JUDGMENT OF THE GENERAL COURT (Third Chamber)
30 November 2022 (*)
(EU trade mark – Revocation proceedings – EU word mark STAYER – Genuine use of the mark – Article 15 and Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 18 and Article 58(1)(a) of Regulation (EU) 2017/1001) – Classification of the goods in respect of which genuine use has been shown)
In Case T‑85/22,
ZAO Korporaciya ‘Masternet’, established in Moscow (Russia), represented by N. Bürglen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Stayer Ibérica, SA, established in Pinto (Spain), represented by P. Creta, A. Lanzarini, B. Costa and M. Lazzarotto, lawyers,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin (Rapporteur), President, G. Steinfatt and D. Kukovec, Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action based on Article 263 TFEU, the applicant, ZAO Korporaciya ‘Masternet’, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 December 2021 (Case R 932/2021-1) (‘the contested decision’).
Background to the dispute
2        On 5 July 2017, the applicant filed an application with EUIPO for revocation of the EU trade mark registered on 2 May 2011 under No 9498395, following an application lodged on 4 November 2010 for the word sign STAYER.
3        The goods covered by the contested mark, against which the application for revocation was directed, were in Class 8 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 corresponded to the following description: ‘Abrading instruments (hand instruments) (discs and wheels)’.
4        The ground relied on in support of the application for revocation was that set out in Article 58(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
5        By decision of 26 March 2021, the Cancellation Division rejected the application for revocation.
6        On 20 May 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7        By the contested decision, the Board of Appeal dismissed the appeal. In particular, it found that the evidence submitted by the intervener, Stayer Ibérica, SA, in order to prove genuine use of the contested mark satisfied the conditions relating to the place and the period of use and that it showed extensive use of the contested mark in a form which did not alter its distinctive character. It also found, contrary to the applicant’s claim, that the goods in respect of which the intervener had adduced genuine proof of use, namely ‘abrading discs and wheels’, did fall within Class 8 and not Class 7, which covers only ‘abrasive machines’. The Board of Appeal therefore upheld the decision of the Cancellation Division and rejected the application for revocation of the contested mark in so far as it covered ‘abrading instruments (hand instruments) (discs and wheels)’ in Class 8.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
9        EUIPO and the intervener claim that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
10      Given the date on which the application for revocation at issue was filed, that is to say 5 July 2017, which is decisive for the purpose of identifying the substantive law applicable, the present dispute is governed by the substantive provisions of 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 2017/1001) (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 2, and of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.
11      Consequently, in the present case, as regards the substantive rules, the references made by the parties, in the arguments raised before the Court, to Article 18 and Article 58(1)(a) of Regulation 2017/1001 must be understood as referring to Article 15 and Article 51(1)(a) of Regulation No 207/2009, which are identical in content.
12      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 15 of Regulation No 207/2009. More specifically, it submits that, contrary to the facts which gave rise to the judgment of 28 May 2020, Korporaciya “Masternet” v EUIPO – Stayer Ibérica (STAYER) (T‑681/18, not published, EU:T:2020:222), the contested mark was not filed in Spanish but in Italian. Thus, the findings of the Court in that judgment are not relevant and the expression ‘strumenti abrasivi manuali (dischi e mole)’ (‘abrading instruments (hand instruments) (discs and wheels)’), which corresponds to the Italian description of the goods covered by the contested mark, should be understood as relating to hand-operated tools. According to the applicant, the intervener has adduced evidence of genuine use of the contested mark only in respect of ‘abrading discs and wheels’, which are accessories for power tools in Class 7, and not in respect of accessories for hand-operated tools in Class 8. In addition, the applicant claims that most of the documents and invoices which the intervener has submitted refer to cutting discs which are not covered by the expression ‘strumenti abrasivi manuali (dischi e mole)’.
13      EUIPO and the intervener dispute the applicant’s arguments.
14      Under Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of an 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 if there are no proper reasons for non-use.
15      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).
16      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgment of 8 July 2004, Sunrider
v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 41).
17      Lastly, under Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 10(3) and (4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), the indications and evidence of use must establish place, time, extent and nature of use of the trade mark and are, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 76(1)(f) of 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 Regulation No 207/2009).
18      It is in the light of the foregoing that the present plea must be examined.
19      It should be noted at the outset that the applicant does not call into question the Board of Appeal’s findings that the evidence submitted by the intervener satisfies the requirements relating to the time, place, extent and nature of use. Only the Board of Appeal’s findings relating to the intervener’s proof of use in relation to the goods concerned are submitted for assessment by the Court in the present dispute.
