JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
24 January 2024 (*)
(EU trade mark – Revocation proceedings – EU figurative mark ROYAL MILK – Genuine use of the mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Proof of genuine use ‘in respect of some of the goods or services’ – Article 58(2) of Regulation 2017/1001 – Determination of an independent subcategory of goods)
In Case T‑603/22,
Agus sp. z o.o., established in Warsaw (Poland), represented by B. Wojtkowska, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaitė and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Alpen Food Group BV, established in Kaatsheuvel (Netherlands), represented by A. Tsoutsanis, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, P. Zilgalvis (Rapporteur) and E. Tichy-Fisslberger, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 6 July 2023,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Agus sp. z o.o., seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 July 2022 (Case R 2056/2021-4) (‘the contested decision’).
Background to the dispute
2        On 7 October 2011, the applicant filed an application for registration of an EU trade mark with 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)).
3        Registration as a mark was sought for the following figurative sign:
4        The goods in respect of which registration was sought were in, inter alia, Class 29 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: ‘Meat, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; compotes; eggs, milk and milk products with the exception of ice creams and milk desserts; edible oils and fats’.
5        The application for registration was published in Community Trade Marks Bulletin
No 235/2011 of 13 December 2011 and the mark was registered on 17 May 2012 under the number 10321735.
6        On 8 May 2020, the intervener, Alpen Food Group BV, filed an application for revocation of that mark on the basis of Article 58(1)(a) of Regulation 2017/1001.
7        By decision of 8 October 2021, the Cancellation Division upheld the application for revocation in respect of all the goods covered by the registration, since no genuine use of the contested mark in connection with them had been proved, except for ‘milk powder for food purposes’ in Class 29, in respect of which the contested mark remained registered.
8        On 6 December 2021, the applicant filed a notice of appeal with EUIPO, seeking the partial annulment of the Cancellation Division’s decision in so far as its rights in the contested mark had been revoked in respect of the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’ in Class 29, except for ‘milk powder for food purposes’ in that class.
9        By the contested decision, the Board of Appeal dismissed the appeal. In essence, it found that, on account of its characteristics and properties, its form and its storage conditions, ‘milk powder for food purposes’ constituted a sufficiently distinct subcategory of the broader category of goods ‘milk and milk products with the exception of ice creams and milk desserts’. It found that the purpose and intended use of milk powder differed from those of liquid milk and other milk products and met completely different consumer needs.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
12      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay all the costs incurred by the intervener for the purposes of the proceedings before the Board of Appeal and before the Court.
Law
13      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 58(1)(a) and (2) of Regulation 2017/1001. In essence, the applicant submits that the Board of Appeal erred in upholding the Cancellation Division’s decision in so far as its rights in the contested mark had been revoked in respect of the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’. The single plea is divided into two parts, alleging, first, a misinterpretation of the concept of ‘independent subcategory of goods’ and, secondly, an unjustified limitation of its legitimate interest, as the proprietor of the contested mark, in being able to extend its range of goods by using the protection conferred by the registration in respect of the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’.
The first part of the single plea, alleging a misinterpretation of the concept of ‘independent subcategory of goods’
14      First, the applicant submits that the failure to recognise that the contested mark has been used in connection with the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’ constitutes a restriction of its rights which is based on the form of the goods at issue. In that regard, it contends that milk may assume different states of aggregation, without that resulting in a change in the substance of the product concerned and that, therefore, the state of aggregation or the form of the goods at issue is not a sufficient indication to establish a subcategory of goods. It argues that the fact that milk powder is a product which has been transformed by dehydration does not preclude it from being regarded as milk, since the milk which is commonly marketed is always a product which has been processed in factories. Furthermore, it adds that the fact that it is possible to re-create the liquid form of milk from milk powder by simply adding water to it is an essential factor to be taken into consideration for the purposes of assessing whether those two types of milk are similar in nature.
15      In addition, the applicant complains that the Board of Appeal misapplied the criterion of the purpose and intended use of the goods at issue, which led it to determine that there was an independent subcategory of goods in an artificial manner. It submits, in that regard, that milk powder has the same purpose or intended use as liquid milk with regard to consumers, since those two types of milk satisfy similar consumer needs, can be consumed directly or used in the preparation of other dishes and can be intended for the food industry for the manufacture of numerous goods, irrespective of whether they are in powder or liquid form.
