JUDGMENT OF THE GENERAL COURT (Second Chamber)
24 September 2025 (*)
( EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark DIGI – Earlier EU figurative mark DIGI – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Genuine use of the earlier mark – Article 42(2) of Regulation No 207/2009 – Obligation to state reasons – Article 94(1) of Regulation (EU) 2017/1001 )
In Case T‑196/24,
Digi International, Inc., established in Hopkins, Minnesota (United States), represented by M. Hawkins, T. Dolde and C. Zimmer, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Teraoka Seiko Co. Ltd, established in Tokyo (Japan),
THE GENERAL COURT (Second Chamber),
composed, at the time of the deliberations, of A. Marcoulli (Rapporteur), President, W. Valasidis and L. Spangsberg Grønfeldt, Judges,
Registrar: J. Čuboň, Administrator,
having regard to the written part of the procedure,
further to the hearing on 19 March 2025,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Digi International, Inc., seeks the annulment and alteration of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 January 2024 (Case R 1906/2022-1) (‘the contested decision’).
Background to the dispute
2        On 3 March 2016, the applicant designated the European Union in its international registration of the following figurative sign:
3        The goods and services for which the protection of the international registration in question in the European Union was sought are in Classes 9, 38 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the description in paragraph 1 of the contested decision.
4        The international registration was notified to EUIPO on 29 December 2016 and was published in the European Union Trade Marks Bulletin
No 2016/248 of 30 December 2016.
5        On 28 April 2017, Teraoka Seiko Co. Ltd (‘the opponent’) filed a notice of opposition to registration of the mark applied for in respect of all of the goods and services covered by that mark.
6        The opposition was based on three earlier marks, namely, first, the EU mark filed on 30 October 2003 and registered on 4 October 2005 under number 3481199 (‘the earlier EU mark’), second, the Portuguese mark filed on 30 November 1990 and registered on 15 March 1993 under number 269438, and, third, the Portuguese mark filed on 19 April 1991 and registered on 5 August 1998 under number 273093, all three relating to the figurative sign reproduced below:
7        The earlier EU mark covered goods in Classes 7 and 9, corresponding, for each of those classes, to the following description:
–        Class 7: ‘Label printer; cassette-loading label printer; bar code printer; label printer with electronic scale; automatic weigh-price labelling machine and instrument; automatic labelling machine and instrument with conveyor belt; wrapping apparatus; wrapping machine and instrument with electronic weighing apparatus; integrated automatic weighing, wrapping and labelling machine and instrument’;
–        Class 9: ‘Scale; electronic scale; price computing scale; electronic combination scale; digital counting scale; electronic scale with printer; point of sales system; electronic cash register’.
8        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended.
9        On 30 September 2019, the applicant requested that the opponent furnish proof of use of the earlier marks.
10      Further to that request, EUIPO invited the opponent to furnish proof of genuine use of the earlier marks. The opponent complied with that request within the time limit set.
11      On 29 July 2022, the Opposition Division rejected the opposition in respect of all the goods and services at issue on the ground that the evidence submitted by the opponent was insufficient to prove that the earlier marks had been put to genuine use during the period between 12 November 2010 and 11 November 2015.
12      On 28 September 2022, the opponent filed a notice of appeal with EUIPO against the Opposition Division’s decision.
13      By the contested decision, the Board of Appeal upheld the appeal in part and annulled the decision of the Opposition Division. In particular, the Board of Appeal found that genuine use of the earlier EU mark had been proved in respect of most of the goods at issue for the period between 12 November 2010 and 11 November 2015 (‘the relevant period examined’) and dismissed the appeal as regards electronic cash registers and point of sale systems in Class 9 other than self-checkout apparatus, and as regards the earlier national marks. The Board of Appeal then remitted the case to the Opposition Division for a decision on the opposition based on the earlier EU mark.
Forms of order sought
14      The applicant claims, in essence, that the Court should:
–        annul the contested decision in so far as it upheld the opponent’s appeal;
–        alter the contested decision and reject the opposition to the mark applied for in its entirety;
–        order EUIPO to pay the costs.
15      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
Law
16      The applicant relies on three pleas in law, alleging, in essence, first, distortion of evidence, second, failure to state reasons and, third, incorrect assessment of the evidence.
