JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
2 March 2022 (*)
(EU trade mark – Revocation proceedings – EU word mark MOOD MEDIA – Genuine use of the mark – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) – Article 15(1)(a) of Regulation No 207/2009 (now Article 18(1)(a) of Regulation 2017/1001) – Proof of genuine use)
In Case T‑615/20,
Mood Media Netherlands BV, established in Naarden (Netherlands), represented by A.‑M. Pecoraro, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Tailoradio Srl, established in Milan (Italy), represented by M. Franzosi, A. Sobol, F. Santonocito and S. Bernardini, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 24 July 2020 (Case R 1767/2019‑1), relating to revocation proceedings between Tailoradio and Mood Media Netherlands,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen (Rapporteur) and J. Schwarcz, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 October 2020,
having regard to the response of EUIPO lodged at the Court Registry on 16 February 2021,
having regard to the response of the intervener lodged at the Court Registry on 10 February 2021,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
I.      Background to the dispute
1        On 11 May 2007, Mood Media SAS, the predecessor in title to the applicant, Mood Media Netherlands, 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 word sign MOOD MEDIA.
3        The goods and services in respect of which registration was sought are in, inter alia, Classes 9, 35, 38, 41 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 9: ‘Apparatus and media for recording and reproduction of sound or images’;
–        Class 35: ‘Advertising by the distribution of recorded messages and/or images, advertising management’;
–        Class 38: ‘Transmission and distribution of images, sound and messages via radio, television, the Internet and satellite’;
–        Class 41: ‘Music and radio entertainment and television and video entertainment, production of films, rental of films, sound recordings and equipment for recording and broadcasting of sound and images’;
–        Class 42: ‘Consultancy relating to the fitting out of areas and the technical fitting out and design of such areas for the projection of video and audio cassettes, compact discs, CD-ROMs and DVDs; production, updating and maintenance of software for the transmission and broadcasting of images, sound and messages via the Internet, for the encryption of data for the production of multimedia products’.
4        The trade mark application was published in Community Trade Marks Bulletin
No 5/2008 of 4 February 2008 and the mark was registered on 14 July 2008.
5        On 7 June 2017, the intervener, Tailoradio Srl, filed an application for revocation of that mark with EUIPO, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001). In that application, the intervener claimed that the contested mark had not, within a continuous period of five years, been put to genuine use in the European Union in connection with any of the goods and services in respect of which it had been registered and which have been referred to in paragraph 3 above (‘the goods and services concerned’).
6        By decision of 27 March 2019, which was rectified on 25 June 2019, the Cancellation Division rejected the application for revocation in respect of the goods and services concerned.
7        On 8 August 2019, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
8        By decision of 24 July 2020 (‘the contested decision’), the First Board of Appeal of EUIPO found that the applicant had not proved that it had made genuine use of the contested mark in connection with the goods and services concerned and annulled the Cancellation Division’s decision. In particular, the Board of Appeal found that it was apparent from some of the evidence that the contested mark was used as a company name, as an essential part of a domain name or in a form which differed from that which had been registered in such a way that the distinctive character of the contested mark had been altered. The Board of Appeal also found that the other items of evidence were scarce and isolated and that it had not been proved that a link could be established between the contested mark and the goods and services concerned. The Board of Appeal thus annulled the Cancellation Division’s decision in so far as it had rejected the application for revocation in respect of the goods and services concerned, and ordered the applicant to pay the costs.
II.    Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        reject the application for revocation;
–        order EUIPO to pay the costs.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
11      The intervener contends that the Court should:
–        dismiss the action and confirm the revocation of the contested mark;
–        consequently, uphold the contested decision revoking the contested mark;
–        order the applicant to pay the costs of the present proceedings and of the previous stages.
III. Law
12      It must be stated at the outset that, given the date on which the application for revocation in question was filed, namely, in the present case, 7 June 2017, which is decisive for the purposes of identifying the applicable substantive law, the present case is governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 2, and of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed in principle by the procedural provisions of Regulation 2017/1001.
13      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision, by the applicant in the arguments put forward, by the intervener and by EUIPO to Article 58(1)(a) and point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 must be understood as referring to Article 51(1)(a) and point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, the wording of which is identical.
A.      The issue of whether certain annexes to the application are admissible
14      The intervener contends, first, that Annexes 7 and 8.1 to 8.6 to the application have been submitted for the first time before the Court and that they are inadmissible pursuant to Article 72 of Regulation 2017/1001 and, secondly, that none of those documents has been translated into the language of the case, in infringement of Article 46 of the Rules of Procedure of the General Court.
