JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
18 November 2015 (*) (1)
(Community trade mark — Invalidity proceedings — Community word mark VIGOR — Earlier Community figurative mark and earlier international figurative mark VIGAR — Admissibility of evidence of use submitted on a CD-ROM — Taking into account of additional evidence which was not submitted within the time-limit set — Genuine use of the earlier marks — Articles 15 and 57(2) of Regulation (EC) No 207/2009 — Form differing in elements which do not alter the distinctive character)
In Case T‑361/13,
Menelaus BV, established in Amsterdam (Netherlands), represented by A. von Mühlendahl and H. Hartwig, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other parties to the proceedings before the Board of Appeal of OHIM, interveners before the General Court, being
Vicente Garcia Mahiques and Felipe Garcia Mahiques, residing in Jesus Pobre (Spain), represented by E. Pérez Crespo,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 23 April 2013 (Case R 88/2012-2), relating to invalidity proceedings between, on the one hand, Vicente Garcia Mahiques and Felipe Garcia Mahiques and, on the other hand, Menelaus BV,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis, President, O. Czúcz (Rapporteur) and A. Popescu, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 9 July 2013,
having regard to the response of OHIM lodged at the Court Registry on 25 October 2013,
having regard to the response of the interveners lodged at the Court Registry on 8 November 2013,
having regard to the written questions put to the parties by the General Court and the replies to those questions lodged at the Court Registry on 10 and 11 December 2014,
further to the hearing on 21 January 2015,
gives the following
Judgment
Background to the dispute
1        On 12 April 2005, the applicant, Menelaus BV, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 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 Community trade mark (OJ 2009 L 78, p. 1)).
2        Registration as a mark was sought for the word sign VIGOR (‘the contested mark’).
3        The goods in respect of which registration was sought are in, inter alia, Class 21 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Small portable household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; instruments and material for cleaning purposes; steelwool; glassware, porcelain and earthenware, articles for cleaning purposes; cleaning cloths, sponges, brushes, cleaning cloths of wool, cotton, synthetic fibres, fur and lambskin, cleaning wipes with or without cleaning products, wet wipes being wipes for cleaning’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 50/2005 of 12 December 2005.
5        The contested mark was registered on 11 January 2008 under the number 4 386 371.
6        On 23 December 2010, the interveners, Vicente Garcia Mahiques and Felipe Garcia Mahiques, filed an application for a declaration of invalidity directed against the contested mark, on the basis of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation. That application was directed against all the goods in Class 21 listed in paragraph 3 above.
7        The interveners’ application was based on the following earlier rights:
–        the earlier Community figurative mark reproduced below, which was filed on 15 February 1999 and registered on 10 February 2000 under the number 1 075 910 for goods in Class 21 corresponding to the following description: ‘All kinds of brushes and brush goods, for cleaning and hygiene purposes; mops, brooms, buckets, basins (bowls), refuse containers, sponges, clothes-pegs, feather-dusters, combs and cloths for washing floors’:
–        the international registration of the figurative mark reproduced below, applied for and obtained on 26 October 1995 under the number 646 636, designating Benelux, Germany, France, Italy, Austria, Portugal and Romania, in respect of goods in Class 21 corresponding to the following description: ‘Utensils and containers for household and kitchen (not of precious metal or coated therewith), combs and sponges, brushes (except paint brushes), brush-making materials, cleaning equipment, steel wool, glassware, porcelain and earthenware not included in other classes, unworked or semi-worked glass (except building glass)’:
8        On 13 January 2011, the applicant requested the interveners to prove genuine use of the earlier marks.
9        By decision of 10 November 2011 (‘the decision of the Cancellation Division’), the Cancellation Division rejected the application for a declaration of invalidity in its entirety, finding that genuine use of the earlier marks had not been proved to the requisite legal standard.
10      On 9 January 2012, the interveners filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.
11      By decision of 23 April 2013 (‘the contested decision’), the Second Board of Appeal partially upheld the appeal and partially annulled the decision of the Cancellation Division to the extent that that decision had rejected the application for a declaration of invalidity as regards all of the goods in Class 21, with the exception of ‘brush-making materials’ and ‘glassware, porcelain and earthenware’. It found, in essence, that genuine use of the earlier marks had been proved in respect of all the goods covered by the earlier Community trade mark and some of the goods covered by the earlier international registration, and that there was a likelihood of confusion in respect of all of the goods in Class 21 covered by the contested mark, with the exception of ‘brush-making materials’ and ‘glassware, porcelain and earthenware’.
Forms of order sought
12      The applicant claims, in essence, that the Court should:
–        annul the contested decision;
–        dismiss the interveners’ appeal against the decision of the Cancellation Division;
–        order OHIM and the interveners to pay the costs, including those incurred by the applicant before the Board of Appeal.
13      OHIM and the interveners contend, in essence, that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      The applicant puts forward six pleas in law in support of the action. The first plea alleges, in essence, infringement of procedural rules concerning the submission of evidence of use. The second plea alleges, in essence, that the use of a variant altering the distinctive character was incorrectly taken into account. The third plea alleges an absence of proof of use for all the goods for which the earlier Community trade mark has been registered. The fourth plea alleges, in essence, an absence of proof of genuine use for all the goods for which the earlier international registration was obtained. The fifth plea alleges, in essence, an absence of entitlement to assert the earlier international registration. The sixth plea alleges, in essence, an error in accepting evidence of genuine use submitted for the first time before the Board of Appeal.
15      It is appropriate to begin by examining the first plea. The Court considers it expedient to examine the sixth plea next before examining the second, third, fourth and fifth pleas, it being, moreover, appropriate to examine the latter two pleas together. Consequently, the Court will deal first with the pleas which make it possible to examine whether the Board of Appeal’s findings concerning the proof of use are well founded as far as the earlier Community trade mark is concerned before examining which inferences are to be drawn from that examination in respect of the pleas relating to the earlier international registration. In that context, it must be pointed out at the outset that since the earlier Community trade mark and the earlier international registration are visually identical, the Board of Appeal, in the context of the examination of the proof of use, refers generally, without distinction, to ‘the earlier mark’. The Court will interpret those references as applying to the earlier Community trade mark unless it is obvious that it is exclusively the earlier international registration that is being referred to.
