JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
10 October 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark D-TACK — Earlier national word mark TACK — Proof of genuine use of the earlier mark — Use under a different form — Opposition dismissed — Point (a) of the second subparagraph of Article 15(1) and Article 42(2) and (3) of Regulation (EC) No 207/2009 (now point (a) of the second subparagraph of Article 18(1) and Article 47(2) and (3) of Regulation (EU) 2017/1001) — Rule 20(1) of Regulation (EC) No 2868/1995 (now Article 8(1) and (7) of Delegated Regulation (EU) 2018/625))
In Case T‑24/17,
LA Superquimica, SA, established in Barcelona (Spain), represented by A. Canela Giménez, 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 being
D-Tack GmbH, established in Hüttlingen (Germany),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 15 November 2016 (Case R 1983/2015-4), relating to opposition proceedings between LA Superquimica and D-Tack,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik-Bańczyk and C. Mac Eochaidh (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 17 January 2017,
having regard to the response lodged at the Court Registry on 15 March 2017,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 21 December 2010, the predecessor in title of D-Tack GmbH filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p 1)).
2        The mark for which registration was sought is the word sign D‑TACK.
3        The goods and services for which registration was sought are in Classes 1, 17 and 35 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, for each of those classes, to the following description:
–        Class 1: ‘Chemicals used in industry, namely adhesive primers for adhesives and sealants; Adhesives used in industry; Adhesive auxiliaries used in industry; Pressure-sensitive adhesives’;
–        Class 17: ‘Adhesive tapes and bands (other than for medicinal, stationery or household purposes); Caulking material; Sealants; Insulating tape and band; Packing, stopping and insulating materials; Pressure-sensitive adhesive tapes, heat-activated adhesive tapes, other than for medical, stationery or household purposes; Butyl and bitumen tapes for sealing purposes; Aluminium tapes, plastic tapes, other than for medical, stationery or household purposes; Self-adhesive tapes, other than stationery and not for medical or household purposes; Plastic films; Viscose sheets, other than for wrapping; Composite materials, included in class 17, consisting of textiles, foils, adhesive layers and/or foam layers; Mats, film and plates for sealing and/or insulating purposes; Foil tubes; Fibreglass fabrics; Rayon fabrics’;
–        Class 35: ‘Retail services; Distribution wholesale; Retail services via the Internet; Wholesale services via the Internet; Online or catalogue mail order services; All the aforesaid services in relation to chemicals and building articles’.
4        The trade mark application was published in Community Trade Marks Bulletin No 2011/033 of 17 February 2011.
5        On 13 May 2011, the applicant, LA Superquimica, SA, filed a notice of opposition, by fax, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6        The opposition was based on the following earlier rights:
–        the Spanish word mark TACK, registered on 10 January 1973 under number 585323 and renewed until 18 March 2019 for ‘strips, bands and adhesive seals, paper and goods made from paper, cardboard and stationery and adhesive materials (for stationery)’ in Class 16;
–        the Spanish figurative mark reproduced below, filed on 15 November 2002 and registered on 26 May 2003 under number 2515958 for ‘bands, tapes, sheets and adhesive materials for stationery or the household, adhesive plastic sheets for packaging’ in Class 16:
–        the Spanish figurative mark reproduced below, filed on 18 November 2002 and registered on 28 May 2003 under number 2516679 for ‘bands, tapes, sheets and adhesive materials for stationery or the household, adhesive plastic sheets for packaging’ in Class 16:
–        the Spanish figurative mark reproduced below, filed on 23 May 2003 and registered on 24 October 2003 under number 2542249 for ‘rubber, gutta-pecha, gum, asbestos, mica and goods made from these materials not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; adhesive bands and tapes not for medicine, stationery or the household; flexible pipes, not of metal’ in Class 17:
–        the Spanish figurative mark reproduced below, filed on 15 April 2004 and registered on 24 September 2004 under number 2591412 for ‘bands, tapes, sheets and adhesive materials for stationery or the household, adhesive plastic sheets for packaging’ in Class 16 and ‘rubber, gutta-pecha, gum, asbestos, mica and goods made from these materials not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; adhesive bands and tapes not for medicine, stationery or the household; flexible pipes, not of metal’ in Class 17:
–        the Spanish figurative mark reproduced below, filed on 8 September 2005 and registered on 12 April 2006 under number 2668711 for ‘bands, tapes, sheets and adhesive materials for stationery or the household, adhesive plastic sheets for packaging’ in Class 16 and ‘rubber, gutta-pecha, gum, asbestos, mica and goods made from these materials not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; adhesive bands and tapes not for medicine, stationery or the household; flexible pipes, not of metal’ in Class 17:
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).
