JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
5 June 2024 (*)
(EU trade mark – Invalidity proceedings – EU word mark ACOMODEO – Earlier national word mark ACOMODIS – Relative ground for invalidity – No likelihood of confusion – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001) – Genuine use of the earlier mark – Article 57(2) of Regulation No 207/2009 (now Article 64(2) of Regulation 2017/1001))
In Case T‑365/23,
Habitat Barcelona Unión Constructora SL,
established in Barcelona (Spain), represented by R. Guerras Mazón, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO),
represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Acomodeo Marketplace GmbH, established in Frankfurt am Main (Germany), represented by S. Fröhlich, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, P. Zilgalvis (Rapporteur) and E. Tichy‑Fisslberger, Judges,
Registrar: V. Di Bucci,
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 under Article 263 TFEU, the applicant, Habitat Barcelona Unión Constructora SL, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 March 2023 (Case R 713/2022-4) (‘the contested decision’).
I.      Background to the dispute
2        On 24 July 2020, the predecessor in law to the applicant, Holadays Barcelona SL, filed an application for a declaration of invalidity with EUIPO in respect of the EU word mark ACOMODEO, registered on 16 March 2020 under the number 15 523 863 following an application filed on 8 June 2016 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        The services covered by the mark at issue were in, inter alia, Classes 35, 38 and 42 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, for each of those classes, to the following description:
–        Class 35: ‘Arranging of contracts, for others, for the providing of services, in particular providing of temporary accommodation; Compilation of information into computer databases; Data search in computer files for others; Computerised file management; Price comparison rating of accommodations; Advertising and promotion services and related consulting; Compilation of custom or non-custom advertising for businesses for dissemination via the internet; Dissemination of advertising for others via an on-line communications network on the internet; Compilation of advertisements for use as web pages on the Internet; Online advertising services for others; Web indexing for commercial or advertising purposes; Business management consulting; Business consultancy and advisory services, Business management, Computerised file management’;
–        Class 38: ‘Access to content, websites and portals; Providing access to information relating to global accommodation options, in particular apartment reservations on the internet; Providing access to databases relating to global accommodation reservations on computer networks; Telecommunication services provided via Internet platforms and portals, in particular for reservation of temporary accommodation for others’;
–        Class 42: ‘Design and development of computer hardware and software; Application service provider services; Computer services for the analysis of data; Provision of search engines for the Internet; Providing search engines for obtaining data via communications networks; Providing of search engines for accommodation via the internet’.
4        The application for a declaration of invalidity was made in respect of all the services referred to in paragraph 3 above and was based on, inter alia, the earlier Spanish word mark ACOMODIS, registered on 6 September 2010 under the number 2 926 070 and covers, inter alia, services in Classes 36 and 43 corresponding, in respect of each of those classes, to the following description:
–        Class 36: ‘Apartment house management; Accommodation bureau services [apartments]; Estate agency; Rental of apartments; Rental of real estate; Brokerage; Real estate appraisal; Issuing of travellers cheques; Rent collection; Insurance services’;
–        Class 43: ‘Accommodation agencies (hotels, hostels, pensions and shelters); Temporary accommodation rental and reservations; Rental of tents; Self service restaurants; Bars and cafeterias; Holiday camp services [lodging]; Holiday camp services (accommodation); Providing campground facilities; Holiday homes; Tourist apartments or any other tourist accommodation; Rental of transportable buildings; Services and reservation of hotels, motels and pensions’.
5        The ground relied on in support of the application for a declaration of invalidity was that set out in Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation.
6        Following a request made by Acomodeo UG, proprietor of the mark at issue and predecessor in law to the intervener, Acomodeo Marketplace GmbH, EUIPO requested that the predecessor in law to the applicant furnish proof of genuine use of the earlier mark.
7        On 2 November 2020, by way of proof of genuine use of the earlier mark, the predecessor in law to the applicant submitted before the Cancellation Division the following evidence:
–        a set of invoices issued by the applicant and sent to clients in Benelux, Denmark, Sweden, Italy, France, Portugal and Greece. Those documents were dated between 11 April 2014 and 6 March 2020;
–        extracts from the website ‘www.airbnb.es’ showing the applicant’s services;
–        two undated extracts in relation to self-catering apartments and activities in Barcelona bearing the figurative sign ‘acomodis Barcelona all the way’ which, according to the applicant, originate from its website.