16      Furthermore, the applicant claims that a subcategory of goods must cover a group of goods and not a single product. It argues that the subcategory of goods ‘milk powder for food purposes’, which concerns only a single product in a single form, does not therefore make it possible for the Board of Appeal’s assessment to be upheld.
17      Secondly, the applicant submits that the failure to recognise that the contested mark has been used in connection with the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’ constitutes a limitation of the scope of protection of that mark based on an unjustified restriction to a single type of product. In that regard, the applicant takes the view that proof of use of the contested mark in connection with milk powder should have been sufficient to maintain the protection of that mark with regard to the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’, in the light of the fact that the various types of milk and processed forms of milk belong in the intersection of the combined category of goods ‘milk and milk products with the exception of ice creams and milk desserts’.
18      Thirdly, the applicant claims, in essence, that the Board of Appeal erred in introducing a restriction in terms of purpose by adding the words ‘for food purposes’, thereby limiting the scope of protection of the earlier mark to goods in Class 29.
19      Fourthly, the applicant also complains that the Board of Appeal did not relate the goods at issue to each other in the light of their nature and did not take into account the perception of those goods by consumers on the relevant market, for whom milk powder is merely one of a number of forms of milk, which they consume directly after rehydrating it or, alternatively, as a milk additive, for example in coffee, or as a milk ingredient for the preparation of other foods. Furthermore, that applicant claims that the Board of Appeal also failed to take into account the point of view of the professional public, which regards milk processing as constituting a single sector covering the production of a number of types and forms of milk and milk products.
20      EUIPO and the intervener dispute the applicant’s arguments.
21      Article 58(1)(a) of Regulation 2017/1001 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO 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.
22      According to Article 58(2) of Regulation 2017/1001, where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor are to be declared to be revoked in respect of those goods or services only.
23      The ratio legis for the requirement that a mark must have been put to genuine use in order to be protected under EU law is that EUIPO’s register cannot be regarded as a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 20 and the case-law cited).
24      In that regard, it must be borne in mind that 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).
25      As regards the concept of ‘some of the goods or services’ which is referred to in Article 58(2) of Regulation 2017/1001, it must be pointed out that a consumer who wishes to purchase a product or service in a category of goods or services that has been defined particularly precisely and narrowly, but within which it is not possible to make any significant subdivisions, will associate all the goods or services belonging to that category with a mark registered in respect of that category of goods or services, with the result that that trade mark will fulfil its essential function of guaranteeing the origin of those goods or services. Accordingly, it is sufficient to require the proprietor of such a mark to adduce proof of genuine use of his or her trade mark in relation to some of the goods or services in that homogeneous category. On the other hand, with regard to goods or services in a broad category of goods or services, which may be subdivided into several independent subcategories, it is necessary to require the proprietor of a mark registered in respect of that category of goods or services to adduce proof of genuine use of his or her mark for each of those independent subcategories, failing which he or she will be liable to forfeit his or her rights to the trade mark in respect of those independent subcategories for which he or she has not adduced such proof (judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraphs 42 and 43).
26      However, although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the trade mark concerned being stripped of all protection for goods which, although not strictly identical to those in respect of which he or she has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. It must, in that regard, be observed that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘some of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 46, and of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 24).
27      In the present case, the Board of Appeal examined the question of whether the product in connection with which it was common ground that genuine use of the contested mark had been proved, namely ‘milk powder for food purposes’, constituted an independent subcategory of goods in relation to the broader category of ‘milk and milk products with the exception of ice creams and milk desserts’, in respect of which that mark had, inter alia, been registered.
28      In that regard, the Board of Appeal defined ‘milk’ as a nutrient-rich liquid food produced by the mammary glands of various mammals, such as cows or sheep, and as a product for human consumption. Next, it defined ‘milk products’ as being food products made from milk, such as yoghurt, cheese or butter. It then described milk powder as a manufactured dairy product, which was made by evaporating milk to dryness. Furthermore, the Board of Appeal pointed out the various purposes of drying milk, among which was that of extending its shelf life in relation to liquid milk, without the need for refrigeration, and that of reducing its volume in order to simplify its transportation. Lastly, it also noted that milk powder had numerous industrial applications in the manufacture of a wide range of food products.