8        The notice of opposition filed by fax on 13 May 2011 and the confirmatory copy filed on 23 May 2011 contained extracts from the Sitadex database of the Oficina Española de Patentes y Marcas (Spanish Trade Mark Office) indicating that the figurative marks referred to in paragraph 6 above were in colour, but those documents did not contain the representation of those marks. Those representations appeared only on loose sheets of paper without any indication of their origin.
9        On 30 May 2011, EUIPO sent the applicant a communication informing it, inter alia, that the opposition had been found admissible, at least in so far as it was based on the earlier word mark TACK, and that the time limit to substantiate that right and other earlier rights, pursuant to Rule 19 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1) (now Article 7 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), would expire on 30 September 2011. That communication was accompanied by an information sheet informing the applicant that, for earlier registrations of a trade mark (other than an EU trade mark), all the formal and substantive particulars had to be shown, including a representation of the sign as filed or registered, by a registration certificate or any other equivalent document, as a publication not showing the representation of the mark was insufficient. It also indicated that where the mark was more than 10 years old or if the term of protection of the earlier mark had expired at the time the evidence was due, a renewal certificate or equivalent evidence had to be provided, pursuant to Rule 19(1) and (2)(a)(ii) of Regulation No 2868/95 (now Article 7(1) and (2)(a)(ii) of Delegated Regulation 2018/625). Moreover, it indicated that the opposition would be rejected without any examination of its merits if the evidence substantiating the earlier right was not filed within the given time limit, was deemed insufficient or did not comply with the requirements in the regulations, pursuant to Rule 20(1) of Regulation No 2868/95 (now Article 8(1) and (7) of Delegated Regulation 2018/625).
10      On account of a request to extend the cooling-off period and a request for suspension made by the parties, the applicant was eventually invited to submit further facts, evidence and arguments in support of its opposition by 11 September 2014. On 10 September 2014, the applicant submitted its arguments in support of the opposition. It submitted no further evidence to substantiate its earlier rights.
11      On D-TACK’s request, EUIPO invited the applicant to submit proof of use of its earlier marks, with the exception of Spanish trade mark No 2668711 which had been registered for less than five years at the date of publication of the application for the contested mark, in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), for all the goods and services on which the opposition was based.
12      On 16 January 2015, the applicant provided evidence of use of its earlier marks within the time limit set by EUIPO.
13      On 3 August 2015, the Opposition Division rejected the opposition in its entirety on the grounds that proof of the earlier marks, other than the earlier word mark TACK, had not been provided, as no official documents concerning the representation of those marks had been produced, and that the evidence of use of the earlier word mark TACK was insufficient.
14      On 30 September 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
15      At the appeal stage, the applicant produced new extracts from the Sitadex database, in Spanish and with representations of the marks, but without an English translation.
16      By decision of 15 November 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.
17      First, regarding earlier marks Nos 2515958, 2516679, 2542249 and 2591412, referred to in paragraph 6 above, the Board of Appeal noted, in paragraph 28 of the contested decision, that those marks had expired before 11 September 2014. The opposition should therefore have been rejected as unfounded for those four marks, in accordance with Rule 20(1) of Regulation No 2868/95, for want of renewal certificates or equivalent documents proving their renewal. Moreover, in paragraph 29 of the contested decision, the Board of Appeal confirmed the Opposition Division’s conclusion that proof of the existence and scope of protection of earlier marks Nos 2515958, 2516679, 2542249, 2591412 and 2688711, referred to in paragraph 6 above, had not been provided, as a representation of those marks within a document having an official source had not been submitted. It rejected the applicant’s argument that, on the day of the filing of the opposition, the Sitadex database had technical problems.
18      Second, regarding the new extracts from the Sitadex database, with the representations, which were produced before it, the Board of Appeal took the view that it had to exercise its discretion in relation to the taking into consideration of late evidence in arestrictive manner and that the circumstances of the case did not justify the exercise of that discretion in favour of the applicant. In that regard, it dismissed the applicant’s reference to the judgment of 24 October 2014, Grau Ferrer v OHIM — Rubio Ferrer (Bugui va) (T‑543/12, not published, EU:T:2014:911), in support of its production, at the appeal stage, of new extracts from the Sitadex database.