The first plea, alleging, in essence, infringement of procedural rules concerning the submission of evidence of use
16      The applicant claims, in essence, that the use of two CD-ROMs for the submission of evidence before the Cancellation Division and of one additional CD-ROM before the Board of Appeal does not comply with Rule 22(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, read in conjunction with Rules 79 and 79a thereof. It submits that that evidence is therefore inadmissible, as was previously found by another Board of Appeal of OHIM in another case.
17      OHIM, supported by the interveners, maintains, in essence, first, that there is no limit on the methods and means of proving genuine use of a mark and, secondly, that the procedural rules at issue do not exclude such a submission.
18      In that regard, it is clear from recital 10 in the preamble to Regulation No 207/2009 that the legislature considered that there was no justification for protecting an earlier trade mark except where the mark had actually been used. In keeping with that recital, Article 57(2) and (3) of Regulation No 207/2009 provides that the proprietor of a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory in which it is protected during the period of five years preceding the date of filing of the application for a declaration of invalidity and, as the case may be, during the five-year period preceding the date on which the Community trade mark application was published.
19      It is apparent from paragraphs 6 and 20 of the contested decision that, in response to the applicant’s request for proof of genuine use of the earlier marks, the interveners submitted to the Cancellation Division two CD-ROMs containing, inter alia, photographs, invoices, catalogues and printouts of web pages. As the Cancellation Division, however, took the view that genuine use had to be established cumulatively in respect of the two periods referred to in Article 57(2) of Regulation No 207/2009 — namely, in the present case, the period running from 12 December 2000 to 11 December 2005 inclusive (five years prior to the publication of the Community trade mark application, ‘the first period’) and that running from 23 December 2005 to 22 December 2010 inclusive (five years prior to the date of filing of the application for a declaration of invalidity, ‘the second period’) — and that no proof had been submitted as regards the first period, with the result that the application for a declaration of invalidity had to be rejected, the interveners submitted, in the appeal proceedings before the Board of Appeal, a new CD-ROM that contained, among other documents, several invoices relating to the years 2001 to 2010, as is stated in paragraph 40 of the contested decision.
20      The Board of Appeal took all the items of evidence submitted into account. As stated in paragraph 22 of the contested decision, the applicant’s argument criticising the fact that the evidence was submitted in CD-ROM format because that made it extremely difficult to examine that evidence was rejected by the Board of Appeal, which found, in essence, that that argument was not sufficient to invalidate the probative value of the content of the CD-ROMs at issue.
21      In that regard, it must be pointed out at the outset that, in response to a written question from the Court and at the hearing, OHIM confirmed that it was not maintaining, against this plea in law, the plea of inadmissibility mentioned in the response, namely that the applicant could not put forward for the first time before the Court the inappropriate nature of submitting evidence by means of a CD-ROM.
22      In any event, the Court states that it holds the plea to be admissible. Since the Board of Appeal applied the rules of procedure in question in agreeing to examine the items of evidence submitted on CD-ROMs, that issue is part of the proceedings before it. Consequently, the applicant may put forward that plea for the first time before the Court since the examination of that plea is not contrary to Article 135(4) of the Rules of Procedure of the General Court of 2 May 1991, according to which the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal.
23      As regards the substance, Rule 22 of Regulation No 2868/95, which is applicable in invalidity proceedings, as is apparent from Rule 40(6) of that regulation, states in paragraph 4 thereof that ‘[t]he evidence shall be filed in accordance with Rules 79 and 79a and shall, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing’.
24      It is apparent from that provision that the list of pieces of evidence (packages, catalogues, invoices, etc.) that it contains is not exhaustive given that it states that those pieces of evidence ‘shall, in principle, be confined’ to the list of examples mentioned.
25      Furthermore, the case-law confirms that there is no limit on the methods and means of proving genuine use of a mark (judgment of 15 September 2011 in centrotherm Clean Solutions v OHIM — Centrotherm Systemtechnik (CENTROTHERM), T‑427/09, ECR, EU:T:2011:480, paragraph 46). It is apparent from that judgment that the Court wished to point out, in essence, that there were many means of proving use of a mark, in response to the argument of the intervener in that case relating to the difficulty, in view of the specific nature of the market and the business customers concerned, of gathering pieces of evidence that were typical, such as photographs or advertisements.
26      Beyond the context of the latter case, it is, however, clear that pieces of evidence like audio or video material, such as advertisements broadcast by radio or on television, are not precluded. However, they are generally available on a data carrier like a CD-ROM or a USB stick and cannot be submitted on paper or in a scanned file of such a document.
27      The same does not apply to the disputed pieces of evidence in the present case, such as invoices or a catalogue (see paragraph 19 above), which could have been submitted on paper or by means of a file containing scanned documents, but which were stored on a CD-ROM for submission.
28      Even though it is true that the principles referred to in paragraphs 23 to 26 above do not preclude evidence in the form of a CD-ROM, the question raised concerns, above all, the methods of submitting evidence to OHIM.
29      However, the provisions of Regulation No 2868/95 which relate specifically to the submission of communications to OHIM and on which the applicant relies do not preclude the submission of evidence on a CD-ROM, contrary to what the applicant claims.
30      In that regard, it is apparent from Rule 22(4) of Regulation No 2868/95, which is quoted in paragraph 23 above, that evidence is to be filed in accordance with Rules 79 and 79a of that regulation.
31      Rule 79 of Regulation No 2868/95 states:
‘Applications for the registration of a Community trade mark as well as any other application provided for in the Regulation and all other communications addressed to [OHIM] shall be submitted as follows:
(a)      by submitting a signed original of the document in question at [OHIM], such as by post, personal delivery, or by any other means;
(b)      by transmitting a document by telecopier in accordance with Rule 80;
…
(d)      by transmitting the contents of the communication by electronic means in accordance with Rule 82.’
32      As OHIM rightly states, the present case is not covered by Rule 79(b) of Regulation No 2868/95, which concerns transmissions by fax machine, or by Rule 79(d) of that regulation, which concerns transmissions by electronic means, as the CD-ROMs at issue were submitted as an annex to a signed document sent by post. It is Rule 79(a) of Regulation No 2868/95 which applies to such a situation, without, however, limiting the types of media which make it possible to store evidence submitted as an annex to such submissions.
