62023TJ1088_RES
Case T‑1088/23
RTL Group Markenverwaltungs GmbH
v
European Union Intellectual Property Office
Judgment of the General Court (Seventh Chamber) of 7 May 2025
(EU trade mark – Revocation proceedings – EU figurative mark RTL – Lack of genuine use of the mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Submission of facts and evidence for the first time before the Board of Appeal – Article 95(2) of Regulation 2017/1001 – Article 27(4) of Delegated Regulation (EU) 2018/625 – Misuse of rights)
EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Proof of use – Genuine use – Concept – Criteria for assessment – Requirement of solid and objective evidence
(European Parliament and Council Regulation 2017/1001, Arts 18(1) and 58(1)(a))
(see paragraphs 16, 19, 20, 91-93)
EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Proof of use – Partial use – Effect
(European Parliament and Council Regulation 2017/1001, Arts 18(1) and 58(2))
(see paragraphs 17, 18)
EU trade mark – Surrender, revocation and invalidity – Application for revocation – Admissibility – Not subject to there being no misuse of rights or to good faith on the part of the applicant for a declaration of revocation
(European Parliament and Council Regulation 2017/1001, Art. 63(1)(a))
(see paragraphs 27-30)
EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Figurative mark RTL
(European Parliament and Council Regulation 2017/1001, Arts 18(1) and 58(1)(a))
(see paragraphs 35, 55, 82, 83, 95, 101)
EU trade mark – Procedural provisions – Revocation proceedings – Facts and evidence not submitted within the prescribed time limit – Account taken – Discretion of the Board of Appeal
(European Parliament and Council Regulation 2017/1001, Art. 95(2); Commission Regulation 2018/625, Art. 27(4))
(see paragraphs 45-47, 49)
EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Use by a third party with the consent of the trade mark proprietor
(European Parliament and Council Regulation 2017/1001, Art. 18(2))
(see paragraph 62)
EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Proof of use – Genuine use – Concept – Criteria for assessment – Trade mark having a reputation in the European Union – No effect
(European Parliament and Council Regulation 2017/1001, Arts 8(5), 18(1) and 58(1)(a))
(see paragraph 94)
Résumé
In its judgment, the Court alters the decision of the Board of Appeal of the European Union Intellectual Property Office (EUIPO). It provides clarifications on issues relating to the abusive nature of an application for revocation, the exercise by the Board of Appeal of EUIPO of its discretion as regards a refusal to take into account evidence produced for the first time before it other than in the written submissions provided for by Delegated Regulation 2018/625, (
1
) genuine use of a mark in respect of advertising, promotional and marketing services by an undertaking belonging to a group providing, inter alia, services for the broadcasting of advertisements, and the impact of the reputation of a mark on the assessment of whether that mark has been put to genuine use in connection with other goods or services.
Since 2016, RTL Group Markenverwaltungs GmbH, the applicant, has been the proprietor of the figurative EU mark RTL in respect of various goods and services. (
2
) In 2021, Marcella Örtl, the intervener, filed an application for a declaration of revocation (
3
) on the ground that that mark had not been put to genuine use in connection with the goods or services in respect of which it was registered within a continuous period of five years. The Cancellation Division of EUIPO partially upheld the application in respect of some goods and services.
Hearing an appeal brought by the applicant, the Board of Appeal of EUIPO, first, declared the application for revocation admissible and, secondly, partially annulled the Cancellation Division’s decision in so far as that decision had declared the contested mark to be revoked, inter alia, in respect of a subcategory of ‘advertising, marketing and promotional services’, namely the ‘broadcasting of television, radio and electronic media advertising’ services, (
4
) and dismissed the appeal as to the remainder. By its action brought before the General Court, the applicant sought the annulment or, alternatively, the alteration of that decision.
Findings of the Court
In the first place, the Court observes that the grounds for revocation aim to protect the public interest underlying them, which explains why the applicant is not required to demonstrate an interest in bringing proceedings. That analysis is borne out by recital 24 of Regulation 2017/1001 and by the purpose of Article 63(1)(a) of that regulation, which is to allow the broadest possible range of people to challenge an EU trade mark which has not been put to genuine use for a given period of time without requiring them to demonstrate an interest in bringing proceedings. Since an application for revocation may be submitted by ‘any natural or legal person’ for no use or insufficient use of a mark, the question of whether there has been a misuse of rights is not relevant for the purposes of analysing the admissibility of such an application. Likewise, neither the admissibility or validity of an application for revocation are subject to good faith on the part of the applicant for a declaration of revocation since the revocation for non-use of a mark during the five-year period is a legal consequence imposed by Regulation 2017/1001. (
5
)
While the applicant relies, in that regard, on the Sandra Pabst case, (
6
) the Court notes that that case was characterised by exceptional circumstances, which are absent in the present case. Unlike the Sandra Pabst case, the intervener is not a company that had been artificially established for the sole purpose of filing multiple applications for revocation. Furthermore, the applicant has not demonstrated that the application for revocation, in the present case, was doomed to fail and therefore served only to place an undue burden on it or to put pressure on it. On the contrary, the fact that the intervener intended to use a mark which is likely to cause confusion with the contested mark demonstrates the latter’s actual interest in the register of marks being updated in so far as concerns the extent of the monopoly held by the applicant on the contested mark.
