JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
23 September 2020 (*)(1)
(EU trade mark – Opposition proceedings – Application for an EU three-dimensional mark – Shape of a blade of grass in a bottle – Earlier three-dimensional national mark – Genuine use of the earlier mark – Article 15(1) and Article 43(2) and (3) of Regulation (EC) No 40/94 (now Article 18(1) and Article 47(2) and (3) of Regulation (EU) 2017/1001) – Nature of use – Alteration of distinctive character – Use in conjunction with other marks – Scope of the protection – Requirement for clarity and precision – Requirement for the description and the representation to align with one another – Decision taken following annulment of an earlier decision by the General Court – Reference to the grounds of an earlier annulled decision – Obligation to state reasons)
In Case T‑796/16,
CEDC International sp. z o.o., established in Oborniki Wielkopolskie (Poland), represented by M. Siciarek, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Walicka and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Underberg AG, established in Dietlikon (Switzerland), represented by A. Renck, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 August 2016 (Case R 1248/2015‑4) relating to opposition proceedings between CEDC International  and Underberg,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, D. Gratsias and M. Kancheva (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 11 November 2016,
having regard to the response of EUIPO lodged at the Court Registry on 24 February 2017,
having regard to the response of the intervener lodged at the Court Registry on 8 March 2017,
having regard to the decision of 29 May 2017 to suspend the proceedings,
having regard to the decision of 12 August 2019 to resume the proceedings,
having regard to the measures of organisation of procedure of 10 December 2019 and the parties’ responses lodged at the Court Registry on 23 December 2019 and on 9 January 2020,
further to the hearing on 6 February 2020,
gives the following
Judgment
Background to the dispute
1        On 1 April 1996, the intervener, Underberg AG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following three-dimensional sign:
3        That representation of the mark applied for is accompanied by the following description: ‘the object of the trade mark is a greeny-brown blade of grass in a bottle; the length of the blade of grass is approximately three-quarters the height of the bottle’.
4        The goods in respect of which registration was sought are in Class 33 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: ‘Spirits and liqueurs’.
5        The trade mark application No 33266 was published in Community Trade Marks Bulletin
No 51/2003 of 23 June 2003.
6        On 15 September 2003, Przedsiębiorstwo Polmos Białystok (Spółka Akcyjna), which was replaced by the applicant, CEDC International sp. z o.o., following a merger by acquisition on 27 July 2011, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (subsequently Article 41 of Regulation No 207/2009, now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of the goods referred to in paragraph 4 above.
7        The opposition was based inter alia on the earlier three-dimensional French mark, filed on 18 September 1995, registered on 18 April 1997 under No 95588457, renewed on 9 June 2005 and 13 July 2015 (after being sent to the applicant on 28 October 2011) for ‘alcoholic beverages’ in Class 33 of the Nice Agreement, represented as follows:
8        That representation of the earlier three-dimensional French mark is accompanied by the following description: ‘the mark consists of a bottle such as is pictured above, inside which a blade of grass is placed in the body of the bottle in an almost diagonally inclined position’.
9        The opposition was also based on other trade marks representing, in the applicant’s view, a blade of grass in a bottle, namely German trade mark No 39848553, Polish trade marks Nos 62018, 62081 and 85811, Japanese trade mark No 2092826, French trade mark No 98746752 and unregistered signs claimed in various EU Member States.
10      The grounds relied on in support of the opposition were those referred to, first, in Article 8(1)(a) and (b) of Regulation No 40/94 (which became Article 8(1)(a) and (b) of Regulation No 207/2009, and subsequently Article 8(1)(a) and (b) of Regulation 2017/1001) on the basis of the earlier three-dimensional French mark No 95588457 reproduced in paragraph 7 above, second, in Article 8(3) of Regulation No 40/94 (subsequently Article 8(3) of Regulation No 207/2009, now Article 8(3) of Regulation 2017/1001) on the basis of that same trade mark and the registered marks referred to in paragraph 9 above and, third, in Article 8(4) of Regulation No 40/94 (which became Article 8(4) of Regulation No 207/2009, and subsequently Article 8(4) of Regulation 2017/1001) on the basis of the unregistered signs referred to in paragraph 9 above.
11      On 11 July 2007, the applicant submitted evidence of use of its earlier three-dimensional French mark by the deadline of 1 August 2007 set by the Opposition Division in response to a request for proof of genuine use made by the intervener. On 3 July 2008, the applicant elaborated on its arguments concerning proof of that use.
12      On 18 October 2010, the Opposition Division rejected the opposition in its entirety. It held inter alia that the evidence submitted was insufficient to establish genuine use of the earlier three-dimensional French mark between 23 June 1998 and 22 June 2003 (‘the relevant period’) and that the presence of a label containing the term ‘Żubrówka’ and the representation of a bison on the bottle marketed altered the distinctive character of that mark in the form in which it had been registered.
13      On 17 December 2010, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. On 18 February 2011, it lodged the statement setting out the grounds of the appeal, to which evidence of use which had not been adduced before the Opposition Division was attached.
14      By decision of 26 March 2012 (‘the initial decision’) in Case R 2506/2010‑4, the Fourth Board of Appeal of EUIPO dismissed the appeal.
15      With regard, first, to the ground of opposition set out in Article 8(1)(a) and (b) of Regulation No 207/2009, the Board of Appeal began by listing the evidence of use adduced by the applicant before the Opposition Division, to which various representations of ŻUBRÓWKA vodka bottles seen from the front were attached, adding that ‘no other presentations than the ones depicted [below] [had been] submitted’:
16      Next, the Board of Appeal considered that (i) the French mark, use of which had been proved, consisted of a ‘common shaped bottle with a line on the body which r[an] diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’, as reproduced in paragraph 7 above, (ii) proof of use showed bottles in two different shapes but always with the same striking non-transparent ‘żubrówka bison vodka’ label covering a large part of the bottles and (iii) the diagonal line was not affixed to the outside surface and did not appear on the label itself. It further found that, as a result of the presence of the label, it was impossible to see what was behind it on or in the bottles.
17      Lastly, the Board of Appeal concluded that, in those circumstances, the applicant had not proved the nature of use of the earlier three-dimensional French mark, that is to say, the use of that mark as registered or in a form which differed in elements which do not alter the distinctive character of that trade mark in the form in which it was registered. From that, it inferred, as that trade mark was the only earlier mark on which the opposition was based under Article 8(1)(a) and (b) of Regulation No 207/2009, that that opposition had to be rejected.
18      With regard, second, to the ground of opposition set out in Article 8(4) of Regulation No 207/2009, the Board of Appeal held that the applicant had not proved actual use of the unregistered signs claimed in various Member States of the European Union (see paragraph 9 above), inter alia in Germany, and accordingly rejected the opposition based on that ground.
19      With regard, third, to the ground of opposition set out in Article 8(3) of Regulation No 207/2009, the Board of Appeal found that the applicant had not proved either actual use of the trade marks relied on (see paragraph 9 above) or, in the contractual documents submitted, any relationship of agency or commercial activity with the intervener and accordingly rejected the opposition based on that ground. For the sake of completeness, the Board of Appeal added that, for some of the trade marks relied on, it had not been proved that the applicant was the proprietor, they had been filed after the date on the trade mark at issue was filed or their existence was not sufficiently substantiated in accordance with Rule 19 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 7 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), inter alia because they had not been translated into English, the language of the case before it.
20      By application lodged at the Court Registry on 29 May 2012 and registered under case number T‑235/12, the applicant brought an action for annulment of the initial decision, in support of which it put forward three pleas in law.
21      By 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; ‘the judgment ordering annulment’), the Court annulled the initial decision.
22      As a preliminary point, the Court noted that the applicant was challenging EUIPO’s findings and assessments concerning all the grounds for opposition, that is to say, those laid down in Article 8(1)(a), Article 8(3) and Article 8(4) of Regulation No 207/2009, but that, however, the applicant stated that it was restricting its arguments solely to the Board of Appeal’s findings on the assessment of the evidence of use adduced, as those findings also concerned all the grounds put forward in support of the opposition (paragraph 29 of the judgment ordering annulment).
23      The Court considered it appropriate to begin by examining the third plea, alleging infringement of Article 75 and Article 76(1) and (2) of Regulation No 207/2009 (now Article 94 and Article 95(1) and (2) of Regulation 2017/1001) concerning the evidence to be taken into account in assessing genuine use of the earlier three-dimensional French mark. By that plea, the applicant claims that the Board of Appeal had failed to examine, without providing reasons for not doing so, certain evidence adduced for the first time before it, containing inter alia representations of the vodka bottle bearing the term ‘żubrówka’ from four different angles, not only from the front but also from the back and the side, proving, in its submission, that that mark in the shape of a blade of grass in a bottle was clearly visible and had actually been used (the judgment ordering annulment, paragraphs 30 and 31).
24      The Court observed that the five annexes submitted for the first time before the Board of Appeal were as follows:
–        articles from the French press and extracts from French websites, dating from 1998 to 2003 and containing representations of the bottle of vodka with the word ‘żubrówka’ and statements to the effect that, in essence, ŻUBRÓWKA vodka with the ‘famous bison grass’ ‘is easily identified thanks to the aromatic blade of grass present in the bottle’;
–        an extract from the Warsaw (Poland) Wallpaper City Guide;
–        a statement of 16 February 2011, written in Polish and translated into English, from Mr K., a specialist technologist in charge of labelling for the applicant since 1992 (‘Mr K.’s statement’);
–        a poster entitled ‘Żubrówka bison grass vodka’;
–        an extract from the Wikipedia website (the judgment ordering annulment, paragraph 50).
25      Appended to Mr K.’s statement were four photographs of bottles of ŻUBRÓWKA vodka, which he stated were exported to France during the relevant period, and which showed the following four representations, in which the bottle was shown from the front, on two opposite sides and from the back (the judgment ordering annulment, paragraph 52):
26      The Court inferred from the foregoing that the Board of Appeal’s statement in paragraph 16 of the initial decision, to the effect that ‘no other presentations than the [front views had been] submitted’, had to be construed as referring to the evidence of use submitted before the Opposition Division within the time limit set by it, but not to evidence submitted out of time before the Board of Appeal. Accordingly, the Court found that the Board of Appeal had taken into account only the evidence submitted by the applicant before the Opposition Division and not the evidence of use submitted for the first time before it, in particular Mr K.’s statement and the photographs appended thereto, as well as the articles from the French press and the extracts from French websites. The Court held that the Board of Appeal had not exercised the discretion conferred on it to decide whether or not to take into account evidence of use submitted for the first time before it and had not given any reasons for its decision in that regard (the judgment ordering annulment, paragraphs 54, 55 and 61).
27      The Court also found that the supplementary evidence submitted out of time included at the very least Mr K.’s statement and the appended presentations of the bottle, seen from the front, two opposite sides and the back (see paragraphs 24 and 25 above) and that the articles from the French press and the extracts from French websites fulfilled the two requirements laid down in case-law for, in theory, being taken into account by EUIPO. In particular, the Court considered that Mr K.’s statement and the appended presentations of the bottle, seen from the front, two opposite sides and the back, were, prima facie, likely to be truly relevant to the outcome of the opposition brought before EUIPO since, had they been taken into account, they would have been likely to call into question the Board of Appeal’s assessment set out in paragraphs 17 and 18 of the initial decision (see paragraphs 16 and 17 above), first, that ‘the diagonal line was not affixed to the outside surface and did not appear on the label itself’, second, that ‘as a result of the presence of the label, it was impossible to see what was behind it on or in the bottles’ and, third, that ‘in those circumstances, the applicant had not proven the nature of use’ of its earlier three-dimensional French mark (the judgment ordering annulment, paragraphs 63 and 64).
28      In that regard, the Court pointed out that the three-dimensional nature of a trade mark such as that at issue precluded a static, two-dimensional vision and called for a dynamic, three-dimensional perception. Thus, a three-dimensional mark may, in principle, be perceived from a number of sides by the relevant consumer. As regards proof of use of such a mark, according to the Court, it therefore had to be taken into account not as a reproduction of how it was viewed in two dimensions, but rather as a presentation of how it was perceived in three dimensions by the relevant consumer. It followed that presentations from the side and the back of a three-dimensional mark were, as a rule, likely to be truly relevant for the purposes of assessing the genuine use of that trade mark and could not be rejected solely on the ground that they were not reproductions from the front (the judgment ordering annulment, paragraph 65).