33      That analysis is not inconsistent with Rule 79a of Regulation No 2868/95 which states, as regards the annexes to the written communications referred to in Rule 79(a), that ‘[w]here a document or an item of evidence is submitted in accordance with Rule 79 point (a) by a party in a proceeding before [OHIM] involving more than one party to the proceedings, the document or item of evidence, as well as any annex to the document, shall be submitted in as many copies as the number of parties to the proceedings’. In the present case, compliance with Rule 79a was ensured by the submission, at the request of OHIM, of two copies of the CD-ROMs at issue, one copy of which was sent to the applicant.
34      Admittedly, it is conceivable that the submission of evidence on a CD-ROM containing a number of electronic files may make the analysis of the items of evidence which have been submitted in that way more difficult than that of paper media or a straightforward file containing a scanned version of documents, which makes it possible for them easily to be reproduced identically by printing.
35      In that regard, it is for the parties submitting evidence of use on CD-ROMs to make sure that the legibility of that evidence does not undermine its evidential value.
36      In the present case, the applicant did not put forward any infringement of its rights of defence which could have been caused by the method of submission of the evidence in question. Furthermore, as the Board of Appeal rightly found (see paragraph 20 above), the probative value of the content of the CD-ROMs is not called in question as the scanned documents stored in the electronic files which they contain are identifiable and legible.
37      As regards, lastly, the applicant’s argument relating to the decision of the Fourth Board of Appeal of OHIM of 26 October 2012 (Case R 1259/2011-4, Miquel Alimentcio Grup, SA v Aldo GmbH & Co. KG (GOURMET)) in which the evidence of use submitted on a CD-ROM was rejected as contrary to the applicable provisions on the ground, in essence, that it was a method of submission which was not provided for by those provisions, it must be borne in mind that the Court is not bound by OHIM’s decision-making practice.
38      Furthermore, the case-law confirms that, although, in the light of the principles of equal treatment and of sound administration, OHIM must take into account the decisions already taken and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality (see, by analogy, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 75).
39      It is apparent from the foregoing analysis that the Board of Appeal’s approach in the present case complies with the applicable law, with the result that the applicant cannot reasonably rely on a contrary decision of another Board of Appeal.
40      It follows from the foregoing that the first plea must be rejected.
The sixth plea alleging, in essence, an error in accepting evidence of genuine use submitted for the first time before the Board of Appeal
41      The applicant submits, in essence, that, in finding new evidence of genuine use submitted by the interveners for the first time before it admissible, the Board of Appeal did not make appropriate use of the discretion conferred on it by Article 76(2) of Regulation No 207/2009. According to the applicant, the interveners did not submit to the Cancellation Division any proof of genuine use relating to the first period and they were therefore time-barred from submitting new evidence concerning that period before the Board of Appeal. The applicant maintains that the conditions for the exercise of the Board of Appeal’s discretion as to whether or not to accept additional evidence submitted out of time were not therefore satisfied in the present case.
42      OHIM, supported by the interveners, disputes those arguments. It states that, provided that the evidence originally filed within the time-limit set was considered relevant for the purposes of establishing genuine use of the earlier Community trade mark, the Board of Appeal is entitled to make use of the discretionary power conferred by Article 76(2) of Regulation No 207/2009 in order to accept additional evidence at a later stage of the proceedings, which it did in the present case. It adds, moreover, in essence, that even if the evidence originally submitted before the Cancellation Division were entirely irrelevant for the purpose of establishing genuine use of the mark during the first period, this would not have deprived the Board of Appeal of the possibility of exercising its discretionary power to accept additional evidence if evidence had originally been submitted in respect of the second period, since Rule 40(6) of Regulation No 2868/95 does not make a distinction between the two periods.
43      In the contested decision, the Board of Appeal found that, taking into account the evidence submitted before the Cancellation Division within the time-limit set, genuine use of the earlier Community trade mark had been proved in respect of the second period on the basis, in essence, of invoices covering the years 2006 to 2010 issued to various undertakings in the European Union and of catalogues and certain printouts of web pages (paragraphs 20, 24, 25 and 32). It took the view, however, that that evidence did not make it possible to prove such use in respect of the first period because the printouts of web pages showing that Casa Vigar SL — a company of which the interveners are the managers and the owners — began its business activity in the 1980s, a catalogue dated 2003 and the illustration of a truck which could be identified as belonging to a period prior to 2000 were not sufficient to determine the extent of the use of the marks that might have taken place within that period (paragraph 34).
44      Next, it stated that the further evidence of genuine use submitted by the interveners during the appeal proceedings was clearly belated because it was filed after the expiry of the time-limit set by OHIM pursuant to Rule 40(6) of Regulation No 2868/95 (paragraph 35).
45      The Board of Appeal then found that, even though the evidence produced before the Cancellation Division mainly concerned the second period, there was some indication that the earlier mark had been used before that period, although the extent of such use could not be established (paragraph 39).
46      Lastly, it found, referring to its discretionary power, that it was appropriate to take into account the additional evidence submitted before it, in essence, because that evidence completed that filed before the Cancellation Division, in particular as regards the first period (paragraphs 40 and 41).
47      In that regard, it should be borne in mind that Article 76(2) of Regulation No 207/2009 provides that OHIM may disregard facts or evidence which are not submitted in due time by the parties concerned.
48      It follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of Regulation No 207/2009 and that OHIM is in no way prohibited from taking account of facts and evidence which are thus submitted or produced late, that is to say, outwith the time-limit set by the Cancellation Division and, as the case may be, for the first time before the Board of Appeal (see, to that effect, judgments of 13 March 2007 in OHIM v Kaul, C‑29/05 P, ECR, EU:C:2007:162, paragraph 42, and 18 July 2013 New Yorker SHK Jeans v OHIM, C‑621/11 P, ECR, EU:C:2013:484, paragraph 22).
49      In stating that OHIM ‘may’ decide to disregard facts and evidence submitted or produced out of time, Article 76(2) of Regulation No 207/2009 grants OHIM a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such facts and evidence into account (judgments in OHIM v Kaul, cited in paragraph 48 above, EU:C:2007:162, paragraphs 43 and 68, and New Yorker SHK Jeans v OHIM, cited in paragraph 48 above, EU:C:2013:484, paragraph 23).