29      On the basis of the foregoing considerations, the Board of Appeal found that ‘milk powder for food purposes’ was a clear subcategory of the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’. It took the view that that category was sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, such as, for example, yoghurt, cheese, butter and milk powder ‘as such’, the latter being sufficiently distinct to constitute a coherent subcategory. According to the Board of Appeal, the purpose and intended use of ‘milk powder for food purposes’ obviously differed from those of other milk products, ‘which all [had] a clearly different purpose and me[t] completely different consumer needs’.
30      In the present case, it is therefore necessary to examine, in the light of the case-law principles referred to in paragraphs 25 and 26 above, whether the Board of Appeal was justified in finding that milk powder constituted an independent subcategory in relation to the broader category of goods ‘milk and milk products with the exception of ice creams and milk desserts’ and whether the applicant’s arguments are capable of calling into question the merits of the Board of Appeal’s finding.
31      It must be pointed out at the outset that the Board of Appeal carried out the analysis regarding the existence of an independent subcategory of goods in relation to the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’, considered as a whole. Next, it found that it was a very heterogeneous category and that the product ‘milk powder for food purposes’ was capable of being viewed independently in the light of the criterion of the purpose and intended use of the goods or services in question.
32      It is important to bear in mind, in that regard, that, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers employ the criterion of the purpose or intended use of the goods or services in question before making any purchase, that criterion is of fundamental importance in the definition of a subcategory of goods or services (judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 29, and of 16 May 2013, Aleris v OHIM – Carefusion 303 (ALARIS), T‑353/12, not published, EU:T:2013:257, paragraph 22). By contrast, the nature of the goods at issue and their characteristics are not, as such, relevant with regard to the definition of subcategories of goods or services (see, to that effect, judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 31, and of 16 May 2013, ALARIS, T‑353/12, not published, EU:T:2013:257, paragraph 23).
33      However, it cannot be ruled out that, from the point of view of the relevant consumer, some of the characteristics of the goods at issue are of significant importance in directing his or her choice and that they therefore have a bearing on the purpose and intended use of those goods in his or her eyes.
34      In the present case, it must be pointed out, as observed by the Board of Appeal, that milk powder has a much longer shelf life than liquid milk and does not need to be refrigerated. It is also easier to transport on account of its reduced volume. It follows that, since the characteristics of milk powder are so different from those of liquid milk, those goods do not have the same purpose or intended use in the eyes of the relevant consumer.
35      The Board of Appeal’s assessment that milk powder constitutes an independent subcategory of the broader category of goods ‘milk and milk products with the exception of ice creams and milk desserts’ must therefore be upheld.
36      The applicant’s arguments do not call that finding into question.
37      First, as regards the applicant’s arguments that the registration of the contested mark should be maintained, on the one hand, with regard to the category ‘milk’, because milk powder is equivalent to liquid milk from the point of view of purpose and intended use in spite of its different state of aggregation and, on the other hand, with regard to the category ‘milk products’, since milk powder is a product which is processed in a factory, it must be held that those arguments cannot succeed.
38      The applicant proceeds on the basis of an incorrect premiss when it attempts to compare milk powder with certain goods belonging to the general category of goods ‘milk and milk products with the exception of ice creams and milk desserts’, like liquid milk or other milk products, instead of taking that latter category into account as a whole. In so doing, the applicant implicitly acknowledges that the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’ is heterogeneous and capable of being subdivided into a number of independent subcategories. Consequently, it must be held, as the Board of Appeal found, that the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’ is not, in the light of the criterion of the purpose and intended use of the goods or services in question, sufficiently narrow, since it contains rather heterogeneous goods for the purposes of the case-law referred to in paragraphs 25 and 26 above.
39      The category of goods ‘milk and milk products with the exception of ice creams and milk desserts’ brings together goods which, although they are similar in some cases, nevertheless meet very different consumer needs from the point of view of purpose and intended use. Thus, it is sufficient to state that the purposes and intended uses which a consumer intends to give to goods such as, for example, cheese, butter, yoghurt, crème fraiche or the many types of milk which exist on the market can on no account be regarded as being similar or analogous to each other or to those of milk powder.
40      On the contrary, the applicant’s comparison should have related to all of the goods covered by the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’, in order to ascertain whether it was a sufficiently homogeneous category which made it possible to justify the maintenance of the contested mark on the basis of the evidence of use adduced. Accordingly, that claim must be rejected as unfounded.
