JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
8 May 2017 (*)
(EU trade mark — Revocation proceedings — EU word mark L’ECLAIREUR — Genuine use of the mark — Article 15(1), Article 51(1)(a) and Article 76(1) of Regulation (EC) No 207/2009 — Rule 22(6) of Regulation (EC) No 2868/95 — Alleged divergence from Part C, Section 6, of the EUIPO Guidelines for examination)
In Case T‑680/15,
Les Éclaires GmbH, established in Nuremberg (Germany), represented by S. Bund, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
L’éclaireur International, established in Luxembourg (Luxembourg), represented by M. Decker, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 3 September 2015 (Case R 2266/2014-1), relating to revocation proceedings between Les Éclaires and L’éclaireur International,
THE GENERAL COURT (Fourth Chamber),
composed of H. Kanninen, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 20 November 2015,
having regard to the response of EUIPO lodged at the Court Registry on 17 March 2016,
having regard to the response of the intervener lodged at the Court Registry on 13 March 2016,
having regard to the fact that no request for a hearing was submitted by the main 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
Background to the dispute
1        On 31 October 2003, the intervener, L’éclaireur International, 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)).
2        The trade mark for which registration was sought is the word sign L’ECLAIREUR.
3        The goods in respect of which registration was sought are in Classes 3, 4, 9, 14, 18, 20 and 25 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. As regards Class 25, which is the only class to which the present dispute relates, the goods correspond to the following description: ‘Clothing, shoes, headgear’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 6/2005 of 7 February 2005. The mark was registered for all of the goods concerned on 23 August 2005, under number 3494028.
5        On 1 August 2013, the applicant, Les Éclaires GmbH, filed an application for revocation of the mark at issue. The grounds relied on in support of that application were those referred to in Article 51(1)(a) of Regulation No 207/2009, namely that the mark at issue had not been put to genuine use in the European Union in connection with the goods protected by the mark within a continuous period of five years.
6        On 12 August 2013, EUIPO notified the intervener of the application for revocation. On 10 January 2014, the intervener submitted a body of evidence of use of the mark at issue.
7        By decision of 2 July 2014, the Cancellation Division revoked the intervener’s rights in respect of all of the goods for which the mark had been registered on 23 August 2005.
8        On 1 September 2014, the intervener filed an appeal against the decision of the Cancellation Division. On 6 November 2014, it submitted its statement setting out the grounds for its appeal and ‘further evidence’.
9        By decision of 3 September 2015 (‘the contested decision’), the First Board of Appeal of EUIPO partially annulled the decision of the Cancellation Division ‘to the extent that it revoked [the mark at issue] for “clothing” and “shoes” in Class 25’. Consequently, it concluded that the registration of that mark should be maintained for those goods. In essence, the Board of Appeal found that, in general, the evidence of use proved the use of the mark at issue for ‘clothing’ and ‘shoes’, but not for the other goods in Classes 3, 4, 9, 14, 18, 20 and 25.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision ‘so that the [mark at issue] is revoked entirely’;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the application; and
–        order the applicant to pay the costs.
12      The intervener claims that the Court should:
–        declare the application for annulment unfounded and dismiss it;
–        confirm the contested decision; and
–        in any event, order the applicant to pay the costs, including those incurred by the intervener before the Court and before EUIPO.
Law
13      In support of its action, the applicant puts forward, in essence, three pleas in law. The first plea in law alleges infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 51(1) of that regulation. The second plea in law alleges a ‘discordance’ between the contested decision and Part C, Section 6, of the EUIPO Guidelines for examination of EU trademarks (‘the EUIPO Guidelines’) and infringement of Article 76(1) of Regulation No 207/2009. The third plea in law alleges infringement of Rule 22(6) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1).
14      The Court considers it appropriate to begin by examining the applicant’s third plea in law, before assessing the first and second pleas in law, in the order indicated.
The third plea in law, alleging infringement of Rule 22(6) of Regulation No 2868/95
15      The applicant argues, first of all, that it is apparent from Rule 22(6) of Regulation No 2868/95 that, if the evidence supplied in accordance with paragraphs 1 to 3 of that rule was not drafted in the language of the opposition proceedings, EUIPO could require the opposing party to submit a translation of that evidence in that language, within the specified period. The applicant submits that, in accordance with that provision, it is left to the discretion of EUIPO whether the opposing party had to submit a translation of the evidence of use in the language of the proceedings. According to the applicant, it was for EUIPO to balance, in the exercise of its discretion, the interests of both parties.
16      The applicant submits, in particular, that, since the invoices adduced by the intervener before EUIPO were not drafted in the language of the proceedings and their content was not correctly interpreted by the Board of Appeal, EUIPO should have requested a translation of those documents.