8        On 25 March 2021, the transfer of the mark at issue to the intervener was registered.
9        On 28 February 2022, the Cancellation Division rejected the application for a declaration of invalidity.
10      On 28 April 2022, the predecessor in law to the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
11      On 30 March 2023, the transfer of the earlier mark to the applicant was published.
12      By the contested decision, the Board of Appeal dismissed the action on the ground, in essence, that, first, the proof adduced by the applicant established genuine use of the earlier mark within the meaning of Article 64(2) of Regulation 2017/1001 solely as regards ‘the services of temporary accommodation rental and reservations; holiday homes; tourist apartments’ and, secondly, those services were different from those in respect of which the mark at issue had been registered, with the result that one of the necessary conditions for the application of Article 8(1)(b) of Regulation 2017/1001 was not satisfied.
II.    Forms of order sought
13      The applicant claims that the Court should:
–        revoke the contested decision and annul the registration of the mark at issue in respect of the services in Classes 35, 38 and 42;
–        order EUIPO and the intervener to pay the costs.
14      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
15      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
III. Law
A.      Interpretation of the applicant’s first head of claim
16      By its first head of claim, the applicant requests the Court to revoke the contested decision and to annul the registration of the mark at issue in respect of the services in Classes 35, 38 and 42.
17      EUIPO contends that, to the extent that that head of claim should be understood as requesting the Court to order the Board of Appeal to revoke the contested decision in accordance with Article 103 of Regulation 2017/1001, it is inadmissible. However, in its response, EUIPO interprets the first head of claim as, necessarily and implicitly, requesting the annulment of the contested decision.
18      In that regard, it must be pointed out that, in accordance with Article 72(3) of Regulation 2017/1001, the Court has jurisdiction only to annul or to alter decisions of the Boards of Appeal. The revocation of a decision taken by EUIPO is provided for by Article 103 of that regulation, which states that the department which took a decision may revoke it within one year of its adoption in the event of an obvious procedural error (judgments of 26 June 2018, Jumbo Africa v EUIPO – ProSiebenSat.1 Licensing (JUMBO), T‑78/17, not published, EU:T:2018:383, paragraph 13, and of 14 July 2021, JT v EUIPO – Carrasco Pirard and Others (QUILAPAYÚN), T‑197/20, not published, EU:T:2021:429, paragraph 22).
19      Although the applicant’s first head of claim is expressly worded as seeking, in particular, the revocation of the contested decision, it is clear from the body of the application that the purpose of the action is to obtain the annulment of that decision. The applicant relies on an alleged infringement of the provisions of Regulation 2017/1001. Consequently, it must be held that, by its first head of claim, the applicant requests, in particular, the annulment of the contested decision.
B.      Scope of the action
20      The intervener contends that the reference made by the applicant, in paragraph 26 of the application, to international registration No 1 061 882 of the word mark ACOMODIS, on which the application for a declaration of invalidity was, inter alia, based, is irrelevant. According to the intervener, that registration is not effected by the present action in so far as the Cancellation Division’s finding concerning that registration’s genuine use has not been disputed before the Board of Appeal and, therefore, has become final.
21      In that respect, it must be noted that the Board of Appeal, given the fact that the applicant has not put forward any arguments as regards the Cancellation Division’s findings concerning the lack of proof of genuine use of the earlier international registration – also relied on in support of the application for a declaration of invalidity – took the view that those findings had become final and did not carry out an assessment of the proof of genuine use as regards that earlier right.
22      It follows from the case-law that the Board of Appeal does not, of its own motion, have to re-examine the question of genuine use of the earlier mark with regard to goods which the parties did not refer to before it in the appeal or the observations in response (judgment of 24 September 2015, Rintisch v OHIM – Compagnie laitière européenne (PROTICURD), T‑382/14, not published, EU:T:2015:686, paragraph 24). It follows that the question of genuine use of the earlier international registration did not form part of the subject matter of the dispute before the Board of Appeal. Pursuant to Article 188 of the Rules of Procedure of the General Court, the pleadings of the parties may not change the subject matter of the proceedings before the Board of Appeal, with the result that the applicant’s line of argument concerning genuine use of the earlier international registration must be regarded as being inadmissible.
C.      Admissibility of certain annexes to the application and of certain arguments put forward by the parties
23      EUIPO and the intervener contend that the documents in Annexes A 10 to A 15 to the application were not lodged in the administrative procedure before EUIPO and, therefore, are inadmissible.
24      Moreover, the intervener maintains that certain arguments, namely those relating to the meaning in Spanish of the expression ‘rents collection’, the legal definitions in Article 1543 of the Spanish Civil Code and the examples of rents paid in a single payment are also inadmissible in so far as they have been adduced for the first time before the Court.
25      In that respect, it must be borne in mind that the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 95 thereof requires that that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
26      Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow such evidence would be contrary to Article 188 of the Rules of Procedure, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine that evidence (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
27      As regards, first, Annexes A 10 to A 14 to the application, they concern contracts concluded by the applicant with tenants and landlords of real estate and extracts from the intervener’s website and from the applicant’s own website. That information was not part of the administrative file before the Board of Appeal, with the result that it is inadmissible, in accordance with the case-law cited in paragraphs 25 and 26 above.