20      In that regard, account must be taken of the fact that the contested mark covers ‘abrading instruments (hand instruments)’, which terms are immediately followed by the words ‘discs and wheels’ in brackets. The use of those brackets has the effect here of restricting the scope of the protection sought solely to ‘wheels and grinding wheels’ which are included in the category of ‘abrading instruments (hand instruments)’ (see, to that effect, judgment of 4 October 2016, Lidl Stiftung v EUIPO – Horno del Espinar (Castello), T‑549/14, not published, EU:T:2016:594, paragraph 71). The contested mark has been registered in respect of ‘discs and wheels’ as such and not in respect of all or only some types of hand instruments to which those wheels and grinding wheels may be connected.
21      Moreover, it should be noted that the case which gave rise to the judgment of 28 May 2020, STAYER (T‑681/18, not published, EU:T:2020:222), concerned an application for partial revocation of the EU figurative mark STAYER, lodged in Spanish and in English and registered under number 4675881 to the extent that it designated goods identical to those covered in the present case, namely ‘hand held abrasive items (wheels and grinding wheels)’ in Class 8. In that case, the Board of Appeal had also found that the other party to the proceedings before it had adduced evidence of genuine use in respect of ‘wheels and grinding wheels’. The applicant submitted, in essence, that the goods in respect of which the other party to the proceedings had adduced evidence of genuine use were intended to be used with power tools and, accordingly, as such fell within Class 7 and not Class 8. The Court nevertheless rejected the applicant’s arguments on the ground that the Spanish expression ‘instrumentos manuales abrasivos (discos y muelas)’ and the equivalent English expression ‘hand held abrasive items (wheels and grinding wheels)’ should be understood as designating all the ‘hand held abrasive items’ and not ‘items that are operated or controlled by hand, rather than automatically or electronically’. The Court also found, in paragraph 32 of that judgment, that the distinction between ‘wheels and grinding wheels’, according to the type of tools with which they are intended to be used, was not relevant in the case before it, since all those wheels had the same characteristics overall, namely that they are capable of wearing something away by means of rubbing, irrespective of the type of tools in which they may be inserted. Consequently, according to the Court, those goods constituted a sufficiently homogeneous category of goods and a sub-categorisation on the basis of the various types of tools was not necessary in order to assess the proof of use of the contested mark. The Court therefore held, in paragraph 33 of that judgment, that it was irrelevant whether the other party to the proceedings before the Board of Appeal manufactured ‘manual instruments’ which, even if they were both ‘hand held’ and ‘hand operated’, could function automatically or electrically. Lastly, in paragraph 39 of the abovementioned judgment, the Court acknowledged that the ‘wheels and grinding wheels’ in respect of which evidence of genuine use had been furnished did fall within the category of ‘abrading instruments [hand instruments]’, falling within Class 8 and covered by the contested mark in that case.
22      The foregoing findings can be applied to the present case.
23      It is apparent from the documents in the case file that the contested mark was filed in order to cover ‘abrading instruments (discs and wheels)’, falling within Class 8, worded ‘Strumenti abrasivi manuali (dischi e mole)’ in Italian and ‘Abrading instruments (hand instruments) (discs and wheels)’ in English.
24      It should be noted that there are no significant differences between the wording of the description in Spanish and in English of the goods covered by the application for revocation in the case that gave rise to the judgment of 28 May 2020, STAYER (T‑681/18, not published, EU:T:2020:222), and the wording in Italian and in English of the goods covered by the contested mark in the present case. The applicant has not put forward any argument capable of calling those findings into question.
25      Therefore, by analogy with the Court’s findings in the judgment of 28 May 2020, STAYER (T‑681/18, not published, EU:T:2020:222), it must be held that ‘abrading discs and wheels’, in respect of which the intervener has produced evidence of genuine use during the relevant period, do fall within the category of ‘abrading instruments (hand instruments) (discs and wheels)’ in Class 8.
26      Furthermore, the applicant’s argument that the evidence produced by the intervener shows only genuine use for the category of ‘cutting discs’ which, in its view, fall within a separate category from that of ‘abrading discs and wheels’ is unfounded. It should be noted, as observed by EUIPO, that the abrading process encompasses, inter alia, cutting, grinding or polishing. Consequently, even if all the evidence submitted by the intervener does in fact relate to ‘cutting discs’, they also fall within the general category of ‘abrading discs and wheels’.
27      The evidence submitted by the intervener therefore proves genuine use for ‘abrading discs and wheels’ which fall within the category of ‘abrading instruments (hand instruments) (discs and wheels)’ in Class 8.
28      The single plea in law raised by the applicant must accordingly be rejected as unfounded and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on EUIPO’s complaint alleging that Annexes A.2 and A.3 attached to the application are inadmissible as new evidence.
Costs
29      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.
30      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders ZAO Korporaciya ‘Masternet’ to pay the costs.
Schalin
Steinfatt
Kukovec
Delivered in open court in Luxembourg on 30 November 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.