15      In that regard, it must be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of evidence produced for the first time before it (see judgment of 30 September 2015, Gat Microencapsulation v OHIM – BASF (KARIS), T‑720/13, not published, EU:T:2015:735, paragraph 89 and the case-law cited).
16      First, it must be pointed out that Annex 7 to the application consists of a screenshot of the applicant’s French website, a screenshot from which it is apparent that it offers solutions for the management of all in-store experiences regarding sight, sound, scent, social and systems. However, there is no indication in the case file that the applicant could not, in order to establish which goods and services it was referring to, have submitted that document during the proceedings before EUIPO, with the result that it must be declared inadmissible in accordance with the case-law referred to in paragraph 15 above.
17      Secondly, it must be pointed out that Annexes 8.1 to 8.6 to the application consist of searches for the definition of the term ‘mood’ in French, German, Portuguese, Greek, Spanish and Romanian online dictionaries, in order to establish that the term ‘mood’ has no meaning in many countries of the European Union. It is true that an applicant is entitled to produce documents before the Court as evidence of the accuracy – or inaccuracy – of a well-known fact (see judgment of 19 June 2018, Erwin Müller v EUIPO – Novus Tablet Technology Finland (NOVUS), T‑89/17, not published, EU:T:2018:353, paragraph 16 and the case-law cited). However, the submission of those documents must seek to establish the existence of a well-known fact and must not be used to dispute, by means of new evidence brought before the Court, the assessments which have been made by the Board of Appeal. In the present case, the applicant, in submitting Annexes 8.1 to 8.6 to the application, seeks to dispute the Board of Appeal’s assessment of the term ‘mood’. Those annexes must therefore be declared inadmissible.
18      Thirdly, as regards the translation of Annexes 8.1 to 8.6 to the application, it must be stated that, since those annexes have been declared inadmissible in paragraph 17 above, the lack of translation of those annexes is irrelevant.
19      It follows from the foregoing that Annexes 7 and 8.1 to 8.6 to the application must be declared inadmissible.
B.      The first head of claim, seeking the annulment of the contested decision
20      By its first head of claim, the applicant requests that the Court annul the contested decision, in so far as it revoked the contested mark in respect of the goods and services concerned.
21      In support of its action, the applicant relies on a single plea in law alleging infringement of Article 51(1)(a) of Regulation No 207/2009, which is divided into three parts. First, the applicant takes the view that the Board of Appeal did not carry out a correct analysis of the distinctive character of the terms comprising the contested mark and of that mark itself. Secondly, it claims that the Board of Appeal erred in excluding evidence showing use of the contested mark in slightly modified forms. Thirdly, the applicant submits that the Board of Appeal erred in finding that the evidence of use of the contested mark which had been adduced mainly showed use as a trade name or a domain name and that it should have taken into account all the evidence of use submitted, including that relating to use as a trade name or a domain name.
22      It must be pointed out at the outset that it is apparent from recital 10 of Regulation No 207/2009 (now recital 24 of Regulation 2017/1001) that the legislature considered there to be no justification for protecting an earlier trade mark except where that mark was actually used. In that regard, Article 51(1)(a) of Regulation No 207/2009 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and there are no proper reasons for its non-use. There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 18 November 2015, Menelaus v OHIM – Garcia Mahiques (VIGOR), T‑361/13, EU:T:2015:859, paragraph 85 and the case-law cited).
23      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 18 November 2015, VIGOR, T‑361/13, EU:T:2015:859, paragraph 86 and the case-law cited).
24      It is in the light of those considerations that it must be assessed whether the Board of Appeal was right in finding, in paragraph 63 of the contested decision, that the evidence on file did not prove genuine use of the contested mark in relation to the goods and services concerned. To that end, it is therefore necessary to analyse, first of all, the distinctive character of the contested mark, for the purpose, next, of assessing the variations to which it was subject, in order, lastly, to ascertain whether the Board of Appeal took all the relevant evidence into consideration when assessing whether there had been genuine use of the contested mark.
1.      The first part of the plea, relating to the distinctive character of the contested mark
25      It must be pointed out at the outset that the applicant disputes the definition of the relevant public given by the Board of Appeal and takes the view that the relevant public is the general public and not a public of professionals.
26      However, in the light of the goods and services offered by the applicant, the Board of Appeal was right in finding that the relevant public consisted of the general public and also of professionals, as can be shown by the invoices which the applicant provided during the proceedings before EUIPO, some of which relate to the music sector. The applicant itself admits that its goods and services are aimed at undertakings seeking to improve their brand image or to expand.