29      The Court found that the Board of Appeal was required to exercise its discretion in an objective, reasoned manner to decide whether or not to take into account the evidence submitted out of time which fulfilled the two criteria laid down by case-law, namely, at the very least, Mr K.’s statement and the appended presentations of the bottle, seen from the front, two opposite sides and the back, and also the articles from the French press and the extracts from French websites. Accordingly, in failing to exercise its discretion in an objective, reasoned manner, to decide whether or not to take into account the evidence of use of the earlier three-dimensional French mark submitted for the first time before it, the Board of Appeal had infringed Article 76(2) of Regulation No 207/2009 and also Article 75 of the same regulation by failing to give reasons for its decision on the matter. The Court also considered that the evidence submitted was supplementary and adduced in addition to the relevant evidence submitted within the time limit set (the judgment ordering annulment, paragraphs 68, 69, 87 and 100).
30      Given that the third plea was well founded, the Court upheld the action and consequently annulled the initial decision, without it being necessary to examine the first and second pleas (the judgment ordering annulment, paragraph 103).
31      By decision of the Presidium of the Boards of Appeal of 23 June 2015, the case was remitted to the Fourth Board of Appeal for a further decision, as Case R 1248/2015‑4.
32      By decision of 29 August 2016 (‘the contested decision’) in Case R 1248/2015‑4, the Fourth Board of Appeal of EUIPO dismissed the appeal.
33      In particular, the Board of Appeal found that, even if it were to exercise its discretion to take into account the evidence submitted out of time in favour of the applicant, that evidence did not change its previous decision that the applicant had failed to prove the nature of use and, consequently, genuine use of the earlier French three-dimensional mark, in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) (paragraph 35 of the contested decision).
34      As a starting point, the Board of Appeal noted that the graphical representation of the trade mark as filed defined the scope of its protection and not the description of the trade mark as had been provided by the applicant. It added that a mark description was to define what can be seen in the mark representation and that the scope of protection was not broadened by a possible interpretation of what the applicant meant by that representation or what it had in mind. In the present case, the Board of Appeal observed that (i) the graphical representation of the earlier three-dimensional French mark showed a commonly shaped bottle with a line on the body of it which ran diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base, (ii) the line, shown as a fixed part of the body of the bottle, was a straight diagonal line and nothing else and (iii) that fact was not altered by the description provided by the applicant because the scope of protection of the trade mark was not defined by what the applicant had in mind when filing the mark (paragraphs 38 and 39 of the contested decision).
35      The Board of Appeal found that none of the evidence submitted at first instance showed the trade mark in the form registered, that is to say, as graphically represented in the register. Indeed, none of the bottles bore an uninterrupted diagonal line, let alone the same line as that forming part of the earlier mark, that line was not affixed on the outside surface of any of the bottles shown and did not appear on or across the label itself, and it was impossible to see what could be in the bottle behind the label because the non-transparent label covered almost the entire surface of the bottle. The Board of Appeal added that the applicant had submitted before it additional evidence in which bottles were depicted, some of them with illegible labels and others with labels stating ‘żubrówka bison vodka’, but that all the bottles, like those submitted at first instance, had a non-transparent label, preventing what was behind it from being seen, and did not show the diagonal line forming part of the earlier mark on the outside surface of the bottle or across the label itself. With regard to the evidence submitted out of time, and more specifically the photographs (appended to Mr K.’s statement) of the bottle with the ‘żubrówka bison vodka’ label and depicted on that occasion not only from the front view but also from the back and with two side views, the Board of Appeal observed that, from the side views in each photograph, an uninterrupted elongated line could be perceived and that, although they are somewhat different on the two photographs, those lines were by no means the same as the straight diagonal line which formed part of the earlier mark: for example, their positions were different, they were much longer, they had a different starting point at the bottom of the bottle and they were not completely straight (paragraphs 40 to 42 of the contested decision).
36      The Board of Appeal found that such use, as demonstrated by the applicant, was not use of the trade mark as it was registered, and nor was it use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered within the meaning of Article 15(1)(a) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001). In that respect, it took into account the fact that the distinctive character of the earlier French mark as such was rather weak as it consisted of a commonly shaped bottle with a simple straight line placed in a specific position and of a specific length and that, actually, in the overall impression, it was that line and its specific positioning and length which rendered the trade mark a little distinctive. Accordingly, the scope of protection of the earlier mark as defined by its graphic representation was very weak and, therefore, a form differing in the manner set out in the evidence submitted in no way constituted use of the earlier mark. The Board of Appeal further pointed out that the applicant’s explanation that what was inside the bottles shown in the evidence submitted was a blade of grass, which was an important feature of its ŻUBRÓWKA brand vodka, did not improve its case and was not relevant because the earlier French mark did not protect the concept of a blade of grass in a bottle (paragraphs 43 to 45 of the contested decision).
37      The Board of Appeal concluded that, even taking into account the evidence submitted for the first time before it, the applicant had failed to prove the nature of use of the earlier three-dimensional French mark, which was a necessary requirement for proving genuine use of that earlier mark pursuant to Article 42(2) and (3) of Regulation No 207/2009. From that, it inferred that, for that reason alone, there was no need to examine further the evidence submitted out of time or to examine whether or not account ought to be taken of that evidence as a whole. In its view, the fact remained that the opposition based on the earlier three-dimensional French mark and the grounds laid down in Article 8(1)(a) and (b) of Regulation No 207/2009 failed. As regards the other grounds of the opposition and the other earlier rights relied upon, the Board of Appeal ‘explicitly refer[red] to the reasoning in its decision of 26 March 2012, case R 2506/2010‑4’. It concluded that the opposition failed on all grounds and all earlier rights on which the opposition was based (paragraphs 46 to 49 of the contested decision).
Procedure and forms of order sought
38      By letter of 4 May 2017, EUIPO requested that the present proceedings be stayed. It explained that it had deemed it appropriate to reopen the examination of absolute grounds concerning the trade mark applied for, on the basis of Article 45(3) of Regulation 2017/1001, and that that examination could result in the application being refused pursuant to Article 7 of that regulation. It added that, if that were the case, the opposition brought by the applicant would be rendered obsolete and that the present action before the Court would become devoid of purpose, in accordance with Article 130(2) of the Rules of Procedure of the General Court.
39      By letters of 22 May 2017, the applicant and the intervener submitted their observations on EUIPO’s application for the proceedings to be stayed and did not oppose that application.
40      On 29 May 2017, the President of the Eighth Chamber of the General Court (former composition) decided, pursuant to Article 69(c) of the Rules of Procedure, to stay the present proceedings until EUIPO informed the Court that a new decision had been adopted following the re-examination of the absolute grounds for refusal relating to the trade mark applied for.
41      By letter of 13 May 2019, the intervener informed the Court of the following developments. The examiner had reopened the examination on the basis of two grounds for refusal. First, on 10 May 2017, he had issued objections to the registration of the mark applied for in the light of Article 7(1)(a) of Regulation No 40/94 (which became Article 7(1)(a) of Regulation No 207/2009 and subsequently Regulation 2017/1001). The intervener had overcome that objection by adjusting the description of the trade mark applied for by adding the wording (which continues not to be noted in the EUIPO register) that ‘[the] mark [was] a position mark’ and ‘the object of the trade mark [was] a greeny-brown blade of grass in a bottle, which is placed diagonally between the bottom of the bottle and its neck, the length of which is approximately three-quarters the height of the bottle’. Second, on 30 January 2018, the examiner had issued an objection to the registration of the trade mark applied for in the light of Article 7(1)(b) of Regulation No 40/94 (which became Article 7(1)(b) of Regulation No 207/2009, and subsequently of Regulation No 2017/1001). The examiner had considered, in essence, that the trade mark applied for showed a blade of grass in a bottle, which did not constitute a significant departure from the norms and customs of the sector, since herbs and plants in bottles had always been used in the production of spirits, as was clear from the evidence gleaned from the Internet (including a bottle with the ŻUBRÓWKA  brand and other bottles of Polish vodka, of the GRASOVKA brand and with an illegible word). On 10 July 2018, the examiner had refused the trade mark application. The intervener had filed a notice of appeal against that decision, under number R 1651/2018‑4. By decision of 12 April 2019, the Fourth Board of Appeal of EUIPO had annulled the examiner’s decision and found that the grounds for refusal laid down in Articles 41 and 42 of Regulation 2017/1001 were not met in relation to the trade mark applied for. In particular, the Board of Appeal had criticised procedural infringements on the part of the examiner, which in the Board’s view constituted an ‘unacceptable … salami tactic’, and the evidence provided by the examiner, which post-dated the filing of the trade mark application, that is to say, 1 April 1996, and related to Poland, which was not a Member State of the European Union at that time. The Board of Appeal had found that, 23 years later, it was practically impossible to evaluate market conditions retrospectively for the year 1996 and a European Community of 15 Member States. As a result of all those developments, the intervener requested that the present proceedings be reopened.
42      By letter of 3 June 2019, EUIPO submitted its observations on the intervener’s request for the proceedings to be reopened. It informed the Court that the re-examination of the trade mark applied for was closed, following the final decision of the Fourth Board of Appeal in Case R 1651/2018‑4, and that the present proceedings could be reopened.
43      By letter of 3 June 2019, the applicant responded to the intervener’s request. It called for the Court to require EUIPO to submit to the Court, for the purposes of the present proceedings, the complete file pertaining to the re-examination procedure for the trade mark applied for before EUIPO, to which it had been unable to gain access, despite its requests, owing to reasons of ‘confidentiality’ and on the pretext that it was an ‘unpublished trade mark application’ (whereas it had been published in 2003; see paragraph 5 above). It also requested an extension of the deadline for the submission of observations on the intervener’s request to reopen the proceedings on a new date falling one month after EUIPO having submitted the complete file to the Court and that file having been made available for the applicant to access, to enable it to evaluate the merits of the Board of Appeal’s decision in Case R 1651/2018‑4 and, consequently, of the reopening of the proceedings.
44      By letter of 9 July 2019, the intervener objected to the applicant’s request for documents to be produced on the ground that the subject of the present dispute before the Court was solely the Board of Appeal’s decision in Case R 1248/2015‑4, which concerned genuine use of an earlier three-dimensional mark in France between 1998 and 2003 (opposition proceedings) and not the distinctive character of the position of a blade of grass in a bottle within the European Union in 1996 (re-examination procedure).
45      By letter of 10 July 2019, EUIPO also objected to the applicant’s request for production of documents on the ground that the applicant was not party to the ex parte re-examination procedure, which is separate from the inter partes opposition proceedings which gave rise to the present action. It added that if – following its notification that the applicant’s request for opening for public inspection was irregular, a notification to which the applicant had not responded – a decision refusing that request were to be made, the applicant could bring an action.
46      On 12 August 2019, the President of the Eighth Chamber of the General Court (former composition) refused the applicant’s request for production of documents and, consequently, ordered that the present proceedings be reopened.
47      Since the composition of the Chambers of the General Court was altered on 4 October 2019, the Judge-Rapporteur was assigned to the Ninth Chamber, to which the present case was accordingly allocated on 22 October 2019, pursuant to Article 27(5) of the Rules of Procedure.
48      The applicant claims that the Court should:
–        annul the contested decision in its entirety;
–        order EUIPO and the intervener to pay the costs incurred in the proceedings before the Court and before the Board of Appeal.
49      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
50      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs, including all costs incurred by the intervener.
Law
51      In support of its action, the applicant puts forward three pleas in law. The first plea alleges infringement of Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001). The second plea alleges infringement of Article 15(1) of Regulation No 207/2009 and of Rule 22(3) of Regulation No 2868/95 (now Article 10(3) of Delegated Regulation 2018/625) as well as Article 8(1)(a) and (b) and Article 42(2) and (3) of Regulation No 207/2009. The third plea alleges infringement of Articles 75 and 76(1) and (2) of Regulation No 207/2009.
Preliminary observations
On the applicable law ratione temporis
52      It is apparent from the file that the Board of Appeal applied Regulation No 207/2009 (see paragraph 3 of the contested decision), that the applicant based its pleas on that regulation (see paragraph 4 of the application), that the intervener based its response on that regulation and that EUIPO, in its response, relied on a version of the ‘EUTMR’ with numbered provisions corresponding to those of that regulation.
53      However, in response to a question from the Court at the hearing, EUIPO stated that, since the date on which the trade mark application was filed was decisive, the applicable law in the present case, at least as regards the substance, was Regulation No 40/94.