41      Secondly, as regards the argument that it is not possible to regard milk powder as a subcategory of goods in its own right on the ground that that subcategory concerns only a single product, it must be stated that the subcategory ‘milk powder for food purposes’ is capable of encompassing various types of milk powder, such as that derived from sheep’s milk, goat’s milk or cow’s milk. Moreover, there is nothing to preclude that category from being regarded as being capable of including other milk products, such as those referred to by the applicant, namely whey powder, whey protein concentrate powder, milk protein concentrate powder, buttermilk powder or milk powder blends. Those goods could be sufficiently homogeneous in terms of purpose and intended use, as they could be capable of meeting similar consumer needs, in particular as regards their use as additives in the preparation of other dishes. Consequently, that claim must be rejected.
42      Thirdly, as regards the applicant’s argument that the Board of Appeal was required, when determining whether there was a subcategory of goods, to ascertain the nature of the goods at issue and to take into account the point of view of the average consumer and that of the professional public, it is important to point out at the outset that the nature of the goods at issue and their characteristics are not, in principle, relevant with regard to the definition of subcategories of goods or services. However, the fact remains that, as has been pointed out in paragraph 33 above, in the present case, some of the characteristics which the goods at issue have are closely linked to the purpose and intended use of those goods from the point of view of the relevant consumer. In that regard, it is important to point out that the Board of Appeal took the perception of consumers into account in paragraph 35 of the contested decision and found, correctly, that the purpose and intended use of those goods obviously differed and met completely different consumer needs.
43      Fourthly, as regards the alleged limitation of the scope of protection of the contested mark through the addition of the words ‘for food purposes’, it is sufficient to state, as observed by EUIPO, that the goods at issue are in Class 29, which includes a wide variety of foodstuffs for human consumption. As is apparent from the explanatory notes to the Nice Classification which appear on the portal of the World Intellectual Property Organisation (WIPO), that class expressly excludes dietetic food and substances adapted for medical use and foodstuffs for animals. Although it is true that it is possible to use milk powder for such applications, the fact, however, remains that the applicant registered its goods only in respect of Class 29 and there is no justification for maintaining the contested mark in respect of other categories of goods. Consequently, that claim must be rejected as unfounded.
44      It follows from the foregoing that the first part of the single plea must be rejected.
The second part of the single plea, alleging a limitation of the legitimate interest of the proprietor of the contested mark in being able to extend its range of goods
45      By the second part of the single plea in law, the applicant complains that the Board of Appeal impaired its legitimate interest in being able to extend its range of goods and use the protection conferred by the registration in respect of the category of goods ‘milk and milk products with the exception of ice creams and milk desserts’, in the light of the case-law relating to the concept of ‘some of the goods and services’, which interprets Article 58(2) of Regulation 2017/1001 and which establishes that the proprietor of a trade mark is not required to prove genuine use of his or her mark in connection with all the possible variations of similar goods or services, but merely in connection with goods or services which are sufficiently distinct to constitute coherent categories or subcategories.
46      Furthermore, the applicant submits that, since the provisions governing revocation proceedings constitute a limitation on the rights which the proprietor of the contested mark derives from his or her registration, those provisions cannot be interpreted broadly.
47      EUIPO and the intervener dispute the applicant’s arguments.
48      In the present case, since it has been established that the determination of the subcategory of goods ‘milk powder for food purposes’ in the contested decision does not infringe the provisions of Article 58(1)(a) and (2) of Regulation 2017/1001, it must be pointed out that the revocation of the applicant’s rights in the contested mark constitutes a justified limitation of its rights with regard to categories of goods in connection with which genuine use of that mark has not been proved.
49      Consequently, the second part of the single plea must be rejected and the action must be dismissed in its entirety.
Costs
50      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. Since a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and by the intervener, in accordance with the forms of order sought by them.
51      In that regard, although the intervener has applied for the applicant to be ordered to pay the costs incurred by the intervener for the purposes of the proceedings before the Board of Appeal, it is sufficient to state that, since the present judgment is dismissing the action brought against the contested decision, it is the operative part of that decision which continues to govern the costs incurred in the appeal proceedings before EUIPO (see judgment of 14 July 2021, Cole Haan v EUIPO – Samsøe & Samsøe Holding (Ø), T‑399/20, EU:T:2021:442, paragraph 64 and the case-law cited).
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Agus sp. z o.o. to pay the costs.
Costeira
Zilgalvis
Tichy-Fisslberger
Delivered in open court in Luxembourg on 24 January 2024.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.