27      Next, it must be stated that, although it does not dispute the Board of Appeal’s finding that the term ‘media’ is descriptive of the goods and services concerned, the applicant calls into question the Board of Appeal’s analysis of the distinctiveness of the term ‘mood’. It submits that it is not easy, without going through a difficult mental process of vague inferences, to find a link between a mood and the goods and services concerned. It argues that the term ‘mood’ does not therefore in any way describe those goods and services and is, contrary to what was stated by the Board of Appeal, distinctive. Furthermore, the applicant claims that the term ‘mood’ has no meaning in many countries of the European Union and is not part of basic English vocabulary.
28      EUIPO and the intervener dispute the applicant’s arguments.
29      It must be borne in mind that, for a trade mark to possess distinctive character, it must be capable of identifying the goods in respect of which registration is sought as originating from a particular undertaking, and thus of distinguishing those goods from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited). That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the relevant public’s perception of the mark (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 34 and the case-law cited).
30      It must be pointed out, as regards the relevant public’s understanding of the term ‘mood’, that it is apparent from the case-law that a large proportion of consumers in the European Union knows basic English vocabulary (see, to that effect, judgment of 13 October 2009, Deutsche Rockwool Mineralwoll v OHIM – Redrock Construction (REDROCK), T‑146/08, not published, EU:T:2009:398, paragraph 53).
31      In the present case, the goods and services concerned all relate to the field of multimedia and, inter alia, to the broadcasting of sound and images. The activity includes, inter alia, the creation of background music and of in-store consumer-mood-based experience solutions.
32      As the Board of Appeal rightly pointed out, it is unlikely that the term ‘mood’, although it has no meaning in many countries of the European Union, as is put forward by the applicant, will not be understood by a large part of the relevant public in the European Union, which comprises English speakers or those who have a command of basic English vocabulary, particularly because that public consists, inter alia, in part of music professionals.
33      Next, as regards the applicant’s argument that the Board of Appeal intentionally excluded some of the goods and services covered by the contested mark in its analysis of the distinctiveness of the term ‘mood’ by focusing its examination on the goods and services which were related to music or images, it must be stated that that argument stems from a misreading of the contested decision. Although, as is put forward by the intervener, the applicant’s main activity consists of the creation of background music and of in-store consumer experience solutions, the Board of Appeal was right in finding that the word in question described, inter alia, characteristics of music and entertainment services and of marketing and advertising services, either because the goods and services concerned directly evoked activities or products related to music and consumer experiences, or because they directly evoked the activity carried out by the company itself, inter alia the advertising services and the creation of sensory experience solutions for customers, which would cover the goods and services concerned.
34      Furthermore, the applicant submits that no obvious link can be found, without going through a difficult mental process of vague inferences, between a ‘mood’ and the goods and services concerned. However, it must be stated that one of the applicant’s main activities is precisely that of influencing consumers’ moods by using entertainment or advertising services. The Board of Appeal was therefore right in stating that the goods and services concerned could be connected with the term ‘mood’ without it being necessary to go through a complicated process, as is put forward by the applicant.
35      Lastly, the applicant claims that the Board of Appeal should have taken into consideration the positions adopted by the Cancellation Division in the same case and also in the case relating to the mark MOOD:MIX (fig.) / Stereo mood tuning my emotions (fig.) (No 27 843 C of 28 April 2020). With regard to the first decision, it is, as is put forward by the intervener, evident that the Board of Appeal, which annulled that decision, takes a position which differs completely from the position adopted by the Cancellation Division in the decision regarding the same case. The applicant’s argument must therefore be rejected. Regarding the second decision, it must be stated that it has been established that an applicant cannot reasonably rely on EUIPO’s previous practice to challenge the legality of the contested decision, including as regards decisions concerning earlier marks of which the applicant itself is the proprietor, since the legality of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 or Regulation 2017/1001 (judgment of 27 November 2018, H2O Plus v EUIPO (H 2 O+), T‑824/17, not published, EU:T:2018:843, paragraph 35). EUIPO is not bound either by national registrations or by its own previous decisions. Consequently, the applicant’s argument must be rejected.
36      The Board of Appeal was therefore right in stating that it was possible for part of the relevant public to understand the meaning of the term ‘mood’ and, consequently, to make a connection between the goods and services concerned and the contested mark, which thus had, at most, a weak distinctive character. Consequently, the Board of Appeal was right in finding that the distinctive character of the contested mark was, at most, weak on account of the descriptiveness of the term ‘media’ and the, at most, weak distinctive character of the term ‘mood’.