17      EUIPO and the intervener dispute the applicant’s allegations.
18      In that respect, the Court notes, first of all, that, with regard to ‘proof of use’, pursuant to Rule 40(5) of Regulation No 2868/95, the rule applicable mutatis mutandis in the present case is Rule 22(6) of that regulation, which provides, in the context of the application of Article 42(2) and (3) of Regulation No 207/2009, that EUIPO ‘may’ require the opposing party to submit a translation of that evidence in the language of the proceedings (judgment of 13 February 2015, Husky CZ v OHIM — Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraphs 54 and 55). Thus, it is not appropriate to apply Rule 19(3) of Regulation No 2868/95 (see, to that effect, judgment of 15 December 2010, Epcos AG v OHIM — Epco Sistemas (EPCOS), T‑132/09, not published, EU:T:2010:518, paragraph 53), which is more stringent (see, to that effect, judgment of 9 September 2016, Puma v EUIPO — Gemma Group (Representation of a bounding feline), T‑159/15, EU:T:2016:457, paragraphs 23 to 25).
19      It follows from the foregoing that, as EUIPO rightly submits, in accordance with the applicable rules, cited in paragraph 18 above, it is not obliged, but rather entitled, to request the party supplying evidence to submit a translation of that evidence. In the first place, it must be noted, in the present case, as EUIPO argues, that even the invoices drafted in languages other than English, which are the only documents specifically referred to in the applicant’s allegation made before the Court, may be understood as they are, since they contain information relating to the contracting parties, the quantities, the nature of the products sold and the prices paid. In addition, the comprehension of some of those invoices is further facilitated by the fact that other items of evidence, which may be read in conjunction with those invoices, were submitted by the intervener before EUIPO. Although the products in question cannot be clearly determined from some invoices, that is not due directly to the absence of a translation. Furthermore, it must be noted that a significant number of the invoices submitted were drafted in English, that is to say, in the language of the opposition proceedings.
20      In the second place, as EUIPO rightly submits, it must be noted that the applicant, in a letter to EUIPO of 18 March 2014, on the one hand, criticised the fact that some evidence of use was submitted in languages other than the language of the proceedings, while asserting, on the other hand, that the Board of Appeal had to decide on the basis of the evidence as submitted, in order to avoid any further delay in the resolution of the case.
21      In that respect, it must be pointed out that, even though that latter assertion may be understood as meaning that the applicant had asked EUIPO not to specify additional periods for the intervener to submit further evidence on the use of the mark at issue, it is also clear that the applicant sought to have EUIPO decide promptly on the basis of the documents already submitted, as they were, that is to say, without obtaining a translation of those documents.
22      In addition, it must be noted that, during the administrative procedure before EUIPO, the applicant did not expressly request a translation of the evidence in question. On the contrary, it is clear from several of its assertions that it had understood the content of that evidence, even when it was submitted in a language other than the language of the proceedings. That was the case, for example, when it argued that some of the extracts from articles in the French press merely indicated the existence of shops called ‘L’ECLAIREUR’ and not the use of the mark at issue for the goods covered by the application for revocation. Lastly, it must be pointed out that a significant number of the items of evidence submitted were drafted in English, that is to say, in the language of the proceedings.
23      In those circumstances, the principle of the right to be heard and the equality of arms between the parties in inter partes proceedings were observed. Nor can the view be taken that the lack of a translation of some of the items of evidence in question affected the exercise of the applicant’s rights of defence, since it was in a position to challenge the documents in question before the Court (see, by analogy, judgment of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 102 et seq.).
24      Accordingly, the third plea in law must be rejected.
The first plea in law, alleging infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 51(1) thereof
25      The applicant submits, in essence, that the contested decision is not in accordance with Article 15(1) of Regulation No 207/2009, read in conjunction with Article 51(1) thereof, since there is no concrete and objective evidence proving effective and sufficient use of the mark at issue for ‘clothing’ and ‘shoes’. According to the applicant, the intervener did not prove any commercial purpose in the use of that mark, which is therefore neither effective nor sufficient.
26      In particular, first, the applicant submits that very few items of clothing or shoes bearing the mark at issue were presented, including in the form of photographs. Secondly, the only invoices that could refer to such items date, according to the applicant, from February and September 2013, and concern a total of 75 pairs of jeans from the company Snake & Dagger. It was not proved that the jeans to which those invoices refer were precisely those shown in the photographs nor that they had actually been sold on the market or that they had been used commercially. The applicant emphasises that certain invoices referred to ‘prototypes’ and referred to the intervener as the purchaser. No ‘client invoice’ was produced in the present case. According to the applicant, the other invoices presented demonstrate at most the use of the intervener’s trade name. Thirdly, the applicant emphasises, in general, the small quantities of products referred to in the invoices, which, furthermore, do not show any public and outward use. In its submission, in the present case, there is a lack of information on the turnover and the volume of sales.
27      EUIPO and the intervener take issue with the applicant’s submissions.
28      Under Article 51(1)(a) of Regulation No 207/2009, 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.
29      In accordance with Rule 22(3) and (4) of Regulation No 2868/95, which is applicable to revocation proceedings pursuant to Rule 40(5) of that regulation, the proof of use must concern the place, time, extent and nature of use of the mark and it is to be confined, in principle, to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009.
30      In interpreting the concept of genuine use, account must be taken of the fact that the rationale for the requirement that the 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 judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 32 and the case-law cited, and of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 53 and the case-law cited).
31      According to 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 or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Furthermore, the condition of genuine use of the mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 26 and the case-law cited, and 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).
32      In the assessment of whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see 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).