50      Regarding, more specifically, the submission of evidence of genuine use of an earlier trade mark during invalidity proceedings, it must be pointed out that, although Article 57(2) of Regulation No 207/2009 provides that, if the proprietor of the Community trade mark so requests, the proprietor of an earlier Community trade mark, being a party to the invalidity proceedings, is to furnish proof of genuine use of that earlier trade mark, failing which the application for a declaration of invalidity is to be rejected, that regulation does not contain any provision specifying the period within which such proof must be furnished.
51      By contrast, Rule 40(6) of Regulation No 2868/95 provides, in that regard, that, where such an application is made, OHIM is to invite the proprietor of the earlier mark to furnish proof of use of the mark or proof that there are proper reasons for non-use within such period as it may specify.
52      Next, it should be borne in mind that Rule 40(6) of Regulation No 2868/95 also states, in the second sentence thereof, that, if the proof of use of the mark is not provided within the time-limit set by OHIM, the application for a declaration of invalidity is to be rejected. Although it is admittedly apparent from the wording of that provision that, when no proof of use of the mark concerned is submitted within the time-limit set by OHIM, the application for a declaration of invalidity must automatically be rejected by OHIM, such a conclusion is not, on the other hand, inevitable when proof of use has indeed been submitted within that time-limit (see, by analogy, judgment in New Yorker SHK Jeans v OHIM, cited in paragraph 48 above, EU:C:2013:484, paragraph 28).
53      In such a case, and unless it appears that that evidence is irrelevant for the purposes of establishing genuine use of the mark, the proceedings are to run their course. Accordingly, OHIM is, inter alia, called upon, as provided by Article 57(1) of Regulation No 207/2009, to invite the parties, as often as necessary, to file observations on communications from the other parties or issued by itself. In such a situation, if the application for a declaration of invalidity is subsequently rejected owing to lack of sufficient proof of genuine use of the earlier mark, that rejection does not result from the application of Rule 40(6) of Regulation No 2868/95 — a provision which is essentially procedural — but exclusively from the application of the substantive provision set out in Article 57(2) of Regulation No 207/2009 (see, by analogy, judgment in New Yorker SHK Jeans v OHIM, cited in paragraph 48 above, EU:C:2013:484, paragraph 29).
54      It follows from the foregoing that, where evidence which is considered to be relevant for the purposes of establishing use of the mark at issue has been produced within the time-limit set by OHIM under Rule 40(6) of Regulation No 2868/95, the submission of additional proof of such use remains possible after the expiry of that time-limit. In such a case, OHIM is in no way prohibited from taking account of evidence submitted out of time through use of the discretion conferred on it by Article 76(2) of Regulation No 207/2009 (see, by analogy, judgment in New Yorker SHK Jeans v OHIM, cited in paragraph 48 above, EU:C:2013:484, paragraph 30).
55      As regards the exercise of that discretion by OHIM for the purposes of the possible taking into account of evidence submitted out of time, it must be pointed out that, where OHIM is called upon to give a ruling in the context of invalidity proceedings, such a taking into account of evidence is particularly likely to be justified where OHIM considers, first, that the evidence submitted late is, on the face of it, likely to be genuinely relevant to the outcome of the application for a declaration of invalidity brought before it and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not preclude such evidence being taken into account (see, by analogy, judgments in OHIM v Kaul, cited in paragraph 48 above, EU:C:2007:162, paragraph 44, and New Yorker SHK Jeans v OHIM, cited in paragraph 48 above, EU:C:2013:484, paragraph 33).
56      In the present case, contrary to what the applicant submits, the interveners submitted, within the time-limit set by the Cancellation Division, evidence of genuine use of the earlier mark, which the Cancellation Division did not, however, consider sufficient in respect of the first period.
57      Furthermore, as is stated in paragraph 40 of the contested decision, the evidence which the interveners submitted out of time concerns, first, several invoices relating to the years 2001 to 2010 on which the sign at issue appears that were issued by Casa Vigar to companies established in different Member States of the European Union and relate to a wide range of household and kitchen products and, secondly, some invoices issued to Casa Vigar because of its booth at different fairs in 2004 and 2005 or an advertisement published in 2005.
58      The fact remains that such evidence, in addition to that initially submitted, namely, in particular, as regards the first period, printouts of web pages showing that Casa Vigar began its business activity in the 1980s, a catalogue dated 2003 and the illustration of a truck which can be identified as belonging to a period prior to 2000 (see paragraph 43 above), is, on the face of it, likely to be genuinely relevant as regards whether there was genuine use of the earlier mark during the first period.
59      Furthermore, the stage of the proceedings at which the submission of that additional evidence took place and the circumstances surrounding it did not preclude such a submission. In addition, it is not apparent from the file that the interveners abused the time-limit set by knowingly employing delaying tactics or by demonstrating manifest negligence; they simply submitted additional documents after the evidence that they had initially submitted had been found to be insufficient by the Cancellation Division.
60      Consequently, the Board of Appeal did make appropriate use of its discretion in taking into account the evidence submitted for the first time before it.
61      It follows that, since the conditions laid down by the case-law referred to in paragraphs 54 and 55 above are satisfied, the sixth plea must be rejected, without it being necessary to rule on OHIM’s argument, set out in paragraph 42 above, alleging that there is no obligation to distinguish between the two periods for the purposes of exercising the discretion.
The second plea, alleging, in essence, that the use of a variant altering the distinctive character was incorrectly taken into account
62      This plea concerns the taking into account by the Board of Appeal, in paragraphs 25 to 31 of the contested decision, of evidence of use containing, inter alia, the representation of two signs, sometimes in different colours. The first representation is the following:
63      The second representation taken into account is as follows:
64      The applicant submits that the interveners used the earlier Community trade mark in a form which alters its distinctive character, with the result that the signs as used will not be perceived as merely a variation of that mark, but as a composite sign made up of several elements. According to the applicant, in essence, a simple visual comparison confirms that the signs at issue are not equivalent overall. It points out, inter alia, the omission of some elements from the Community trade mark as registered and the addition of elements not found in the registration, in particular, the three dots above the word ‘vigar’. Furthermore, it takes the view that the three-pointed crown device is a prominent element of the earlier Community trade mark as registered and cannot be characterised as merely decorative or banal. Lastly, it submits that the oval background plays a significant role.