37      The first part of the plea must therefore be rejected.
2.      The second part of the plea, relating to the variations of the contested mark
38      The applicant criticises the Board of Appeal for finding that none of the variations of the contested mark could be regarded as acceptable, with the result that the use of those variations did not constitute use equivalent to that of the mark as registered.
(a)    Preliminary observations
39      It is apparent from the wording of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 that the use of the trade mark in a form which differs from the form in which it was registered is regarded as use for the purposes of the first subparagraph of Article 15(1) of that regulation provided that the distinctive character of the mark in the form in which it was registered is not altered (see, to that effect, judgments of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 21; of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30; and of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 25).
40      The purpose of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations 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 that sign was registered only in negligible elements, with the result that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the registered trade mark may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see, to that effect, judgment of 3 October 2019, 6Minutes Media v EUIPO – ad pepper media International (ADPepper), T‑668/18, not published, EU:T:2019:719, paragraph 34 and the case-law cited).
41      Furthermore, for the purposes of that finding, account must also be taken of the intrinsic qualities and, in particular, of the greater or lesser degree of distinctive character of the earlier 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 an indication of the origin of the goods which it covers. The reverse is also true (see, to that effect, judgments of 24 September 2015, Klement v OHIM – Bullerjan (Form of an oven), T‑317/14, not published, EU:T:2015:689, paragraph 33, and of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 29).
42      It is evident from all of the documents which the applicant provided during the proceeding before EUIPO that there are three types of variation of the sign at issue.
(b)    The figurative sign MOOD:MEDIA
43      The Board of Appeal pointed out that part of the evidence showed that variations existed, among which was the figurative sign reproduced below:
44      With regard to that figurative sign, EUIPO and the intervener, like the contested decision, state that the colon, particularly because it is inserted in a sign which has a weak distinctive character, is capable of having an impact on the distinctive character of the mark, since that colon does not go unnoticed by the consumers on account of its size, it central position and its red colour and since it makes it possible to introduce an item which illustrates or amplifies the information which precedes it, that is to say, the word ‘mood’.
45      The Board of Appeal found that the addition of the colon was a modification which altered the distinctive character of the contested mark, because, in view of the weak distinctive character of the component elements of the sign, the addition of the colon affected the visual aspect of the sign and also its semantic content.
46      The applicant disputes the Board of Appeal’s findings and submits that the addition of the colon is a minor modification to the sign, which does not in any way alter the distinctive character of the contested mark, because the intellectual meaning and the visual perception remain very similar, if not identical, to those of the sign as registered.
47      The figurative sign referred to in paragraph 43 above appears in a trendbook published by the applicant (item No 20 in the file relating to the proceedings before EUIPO), on flyers (item No 20 bis), in photographs of stands at exhibitions and at a congress (items Nos 37, 51 and 52) and in a guide to the city of Paris (France) (item No 53).
48      In that regard, the intervener refers to the judgment of 23 September 2009, Arcandor v OHIM – dm drogerie markt (S-HE) (T‑391/06, not published, EU:T:2009:348), in which the Court found that a hyphen was of some importance. However, it also points out that, in that judgment, the Court stated that the distinctive character of punctuation marks had to be assessed on a case-by-case basis. Although EUIPO and the intervener submit that the red colon is capable of affecting the distinctive character of the contested mark on the ground that it does not go unnoticed and amplifies the term ‘mood’ which precedes it, it must be held that it is a figurative element with a font which is not specific and is not dominant in relation to the elements which it separates. Furthermore, and contrary to the circumstances which gave rise to the judgment referred to above, the use of the colon between the terms ‘mood’ and ‘media’ will not alter the visual impression or the pronunciation of the terms, because the two words were initially separate. Consequently, there are no differences in the figurative sign which has been referred to in paragraph 43 above which are, for the purposes of the case-law referred to in paragraph 40 above, capable of altering the distinctive character of the contested mark.
49      The Board of Appeal should therefore have examined the evidence in which the figurative sign referred to in paragraph 43 above is represented when assessing whether there had been genuine use of the contested mark.
(c)    The figurative sign consisting of two upper-case letters ‘M’ situated above the word sign MOOD MEDIA
50      The Board of Appeal pointed out that another variation of the contested mark existed in part of the evidence. That variation is the figurative sign reproduced below:
51      Regarding that figurative sign, the Board of Appeal found that that sign was fanciful and distinctive, but that it could not serve to establish use of the sign as registered. EUIPO, in its response, submits that the figurative element consisting of the upper-case letters ‘M’ is dominant by virtue of its size, its position and its colour and that it cannot therefore be said that it is purely decorative. The intervener contends that, according to settled case-law, a graphic part can prevail over the word part if it is distinctive, which is the case here.