19      Third, regarding the earlier word mark TACK, the only mark accepted by EUIPO for the examination of the opposition, the Board of Appeal noted that the evidence provided did not show use of that mark in the form under which it had been registered or in a form which could be regarded as acceptable under point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001).
Forms of order sought
20      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and those whose oppose the present action to pay the costs.
21      EUIPO contends that the Court should:
–        dismiss the application in its entirety, in the event that the form in which the earlier mark was used on the packaging, in the extracts from Internet sites and in the brochures and catalogues does not allow the relevant public to perceive it individually as a mark;
–        order the applicant to pay the costs incurred by EUIPO;
–        in the alternative, annul the contested decision;
–        order EUIPO to bear only its own costs.
Law
22      In support of its action, the applicant raises two pleas, the first alleging infringement of the rules on the substantiation of the registrations of the earlier marks referred to in paragraph 6 above other than the earlier word mark TACK, the second alleging infringement of the rules on proof of use of the earlier word mark TACK.
The first plea, alleging infringement of the rules on the substantiation of the registrations of the earlier marks other than the earlier word mark TACK
23      The applicant claims, in essence, that the Board of Appeal should have taken into consideration all the earlier figurative marks relied on in support of the opposition since it cannot be criticised for not having provided evidence as to the existence of those marks given that the Sitadex database was not accessible within the period prescribed by EUIPO for producing that evidence.
24      EUIPO disputes those arguments and the admissibility of the present plea.
25      Article 76 of Regulation No 207/2009 (now Article 95 of Regulation 2017/1001) concerns the ‘Examination of the facts by the Office of its own motion’ and provides, in paragraph 2, that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.
26      According to the case-law of the Court of Justice, Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001) grants the Board of Appeal, when presented with facts and evidence which are submitted late, a discretion as to whether or not to take account of such information when making the decision which it is called upon to give (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 68).
27      In that regard, it should be pointed out that the Board of Appeal set out, in paragraphs 40 to 48 of the contested decision, the reasons justifying the exercise of its discretion in the negative. Thus, first, the Board of Appeal highlighted the legitimate interest of D-Tack, whose behaviour in no way influenced the belated filing of the extracts from the Sitadex database. Second, the Board of Appeal noted that the evidence of the existence, validity and scope of protection of the earlier marks which had to be submitted was set out precisely and exhaustively in Rule 19(2)(a)(ii) of Regulation No 2868/95 and that the applicant was therefore deemed to have been aware, even before filing its opposition, of the precise documents it had to produce in support of it. Third, the Board of Appeal recalled that the communication of EUIPO of 30 May 2011 sent to the applicant underlined the necessity of providing evidence of the renewal of the earlier marks and of the representation of those marks from an official source. Fourth, the Board of Appeal considered that the technical problems with the Sitadex database cited were not a proper justification. First, they were not relevant as regards the absence of evidence of the renewal of the earlier marks. Second, so far as concerns the representations of the marks from an official source, the applicant should have considered the other options available to it, inter alia, a copy of the relevant page of the Boletín Oficial de laPropiedad Industrial (Spanish Official Intellectual Property Gazette) or a copy of the relevant certificate of registration. Last, the Board of Appeal noted that the documents submitted late were all in Spanish and that, in the absence of a translation into the language of the proceedings, pursuant to Rule 19(4) of Regulation No 2868/95 (now Article 7(5) of Delegated Regulation 2018/625), they would not have been taken into account anyway. For the Board of Appeal, there were thus no circumstances such as to justify the applicant’s delay in the submission of proof required of it.
28      Therefore, the Board of Appeal exercised its discretion and considered, rightly, that the new extracts from the Sitadex database could not be taken into account. The circumstances of the case may thus be distinguished from those in the case that gave rise to the judgment of 24 October 2014, Bugui va (T‑543/12, not published, EU:T:2014:911), and, on appeal, the judgment of 21 July 2016, EUIPO v Grau Ferrer (C‑597/14 P, EU:C:2016:579), in so far as, in that case, the Board of Appeal had not indicated the reason why it had decided not to take into account evidence submitted late, or even that it had discretion to decide whether or not to take such evidence into account.
29      It follows from the foregoing considerations that the first plea must be rejected as unfounded, without it being necessary to examine its admissibility.