17      At the outset, it appears appropriate to state that, at the hearing, the applicant agreed with EUIPO that the relevant period for the examination of genuine use of the earlier EU mark should have been fixed between 30 December 2011 and 29 December 2016. It should be noted, as the parties have done, that the Board of Appeal should have found that that period corresponded to the five years preceding the publication of the international registration in the European Union Trade Marks Bulletin. By taking into account, instead, the five years preceding the priority date, the Board of Appeal erred in setting the relevant period for the examination of genuine use. Notwithstanding that error, and without the Court having, at that stage, to rule on the impact of that error on the legality of the contested decision, it is appropriate to begin by examining the second plea in law, alleging failure to state reasons. That examination will be carried out taking into account the relevant period examined.
18      In the context of that plea, the applicant claims that the Board of Appeal failed to fulfil its obligation to state reasons. It submits, in essence, that the Board of Appeal did not carry out an overall assessment of the evidence and that the reasons why it found that that evidence enabled it to conclude that the earlier mark had been put to genuine use are not apparent from the contested decision.
19      EUIPO disputes the applicant’s arguments.
20      According to settled case-law, a finding of an absence of reasons or inadequacy of the reasons stated goes to an issue of infringement of essential procedural requirements, within the meaning of Article 263 TFEU, and, as it involves a matter of public policy, must be raised by the EU Courts of their own motion (judgments of 2 April 1998, Commission v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraph 67, and of 15 September 2021, Residencial Palladium v EUIPO – Palladium Gestión (PALLADIUM HOTELS & RESORTS), T‑207/20, EU:T:2021:587, paragraph 64).
21      Accordingly, where the situation arises, the Court must raise of its own motion a failure to state reasons for the decision the legality of which is being challenged before it, without confining itself to examining solely the arguments put forward by the applicant.
22      However, in fulfilling its duty to raise of its own motion a failure to state reasons, the EU Courts must have regard to the rule that the parties should be heard (see, to that effect, judgments of 13 December 2013, Hungary v Commission, T‑240/10, EU:T:2013:645, paragraph 71, and of 12 December 2017, Sony Computer Entertainment Europe v EUIPO – Vieta Audio (Vita), T‑35/16, not published, EU:T:2017:886, paragraph 48).
23      In the present case, in addition to the fact that the applicant formally challenged the statement of reasons for the contested decision as regards the aspects referred to in paragraph 18 above, the parties were heard, at the hearing, in order to determine whether the statement of reasons regarding the examination of the time, nature and extent of use was sufficient. In particular, it was discussed whether the contested decision made it possible to identify the items of evidence on which the Board of Appeal relied in the examination of each of those factors and to discern the reasoning which it followed in order to find that there had been genuine use.
24      Accordingly, the Court will examine of its own motion, as regards points not specifically raised by the applicant, whether the obligation to state reasons for the contested decision has been complied with in the present case.
25      Under the first sentence of Article 94(1) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), decisions of EUIPO must state the reasons on which they are based. According to settled case-law, that obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU, which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited), and its objective is to allow those concerned to know the reasons for the measures adopted in order to be able to defend their rights and to enable the EU Courts to review the legality of the decision (see judgment of 14 February 2019, Torro Entertainment v EUIPO – Grupo Osborne (TORRO Grande MEAT IN STYLE), T‑63/18, not published, EU:T:2019:89, paragraph 70 and the case-law cited).
26      It is also apparent from the case-law that the Boards of Appeal cannot, however, be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent court with sufficient material for it to exercise its power of review (see judgment of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 55 and the case-law cited).
27      In addition, the statement of reasons for a decision must be logical and, in particular, contain no internal inconsistency that would prevent a proper understanding of the reasons underlying that decision (see judgment of 21 February 2018, Laboratoire Nuxe v EUIPO – Camille and Tariot (NYouX), T‑179/17, not published, EU:T:2018:89, paragraph 21 and the case-law cited).
28      It is necessary to examine whether the Board of Appeal’s reasoning concerning the examination of the time, nature and extent of genuine use satisfies those criteria.
The statement of reasons for the contested decision as regards the time of use
29      The Board of Appeal concluded that the evidence satisfied the requirement as to the time of use. In order to reach that conclusion, first of all, in paragraph 30 of the contested decision, the Board of Appeal stated that the undated items of evidence and the items of evidence not covered by the relevant period examined could be taken into account, in so far as they supported and corroborated the items of evidence falling within the relevant period examined. Next, in paragraph 31 of the contested decision, the Board of Appeal stated that ‘this is the case here, the invoices issued to the opponent are also dated within the relevant period [examined]. The remaining invoices are dated closely to the relevant … period [examined] (only [a] few months later, [in] 2016).’ Lastly, in paragraph 32 of the contested decision, it stated that, although certain items of evidence were not dated, it could not be ruled out that an accumulation of items of evidence may allow the 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.