52      The sign referred to in paragraph 50 above appears in instructions for use (items Nos 1 and 3), in a screenshot from the platform YouTube (item No 2), on a music player (item No 4), on an amplifier (item No 7), on a loudspeaker (item No 14), on the applicant’s website (item No 13), in offers or estimates from the applicant to its clients (items Nos 18, 25, 26, 49, 50, 56 and 59), in a contract concluded by the applicant with a client (item No 58) and on a website (item No 39).
53      As is pointed out by the applicant, according to settled case-law, where a trade mark consists both of word and of figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods and services in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 9 September 2008, Honda Motor Europe v OHIM – Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited).
54      In the present case, the two stylised upper-case letters ‘M’ are in a larger font and are situated above the expression ‘mood media’. Although what is involved here is a graphic representation which is neither negligible nor banal, the two upper-case letters ‘M’ are, in the present case, at first sight difficult to read and it is difficult to distinguish them, whereas the expression ‘mood media’ situated below them is easily legible. Consequently, although they are dominant by virtue of their size or their colour, the two stylised upper-case letters ‘M’ do not alter the distinctive character of the contested mark, because the relevant public will, as a general rule, refer to the element ‘mood media’ rather than to the acronym ‘MM’, which is a figurative element that is difficult to read in the present case and which does not therefore alter the distinctive character of the contested mark.
55      Furthermore, with regard to the intervener’s argument, it must be stated that the addition of the figurative element does not alter the distinctive character of the mark as registered. Although it has been accepted in the case-law that it is possible for a figurative element to prevail over the word element, in the circumstances of the present case that figurative element cannot significantly influence the overall impression which the sign creates in the mind of the relevant public, because the figurative element is not easily and immediately identifiable (see, to that effect, judgment of 5 October 2011, La Sonrisa de Carmen and Bloom Clothes v OHIM – Heldmann (BLOOMCLOTHES), T‑118/09, not published, EU:T:2011:563, paragraph 32).
56      Consequently, the Board of Appeal should have found that the use of the sign referred to in paragraph 50 above was tantamount to use of the contested mark and therefore that the evidence in which that sign is included had to be taken into account when assessing whether there had been genuine use of the contested mark.
(d)    The figurative sign MOOD:
57      The Board of Appeal also pointed out that there were other variations of the contested mark, such as the figurative signs reproduced below:
58      As regards those variations, the applicant disputes the Board of Appeal’s finding that the omission of the term ‘media’ alters the distinctive character of the contested mark and claims that, according to the case-law, where the omitted element occupies a secondary position or is not very distinctive, its omission does not alter the distinctive character of the contested mark. It submits that the term ‘mood’ has a degree of distinctiveness which is higher than at most weakly distinctive, as was decided by the Board of Appeal, and that it may be perceived by the relevant public as the usual diminutive of the contested mark.
59      The signs referred to in paragraph 57 above appear on CDs (items Nos 4 and 15), in instructions for use (item No 5), on a music player (item No 6), on electronic apparatuses (items Nos 9, 10 and 11), on delivery packaging (item No 8), on invoices (items Nos 17, 34, 48 and 69), in contracts concluded by the applicant with clients (items Nos 21, 33, 54, 55 and 63), on web pages showing applications sold by the applicant (items Nos 19 and 35), in a trendbook published by the applicant (item No 20), in the rules of a game organised by the applicant (item No 43) and in a guide to the city of Paris written by the applicant (item No 53).
60      As regards items Nos 4, 20 and 53, it is sufficient to point out that it is apparent from paragraphs 49 and 56 above that the Court has held that they should, on account of the presence of a sign which had been subject to a variation that did not affect the distinctive character of the contested mark, have been taken into consideration by the Board of Appeal when it assessed whether the use was genuine.
61      As is put forward by EUIPO, the distinctive character of the contested mark lies in the combination of the terms ‘mood’ and ‘media’, a combination which is weakly distinctive. Furthermore, since the term ‘mood’ is, at most, weakly distinctive, the omission of the term ‘media’, which represents half of the sign, makes the distinctive character of that variation weaker, although the term ‘mood’ might be considered to be a diminutive, as is put forward by the applicant.
