JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
16 October 2024 (*)
( EU trade mark – Revocation proceedings – EU figurative mark FRACTALIA – Genuine use of the trade mark – Article 18(1) and (2) and Article 58(1)(a) and (2) of Regulation (EU) 2017/1001 – Evidence submitted for the first time before the Board of Appeal – Article 27(4) of Delegated Regulation (EU) 2018/625 – Nature of use – Assessment of the evidence – Comparison between the subcategories of services used and the specification of the services covered by the trade mark )
In Case T‑194/23,
Fractal Analytics, Inc., established in New York, New York (United States), represented by J. Güell Serra, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Fractalia Remote Systems, SL, established in Madrid (Spain), represented by L. Jáudenes Sánchez, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, M. Kancheva (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, Fractal Analytics, Inc., seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 January 2023 (Case R 859/2022-2) (‘the contested decision’).
I.      Background to the dispute
2        On 3 February 2004, the intervener, Fractalia Remote Systems, SL, filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1), as amended, itself 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 figurative sign which is represented as follows:
4        The representation of the mark applied for was accompanied by the following description: ‘The trade mark applied for and claimed consists of the name FRACTALIA in a special type of lettering with a dark blue background; in the right upper part appears an undefined design taking as a base a square with a dark grey background with a series of extensions in the form of a 90-degree angle protruding from each side; in the upper right[-]hand part and the lower left[-]hand part of the graphic design appear two smaller squares with a dark blue background.’
5        The mark applied for designated services in Classes 35, 38, 41 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, corresponding, for each of those classes, to the following description:
–        Class 35: ‘Publicity; commercial business management; commercial administration; office work’;
–        Class 38: ‘Telecommunications’;
–        Class 41: ‘Providing of education; providing of training; entertainment; cultural and sporting activities’;
–        Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; computer software design and development; consultancy and legal assistance’.
6        The trade mark application was published in Community Trade Marks Bulletin No 48/2004 of 29 November 2004 and the trade mark was registered on 25 April 2005 under number 3 620 887.
7        On 27 January 2021, the applicant filed an application for revocation of the EU figurative mark FRACTALIA in respect of all the services covered by it. The application for revocation was based on Article 58(1)(a) of Regulation 2017/1001, on the ground of lack of genuine use of that mark for an uninterrupted period of five years, that is to say from 27 January 2016 to 26 January 2021.
8        On 21 April 2021, within the time limit set by the Cancellation Division, the intervener submitted 20 items of evidence of genuine use of the contested mark (‘the documents’), comprising invoices (Documents 1 to 7) and various documents (Documents 8 to 20).
9        On 5 July 2021, in its observations, the applicant argued that that evidence was insufficient to prove use of the contested mark. The Cancellation Division granted the intervener a further period in which to submit its observations. On 13 September 2021, the intervener submitted its observations in response, without producing further evidence.
10      By decision of 18 March 2022, the Cancellation Division upheld the application for revocation in its entirety. On the basis of the 20 documents submitted, which it considered insufficient even when examined together, it concluded that the intervener had not proved genuine use of the contested mark in respect of any of the services for which it was registered and that, in accordance with Article 62(1) of Regulation 2017/1001, revocation took effect from the date of the application for revocation, in this instance on 27 January 2021.
11      On 17 May 2022, the intervener lodged an appeal against the Cancellation Division’s decision.
12      On 15 July 2022, the intervener filed the statement of grounds of appeal, to which 11 additional items of evidence were attached (‘the attachments’), comprising framework contracts signed with various companies, to supplement the invoices provided in Documents 1 to 7 (Attachments 1 to 5), as well as certifications to supplement Documents 11 to 14 (Attachments 6 to 10) and a financial report on the intervener’s accounts (Attachment 11).
13      By the contested decision, the Second Board of Appeal upheld the appeal in part and partially annulled the decision of the Cancellation Division, in so far as the contested mark had been revoked for the services of ‘rental of office machines; commercial administration of the licensing of software of others’ in Class 35, ‘telephone and mobile telephone services; computer communication and internet access; provision and rental of telecommunications facilities and equipment’ in Class 38 and ‘research and development services and design services relating thereto; engineering services and research and design relating thereto; industrial analysis and research services; computer software design and development’ in Class 42 (point 1 of the operative part). Accordingly, it rejected the application for revocation in respect of those categories and subcategories of services in Classes 35, 38 and 42 (point 2 of the operative part). By contrast, it dismissed the appeal as to the remainder of the services covered by that trade mark (point 3 of the operative part), namely the remaining services in Classes 35, 38, 41 and 42.
II.    Forms of order sought
14      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
15      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
16      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
III. Law
17      In support of its action, the applicant relies on three pleas in law, alleging: (i) infringement of the combined provisions of Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1) and Article 58(1)(a) of Regulation 2017/1001, read in conjunction with Article 19(1) of Delegated Regulation 2018/625; (ii) infringement of Article 58(1)(a) of Regulation 2017/1001 on account of the incorrect assessment of the evidence of genuine use; and (iii) infringement of Article 58(1)(a) of Regulation 2017/1001 and Article 10(3) of Delegated Regulation 2018/625 on account of the incorrect assessment concerning services not covered by the contested mark.
A.      Preliminary considerations
1.      Admissibility of the first head of claim in the application
18      EUIPO submits that the application for annulment of the contested decision is inadmissible in respect of the services referred to in point 3 of the operative part of that decision (see paragraph 13 above). In its view, in so far as that paragraph upholds the applicant’s claims in respect of those services, the applicant has no interest in bringing proceedings in that regard.
19      It should be borne in mind that, under Article 72(4) of Regulation 2017/1001, an action before the Court is to be open to any party to proceedings before the Board of Appeal adversely affected by its decision.
20      In the present case, it is apparent from point 3 of the operative part of the contested decision and paragraphs 84 to 86 and 90 thereof that the Board of Appeal partially dismissed the appeal brought before it by the intervener, so far as concerns services other than those referred to in points 1 and 2 of the operative part (see paragraph 13 above). It thus partially upheld the claims of the applicant, which sought dismissal of that appeal. Moreover, the applicant did not put forward any argument relating to those services before the Court.
21      Consequently, the first head of claim in the application must be declared inadmissible in so far as it seeks the annulment of point 3 of the operative part of the contested decision.
2.      The differences between paragraph 89 of the contested decision and point 1 of the operative part of that decision
22      It must be stated, as EUIPO observed, that the contested decision is vitiated by slight differences, which, incidentally, were not noted by the applicant. The wording of the list of services referred to in point 1 of the operative part of that decision is slightly different from the wording of the list of services referred to in paragraph 89 of that decision.
23      In that regard, it should be noted that, whatever the grounds on which a decision is based, only the operative part of that decision is capable of producing legal effects and, consequently, of adversely affecting a person’s interests. By contrast, the assessments made in the grounds for a decision are not in themselves capable of forming the subject of an action for annulment (see judgment of 7 June 2023, Roxtec and Wallmax v EUIPO – Wallmax and Roxtec (Representation of a blue square containing eight concentric black circles), T‑218/22 and T‑219/22, not published, EU:T:2023:317, paragraph 18 and the case-law cited).
24      Moreover, in the present case, the Court finds that the corresponding terms are, in essence, synonymous. For example, the expression ‘rental of office machines’ (point 1 of the operative part) is synonymous with the expression ‘rental of office equipment’ (paragraph 89 of the grounds) and the expression ‘commercial administration of the licensing of software of others’ (point 1 of the operative part) is synonymous with the expression ‘management of software licences for a third party’ (paragraph 89 of the grounds).
25      It follows that those minor differences in terminology do not affect the legality of the contested decision and that it is appropriate to refer, below, to the indications of services as set out in point 1 of the operative part of that decision.
B.      The first plea in law, alleging infringement of the combined provisions of Article 27(4) of Delegated Regulation 2018/625 and Article 58(1)(a) of Regulation 2017/1001, read in conjunction with Article 19(1) of Delegated Regulation 2018/625
26      By the first plea, the applicant claims that the Board of Appeal wrongly took into consideration the evidence submitted by the intervener for the first time in the appeal proceedings. According to the applicant, in the context of an application for revocation for non-use, the proprietor of the contested mark must provide proof of genuine use of that mark within the period laid down by the first-instance body of EUIPO, and the Board of Appeal may accept evidence produced for the first time only exceptionally, where the requirements of Article 27(4) of Delegated Regulation 2018/625 are met.
27      EUIPO and the intervener contest the applicant’s arguments.
28      Under Article 95(2) of Regulation 2017/1001, ‘[EUIPO] may disregard facts or evidence which are not submitted in due time by the parties concerned’.
29      Article 27(4) of Delegated Regulation 2018/625 circumscribes the exercise of the discretion which is provided for in Article 95(2) of Regulation 2017/1001 as regards facts and evidence submitted for the first time before the Board of Appeal. That provision reads as follows:
‘In accordance with Article 95(2) of Regulation [2017/1001], the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:
(a)      they are, on the face of it, likely to be relevant for the outcome of the case; and
(b)      they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’
30      Article 19(1) of Delegated Regulation 2018/625 provides:
‘In the case of an application for revocation based on Article 58(1)(a) of Regulation [2017/1001], [EUIPO] shall invite the proprietor of the EU trade mark to provide proof of genuine use of that mark or of proper reasons for non-use, within such period as it shall specify. Where the proprietor does not provide any evidence of genuine use or of reasons for non-use before the time limit expires or the evidence or reasons provided are manifestly irrelevant or manifestly insufficient, the EU trade mark shall be revoked. Article 10(3), (4), (6) and (7) of this Regulation shall apply mutatis mutandis.’