28      In respect of, secondly, Annex A 15 to the application, corresponding to an extract from the website of the Barcelona and Lleida Real Administrators Bar, it should be noted that the applicant relies on that extract to support its argument that the service of arranging of contracts is complementary to the services covered by the earlier mark.
29      In that regard, it follows from the case-law that, under Article 263 TFEU, when read in the light of Article 47 of the Charter of Fundamental Rights of the European Union, an applicant must be able to contest before the EU Courts each and every issue of fact and law on which an EU body bases its decisions (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 46).
30      In the present case, the applicant’s line of argument seeks to dispute the Board of Appeal’s finding that the services of arranging of contracts, for others, for the providing of services and the services in Class 43 covered by the earlier mark were provided by different companies and were aimed at a different public. That finding is part of the factual and legal context of the dispute before the Board of Appeal and, accordingly, the item of evidence produced in Annex A 15 to the application is admissible.
31      The same is true of the arguments put forward in paragraphs 28, 29 and 33 of the application, the admissibility of which is disputed by the intervener, which seek to challenge the Board of Appeal’s findings that rent referred to a regular payment.
32      Lastly, it must be observed that, in paragraph 20 of its response, the intervener disputes the Board of Appeal’s finding that genuine use of the earlier mark has been proved for the services of temporary accommodation rental and reservations, holiday homes and tourist apartments. Likewise, in paragraphs 31 to 34 of its response, it reiterated ‘as a matter of precaution’ its argument put forward before the Board of Appeal that genuine use of that mark has not been proved for any of the services covered by it.
33      Those arguments, in so far as they are to be understood as an independent plea based on Article 173(3) of the Rules of Procedure, are incompatible with the intervener’s form of order and must be rejected since the intervener has not applied for the annulment or alteration of the contested decision under that provision (see judgment of 2 February 2022, Canisius v EUIPO – Beiersdorf (CCLABELLE VIENNA), T‑694/20, not published, EU:T:2022:45, paragraph 58 and the case-law cited).
D.      Determination of the applicable regulation ratione temporis
34      Given the date on which the application for registration of the mark at issue was filed, namely 8 June 2016, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
35      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to Article 8(1)(b), Article 60(1)(a) and Article 64(2) of Regulation 2017/1001 must be understood as referring, respectively, to Article 8(1)(b), Article 53(1)(a) and Article 57(2) of Regulation No 207/2009. 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 and 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).
E.      Substance
36      In support of the action, the applicant relies on two pleas in law, alleging, first, infringement of Article 57(2) of Regulation No 207/2009 and, second, infringement of Article 53(1)(a) of that regulation, read in conjunction with Article 8(1)(b) of that regulation.
1.      The first plea, alleging infringement of Article 57(2) of Regulation No 207/2009
37      In the first pea, the applicant calls into question certain assessments of the Board of Appeal relating to the items of evidence seeking to demonstrate genuine use of the earlier mark. In particular, it disputes the Board of Appeal’s findings that rent collection services referred solely to an amount of money paid regularly. According to the applicant, in Spanish, the verb ‘alquilar’ (to rent) involves no reiteration and/or periodicity connotations. In that respect, the applicant also refers to Article 1543 of the Spanish Civil Code under which there is no obligation to make any regular or periodical payment of rents.
38      Moreover, the applicant submits that, in so far as the issue of the exact meaning of the expression ‘cobro de alquileres’ (rent collection) was raised only by the Board of Appeal, it includes additional items of evidence to dispute the Board of Appeal’s findings on that point.
39      The applicant adds that, in the event that the Court would conclude that the rent collection service would cover only collection of periodical rents in relation to long term leases, (i) some of the apartments referred to in the items of evidence have sometimes been rented for long periods, and (ii) the applicant has collected periodical instalments of rents.
40      To the extent that, according to the applicant, use of the earlier mark has been established in respect of rent collection, that use covers the following services: ‘Accommodation bureau services [real estate]; Rental of apartments; Rental of real estate’, since rent collection indisputably forms part of the relevant duties which involve those services.
41      EUIPO and the intervener dispute the applicant’s arguments.
42      As a preliminary point, it must be borne in mind that, according to Article 57(2) and (3) of Regulation No 207/2009, the proprietor of an EU trade mark may require proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territory in which it is protected in connection with the goods or services in respect of which it is registered and on which the application for a declaration of invalidity is based, provided that on that date the earlier mark had been registered for at least five years.