33      Furthermore, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see 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). Accordingly, an overall assessment must be made, taking account of all the relevant factors in the particular case, which implies a certain interdependence between the factors taken into account (see judgment of 18 January 2011, Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, not published, EU:T:2011:9, paragraph 30 and the case-law cited).
34      In that respect, with regard to Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the Court of Justice has stated that a company name, trade name or shop sign does not, of itself, have the aim of distinguishing goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being ‘in relation to goods or services’ (see judgment of 13 April 2011, Alder Capital v OHIM — Gimv Nederland (ALDER CAPITAL), T‑209/09, not published, EU:T:2011:169, paragraph 45 and the case-law cited).
35      By contrast, there is use ‘in relation to goods’ when a third party affixes the sign constituting its company, trade or shop name on the goods which it markets. In addition, even where the sign is not affixed, there is use ‘in relation to goods or services’ within the meaning of Article 5(1) of Directive 89/104 where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party (see judgment of 13 April 2011, ALDER CAPITAL, T‑209/09, not published, EU:T:2011:169, paragraph 46 and the case-law cited).
36      It should be noted that, by virtue of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, proof of genuine use of an earlier mark — whether a national mark or an EU mark — also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (see judgment of 13 April 2011, ALDER CAPITAL, T‑209/09, not published, EU:T:2011:169, paragraph 49 and the case-law cited).
37      Lastly, the Court of Justice added, in paragraph 72 of the judgment of 11 May 2006, Sunrider v OHIM (C‑416/04 P, EU:C:2006:310), that it was 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, which means that a de minimis rule, which would not allow EUIPO or, on appeal, the General Court to appraise all the circumstances of the dispute before it, cannot be laid down. Thus, when it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use.
38      The present plea in law must be examined in the light of those considerations.
39      In that respect, it must be pointed out that, as is evident from paragraphs 5 and 7 of the contested decision and as noted in paragraphs 6 and 8 above, during the administrative procedure before EUIPO, the intervener first submitted evidence of use of the mark at issue, divided into several categories, before the Cancellation Division, and, subsequently, submitted ‘further evidence’ before the Board of Appeal.
40      The evidence of use submitted by the intervener before the Cancellation Division was the following:
–        various wrapping and advertising material (Annex 1):
–        paper bags bearing the sign L’ECLAIREUR and the number 30, which are featured prominently on the outside of the bag; according to the intervener, the number 30 is a reference to the 30th anniversary of its shop;
–        a specimen of silk wrapping paper, bearing the word element ‘www.leclaireur.com’;
–        a cover of a black packing box, bearing the sign L’ECLAIREUR on one side of the cover;
–        various envelopes and cards, including thank-you cards, an envelope for receipts, two sample cards with the addresses of the shops, and two red labels, all of which bear the sign L’ECLAIREUR;
–        a white ribbon, on which the sign L’ECLAIREUR appears;
–        invoices from 2011 to 2013 (Annex 2). The invoices concern sales to customers in various EU Member States, but also in countries which are not Member States (all together, the invoices concern approximately 30 countries, listed in paragraph 5 of the contested decision, including 14 EU Member States). The referenced products are mainly items of clothing and shoes;
–        further general documentation (Annex 3). This material includes press clippings from French-language fashion magazines which, according to the intervener, are dated December 2009 to June 2010. The sign L’ECLAIREUR appears on some of those clippings. There are also invoices from suppliers accompanied by email correspondence and photos of clothing and shoes. The documents (which include invoices and emails concerning jeans from the company Snake & Dagger, together with samples bearing the sign L’ECLAIREUR directly on the products) date from 2013;
–        several screenshots from the website ‘www.leclaireur.com’ and from the online shop ‘shop.leclaireur.com’ (Annex 4). The images show dresses, jewellery, boots, sandals, handbags, and other products such as mobile phone cases, trays and candles;
–        various scanned documents on two data storage devices: a CD containing, inter alia, French-language press clippings from 1980 to 2013 and a USB flash drive containing French-language press clippings from April to October 2013 (Annex 5).
41      The ‘further’ evidence adduced before the Board of Appeal was the following:
–        a sworn declaration dated 30 October 2014 made by Mr H., creator of the intervener and of the mark L’ECLAIREUR. The declaration essentially contains statements concerning the manufacture of fashion products for l’éclaireur International under the mark L’ECLAIREUR ‘for years’ up to the date of the declaration. Mr H. also explained the concept of collaboration with designers and artists, emphasising that it was a concept that was initiated in 2008. He mentioned the launch of L’ECLAIREUR’s own collection of shirts and pullovers and various other collections, including menswear, shoes, accessories (such as scarves), candles or jewellery. It was emphasised that the goods were either only branded with the sign L’ECLAIREUR or were co-branded, such as the shoes manufactured by the company Premiata and bearing the mark L’ECLAIREUR made by PREMIATA. Mr H. referred to a sponsorship of young designers by L’ECLAIREUR that took place in 2010 and, in the same context, referred to the new trend of co-branding the goods in question with the mark L’ECLAIREUR and with the name of those designers. He also mentioned that, in early 2013, the choice had been made to take on a team in the company’s premises, dedicated to the development of specific and enriched collections under the brand L’ECLAIREUR. Lastly, figures were presented which were designed to show that production of goods bearing the mark at issue was increasing (‘the sworn declaration’);
–        a summary of purchase orders: 163 pages of internal documents detailing purchases made by L’ECLAIREUR (Annex A);
–        35 pages of photographs and screenshots of items of clothing and shoes from the intervener’s online shop, with the sign L’ECLAIREUR printed directly on some of the products for sale (Annex B);
–        ‘Invoices to clients between 2009 and 2012’: 19 invoices or order confirmations, none of which mentions the sign L’ECLAIREUR or the intervener’s business (Annex C);
–        invoices from suppliers issued between 2008 and 2013: 78 invoices, some of which are issued to L’ECLAIREUR (Annex D);
–        a copy of the 4-page booklet ‘Biographie de L’ECLAIREUR’ (Annex E).