Accordingly, the Court rejects the applicant’s submission concerning the inadmissibility of the application for revocation due to the alleged abusive nature of that application.
In the second place, the Court recalls the case-law regarding EUIPO’s discretion for the purposes of taking into account facts and evidence which are submitted or produced late (
7
) and stresses that taking into account such facts and evidence must result from an objective, reasoned exercise of that discretion, which it is for the Court to review.
The Court finds that, in the present case, the applicant produced observations and evidence late, with the result that the Board of Appeal had to exercise its discretion in order to decide whether or not it was appropriate to take them into account when making the decision it was called upon to make. Such an objective, reasoned exercise of that discretion is lacking in the present case, in so far as the Board of Appeal rejected those elements on the sole ground that they had not been produced with one of the written submissions referred to in Delegated Regulation 2018/625, (
8
) without having examined whether the conditions referred to in Article 27(4) of that regulation were satisfied. The examination of the admissibility of the observations and evidence produced for the first time before the Board of Appeal cannot be limited to the facts and evidence produced with the written submissions referred to in Delegated Regulation 2018/625 since such a limitation does not follow either from Article 95(2) of Regulation 2017/1001 or from Article 27(4) of Delegated Regulation 2018/625.
Consequently, the Board of Appeal made an error in excluding from its examination the observations and evidence produced late by the applicant without exercising the discretion conferred on it.
In the third place, the Court examines whether the evidence submitted by the applicant, relating to the activities of the companies in the group to which it belongs, demonstrates the use of the contested mark not only in respect of the subcategory of broadcasting of advertising services, as noted by the Board of Appeal, but also beyond that subcategory, in respect of the category of ‘advertising, promotion and marketing’ services as a whole.
First of all, it notes that the applicant demonstrated that the companies in the group to which it belonged had provided advertisers with services relating to the creation and production of advertisements, in particular, television advertisements. Thus, it submitted evidence in relation to services involving a creative contribution from those companies in the design of the advertisements, which were not limited to the mere broadcasting of advertising content created by a third party.
Next, it finds that it follows from the evidence produced by the applicant that the latter offered advertisers its services in the field of advertising strategy development in the media it owns, by offering them the possibility of participating in promotional operations created by the group to which it belongs.
Lastly, it rules that, in view of the evidence produced, the companies in the group to which the applicant belongs provided consultancy services relating to the marketing of television advertising, which fall within the scope of consultancy and specialised support services for undertakings seeking to promote their products and services and develop their advertising strategies.
In those circumstances, the Court finds that the evidence produced by the applicant demonstrates that the group to which it belongs provided, under the contested mark and during the relevant period, third parties with advertising, promotion and marketing services, which were not limited to the broadcasting of advertisements but aimed to actively contribute to the development of an advertising strategy for those third parties. Accordingly, it alters the contested decision by rejecting the application for revocation of the contested mark in respect of the advertising, promotion and marketing services in Class 35.
In the last place, the Court states that the very wording and purpose of Article 58(1)(a) of Regulation 2017/1001 make preservation of the rights connected with an EU trade mark conditional on the mark being actually used. It would not be justifiable if a mark which is not used were to obstruct competition and restrict the free movement of goods and the freedom to provide services. Furthermore, the EU Courts have held that the provisions relating to the extended protection conferred on an EU trade mark that has a reputation in the European Union pursue a different objective from those which require proof of genuine use, with the result that those two types of provisions must therefore be interpreted independently. Therefore, assuming that the contested mark in the present case has a reputation in the media sector, that fact alone does not demonstrate that that mark has been put to genuine use in respect of the goods and services in question. Furthermore, neither the unitary character of the EU trade mark nor recital 7 of Delegated Regulation 2018/625, which concerns only procedural rules, can be usefully relied on by the applicant for the purpose of interpreting the substantive provisions of Regulation 2017/1001.
(
1
)	Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).
(
2
)	The goods and services were in Classes 3, 6, 8, 9, 12, 14, 16, 18, 20, 21, 24, 25, 28, 30, 32, 33, 35, 38, 41, 42, 43 and 45 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.
(
3
)	On the basis of 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).
(
4
)	The other goods and services in respect of which the Cancellation Division’s decision was annulled were ‘Optical storage discs’ in Class 9 and ‘On-line social networking services; On-line dating services’ in Class 45.
(
5
)	See Article 58(1)(a) and Article 64(2) of Regulation 2017/1001.
(
6
)	The case that gave rise to the decision of the Grand Board of Appeal of 1 February 2020 (Case R 2445/2017-G, ‘the Sandra Pabst case’).
(
7
)	Provided for in Article 95(2) of Regulation 2017/1001 and governed by Article 27(4) of Delegated Regulation 2018/625.
(
8
)	Articles 22, 24 and 26 of Delegated Regulation 2018/625.