31      In paragraphs 16 to 22 of the contested decision, the Board of Appeal noted that, in addition to the 20 documents produced before the Cancellation Division, the intervener had produced for the first time before the Board of Appeal 11 attachments as additional items of evidence. The Board of Appeal found that the evidence submitted in the appeal proceedings was primarily intended to demonstrate use of the contested mark for the services in Classes 35, 38 and 42 in respect of which it had been registered and that the requirements for examination referred to in Article 27(4) of Delegated Regulation 2018/625 were met. First, it considered that that evidence was, on the face of it, likely to be relevant for the outcome of the case, within the meaning of that provision, both with respect to the new documents, which consisted mainly of the contracts – and their detailed description – which gave rise to the invoices presented before the Cancellation Division, and with respect to the explanatory documents relating to the certifications and invoices submitted. Secondly, the Board of Appeal considered that that evidence supplemented the documents produced in due time before the Cancellation Division. In its view, the new evidence submitted at the appeal stage (in particular Attachments 1 to 5) was intended to clarify which contracts had given rise to the invoices submitted before the Cancellation Division (in particular Documents 1 to 7, containing invoices for the years 2016 to 2020) and which services had been provided by the intervener under those contracts. That new evidence was relevant in so far as it corroborated and contextualised the invoices relating to the relevant services, providing information on the duration and extent of the use of those same services and supplementing the evidence submitted before the Cancellation Division.
32      The present plea is, in essence, divided into two parts, the first alleging an error of law resulting from the application of the requirements of Article 27(4) of Delegated Regulation 2018/625 and not of stricter rules on revocation, and the second alleging an error of assessment concerning compliance with the requirements laid down by that provision.
1.      The first part of the plea, alleging an error of law resulting from the application of the requirements of Article 27(4) of Delegated Regulation 2018/625 and not of stricter rules on revocation
33      By the first part of its plea, the applicant argues, in essence, that Article 19(1) of Delegated Regulation 2018/625 lays down a special rule, specific to revocation proceedings and stricter than the general rule in Article 27(4) of Delegated Regulation 2018/625, which applies to all proceedings before the Board of Appeal. In its view, revocation proceedings have their own rules as regards the appropriate time for submitting evidence of use and the consequences of failing to do so. In the context of applications for revocation for non-use, Article 19(1) of Delegated Regulation 2018/625 expressly provides that if the evidence produced before the time limit expires is, as in the present case, manifestly insufficient, the trade mark is to be revoked. The applicant therefore submits that, in revocation proceedings, the taking into consideration of additional evidence of use, submitted out of time, must be interpreted more strictly than in other proceedings before EUIPO, for which no specific rule on the consequences of a failure to comply with the time limit is laid down by EU law. In the applicant’s view, the appropriate time for submitting evidence of genuine use was within the two-month period set by the Cancellation Division and, exceptionally, at the time of the second round of observations provided for by the Cancellation Division (that is to say in the observations of 13 September 2021) and not during the appeal.
34      In that regard, it is important to point out, as EUIPO did, that the applicant’s arguments that, in essence, Article 27(4) of Delegated Regulation 2018/625 is not applicable per se or applies only ‘more strictly’ in the context of revocation proceedings for lack of genuine use is devoid of any legal basis and finds no support in the case-law.
35      In the first place, it must be stated that the wording of Article 27(4) of Delegated Regulation 2018/625, concerning the admissibility of evidence submitted out of time before the Board of Appeal, does not provide for any special, that is to say stricter or more stringent, rules applicable to revocation proceedings for lack of genuine use.
36      It is also settled case-law that Article 27(4) of Delegated Regulation 2018/625 circumscribes the exercise of EUIPO’s discretion when examining the admissibility of evidence submitted out of time, as generally provided for by Article 95(2) of Regulation 2017/1001 and Article 63(2) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), in all appeal proceedings before the Boards of Appeal of EUIPO, that is to say in all appeal proceedings relating to EU trade marks, such as revocation proceedings for lack of genuine use (see, to that effect, judgments of 19 January 2022, Masterbuilders, Heiermann, Schmidtmann v EUIPO – Cirillo (POMODORO), T‑76/21, not published, EU:T:2022:16, paragraphs 35 to 47; and of 1 March 2023, Worldwide Brands v EUIPO – Wan (CAMEL), T‑552/21, not published, EU:T:2023:98, paragraphs 36 to 55); opposition proceedings (judgment of 9 February 2022, Calzaturificio Emmegiemme Shoes v EUIPO – Inticom (MAIMAI MADE IN ITALY), T‑589/20, not published, EU:T:2022:59, paragraphs 63 to 67); invalidity proceedings based on relative grounds (judgment of 27 October 2021, Jiruš v EUIPO – Nile Clothing (Racing Syndicate), T‑356/20, not published, EU:T:2021:736, paragraphs 25 to 29); and on absolute grounds (judgment of 4 May 2022, Sturz v EUIPO – Clatronic International (STEAKER), T‑261/21, not published, EU:T:2022:269, paragraphs 85 to 89); as well as invalidity proceedings in respect of registered Community designs (judgment of 30 November 2022, ADS L. Kowalik, B. Włodarczyk v EUIPO – ESSAtech (Accessory for wireless remote controls), T‑611/21, EU:T:2022:739, paragraphs 31 to 36).
37      Consequently, the assessment of the admissibility of evidence submitted for the first time before the Board of Appeal is, in any appeal proceedings, subject to the same legal requirements, namely the two cumulative requirements laid down in Article 27(4)(a) and (b) of Delegated Regulation 2018/625.
38      In the second place, it must be stated that, contrary to what the applicant claims, the second sentence of Article 19(1) of Delegated Regulation 2018/625 in no way calls into question the foregoing considerations and that the applicant’s arguments therefore find no support in law.
39      In that regard, it should be noted that the last sentence of Article 19(1) of Delegated Regulation 2018/625 expressly confers only on the EUIPO division with jurisdiction at first instance the discretion, in accordance with the criteria set out in Article 10(7) of that regulation, to decide whether or not to take into consideration evidence submitted after the expiry of the initial time limit set by that division, pursuant to Article 10(2) of that regulation.
40      Accordingly, the submission of additional items of evidence, albeit out of time, remains in principle possible also in the course of revocation proceedings at first instance, in accordance with Article 19(1) and Article 10(7) of Delegated Regulation 2018/625. Revocation therefore does not take effect automatically upon expiry of the time limit initially set.
41      Thus, although the Court of Justice has held that, when no proof of use of the mark concerned is submitted within the time limit set by EUIPO, the opposition must automatically be rejected by it, it has, however, stated that when evidence is produced within the time limit set by EUIPO, the production of supplementary evidence remains possible (see judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraph 26 and the case-law cited).
42      Similarly, it follows from the case-law of the General Court that it was possible for the proprietor of a contested mark to submit additional evidence outside the time limit set by the EUIPO division adjudicating on the matter at first instance, in so far as that evidence was not the initial and only proof of use, but was evidence additional to relevant proof which was submitted within the time limit (see judgment of 26 July 2023, Apart v EUIPO – S. Tous (Representation of the outline of a bear), T‑638/21, not published, EU:T:2023:434, paragraph 34 and the case-law cited).
43      Moreover, in the present case, it should be noted that the Cancellation Division did not apply the second sentence of Article 19(1) of Delegated Regulation 2018/625. The Cancellation Division considered that the evidence of use submitted by the intervener (namely Documents 1 to 20) was insufficient. Contrary to the interpretation suggested by the applicant, the Cancellation Division in no way indicated that Documents 1 to 20, taken as a whole, did ‘not [constitute] evidence of genuine use’ or that they were ‘manifestly irrelevant’ or ‘manifestly insufficient’ within the meaning of that article.
44      Consequently, and in particular in the absence of a finding that the evidence produced in due time before the Cancellation Division was manifestly insufficient, the Court finds that the second sentence of Article 19(1) of Delegated Regulation 2018/625 in no way limited, by imposing a stricter or more stringent threshold of admissibility, the Board of Appeal’s discretion to decide whether it was necessary to take into account the 11 attachments as admissible evidence, in accordance with the two cumulative requirements laid down in Article 27(4)(a) and (b) of Delegated Regulation 2018/625.
45      The first part of the plea must therefore be rejected as unfounded.
2.      The second part of the plea, alleging an error of assessment concerning compliance with the requirements laid down by Article 27(4) of Delegated Regulation 2018/625
46      By the second part of the plea, the applicant claims, in essence, that the Board of Appeal made an error of assessment in accepting evidence submitted by the intervener for the first time at the appeal stage, because that evidence did not comply with the requirements laid down by Article 27(4) of Delegated Regulation 2018/625. First of all, the intervener neither explained nor justified why it had not submitted that evidence in due time to the Cancellation Division. Those items of evidence should therefore be rejected on the ground that the requirement that they ‘have not been produced in due time for valid reasons’ had not been fulfilled. Next, the applicant argues that the Board of Appeal’s explanation concerning the admission of the new evidence is insufficient, since it refers only to Attachments 1 to 5, consisting of contracts, and does not explain why the rest of that evidence, namely Attachments 6 to 11, is taken into account or in what way it complements the documents previously submitted. Lastly, the Board of Appeal’s interpretation of ‘complementary documents’ is too simplistic and such an interpretation would lead to the conclusion that, in revocation proceedings, all new evidence of use filed before the Board of Appeal must automatically be accepted because it always in some way ‘complements’ the evidence filed previously. That interpretation would be contrary to the Board of Appeal’s jurisdiction to review decisions, but also inconsistent with the consequences of not filing relevant evidence of genuine use before the time limit expires, provided for in Article 19 of Delegated Regulation 2018/625.