54      In view of the filing date of the application for registration of the mark applied for, in the present case 1 April 1996, and that date being decisive for the purposes of identifying the applicable substantive law (see, to that effect, order of 26 October 2015, Popp and Zech v OHIM, C‑17/15 P, not published, EU:C:2015:728, paragraph 2; judgment of 12 December 2019, EUIPO v Wajos, C‑783/18 P, not published, EU:C:2019:1073, paragraph 2) and in view of the date on which the contested decision was adopted, in the present case 29 August 2016, which is decisive for the purposes of identifying the applicable procedural law, it must be held that the present dispute is governed, on the one hand, by the substantive provisions of Regulation No 40/94 and, on the other hand, by the procedural provisions of Regulation No 207/2009. The substantive provisions of those two relevant regulations are, in essence, identical for the purposes of the present proceedings.
55      As regards the second plea, which alleges infringement of various provisions of substantive law, having regard to the fact that the relevant provisions of Regulations No 40/94 and No 207/2009 are, in essence, identical, the Court will apply the substantive provisions of Regulation No 40/94. However, it must be stated that the fact that the Board of Appeal applied identical provisions of Regulation No 207/2009, which was, after all, not disputed by the applicant, cannot cause the contested decision to be set aside. Indeed, the application of either of those regulations ratione temporis does not lead to a different result and any challenge to that decision on that basis would be ineffective.
56      As regards the first and third pleas, alleging infringement of a number of procedural provisions, since the contested decision was adopted on 29 August 2016, the provisions of Regulation No 207/2009, where appropriate as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Regulation No 2868/95, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), apply to them (see, to that effect, judgment of 31 October 2019, Repower v EUIPO, C‑281/18 P, EU:C:2019:916, paragraphs 2 and 3). More specifically, Article 4 of Regulation 2015/2424 provides that that regulation enters into force on 23 March 2016, but that certain provisions of Regulation No 207/2009, including Article 75, are to apply only from 1 October 2017. In the present case, in view of the date on which the decision in question was adopted, Article 75 of Regulation No 207/2009 in its original version continues to apply to that decision. However, in the absence of transitional provisions, Articles 65(6) and 76(1) of Regulation No 207/2009 apply to that decision as amended by Regulation 2015/2424. In short, applying the original or amended versions of the procedural provisions of Regulation No 207/2009 ratione temporis does not lead to a different result as regards the examination of the first and third pleas.
The subject matter of the present dispute
57      The applicant disputes EUIPO’s assessments concerning all the grounds of the opposition, namely Article 8(1)(a) and (b), (3) and (4) of Regulation No 207/2009. However, the applicant limits its arguments to the Board of Appeal’s findings on the assessment of the evidence it provided of its use of the earlier three-dimensional French mark, since, in its view, those findings affect all the grounds of the opposition due to the fact that all the earlier three-dimensional marks (see paragraph 9 above) showed a plain bottle with a blade of grass inside it.
58      EUIPO stated at the hearing that it ‘[did] not agree’ with the decision of 12 April 2019 of the Fourth Board of Appeal in Case R 1651/2018‑4 (see paragraph 41 above), which annulled the examiner’s decision and that, in its view, registration of the mark applied for should have been refused due to lack of distinctive character pursuant to Article 7(1)(b) of Regulation No 40/94, having regard to the well-known traditional practice in the alcoholic drinks sector of placing in bottles organic materials which are visible to consumers. However, EUIPO explained that since that decision of the Fourth Board of Appeal was definitive, it was necessary to start from the premiss that the examination of the absolute grounds was closed, unless new facts were to arise and that, therefore, it should be assumed that the inherent distinctive character of the mark applied was minimal. Similarly, while expressing doubts as to whether and to what extent the earlier mark met the requirement of clarity and precision, EUIPO acknowledged that it should be assumed in the present dispute that that mark was validly registered. However, EUIPO took the view that those doubts concerning the ability to protect the two marks at issue should be taken into account when establishing the respective scope of protection of those marks and when examining whether the use of the earlier mark did indeed correspond to the trademark as represented in the registration.
59      In the first place, it must be stated, as did EUIPO, that the subject matter of the present dispute is not the validity of the mark applied for. Indeed, the proceedings brought before the Court were not a review procedure (see paragraph 41 above) or invalidity proceedings but rather opposition proceedings.
60      In that regard, it is clear that the absolute grounds for refusal referred to in Article 7 of Regulation No 40/94 do not fall to be examined as part of the opposition proceedings and that that article is not one of the provisions in the light of which the legality of the contested decision must be assessed. If the applicant is of the view that the mark applied for does not comply with the provisions of that article, it ought to submit an application for a declaration of invalidity to EUIPO under Article 51(1)(a) of Regulation No 40/94 (which became Article 52(1)(a) of Regulation No 207/2009, and subsequently Article 59(1)(a) of Regulation 2017/1001) (see, to that effect, judgment of 8 October 2014, Fuchs v OHIM – Les Complices (Star within a circle), T‑342/12, EU:T:2014:858, paragraph 58 and the case-law cited; order of 3 December 2018, Classic Media v EUIPO – Pirelli Tyre (CLASSIC DRIVER), T‑811/17, not published, EU:T:2018:894, paragraph 27). Similarly, in so far as it is claimed, in paragraph 7.39 of the application, that the trade mark applied for was ‘filed in bad faith by a former distributor of [the] applicant’s products’, the applicant may submit an application for a declaration of invalidity on the grounds of bad faith to EUIPO under Article 51(1)(b) of Regulation No 40/94 (which became Article 52(1)(b) of Regulation No 207/2009, and subsequently Article 59(1)(b) of Regulation 2017/1001).
61      In the second place, nor does the present dispute concern the validity of the earlier mark, the validity of which must be assumed.
62      In that regard, it must be recalled that, in order to avoid infringing Article 8(1)(b) of Regulation No 40/94, it is necessary to acknowledge a certain degree of distinctive character of an earlier national mark on which an opposition against the registration of an EU trade mark is based (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 47). Thus, even if the registered national mark had to be considered devoid of a high degree of distinctive character, a minimum degree of distinctive character should nevertheless be acknowledged for it, by virtue of its having been registered (see, to that effect, judgment of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 44).
63      In the third place, the main subject matter of the present dispute is whether or not genuine use (in France during the relevant period) was made of the earlier three-dimensional French mark, as represented and registered. By contrast, the present dispute also does not concern the genuine use of other word marks or figurative marks of the applicant, such as ŻUBRÓWKA BISON VODKA.
64      It is now necessary to examine the three pleas raised by the applicant.
The first plea in law: infringement of Article 65(6) of Regulation No 207/2009
65      By the first plea, the applicant claims that the Board of Appeal, in adopting the contested decision, failed to have proper regard to the assessments and guidelines of the Court which are contained in the judgment ordering annulment.
66      In the first place, it claims that the Board of Appeal based its decision on incorrect assumptions regarding the nature of the earlier mark, which were derived from its initial (annulled) decision, in describing a ‘line’ on the body of the bottle and not a blade of grass in a bottle. First of all, in paragraph 8 of the judgment ordering annulment, the Court confirmed that the three-dimensional mark ‘correspond[ed]’ to the description.
67      In the second place, the applicant claims the Board of Appeal did not analyse properly the five items of evidence submitted out of time (see paragraph 24 above) and found them to be irrelevant for the analysis of genuine use, despite guidance to the contrary from the Court (the judgment ordering annulment, paragraphs 63 to 66 and 68). The applicant continues that the Board of Appeal did not take that evidence into account at all, since it neither assessed its admissibility nor conducted a substantive analysis of it. In particular, it disregarded the articles from the French press and the extracts from French websites, which the Court considered to be relevant. Furthermore, it claims that the Board of Appeal made a ‘very short and illusory’ assessment of Mr K.’s statement (the judgment ordering annulment, paragraph 51) before concluding that that item of evidence did not demonstrate use of the earlier mark as registered, whereas the Court found that that item was likely to be truly relevant for the outcome of the opposition (the judgment ordering annulment, paragraph 64).
68      In the third place, the applicant claims that the Board of Appeal applied an incorrect and improper test of the genuine use of a three-dimensional mark, contrary to the guidance from the Court that the proper criterion against which evidence of such use should be analysed is dynamic perception from a number of sides (the judgment ordering annulment, paragraph 65). Thus, the presence of a label does not preclude clear perception of the three-dimensional mark from the other sides. Lastly, the applicant claims that the finding that it is impossible to see what is behind the label is contrary to the Court’s finding that it is clear ‘from the photographs [reproduced in paragraph 15 above] that it is a blade of grass – and not just some oblong object – inside a bottle which is visible to the observer’ (the judgment ordering annulment, paragraph 91).
69      EUIPO and the intervener dispute the applicant’s arguments.
70      It must be recalled that, where an action is brought before the EU courts against a decision of a Board of Appeal of EUIPO, EUIPO is required, pursuant to Article 266 TFEU and Article 65(6) of Regulation No 207/2009, as amended by Regulation 2015/2424, to take the necessary measures to comply with the EU courts’ judgment ordering annulment.
71      It is not for the Court to issue directions to EUIPO and it is for the latter to give due effect to the operative part and the grounds of the Court’s judgments (judgments of 31 January 2001, Mitsubishi HiTec Paper Bielefeld v OHIM (Giroform), T‑331/99, EU:T:2001:33, paragraph 33; of 6 October 2011, Bang & Olufsen v OHIM (Representation of a loudspeaker), T‑508/08, EU:T:2017:877, paragraph 31; and of 7 December 2017, Coca-Cola v EUIPO – Mitico (Master), T‑61/16, EU:T:2017:877, paragraph 35).
72      In accordance with settled case-law, a judgment annulling a measure takes effect ex tunc and thus has the effect of retrospectively eliminating the annulled measure from the legal system (see judgment of 25 March 2009, Kaul v OHIM – Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraph 21 and the case-law cited; judgments of 8 June 2017, Bundesverband Deutsche Tafel v EUIPO – Tiertafel Deutschland (Tafel), T‑326/16, not published, EU:T:2017:380, paragraph 18, and of 8 February 2018, Sony Interactive Entertainment Europe v EUIPO – Marpefa (Vieta), T‑879/16, EU:T:2018:77, paragraph 37).
73      It is clear from that same case-law that, in order to comply with a judgment annulling a measure and to implement it fully, the institution that is the author of the measure is required to have regard not only to the operative part of the judgment but also to the grounds constituting its essential basis, in so far as they are necessary to determine the exact meaning of what is stated in the operative part. It is those grounds which, on the one hand, identify the precise provision held to be illegal and, on the other, indicate the specific reasons which underlie the finding of illegality contained in the operative part and which the institution concerned must take into account when replacing the annulled measure (judgments of 25 March 2009, ARCOL, T‑402/07, EU:T:2009:85, paragraph 22; of 8 June 2017, Tafel, T‑326/16, not published, EU:T:2017:380, paragraph 19; and of 8 February 2018, Vieta, T‑879/16, EU:T:2018:77, paragraph 38).
74      In the first place, as regards the correct identification of the earlier mark, it must be stated that, in paragraph 8 of the judgment ordering annulment, when the Court stated that the earlier mark ‘correspond[ed] to the following description’, the word ‘correspond[ed]’ simply meant that that mark had been filed together with a description. However, the Court in no way made a finding concerning the scope of the protection conferred by that mark and, consequently, in no way found that that description corresponded to the representation, nor that the line represented in that mark was a blade of grass.
75      In addition, in paragraph 91 of the judgment ordering annulment, when the Court found that ‘from the photographs reproduced [in paragraph 15 above] … it is a blade of grass – and not just some oblong object – inside a bottle which is visible to the observer’, it only concluded that ‘the photographs [reproduced in paragraph 25 above] are accordingly not the first and only proof of use of a blade of grass placed inside a bottle’, thereby ruling on a procedural issue which logically comes before the assessment of the substance of the case. In so doing, the Court referred to certain additional items of evidence of use as submitted, where a blade of grass appeared. However, the Court in no way made a finding concerning the earlier mark as registered (see paragraph 7 above) and in no way found that it included a blade of grass. Moreover, in the judgment ordering annulment, the Court examined only the third plea, which concerned procedure, alleging infringement of Articles 75 and 76 of Regulation No 207/2009, and not the second plea, which concerned substance, alleging infringement of Article 15 of that regulation.