The second plea, alleging infringement of the rules on proof of use of the earlier word mark TACK
30      The applicant argues, in essence, that it was wrong for its opposition to be rejected on the ground that it had not shown genuine use of the earlier word mark TACK. It produced many items of evidence on the use of the signs reproduced in the summary table below, including invoices, labels, brochures, a manual, catalogues and extracts from Internet sites:
Registered form                  Actual use
31      The applicant is of the view that, contrary to what EUIPO held, the elements which differ between the signs do not alter the distinctive character of the earlier trade mark TACK. First, it would be perceived as a mark independent of CEYS. Second, the element ‘ceys’ is clearly separate from the word ‘tack’ due to its smaller size and its colour. Last, the case-law acknowledges that several signs may be used simultaneously without altering the distinctive character of the registered sign. Such is the case here, since the addition of the figurative element ‘ceys’ to the mark TACK is merely the addition of the mark of the business or product group (‘house mark’), which is quite common in the stationery and household adhesives sector.
32      EUIPO disputes the applicant’s arguments while leaving open the question of the application by analogy of the case-law on the simultaneous use of two marks or signs, in particular the judgments of 18 April 2013, Colloseum Holding (C‑12/12, EU:C:2013:253); of 18 July 2013, Specsavers International Healthcare and Others (C‑252/12, EU:C:2013:497); and of 6 November 2014, Popp and Zech v OHIM — Müller-Boré & Partner (MB) (T‑463/12, not published, EU:T:2014:935).
33      The applicant is, in essence, implicitly complaining that the Board of Appeal infringed point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation.
34      In that regard, once raised by the applicant for the trade mark, the questionof genuine use of the earlier mark must be settled before a decision is given on the opposition proper (see, to that effect, judgment of 15 September 2015, Nestlé Unternehmungen Deutschland v OHIM — Lotte (Representation of a koala), T‑483/12, not published, EU:T:2015:635, paragraph 26 and the case-law cited).
35      Thus, it was a matter for the applicant, before EUIPO carried out its examination of the likelihood of confusion, to provide proof of genuine use of the earlier word mark TACK, such that, in the absence of that proof, the opposition had to be rejected, in accordance with Article 42(2) and (3) of Regulation No 207/2009.
36      In the case at hand, all the items of evidence furnished by the applicant associate the element ‘tack’ with the element ‘ceys’. Moreover, certain items of evidence involve one or more additional elements, such as ‘bricocinta’, ‘crick’ or ‘cristal’. Those additional elements are never associated with the element ‘tack’in isolation, but with the element ‘tackceys’.
37      First, it should be borne in mind that the question whether a trade mark has been put to genuine use requires that an overall assessment be carried out, taking into account all the relevant factors. Thus each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning (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 31 and the case-law cited).
38      Genuine use of a trade mark cannot be based on probabilities or assumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgment of 15 September 2015, Representation of a koala, T‑483/12, not published, EU:T:2015:635, paragraph 60).
39      Next, it should be noted that a word mark is a mark consisting entirely of letters, words or groups of words, without any specific figurative element. The protection which results from registration of a word mark thus relates to the word mentioned in the application for registration and not the specific figurative or stylistic aspects which that mark might have. As a result, the font in which the word sign might be presented must not be taken into account. It follows that a word mark may be used in any form, in any colour or font type (see judgment of 28 June 2017, Josel v EUIPO — Nationale-Nederlanden Nederland (NN), T‑333/15, not published, EU:T:2017:444, paragraphs 37 and 38 and the case-law cited).
40      According to the case-law, and as the parties note, there is no rule in the EU trade mark system that obliges the opponent to prove the use of the earlier mark on its own, independently of any other mark or sign. Therefore, the case could arise where two or more trade marks are used jointly and autonomously, with or without the name of the manufacturer’s company (see, to that effect, judgments of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraphs 33 and 34; of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 100; and of 6 November 2014, MB, T‑463/12, not published, EU:T:2014:935, paragraph 43). Thus, as contended by EUIPO, joint use of the company name or of a trade mark with the earlier trade mark cannot, in itself, undermine the function of the mark as a means of identifying the services at issue (see, to that effect, judgments of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraph 36, and of 6 November 2014, MB, T‑463/12, not published, EU:T:2014:935, paragraph 43).
41      However, it follows directly from the wording of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 that the use of the trade mark in a form which is different from the form in which it was registered is considered as a use for the purposes of the first subparagraph of that article, to the extent that the distinctive character of the trade mark in the form in which it was registered is not changed (see, to that effect, judgments of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 21; of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraph 30; and of 13 September 2016, hyphen v EUIPO — Skylotec (Representation of polygon), T‑146/15, EU:T:2016:469, paragraph 25).