47      In that regard, in the first place, it is necessary to clarify and to reject some of the claims put forward by the applicant.
48      First of all, the applicant does not dispute that the intervener had, before the Cancellation Division, produced in due time some evidence of use of the contested mark, namely Documents 1 to 20. On 5 July 2021, when the applicant made its own submissions before the Cancellation Division, it merely argued that Documents 1 to 20 should be considered ‘insufficient’ by the Cancellation Division. Consequently, it is not disputed that the evidence of use produced in due time before the Cancellation Division was capable of being validly supplemented at a later stage by the submission of additional items of evidence (see, to that effect, judgment of 1 March 2023, CAMEL, T‑552/21, not published, EU:T:2023:98, paragraphs 39, 42 and 54 and the case-law cited).
49      Next, the applicant’s claim that the intervener did not explain or justify why it did not submit the 11 attachments in due time before the Cancellation Division is factually incorrect and must be rejected. In its statement of grounds of appeal of 15 July 2022, the intervener explained that it was submitting the 11 attachments as additional evidence which merely supplemented Documents 1 to 20 and refuted the conclusions of the Cancellation Division. That explanation was also duly taken into consideration by the Board of Appeal in paragraph 8 of the contested decision, before the Board of Appeal analysed the requirements for admissibility of those 11 attachments. Accordingly, the intervener duly complied with its obligation to explain the extent to which the submission of the 11 attachments met the requirements laid down in Article 27(4) of Delegated Regulation 2018/625.
50      Lastly, in so far as the applicant’s claim relating to Attachments 1 to 5 could be construed as alleging a failure to state adequate reasons as regards the taking into account of Attachments 6 to 11, that claim also has no factual basis and must be rejected. It is apparent from paragraphs 16 to 22 of the contested decision that the Board of Appeal examined and analysed each of the 11 attachments in the light of the requirements of Article 27(4) of Delegated Regulation 2018/625. The terms used in relation to Attachments 1 to 5, such as ‘mainly’ and ‘in particular’, demonstrate that those references were made solely by way of example and may include the financial report submitted as Attachment 11. Moreover, the Board of Appeal expressly referred to the ‘explanatory documents relating to certifications and invoices submitted in the appeal proceedings’, those certifications, of course, being contained in Attachments 6 to 10. Consequently, the Board of Appeal examined and analysed each of the 11 attachments which it accepted as admissible, albeit late, evidence, and accordingly set out the reasons why that evidence could be taken into account.
51      In the second place, it is necessary to examine whether the cumulative requirements for application set out in Article 27(4)(a) and (b) of Delegated Regulation 2018/625 were complied with in this case.
52      First, the applicant does not contest the Board of Appeal’s assessment, in paragraph 21 of the contested decision, concerning whether the 11 attachments are, on the face of it, relevant for the outcome of this case. Moreover, it should be noted that those contracts and the explanatory documents relating to certifications and invoices were, on the face of it, relevant for the assessment of genuine use of the contested mark. The first requirement of Article 27(4)(a) of Delegated Regulation 2018/625 was therefore satisfied.
53      Secondly, it must be noted, as the Board of Appeal did in paragraphs 21 and 22 of the contested decision, that the 11 attachments, on the one hand, complement, clarify, corroborate, explain, contextualise and supplement Documents 1 to 20 and, on the other hand, are intended to refute the Cancellation Division’s conclusion that Documents 1 to 20 were insufficient. The applicant does not convincingly explain why those two findings of the Board of Appeal, concerning, respectively, the ‘link of complementarity’ and the ‘purpose of refuting’, should be regarded as incorrect. On the one hand, the applicant fails to demonstrate why it is necessary to find that there is no ‘link of complementarity’ between the 11 attachments and Documents 1 to 20, for the purposes of the case-law according to which supplementary evidence is characterised by a link with other evidence previously submitted in due time which it supplements (judgment of 19 January 2022, POMODORO, T‑76/21, not published, EU:T:2022:16, paragraph 40). On the other hand, although the ground for challenging a conclusion of the Cancellation Division such as that relating to the insufficient nature of the evidence of use is also a ground which is recognised in the case-law (see, to that effect, judgment of 1 March 2023, CAMEL, T‑552/21, not published, EU:T:2023:98, paragraph 42), the applicant also fails to demonstrate why those attachments are incapable of refuting such a conclusion as to the insufficient nature of those documents. It is therefore necessary to point out that each of those grounds in itself constitutes an autonomous ‘valid ground’ for allowing the examination of the 11 attachments in the appeal proceedings. The second requirement of Article 27(4)(b) of Delegated Regulation 2018/625 was therefore fulfilled.
54      The Court finds that the Board of Appeal duly considered the two cumulative requirements for application set out in Article 27(4) of Delegated Regulation 2018/625 and that it did not make any error of assessment in agreeing to take into account the evidence submitted for the first time before it by the intervener, namely the 11 attachments.
55      The second part of the plea must therefore be rejected as unfounded.
56      In the light of the foregoing, the Board of Appeal did not make any error of law or of assessment in the application of Article 27(4) of Delegated Regulation 2018/625 and, consequently, correctly exercised the discretion conferred on it by Article 95(2) of Regulation 2017/1001.
57      The first plea must therefore be rejected in its entirety.
C.      The second and third pleas in law, alleging infringement of Article 58(1)(a) of Regulation 2017/1001 and Article 10(3) of Delegated Regulation 2018/625
58      By the second plea, alleging infringement of Article 58(1)(a) of Regulation 2017/1001, the applicant complains that the Board of Appeal erred in its assessment of the evidence of genuine use of the contested mark. According to the applicant, neither the documents submitted before the Cancellation Division nor the attachments submitted before the Board of Appeal prove genuine use in respect of the services covered by that trade mark. Thus, several items of evidence were dated outside the relevant period, or were imprecise as to the intervener’s actual role and activity, or referred to different companies (such as FRACTALIA IT Systems España, SL or FRACTALIA Hotel Systems, SL) or demonstrated limited use for services not covered by that trade mark.
59      According to the applicant, the evidence suggests that the contested mark has been mainly used for support and maintenance services in the IT field, but that that mark does not cover those services, with the result that the Board of Appeal made an error of assessment. The only document which shows use, in a future project, in connection with software design and development services and consultancy in that field is Document 12, but that document is not sufficient to prove genuine use in respect of those services in the relevant period. As regards the other services covered by that mark, the evidence on file either does not prove any use at all for those services or does not adequately prove the extent of use in the relevant period. The same conclusion can be drawn even taking into account the additional documents submitted at the appeal stage.
60      The applicant concludes, as the Cancellation Division did, that the evidence shows use exclusively in connection with support and maintenance services in the IT field but maintains, contrary to the Board of Appeal, that those services are not covered by the contested mark. In the applicant’s view, no genuine use has been proved for the services covered by that mark.
61      By the third plea, alleging infringement of Article 58(1)(a) of Regulation 2017/1001 and Article 10(3) of Delegated Regulation No 2018/625, which must be examined together with the second plea, the applicant complains that the Board of Appeal wrongly considered that the contested mark had been used in connection with services falling within more general categories of services covered by that mark as registered.
62      EUIPO and the intervener contest the applicant’s arguments.
63      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.
64      Pursuant to Article 58(2) of Regulation 2017/1001, if the ground for revocation exists 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 revoked in respect of those goods or services only.
65      As regards the criteria for assessing genuine use, Article 10(3) of Delegated Regulation 2018/625, applicable to revocation proceedings in accordance with Article 19(1) of that regulation, provides that proof of use must relate to the place, time, extent and nature of use of the contested mark.
66      It must be borne in mind that, in proceedings for revocation of a trade mark, it is, in principle, for the proprietor of the mark to prove genuine use of that mark (see judgment of 23 January 2019, Klement v EUIPO, C‑698/17 P, not published, EU:C:2019:48, paragraph 57 and the case-law cited).
67      In that regard, it is apparent from the case-law 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 and 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 judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39 and the case-law cited).
68      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 exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark. Accordingly, in order to examine whether a 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 (see judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraphs 40 and 42 and the case-law cited).
69      Lastly, 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 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28 and the case-law cited).
70      It is in the light of those principles that the Court must examine the Board of Appeal’s application in the present case of the criteria for assessing genuine use set out in Article 10(3) of Delegated Regulation 2018/625, that is to say the time (or period), place, extent and nature of use of the contested mark.