42      The Board of Appeal found, in paragraph 14 of the contested decision, that, since the mark at issue had been registered on 23 August 2005, it had been registered for more than five years at the date of filing of the revocation request, which took place on 1 August 2013. Consequently, the Board of Appeal set the relevant period for which genuine use had to be shown as the period from 1 August 2008 to 31 July 2013 (‘the relevant period’).
43      In that respect, in the first place, as regards the documents filed before the Cancellation Division as evidence of use of the mark at issue, the Board of Appeal asserted, in paragraph 17 of the contested decision, that, even though there was a large amount of those documents, the intervener had barely explained the specific relationship between those documents and the particular facts which they were intended to prove.
44      In paragraph 18 of the contested decision, the Board of Appeal found that the documents in question showed that the intervener operated in a high-priced market segment for fashion products, including, in particular, clothing and shoes. It referred, in that respect, to the invoices submitted as Annex 2 and to the press clippings in Annexes 3 and 5. It followed from those documents, according to the Board of Appeal, that during the relevant period the intervener had sold products to consumers inside and outside the European Union via its online shop. The documents in question also suggested, according to the Board of Appeal, that the volume of sales of clothing and shoes during the relevant period was ‘significant’, given that ‘the products sold [were] luxury goods’.
45      In paragraphs 19 and 20 of the contested decision, the Board of Appeal took the view that account had to be taken of the specific characteristics of the relevant market for luxury fashion products. In its view, it was clear from the evidence submitted that the intervener had collaborated with other fashion designers and fashion labels. The Board of Appeal considered that it was not unlikely that consumers of fashion products would be used to such collaborations and that they might therefore be ready to consider both collaborators, namely the proprietor of the mark and the designer in question, as being at the ‘origin’ of the product. It was therefore reasonable to assume that a consumer confronted with products bearing the words ‘l’éclaireur’, preceded by the name of the designer, would also associate those products with the intervener, since it was common practice for retailers to offer their own line of products produced specifically for them by a third party under their own name. Accordingly, the public was accustomed to encountering such products sold under the retailer’s trade mark. The Board of Appeal also referred to the invoices submitted in Annex 2, and to the extensive selection of press clippings in Annexes 3 and 5, in finding that the place of use of the mark L’ECLAIREUR during the relevant period was the European Union, and that a significant volume of items of clothing and shoes had been purchased by the intervener from suppliers and sold to consumers.
46      Lastly, in paragraphs 21 and 22 of the contested decision, the Board of Appeal found that, when considered together, the evidence of use submitted before the Cancellation Division indicated that the intervener had tried to acquire and maintain a commercial position on the market for ‘clothing’ and ‘shoes’ and not only, as the Cancellation Division had found, for ‘retail services’. According to the Board of Appeal, that use exceeded a token use of the mark with the sole intention of preserving the rights which it conferred. The Board of Appeal concluded that, although the evidence was not comprehensive, it provided sufficient indications as to the time, place and extent of the use of the mark at issue for ‘clothing’ and ‘shoes’. However, as regards the other goods covered by the mark at issue, the evidence was clearly insufficient, according to the Board of Appeal, to demonstrate use of that mark.
47      In the second place, with regard to the evidence of use filed before the Board of Appeal, the latter found, as a preliminary point, in paragraphs 23 to 28 of the contested decision, that it could take into consideration ‘additional’ evidence in so far as it strengthened and clarified the evidence already filed before the Cancellation Division.
48      Next, the Board of Appeal pointed out that, in the sworn declaration, Mr H. had explained that products were either branded or co-branded with the mark at issue. The Board of Appeal considered that the photographs and screenshots from the intervener’s online shop showed that that sign was printed directly on some of the items of clothing and shoes. It found that the invoices issued by the suppliers in relation to the period from 2008 to 2013 contained further indications that ‘significant’ amounts of clothing and shoes were purchased from suppliers during the relevant period.
49      It must be pointed out, first of all, that the Board of Appeal acted correctly in setting the relevant period for which genuine use had to be shown as the period from 1 August 2008 to 31 July 2013 (see paragraph 42 above). Moreover, the parties do not challenge that finding.