42      For a trade mark to possess distinctive character for the purposes of Regulation No 207/2009, it must serve to identify the product, in respect of which registration is applied for, as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited; see also, to that effect, judgments of 29 April 2004, Procter & Gamble v OHIM, C‑468/01 P to C‑472/01 P, EU:C:2004:259, paragraph 32; of 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraph 66; and of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 23).
43      The Court of Justice has also held that the condition of genuine use of a trade mark, within the meaning of Article 15(1) of Regulation No 207/2009, may be satisfied where the trade mark is used only through another composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark, provided that the trade mark continues to be perceived as indicative of the origin of the product at issue (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 26 and the case-law cited).
44      Furthermore, it is apparent from paragraph 57 of the judgment of 13 September 2016, Representation of a polygon (T‑146/15, EU:T:2016:469), that, where several signs are used simultaneously, steps must be taken to ensure that, for the purposes of the application of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, such use does not alter the distinctive character of the registered sign, having regard inter alia to business practices in the relevant sector.
45      As the Board of Appeal observed, in essence, in paragraph 55 of the contested decision, point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 relates to a situation where, inter alia, a national registered trade mark is used in trade in a form slightly different from the form in which registration was effected. The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only ininsignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the registered trade mark may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see, to that effect, judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 27 and the case-law cited).
46      Thus, a finding that the distinctive character of the mark as registered has been altered requires an assessment of the distinctive and dominant character of the added elements based on the intrinsic qualities of each of those elements and the relative position of the various elements within the arrangement of the trade mark (judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraphs 28 and 37).
47      For the purposes of that finding, account must be taken of the intrinsic qualities and, in particular, the greater or lesser degree of distinctive character of the earlier mark used solely as part of a complex trade mark or jointly with another mark. The weaker the distinctive character, the easier it will be to alter it by adding a component that is itself distinctive, and the more the mark will lose its ability to be perceived as an indication of the origin of the product it designates. The reverse is also true (judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 29).
48      In addition, it must be remembered that, in order for point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 to apply, the additions to the registered mark must not alter the distinctive character of the mark in the form in which it was registered, in particular because of their ancillary position in the sign and their weak distinctive character (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 31 and the case-law cited).
49      Last, it is apparent also from the case-law that the fact that the registered mark is used sometimes with and at times without additional elements is one of the criteria on which to base a finding that there has been no alteration of the distinctive character (see, to that effect, judgment of 7 September 2016, Victor International v EUIPO — Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 42 and the case-law cited).
50      It is in the light of the considerations recalled above that it must be determined whether the Board of Appeal was correct in finding, in paragraph 62 of the contested decision, that the applicant had not proved that the earlier word mark TACK had been put to genuine use, either in the form registered or in any other form that constituted an acceptable difference in accordance with point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, and, accordingly, in dismissing the action before it.
51      In the first place, it is appropriate to note — and it is not disputed — that the relevant public in the case at hand is the Spanish public.
52      In the second place, it should be considered that, in view of the goods at issue, the words ‘tack’ and ‘ceys’ have at least an average distinctive character.
53      In the third place, it is appropriate to distinguish, among the items of evidence produced by the applicant relating to the use of the earlier word mark TACK, the invoices and text of the brochures and catalogues, on the one hand, from the packaging, extracts from Internet sites and images contained in the brochures and catalogues, on the other hand.
Use of the earlier word mark TACK on the invoices and in the text of the brochures and catalogues
54      The Board of Appeal correctly concluded, in paragraph 56 of the contested decision, that the invoices did not contain any indication of the earlier word mark TACK as such; that reference was made instead to product names; that the juxtaposition of the element ‘ceys’ could not be seen as an irrelevant or negligible addition to the element ‘tack’ and that, on the invoices and in the brochures and catalogues, the elements ‘tack’ and ‘ceys’ appeared together as one single term or as a single word element made up of eight letters.
55      Even though, as EUIPO notes, the form of use of a trade mark on invoices cannot be considered decisive, it must be stated that the element ‘tackceys’ on the invoices, and in the text of the brochures and catalogues, will be perceived as an indivisible unit, the two words being conjoined. Furthermore, the applicant advances no specific argument regarding the representation of the earlier word mark TACK on the invoices or in the text of the brochures and catalogues. Its arguments that the element ‘ceys’ is clearly separate from the term ‘tack’ due to its smaller size and its colour are not relevant in relation to those items of evidence and according to the case-law cited in paragraph 39 above.