76      In the second place, as regards the complaint that the Board of Appeal did not assess the evidence submitted out of time (see paragraph 24 above), in particular the articles from the French press and the extracts from French websites with the exception of Mr K.’s statement, it must be recalled that, in paragraphs 101 and 102 of the judgment ordering annulment, the Court held as follows:
‘Moreover, [since] the issue whether or not account ought to have been taken of the supplementary evidence produced before it … was not examined by the Board of Appeal, it is not for this Court to rule for the first time on issues the merits of which were not examined …
It will therefore be for the Board of Appeal to assess, in keeping with the guidance from the case-law and the present judgment, taking due account of all the relevant circumstances and providing reasons for its decision on the matter, whether or not account must be taken of the additional evidence submitted by the applicant for the first time before it, in order to make the decision it is called upon to give in the action which is still pending before it …’
77      The Court therefore left to the discretion of the Board of Appeal the decision on whether or not to take account of the evidence submitted out of time.
78      However, it is apparent from paragraphs 41 and 42 of the contested decision that the Board of Appeal did take into account the evidence submitted out of time, although its view was that it was irrelevant. Indeed, it examined that evidence in the light of the criteria of ‘use [of the mark] as … registered’ and found that the applicant had not proved the nature of use of the mark as registered, due to the presence of the non-transparent label and the differences in nature, length and position between the lines, while taking due account of the front, back and side views of the bottle.
79      The Board of Appeal consequently exercised its discretion and took account of the evidence submitted out of time in deciding that that evidence did not prove the nature of use of the mark as registered and, moreover, did not prove use which did not alter the distinctive character of the mark within the meaning of Article 15 of Regulation No 207/2009. Therefore, in paragraph 47 of the contested decision, it took the view that there was no need to examine ‘further’ the evidence concerning the time, place and extent of use, nor the probative value of the evidence.
80      Indeed, it is clear that since the Board of Appeal was of the view that the applicant had submitted no evidence of the nature of use of the mark as registered (the substance of which forms the subject matter of the second plea), it was not necessary to examine ‘further’ the requirements as to use.
81      In the third place, as regards the complaint relating to the assessment criterion regarding use for three-dimensional marks, it suffices to point out that the Board of Appeal did not apply an improper criterion of genuine use of the three-dimensional mark, but performed a dynamic analysis of the evidence of use, taking account not only of the front and back views, but also the two side views, as is apparent from paragraph 42 of the contested decision, where it found that ‘from the side views … an uninterrupted elongated line can be perceived’. Consequently, that complaint is unfounded.
82      The first plea must therefore be rejected.
The second plea in law: infringement of Article 15(1) of Regulation No 207/2009 and of Rule 22(3) of Regulation No 2868/95, as well as of Article 8(1)(a) and (b) and of Article 42(2) and (3) of Regulation No 207/2009
83      By the second plea, the applicant criticises, in essence, the Board of Appeal for having taken the view that the evidence adduced (before the Opposition Division and before the Board of Appeal) did not prove genuine use of the earlier three-dimensional French mark during the relevant period. It puts forward four complaints in that regard.
84      By the first complaint, the applicant claims that the Board of Appeal failed to identify the earlier mark properly by stating, incorrectly, in paragraph 39 of the contested decision that ‘the line, shown as a fixed part of the body of the bottle, concerns a straight diagonal line and nothing else’, whereas it is a bottle with a blade of grass inside. In summary, the applicant criticises the Board of Appeal for having failed to take account of the perception of the earlier three-dimensional French mark as including a blade of grass inside the bottle, which is in line, first, with the findings of the Court in the judgment ordering annulment, second, with the three-dimensional type representation and with the description of that mark as set out in its certificate of registration and, third, with the evidence submitted. In the applicant’s view, the Board of Appeal’s continued references to the artificial concept of a ‘commonly shaped bottle with a [straight] line on the body of it’ were incorrect as was its statement that ‘the line’ cannot be regarded as a blade of grass which is in the bottle.
85      By the second complaint, the applicant claims that the Board of Appeal ‘once again’ applied an improper and inadequate criterion of the genuine use of the earlier three-dimensional French mark on account of its ‘simplistic, two-dimensional’ approach to that mark, whereas the three-dimensional nature of a trade mark precludes a static, two-dimensional vision and calls for a dynamic, three-dimensional perception. In addition, the Board of Appeal cannot, in the applicant’s view, limit itself to an analysis of the items of evidence independently from each other, but must rather analyse those items jointly, bearing in mind the relationships between them, in particular between the different views of the form used on the market. It should, the applicant claims, have taken into account all the evidence in order to apply a dynamic test with a view to assessing the perspective of the consumer, who may perceive the trade mark at issue from a number of sides.
86      By the third complaint, the applicant claims that the Board of Appeal disregarded the possibility of simultaneous use of several trade marks of various types by incorrectly stating that the use of the label changes the distinctive character of the earlier three-dimensional French mark. Accordingly, by once again rejecting certain items of evidence solely on account of the presence of a label bearing the word ‘żubrówka’, which supposedly made it impossible to see what was behind it, the Board of Appeal disregarded the case-law of the Court that a number of trade marks may be put to genuine use on one product at the same time, despite being registered separately. In the present case, the earlier three-dimensional French mark is used together with trade marks of other types (word and figurative marks) which are used on a label, and the presence of a label does not preclude genuine use of the earlier mark for four reasons. First, despite the presence of the label, the blade of grass is clearly visible from the front view. Second, the very nature of the three-dimensional mark presupposes a dynamic analysis of the evidence of genuine use, all the more so because the blade of grass placed inside a plain, transparent bottle is fully visible from the sides, where the label does not interfere with any three-dimensional element (see the photographs from the side in paragraph 25 above). Third, according to the case-law, the simultaneous use of several trade marks autonomously on a product is common market practice, especially in the alcoholic drinks sector, and consumers are well used to that practice. Fourth, alcoholic beverages must always have a label containing certain information and are subject to certain legal requirements. Therefore, the presence of the label cannot be a factor excluding genuine use of the three-dimensional mark as registered.
87      By the fourth complaint, the applicant claims that the Board of Appeal incorrectly assessed genuine use within the meaning of Article 15(1)(a) of Regulation No 207/2009 by erroneously restricting it only to instances where the form is ‘the same’ or ‘identical’ to that registered and by failing to acknowledge that minor differences in the length and position of the blade of grass inside the bottle used on the French market had not altered the distinctive character of the earlier three-dimensional French mark as registered. In the applicant’s view, in describing the photographs appended to Mr K.’s statement (see paragraph 25 above) in paragraph 42 of the contested decision, the Board of Appeal failed to analyse whether or not the minor differences mentioned altered the distinctive character of the earlier mark as registered. However, comparing the representation of that mark with the views (from the front, sides or back) of the product as used on the market, according to the applicant, it appears that, first, the main distinctive element of the trade mark in question – a blade of grass in the bottle – is clearly visible from all sides due to the bottle’s transparent glass; second, the bottles are identical (shape of the body, base, neck), while the blades of grass are nearly identical and as similar as two blades of grass can be; third, EUIPO ‘exaggerated’ by stating that the blades of grass, or rather their lines, were ‘much longer’ because the difference in length is minimal; and, fourth, EUIPO incorrectly stated that the blades were ‘not 100% straight’, as they are in fact straight.
88      According to the applicant, slight differences in length and position of the blade of grass are typical examples of differences which do not alter the distinctive character of the earlier three-dimensional French mark as registered and are not noticed by average consumers. In addition, slight changes in the position of the blades in the liquid are inevitable and are due to the very nature of that trade mark. However, that does not change the fact that it is still ‘a single, long blade of grass placed inside an identical bottle in an almost diagonally inclined position’. Therefore, the form of that mark used on the market matches the graphic representation and description in its certificate of registration, there being some minor differences which do not alter its distinctive character. Applying a stricter test would in most cases lead to it being impossible in practice to prove genuine use of a three-dimensional mark.
89      Furthermore, the applicant states that it is not trying to protect the concept of any blade of grass inside any type of bottle, but rather that it is attempting to protect a specific representation of a blade of grass inside a specific bottle, which is covered by the earlier trade mark registration and which forms the basis of an opposition against a nearly identical trade mark application (both in terms of the signs and the description) filed ‘in bad faith’ by a former distributor of the applicant’s products.
90      Finally, the applicant considers that it has proved not only the time, place and extent of use but also the nature of use. It explains that it submitted a range of evidence which it believes, analysed together, should have led the Board of Appeal to find that the genuine use of the earlier mark on a mass scale on the French market between 23 June 1998 and 22 June 2003 had been proved. It states that all those documents refer to use of the same form of that mark and, indeed, of the same product, the majority of those documents were submitted in due time before the Opposition Division, and the evidence submitted out of time accompanying the statement setting out the grounds of appeal likewise confirmed the genuine use of that mark and the perception of the blade of grass by consumers as an indication of origin. In the applicant’s view, while the leaflets (aimed at French distributors and consumers), brochures, advertisements and pictures of sold products attached to affidavits show the representations of the product and its trade marks, that is to say, which trade mark was used (nature of use), the press releases, affidavits, invoices, list of promotional activities and the report issued by Institut Iri indicating the off-trade volumes in France during the years 1998 to 2006 show the time, place and extent of use – that is to say, when and how the trade mark was used. It observes in that regard that EUIPO’s objections were limited to the nature of use.
91      In reply to a written question from the Court, the applicant takes the view that the question of genuine use of the earlier mark is not governed by EU law, but rather by national law, in particular Decree No 92‑100 of 30 January 1992 and the Decision of 31 January 1992.
92      EUIPO and the intervener dispute the applicant’s arguments.
93      It must be stated that, in essence, the present plea concerns whether the earlier mark was used in the form in which it was registered (or in a form which does not alter it, or with minor variations) and consequently, the precise subject of the protection conferred by that mark.
94      In that regard, it should be recalled that Article 43(2) and (3) of Regulation No 40/94 (which became Article 42(2) and (3) of Regulation No 207/2009 and subsequently Article 47(2) and (3) of Regulation 2017/1001) provides, in essence, that, if the applicant so requests, the proprietor of an earlier EU trade mark or national trade mark who has given notice of opposition is to furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application, the earlier EU or national trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which is cited as justification for that opposition, or that there are proper reasons for non-use. In the absence of proof to that effect, the opposition is to be rejected.
95      Under the first subparagraph of Article 15(1) of Regulation No 40/94 (which became the first subparagraph of Article 15(1) of Regulation No 207/2009 and subsequently the first subparagraph of Article 18(1) of Regulation 2017/1001), if, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the European Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark is to be subject to the sanctions provided for in that regulation, unless there are proper reasons for non-use.
96      Under Rule 22(3) and (4) of Regulation No 2868/95, as amended (now Article 10(3) and (4) of Delegated Regulation 2018/625), the proof of use must concern the place, time, extent and nature of use which has been made of the mark and it is to be confined, generally, to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001).
97      Those considerations are to govern the applicant’s four complaints forming the second plea and whether the Board of Appeal was correct in finding, in paragraph 46 of the contested decision, that even when account was taken of the evidence submitted for the first time before it, the applicant had not demonstrated the nature of use of the earlier three-dimensional French mark, which was a necessary requirement for proving genuine use of that mark in accordance with Article 42(2) and (3) of Regulation No 207/2009.
98      As a preliminary point, as regards the applicable substantive law, it must be recalled that, in accordance with the case-law, where the proprietor of an EU trade mark requests proof of genuine use to be furnished, that use constitutes a condition which must be met, under Regulation No 40/94, not only by EU trade marks but also by earlier national marks relied on in support of an application for a declaration of invalidity of that EU trade mark. Therefore, the application of Article 43(2) of Regulation No 40/94 to earlier national marks under paragraph 3 of that article means that genuine use is to be defined according to Article 15 of that regulation and not in accordance with national law (see, by analogy, in relation to invalidity proceedings, judgment of 12 July 2019, mobile.de v EUIPO – Droujestvo S Ogranichena Otgovornost “Rezon” (mobile.ro), T‑412/18, not published, EU:T:2019:516, paragraph 23). The Board of Appeal therefore did not err in law, in the present dispute, in assessing whether the earlier national mark had been put to genuine use within the meaning of that provision of EU law and not under French law.