43      Furthermore, if, at the date on which the EU trade mark application is published, the earlier trade mark is registered for not less than five years, the proprietor of that trade mark is to furnish proof that, in addition, it was put to genuine use in that territory during the five years preceding that publication. In the absence of proof to that effect the application for a declaration of invalidity is to be rejected. If the earlier trade mark has been used in relation only to part of the goods or services for which it is registered, it is, for the purpose of the examination of the application for a declaration of invalidity, to be deemed to be registered in respect only of that part of the goods or services.
44      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. In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 4 April 2019, Hesse and Wedl & Hofmann v EUIPO (TESTA ROSSA), T‑910/16 and T‑911/16, EU:T:2019:221, paragraph 29 and the case-law cited).
45      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 4 April 2019, TESTA ROSSA, T‑910/16 and T‑911/16, EU:T:2019:221, paragraph 30 and the case-law cited).
46      Under Article 10(3) and (4) of Delegated Regulation 2018/625, the indications and evidence of use must establish the place, time, extent and nature of use of the trade mark for the goods or services in respect of which it is registered and the evidence is to be limited 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 97(1)(f) of Regulation 2017/1001.
47      To examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account (see judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 42 and the case-law cited). An accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 66 and the case-law cited).
48      Consequently, it is not necessary for each item of evidence to give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use. 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 judgment of 1 June 2022, Worldwide Machinery v EUIPO – Scaip (SUPERIOR MANUFACTURING), T‑316/21, not published, EU:T:2022:310, paragraph 25 and the case-law cited).
49      However, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 4 April 2019, TESTA ROSSA, T‑910/16 and T‑911/16, EU:T:2019:221, paragraph 31 and the case-law cited).
50      It is in the light of the abovementioned principles that the present plea must be examined.
51      Since the publication of the application for registration of the mark at issue is dated 28 July 2016 and the application for a declaration of invalidity was brought on 24 July 2020, under Article 57(2) and (3) of Regulation No 207/2009, genuine use of the earlier mark in Spain had to be established for the periods from 28 July 2011 to 27 July 2016 and from 24 July 2015 to 23 July 2020. Those two periods overlap, as the Board of Appeal had observed.
52      However, it must be held that, in order to define the first relevant period, the Board of Appeal adopted, pursuant to Article 64(2) of Regulation 2017/1001, the date of filing of the application for registration of the mark at issue, namely 8 June 2016. In so far as that provision constitutes a substantive rule (see judgment of 6 September 2023, Weider Germany v EUIPO – Den i Nosht (YIPPIE!), T‑45/22, not published, EU:T:2023:513, paragraph 13 and the case-law cited), it is not applicable in the present case (see paragraph 34 above). In that respect, it should be added that pursuant to the provision applicable in the present case, namely Article 57(2) of Regulation No 207/2009, the relevant date is the publication of the application for registration of the mark at issue and not the date of filing of that application.
53      However, even though, in the present case, the correct first relevant period in respect of which genuine use of the mark at issue had to be demonstrated began to run on 28 July 2011 and not on 8 June 2011, as the Board of Appeal had found, none of the items of evidence submitted by the applicant dates from the period from 8 June 2011 to 28 July 2011, with the result that, in any event, it is not possible to criticise the Board of Appeal for having taken account of the items of evidence not dating from the relevant period.
54      It follows that the error of law made by the Board of Appeal does not affect the legality of the contested decision and, moreover, is not alleged by the applicant, which, as that Board of Appeal did, also refers to the provisions of Regulation 2017/1001.
55      In that respect, it should be borne in mind that the annulment of an EU act because the wrong legal basis was used is not justified where that error had no decisive effect on the assessment made by the author of that act (judgment of 21 February 2024, Sinopec Chongqing SVW Chemical and Others v Commission, T‑762/20, EU:T:2024:113, paragraph 157 and the case-law cited).
56      As regards the nature of use of the mark at issue, the Board of Appeal took the view that the Cancellation Division had correctly found that the services in respect of which genuine use of the earlier mark has been proved were temporary accommodation rental and reservations, holiday homes and tourist apartments, all of which are in Class 43. According to the Board of Appeal, genuine use had not been proved for the other services covered by the earlier mark.
57      It should be recalled that, as follows from paragraphs 37 to 40 above, the applicant disputes the Board of Appeal’s findings that genuine use of the earlier mark had not been proved for the rent collection services in Class 36. It submits that genuine use of that mark for those services also involves the use for accommodation bureau services, rental of apartments and rental of real estate in the same class.
58      In that respect, the Board of Appeal, in particular, rejected the applicant’s argument that the presence on the items of evidence submitted of the expressions ‘we hereby confirm that we have received the payment made’ and ‘total to be paid upon arrival’ in English showed use of the earlier mark in respect of the rent collection services. According to the Board of Appeal, the confirmation of payments received for the reservation of temporary (holiday) accommodation did not constitute use for the service of rent collection for others. It thus affirmed the position taken by the Cancellation Division that the possible use of that mark in relation to payments linked to the rental of temporary accommodation did not constitute use for rent collection as a service for others.