50      Next, as EUIPO submits and as the applicant acknowledged in its observations submitted during the administrative procedure before EUIPO, it must be found that it follows from the evidence adduced that the intervener was active, even during the relevant period, on the EU market as a ‘concept store’ engaged in the retail sale of luxury products offering, in shops under the trade name L’ECLAIREUR, inter alia items of clothing, shoes and certain other luxury products as well as applied art objects. In that respect, it is necessary to refer, in particular, to Annex E, produced before the Board of Appeal, concerning the ‘Biographie de L’ECLAIREUR’, which refers to the first L’ECLAIREUR gallery, established in 1980 on the Champs-Élysées Avenue in Paris (France), and to the other shops or sales areas subsequently created; to Annex B, produced before the Board of Appeal, which contains photographs and screen captures of clothing and shoes from the intervener’s online shop; to Annex 3, produced before the Cancellation Division, which contains various press clippings from fashion magazines referring to ‘L’ECLAIREUR’; to the evidence stored on the CD and the USB key, submitted as Annex 5 before the Cancellation Division, such as several press articles and photos; to the evidence concerning lists of prices of clothing purchased by ‘L’Éclaireur’ and, lastly, to the various invoices, submitted as Annex 2 before the Cancellation Division or as Annexes C and D before the Board of Appeal, which relate, mainly, to the sale of clothing and shoes. Those invoices concern both sales of those products to customers and purchases from suppliers made, in particular, during the relevant period.
51      It must be noted that, even though the Cancellation Division and the Board of Appeal were unanimous in their conclusion that the evidence adduced showed significant activity, under the mark at issue, for ‘retail services’ in the fashion sector, the Board of Appeal alone considered that that evidence also showed genuine use of that mark for clothing and shoes, as goods in Class 25.
52      In the present case, the applicant’s criticism concerns that latter finding of the Board of Appeal. It is therefore for the Court to assess, in view of the applicant’s assertions summarised in paragraphs 25 and 26 above, whether the contested decision is correct in its conclusion that the mark at issue had also been put to genuine use, during the relevant period, for clothing and shoes as goods in Class 25.
53      On that point, as the Board of Appeal found in paragraph 19 of the contested decision and as EUIPO submits in paragraph 30 of its defence, it is indeed apparent from the evidence submitted by the intervener before EUIPO that, as proprietor of the mark at issue, it collaborated, on several occasions, with various designers and fashion labels. As noted in paragraph 19 of the contested decision, consumers were thus confronted with textile products labelled with specific marks, composed of both the name of the designer and the mark l’Eclaireur. By way of example, these were marks such as Sylvia Toledano chez L’éclaireur, SWM chez l’Eclaireur, RDV chez L’éclaireur, Sarah Weinstock chez L’éclaireur, Rosa Maria chez L’éclaireur, Maria Rudman chez l’Eclaireur, or L’éclaireur by Premiata. Other evidence shows such collaboration in relation to shoes, for example with the architect Z. Hadid. Lastly, some photographs submitted as evidence show that, in several cases, clothing and shoes were even directly produced under the mark L’ECLAIREUR.
54      As regards the collaboration referred to in paragraph 53 above, whether with designers or other artists at the beginning of their career, or with professionals already well known in the field of art and fashion, it can be seen from various items of evidence submitted by the intervener, in particular from the extracts from press articles submitted in Annex 3 and Annex B, that the goods which were the subject of that collaboration were always presented in such a way that the mark at issue was easily identifiable, even in all of the cases in which it was preceded by the name of the specific creator responsible for the product in question, whether as regards clothing, shoes or various clothing accessories and other fashion products. Thus, the mark at issue was indeed used publicly and outwardly, in accordance with the case-law cited in paragraph 31 above, and it allowed a link to be established with the goods in question, whether clothing or shoes, in accordance with the case-law cited in paragraph 35 above.
55      Moreover, it must be emphasised that the advertisements and the other extracts from press articles contain, for the most part, not only photographs of the products in question, referred to by ‘[the name of the designer] chez L’Éclaireur’, but also an indication of the sales price of the product. Accordingly, the applicant is not justified in its submission that the goods in question were not presented, under the mark at issue, for marketing purposes. That element is particularly relevant in the context of the significant number of products thus presented in various advertisements and newspapers. Furthermore, as the Board of Appeal points out, inter alia in paragraph 19 of the contested decision, the prices of the items of clothing and shoes offered under the mark at issue and under the mark [the name of the creator] chez L’Éclaireur are relatively high, which shows that the intervener operated in the fashion-products sector or even in the luxury sector.
56      In that regard, and in order to accord that factual element the significance which it deserves, it must be emphasised that, according to the case-law, the Board of Appeal may take into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 29 et seq.) or facts relating to the normal methods for marketing the goods, which may be equated with facts which are well known (see judgment of 23 September 2009, Phildar v OHIM — Commercial Jacinto Parera (FILDOR), T‑99/06, not published, EU:T:2009:346, paragraph 94 and the case-law cited). That case-law is applicable by analogy in the present case concerning an application for revocation of a mark.
57      Accordingly, the Board of Appeal was correct in stating, in paragraph 19 of the contested decision, that it was necessary to take into consideration the specific characteristics of the relevant market for luxury fashion products, including the fact that ‘it [was] not unlikely that consumers … are used to [collaborations such as those in this case] and may, therefore, be ready to consider both collaborators as the “origin” of the product’. In those circumstances, the Board of Appeal was also entitled to take the view that consumers would also associate the products in question with the intervener, since it was common practice for retailers to offer products produced for them by a third party under their own name. As EUIPO argues before the Court, consumers are aware that the selection of products by the retailer is an assurance of quality. That is a fortiori the position in relation to a ‘concept store’ as in the present case.