71      At the outset, it should be noted that on 21 April 2021, within the time limit set by the Cancellation Division, the intervener submitted, as evidence of genuine use of the contested mark, the following 20 documents (251 pages):
–        Documents 1 to 7: approximately 70 invoices from 2016 to 2021, partially translated and issued to companies in Spain and other countries, both within the European Union (France, Hungary, Portugal) and outside the European Union (Costa Rica, India, Morocco, Montenegro, Nicaragua, Panama, Peru, the Philippines and El Salvador);
–        Document 8: information regarding the presence of the intervener on the internet (provided through hyperlinks) and social networks (Facebook, LinkedIn, Twitter), in the years 2016 to 2020;
–        Document 9: a list of hyperlinks to videos in English and Spanish which, according to the intervener, were made in 2016 to 2020;
–        Document 10: documentation relating to the ‘REPARA 2.0’ industrial research and experimental development project;
–        Document 11: information on the ‘LPS-BIGGER project’, which aims to achieve a breakthrough in the areas of real-time multichannel marketing, exploitation of social influence in network advertising, optimisation of software-engineering project management and advanced educational systems in the framework of big data and the application of SPL (software product line) technology and methodology;
–        Document 12: information dated 30 December 2020 on the ‘first European Self-Guided Hydrogen Truck project’;
–        Document 13: an Excel table in Spanish which contains a list of names of projects;
–        Document 14: a list of the names of the intervener’s projects approved since 2012 by the Centro para el Desarrollo Tecnológico Industrial (CDTI, Centre for the Development of Industrial Technology, Spain);
–        Document 15: certification issued by the United Nations in 2012 notifying the intervener of its inclusion in the list of suppliers for the United Nations;
–        Document 16: ISO and Applus+ certificates;
–        Document 17: a commercial profile of the company issued by Axesor, with details such as the constitution of the company, the last accounting statement and the core business of the company;
–        Document 18: information on a number of technical projects in which the intervener was involved from 2014 to 2019;
–        Document 19: screenshots from the ‘https://fractaliasytems.com’ website provided through the Wayback Machine;
–        Document 20: screenshots of the intervener’s website in English.
72      On 15 July 2022, the intervener filed its statement of grounds of appeal against the Cancellation Division’s decision, to which 11 documents were attached as additional items of evidence (344 pages):
–        Attachments 1 to 5: framework contracts signed with companies whose names are omitted for reasons of confidentiality, belonging to different sectors (telephony and internet, automotive, hotel and catering, energy, and so forth), which complement and justify the issue of the invoices submitted in the proof of use (Documents 1 to 7) and which describe, in their object, the services provided under the Fractalia Remote Systems brand;
–        Attachments 6 to 10: certifications issued by the CDTI which complement the proof of use presented (Documents 11 to 14), by confirming and ratifying compliance with the scientific and technological requirements of the LPS-BIGGER, Advanced IOT Solutions, Multichannel Entry Platforms, Perimeter Cybersecurity Solutions in Home Networks and Hydrogen Mobility Technology Solutions projects; each of those certifications indicates the start date of each project, as well as the duration of the project and its techno-scientific purpose;
–        Attachment 11: a financial report on the accounts of the company ‘FRACTALIA IT Systems España, SLU’, according to which that company generated a turnover of more than EUR 125 million in the period from 2018 to 2021.
73      Moreover, the Court must uphold the findings of the Board of Appeal, in paragraphs 12 to 15 of the contested decision, concerning the confidentiality of the commercial information under Article 114 of Regulation 2017/1001, also not disputed by the parties, according to which the evidence of use included certain sensitive data and information, such as customer identification details, information on contract amounts or billing information relating to the intervener and its customers, which were not publicly available, and it was therefore appropriate to describe the evidence only in the most general terms, without going so far as to disclose it.
1.      The period of use of the contested mark
74      From the outset, it must be noted, as the Board of Appeal observed, that the relevant period for proving use extended from 27 January 2016 to 26 January 2021 inclusive, that is to say the five years preceding the date of the application for revocation of 27 January 2021.
75      The finding in paragraph 30 of the contested decision that it appears from the documents and attachments provided by the intervener that most of them are dated within the relevant period, must also be upheld. In particular, the approximately 70 invoices provided (Documents 1 to 7) were issued between 2016 and 2021. The publications on social networks (Facebook, LinkedIn, Twitter) are dated between 2016 and 2020, and the dates of publication can be seen, as argued by the intervener, in the examples of content provided (pages 11, 14 and 17 to 19 of Document 8). The information relating to participation in technical projects (Document 18) also shows that the projects in question took place, in particular, between 2016 and 2019, within the relevant period. Similarly, the contracts provided in Attachments 1 to 5 were entered into, ratified or renewed during the relevant period (for example, Attachment 2 ratified in 2016, Attachment 3 entered into in 2017, Attachment 4 entered into in 2018). The certifications issued in Attachments 6, 7, 9 and 10 were issued between 2018 and 2021. Lastly, the financial report provided in Attachment 11 indicates the total turnover made by the intervener between 2018 and 2021 inclusive, as the Board of Appeal noted.
76      In that regard, the applicant’s argument that the LPS-BIGGER project, referred to in Document 11, seems to have started in 2014 and thus to fall outside the relevant period must be rejected. It is clear from the case-law that it is possible to take such evidence relating to use made before or after the relevant period into consideration, in so far as it makes it possible to confirm or better assess the extent to which the contested mark was used and the actual intentions of the proprietor of that mark during that period (see judgment of 6 September 2023, Consultora de Telecomunicaciones Optiva Media v EUIPO – Optiva Canada (OPTIVA MEDIA), T‑601/22, not published, EU:T:2023:510, paragraph 46 and the case-law cited), and that such evidence can be taken into consideration only if other evidence relating to the relevant period has been produced (see judgment of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 41 and the case-law cited). Clearly, that is the case here. It follows that Document 11 could be taken into consideration.
77      The Board of Appeal was therefore correct in finding that the evidence provided by the intervener related, for the most part, to the relevant period for the purposes of proving use and thus satisfied the requirement as to the period of use.
2.      The place of use of the contested mark
78      In paragraphs 32 and 33 of the contested decision, the Board of Appeal found, as far as concerns the territorial aspect connected with the EU market, that an analysis of the documents submitted showed that they referred to EU Member States such as Spain, France, Hungary or Portugal. In its view, other documents, which referred to non-member countries such as Costa Rica, Morocco, Nicaragua, Peru or the Philippines, did not fall within the relevant territory for the proof of use in the present case but guaranteed continuity in the use of the contested mark. In any case, the scope of the bulk of the invoicing provided, as well as the projects mentioned and the certifications obtained by the licensee, is focused on Spain, which is considered a sufficient territory given the circumstances of the case. Furthermore, most of the documentation was in Spanish. According to the case-law, use restricted to the territory of a single Member State can satisfy the condition for genuine use of an EU trade mark (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 50).
79      At the outset, it should be pointed out that most of the approximately 70 invoices provided in Documents 1 to 7 relate, in any event, to services provided within the European Union, with the exception of some 13 invoices relating to non-member countries. Document 1 includes invoices issued in 2016 and relating to use within the European Union. Document 2 includes invoices issued in 2017, which relate mostly to the European Union, but also to India and the Philippines. All the invoices in Document 3 relate to use of the mark in 2018 within the European Union. The majority of the invoices in Document 4 concern use of the mark in 2019 within the European Union, with the exception of one relating to Montenegro. Similarly, Document 5, concerning 2020, includes an invoice for a legal person domiciled in the Philippines. Document 6 concerns use of the trade mark in 2021 within the European Union. Document 7 includes invoices issued between 2018 and 2020, the majority of which relate to non-member countries, namely Costa Rica, Morocco, Nicaragua, Panama, Peru, the Philippines and El Salvador.
80      The Court accordingly finds that the other invoices provided in Documents 1 to 7 and relating to services provided in the European Union (in particular, in Spain, France, Hungary and Portugal) are sufficient to satisfy the requirement as to place of use in this case.
81      Moreover, it is necessary to reject the applicant’s argument that the invoices, contained in Documents 1 to 7, which relate to non-member countries (such as Costa Rica, India, Morocco, Montenegro, Nicaragua, Panama, Peru, the Philippines and El Salvador) should be disregarded.
82      According to the case-law, a distinction must be drawn between the place where the services are provided and the place of use of an EU trade mark, since only the latter is relevant for the purposes of examining whether an EU trade mark has been put to genuine use (see, to that effect, judgment of 13 July 2022, Standard International Management v EUIPO – Asia Standard Management Services (The Standard), T‑768/20, not published, EU:T:2022:458, paragraphs 34 to 40).
83      Accordingly, the Court finds, as EUIPO noted, that even where services are offered for sale to the public or promoted on the EU market (in the present case in Spain, the Member State in which the intervener is established), but are subsequently supplied (or ‘exported’) outside the territory of the European Union (in countries worldwide, in which the customers are established), such use of the EU trade mark may be regarded as genuine within the meaning of Article 58(1)(a) of Regulation 2017/1001, read in conjunction with letter (b) of the second subparagraph of Article 18(1) of that regulation, applied by analogy to ‘services’.
84      Accordingly, the fact that certain services covered by a trade mark are provided outside the European Union does not preclude the existence of genuine use of that trade mark within the European Union, which may be revealed by all the steps taken in the European Union to market those services.
85      In the present case, contrary to what the applicant claims, the invoices submitted (Documents 1 to 7) demonstrate the necessary link with the EU market, since they are all issued in the name of a service provider (or ‘exporter’) established in Spain, that is to say on EU territory, and reveal steps taken in the European Union to market those services. That is so irrespective of the location of the recipient or the customer invoiced for the corresponding service. Similarly, the ‘commercial profile of the company’ (Document 17) or the financial report (Attachment 11) cannot be devoid of probative value simply because a part of the turnover recorded relates to services provided (or ‘exported’) outside the territory of the European Union.
86      The Board of Appeal was therefore right to take into consideration evidence of use relating to services for customers located both within and outside the European Union and to find that the evidence submitted by the intervener essentially satisfied the requirement as to the place of use.
3.      The extent of use of the contested mark
87      In paragraphs 39 to 47 of the contested decision, the Board of Appeal observed that the billing amounts shown in the approximately 70 invoices submitted before the Cancellation Division (Documents 1 to 7), supported by the significant figures reflected in the contracts which had given rise to a substantial number of them (Attachments 1 to 5 submitted in the appeal), as well as the participation of the proprietor in certain relatively large projects (such as the ‘REPARA 2.0’ project contained in Document 10) or the issue of certificates to the intervener (Documents 15 and 16), were sufficient evidence to establish that the use was not purely symbolic.