59      In addition, the Board of Appeal noted, in particular, that those latter services consisted in collecting rent from tenants, or initiating legal proceedings to obtain payment. Accordingly, rent collection is a service provided to landlords, intended to collect rent in an efficient and timely manner, which tenants had to pay regularly, such as rent for the ongoing use of a house or a flat. The items of evidence listed by the applicant in that regard are not only scant but refer exclusively to the rental and reservation of temporary accommodation which do not require regular, repetitive payments.
60      In that respect, it must be noted that the applicant’s line of argument that use of the earlier mark has been proved for rent collection is based on the use, in the correspondence with tenants, of the expressions ‘we hereby confirm that we have received the payment made’ and ‘total to be paid upon arrival’. However, those statements which appear in the email exchanges with tenants cannot constitute sufficient evidence of the provision of independent rent collection services in return for payment by a third party and cannot be regarded as capable of creating an outlet. Tenants cannot be regarded as the recipients of such services. Likewise, the activity of collecting payments is therefore part of temporary rental services in respect of which genuine use of the earlier mark has been proved.
61      As regards the applicant’s claim that it had also apartment owners as clients, it is sufficient to note that that claim is based solely on Annex A 11 to the application which, as follows from paragraph 27 above, is not admissible in the present case.
62      Accordingly, the Board of Appeal was right in finding that genuine use of the earlier mark had not been proved as regards rent collection.
63      In those circumstances, the applicant’s line of argument that the Board of Appeal was wrong to find that rent involved a regular or periodical payment is ineffective. As EUIPO contends, the Board of Appeal put forward a number of reasons why it found that genuine use of the earlier mark in respect of that service had not been proved. As is clear from paragraphs 60 to 62 above, the Board of Appeal was right to find that the applicant had not proved that it had provided rent collection services for others.
64      Likewise, given that genuine use of the earlier mark has not been proved as regards rent collection services, such use is not a fortiori proved for the following services: ‘Accommodation bureau services [real estate]; Rental of apartments; Rental of real estate’. The applicant’s line of argument in respect of those services was confined to the claim that rent collection was part of the ‘relevant duties’ which those services involved.
65      In view of the foregoing considerations, the first plea must be rejected.
2.      The second plea, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation
66      The applicant argues that there is a likelihood of confusion in the present case and disputes the findings of the Board of Appeal that the services in question were different, submitting that the services covered by the mark at issue, in particular, those which refer expressly to accommodation are identical or at least similar to the services covered by the earlier mark.
67      EUIPO and the intervener dispute the applicant’s claims.
68      Under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, on application by the proprietor of an earlier mark, a registered EU trade mark is to be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ is to be understood as meaning trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
69      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgments of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited, and of 21 March 2019, Pan v EUIPO – Entertainment One UK (TOBBIA), T‑777/17, not published, EU:T:2019:180, paragraph 37 and the case-law cited).
70      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
71      It is in the light of those considerations that the Board of Appeal’s assessments concerning the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 must be examined in the present case.
72      Inasmuch as, in its assessments of the existence of a likelihood of confusion, the Board of Appeal is restricted to the comparison of the services in question, it is necessary to begin by examining that part of the contested decision.
(a)    The comparison of the services
73      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
(1)    The services in Class 35
74      The applicant submits that the services of arranging of contracts, for others, for the providing of services, in particular providing of accommodation, whether they are independently remunerated or not, form part of the main duties of accommodation bureaux and estate agencies in respect of which genuine use of the earlier mark is established. According to the applicant, they are not only complementary services, but are also almost indispensable for the provision of accommodation services. The purpose of those services is also the same as for estate agencies, namely putting real estate at the public’s disposal. In order to dispute the Board of Appeal’s findings that the services in question do not have the same purpose and are not complementary, the applicant also refers to the EUIPO Guidelines.
75      As regards the Board of Appeal’s findings that the services in relation to the rental of temporary accommodation are primarily directed at the general public, while arranging contracts for others focuses on professionals, the applicant submits that that interpretation has no basis, since the contracts in question are concluded in the interest of all parties. In addition, the applicant argues that it is the companies providing temporary accommodation rental and reservations which arrange the contracts that will govern such rentals, contrary to what was claimed by the Board of Appeal. Accordingly, the applicant states that it sometimes takes responsibility for the entire management of the apartment and sometimes acts as intermediary between the professional, the owner of the accommodation, and the person making the reservation.