30      As a preliminary point, it should be noted that, in order to enable the Court to exercise its power of review, the Board of Appeal must identify precisely the items of evidence on which it based its findings. In that context, the Board of Appeal must clearly identify the items of evidence on which its findings as to the time of use are based and those which corroborate or support other items of evidence.
31      In the present case, at the outset, it should be noted that, in paragraphs 30 and 32 of the contested decision, the Board of Appeal did not provide any indication as to the items evidence to which it was referring when it mentioned, in general terms, items of evidence that ‘fall within the relevant period [examined]’, ‘undated’ items of evidence and items of evidence which are ‘dated outside of the relevant period [examined]’. The Board of Appeal referred only to ‘the invoices issued to the opponent’ and the ‘remaining invoices’ in paragraph 31 of the contested decision. It is therefore not clear from the contested decision to which type of evidence the Board of Appeal was referring in addition to those invoices, which prevents the Court from verifying whether it has indeed established that the evidence was sufficient to satisfy the time of use requirement.
32      It is true that paragraph 7 of the contested decision, which lists and describes the various items of evidence submitted by the opponent during the administrative proceedings, refers both to evidence which falls within the relevant period examined (see Documents 5 to 9 and 13 to 15 in EUIPO’s case file) and to evidence prior (see Documents 1 to 3 in EUIPO’s case file) and subsequent to that period (see Documents 4, 10 to 12 and 16 to 19 in EUIPO’s case file). In addition, that paragraph refers to other items of evidence, which are undated (Documents 22 to 55 in EUIPO’s case file), although it may be found, on the basis of EUIPO’s case file, that, with the exception of Document 26, that evidence actually bears the date of 18 or 19 February 2020.
33      In that context, first of all, given the total lack of precision of paragraph 30 of the contested decision, it is not apparent from that decision which of the documents listed in paragraph 7 the Board of Appeal might actually have referred to when mentioning the items of evidence ‘that fall within the relevant period [examined]’ and the items of evidence ‘which are dated outside of the relevant period [examined]’.
34      Next, it is also not possible to determine with certainty which ‘undated’ items of evidence were possibly taken into account by the Board of Appeal. As has already been noted in paragraph 32 above, almost all Documents 22 to 55, which are undated in paragraph 7 of the contested decision, are in fact dated 18 or 19 February 2020. Even if the Board of Appeal took the view that Documents 22 to 55 were undated, it is not apparent from the contested decision which of those documents it possibly referred to in paragraphs 30 and 32 of the contested decision.
35      Lastly, even though, in paragraph 31 of the contested decision, the Board of Appeal referred to invoices dating from the relevant period examined and to invoices from 2016, it is not clear from the contested decision whether the Board of Appeal found that those invoices from 2016 demonstrated in themselves the time of use or whether they merely corroborated or supported other evidence. The mere reference, in paragraph 30 of the contested decision, to the case-law allowing evidence which does not fall within the relevant period to be taken into account in order to corroborate or support evidence relating to that period does not enable the Court to understand whether those invoices from 2016, which the Board of Appeal described as being dated closely to the relevant period examined, were used as proof of use or were used as such to corroborate or support other evidence. The Court cannot proceed by assumptions in its review of the legality of the contested decision.
36      Consequently, in the light of the absence of any precise indication of the type of evidence which the Board of Appeal took into account in its examination of the time of use, and of the fact that the Board of Appeal did not clarify the basis on which each of the items of evidence was taken into account, it must be held that the contested decision is vitiated by a failure to state reasons in so far as the Court is not in a position to review the merits of the Board of Appeal’s findings as to the time of use.
The statement of reasons for the contested decision as regards the nature of use
37      The Board of Appeal concluded that the requirement relating to the nature of use of the earlier EU mark and, more specifically, to its use in relation to the goods at issue was satisfied for most of those goods. In order to reach that conclusion, in paragraphs 53 to 58 of the contested decision, it found that the evidence in the administrative file and, more specifically, a reproduction of a page of the opponent’s website including images of its goods and their names, which was taken from Document 31 in EUIPO’s case file, demonstrated the nature of use.