88      The Board of Appeal noted that the ‘provision’ of the contracts (Attachments 1 to 5) giving rise to the invoices submitted (Documents 1 to 7) was particularly illustrative. It showed, for example, that the intervener had provided ongoing services to a telephone company for a value of more than EUR 200 000 (Attachment 1), services to a Spanish subsidiary of an automotive company for more than EUR 50 000 (Attachment 2) and services to the value of more than EUR 1 500 000 to a company linked to the energy sector (Attachment 3). Moreover, the contracts signed between the intervener and the hotel chains (Attachments 4 and 5) were correlated with the invoices submitted, and it was specified in those contracts that the intervener would provide services to more than 100 hotels belonging to those chains and listed in the contracts. According to the Board of Appeal, the financial report (Attachment 11), which contained information related to the intervener’s annual turnover, was also relevant. The company name of the owner was identified as ‘FRACTALIA IT Systems España, SLU’ in that report, which revealed a turnover of more than EUR 125 million in the period between 2018 and 2021 (EUR 23 613 136 in 2018, EUR 27 261 576 in 2019, EUR 27 031 128 in 2020 and estimated total sales of EUR 48 656 031 in 2021).
89      The Board of Appeal further observed that the certificates issued by the CDTI contained in Documents 6 to 10 also provided evidence of the extent of the use of the contested mark, in so far as they showed that that trade mark had been able to make itself known to the relevant business circles. The Board of Appeal noted that the CDTI was a public business entity in Spain, answering to the Ministry of Science and Innovation. By contrast, it considered that the provision of publications on social networks (Facebook, LinkedIn, Twitter) (Documents 8 and 9), while demonstrating the efforts made by the intervener to give its trade mark visibility on the internet, had only limited probative value, in so far as no quantitative data was provided in relation to the number and location of the recipients of the publications.
90      The Board of Appeal, considering the evidence as a whole, concluded that the contracts, turnover figures and other evidence produced were realistic and represented a number of commercial relationships considered sufficient to create or preserve a market for some of the services for which the contested mark had been registered, thus proving the extent of the use. In particular, the apparent continuity of the invoices over time (at the rate of approximately 15 invoices per year) and the effort to maintain a market presence, as well as the intervener’s involvement in various technological projects throughout the relevant period, excluded that use from being classified as token use or as artificial use intended solely for the maintenance of the trade mark registration.
91      With regard to Documents 8 and 9, which refer, inter alia, by means of hyperlinks, to the intervener’s presence on the internet and social networks during the years 2016 to 2020, the applicant submits that they are a mere ‘collage’ of news articles published on social media, which serve, at most, to prove that the company has a profile on social media, but not to prove that services were provided under the contested mark.
92      That argument must be dismissed as ineffective, since the Board of Appeal itself rightly considered that the evidence relating to social networks had only limited probative value, in so far as no quantitative data were provided in relation to the number and location of the recipients of the publications, and consequently it did not take that evidence into account in its overall assessment.
93      Moreover, it should be noted that, pursuant to Article 95(1) of Regulation 2017/1001, a mere reference to websites by means of hyperlinks, such as those contained in part of Document 8 and in the list of videos in Document 9, is not a valid form of evidence in inter partes proceedings. It is not for the adjudicating bodies of EUIPO to search on websites for a part of the evidence which makes it possible to establish use of the contested mark or for the Court to re-examine such evidence (see, to that effect, judgments of 4 October 2018, Frinsa del Noroeste v EUIPO – Alimentos Friorizados (Alfrisa), T‑820/17, not published, EU:T:2018:647, paragraphs 61 to 63, and of 6 September 2023, OPTIVA MEDIA, T‑601/22, not published, EU:T:2023:510, paragraphs 58 and 59).
94      As to the remainder, the applicant merely claims that the evidence in the file either does not prove use of the contested mark for the services covered by it or does not sufficiently prove the extent of the use made of that mark during the relevant period.
95      It must be stated that such an unsubstantiated claim is not capable of calling into question the Board of Appeal’s detailed assessments concerning the extent of use, noted in paragraphs 87 to 90 above, which must be endorsed.
96      The Board of Appeal was therefore correct in finding that the evidence produced by the intervener, assessed as a whole, satisfied the requirement as to the extent of use.
4.      The nature of use of the contested mark
97      Three aspects of the nature of use of the contested mark must be examined in turn: (i) its use as a trade mark; (ii) its use as registered or in an acceptable variant which does not alter its distinctive character; and (iii) its use in relation to the services for which it was registered.
(a)    Use of the contested mark as a trade mark
98      In paragraphs 48 to 52 of the contested decision, the Board of Appeal rejected the applicant’s argument that most of the evidence submitted related to the intervener’s company name or to an allegedly related company such as FRACTALIA IT Systems España, SL, but not to the contested mark. It noted that the use of a sign as a company name, business name or trade name can be considered as use as a trade mark, that is to say as a sign identifying the business origin of the goods and services covered. It noted that the contested mark appeared in the upper right-hand corner of a significant number of the invoices (Documents 1 to 7) and that the word element ‘fractalia’ appeared in the domain name positioned at the bottom of each page (www.fractalia.es) and was included in the company name displayed in the lower left-hand part of the invoices.
99      The applicant claims that most of the evidence submitted refers to the company name of the intervener or of a company related to it, such as FRACTALIA IT Systems España, SL, and not to the contested mark. According to the applicant, the evidence demonstrating use by different registered companies, such as FRACTALIA IT Systems España, SL and FRACTALIA Hotels Systems, SL, is devoid of probative value because it does not identify the intervener. In particular, the applicant argues that the financial report (Attachment 11) refers to FRACTALIA IT Systems España, SL, whereas most of the invoices provided are issued by FRACTALIA Hotels Systems, SL and FRACTALIA Remote Systems, SL, the intervener. Only a very small proportion of the invoices are issued by FRACTALIA IT Systems España, SL, with the result that the turnover shown in the financial report could refer to activities not covered by the contested mark. It is clear from Attachments 4 and 5 that the telecommunication services are provided by company P. and not by ‘FRACTALIA’, which merely provides the machines and the technical support, and that none of those services is covered by the contested mark. According to the applicant, the certifications issued by the CDTI (Attachments 6 to 10) are issued to FRACTALIA IT Systems España, SL and not to the intervener.
100    In that regard, it should be recalled that, in accordance with Article 18(2) of Regulation 2017/1001, use of the EU trade mark with the consent of the proprietor is to be deemed to constitute use by the proprietor.
101    According to the case-law cited by the Board of Appeal, the use of a sign as a company name, business name or trade name can be considered as use as a trade mark, provided that the relevant goods or services themselves are identified and offered on the market under that sign (see, to that effect, judgment of 13 April 2011, Alder Capital v OHIM – Gimv Nederland (ALDER CAPITAL), T‑209/09, not published, EU:T:2011:169, paragraph 56). This requires that the proprietor use the sign in such a way as to establish a link between the company name, the trade name or the shop name of the third party and the goods marketed or the services provided by the third party (see, to that effect, judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraphs 21 to 23). For example, the appearance of the company name on the letterhead of order forms or invoices may, depending on the form in which the sign appears thereon, be adequate to support genuine use of the contested mark (see, to that effect, judgment of 6 November 2014, Popp and Zech v OHIM – Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraphs 44 and 45).
102    Moreover, it is settled case-law that the use of a trade mark by a company which is economically linked to the proprietor of the mark is presumed to be use of that mark with the consent of the proprietor and is therefore deemed to constitute use by the proprietor, in accordance with Article 18(2) of Regulation 2017/1001 (see judgment of 6 October 2021, Dermavita Company v EUIPO – Allergan Holdings France (JUVEDERM), T‑372/20, not published, EU:T:2021:652, paragraph 67 and the case-law cited). Moreover, where the proprietor of an earlier mark maintains that the use of that mark by a third party constitutes genuine use of that mark, it is implicit that the proprietor consented to that use in accordance with that article, unless there is evidence to the contrary (judgment of 14 December 2022, Eurol v EUIPO – Pernsteiner (eurol LUBRICANTS), T‑636/21, not published, EU:T:2022:804, paragraph 44).
103    If the use of the contested mark was without the proprietor’s consent and, accordingly, in breach of the proprietor’s trade mark right, it would not have been in the interests of that proprietor to rely on those invoices as evidence demonstrating legitimate use of its trade mark. Consequently, it seems unlikely that the proprietor of a trade mark would be in a position to submit proof that the mark had been used against its wishes (see judgments of 5 March 2019, Meblo Trade v EUIPO – Meblo Int (MEBLO), T‑263/18, not published, EU:T:2019:134, paragraph 77 and the case-law cited, and of 14 December 2022, eurol LUBRICANTS, T‑636/21, not published, EU:T:2022:804, paragraph 40 and the case-law cited).