62      In the light of the case-law referred to in paragraph 39 above, the Board of Appeal was therefore right in deciding that the omission of the term ‘media’ did indeed alter the distinctive character of the contested mark on account of its weak distinctive character and that, consequently, the evidence of use which has been referred to in paragraph 59 above was not to be taken into consideration when assessing whether there had been genuine use of the contested mark. However, as regards item No 19, it is apparent from paragraph 85 below that the Board of Appeal should have taken it into consideration when analysing whether there had been genuine use of the contested mark, because the sign constituting the company name was used in such a way that it established a link between that sign and the goods marketed or services provided. Furthermore, as regards items Nos 5, 8, 9, 11 and 15, it is apparent from paragraph 91 below that the Board of Appeal should have taken them into consideration when analysing whether there had been genuine use of the contested mark because what is involved is use of the mark as a domain name.
3.      The proof of genuine use of the contested mark in connection with the goods and services concerned
(a)    Preliminary observations
63      It must be pointed out at the outset that, under Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), the proof of use of a mark must concern the place, time, extent and nature of use of the mark and it is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 76(1)(f) of Regulation No 40/94 (now Article 78(1)(f) of Regulation No 207/2009).
64      In interpreting the concept of genuine use, it must be borne in mind that the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, in so far as there is no good commercial justification deriving from an actual function of the mark on the market. However, the purpose of that provision is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (judgment of 13 April 2011, Alder Capital v OHIM – Gimv Nederland (ALDER CAPITAL), T‑209/09, not published, EU:T:2011:169, paragraph 47).
65      As is apparent from the case-law, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 27 September 2007, La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 54 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Furthermore, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see, by analogy, judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39).
66      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding, in the contested decision, that the documents submitted by the applicant in the context of the revocation proceedings did not, as regards the goods and services concerned, prove that there had been genuine use of the contested mark that was capable of ensuring that the rights were maintained during the relevant period, that is to say, from 7 June 2012 to 6 June 2017.
(b)    The time and place of use of the contested mark
67      The intervener submits that most of the evidence of use should have been disregarded by the Board of Appeal, because it did not fall within the relevant period.
68      It must be borne in mind that it has been accepted in the case-law that undated items of evidence may be taken into account, in the context of the global assessment of the documents, in conjunction with other items of evidence which date from the relevant period (judgment of 17 February 2011, J & F Participações v OHIM – Plusfood Wrexham (Friboi), T‑324/09, not published, EU:T:2011:47, paragraph 33).
69      For example, there is no date on item No 1 which represents instructions for the use of a music player sold by the applicant. Nevertheless, and contrary to what the intervener states, that item of evidence, taken together with all of the other evidence provided, can be taken into consideration in the assessment of whether there has been genuine use of the contested mark. It serves to show that the applicant markets, under the sign referred to in paragraph 50 above, the goods in Class 9, in respect of which the mark was registered.
70      As regards the evidence of genuine use of the contested mark which does not fall within the relevant period, it is clear from the case-law that the consideration of such evidence relating to use made before or after the relevant period is possible, in so far as it makes it possible to confirm or better assess the extent to which the earlier mark was used and the actual intentions of the proprietor during that period. However, such evidence can be taken into consideration only if other evidence relating to the relevant period has been produced (see, to that effect, judgment of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 41). Consequently, the intervener’s argument must be rejected on the ground that what are involved here are additional supporting documents regarding the use of the earlier mark during the relevant period. Those items of evidence are close in time to the relevant period and serve to provide evidence of continuity of use over time. For example, item No 56 in the file relating to the proceedings before EUIPO is an invoice linked to a contract which dates from 1 July 2010, but was concluded for a period of five years, which contributes towards proving a certain continuity of use of the contested mark over time.
71      Regarding the place of use, the Board of Appeal did not call into question the Cancellation Division’s finding that the documents provided related to various countries of the European Union such as Denmark, Germany, Spain and France. In the present case, there is nothing in the case file to call that finding into question and that assessment is not, moreover, disputed by the parties. However, it will be for the Board of Appeal to take the criteria regarding the place and the time into consideration should there be any annulment of the contested decision followed by a remittal to it.
(c)    The nature of use
72      The applicant claims that the Board of Appeal incorrectly analysed the evidence of use and therefore excluded it from its assessment when, in accordance with Article 51(1)(a) of Regulation No 207/2009, it was required to take into consideration all of the evidence submitted, including that relating both to use as a trade mark and to use as a trade name or domain name.
73      EUIPO and the intervener take the view that, in a large number of items of evidence, the expression ‘mood media’ is used as a company name and that that use is limited to identifying a company, which cannot be considered as use ‘in relation to goods or services’, or is used as part of a domain name, but that the applicant has not succeeded in proving that there was a connection between the web page to which people were redirected via the domain name and the goods and services concerned.