76      Moreover, the applicant states that the purpose of the service of arranging of contracts, for others, for the providing of services, in particular providing of accommodation covered by the mark at issue, is the same as the purpose of the services of temporary accommodation rental and reservations. In addition, the applicant argues that the Board of Appeal acknowledged, in paragraph 69 of the contested decision, that it was necessary to arrange a contract in relation to the provision of temporary accommodation.
77      Concerning the services of price comparison rating of accommodations, the applicant submits that they usually share the same origin, the same distribution channels and the same public as the services provided by accommodation bureaux and estate agencies and the services of rental of apartments. According to the applicant, those services are closely related to accommodation and are addressed at anyone who might be interested in comparing accommodation prices, namely companies and professionals or members of the general public.
78      EUIPO and the intervener dispute the applicant’s arguments.
79      In the present case, the Board of Appeal found that, although it is necessary to arrange a contract in relation to the provision of temporary accommodation, the arrangement of contracts for the provision of services, for others, and the provision of accommodation were provided by different companies and were aimed at a different public. In that respect, the Board of Appeal noted that the services in relation to the rental of temporary accommodation were primarily aimed at the general public, while arranging contracts for others focuses on professionals in order for them to provide services. Likewise, the provider of rental and reservation of temporary (holiday) accommodation usually does not offer the services of arranging of contracts as remunerated services for other undertakings. Moreover, the nature and purpose of those services are different.
80      As regards the services of price comparison rating of accommodations covered by the mark at issue, the Board of Appeal found that those services were required by a company to realise its commercial purpose and ensure its smooth running. According to the Board of Appeal, those services were clearly dissimilar to the services covered by the earlier mark, as neither their purpose nor their nature were similar and they were aimed at different publics.
81      As a preliminary point, it should be noted, as EUIPO and the intervener did, that a significant part of the line of argument relating to the similarity between the services covered by the mark at issue and those covered by the earlier mark is based on the premiss that genuine use of the earlier mark has been proved in respect of the services provided by accommodation bureaux (real estate) and estate agencies, the rental of apartments and the rental of real estate in Class 36. However, that premiss is incorrect, given that, as is clear from paragraph 64 above, genuine use of the earlier mark has not been proved for those services. It follows that the applicant’s arguments based on that incorrect premiss must be rejected.
82      Likewise, as observed by the Board of Appeal, it must be recalled that services intended for different publics cannot be regarded as substitutable, nor, therefore, as in competition with each other. Such services can also not be complementary. Services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the provision of those services lies with the same undertaking (see, to that effect, judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 56 to 58).
83      In that respect, it should be observed, as the Board of Appeal did, that the services of arranging of contracts, for others, for the providing of services, in particular providing of accommodation and price comparison rating of accommodations in Class 35 covered by the mark at issue have a different purpose and nature from the services in respect of which genuine use of the earlier mark has been established. Moreover, the services covered by the mark at issue are directed at professionals, whereas the services covered by the earlier mark are primarily directed at the general public.
84      The fact that a contract is necessary in relation to the provision of temporary accommodation is not decisive in the present case, in particular because a company offering rental of temporary accommodation, which arranges contracts in the course of its own business, does not provide, as such, the service of arranging of contracts, for others, for the providing of services to its rental clients. When those rental clients turn to a company which provides temporary accommodation services, they are not looking for the service of arranging of contracts. Accordingly, while it is not precluded that the services of arranging of contracts are directed not only at professionals, but also at private individuals, the capacity of those private individuals is that of a property owner seeking to put that property up for rental and not the capacity of a client seeking to rent temporary accommodation, with the result that those private individuals will not be led to believe that both those services are offered by the same undertaking.
85      As regards Annex A 15 to the application, which the applicant relies on in support of its line of argument that the arranging of contracts is part of the services offered by real estate managers, it should be noted, as is clear from that item of evidence, that that service is not listed among the services which are usually offered by real estate managers. That evidence confines itself to referring to the ‘[formalisation of] the corresponding contract’, which does not constitute the provision of the service of arranging of contracts for others.
86      Regarding the applicant’s claim that it follows from Annexes A 10 and A 11 to the application that it sometimes took responsibility for the entire management of the apartment and rented the property acting as proxy for the owner, it is sufficient to note that that claim is based, first, on inadmissible annexes (see paragraph 27 above) and, secondly, on the incorrect premiss that genuine use of the earlier mark has been proved for the following services: ‘accommodation bureau (real estate)’ and ‘estate agencies’ (see paragraph 81 above). Consequently, such a line of argument cannot succeed.
87      So far as concerns the services of price comparison rating of accommodations, they are also not directed at the same public as the services covered by the earlier mark in respect of which genuine use has been proved. It must be noted, in particular, that those services are not directed at members of the general public ‘looking for the best offers and deals’, as the applicant claims. That public could possibly be interested in the result of such a service, namely the price comparison of accommodation but will certainly not request that a company carry out a price comparison by awarding ratings. As argued by the Board of Appeal in paragraph 72 of the contested decision, that service is aimed at performing day-to-day operations that are required by a company to realise its commercial purpose and ensure its smooth running.