58      Although it is indeed true that some particular lines of products were offered in very limited series, such as the shoes designed by the architect Z. Hadid or the T-shirts offered under the mark Enza Costa pour L’ECLAIREUR, this is nevertheless a logical consequence of the concept, common in the fashion sector, of offering consumers a luxury product, which is often novel and exclusive, at a high price. That approach must be taken into consideration, in accordance with the case-law cited in paragraphs 31 and 32 above, from which it follows that account must be taken of all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular in assessing whether its proprietor sought to create a genuine outlet for the goods protected by that mark. In addition, as can be seen from the case-law cited in paragraph 30 above, the rationale for the requirement that the 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 solely to the case where large-scale commercial use has been made of the marks.
59      As regards the reference made by the Board of Appeal, in paragraph 19 of the contested decision, to the intervener’s collaboration with the company Snake & Dagger, which the applicant criticises as being irrelevant, because of (i) the fact that the invoices did not show that the sales of the jeans in question had been made during the relevant period, (ii) the allegedly small volumes of those sales, (iii) the fact that it was not shown that the jeans sold were those which appeared in the photographs submitted as evidence, (iv) the fact that the products were referred to as prototypes and, lastly, (v) the fact that solely the intervener, and not the final consumers, was mentioned on those invoices, and only by its trade name (see paragraph 26 above), the Court finds that the evidence concerning that collaboration is relevant in the present case, particularly when it is examined in the general context of all of the activities carried out by the intervener under the mark at issue. In such a context, the commercial relations between the intervener and the company Snake & Dagger is an additional indication of the genuine use made of the mark at issue.
60      In that respect, first of all, it must be borne in mind that, in accordance with settled case-law, genuine use of a mark must have the purpose of preserving or creating market share for the goods or services protected by the mark, either by actually marketing them or by preparing for their imminent marketing (see, to that effect, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraphs 35 to 42, and order of 27 January 2004, La Mer Technologie, C‑259/02, EU:C:2004:50, paragraphs 19 and 21 and the case-law cited).
61      In the present case, it is apparent from the exchange of emails during the relevant period that the intervener had intended to sell, under the mark l’Eclaireuror under that mark in conjunction with the mark Snake & Dagger, certain types of jeans, which were to be produced by the company Snake & Dagger as ‘prototypes’. It is also clear from that exchange that a delay in production due to certain unforeseen circumstances prevented the company Snake & Dagger from supplying the intervener on the dates initially envisaged. Thus, that exchange, which, moreover, began before the application for revocation was made, must necessarily be understood as preparatory work for the marketing of the jeans, that is to say, as meaning that the intervener had launched its own line of products under the mark at issue.
62      Furthermore, the invoices from the company Snake & Dagger confirm that there was a commercial relationship between that company and the intervener, concerning an admittedly limited quantity of jeans, namely 75 pairs. Although one of the invoices in question, dated 25 September 2013, is later than the relevant period, it shows, when read in conjunction with the emails referred to in paragraph 61 above, that preparations were indeed being made for the imminent marketing of goods under the mark at issue. In addition, contrary to the applicant’s assertions, the photographs of the jeans produced by Snake & Dagger for the intervener, submitted as evidence, are consistent with the commercial relationship between the companies, as it appears from the emails in question. In those circumstances, a connection must be made between the products mentioned in the invoices and the jeans shown in the photographs, bearing the mark l’Eclaireur. Lastly, with regard to the absence of ‘client’ invoices emphasised by the applicant, it must be noted that it is apparent from all of the evidence adduced before EUIPO that the intervener operated as a ‘concept store’, that is to say, as a retailer in the clothing and footwear sector. Consequently, it is reasonable, in view of the evidence mentioned above, to conclude that it purchased the jeans in question in order to resell them to final consumers.
63      As regards the aforementioned quantity of jeans sold by Snake & Dagger to the intervener, the Court finds that it cannot, by itself, be regarded as sufficiently significant in the assessment of whether the mark at issue was put to genuine use. It is, however, necessary to take it into account as an additional factor in relation to the intervener’s use of that mark in the context of a genuine business plan, within the fashion sector, the commercial success of which it is, in accordance with the case-law cited in paragraph 30 above, neither for EUIPO nor for the Court to assess. It follows from that case-law that it is also not appropriate to restrict trade-mark protection to the case where large-scale commercial use has been made of marks.
64      Next, it must be noted that the evidence examined above is supported by the other evidence to which the Board of Appeal referred in the contested decision.
65      Thus, in the first place, it must be noted that the Board of Appeal correctly took the view, in paragraph 20 of the contested decision, that the invoices submitted in Annex 2 before the Cancellation Division suggested that the place of use was, inter alia, the European Union and that the sign L’ECLAIREUR was used during the relevant period. In that regard, it must be emphasised that it is apparent from those invoices, the majority of which are, moreover, drafted in English, that the products sold were items of clothing or shoes.