65      OHIM, supported by the interveners, disputes that analysis.
66      In that regard, it must be borne in mind that Article 15(1)(a) of Regulation No 207/2009 provides that use of an earlier mark in a form ‘differing in elements which do not alter the distinctive character of the mark in the form in which it was registered’ is also to constitute use for the purposes of establishing the proof of genuine use of that mark.
67      The purpose of that provision, which avoids imposing strict conformity between the form of the trade mark used 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 sign used in trade differs from the form in which it was registered only in insignificant respects, with the result that the two signs can be regarded as equivalent overall, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade. However, Article 15(1)(a) of Regulation No 207/2009 does not allow the proprietor of a registered trade mark to avoid his obligation to use that mark by relying to his advantage on the use of a similar mark covered by a separate registration (judgments of 23 February 2006 in Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, ECR, EU:T:2006:65, paragraph 50, and 21 June 2012 Fruit of the Loom v OHIM — Blueshore Management (FRUIT), T‑514/10, EU:T:2012:316, paragraph 28).
68      Consequently, a finding that the distinctive character of the mark as registered has been altered requires an assessment of the distinctive and dominant character of the elements which have been added, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the various elements within the arrangement of the mark (see judgment in FRUIT, cited in paragraph 67 above, EU:T:2012:316, paragraph 29 and the case-law cited).
69      It must also be borne in mind that, according to the case-law, where a mark consists of word and figurative elements, the word element of the mark is, in principle, more distinctive than the figurative element, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element (see judgment of 6 September 2013 in Leiner v OHIM — Recaro (REVARO), T‑349/12, EU:T:2013:412, paragraph 23 and the case-law cited).
70      In the present case, as the Board of Appeal pointed out in paragraph 29 of the contested decision, the earlier Community trade mark as registered (see paragraph 7 above) consists of the word ‘vigar’ written in standard capital letters on a black oval background which is surmounted by a black crown. The word ‘vigar’ is an invented word and is therefore inherently distinctive. Furthermore, first, an oval is a simple geometrical shape which is commonly used, secondly, as regards the background, black is a basic shade, and, furthermore, a crown is a laudatory sign, which, in this case, has one of the most basic possible stylisations. Lastly, the fact that the crown is black gives the impression that it is connected with the black oval background to some extent.
71      Consequently, given the fact that the word ‘vigar’ is the only word element and given its inherent distinctiveness, its central position and the fact that the additional elements highlight its presence, the Board of Appeal rightly found that that word was the dominant and most distinctive element of the earlier mark.
72      Next, as far as the signs as used are concerned, the first form of use reproduced in paragraph 62 above, as the Board of Appeal states in paragraph 31 of the contested decision, also includes the word ‘vigar’ within a black oval background with a sequence of three dots in different sizes, the largest being naturally placed as part of the letter ‘i’. Given the fact that the word ‘vigar’ is the only word element and given its inherent distinctiveness, its central position and the fact that the additional elements highlight its presence, that word is the dominant and most distinctive element.
73      This sign differs from the earlier mark as registered only in the ascending orientation of its oval background, the use of standard lower-case instead of standard capital letters and the replacement of the crown element by a sequence of three dots. As the Board of Appeal rightly found, a different orientation of the same background, the use of upper-case or lower-case letters when they are standard letters which reproduce the same term, or the substitution of an ornamental element (the sequence of dots) for a laudatory element when both of those elements serve to reinforce the term ‘vigar’, are minor differences that do not alter the distinctive character of the earlier Community trade mark as it was registered.
74      That finding is not called into question if the second form of use, reproduced in paragraph 63 above, is taken into account inasmuch as, even though, in that case, the basic background disappears and the word ‘spain’ is present, the latter will be understood as a merely descriptive addition.
75      Lastly, contrary to what the applicant submits, the Board of Appeal did not fail to apply the case-law according to which it is only if the element of the earlier mark as registered which is omitted in the signs as used is in a secondary position and not distinctive that its omission does not alter the distinctive character of the trade mark (judgment of 24 November 2005 in GfK v OHIM — BUS (Online Bus), T‑135/04, ECR, EU:T:2005:419, paragraph 37). It is apparent from the foregoing analysis that the figurative elements of the earlier mark as registered, namely the crown and the oval background, are in a secondary position.
76      It follows from all of the foregoing that the second plea must be rejected.
The third plea, alleging an absence of proof of use for all the goods for which the earlier Community trade mark has been registered
77      The applicant claims that the Board of Appeal infringed Article 57(2) of Regulation No 207/2009, read in conjunction with Articles 15(1) and 75 of that regulation, by not giving sufficient reasons for its finding that the earlier Community trade mark had been put to genuine use in relation to all of the goods for which it is registered. According to the applicant, in essence, the Board of Appeal should have furnished specific reasons in respect of each of the goods and made detailed reference to the evidence submitted. As regards the second period, the applicant states, inter alia, that the contested decision merely makes banal statements by not indicating when, where, for how long, to what extent and in which territory the goods allegedly concerned were actually on the market. As regards the first period, the applicant submits that the Board of Appeal makes only a peripheral reference to the evidence.
78      OHIM, supported by the interveners, disagrees with that analysis and takes the view that the reasoning given by the Board of Appeal is sufficient and that its conclusion is well founded.
79      It must be pointed out that the arguments put forward by the applicant refer, without any real distinction, first, to the Board of Appeal’s obligation to state the reasons for its finding that the earlier Community trade mark had been put to genuine use in relation to all of the goods in respect of which it is registered, in accordance with Article 75 of Regulation No 207/2009, and, secondly, to the merits of that finding.
80      In the first place, as regards Article 75 of Regulation No 207/2009, it must be borne in mind that decisions of OHIM are required to state the reasons on which they are based, a duty which has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. That duty has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the European Union Courts to exercise their power to review the legality of the decision (see judgment of 12 July 2012 in Gucci v OHIM — Chang Qing Qing (GUDDY), T‑389/11, EU:T:2012:378, paragraph 16 and the case-law cited).