88      As regards the applicant’s references to the EUIPO Guidelines, it is to be noted that they are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 49).
89      Lastly, since the applicant has not put forward any arguments in order to dispute the Board of Appeal’s assessments concerning the other services in Class 35 covered by the mark at issue, there is no need to call those assessments into question.
90      In those circumstances, in the light of the case-law cited in paragraph 82 above, it must be held that the Board of Appeal did not make an error of assessment in maintaining that the services in Class 35 covered by the mark at issue were different from those covered by the earlier mark in respect of which genuine use has been proved.
(2)    The services in Class 38
91      The applicant submits that the services in Class 38 covered by the mark at issue are complementary to accommodation bureau services (real estate), estate agencies, rental of apartments as well as rental of real estate, temporary accommodation rental and reservations; holiday homes and tourist apartments covered by the earlier mark. According to the applicant, the Board of Appeal overlooked the fact that the telecommunication services covered by the mark at issue expressly referred to access to information relating to global accommodation options, in particular apartment reservations on the internet. Likewise, the applicant disputes the Board of Appeal’s findings that telecommunications were not indispensable for providing temporary accommodation, claiming that nearly all accommodation reservations and related information requests are conducted via telecommunications.
92      Moreover, the applicant refers to the EUIPO Guidelines according to which advisory, consultancy and information services are in principle always similar, or even identical, to the services to which they relate. The applicant submits that it follows that the services of ‘providing access to information relating to global accommodation options, in particular apartment reservations on the internet’ and ‘providing access to databases relating to global accommodation reservations on computer networks’ should be regarded as being very similar to part of the services covered by the earlier mark.
93      EUIPO and the intervener dispute the applicant’s arguments.
94      The Board of Appeal found that the purpose of the telecommunication services covered by the mark at issue and the services in respect of which genuine use of the earlier mark had been proved were different, that they were offered by different entities and that they were not in competition with, or complementary to, each other. It added that the fact that telecommunications played an important role in the process of reservation of temporary accommodation did not mean that the relevant public would be led to believe that the provision of both services lies with the same undertaking.
95      As regards the telecommunication services provided via internet platforms and portals, in particular for reservation of accommodation for others covered by the mark at issue, it must be noted, as the Board of Appeal did, that the relevant public will not be led to believe that the provision of those services and the services covered by the earlier mark in respect of which genuine use has been proved lies with the same undertaking. Those services are provided by telecommunication companies and not by companies offering temporary rental of real estate and may, in actual fact, be directed at the latter. As regards the public targeted by temporary rental services, when that public consults a portal or an internet platform, offering temporary rental of real estate, it will not be led to believe that the temporary rental services and the telecommunication services operating that portal or that platform will lie with the same undertaking. Therefore, in accordance with the case-law cited in paragraph 82 above, those services are different, as the Board of Appeal had correctly found.
96      So far as concerns the services of providing access to information relating to global accommodation options, in particular apartment reservations on the internet and providing access to databases relating to global accommodation reservations on computer networks covered by the mark at issue, it must be recalled that the applicant’s argument concerning their similarity with the services covered by the earlier mark is based on the EUIPO Guidelines. As follows from paragraph 88 above, those guidelines are not binding. Furthermore, the extract from those guidelines, referred to by the applicant, relates to the link between advisory, consultancy and information services on a given service and that service, whereas the services covered by the mark at issue are services of providing access to certain information including technical aspects.
97      Since the applicant has not put forward any arguments in order to dispute the Board of Appeal’s assessments concerning the other services in Class 38 covered by the mark at issue, there is no need to call those assessments into question.
98      It follows that the Board of Appeal did not make an error of assessment in maintaining that the services in Class 38 covered by the mark at issue were different from those in respect of which genuine use has been proved.
(3)    The services in Class 42
99      The applicant submits that the service of provision of search engines for the internet covered by the mark at issue is complementary to the services in Classes 36 and 43 covered by the earlier mark. They also have the same purpose and the same relevant public. It adds that the intervener’s website is not a mere search engine that provides ‘cold’ information on rentals offered by different companies, but serves as a booking site offering the possibility of making reservations.
100    EUIPO and the intervener dispute the applicant’s arguments.
101    The Board of Appeal found that the services in Class 42 covered by the mark at issue were software- and hardware-related services provided by IT companies. It concluded that the purpose of those services was different from that of the services in respect of which genuine use of the earlier mark had been proved, that all of those services were provided by different entities and through different distribution channels and that they were not in competition with, or complementary to, each other.