99      In the present case, it must be stated that the applicant submitted, within the time limit set by the Opposition Division, evidence showing, in its view, that the earlier mark had been put to ‘long and extensive’ use. That evidence, as described by it, includes in particular:
–        an affidavit dated 25 June 2007 signed by the Financial Director and President of the applicant containing figures concerning sales in France for the years 2000 to 2004 of bottles of vodka containing a blade of bison grass and bearing the mark ŻUBRÓWKA, accompanied by invoices and photographs of the product; the sales were made by the applicant’s exclusive licensee/distributor (Agros Trading SA) through the French company Pernod SA;
–        an affidavit dated 27 June 2007 signed by the Chairman and CEO of Pernod, containing figures concerning the sales in France for the years 2000 to 2004 of bottles of vodka containing a blade of bison grass and bearing the mark ŻUBRÓWKA, accompanied by invoices and photographs of the product, from which the applicant deduces that it is apparent, and similarly for the other affidavits, that sales volumes in France were ‘very high’ and growing between 2000 and 2004 and amounted to EUR 1.3 million in 2002 and 2003;
–        examples of invoices relating to the sale by Agros Trading to Pernod of bottles of vodka containing a blade of bison grass and bearing the mark ŻUBRÓWKA with a photograph of the product;
–        photos showing a sample of the vodka bottle sold in the French market;
–        examples of leaflets for French distributors relating to the years 2001 to 2003 and showing the vodka bottle bearing the ŻUBRÓWKA mark actually distributed on the market;
–        a list of the promotional activities which took place in France during the years 1999 to 2004, during which leaflets referring to ŻUBRÓWKA vodka were distributed to the public;
–        report issued by Institut Iri indicating the off-trade volumes relating to sales of ŻUBRÓWKA vodka in France during the years 1998 to 2006;
–        an example leaflet dated 24 May 2003 distributed by a French supermarket and showing the ŻUBRÓWKA vodka bottle;
–        examples of leaflets concerning off-trade promotions held in France during November 2003 and June 2006 and concerning ŻUBRÓWKA vodka.
100    That evidence included the photographs reproduced in paragraph 15 above. Subsequently, the applicant submitted, for the first time before the Board of Appeal, the evidence listed in paragraph 24 above, together with the photographs reproduced in paragraph 25 above, as well as the following photograph:
101    To establish whether that evidence proves the nature of use of the earlier mark, the scope of the protection conferred by that mark must first be identified correctly.
102    The Court considers it appropriate, at the outset, to examine the first complaint and then to examine the second, third and fourth complaints of the second plea together.
The first complaint: incorrect identification of the earlier mark
103    By the first complaint, the applicant claims that the Board of Appeal failed correctly to identify the earlier mark even though it concerned a bottle containing a blade of grass.
–       Legislation and case-law
104    It is appropriate to recall the legislative and case-law context concerning (i) the scope of the protection conferred by a three-dimensional mark, such as the earlier mark, (ii) the requirement of clarity and precision in its representation and (iii) the requirement that that representation and any description of such a mark align with one another.
105    In accordance with the settled case-law of the Court concerning the law on EU trade marks, a sign may be registered as a mark only if the applicant for the mark provides a graphic representation in accordance with the requirement in Article 4 of Regulation No 40/94 (which became Article 4 of Regulation No 207/2009, and subsequently of Regulation 2017/1001), to the effect that the subject matter and scope of the protection sought are clearly and precisely determined (see, to that effect, judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 36; see also, to that effect and by analogy, judgment of 27 March 2019, Hartwall, C‑578/17, EU:C:2019:261, paragraph 38 and the case-law cited).
106    Where a verbal description of the sign accompanies the application, that description must serve to clarify the subject matter and scope of the protection sought under trade mark law and such a description cannot be inconsistent with the graphic representation of a trade mark or give rise to doubts as to the subject matter and scope of that graphic representation (see, to that effect, judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 37; see also, to that effect and by analogy, judgment of 27 March 2019, Hartwall, C‑578/17, EU:C:2019:261, paragraphs 39 and 40).
107    The graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified. First, the function of the requirement for a graphic representation is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. Next, in order to fulfil that function vis-à-vis the competent authorities and the public, in particular economic operators, the graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (see, to that effect, judgment of 21 June 2017, M/S. Indeutsch International v EUIPO – Crafts Americana Group (Representation of chevrons between two parallel lines), T‑20/16, EU:T:2017:410, paragraphs 33 and 34 and the case-law cited; see also, to that effect and by analogy, judgments of 12 December 2002, Sieckmann, C‑273/00, EU:C:2002:748, paragraphs 46 and 48 to 55, and of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraphs 25 and 27 to 32). In particular, the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Therefore, the means of graphic representation must be unequivocal and objective (see, to that effect and by analogy, judgment of 12 December 2002, Sieckmann, C‑273/00, EU:C:2002:748, paragraph 54).
108    A graphic representation which lacks precision and clarity does not make it possible to determine the scope of the protection sought (see, to that effect and by analogy, judgment of 27 November 2003, Shield Mark, C‑283/01, EU:C:2003:641, paragraph 59). The determining factor in the light of the scope of protection of the mark is the way in which it will be perceived on the sole basis of the sign as registered (see, to that effect, judgment of 17 January 2018, Deichmann v EUIPO – Munich (Representation of a cross on the side of a sports shoe), T‑68/16, EU:T:2018:7, paragraph 44). The requirement for a graphic representation is intended, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. Therefore, it is for the trade mark applicant to file a graphic representation of the mark corresponding precisely to the subject matter of the protection he or she wishes to secure. Once the trade mark is registered, its proprietor is not entitled to a broader protection than that afforded by that graphic representation or which does not correspond to it (see, to that effect, judgments of 30 November 2017, Red Bull v EUIPO – Optimum Mark (Combination of the colours blue and silver), T‑101/15 and T‑102/15, EU:T:2017:852, paragraph 71, and of 19 June 2019, adidas v EUIPO – Shoe Branding Europe (Representation of three parallel stripes), T‑307/17, EU:T:2019:427, paragraph 30 and the case-law cited).
109    In addition, Rule 3(3) of Regulation No 2868/95 provides that the application for registration ‘may contain a description of the mark’, which is optional. Therefore, where a description is included in the application for registration, that description must be examined in combination with the graphic representation. Indeed, it follows from the judgment of 6 May 2003, Libertel (C‑104/01, EU:C:2003:244), that a description of a sign may be required in order to fulfil the requirements of Article 4 of Regulation No 207/2009 (see, to that effect, judgments of 30 November 2017, Combination of the colours blue and silver, T‑101/15 and T‑102/15, EU:T:2017:852, paragraphs 79 and 80, and of 19 June 2019, Representation of three parallel stripes, T‑307/17, EU:T:2019:427, paragraph 31). However, examining the description in combination cannot broaden the precise subject of the protection which is defined by the representation (see paragraph 108 above), but can only contribute to clarifying it and making it more precise.
110    As regards three-dimensional trade marks, Rule 3(4) of Regulation No 2868/95 (now Article 3(3)(c) of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for the implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37)), which does not require a description for such marks, provides as follows:
‘Where registration of a three-dimensional mark is applied for, the application shall contain an indication to that effect. The representation shall consist of a photographic reproduction or a graphic representation of the mark. The representation may contain up to six different perspectives of the mark.’
111    It follows from the above that, as regards the interpretation and application of EU trade mark law, the representation of the trade mark, which must be clear and precise, defines the scope of the protection conferred by the registration. In addition, any description which accompanies the representation must align with the representation as registered and cannot extend the scope of the mark thereby defined. That requirement that any description align with the representation is therefore a corollary of the requirement that the representation which defines the scope of the protection be clear and precise.
112    In the light of those principles, the Board of Appeal was correct in observing, in paragraph 38 of the contested decision, that the (at that time graphic) representation of the mark as filed defines its scope of protection, and not the description of the mark as provided by the applicant, before adding that a mark description must define what can be seen in the mark representation and that the scope of protection is not broadened by a possible interpretation of what the applicant meant by that representation or what it had in mind.
–       Application in the present case to defining the precise subject of the protection conferred by the earlier mark and to whether its description aligns with its representation
113    In the present case, it is clear from the certificate of registration of the earlier three-dimensional French mark, issued by the Institut national de la propriété industrielle (INPI, France), that that mark contains a representation (reproduced in paragraph 7 above), with a description that ‘the mark consists of a bottle such as is pictured above, inside which a blade of grass is placed in the body of the bottle in an almost diagonally inclined position’.
114    As regards that certificate of registration, it should be pointed out, at the outset, that the description of the earlier mark does not align with its representation. Indeed, it is clear that the representation involves a line, and not a blade of grass as described. In addition, in the representation, the line appears rather to be located on the body of the bottle and it is not clear that it is found inside the bottle. Furthermore, the description of that mark, since it does not align with its representation, cannot serve to clarify it or make it more precise.
115    Therefore, it must be stated that the Board of Appeal was correct in observing, in paragraph 39 of the contested decision that (i) the graphical representation of the earlier mark showed ‘a commonly shaped bottle with a line on the body of it which r[an] diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’, (ii) the line, shown as a fixed part of the body of the bottle, was a straight diagonal line and nothing else and (iii) that fact was not altered by the description provided by the applicant because the scope of protection of the mark was not defined by what the applicant had in mind when filing the mark.
116    As the intervener observes, that assessment by the Board of Appeal is in line with the considerations relevant for the correct identification of a three-dimensional mark, according to which it is the representation which is decisive in defining the scope of protection of such a mark and the description cannot alter or interpret the representation of that mark.
117    That finding is not called into question by the applicant’s arguments that the perception of the earlier three-dimensional French mark as involving a blade of grass inside the bottle corresponds, first, to the Court’s findings in the judgment ordering annulment, second, to the representation, type and description of that mark set out in its certificate of registration and, third, to the evidence submitted.
118    First, in the judgment ordering annulment, the Court in no way made a finding on the substance of the precise subject of the protection conferred by the earlier three-dimensional French mark. It confined itself to upholding the third plea in the first action, which was based on a failure to state reasons and a failure to exercise discretion in relation to the evidence of use submitted for the first time before the Board of Appeal, that is to say, a plea regarding procedure relating to the failure to take account of the evidence of use, and not relating to how the scope of protection was defined (see also findings in respect of the first plea in paragraphs 70 to 82 above).
119    Second, the Board of Appeal’s assessment that that mark protects ‘a commonly shaped bottle with a [straight] line on the body of it which runs diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’ is based precisely on the representation of the earlier three-dimensional French mark in its certificate of registration. On the other hand, the alleged presence of a blade of grass is not apparent from the representation, but only from the description.
120    In fact, as the intervener submits, that description contains a misinterpretation of the representation because it interprets the graphic element of the line beyond what is visible by stating that that element is a blade of grass. Indeed, in the black and white representation (and therefore not limited to a particular colour such as green-brown, but rather covering all colours), the graphic element is a very straight black line, with no bends or irregularities, whereas a blade of grass is normally not straight, but has bends and irregularities. Moreover, in that representation, it is not clear that the line is inside the bottle, but rather it appears to be situated on the body of the bottle. Consequently, any interpretation or alteration of the representation by the description would fail to have regard to the principles recalled in paragraphs 104 to 112 above.
121    The intervener adds that if the applicant had wanted to protect a blade of grass in a bottle, it should have filed a completely true to life picture of a blade of grass, as done for other trade marks registered by the applicant.
122    In that regard, it should be noted that the Court has already ruled on the precise subject of the protection conferred by the applicant’s three-dimensional Polish mark No 189866, reproduced below:
123    The Court accordingly held, in paragraphs 94, 95, 97 and 98 of the judgment of 12 November 2015, CEDC International v OHIM – Fabryka Wódek Polmos Łańcut (WISENT) (T‑449/13, not published, EU:T:2015:839) and in paragraphs 96, 97, 99 and 100 of the judgment of 12 November 2015, CEDC International v OHIM – Fabryka Wódek Polmos Łańcut (WISENT VODKA) (T‑450/13, not published, EU:T:2015:841), that the earlier conflicting mark contained a figurative element consisting of a thin line which traverses the bottle and that that line was straight, inclining slightly to the left, green in colour and interrupted by the label. According to the Court, such schematic representations of what might constitute a blade of grass cannot, however, be perceived as an actual blade of grass. The feature present in the marks at issue, as represented and registered, will be perceived as what it is, that is to say, a simple line, and not as a blade of grass. Only a more realistic representation of a blade of grass, or a true image of a blade of grass placed inside a bottle, could refer to the image of a blade of grass, which, furthermore, could be confirmed by the description of it. However, the Court ruled that that was not so in the present case. Consequently, in its view, the Board of Appeal was – on the basis of the perception of that figurative element as a simple straight line, slightly inclined or on the diagonal, traversing a bottle – correct in finding that, as other figurative elements were present, that element was less distinctive and played a secondary role in the assessment of the similarity of the marks at issue. The Court ruled that that finding cannot be called into question by the applicant’s argument that the blade of grass is a particularly striking or original element. In that regard, according to the Court, it should be recalled that the figurative element in the marks at issue, as represented and registered, is a straight line, slightly inclined or diagonal, which will be perceived as a line traversing the bottle and not as a blade of grass. As a straightforward shape, that line does not appear to be particularly original or striking. In addition, in the case of both the mark applied for and the earlier mark, that line is subordinate due to the presence of other word and figurative elements in those marks. Consequently, it becomes less visible and, accordingly, its capacity to have an impact on the mind of the consumer is diminished.