56      It follows that the Board of Appeal’s conclusion that the use of the word ‘tackceys’ in the invoices and in the text of the brochures and catalogues alters the distinctive character of the earlier word mark TACK and cannot be regarded as an acceptable variation of the use must be approved.
Use of the earlier word mark TACK on the packaging, on the extracts from Internet sites and in the images contained in the brochures and catalogues
57      First of all, it must be pointed out, regarding the packaging, the extracts from Internet sites, the brochures and the catalogues, that the word ‘tack’ systematically appears in combination with the word ‘ceys’ and in a figurative manner, and that that combination ‘tackceys’ may, moreover, be associated with other elements, in particular with product names. None of the items of evidence referred to above shows the earlier word mark TACK used in isolation or, at least, away from the element ‘ceys’. The applicant has therefore failed to provide any solid and objective evidence to show effective and sufficient use of that trade mark on the market, within the meaning of the case-law recalled in paragraphs 37 and 38 above. Next, it must be stated that the figurative manner in which the combination ‘tackceys’ is used in the items of evidence put forward in the case alters the distinctive character of the earlier word mark TACK as it is registered.
58      In that regard, it should be highlighted, first of all, as the Board of Appeal noted in paragraph 58 of the contested decision, that the two elements ‘tack’ and ‘ceys’ are systematically juxtaposed and thus always appear conjoined, forming an indivisible unit. Even though the element ‘ceys’ is smaller and represented in a different colour and font type, that added element is still clearly visible and does not occupy a secondary or ancillary position in the overall impression produced by the combination ‘tackceys’.
59      In addition, as the Board of Appeal rightly found in paragraph 57 of the contested decision, the last letter, ‘k’, appears to frame the following part of the sign, namely, the band or arrow pointed towards the term ‘tack’ on which the element ‘ceys’ appears.
60      Last, the finding that the distinctive character of the earlier word mark TACK, as registered, has been altered is supported by the addition of other terms like ‘crick’, ‘cristal’ or ‘bricocinta’, as the Board of Appeal found in paragraph 59 of the contested decision. Those additions introduce extra differentiation factors in relation to the earlier word mark TACK.
61      It follows that the situation in the case at hand is not the same as that in which the form of the sign used in trade differs only in insignificant respects from the form in which that sign was registered. Therefore, the earlier word mark TACK and the combination ‘tackceys’ cannot be regarded as broadly equivalent (see, to that effect, judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 27).
62      Those findings are not called into question by the applicant’s arguments in its application. First, apart from the argument regarding their different colours and sizes, it advances no specific argument to support its claim that the earlier word mark TACK would be perceived as a mark independent of the element ‘ceys’. Even though it is not disputed that the element ‘ceys’ corresponds also to a mark used by the applicant, it must be stated that that element is still clearly visible and does not occupy a secondary position in the overall impression produced by the combination ‘tackceys’. Second, the applicant’s argument that the element ‘ceys’ is merely the addition of the mark of the business or product group in no way invalidates the alteration by that term — as well as by the other additions such as the elements ‘crick’, ‘cristal’ or ‘bricocinta’ — of the distinctive character of the earlier word mark TACK, since it cannot be ruled out that the relevant public will not perceive the element ‘tack’ as an indication of the origin of the goods at issue, in accordance with the case-law cited in paragraph 43 above). In particular, the commercial rationale which, in the applicant’s view, explains the simultaneous use of the elements ‘tack’ and ‘ceys’, namely, the differentiation of its goods, does not call into question the Board of Appeal’s reasoning, based on which it concluded that the applicant had not provided proof of use of the earlier word mark TACK.
63      In those circumstances, the variations in use shown alter the distinctive character of the earlier word mark TACK as it is registered, as the Board of Appeal rightly found.
64      It follows that the Board of Appeal did not infringe point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation, given the alteration of the earlier word mark TACK in the evidence produced by the applicant.
65      It follows from the foregoing that it is necessary to reject the second plea, alleging infringement of the rules on proof of use of the earlier word mark TACK and, accordingly, to dismiss the action in its entirety.
Costs
66      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.
67      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders LA Superquimica, SA to pay the costs.
Gervasoni
Kowalik-Bańczyk
Mac Eochaidh
Delivered in open court in Luxembourg on 10 October 2018.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.