66      Although it is not indicated on those invoices that the sign L’ECLAIREUR was affixed to those products or that those products were manufactured by the intervener, it is nevertheless the case that the mark at issue was used in the header, as a reference to the company delivering those products. Contrary to the applicant’s assertions, in the circumstances of the present case, it must be held that such a use creates an additional link between the mark at issue and the products mentioned above, in accordance with the case-law cited in paragraph 35 above. Although those documents, even read together with those referred to in paragraph 67 above, do not allow a conclusion to be drawn on whether the intervener purchased, under the mark l’Eclaireur, a significant volume of clothing and shoes that it subsequently sold to consumers, they — at the very least — show sufficiently that its purchases were made in a volume which demonstrates a clear economic purpose, namely genuine activity on the market in question, during the relevant period. That is confirmed by the consideration of the other invoices, submitted by the intervener before the Board of Appeal in Annex D, some of which refer expressly to the purchases of items of clothing and shoes by ‘l’Éclaireur’.
67      In the second place, that evidence is corroborated, as the Board of Appeal pointed out, by the extensive selection of press clippings, attached to Annexes 3 and 4 submitted before the Cancellation Division, which refer to the ‘L’Éclaireur’ shops, and by similar additional items registered on the CD and the USB key which constitute Annex 5 submitted before the Cancellation Division. Those latter items of evidence contain both photographs of numerous ‘L’Éclaireur’ boutiques offering clothing and shoes and other press articles concerning those boutiques. Some screenshots showing the clothing sold via online shops were also submitted before EUIPO, such as that from the site ‘www.FashionUnited.com’ concerning T-shirts sold under the mark Enza Costa pour L’ECLAIREUR and dated 2 August 2013, that is to say, just after the relevant period. Those screenshots are an additional indication of the beginning of the marketing under the mark at issue, which had already been prepared during the relevant period.
68      In the third place, the Board of Appeal correctly referred, in paragraph 27 of the contested decision, to the fact that the photos and screenshots from the online shop ‘L’Éclaireur’, which constitute Annex B, showed that that sign l’ECLAIREUR was printed directly on certain items of clothing and certain shoes. While it is indeed true, as the applicant maintains, that many of those references are undated, it must be pointed out that the invoices, to which the Board of Appeal also refers in that paragraph of the contested decision, submitted in Annex D, with, in addition, email correspondence, show that items of clothing and shoes were purchased by the intervener from various suppliers in the period 2008-2013 and that they were designated by the mark at issue or by that mark used in conjunction with that of the producer, such as the company Premiata. In that respect, it may be seen from, inter alia, the email correspondence between the intervener and that company, dating from the end of July 2013, that a logo Premiata pour l’ECLAIREUR was envisaged with, subsequently, at the end of August 2013, a modification of that logo to l’ECLAIREUR made by PREMIATA. It must be noted that that logo is the same as the logo which is clearly visible on the shoes shown in photographs submitted before EUIPO. Those items, taken together, allow the conclusion that the intervener marketed, or, as regards some of them, was preparing for the imminent marketing of, the products co-branded with the mark at issue.
69      In the fourth place, with regard to the reference made by the Board of Appeal to the evidence in Annex 1, submitted by the intervener before the Cancellation Division, namely various paper bags in different formats, wrapping paper samples, covers, shoeboxes, envelopes, labels, cards and a white ribbon, on which the mark at issue is in all cases affixed or printed, the Court notes that all of those items of evidence, whether in the form of packaging or other promotional items, constitute an additional indication that the mark at issue was put to genuine use in the context of the sale of clothing and shoes.
70      In that respect, it must be noted that it follows from the case-law cited in paragraph 33 above that the overall assessment of whether there is genuine use must take account of all the relevant factors of the particular case and implies some interdependence between the factors taken into account. Thus, the items referred to in paragraph 69 above are relevant, even though they are not the goods at issue.
71      Furthermore, it follows from Rule 22(3) and (4) of Regulation No 2868/95 — which is applicable to revocation proceedings pursuant to Rule 40(5) of that regulation (see paragraph 29 above) — that the proof of use must relate to the place, time, extent and nature of use of the mark and may include, inter alia, packaging and labels.
72      Lastly, in the fifth place, it must be noted that the Board of Appeal acted correctly in pointing out, in paragraph 27 of the contested decision, that the sworn declaration explained that the products were either branded or co-branded under the mark at issue. In that regard, in so far as the applicant’s allegation that the intervener has not demonstrated any commercial purpose in the use of the mark at issue could be understood as also criticising the relevance, the accuracy or the evidential value of that declaration, it must be recalled that, in order to assess the evidential value of a document, it is necessary to verify the likelihood and the accuracy of the information which that document contains. It is necessary to take account of, inter alia, the origin of the document, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears to be sound and reliable (see, to that effect, judgment of 7 October 2015, Atlantic Multipower Germany v OHIM — Nutrichem Diät + Pharma (NOxtreme), T‑186/14, not published, EU:T:2015:754, paragraph 25).
