated that the applicant had sold goods bearing the contested mark to the company Cats’ Country and that those goods had been marketed by the company Cats’ Country on the German market until 4 April 2012.
73      According to the applicant, the evidence to which the General Court referred in its judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), concerns a period which ended on 4 April 2012. However, the relevant period in the present case ran from 3 November 2010 to 2 November 2015. The applicant takes the view that the Court’s finding in that judgment also applies in the present case and that the Board of Appeal therefore erred in not taking that judgment into account in the contested decision.
74      EUIPO and the intervener dispute the applicant’s arguments.
75      It must be stated that the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), was delivered in the context of opposition proceedings between the same parties, proceedings during which the intervener requested that the applicant furnish proof of use of, inter alia, the contested mark, which had been registered in respect of goods in Class 31, in the course of the period from 11 February 2008 to 10 February 2013.
76      In its judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), the Court examined whether the Board of Appeal had been right in finding that the evidence submitted by the applicant did not prove genuine use of the contested mark.
77      In that context, the Court examined, inter alia, the three invoices dated 22 September 2008, 4 October 2009 and 24 September 2010, the three affidavits by A and the affidavit by B, evidence which the applicant has also submitted in the present proceedings.
78      It must be pointed out, as the Court stated in paragraph 29 of the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), that the Board of Appeal, in the context of the opposition proceedings, had concentrated on the nature of the use of the earlier mark and, in particular, on whether that mark had been used publicly and outwardly. In that respect, the Board of Appeal, in the context of the opposition proceedings, had pointed out that the applicant had not been in a position to provide any evidence, apart from the affidavits, proving that the goods delivered to the company Cats’ Country had actually entered the German market.
79      However, the Court held, in paragraph 55 of the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), that the evidence adduced by the applicant during the administrative proceedings, in particular the affidavits, invoices and mock-up of a label, demonstrated that the applicant had sold goods bearing the contested mark to the company Cats’ Country from 2008 to 2010, that those goods had been marketed by the company Cats’ Country and that those goods bore the contested mark. Consequently, it held that the evidence submitted by the applicant permitted a finding that the goods bearing the contested mark had actually made their way onto the German market.
80      Furthermore, the Court held, in paragraph 45 of the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), that B’s affidavit should have been regarded as coming from an independent source and that the probative value of that document should therefore not be considered to be less than that of a third-party document.
81      In that regard, it must be pointed out that, contrary to what the applicant claims, there is no finding in the contested decision which, in one way or another, contradicts the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77).
82      In particular, it must be stated that, in its judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), the Court, by conducting an overall assessment of all the evidence at its disposal, found that the Board of Appeal had made an error of assessment in finding that that evidence was not sufficient to prove that the goods delivered to the company Cats’ Country ‘had actually entered the German market’. In that context, the General Court criticised the Board of Appeal for having made a partial assessment of that evidence, in that the Board of Appeal had regarded as relevant only that evidence which proved use of the earlier mark aimed at end consumers.
83      As the Court pointed out in paragraph 56 of its judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), outward use of a mark does not necessarily mean use aimed at end consumers. Accordingly, the relevant public at which trade marks are aimed comprises not only end consumers, but also specialists, industrial clients and other professional users (see, to that effect, judgment of 21 November 2013, Recaro v OHIM – Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 25 and the case-law cited).
84      The Court also stated, in paragraph 57 of its judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), that, in a market such as that of the European Union, in order to create or preserve outlets for everyday consumer goods such as those at issue in the present case, it is necessary, in particular where a manufacturer of such goods does not have its own distribution channel, to have recourse, by means of commercial measures, to professionals in the sector, namely resellers. It cannot therefore be ruled out as a matter of principle that use of a mark shown by commercial measures addressed solely to professionals in the sector concerned can be regarded as use consistent with the essential function of the trade mark.
85      Those findings on the part of the Court were neither disputed nor contradicted by the Board of Appeal in the present case.
86      Contrary to what the applicant claims, the Board of Appeal did indeed take the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), into consideration. It did not call into question either the evidential value of B’s affidavit, a point which EUIPO, moreover, reiterated at the hearing, or the finding that the applicant had proved, in the context of the previous opposition proceedings, that the goods delivered to the company Cats’ Country had actually entered the German market in the course of the relevant period of 11 February 2008 to 10 February 2013 inclusive.
87      As has been pointed out in paragraph 78 above and as EUIPO stated at the hearing, the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), concentrated on the nature of use of the earlier mark and, in particular, on whether that mark had been used publicly and outwardly, whereas the contested decision in the present case concentrates on the extent of use of the contested mark, since the time, place and nature of use are not disputed in the context of the present proceedings.
88      What is more, as EUIPO and the intervener correctly point out, the relevant period in the case which the Court examined in the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), namely from 11 February 2008 to 10 February 2013, is different from the relevant period in the present case, namely from 3 November 2010 to 2 November 2015.
89      In addition, the Court’s finding in paragraph 55 of the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), is based on, inter alia, the three invoices issued to the company Cats’ Country dated 22 September 2008, 10 April 2009 and 24 September 2010, which are all outwith the relevant period in the present case.
90      However, the evidence which was held to be sufficient to prove that the goods delivered to the company Cats’ Country had actually entered the German market in the context of the opposition proceedings which gave rise to the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), cannot be held to be sufficient to prove genuine use in the context of the present revocation proceedings.
91      Since the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), was based on, inter alia, evidence which predates the relevant period in the present case, that judgment cannot successfully be relied on in order to prove genuine use of the contested mark from 3 November 2010 to 2 November 2015.
92      It is true that, as is apparent from the case-law and as is submitted by the applicant, it is sufficient that a trade mark has been put to genuine use during a part of that period for it not to be subject to the sanctions laid down in Article 15(1) of Regulation No 207/2009 (see, to that effect, judgment of 16 December 2008, Deichmann-Schuhe v OHIM – Design for Woman (DEITECH), T‑86/07, not published, EU:T:2008:577, paragraph 52).
93      However, as regards the evidence relating in part to the relevant period, it must be borne in mind, as stated in paragraph 47 above, that that evidence and that submitted in the context of the present proceedings do not serve to prove genuine use of the contested mark during part of the relevant period, with the exception of a single invoice dated 4 April 2012 for an amount of EUR 33 and a spreadsheet from Amazon, indicating the sale of 18 items bearing the contested mark, which cannot, according to the case-law referred to in paragraphs 31, 32 and 59 above, in the light of the nature and the price of the goods at issue, be held to be sufficient to prove genuine use of the contested mark.
94      It must therefore be held that the Board of Appeal duly took account of the findings in the judgment of 15 February 2017, Natural Instinct Dog and Cat food as nature intended (T‑30/16, not published, EU:T:2017:77), and of the case-law according to which proof of genuine use of a mark does not require the proof of use to cover the whole of the relevant period.
95      Consequently, the third part of the single plea put forward by the applicant must, in any event, be rejected.
96      In view of all of the foregoing considerations, the single plea put forward by the applicant must be rejected and the action must therefore be dismissed in its entirety.
Costs
97      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 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 (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders M.I. Industries, Inc. to pay the costs.
Costeira
Kancheva
Perišin
Delivered in open court in Luxembourg on 13 October 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.