104    In the present case, it should be noted, as EUIPO observed, that at no time, either during the administrative procedure or before the Court, did the applicant dispute the fact that use by those other economically linked companies amounted to use with the consent of the intervener, FRACTALIA Remote Systems, SL. In the absence of any dispute in that regard, such use must be presumed to be use by the intervener, in accordance with the case-law cited in paragraphs 102 and 103 above. Moreover, there is no evidence to the contrary in the file and the applicant has not put forward any argument or evidence which would call into question the existence of the intervener’s consent to the use of the contested mark by those other companies. In any event, all those companies share the distinctive word element ‘fractalia’ and are economically linked entities belonging to the same group of companies, which, in the absence of evidence to the contrary, indicates that they used the contested mark with the intervener’s consent (see, to that effect, judgments of 19 January 2022, POMODORO, T‑76/21, not published, EU:T:2022:16, paragraph 90; of 7 September 2022, 6Minutes Media v EUIPO – ad pepper media International (ad pepper the e-advertising network), T‑521/21, not published, EU:T:2022:520, paragraph 28, and of 14 December 2022, eurol LUBRICANTS, T‑636/21, not published, EU:T:2022:804, paragraphs 45 to 50).
105    Furthermore, as the intervener observes, the use of the company name FRACTALIA IT Systems España, SL may be regarded as use of the contested mark, since the services concerned are themselves identified and offered on the market under that sign, in accordance with the case-law cited in paragraph 101 above. The reference to that company name on the certifications issued by the CDTI at the top of the document, under the company identification number and the project description, also constitutes, for the same reason, use of that mark. In addition, the CDTI certifications have a high probative value, since they were issued by a public business entity.
106    Lastly, with regard to the financial report (Attachment 11), it should be noted, as the intervener did, that the latter is named in it as the parent company of the group and sole director of FRACTALIA IT Systems España SL.
107    The Court must therefore uphold the findings of the Board of Appeal recalled in paragraph 98 above and conclude that the evidence demonstrating use by different registered companies, such as FRACTALIA IT Systems España, SL or FRACTALIA Hotels Systems, SL, cannot be devoid of probative value on the sole ground that it does not, strictly speaking, identify the intervener, named FRACTALIA Remote Systems, SL. Accordingly, use of those various company names constitutes use of the contested mark as an indication of the commercial origin of the services in question.
108    The applicant’s arguments in that regard must therefore be rejected.
(b)    Use of the contested mark as registered or in an acceptable variant which does not alter its distinctive character
109    In paragraphs 53 to 66 of the contested decision, the Board of Appeal first considered that the evidence submitted, mostly the invoices, displayed the contested mark with some additions which merely included descriptive indications having no impact on the distinctive character of the trade mark as registered. It found that the distinctive elements of the mark consisted of the word element ‘FRACTALIA’, which was devoid of meaning (evoking, at most, the idea of ‘fractal’, which is unrelated to the services in question) and the most distinctive as a word element, and the figurative element, which was also distinctive. It therefore found that use of that mark in the forms represented below, as they appeared on invoices and other documents (contracts, certifications, website screenshots, and so forth), could be regarded as use in a form which differed in elements that did not alter its distinctive character:
110    The Board of Appeal further found that the figurative signs shown included the distinctive elements of the contested mark without significant variations. The added elements ‘Grupo’, ‘Software’ and ‘Hotel Systems’ were additional elements, the visual impact of which was minimal in the representation of the signs (with respect to the visually prominent elements the word element ‘FRACTALIA’ and the figurative element) and whose distinctive character was either minimal or non-existent because they referred to the type of organisational structure of the intervener (‘Grupo’), or to the goods to which the services provided under the mark related (‘Software’) or to the type of business client for which the services have been provided (‘Hotel Systems’). With respect to the certificates produced on appeal, the Board of Appeal also noted that, although Attachments 6 and 8 identified the proprietor by its previous company name (IRISCENE SOFTWARE CORPORATION SL), the intervener’s signature in Attachment 8 included the contested mark as part of the stamp attesting to conformity and the representation of the figurative element in a slightly different colour did not alter the distinctive character of that mark:
111    Lastly, the Board of Appeal found that the other attachments relating to the certifications (Attachments 7, 9 and 10) clearly identified the intervener as ‘FRACTALIA IT Systems España, SL’. The name ‘FRACTALIA IT Systems España, SL’ preserved the most distinctive element of the contested mark (‘FRACTALIA’), the other elements being descriptive. Thus, ‘IT Systems’ indicated the type of services covered by that mark, ‘España’ indicated the place where the intervener was established and ‘SL’ indicated its legal form (‘Sociedad Limitada’). The Board of Appeal concluded from this that the way in which that mark was represented in a significant part of the invoices and other documents submitted reflected a use which did not alter the distinctive character of the mark as registered.
112    Under Article 18(1)(a) of Regulation 2017/1001, use of an EU trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it is registered, irrespective of whether or not the trade mark in the form as used is also registered in the name of the proprietor.
113    The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the form of the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgment of 23 February 2006, Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 50; see, also, judgment of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 138 (not published) and the case-law cited).
114    Accordingly, a finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the added elements based on the inherent qualities of each of those elements and the relative position of the different elements within the arrangement of the trade mark (see judgments of 10 June 2010, Atlas Transport v OHIM – Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 31 and the case-law cited, and of 23 September 2020, Shape of a blade of grass in a bottle, T‑796/16, EU:T:2020:439, paragraph 139 (not published) and the case-law cited).
115    The applicant claims, in essence, that most of the evidence submitted refers to companies which are related to the intervener, such as FRACTALIA IT Systems España, SL, and not to the contested mark or an acceptable variant of it.
116    In that regard, the detailed findings of the Board of Appeal set out in paragraphs 109 to 111 above must be upheld. In particular, it should be noted that the contested mark has been used in various acceptable variants that do not alter its distinctive character, in which the dominant and most distinctive word element ‘FRACTALIA’ and the figurative element of the contested mark invariably appear, in some circumstances together with negligible and non-distinctive elements. Thus, that word element appears in the top right-hand corner of the invoices (Documents 1 to 7) in the following forms: ‘FRACTALIA’, ‘FRACTALIA Software’, ‘FRACTALIA Hotel Systems’, ‘FRACTALIA Engineering’ and ‘Grupo FRACTALIA’. It also appears in the domain name at the bottom of each page (www.fractalia.es) and is included in the company name on the bottom left part of those invoices. It also appears in the signature of the contracts (Attachments 1 to 5) and appears in the majority of the CDTI certifications (Attachments 7, 9 and 10) in the form ‘FRACTALIA IT Systems España, SL’. In all those cases, the addition of negligible and non-distinctive elements (such as ‘Software’, ‘Hotel Systems’, ‘Engineering’, ‘Grupo’ or ‘IT Systems España, SL’) in certain items of evidence of use cannot alter the distinctive character of the contested mark as registered.
117    The applicant’s arguments in that regard must therefore be rejected.
(c)    Use of the contested mark in relation to the services for which it is registered
(1)    The need to define the use of the contested mark by subcategories of services
118    In paragraphs 67 to 76 of the contested decision, the Board of Appeal noted that, in the present case, the contested mark was registered to distinguish broad categories of services in Classes 35, 38, 41 and 42 (see paragraph 5 above), but that the evidence adduced by the intervener did not demonstrate genuine use of the mark for all the services covered by it. The categories of services for which the mark was registered were considered to be broad but the intervener had not provided evidence of genuine use of the mark for each of the separate subcategories. Therefore, the Board of Appeal confirmed the need to subdivide the categories of services into subcategories in the light of the services for which use of the sign had been demonstrated.
119    According to established case-law, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category (judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45; of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23; and of 13 October 2021, Schneider v EUIPO – Frutaria Comercial de Frutas y Hortalizas (Frutaria), T‑12/20, not published, EU:T:2021:702, paragraph 77).
120    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 that trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he 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. The Court observes in that regard 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 ‘part 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, ALADIN, T‑126/03, EU:T:2005:288, paragraph 46; of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 24; and of 13 October 2021, Frutaria, T‑12/20, not published, EU:T:2021:702, paragraph 78).
121    The criterion of the purpose and intended use of the goods or services at issue is an essential criterion for defining an independent subcategory of goods (judgments of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 44; of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 29; and of 13 October 2021, Frutaria, T‑12/20, not published, EU:T:2021:702, paragraph 79).
122    It must be pointed out that such an independent subcategory of goods must be coherent and homogeneous and be the result of a division which is significant and not arbitrary. Thus, the Court of Justice dismissed the appeal brought against the judgment of 13 September 2018, ACTC v EUIPO – Taiga (tigha) (T‑94/17, not published, EU:T:2018:539), which had refused to recognise the existence of an independent subcategory of goods in Class 25, consisting of ‘weather-protective outdoor clothing’, on the ground that all clothing has the same purpose or intended use, because it is intended to cover the human body, to conceal, adorn and protect it against the elements (judgments of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraphs 29 to 54, and of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 36).
123    The General Court must therefore uphold the decision of the Board of Appeal to define the use of the contested mark by subdividing the categories of services covered by it into subcategories of services, which was not contested by the parties.
(2)    The assessment of the evidence of genuine use of the contested mark for certain subcategories of services
124    In paragraphs 77 and 88 of the contested decision, the Board of Appeal noted that the intervener was a technology company mainly engaged in the provision of IT services related to telecommunications, cybersecurity and business management. The intervener also provided engineering services and carried out research and development activities. In the case of the contested mark, the amounts shown in the invoices, as well as the annual turnover volumes, indicated, mainly through the contracts, project participations and certifications submitted, that that mark had been used for a number of services for which it had first been registered.
125    The Board of Appeal next found a minimum of genuine use of the contested mark in the relevant territory and during the relevant period for certain services in Classes 35, 38 and 42, specified below. As regards the other services in Classes 35, 38, 41 and 42 for which that mark was registered, the Board of Appeal stated that it could not conclude, without resorting to presumptions, that genuine use had been proved.