73      In the present case, it follows that the sworn declaration cannot be rejected at the outset merely because it was made by the creator of the intervener or because, since it dates from 30 October 2014, it is later than the relevant period. On the contrary, that declaration contains sound information which is supported by data from other evidence submitted by the intervener, such as extracts from press articles (see, inter alia, paragraphs 54, 55 and 67 above), some of which relate to 2008 (see the article published on 4 February 2008 on the website ‘www.dnrnews.com’), and documents showing actual cooperation with companies which design clothing and footwear, such as the companies Snake & Dagger or Officina Creativa.
74      To that extent, the sworn declaration is a document with credible content making it possible for the numerous items of evidence submitted by the applicant to be placed within a specific context.
75      In view of all of the foregoing, it must be held that the Board of Appeal acted correctly in stating that, while not exhaustive, the evidence adduced by the intervener provided sufficient indications with regard to the duration, the location and the extent of the use of the mark at issue for clothing and shoes in Class 25, and that, accordingly, that use had to be regarded as genuine.
76      The first plea in law must therefore be rejected as unfounded.
The second plea in law, alleging a ‘discordance’ between the contested decision and Part C, Section 6, of the EUIPO Guidelines and infringement of Article 76(1) of Regulation No 207/2009
77      The applicant submits that the contested decision contradicts Part C, Section 6, of the EUIPO Guidelines in several respects relating to the level of proof which must be applied by EUIPO in analysing genuine use of a mark, particularly in that it is not enough to submit evidence which is prima facie convincing, but rather evidence must be adduced which proves effective and sufficient use of the mark. In those circumstances, the applicant contends inter alia that the invoices submitted in the present case by the intervener do not come from a customer and that no additional explanation was provided as regards the clothing to which those invoices relate. According to the applicant, the contested decision also infringes Article 76(1) of Regulation No 207/2009, inasmuch as the Board of Appeal did not confine itself to the facts presented by the intervener, but carried out a new interpretation of those facts. The applicant submits that EUIPO is precluded from making the case for one of the parties, by trying to identify among the documents on file the information that it might regard as supporting proof of use.
78      The applicant also submits, referring to the EUIPO Guidelines, first, that the evidence produced by the intervener was not sufficiently concrete and objective, secondly, that no evidence was given to explain the low sales numbers indicated on the invoices, thirdly, that there was a lack of evidence concerning the turnover and the sales figures, fourthly, that no proof of public and outward use of the mark at issue was adduced and lastly, fifthly, that the evidence of use was not structured.
79      EUIPO and the intervener dispute the applicant’s submissions.
80      First of all, it must be noted that, in accordance with the case-law, the EUIPO Guidelines are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48).
81      Next, as regards the reference made by the applicant to Article 76(1) of Regulation No 207/2009, it must be recalled that, in accordance with that provision, ‘[i]n proceedings before it [EUIPO] shall examine the facts of its own motion’; however, ‘in proceedings relating to relative grounds for refusal of registration, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought’.
82      As EUIPO submits, the applicant’s allegation based on Article 76(1) of Regulation No 207/2009 is unclear. It can only be understood as criticising the Board of Appeal for having allegedly made an interpretation that went ‘beyond’ the facts as they appeared from the evidence.
83      However, the applicant has in no way supported its allegation, apart from invoking the vague nature of the evidence adduced.
84      On that point, the Court notes, first, that, as can be seen from the analysis concerning the applicant’s first plea, the Board of Appeal was right to find that, although the evidence was not exhaustive, it nevertheless allowed confirmation of the fact that the mark at issue had been put to genuine use.
85      Secondly, although it is apparent from the contested decision that the Board of Appeal drew certain inferences from the evidence submitted by the intervener, that approach is in accordance with the case-law cited in paragraphs 32 and 33 above, from which it can be seen that an overall assessment of the facts must be made, taking account of all the relevant factors in the particular case and the interdependence between those factors. Thus, it was indeed for the Board of Appeal to place the evidence within the context of the economic sector in question.
86      As regards the applicant’s other assertions submitted in the context of the second plea in law, these are, in essence, akin to those already rejected in the analysis of the first plea in law.
87      Lastly, as regards the applicant’s criticism of the allegedly ‘disorganised’ presentation of the evidence, suffice it to note that the items of evidence were subdivided according to whether they were invoices, extracts from press articles, printouts of webpages, photographs or other evidence. In addition, the sworn declaration, cited in paragraph 41 above, highlighted that evidence.
88      In view of the foregoing, it is necessary also to reject as unfounded the applicant’s second plea in law and, accordingly, to dismiss the action in its entirety.
Costs
89      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.
90      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.
91      The intervener, moreover, has claimed that the applicant should be ordered to pay the costs, including those incurred before EUIPO. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Cancellation Division. Accordingly, the intervener’s request that the applicant, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before EUIPO can be allowed only in regard to the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal (see, to that effect, judgment of 11 October 2016, Guccio Gucci v EUIPO — Guess? IP Holder (Representation of four interlocking Gs), T‑753/15, not published, EU:T:2016:604, paragraph 56 and the case-law cited).
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Les Éclaires GmbH to pay the costs, including the costs necessarily incurred by L’éclaireur International before the Board of Appeal of the European Union Intellectual Property Office (EUIPO).
Kanninen
Schwarcz
Iliopoulos
Delivered in open court in Luxembourg on 8 May 2017.
E. Coulon
H. Kanninen
Registrar
President
* Language of the case: English.