124    As regards the earlier three-dimensional French mark at issue in the present case, it must be stated all the more that only a more realistic representation of the blade of grass, or a true image of a blade of grass placed inside a bottle, could have clearly and precisely established the presence of a blade of grass in that mark, which, furthermore, could have been confirmed by the description of that mark, which would then have been in alignment with the representation. That is not, however, so in the present case.
125    Third, in general, evidence of use which is submitted cannot influence the definition of the precise subject of the protection afforded by a mark. Indeed, that subject is defined by the representation of the mark set out in the certificate of registration, possibly clarified and made more precise by the description where the description aligns with the representation, but cannot be modified in any way by the actual use of the mark on the market. Moreover, Article 44(2) of Regulation No 40/94 (which became Article 43(2) of Regulation No 207/2009, and subsequently Article 49(2) of Regulation 2017/1001) does not allow a subsequent amendment to the application substantially to change the mark.
126    After all, in the present case, the lack of precision and clarity of the representation, together with its description, rather tends to be confirmed by the fact that the applicant has provided evidence which reproduced the earlier mark differently in comparison to the nature, length and position of the line in the representation set out in the certificate of registration (see, to that effect, judgments of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 45, and of 30 November 2017, Combination of the colours blue and silver, T‑101/15 and T‑102/15, EU:T:2017:852, paragraph 65).
127    Finally, in paragraph 45 of the contested decision, the Board of Appeal correctly stated that the earlier mark cannot protect the concept of a blade of grass in a bottle.
128    In that regard, the Court held that an abstract representation of a concept in any conceivable form will not exhibit the qualities of precision and uniformity required by Article 4 of Regulation No 40/94. Indeed, such a representation would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling it to make further purchases with certainty, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark (see, to that effect, judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 38; see also, to that effect and by analogy, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraphs 33 to 35).
129    Furthermore, the Court ruled that the subject matter of an application for registration of a trade mark which relates to every conceivable form of a product or part of a product does not constitute a ‘sign’ within the meaning of Article 4 of Regulation No 40/94 and, therefore, is not capable of constituting a trade mark within the meaning of that provision (see, by analogy, judgment of 25 January 2007, Dyson, C‑321/03, EU:C:2007:51, paragraph 40).
130    It follows that trade mark law does not permit protection of a concept or of an idea, but only protection of a concrete expression of a concept or of an idea, such as that incorporated in the sign and defined by the representation of that sign.
131    The applicant itself acknowledges that it does not intend to appropriate to itself any representation of a blade of grass in a bottle, but rather claims exclusivity over a specific representation, which forms part of its mark, of a combination of those two elements.
132    It is therefore the concrete representation of the earlier mark that determines the precise subject of the protection conferred by that mark for the purpose of examining the nature of use of that mark.
133    Clearly, it is apparent from the representation of the earlier mark, as correctly identified by the Board of Appeal, that the precise subject of the protection conferred by that mark relates solely to ‘a commonly shaped bottle with a line on the body of it which runs diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’ and not, as the applicant claims, a blade of grass.
134    The first complaint must therefore be rejected as being unfounded.
The second, third and fourth complaints, alleging, respectively, that (i) an erroneous and inadequate criterion of genuine use of the earlier mark was applied, (ii) account was not taken of the possibility of the joint use of several trade marks and (iii) there was no alteration of the distinctive character of the earlier mark at the time of its use
135    By the second complaint, the applicant claims that the Board of Appeal ‘once again’ applied an improper and inadequate test of genuine use of the earlier three-dimensional French mark on account of its ‘simplistic, two-dimensional’ approach, did not take a dynamic approach in relation to the views from various sides, and in doing no more than assessing the items of evidence independently of each other, failed to analyse them jointly. By the third complaint, the applicant claims that the Board of Appeal disregarded the possibility of the joint use of several trade marks of various types by incorrectly stating that the use of the label changes the distinctive character of the mark at issue. By the fourth complaint, it submits that the Board of Appeal incorrectly assessed genuine use of that mark within the meaning of Article 15(1)(a) of Regulation No 207/2009, by erroneously restricting genuine use only to cases where the form is ‘the same’ or ‘identical’ to that registered and by failing to acknowledge that minor differences in the length and position of the blade of grass in the bottle used on the French market had not altered the distinctive character of that mark as registered.
–       Legislation and case-law
136    Pursuant to the provisions of Article 15(2)(a) of Regulation No 40/94 (which became point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 and subsequently point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001), proof of genuine use of an earlier national or EU trade mark also includes evidence of the use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered.
137    It follows directly from the wording of Article 15(2)(a) of Regulation No 40/94 that the use of the trade mark in a form which is different from the form in which it was registered is regarded as use for the purposes of Article 15(1), to the extent that the distinctive character of the trade mark in the form in which it was registered is not changed (see, to that effect, judgments of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 21; of 28 February 2017, Labeyrie v EUIPO – Delpeyrat (Representation of a sowing of light coloured fish on a dark background), T‑767/15, not published, EU:T:2017:122, paragraph 18; and of 28 June 2017, Tayto Group v EUIPO – MIP Metro (real), T‑287/15, not published, EU:T:2017:443, paragraph 22). The rule whereby the use of a mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered is also regarded as use of that mark may be referred to, for the sake of brevity, as the ‘law of permissible variations’ (see, to that effect, judgment of 19 June 2019, Representation of three parallel stripes, T‑307/17, EU:T:2019:427, paragraph 48).
138    Furthermore, it should be clarified that Article 15(2)(a) of Regulation No 40/94 relates to a situation where a registered national or EU trade mark is used in trade in a form which is slightly different from the form in which registration was made. The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the form of the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgments of 23 February 2006, Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 50; of 28 February 2017, Representation of a sowing of light coloured fish on a dark background, T‑767/15, not published, EU:T:2017:122, paragraph 20; and of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 90).
139    Accordingly, a finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the added elements based on the inherent qualities of each of those elements and the relative position of the different elements within the arrangement of the trade mark (see judgment of 10 June 2010, Atlas Transport v OHIM – Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 31 and the case-law cited; judgments of 24 September 2015, Klement v OHIM – Bullerjan (Form of an oven), T‑317/14, not published, EU:T:2015:689, paragraph 32, and of 28 February 2017, Representation of a sowing of light coloured fish on a dark background, T‑767/15, not published, EU:T:2017:122, paragraph 21).
140    For the purposes of that finding, account must be taken of the inherent qualities and, in particular, the greater or lesser degree of distinctive character of the registered mark where it is used solely as part of a complex trade mark or jointly with another mark. The weaker the distinctive character, the easier it will be to alter it by adding a component that is itself distinctive, and the more the mark in question will lose its ability to be perceived as indicative of the origin of the product. The reverse is also true (judgments of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 33; of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 29; and of 28 February 2017, Representation of a sowing of light coloured fish on a dark background, T‑767/15, not published, EU:T:2017:122, paragraph 22).
141    For a trade mark to possess distinctive character for the purposes of Regulation No 40/94, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited; judgment of 28 February 2017, Representation of a sowing of light coloured fish on a dark background, T‑767/15, not published, EU:T:2017:122, paragraph 19).
142    Accordingly, the condition of genuine use of a trade mark may only be satisfied where a trade mark is used in conjunction with another mark, provided that the mark continues to be perceived as indicative of the origin of the product concerned (judgments of 28 February 2017, Representation of a sowing of light coloured fish on a dark background, T‑767/15, not published, EU:T:2017:122, paragraph 48; of 10 October 2017, Klement v EUIPO – Bullerjan (Form of an oven), T‑211/14 RENV, not published, EU:T:2017:715, paragraph 47; and of 28 February 2019, PEPERO original, T‑459/18, not published, EU:T:2019:119, paragraph 97).
143    Account must also be taken of the particular category of the earlier trade mark used solely as part of a complex trade mark or in conjunction with another mark (judgment of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 34).
144    It is true that for three-dimensional marks, consisting, as in the present case, of the appearance of the product itself, it is settled case-law that the criteria for assessing their distinctive character are no different from those applicable to other categories of trade mark (see judgment of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 45 and the case-law cited). That case-law can be applied to the assessment of the genuine use of such three-dimensional marks. Indeed, under neither Regulation No 40/94 nor the case-law are different, or stricter, criteria to be applied to them. In particular, it cannot be required as a matter of principle that those marks be used in isolation or that they have a particularly high degree of distinctive character, whether inherent or acquired through use (judgment of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 35).
145    However, when assessing both distinctive character and alteration in case of joint use with another mark, account must also be taken of the specific perception of the shapes of the goods by the average consumer. Nonetheless, for the purpose of applying those criteria, the average consumer’s perception is not necessarily the same in respect of a three-dimensional mark consisting of the shape of the product itself as it is in the case of a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes. Average consumers are not in the habit of making assumptions as to the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it may therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark. In those circumstances, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 (see judgment of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraphs 30 and 31 and the case-law cited; judgments of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 80, and of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 36).
146    Applied to the assessment of genuine use of a three-dimensional mark consisting of the shape of the product itself, that case-law implies that, in the event of joint use of the product with another mark, it may be easier to establish the alteration of the distinctive character of such a three-dimensional mark than the alteration of the distinctive character of a word or figurative mark (judgment of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 37).
147    As regards a three-dimensional mark consisting of the shape of the product itself, to reach the conclusion that the earlier mark was actually used in accordance with its essential function, the proof of use must take the form of elements which enable an unequivocal conclusion to be drawn that the consumer is in a position to associate the shape protected by the earlier mark with a particular undertaking (see, to that effect, judgments of 27 September 2018, M J Quinlan & Associates v EUIPO – Intersnack Group (Shape of a kangaroo), T‑219/17, not published, EU:T:2018:610, paragraph 33, and of 28 February 2019, PEPERO original, T‑459/18, not published, EU:T:2019:119, paragraph 72).
148    Finally, it must be held that, where a trade mark is extremely simple, even minor alterations to that mark are capable of constituting significant variations, so that the amended form may not be regarded as broadly equivalent to the registered form of that mark. Indeed, the simpler the mark, the less likely it is to have a distinctive character and the more likely it is for an alteration to that mark to affect one of its essential characteristics and thereby perception of that mark by the relevant public (see, to that effect, judgments of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraphs 33 and 52 and the case-law cited, and of 19 June 2019, Representation of three parallel stripes, T‑307/17, EU:T:2019:427, paragraph 72).
–       Application to the present case
149    In the present case, as regards the fourth complaint, in the first place, it is clear that the earlier mark, as represented, which protects ‘a commonly shaped bottle with a [straight] line on the body of it which runs diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’ and not a blade of grass (see paragraphs 115 and 133 above), has not been used as such, in an identical shape by the applicant in the evidence provided.
150    As regards the evidence submitted before the Opposition Division (see paragraph 15 above) which included bottles, none of those bottles bore an uninterrupted diagonal line and even less so a straight line identical to that found in the earlier mark. In addition, that line is not affixed on the outside surface of any of the bottles and did not appear on or across the label itself. Furthermore, all the bottles have a non-transparent label (illegible or bearing the words ‘żubrówka bison vodka’), which is capable of affecting the visibility and perception of what is behind it.
151    As regards the evidence submitted out of time before the Board of Appeal (see paragraph 25 above) and, more specifically the photographs, together with Mr K.’s statement, of the bottle with the ‘żubrówka bison vodka’ label and depicted that time not only with a view from the front but also from the back and with two side views, it must be stated that, from the side views, a long uninterrupted line can indeed be observed.