38      In the first place, it should be noted that, in paragraphs 53 to 56 of the contested decision, the Board of Appeal stated in general terms that it was apparent from the evidence in the administrative file – without, however, specifying to which specific items of evidence it was referring – that the opponent had proved use of the earlier EU mark for printers, wrapping and weighing apparatus, and integrated automatic weighing, wrapping and labelling machines and instruments in Class 7, as well as for scales and self-check-out apparatus in Class 9. Although it is apparent from those paragraphs that the Board of Appeal took Document 31 into account, no indication is provided as to the other items of evidence on which it relied.
39      In addition, it does not appear that the Board of Appeal took Document 31 into account in the examination of all the goods in Classes 7 and 9. In paragraph 55 of the contested decision, as the applicant notes, when examining the nature of use in relation to scales in Class 9, the Board of Appeal did not refer to any of the images of scales in Document 31 as it did, in paragraph 54, for the goods in Class 7 and, in paragraph 56, for self-checkout apparatus in Class 9. In paragraph 55, it referred only to the evidence in the administrative file and, without providing further explanation, concluded that the opponent was using the earlier EU mark for various models of scales. It subsequently inferred therefrom that use had been shown for all the models of scales in question. The Board of Appeal’s reasoning therefore lacks precision and does not allow a clear inference to be drawn as to which items of evidence it relied on.
40      Although EUIPO referred, in its response and at the hearing, to the evidence on which, according to EUIPO, the Board of Appeal relied both for the examination of scales and for the examination of the other goods at issue, it is sufficient to note that such additional reasoning cannot be successfully relied on before the Court in order to perfect the reasoning in the contested decision. The reasoning for a measure must be provided to the person concerned by the measure before that person brings an action against it. Non-compliance with the duty to state reasons cannot be regularised by the fact that the person concerned becomes cognisant of the grounds of the measure during proceedings before the EU Courts. The possibility for an EU institution or body to plead such supplementary grounds in order to complete the grounds set out in the contested decision would undermine the rights of defence of the person concerned and his or her right to an effective judicial remedy, as well as the principle of equality of parties before the EU Courts (see judgment of 11 December 2014, CEDC International v OHIM – Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraphs 71 and 72 and the case-law cited).
41      In the second place, given that Document 31 is dated several years after the relevant period examined and given that the Board of Appeal stated, when examining the time of use, that evidence dated outside of that period could be taken into account in order to corroborate or support the evidence that does fall within that period, it should have clarified whether that evidence had actually been taken into account in order to corroborate or substantiate other evidence and, if so, which evidence, or whether it had been taken into account as such. However, nowhere in the contested decision did the Board of Appeal explain on what basis it had taken Document 31 into account.
42      If the Board of Appeal has taken Document 31 into account as such in order to prove the nature of use requirement for the goods in Class 7 and for self-checkout apparatus in Class 9, it must be noted that the reasoning which it followed is not clear from the contested decision. The statement of reasons in the contested decision on that point is too general and succinct, and appears to be limited to the assertion that the goods which appear in the images of that document are being offered by the opponent, advertised, and some of them marketed. The Board of Appeal added that use could also be inferred for certain goods which did not appear in the images because they were commercial variants of the other goods.
43      The Board of Appeal should have explained how, in its view, Document 31 shows that the goods were advertised or marketed. Consequently, it is not possible to determine how the Board of Appeal draws a link between that evidence and the finding that the goods were advertised and some of them were actually marketed. Similarly, although the Board of Appeal states that only certain goods have been marketed, it is not possible to identify those goods given that its assertions remain general.
44      Consequently, in view of the lack of precision regarding the evidence in the administrative file which the Board of Appeal took into account and the reasons why, in its view, Document 31 is sufficient to prove the nature of use, the Court is not in a position to review the Board of Appeal’s findings as to the nature of use. Therefore, it must be held that the contested decision is vitiated by a failure to state reasons in that regard.
The statement of reasons for the contested decision as regards the extent of use
45      The Board of Appeal found that the requirement relating to the extent of use of the earlier EU mark was also satisfied. First, in paragraph 67 of the contested decision, it found that the invoices and orders on file were samples, with the result that the overall sales of the goods at issue were in fact higher than those specifically referred to in those documents. Second, in paragraph 68 of the contested decision, the Board of Appeal relied on the fact that the invoices and orders were addressed, inter alia, to major retailers. According to the Board of Appeal, that was sufficient to presume that the opponent had made further sales to those major retailers.