126    The applicant contests some of the factual assessments made by the Board of Appeal and claims, in essence, that a particular document read individually or a particular attachment considered in isolation does not prove genuine use of the contested mark because a particular parameter is missing. Most of those arguments have already been refuted in paragraphs 78 to 117 above.
127    In that regard, it should be borne in mind that, according to settled case-law, in order to examine whether a contested trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case (judgments of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42, and of 1 March 2023, CAMEL, T‑552/21, not published, EU:T:2023:98, paragraph 71).
128    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. Thus, although the evidential value of an item of evidence is limited to the extent that, individually, it does not show with certainty whether, and how, the goods or services concerned were placed on the market, and although that item of evidence is therefore not in itself decisive, it may nevertheless be taken into account in the overall assessment as to whether the use is genuine (see judgment of 5 October 2022, Aldi Einkauf v EUIPO – Cantina sociale Tollo (ALDIANO), T‑429/21, not published, EU:T:2022:601, paragraph 39 and the case-law cited).
129    The Court must also consider, as EUIPO did, that the principle of the overall assessment of evidence is particularly important when assessing use in relation to services, although it also applies to goods. Unlike goods, which generally take a fixed material form and the use of which is therefore easier to demonstrate coherently in that single form, services are by their nature intangible and generally take various forms depending on the context. That factor can, for example, have an impact on the level of granularity of the description of a service in the various documents referring to the service. Consequently, the assessment of use in relation to a service must necessarily be based on a combined assessment of all the forms which the service takes in different contexts.
130    In this case, the Board of Appeal was right to make an overall assessment of all the items of evidence, that is to say the 20 documents and 11 attachments, examined as a whole and together with one another.
131    Accordingly, the Board of Appeal was entitled to consider that certain items of evidence ‘correlate’, ‘specify’, ‘corroborate’ or ‘contextualise’ (paragraphs 22, 41, 78, 80 and 83 of the contested decision) other items of evidence and was entitled to assess certain items of evidence together ‘with’ other evidence (paragraphs 21 and 83 of that decision).
132    It is now necessary to examine the Board of Appeal’s assessments concerning genuine use of the contested mark for services in Classes 35, 38, 41 and 42.
133    In the first place, as regards services in Classes 35 and 38, the findings of the Board of Appeal in paragraphs 78 and 79 of the contested decision must be upheld. Accordingly, the Board of Appeal was right, first of all, to find, on the basis of the contracts submitted (Attachments 1 to 5), which correlated and specified the services provided in the invoices (Documents 1 to 7), that the intervener offered, under the contested mark, IP-based telephony services (VoIP), network electronics services, content management services and support in relation to the software associated with the content management service. In addition, the intervener offered wired and wireless network installation services, facilitating access to the internet and virtual private networks (VPNs), mainly in commercial establishments and hotels, where it also offered mobile office services facilitating the provision of hardware and software for sending or receiving faxes or printing documents. The intervener also offered software design and programming services, network security services and IT security services in general, as well as IT outsourcing services consisting of the management, maintenance and remote operation of IT equipment. Lastly, the new documentation submitted also demonstrated use for ‘management of software licences for a third party’, for example SAP ® licences (Attachment 3, point 2.4, page 34). Despite the fact that the licence management arose out of the contractual relationship between the intervener and its customer, that is to say in the context of the provision of services by the former to the latter, the possibility that licence management services had taken place could not be ruled out, in so far as they were referred to as a relevant part of the contract and it was clear that they would be managed by the intervener (Attachment 3, points 2.4 to 2.6, pages 34 and 35).
134    By contrast, according to the Board of Appeal, the documentation provided, contrary to the intervener’s assertions, did not support the conclusion that there had been any actual use of the contested mark for services of ‘data compilation and analysis for third parties’ or ‘data monitoring’ in Class 35. In that regard, it had not been demonstrated that the intervener, through the contested mark, had directly provided the aforementioned services to third parties, in so far as most of the documentation, particularly the ISO and Applus+ certificates provided (Document 16), concentrated the intervener’s sphere of action on the development or management of IT infrastructures (‘Information Technology’). Therefore, despite the fact that the IT products developed by the intervener may have been intended for professional customers in the retail sector, it remained relevant, when assessing the proof of use, to determine specifically what type of services it provided, under that mark, to those third parties. In that context, it could be seen that the services consisted of technical assistance, consultancy, integration and maintenance derived from the software developed by the intervener for those third parties. Therefore, it could not be inferred from the invoices or other documents provided, without resorting to presumptions, that the intervener had provided the services in Class 35 referred to in this paragraph. Those findings are not called into question in the present case.
135    In the second place, as regards the services in Class 41, the Board of Appeal considered that the intervener had not explicitly addressed, in its statement of grounds of appeal, whether their use had taken place. Furthermore, from the evidence submitted there was, prima facie, a general lack of evidence showing that it had been. Those findings are not called into question in the present case.
136    In the third place, as regards services in Class 42, the findings of the Board of Appeal in paragraphs 80 to 83 of the contested decision must be upheld. Accordingly, the Board of Appeal was correct in finding that the certifications contained in Attachments 6 to 10 consisted of certifications concerning compliance with scientific and technological requirements for the purposes of the application and interpretation of tax deductions. In those documents, the certifying entity, namely the CDTI, characterised the projects submitted by the intervener as ‘research and development projects’, specifying in general terms that the achievement of the general objective of each project required research and development of different technologies and elements. Those projects were aimed at offering technological solutions or providing substantial improvements over what was already in existence and represented progress in their sectors. Those projects were defined as follows: advanced IoT (‘Internet of Things’) solution for environmental monitoring and control in technical rooms for preventive maintenance and optimisation of the useful life of technological equipment; perimeter cybersecurity solution and analysis of vulnerabilities in home network devices; search for technological solutions based on hydrogen for the intelligent and sustainable mobility of heavy transport fleets, optimising consumption and reducing their carbon footprint (project in part led by the intervener); perimeter cybersecurity solution and vulnerability analysis of home network devices. In so far as those projects subject to certification covered various technological fields (energy, transport, environment, cybersecurity, and so forth), and in so far as the intervener, through the contested mark, was essentially carrying out research and development services in a broad sense, the Board of Appeal considered the use for the general subcategory of ‘research and development’ in Class 42 to be proved.
137    As for Document 10, relating to the involvement of the intervener in the ‘REPARA 2.0’ project, the Board of Appeal rightly noted that it did indeed specify that the intervener led working group 3, dedicated to the big data application for road monitoring. The activities carried out by the intervener in that area were data acquisition, storage, processing and analysis, and, as stated in the work package, the objective of that solution was to combine sensor values with other relevant data regarding pavement deterioration in order to generate predictive models. On the project website (www.proyectorepara.com), the intervener was identified as a global company dedicated to the development and implementation of technological solutions and creative engineering. Together with the other documentation, particularly the subject matter of the other projects, it was clear, to the Board of Appeal, that the intervener had used the contested mark to provide engineering services and industrial research and analysis services in Class 42.
138    Lastly, in paragraph 78 of the contested decision, the Board of Appeal rightly noted that it was also apparent from the contracts provided (Attachments 1 to 5) that the intervener offered software design and programming services in Class 42. That finding is also corroborated by Document 12, concerning the ‘first European Self-Guided Hydrogen Truck project’, according to which the intervener develops ‘a unique and pioneering intelligent software that will optimise the overall operation by implementing optimisation algorithms and federated learning, according to the edge-fog computing paradigm’.
139    It must be stated that the applicant has not put forward any argument capable of demonstrating an error in the Board of Appeal’s overall assessments that a minimum of genuine use of the contested mark has been sufficiently proved for the services referred to in paragraphs 133 and 136 to 138 above.
140    In the light of the foregoing, the Court finds that the Board of Appeal was right to hold, in paragraphs 89 to 91 of the contested decision, that use of the contested mark had been demonstrated for the following services: ‘rental of office machines; commercial administration of the licensing of software of others’ in Class 35, ‘telephone and mobile telephone services; computer communication and Internet access; provision and rental of telecommunications facilities and equipment’ in Class 38 and ‘research and development services and design services relating thereto; Engineering services and research and design relating thereto; industrial analysis and research services; computer software design and development’ in Class 42.
141    The applicant’s arguments in that regard must therefore be rejected.
(3)    The comparison between the subcategories of services used and the specification of the services covered by the contested mark
142    By the third plea, alleging infringement of Article 58(1)(a) of Regulation 2017/1001 and Article 10(3) of Delegated Regulation 2018/625, the applicant complains that the Board of Appeal wrongly considered that the contested mark had been used for services covered by the more general categories of services set out in the lists of services as registered (see paragraph 5 above), namely the ‘general headings’ of Classes 35, 38, 41 and 42 which were in force when the contested mark was filed.
143    In support of that plea, the applicant submits a comparative table of ‘services registered’ and ‘services used’ in Classes 35, 38 and 42, from which it follows that the services of ‘rental of office equipment; management of software licences for a third party’ (Class 35) and ‘provision and rental of telecommunications facilities and equipment’ (Class 38) are not included in the general class headings, with the result that the Board of Appeal wrongly maintained the registration of the mark for those services.
144    As a preliminary point, on the one hand, it should be pointed out that the applicant’s criticism concerning the absence or inadequacy of evidence of genuine use was examined and refuted in the context of the second plea (see, in particular, paragraph 140 above). The third plea concerns, in essence, the comparison between the subcategories of services used and the specification of certain services covered by the contested mark.