81      In the present case, the Board of Appeal described, in paragraph 20 of the contested decision, the evidence which had been submitted before the Cancellation Division and analysed it, in paragraph 24, before concluding, in paragraph 32, that, in its opinion, mere token use of the earlier Community trade mark during the second period could be excluded on the basis of that evidence. As regards the first period, it described, in paragraph 34, the evidence relating to that period which had been submitted initially, pointing out that it was not sufficient to determine the extent of use during the first period. Then, in paragraph 40 of the contested decision, the Board of Appeal explained which evidence had, in addition to that submitted initially, been submitted for the first time before it and concluded, in paragraph 41, that, accordingly, proof of genuine use of the earlier Community trade mark during the two periods had been furnished in relation to all the goods covered by that mark.
82      Contrary to what the applicant submits, that reasoning of the Board of Appeal allows the applicant to know the justification for the measure taken so as to enable it to protect its rights. Furthermore, it enables the Court to exercise its power to review the legality of the contested decision regarding whether the Board of Appeal was right in finding that, given the evidence which it took into account, genuine use of the earlier Community trade mark had been proved to the requisite legal standard.
83      As regards the substance, pursuant to Rule 22(3) of Regulation No 2868/95, proof of use must relate to the place, time, extent and nature of use of the earlier mark (judgment of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, ECR, EU:T:2004:225, paragraph 37).
84      According to settled case-law, it is apparent from Article 57(2) and (3) of Regulation No 207/2009, read in the light of recital 10 in the preamble to that regulation, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market (see, to that effect and by analogy, judgment of 12 March 2003 in Goulbourn v OHIM — Redcats (Silk Cocoon), T‑174/01, ECR, EU:T:2003:68, paragraph 38). However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see, to that effect and by analogy, judgment in VITAFRUIT, cited in paragraph 83 above, EU:T:2004:225, paragraph 38).
85      There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003 in Ansul, C‑40/01, ECR, EU:C:2003:145, paragraph 43).
86      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment in VITAFRUIT, cited in paragraph 83 above, EU:T:2004:225, paragraph 40; see also, by analogy, judgment in Ansul, cited in paragraph 85 above, EU:C:2003:145, paragraph 43).
87      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments in VITAFRUIT, cited in paragraph 83 above, EU:T:2004:225, paragraph 41, and of 8 July 2004 in MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, ECR, EU:T:2004:223, paragraph 35).
88      In order to examine, in a particular case, whether an earlier 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 in VITAFRUIT, cited in paragraph 83 above, EU:T:2004:225, paragraph 42, and HIPOVITON, cited in paragraph 87 above, EU:T:2004:223, paragraph 36).
89      Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, 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 16 July 2014 in Nanu-Nana Joachim Hoepp v OHIM — Stal-Florez Botero (la nana), T‑196/13, EU:T:2014:674, paragraph 25 and the case-law cited).
90      It is in the light of those considerations that it must be assessed whether the Board of Appeal was right to find, in paragraph 55 of the contested decision, that proof of genuine use had been furnished in respect of the goods in Class 21 covered by the earlier Community trade mark (see paragraph 7 above) with regard to the first and second periods.
91      It must be pointed out, as a preliminary point, that there are certain flaws in the evidence provided on the CD-ROMs. Accordingly, catalogues and photographs of exhibition stalls, sorted into files by year, are provided, but it is not possible to deduce from the pictures the year to which they refer or where the photographs were taken. Furthermore, some documents are in Spanish and no translation has been provided. The Board of Appeal, however, acknowledged those weaknesses, among others, in the evidence submitted, but carried out, in essence, a global analysis which was based principally on the invoices provided in respect of the years 2001 to 2010 and which is in accordance with the case-law referred to in paragraph 88 above.
92      The applicant considers, in essence, that the Board of Appeal could not lawfully find that there was proof of sufficient use of the earlier Community trade mark in respect of all the goods covered by that mark inasmuch as, first, it referred to those goods without distinction and, secondly, it did not give, with regard to the period from 2005 to 2010, any specific indication as regards when, where, for how long, to what extent and in which territory those goods were actually marketed. Furthermore, the applicant takes the view that, in respect of the period from 2000 to 2005, the Board of Appeal made only a very peripheral reference to the evidence.
93      As regards the first of those claims, relating to the overall reference made by the Board of Appeal to a category of goods without distinction, it must be pointed out that, as OHIM states, in paragraphs 56 to 60 of the contested decision, in the analysis of the likelihood of confusion, the Board of Appeal compared the goods covered by the marks at issue by referring with regard to the earlier Community trade mark to ‘brushes for cleaning and hygiene purposes’ covered by that mark and also to ‘mops, brooms, buckets, refuse containers, sponges’ and ‘feather-dusters, combs and cloths for washing floors’, which are all included in the list of goods covered by that mark. It is therefore in relation to those goods that it must be established that proof of genuine use of the earlier Community trade mark has been furnished.
94      As the Board of Appeal points out in paragraph 24 of the contested decision, the invoices for the period from 2006 to 2010 cover a wide range of household and kitchen products. They contain express references to brooms, brushes and sponges among other goods. The same is true of the invoices relating to the years 2001 to 2010 (including invoices relating to the first period) on the CD-ROM submitted for the first time to the Board of Appeal, as the Board of Appeal states in paragraph 40 of the contested decision.
95      Contrary to what the applicant submits, those household and kitchen products do not constitute a category which is sufficiently broad for it to be necessary to identify within it sub-categories in relation to which actual use had specifically to be proved. Rather, it must be held that it is not possible to make significant subdivisions within that category of goods, in accordance with the case-law on which the applicant relies (judgment of 16 May 2013 in Aleris v OHIM — Carefusion 303 (ALARIS), T‑353/12, EU:T:2013:257, paragraph 18). It was not therefore necessary for the Board of Appeal to describe the actual use in relation to each specific product referred to in paragraph 93 above.
96      Next, as regards the applicant’s other claims, it is necessary to bear in mind the Board of Appeal’s findings in respect of the two periods at issue in the contested decision.