46      Admittedly, the references to the ‘invoices’ in EUIPO’s case file could be interpreted as referring to all the invoices listed in paragraph 7 of the contested decision. Similarly, the references to the ‘orders’ in that file could be interpreted as including the orders contained in Documents 15 and 16 in EUIPO’s case file, even though those items are referred to as ‘price lists’ in paragraph 7 of the contested decision.
47      However, first, it should be noted that most of those invoices and orders do not fall within the relevant period examined (Documents 1 to 4, 10 to 12 and 16 in EUIPO’s case file). It is not specified whether that evidence was taken into account in itself in order to prove genuine use, on account of it being dated closely to that period, or whether it was taken into account in order to corroborate other items of evidence. Even if it had been taken into account solely in order to corroborate or substantiate other items of evidence, the Board of Appeal did not identify what those items of evidence would be and how they would be corroborated or substantiated. Accordingly, it is not stated whether, for example, that evidence confirms information contained in the items of evidence dated within the relevant period examined or whether it enables their content to be interpreted or substantiated.
48      Second, the invoices and orders also concern the provision of services in connection with the goods at issue (Documents 1 to 4 in EUIPO’s case file), the sale of ancillary goods such as spare parts or ‘etiquette blanche’ (Documents 9 and 11 to 16 in EUIPO’s case file) and the sale of other goods such as electronic shelf labels (Document 8 in EUIPO’s case file). However, the Board of Appeal did not explain to what extent evidence relating to goods or services other than the goods or services at issue could demonstrate, in the circumstances of the present case, the extent of use for the goods at issue. Similarly, the Board of Appeal did not state for which specific goods the sales of ancillary goods or other goods would be relevant.
49      Third, the Board of Appeal concluded that the extent of use had been demonstrated for all the goods at issue in respect of which the nature of use requirement had been proved. However, in its examination of the extent of use, it referred only to scales and label printers. In those circumstances, the reasons which led the Board of Appeal to reach a conclusion as to the extent of use in respect of the other goods, namely wrapping and weighing apparatus, and integrated automatic weighing, wrapping and labelling machines and instruments in Class 7 and self-checkout apparatus in Class 9, are not clear from the contested decision.
50      More specifically, the Board of Appeal’s reasoning is not readily apparent from the contested decision as regards self-checkout apparatus, because the only items of evidence cited in relation to those goods in that decision are the extracts from the opponent’s website, which were referred to during the examination of the nature of use, and the contested decision itself states, in paragraph 69, that those items of evidence do not provide information on the extent of use.
51      Consequently, the Board of Appeal’s findings as to the evidence and the reasons which led it to conclude that the extent of use of the earlier EU mark had been proved for certain goods are not apparent from the contested decision. Since this prevents the Court from reviewing the merits of the Board of Appeal’s findings as to the extent of use, it must be held that the contested decision is vitiated by a failure to state reasons in that regard.
52      Accordingly, the ambiguous and imprecise nature of the contested decision as regards three of the elements on which proof of genuine use must be based, namely the time, nature and extent of use, hinders its proper understanding, which prevents the Court from exercising its power of review in respect of that decision.
53      It follows from all of the foregoing that the contested decision must be annulled for failure to state reasons, without it being necessary to rule on the first and third pleas in law raised by the applicant and the consequences of the Board of Appeal’s error referred to in paragraph 17 above.
54      Furthermore, in so far as, by its second head of claim, the applicant requests, in essence, that the Court alter the contested decision, it should be noted that the power of the Court to alter decisions under Article 72(3) of Regulation 2017/1001 must, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72). In the present case, since the contested decision is affected by a failure to state reasons, the conditions for the exercise of the Court’s power to alter decisions are not satisfied, since the Court is not in a position to determine what decision the Board of Appeal was required to take. Accordingly, the second head of claim must be rejected.
Costs
55      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.
56      Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 January 2024 (Case R 1906/2022-1);
2.      Dismisses the action as to the remainder;
3.      Orders EUIPO to pay the costs.
Marcoulli
Valasidis
Spangsberg Grønfeldt
Delivered in open court in Luxembourg on 24 September 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.