(1)    The use as a trade name
74      The Board of Appeal found that the sign MOOD MEDIA was used in a large number of the documents submitted by the applicant as a company name.
75      A company name does not generally, in itself, have the aim of distinguishing goods or services. The purpose of a company name is to identify a company. Accordingly, where the use of a company name is limited to identifying a company, such use cannot be considered as being ‘in relation to goods or services’ (see judgment of 13 April 2011, ALDER CAPITAL, T‑209/09, not published, EU:T:2011:169, paragraph 45 and the case-law cited).
76      However, it has also been accepted in the case-law that there is use ‘in relation to goods or services’ where the sign constituting the company name is used in such a way that a link is established between that sign and the goods marketed or the services provided (judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraph 23). To the extent that that condition is satisfied, the fact that a word element is used as the company’s trade name does not therefore preclude its use as a mark to designate goods or services (see judgment of 30 November 2009, Esber v OHIM – Coloris Global Coloring Concept (COLORIS), T‑353/07, not published, EU:T:2009:475, paragraph 38 and the case-law cited).
77      As regards items Nos 1, 3, 18, 25, 26, 58 and 59, it is sufficient to point out that it is apparent from paragraph 56 above that the Court has held that they should, on account of the presence of a sign which had been subject to a variation that did not affect the distinctive character of the contested mark, have been taken into consideration by the Board of Appeal when it assessed whether the use was genuine.
78      As regards the other items, first, it is apparent from items Nos 6, 9, 10, 21 and 60 that the expression ‘mood media’ followed by the type of company, such as ‘GmbH’ or ‘SA’, appears, as a header or as a signature, on the documents and, with regard to items Nos 6, 9, 10 and 21, that it appears together with the sign referred to in paragraph 57 above. Consequently, without it being necessary to rule on the question of whether the appearance of the type of company on those documents precludes use as a trade mark, it is sufficient to state that the visual arrangement of the documents submitted does not, in any event, highlight the contested mark. It appears in small characters below or beside the sign referred to in paragraph 57 above and is followed by the address of the company. Such an arrangement confirms that the use which is made of the sign MOOD MEDIA is not consistent with use as a trade mark, but corresponds to use as a trade name.
79      Moreover, the applicant criticises the Board of Appeal for excluding items Nos 10 and 60 even though the expression ‘mood media’ is associated with the symbol ‘®’ and it is clear evidence of use as a trade mark, because it creates a link between the contested mark and the goods and services in question.
80      That argument must be rejected. The presence of the symbol ‘®’ is not capable of calling into question the use of the sign MOOD MEDIA as a trade name because the sign as such is used as a company name and it has the effect, in the eyes of the end consumer, of identifying the applicant’s undertaking (see, to that effect, judgment of 15 February 2017, M. I. Industries v EUIPO – Natural Instinct (Natural Instinct Dog and Cat food as nature intended), T‑30/16, not published, EU:T:2017:77, paragraphs 65 to 67).
81      Consequently, the Board of Appeal was right in deciding to exclude those documents from its analysis of whether there had been genuine use of the contested mark.
82      Secondly, as regards the items of evidence Nos 16, 23, 24, 27, 28, 44 and 57, it must be stated that the expression ‘mood media’ is used as a header preceding the address of the company or as a signature. For the same reasons as those referred to in paragraph 78 above, the visual arrangement confirms that the use which is made of the sign MOOD MEDIA is not consistent with use as a trade mark, but corresponds to use as a trade name. Accordingly, the Board of Appeal was right in rejecting those items of evidence in the context of the assessment of whether the use was genuine. However, as regards items Nos 27 and 28, it is apparent from paragraph 91 below that the Board of Appeal should have taken them into consideration when analysing whether there had been genuine use of the contested mark because what is involved is use of the mark as a domain name.
83      Thirdly, as regards the use of the expression ‘mood media’ in the press articles in items Nos 29 to 32, 36, 41 and 42, EUIPO submits that those press articles refer to other trade marks, which helps to show that the expression ‘mood media’ is used as a trade name. However, the reference to other trade marks in those press articles does not preclude the contested mark, which does not occupy either an ancillary or a negligible position in those articles, from being used as a trade mark (see, to that effect, judgment of 3 October 2019, ADPepper, T‑668/18, not published, EU:T:2019:719, paragraph 104). Furthermore, those press articles refer, for example, to audio programmes to influence the feel of shops and entertain customers, which are sold under the contested mark (item No 30), to a music streaming service dedicated to retailers (item No 36), to a custom-made soundscape for ready-to-wear clothing shops (items Nos 31 and 32) and to the organisation of a music festival for young talent (items Nos 41 and 42). Those articles address, inter alia, the marketing of the goods and services concerned, for example in chains of ready-to-wear clothing shops which have called on those services (see items Nos 31 and 32). Consequently, that evidence does prove use of the contested mark, because it is apparent from it that the goods and services are marketed by the applicant under the contested mark. The Board of Appeal therefore erred in deciding to exclude that evidence from its analysis of the use of the contested mark.