97      As regards the second period, the Board of Appeal made the following findings in paragraphs 24 and 25 of the contested decision:
‘24      The submitted invoices, which carry the years 2006, 2007, 2008, 2009 and 2010, are addressed to different companies in the European Union. This shows continuous business activity throughout the European Union. This is confirmed by the content of some of the print-outs, which suggest that it is recognised as a national leader in its sector and is one of the companies of reference in the international sphere (see for example, www.housewares.org, www.hktdc.com, www.lasprovincias.es or www.einforma.com, some of these print-outs being written in English). The goods identified in the “description” section of these invoices cover a wide range of household and kitchen products, such as sponges, brooms, brushes, dusters, mops, rubber gloves, aprons, mats, mitts, kitchen cloth hangers, watering cans, buckets, baskets or refuse containers. These kinds of goods are also shown in the catalogues and are mentioned in some of the print-outs (see, among others, www.brushexpert.com, or www.cesserdigital.net). Even though some of the invoices, namely those issued in Spain, have not been translated into English, which is highlighted by the CTM proprietor, the Board considers that these products can be identified by taking into account all the evidence as a whole, mainly considering the pictures in the catalogues, that the invoices issued in the remaining territories are in English, that most of the catalogues include a description of the products in these two languages (Spanish and English), and that some print-outs are also in English.
25      The submitted invoices and catalogues, as well as some of the print-outs from the Internet contain the representation of the signs [referred to in paragraphs 62 and 63 above] (sometimes in different colours). The use of these signs within these documents (on the heading of the invoices, on the pages of the catalogues or even on the packaging of the products shown by the pictures in the (virtual) catalogues) is considered to be a use of these signs as a trademark …’
98      As regards the first period, the contested decision refers first to the following evidence: a catalogue dated 2003 and an illustration of a truck bearing the mark as registered with regard to which it may apparently be deduced, because of the number plate, that the picture belongs to a period prior to 2000, evidence that had already been submitted before the Cancellation Division.
99      The Board of Appeal, however, also took into account the additional invoices relating to the years 2001 to 2005. In paragraph 40 of the contested decision, it pointed out the following in that regard:
‘The cancellation applicant submitted before the Board a new CD[-ROM] that contains, among other documents, several invoices relating to the years 2001 to 2010 issued by Casa Vigar … to companies established in different Member States of the European Union where the sign [referred to in paragraph 62 above] is shown and the goods identified in the “description” section of these invoices cover a wide range of household and kitchen products, such as sponges, brooms, brushes, dusters, mops, or buckets; as well as some invoices issued to Casa Vigar … because of its booth in different fairs (Frankfurt 2004, Milan 2005, Paris 2005), or an advertisement published in “Top Fair” dated in 2005. Therefore, the Board considers that the evidence submitted before it completes that filed before the Cancellation Division, the former being supplementary to the latter.’
100    In that regard, as far as the first period, from 2000 to 2005, is concerned, the applicant is not wrong in pointing out the general and abstract nature of the Board of Appeal’s comments. Furthermore, in respect of both periods, it must be pointed out that the contested decision does not contain any specific analysis as regards the level of the turnover achieved in respect of the goods at issue.
101    When it was questioned in that regard at the hearing, OHIM maintained that it was necessary to distinguish between what the interveners had to prove and the inferences which the Board of Appeal had to draw from that. It stated that the evidence has to make it possible to quantify the use, but that the Board of Appeal is required only to draw legal inferences from that evidence and does not have to quantify the use.
102    In that context, it must be stated that the Board of Appeal must substantiate both its findings of fact and the legal inferences which it draws from them, in accordance with the principles referred to in paragraphs 83 to 89 above.
103    It must, however, be added that it has been accepted in the case-law that even minimal use can be sufficient to be classified as genuine, provided that it is regarded as warranted, in the relevant economic sector, as a means of maintaining or creating market shares for the goods or services protected by the mark and that it is not possible to determine a priori, and in the abstract, the quantitative threshold which should be chosen in order to determine whether use is genuine or not, so that a de minimis rule, which would not allow OHIM or, on appeal, the Court, to appraise all the circumstances of the dispute before it, cannot be laid down (see, to that effect, judgment of 4 July 2014 in Construcción, Promociones e Instalaciones v OHIM — Copisa Proyectos y Mantenimientos Industriales (CPI COPISA INDUSTRIAL), T‑345/13, EU:T:2014:614, paragraph 25 and the case-law cited).
104    It must be pointed out that, in the absence of any quantified analysis of use in the contested decision, the Board of Appeal did not establish that the evidence submitted by the interveners showed more than minimal use of the earlier Community trade mark. The applicant’s claim that the extent of use is not established to the requisite legal standard is therefore well founded.
105    However, that analysis does not have to lead to the annulment of the contested decision inasmuch as an examination of the evidence on which the Board of Appeal relied makes it possible to conclude that the conditions of Rule 22(3) of Regulation No 2868/95 are satisfied.
106    Accordingly, as OHIM submits before the Court, that evidence makes it possible to make the findings set out below.
107    First, the sales figures relating to all the goods covered by the mark VIGAR in respect of the years 2000 to 2011 amount to at least EUR 6 000 000 per year.
108    However, those figures are not broken down by product and the evidence was provided at the time of the appeal before OHIM by an employee of the interveners. As that evidence was provided by a person who has a close link with the interveners, it is of less evidential value and cannot, on its own, suffice to prove sufficient use (see judgment in la nana, cited in paragraph 89 above, EU:T:2014:674, paragraph 32 and the case-law cited).
109    Secondly, the amounts of sales arising out of the invoices provided show that the sales figures may be broken down mainly into two categories of goods: brooms and brushes, on the one hand, and sponges and household products on the other hand. Those invoices show, in respect of the period from December 2000 to December 2005, sales to distributors in France, the United Kingdom, the Netherlands, Belgium, Denmark, Germany, Italy, Greece, Sweden and Slovenia in excess of EUR 100 000 in total for both the category ‘brooms and brushes’ and the category ‘sponges and household products’.
110    Thirdly, with regard to the second period, the invoices show sales to distributors in France, the United Kingdom, the Netherlands and Slovenia.