152    However, those lines appearing in the two side views in that item of evidence, although slightly different from one another, are very different from the straight diagonal line in the earlier mark. They differ in their nature, not being completely straight but rather slightly curved, in their being longer and in their position, since they start and end at different points on the edge and in the bottom part of the bottle, which also results in a different angle.
153    Therefore, the Board of Appeal correctly concluded in paragraphs 40 to 42 of the contested decision that none of the evidence submitted before the Opposition Division (see paragraph 15 above) or before it (see paragraph 25 above) showed the mark in its registered form, that is to say, as it is graphically represented in the certificate of registration.
154    In the second place, it must be observed that nor has the applicant used the earlier mark, as it was represented, which protects ‘a commonly shaped bottle with a [straight] line on the body of it which runs diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’ and not a blade of grass (see paragraphs 115 and 133 above), in a form differing in elements which do not alter the distinctive character of the mark in the form in which it had been registered or by negligible variations.
155    In that regard, account must be taken, as the Board of Appeal did in paragraph 44 of the contested decision, of the fact that the distinctive character of the earlier mark as such is weak. Indeed, that mark consists of a commonly shaped bottle with a simple straight line of a precise length, placed in a specific position resulting in a particular angle. In the overall impression, it is that simple straight line, and its precise length and specific position, that renders the trade mark a little distinctive.
156    Accordingly, the scope of protection of the earlier mark as defined by its graphic representation proves to be narrow and its distinctive character is easily altered (see paragraph 140 above), all the more so because it is a three-dimensional mark (see paragraphs 143 and 147 above).
157    The forms set out in the evidence submitted differ from the form protected by the earlier mark by significant variations in nature, length and position (see paragraph 152 above) and cannot be regarded as ‘significant’ or ‘broadly equivalent’ to the mark as registered within the meaning of the case-law (see paragraph 148 above).
158    Therefore, the Board of Appeal was correct in finding in paragraphs 43 to 45 of the contested decision that that use, as demonstrated by the evidence submitted for the first time before it, not only was not use of the earlier mark as registered, but was also not use in a form which differed in elements which did not alter the distinctive character of the mark in the form in which it had been registered as provided for in point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009.
159    Thus, clearly the earlier mark as used, as may be seen from the evidence submitted, does not align with that mark as represented and registered, and the differences between them constitute an alteration of the distinctive character of the mark as represented and registered which goes beyond negligible variations under the ‘law of permissible variations’.
160    The fourth complaint must therefore be rejected as unfounded.
161    As regards the second complaint, concerning the criteria for assessing use in respect of three-dimensional marks, first of all, it is sufficient to note that, in essence, it reiterates the third complaint of the first plea, which in paragraph 81 above has already been rejected as having no factual basis.
162    In addition, as EUIPO pointed out, while it is certainly correct that the three-dimensional character of a trade mark calls for a dynamic approach which takes account of the different views of the trade mark as presented in the evidence of use as a whole, the Board of Appeal can consider such views only if they are actually submitted. The file contains only one set of reproductions of a bottle from different angles, namely the photographs attached to Mr K.’s statement which were submitted out of time (see paragraph 25 above) and the Board of Appeal analysed that single set of pictures from all angles (paragraph 42 of the contested decision). However, adopting a ‘dynamic approach’ cannot mean having to imagine how the different sides of a product could possibly look based on a view from only one side, when no proof has been submitted in that regard.
163    Even for the photographs reproduced in paragraph 25 above, in respect of which a dynamic analysis makes it possible to discern a slightly curved line, or even a blade of grass, behind the label, clearly that line, by its nature, length and position, differs substantially from the earlier mark, which is defined as ‘a commonly shaped bottle with a [straight] line on the body of it which runs diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’.
164    Finally, as regards the claim that there was no joint analysis of the evidence submitted to prove the extent of use, it is sufficient to recall that the Board of Appeal correctly took the view, on the basis of the evidence submitted, that the differences between the mark as used and the mark as registered were such as to alter the distinctive character of the mark as registered. Therefore, the Board of Appeal was also correct, in paragraphs 46 and 47 of the contested decision, in being able to conclude that, even taking account of the evidence submitted for the first time before it, the applicant had failed to prove the nature of use of the earlier mark, which was a necessary requirement for proving genuine use of that mark, and from that inferred that, for that reason alone, it was not necessary to ‘further’ examine that evidence in order to assess the extent of use of that mark. Indeed, while the Board of Appeal observed, correctly, that the evidence of use did not align with the scope of the protection conferred by the earlier mark (see paragraphs 149 to 160 above), it was not required to analyse that evidence further, in particular in relation to the extent of use.
165    The second complaint must therefore also be rejected as ineffective.
166    As regards the third complaint, concerning the possibility of the joint use of several trade marks of various types, it is true that it must be borne in mind that, in accordance with established case-law, the use of a mark may also encompass both its independent use and its use as part of another mark or in conjunction with that other mark (judgment of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraph 32; see also, to that effect, judgments of 18 July 2013, Specsavers International Healthcare Ltd and Others, C‑252/12, EU:C:2013:497, paragraphs 23, 24 and 26, and of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 29).
167    However, it is important to make clear that a registered trade mark which is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term ‘genuine use’ within the meaning of Article 15(1) of Regulation No 40/94 (judgments of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraph 35, and of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 30).
168    In the present case, in the first place, it should be noted that, while the Board of Appeal referred to the presence of the label (illegible or bearing the words ‘żubrówka bison vodka’), that was primarily because it took the view that the presence of that label affected the visibility and perception of the earlier three-dimensional French mark on the evidence of use, and not only because the presence of a mark of another type, whether verbal or figurative, altered the distinctive character of that mark. Indeed, in the photographs reproduced in paragraph 15 above, depending on the photograph in question, either no line is visible, or nothing is visible in the bottom part of the bottle under the label, or indeed a number of (two or three) lines are visible under the label.
169    Therefore, as EUIPO maintains, it is not the sole fact that several marks were used on the same product that led the Board of Appeal to the conclusion that the use of the earlier mark was not proven, but primarily the fact that it was difficult to detect what was behind the label, especially since the photographs were contradictory as to the absence or existence of a line or blade of grass.
170    It follows that the Board of Appeal in no way called into question the case-law on the possibility of joint use of several marks of different types cited in paragraphs 166 and 167 above, in accordance with which the condition of genuine use of a mark may be fulfilled when a mark is used in conjunction with another mark, provided that the mark continues to be perceived as indicative of the origin of the product at issue.
171    In the second place and in any event, it must be held, a view shared by the intervener, that the conditions for such joint use of a three-dimensional mark in conjunction with other marks are not fulfilled in the present case. While the combined use of two marks may, admittedly, in general, constitute use of one of those marks, that is, however, the case only if the distinctive character of that mark is not altered, that condition being fulfilled only if the relevant public perceives that mark individually and independently of the other mark as indicative of origin.
172    In the present case, not only is the earlier mark used in conjunction with another mark, affixed on a non-transparent label, which impedes visibility and affects the perception of the distinctive part of that earlier mark, but, in any event, the applicant has failed to demonstrate, in the evidence of use submitted, the individual and independent perception of that mark as indicative of origin by the relevant public, for example by producing a market survey.
173    In that regard, the Court has already ruled, in relation to a drawing comparable to photographs, that (i) the line was subordinate due to the presence of other word and figurative elements in the marks used jointly, (ii) it thereby became less visible and (iii) accordingly, its capacity to have an impact on the mind of the consumer was diminished (see, to that effect, judgments of 12 November 2015, WISENT, T‑449/13, not published, EU:T:2015:839, paragraph 98, and of 12 November 2015, WISENT VODKA, T‑450/13, not published, EU:T:2015:841, paragraph 100).
174    That is also so in the present case. It has not been demonstrated that the earlier trade mark, when used together with the word mark ŻUBRÓWKA BISON VODKA or with the graphic elements concerning the bison on the label, continues to be perceived as indicative of origin by the relevant public. That is even less the case because the inherent distinctive character of the earlier mark is weak (see paragraph 155 above), clearly weaker than that of that word mark and, consequently, substantially altered by it (see paragraph 156 above).
175    Moreover, it must be recalled that the distinctive character of the earlier mark is primarily altered by the fact that the lines present in the evidence of use, even though submitted out of time, differ substantially from that shown in the representation of the earlier mark by their nature, being not 100% straight but slightly curved, by their being longer and their position being different, their not starting at the same point in the bottom part of the bottle, resulting in a different angle (see paragraph 151 above). In the overall impression, it is that straight line, with its specific position and length, which makes the earlier mark a little distinctive, since it consists of a commonly shaped bottle with such a line.
176    Furthermore, as regards market practice in the alcoholic beverages sector, it must be recalled that the judgment of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) (T‑29/04, EU:T:2005:438), concerns the combination of a number of word and figurative marks on the labels of a bottle, and not three-dimensional marks. In addition, even where there is an obligation to label bottles, it is for the owner to decide on the format, colour, size and layout of the label, as there is no requirement under legislation to use non-transparent labels which impede visibility and affect the perception by the relevant public of any blade of grass in the bottles.
177    Since the distinctive character of the earlier mark, which is inherently weak, is substantially altered in the evidence of use by the other marks or elements found on the label, the requirements for joint use are not fulfilled.
178    The third complaint must be rejected as having no factual basis and, in any event, as being unfounded.
179    It is therefore necessary to uphold the assessment of the Board of Appeal that the use of the earlier three-dimensional French mark, as represented and registered, has not been proven.
180    In the light of all of the foregoing, the second plea must be rejected.
The third plea in law: infringement of Article 75 and Article 76(1) of Regulation No 207/2009
181    By the third plea, the applicant claims that the Board of Appeal infringed Article 75 of Regulation No 207/2009 (failure to state reasons) and Article 76(1) of Regulation No 207/2009 (failure to examine the facts correctly). In that regard, it relies on four complaints, the first three of which must be examined together, concerning the ground for opposition set out in Article 8(1) of Regulation No 207/2009, and the last of which must be examined separately, concerning the grounds for opposition set out in Article 8(3) and (4) of that regulation.
The first three complaints concerning various infringements of the obligation to state reasons
182    By its first complaint, the applicant claims that the Board of Appeal’s finding that ‘the distinctive character of the earlier French mark … is rather weak’ (paragraph 44 of the contested decision) is totally arbitrary and not supported by any reasoning nor corroborated by any evidence. In addition, according to the applicant, that finding is contrary to the evidence submitted (namely the extracts from the French press and from French websites) referring to a single blade of grass as a symbol of the ŻUBRÓWKA mark and showing that, for consumers, ‘this element is original and serves as an indication of the [applicant’s] original product’.
183    By the second complaint, the applicant maintains that the Board of Appeal’s reasoning contains an internal contradiction by stating, on the one hand, that the earlier mark was ‘rather weak’ (paragraph 44) but by ‘suggesting’, on the other hand, that even the slightest change in the ‘line’ would alter the distinctive character of the trade mark (paragraphs 42 to 44 of the contested decision). In the applicant’s view, if the trade mark or elements thereof are found to be only a little distinctive, then clearly minor changes to the elements which are only a little distinctive cannot alter the distinctive character of the trade mark.
184    By the third complaint, the applicant claims that the Board of Appeal has failed to explain to the requisite legal standard why the evidence of the use of the earlier three-dimensional French mark (in particular the side views) did not constitute use in a form differing in elements which do not alter the distinctive character of the trade mark in the form in which it was registered, whereas the use of a three-dimensional mark in varying sizes or with labels added amounts to use of the trade mark as registered.
185    EUIPO and the intervener dispute the applicant’s arguments.
186    It should be recalled that, pursuant to the first sentence of Article 75 of Regulation No 207/2009 (now the first sentence of Article 94 of Regulation 2017/1001), decisions of EUIPO are to state the reasons on which they are based. Furthermore, Rule 50(2)(h) of Regulation No 2868/95 (now, in essence, Article 32(i) of delegated Regulation 2018/625) provides that the decision of the Board of Appeal is to contain the reasons for which the decision had been taken. That obligation has the same scope as that enshrined in Article 41(2)(c) of the Charter of Fundamental Rights of the European Union and in Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must set out clearly and unequivocally the reasoning of the body which adopted the act in question. That duty has two purposes: first, to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and, second, to enable the EU courts to exercise their power to review the legality of the decision. Whether the statement of reasons for a decision meets those requirements must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see the judgment ordering annulment, paragraph 42 and the case-law cited).