145    On the other hand, it is apparent from the comparative table submitted by the applicant that, in the third plea, the applicant focuses on certain subcategories of services used, namely the ‘rental of office machines’ and the ‘commercial administration of the licensing of software of others’ in Class 35 and the ‘provision and rental of telecommunications facilities and equipment’ in Class 38, and on whether those subcategories are covered by the general headings of the categories of those classes in the registration of the contested mark. The other services used in Classes 35, 38 and 42 are not the subject matter of the present plea.
146    It is therefore important to ascertain whether those subcategories of services in respect of which the contested mark has, in the light of the foregoing, been put to genuine use (see paragraph 144 above) actually fall within the general categories of Classes 35 and 38 and are in fact covered by the general headings of those classes for which the contested mark was registered.
147    According to the case-law, 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 must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 6 September 2023, OPTIVA MEDIA, T‑601/22, not published, EU:T:2023:510, paragraph 23 and the case-law cited). The determination of a possible independent subcategory must be assessed in a concrete manner, principally in the light of the goods or services for which the proprietor of a trade mark has provided proof of use of its mark (judgment of 14 December 2022, Hotel Cipriani v EUIPO – Altunis (CIPRIANI FOOD), T‑358/21, not published, EU:T:2022:817, paragraph 143). The specification of a subcategory must in turn satisfy the requirement of clarity and precision (see, to that effect, judgment of 26 April 2023, Wenz Kunststoff v EUIPO – Mouldpro (MOULDPRO), T‑794/21, not published, EU:T:2023:211, paragraph 50).
148    The range and the meaning of the services covered by the contested mark must be understood in the light of the edition of the Nice Classification which was in force on the date of filing of the application for registration of the trade mark at issue (see, to that effect, judgment of 26 April 2023, MOULDPRO, T‑794/21, not published, EU:T:2023:211, paragraph 22).
149    In the present case, when the contested mark was filed, on 3 February 2004, the eighth edition of the Nice Classification was in force.
150    It is common ground that the general indications of the headings of Classes 35 and 38 of the Nice Classification in that eighth edition correspond, in essence (subject to variants which have no bearing on the present case), to those reproduced in paragraph 5 above, namely the services of ‘publicity; commercial business management; commercial administration; office work’ in Class 35 and ‘telecommunications’ services in Class 38.
151    In the light of the detailed information provided on the websites of the World Intellectual Property Organization (WIPO) and TMclass, it must be noted that certain subcategories of the services used are expressly included in the corresponding categories of services covered by the registration of the contested mark.
152    For example, the indication ‘office machines and equipment rental’ (under code 350013) is expressly included in the general indications for Class 35, such as ‘business management’ and ‘commercial administration’.
153    By contrast, the ‘commercial administration of the licensing of software of others’ and the ‘provision and rental of telecommunications facilities and equipment’ are not expressly included in the eighth edition of the Nice Classification.
154    In that regard, it is important to point out that, according to the established case-law cited in paragraphs 119 to 122 and 147 above, an independent subcategory relevant for establishing proof of genuine use must, first, reflect as faithfully and specifically as possible the goods or services for which the trade mark has actually been used and, secondly, be coherent and homogeneous and be the result of a division which is significant and not arbitrary.
155    It follows that, in defining an independent subcategory, EUIPO cannot be required to limit itself to the indications of goods and services expressly included in the Nice Classification. Such a limitation would risk undermining the requirements of fidelity and coherence in defining an independent subcategory, referred to in paragraph 154 above.
156    Therefore, it is for EUIPO, when defining an independent subcategory of goods or services for which the mark has actually been used, to comply with those requirements of fidelity and coherence, but without being limited by the indications of the Nice Classification.
157    In the present case, in the light of those requirements of fidelity and coherence, the Board of Appeal was therefore fully entitled to define subcategories of services such as the ‘commercial administration of the licensing of software of others’ in Class 35 and the ‘provision and rental of telecommunications facilities and equipment’ in Class 38.
158    Moreover, it must be noted that, first, the services of ‘commercial business management’ and ‘commercial administration’ in Class 35 covered by the contested mark include the subcategories ‘office machines [and equipment] rental’ (code 350013) and ‘commercial administration of the licensing of software of others’ in respect of which genuine use of that mark has been proved. Secondly, the ‘telecommunications’ services in Class 38 covered by that trade mark include the subcategory ‘provision and rental of telecommunications facilities and equipment’ in respect of which genuine use of that mark has been proved.
159    The Board of Appeal was therefore right to hold that genuine use of the contested mark had been proved in respect of the services of ‘office machines [and equipment] rental’ and ‘commercial administration of the licensing of software of others’ in Class 35, as well as in respect of the services of ‘provision and rental of telecommunications facilities and equipment’ in Class 38.
160    Lastly, in so far as the applicant relies on paragraph 61 of the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, also known as ‘the IP Translator judgment’, EU:C:2012:361), it is sufficient to recall that the Court of Justice stated, in paragraphs 29 and 30 of the judgment of 16 February 2017, Brandconcern v EUIPO and Scooters India (C‑577/14 P, EU:C:2017:122), that the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), specified only the requirements relating to new applications for registration as EU trade marks and therefore did not concern trade marks which had already been registered at the date of delivery of the latter judgment. The Court of Justice inferred therefrom, in paragraph 31 of the judgment of 16 February 2017, Brandconcern v EUIPO and Scooters India (C‑577/14 P, EU:C:2017:122), that it therefore could not be considered that the Court of Justice, by the judgment of 19 June 2012, Chartered Institute of Patent Attorneys
(C‑307/10, EU:C:2012:361), sought to question the validity of the approach set out in Communication No 4/03 of the President of EUIPO, of 16 June 2003, concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, as regards trade marks registered before the delivery of that judgment (see judgment of 11 October 2017, EUIPO v Cactus, C‑501/15 P, EU:C:2017:750, paragraph 38 and the case-law cited).
161    Similarly, in so far as the applicant relies on Article 33(5) of Regulation 2017/1001, it is sufficient to note that that provision, in accordance with Article 212 of that regulation, entered into force on 1 October 2017 and therefore does not apply to trade marks registered before that date, such as the contested mark.
162    In any event, the Court finds that neither the application of paragraph 61 of the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361) nor the application of Article 33(5) of Regulation 2017/1001 is such as to invalidate the assessment of genuine use of the contested mark in the present case, with the result that reliance upon them is ineffective.
163    In particular, it must be noted that the subcategories ‘office machines [and equipment] rental’ (code 350013) and ‘commercial administration of the licensing of software of others’, as well as the subcategory ‘provision and rental of telecommunications facilities and equipment’, in respect of which genuine use of the contested mark has been proved, clearly fall within the general indications of, respectively, ‘business management’ and ‘commercial administration’ for Class 35, as well as ‘telecommunications’ for Class 38 (see paragraph 158 above).
164    The applicant’s claim that the general headings of the mark as registered do not comply with the requirement of clarity and precision is also ineffective as regards Classes 35 and 38, since the proof of genuine use in the present case relates specifically to the subcategories of services defined by the Board of Appeal and not to the general indications for those classes.
165    Moreover, it should be noted that the general indications which were adopted by the Board of Appeal for the proof of genuine use (such as ‘computer and software design and development’ services in Class 42) are, in the light of their wording, sufficiently clear and precise (see, by analogy, judgment of 19 June 2012, Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraph 56).
166    The applicant’s arguments in that regard must therefore be rejected.
167    The Court finds that the Board of Appeal was correct in finding genuine use of the contested mark for the subcategories of services in Classes 35, 38 and 42 referred to in point 1 of the operative part of the contested decision and, in point 2 of the operative part of that decision, in rejecting the application for revocation in respect of those services.
168    The second and third pleas must therefore be rejected as unfounded.
169    In the light of all the foregoing considerations, the action must be dismissed in its entirety.
IV.    Costs
170    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.
171    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.
172    By contrast, since EUIPO has requested that the applicant be ordered to pay the costs only in the event that a hearing is convened, EUIPO must be ordered, in the absence of a hearing, to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Fractal Analytics, Inc. to pay the costs incurred by Fractalia Remote Systems, SL and to bear its own costs;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Costeira
Kancheva
Tichy-Fisslberger
Delivered in open court in Luxembourg on 16 October 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
Table of contents
I. Background to the dispute
II. Forms of order sought
III. Law
A. Preliminary considerations
1. Admissibility of the first head of claim in the application
2. The differences between paragraph 89 of the contested decision and point 1 of the operative part of that decision
B. The first plea in law, alleging infringement of the combined provisions of Article 27(4) of Delegated Regulation 2018/625 and Article 58(1)(a) of Regulation 2017/1001, read in conjunction with Article 19(1) of Delegated Regulation 2018/625
1. The first part of the plea, alleging an error of law resulting from the application of the requirements of Article 27(4) of Delegated Regulation 2018/625 and not of stricter rules on revocation
2. The second part of the plea, alleging an error of assessment concerning compliance with the requirements laid down by Article 27(4) of Delegated Regulation 2018/625
C. The second and third pleas in law, alleging infringement of Article 58(1)(a) of Regulation 2017/1001 and Article 10(3) of Delegated Regulation 2018/625
1. The period of use of the contested mark
2. The place of use of the contested mark
3. The extent of use of the contested mark
4. The nature of use of the contested mark
(a) Use of the contested mark as a trade mark
(b) Use of the contested mark as registered or in an acceptable variant which does not alter its distinctive character
(c) Use of the contested mark in relation to the services for which it is registered
(1) The need to define the use of the contested mark by subcategories of services
(2) The assessment of the evidence of genuine use of the contested mark for certain subcategories of services
(3) The comparison between the subcategories of services used and the specification of the services covered by the contested mark
IV. Costs
*      Language of the case: English.