111    It is apparent from those findings that extensive use which reflects a genuine intention to consolidate market shares throughout the European Union is shown by the number of sales made to a considerable network of distributors across Europe, the regularity of the sales over time and the volume of the transactions.
112    The Board of Appeal’s finding that the interveners had furnished proof of genuine use of the earlier Community trade mark in connection with the goods referred to in paragraph 93 above is therefore well founded.
113    It follows that the third plea must be rejected.
The fourth plea alleging, in essence, an absence of proof of genuine use for all the goods for which the earlier international registration was obtained and the fifth plea alleging, in essence, an absence of entitlement to assert the earlier international registration
114    In the context of the fourth plea, the applicant claims, in essence, that the Board of Appeal failed to give sufficient reasons for its finding that the earlier international registration had been put to genuine use in each of the Member States in which it had effect. The applicant submits that the Board of Appeal did not make any findings regarding the use of that mark in the Benelux countries, Germany, France, Italy, Austria and Portugal, territories in which that registration is protected.
115    In support of the fifth plea, the applicant claims that the Board of Appeal should not have taken the earlier international registration into account given that, even though the interveners were the proprietors of the mark in question at the time when that registration was granted, that was no longer the case at the time when the contested decision was adopted, since that mark had been transferred to a new proprietor, Casa Vigar, before that date, with the result that the application for a declaration of invalidity must be rejected.
116    OHIM submits, as regards the two pleas in question, that the Board of Appeal established that there was a likelihood of confusion in respect of the earlier Community mark with the result that any error made in respect of the earlier international registration is without effect on the legality of the contested decision. The interveners submit, in essence, as regards the fourth plea, that the Board of Appeal demonstrated to the requisite legal standard that there had been genuine use of the earlier international registration and, as regards the fifth plea, that they are the holders of a verbal licence from Casa Vigar in respect of the earlier international registration.
117    In that regard, it must be borne in mind, first, that it follows, in essence, from the examination of the first, second, third and sixth pleas above that the Board of Appeal’s finding that there is proof of genuine use of the earlier Community trade mark cannot be called into question.
118    Furthermore, as OHIM rightly maintains, it is apparent from the contested decision that the examination of whether there was a likelihood of confusion with the contested mark was carried out by reference to that Community trade mark.
119    First, it may be deduced from paragraph 51 of the contested decision, according to which, ‘[s]ince the earlier marks are a Community trade mark and an International trade mark with protection in some Member States of the European Union, the territories in respect of which the likelihood of confusion must be assessed is the whole of the European Union’, that the Board of Appeal took into account the territory covered by the earlier Community trade mark, even though that includes that covered by the earlier international mark (Benelux, Germany, France, Italy, Austria, Portugal and Romania) (see paragraph 7 above).
120    Secondly, it is apparent from paragraph 52 of the contested decision, which states that ‘[t]he targeted public of the goods at issue is composed of the average consumer in the European Union …’, that the framework of reference for the Board of Appeal’s analysis is that of the earlier Community trade mark here as well.
121    Thirdly, in paragraph 55 of the contested decision, the Board of Appeal sets out a table comparing the ‘earlier goods’ with the ‘goods of the CTM’, which is introduced by the words ‘[t]aking into account the goods for which genuine use has been proved, the goods to be compared are the following’. Both the goods covered by the earlier Community trade mark and those covered by the earlier international registration are referred to in the category of earlier goods.
122    In paragraph 56 of the contested decision, the Board of Appeal found that ‘[t]he goods covered by the CTM … are identically covered by the earlier CTM’. Likewise, the analysis carried out in paragraphs 58 to 62 of the contested decision as regards the comparison of the other goods covered also refers to the list of goods covered by the earlier Community trade mark.
123    Accordingly, any error which may have been made by the Board of Appeal as regards the proof of use of the earlier international registration when it concluded, in paragraph 41 of the contested decision, that the interveners had proved genuine use of their mark in the European Union during the two relevant periods of time in relation to some of the goods covered by the earlier international registration, has no effect on the legality of the contested decision as regards the existence of a likelihood of confusion in respect of the goods covered by the contested mark and the earlier Community trade mark that were found to be identical or similar.
124    The finding in paragraph 76 of the contested decision partially upholding the appeal in respect of a series of goods in Class 21 is based on the list of goods covered by the earlier Community trade mark.
125    As the applicant has not called into question the Board of Appeal’s analysis regarding the likelihood of confusion between the earlier Community trade mark and the contested mark, the Board of Appeal’s finding, in the first point of the operative part of the contested decision, as regards the annulment of the decision of the Cancellation Division to the extent that that decision rejected the application for a declaration of invalidity in respect of those goods cannot reasonably be disputed.
126    The fourth plea does not therefore affect the legality of the first point of the operative part of the contested decision. Furthermore, for the same reasons, the extent of the interveners’ rights in relation to the earlier international registration, which is at issue in the fifth plea, also appears to be ineffective.
127    Lastly, in that regard, it is necessary to reject the argument which the applicant put forward in response to a written question put by the Court and at the hearing, namely that, even if the Court holds that there has been genuine use of the earlier Community trade mark and that there is a likelihood of confusion between that mark and the contested mark, it must necessarily also decide whether the application for annulment is justified on the basis of the other earlier right.
128    Even if the Board of Appeal were held to have failed to give adequate reasons for there having been genuine use of the earlier international registration or to have erred in assessing the extent of the interveners’ rights in relation to that registration, it would not, however, be necessary to annul the first point of the operative part of the contested decision, since such errors cannot have any effect on that part of the operative part of the contested decision (see, to that effect and by analogy, judgment of 9 July 2008 in Alitalia v Commission, T‑301/01, ECR, EU:T:2008:262, paragraph 307 and the case-law cited), which is based on the earlier Community trade mark.
129    The fourth and fifth pleas must therefore be rejected as ineffective.
130    It follows from all of the foregoing that the action must be dismissed in its entirety.
Costs
131    Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the interveners.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Menelaus BV to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Messrs Vicente Garcia Mahiques and Felipe Garcia Mahiques.
Berardis
Czúcz
Popescu
Delivered in open court in Luxembourg on 18 November 2015.
[Signatures]
* Language of the case: English.
1 – This judgment is published in extract form.