187    In addition, in accordance with settled case-law, the obligation to state reasons is an essential procedural requirement, as distinct from the question whether the reasons given are correct, the latter going to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect. It follows that objections and arguments intended to establish that a measure is not well founded are irrelevant in the context of a ground of appeal alleging an inadequate statement of reasons or a lack of such a statement (see judgment of 19 September 2018, Volkswagen v EUIPO – Paalupaikka (MAIN AUTO WHEELS), T‑623/16, not published, EU:T:2018:561, paragraph 71 and the case-law cited).
188    For its part, Article 76(1) of Regulation No 207/2009, as amended by Regulation 2015/2424, entitled ‘Examination of the facts by [EUIPO] of its own motion’, is worded as follows:
‘In proceedings before it, [EUIPO] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.’
189    As regards the first complaint, it is sufficient to state that the Board of Appeal, in paragraph 44 of the contested decision, justified its observation that ‘the distinctive character of the earlier … mark … [wa]s rather weak’ by the fact that ‘it consist[ed] of a commonly shaped bottle with a simple straight line placed in a specific positioning and length on it’. It thereby provided adequate reasoning. Moreover, that reasoning is well founded (see paragraph 155 above).
190    As regards the second complaint, it is sufficient to state that the Board of Appeal’s assessments in paragraphs 42 and 44 of the contested decision are in no way contradictory. Indeed, in paragraph 44 of that decision, the Board of Appeal in no way ‘suggested’ that ‘even the slightest change in the line would alter the distinctive character of the earlier mark’, rather it simply stated that ‘the scope of protection of the earlier mark as defined by its graphic representation [was] very weak and [that] therefore a form differing in the way as shown in the evidence filed by no means constitutes use of the earlier mark’. It thereby provided reasoning which is coherent and not contradictory. Moreover, that reasoning is well founded, in accordance with the case-law cited above, in accordance with which the simpler the mark, the less likely it is to have a distinctive character and the more likely it is for an alteration to that mark to affect one of its essential characteristics and thereby perception of that mark by the relevant public (see paragraph 148 above).
191    With regard to the third complaint, it is sufficient to state that the Board of Appeal, in paragraphs 46 and 47 of the contested decision, justified the fact that there was no need to further examine the evidence submitted by the fact that that evidence did not demonstrate the nature of use of the earlier mark. It thereby provided adequate reasoning. Moreover, that reasoning is well founded (see paragraphs 163 and 164 above). In addition, the Board of Appeal in no way called into question the case-law on the joint use of two marks (see paragraph 166 to 176 above).
192    The Board of Appeal’s reasoning concerning those three complaints thereby allows, first, the applicant to know the reasons for the contested decision in that regard in order to protect its rights and, second, the Court, hearing the present case, to exercise its power to review the legality of those aspects of that decision. This is shown by the arguments that the applicant was able to put forward in relation to its second plea (see paragraphs 83 to 90 above) and the Court was able to assess their substance. In addition, the Board of Appeal duly considered the facts submitted in that regard by the applicant.
193    The first three complaints therefore cannot succeed.
The fourth complaint, concerning the reference by the Board of Appeal to the reasoning of an earlier decision annulled by the Court
194    By the fourth complaint, the applicant maintains that the Board of Appeal failed to address the remaining grounds of appeal and of opposition, based on Article 8(3) and (4) of Regulation No 207/2009. In paragraph 48 of the contested decision, it merely referred to the reasoning stated for its initial decision in Case R 2506/2010‑4. The applicant argues that the Board of Appeal seems to have ‘overlooked’ the fact that the earlier decision had been annulled in its entirety by the judgment ordering annulment. Accordingly, it maintains that in the contested decision, the Board of Appeal should have ruled on all the grounds relied on by the applicant in its appeal and could not refer to a decision which no longer existed.
195    EUIPO disputes those arguments. It points out that, as stated in paragraph 29 of the judgment ordering annulment, it was the applicant itself which restricted its arguments solely to the Board of Appeal’s findings on the assessment of the evidence of use adduced in the initial decision and it was the applicant which submitted that those findings also concerned all the grounds put forward in support of the opposition.
196    The intervener disputes those arguments. It takes the view that the Board of Appeal’s reference to the initial decision of 26 March 2012 in Case R 2506/2010‑4 to demonstrate that the requirements of Article 8(3) and (4) of Regulation No 207/2009 were not met likewise does not constitute an infringement of Articles 75 and 76 of that regulation. It is of the opinion that, following the proceedings before the Court, Article 8(3) and (4) of that regulation no longer formed part of the subject matter of the dispute before the Board of Appeal because the subject matter of the judgment ordering annulment was the infringement of Articles 75 and 76 of that regulation with regard to Article 8(1)(a) of that regulation, and concerned solely the evidence of use. It observes that the subject matter of the proceedings was limited – by the applicant itself – to the infringement of those provisions because the applicant had stated in paragraph 5.2 of its previous application that it ‘restrict[ed] its arguments solely to the Board of Appeal’s findings on the assessment of the evidence of use adduced, as those findings also concern[ed] all the grounds put forward in support of the opposition’. However, the intervener takes the view that the evidence regarding use does not concern all the grounds of opposition referred to in Article 8(3) and (4) of Regulation No 207/2009 because, in accordance with the case-law arising from the judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar
(C‑96/09 P, EU:C:2011:189, paragraph 143), it has no right to request proof of use of those rights. On the contrary, it states that a use request may only be requested for earlier rights in the sense of Article 8(1) of that regulation. It is for that reason that the intervener is of the view that Article 8(3) and (4) of that regulation was no longer at issue in the former proceedings before the Court and nor are those provisions the subject matter of the present proceedings concerning the contested decision.
197    In addition, the intervener submits that, in paragraphs 20 to 34 of the initial decision of 26 March 2012, the Board of Appeal provided detailed reasoning why those provisions did not apply. However, the applicant did not provide any argument or reasoning why that part of the decision was flawed, but only referred, incorrectly, to the question of genuine use being a prerequisite for the assessment of those grounds. According to the intervener, that is not in line with Article 76(d) of the Rules of Procedure, which requires the applicant to provide in detail the arguments why EUIPO has infringed the law. Therefore, in its view, even if the applicant had wanted to appeal against the initial decision in relation to Article 8(3) and (4) of Regulation No 207/2009, that plea was inadmissible and the decision could not be annulled on the basis of those provisions. The intervener contends that, when the Court annulled the decision in its entirety, it could only annul it as far as it was contested. However, the applicant did not contest the rejection of the grounds of opposition set out in Article 8(3) and (4) of Regulation No 207/2009. In addition, the limitation to the ground of opposition set out in Article 8(1) of that regulation is also apparent from the applicant’s reasoning, which claimed infringement of that ground only.
198    It should be noted that the Board of Appeal, in paragraph 48 of the contested decision, ‘as regards the other grounds of the opposition and the other earlier rights invoked, … explicitly refer[red] to the reasoning in its decision of 26 March 2012, Case R 2506/2010‑4’.
199    Clearly, that initial decision had been annulled in its entirety by the Court in the judgment ordering annulment, which was not appealed against and has become res judicata.
200    Since a judgment annulling a measure takes effect ex tunc and thus has the effect of retrospectively eliminating the annulled measure from the legal system (see paragraph 72 above), that initial decision does not exist in the EU legal order and can therefore have no effect.
201    Consequently, that initial decision does not form part of the legal context in the light of which the statement of reasons of the contested decision must be assessed.
202    Moreover, an opposition based on more than one ground can be rejected only if all the grounds on which it relies are examined and rejected.
203    It follows that the Board of Appeal, when providing the basis for the operative part of the contested decision rejecting all the grounds of opposition relied on, was not permitted to refer, for certain of those grounds, to the reasoning of an initial decision which had been annulled in its entirety by the Court, without examining and rejecting each of the grounds of opposition.
204    It must therefore be concluded that, by doing no more than ‘referring explicitly’, in respect of the grounds of opposition laid down in Article 8(3) and (4) Regulation No 207/2009, to the reasoning contained in the initial decision, which was annulled in its entirety by the Court, and by basing the operative part of the rejection of the appeal before it in part on such a reference, the Board of Appeal failed to provide reasons for the contested decision to the requisite legal standard, which infringed Article 75 of Regulation No 207/2009.
205    That conclusion is not weakened by the fact that the Court, in paragraph 29 of the judgment ordering annulment, observed as follows:
‘… the applicant challenges [EUIPO]’s findings and assessments of all the grounds put forward in support of the opposition, that is to say, those listed in Article 8(1)(a), Article 8(3) and Article 8(4) of Regulation No 207/2009. However, the applicant states that it was restricting its arguments solely to the Board of Appeal’s findings on the assessment of the evidence of use adduced, as those findings also concern all the grounds put forward in support of the opposition.’
206    In that regard, without it being necessary to establish whether or not the assessment of the evidence of use submitted concerned all the grounds of opposition in the same way, it is sufficient to find that the fact that the Court upheld, in the judgment ordering annulment, the third plea, claiming infringement of Article 75 and of Article 76(1) of Regulation No 207/2009 and regarding the Board of Appeal’s failure to take into account, without stating reasons, certain evidence of use, was liable to call into question, at the very least, the examination of the ground of opposition set out in Article 8(1)(a) and (b) of that regulation and, consequently, the entire operative part of the initial decision, dismissing the appeal against the Opposition Division’s decision rejecting the opposition.
207    Indeed, where, on an appeal against a decision of the Board of Appeal such as the initial decision, the Court finds that the Board of Appeal’s assessment is invalid, even if as regards only one of the grounds of opposition relied on, it must annul that decision in its entirety, as it did in the judgment ordering annulment.
208    The fourth complaint of the third plea raised in support of the present action must therefore be upheld.
209    In light of all the foregoing, the contested decision must be annulled solely with regard to the grounds of opposition set out in Article 8(3) and (4) of Regulation No 207/2009, as referred to by the fourth complaint of the third plea, and the action must be dismissed as to the remainder, that is to say, in respect of all the grounds of opposition set out in Article 8(1)(a) and (b) of that regulation.
Costs
210    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Moreover, under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.
211    In the present case, the applicant has been unsuccessful in part, since the finding on the substance of the fourth complaint of the third plea leads to the annulment of the contested decision solely as regards the grounds of opposition set out in Article 8(3) and (4) of Regulation No 207/2009 and the action is dismissed as to the remainder. For their part, EUIPO and the intervener have been unsuccessful solely in relation to that complaint, whereas the action is dismissed in respect of all the grounds of opposition set out in Article 8(1)(a) and (b) of that regulation.
212    Consequently, it is held that each party is to bear its own costs.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2016 (Case R 1248/2015‑4) in respect of the grounds of opposition set out in Article 8(3) and (4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark;
2.      Dismisses the action as to the remainder;
3.      Orders CEDC International sp. z o.o., EUIPO and Underberg AG to bear their own costs.
Costeira
Gratsias
Kancheva
Delivered in open court in Luxembourg on 23 September 2020.
E. Coulon
S. Papasavvas
Registrar
President
Table of contents
Background to the dispute
Procedure and forms of order sought
Law
Preliminary observations
On the applicable law ratione temporis
The subject matter of the present dispute
The first plea in law: infringement of Article 65(6) of Regulation No 207/2009
The second plea in law: infringement of Article 15(1) of Regulation No 207/2009 and of Rule 22(3) of Regulation No 2868/95, as well as of Article 8(1)(a) and (b) and of Article 42(2) and (3) of Regulation No 207/2009
The first complaint: incorrect identification of the earlier mark
– Legislation and case-law
– Application in the present case to defining the precise subject of the protection conferred by the earlier mark and to whether its description aligns with its representation
The second, third and fourth complaints, alleging, respectively, that (i) an erroneous and inadequate criterion of genuine use of the earlier mark was applied, (ii) account was not taken of the possibility of the joint use of several trade marks and (iii) there was no alteration of the distinctive character of the earlier mark at the time of its use
– Legislation and case-law
– Application to the present case
The third plea in law: infringement of Article 75 and Article 76(1) of Regulation No 207/2009
The first three complaints concerning various infringements of the obligation to state reasons
The fourth complaint, concerning the reference by the Board of Appeal to the reasoning of an earlier decision annulled by the Court
Costs
*      Language of the case: English.
1      This judgment is published in extract form.