102    First of all, it must be pointed out that the applicant’s line of argument is based on the premiss that genuine use of the earlier mark has been proved in respect of the services in Classes 36 and 43. As has already been stated in paragraph 81 above, that premiss is incorrect. The only services to take into account for the present assessment are those in respect of which genuine use of the earlier mark has been proved.
103    Next, as regards the similarity between the service of provision of search engines for the internet covered by the mark at issue and the services of the earlier mark in respect of which genuine use has been proved, namely ‘the services of temporary accommodation rental and reservations; holiday homes; tourist apartments’, they are not aimed at the same public and do not have the same purpose, contrary to what the applicant claims. It must be observed, as the Board of Appeal did, that the services covered by the mark at issue are provided by IT companies, which is not the case for the services covered by the earlier mark.
104    Finally, as regards the applicant’s argument that the intervener’s website is not a mere search engine but operates as a booking site and offers the possibility of making reservations, first, it must be recalled that particular marketing strategies for goods or services covered by the marks can vary over time and depend on the wishes of the proprietors of those marks, the prospective assessment of the likelihood of confusion cannot be dependent on marketing intentions, whether implemented or not, which are by their very nature subjective for the proprietors of the marks (judgments of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59, and of 9 September 2008, Honda Motor Europe v OHIM – Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 63). Secondly, the fact remains that an undertaking which offers, on its website, the possibility of reserving temporary accommodation, does not offer the service of provision of search engines for the internet. It is clear that it is the IT company operating the search engine available on that website which offers the service of provision of search engines for the internet.
105    Since the applicant has not put forward any arguments in order to dispute the Board of Appeal’s assessments concerning the other services in Class 42 covered by the mark at issue, there is no need to call those assessments into question.
106    It follows that the Board of Appeal was right in taking the view that the services in Class 42 covered by the mark at issue and the services covered by the earlier mark in respect of which genuine use had been proved were different.
107    In view of the foregoing considerations, the Board of Appeal did not make an error of assessment in finding that the services covered by the marks at issue were different.
(b)    The likelihood of confusion
108    A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
109    The Board of Appeal found that one of the necessary conditions for the application of Article 8(1)(b) of Regulation No 207/2009 was not satisfied, given that the services in question were different.
110    The applicant submits that, in the present case, there is a likelihood of confusion and argues in that regard that the Court is still required to assess the existence of a likelihood of confusion concerning the marks at issue starting from the existence of a high degree of similarity of the signs, accepted by EUIPO and the intervener in earlier opposition proceedings. The applicant claims, in particular, that the relevant public consists of the general public and of professionals.
111    While being aware of the fact that the proceedings at issue are not infringement proceedings, the applicant maintains, however, that, in actual fact, the intervener and the applicant are both competitors in the same line of business, namely the rental of apartments. Likewise, it submits that the intervener registered the mark at issue for services in classes which have no relationship with services in relation to accommodation but has taken advantage of the description of those services to artificially include services in relation to accommodation in that description, thus concealing its actual line of business, namely the intermediation in the renting of temporary accommodation. In that respect, the applicant adds that the Explanatory Note to the list of classes of goods and services in the Nice Agreement expressly excludes real estate management from Class 35 and services provided using telecommunication connections from Class 38.
112    EUIPO has not made any observations on the abovementioned arguments which the intervener disputes.
113    As recalled in paragraph 70 above, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar.
114    In the present case, since the Board of Appeal was right in finding that there was a lack of similarity between the services in question (see paragraph 107 above), it was consequently right in finding, in paragraph 82 of the contested decision, that one of the conditions for the application of Article 8(1)(b) of Regulation No 207/2009 was not satisfied, which made it possible to rule out any likelihood of confusion.
115    As regards the applicant’s claims concerning the actual use and intention of the proprietor of the mark at issue, it must be recalled that pursuant to the case-law cited in paragraph 104 above, the prospective assessment of the likelihood of confusion cannot be dependent on marketing intentions, whether implemented or not, which are by their very nature subjective for the proprietors of the marks, with the result that the use the intervener intends to make of the mark at issue is irrelevant in that context. Although it cannot be ruled out that the applicant’s claims regarding the intervener’s intention may be relevant in invalidity proceedings based on Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001), they have no impact on the legality of the contested decision in the present case.
116    In view of all the foregoing considerations, the plea alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, must be rejected and, accordingly, the action must be dismissed in its entirety.
IV.    Costs
117    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
118    Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter.
119    By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Habitat Barcelona Unión Constructora SL to bear its own costs and to pay those incurred by Acomodeo Marketplace GmbH;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Costeira
Zilgalvis
Tichy-Fisslberger
Delivered in open court in Luxembourg on 5 June 2024.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.