84      Fourthly, the expression ‘mood media’ is also used in the context of contracts or of invoices issued by the applicant, inter alia in items Nos 40, 46, 62, 64 to 66 and 68. In item No 40, the expression ‘mood media’ is clearly used as the name of the service sold and it is therefore used as a trade mark. Moreover, in item No 46, reference is made to ‘a licence in respect of the software MVISION which was created and developed by MOOD MEDIA’, with the result that a link is established between the sign MOOD MEDIA and the product which was created and developed by the applicant. By contrast, all the references made in those documents to the ‘company Mood Media’ cannot constitute use as a trade mark since they refer directly to the company of the same name. The Board of Appeal should therefore have accepted the items of evidence Nos 40 and 46 in which the expression ‘mood media’ is used as a trade mark and not solely as a company name, but was right in excluding items Nos 62, 64 to 66 and 68.
85      Fifthly, item No 19 should also have been taken into account when assessing whether there had been genuine use of the contested mark. Item No 19 shows applications created by the applicant which are marketed on the platform Google Play, from which users can download them. Since the goods are available for purchase directly under the contested mark, a link is clearly established between the goods and services and that mark.
86      Sixthly, items Nos 22 and 38 are screenshots from the platform YouTube. Item No 22 shows videos presenting the goods and services sold by the applicant and item No 38 shows videos of concerts organised by ‘Mood Media’ in the context of entertainment services. It is evident that those videos have been published either by the account ‘Mood Media Denmark’ or by the account ‘Mood Media UK’. Those documents certainly prove use of the trade mark as such. The videos in items Nos 22 and 38 have a direct link with the goods and services sold under the contested mark, because they present those goods and services. Consequently, the Board of Appeal should have taken items Nos 22 and 38 into consideration in its analysis of whether there had been genuine use of the mark.
(2)    The use as a domain name
87      The evidence including the sign used as a domain name comes from instructions for use (items Nos 1, 3 and 5), a photograph of a parcel sent by the applicant (item No 8), photographs of electronic apparatuses (items Nos 9 and 11), a photograph of a CD (item No 15), offers made by the applicant to its customers which refer to the website ‘www.moodmedia.com’ (items Nos 25 and 26) and which refer to the website ‘www.moodmedia.de’ (items Nos 27 and 28) and also from screenshots of the website ‘mymoodmix.moodmedia.fr’ (item No 35).
88      It must be pointed out at the outset, as regards items Nos 1, 3, 25 and 26, that, for the reasons set out in paragraph 77 above, there is no need to rule on these items again at this stage of the reasoning.
89      It is apparent from the case-law that proof of genuine use of a mark may be furnished by means of information provided by a website or by the use of the mark as a domain name or as an element of the domain name if that website fulfils a commercial or advertising function with regard to the goods covered by the mark in question (see, to that effect, judgment of 14 December 2017, bet365 Group v EUIPO – Hansen (BET365), T‑304/16, EU:T:2017:912, paragraph 42). In that regard, it must be stated that it is not impossible to use the same element as a mark in the context of another use, for example as the whole or part of the name of a website, if the sign can be perceived immediately by the relevant public as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the proprietor of the mark from those which have a different commercial origin (see, by analogy, judgments of 5 December 2002, Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS), T‑130/01, EU:T:2002:301, paragraph 20, and of 21 November 2012, Getty Images v OHIM (PHOTOS.COM), T‑338/11, not published, EU:T:2012:614, paragraph 58).
90      In the present case, with regard to items Nos 5, 8, 9, 11, 15, 27 and 28, it must be stated that, contrary to what EUIPO and the intervener have claimed, the websites to which the mark used as a domain name refers fulfil a commercial and advertising function. Those websites present the goods and services concerned and the sign MOOD MEDIA separated by a colon appears at the top left on each page of the websites. Furthermore, it is possible, on those websites, to contact ‘Mood Media’ in order to obtain more information and to buy the goods and services concerned. Those websites therefore fulfil a commercial and advertising function, because they present all the goods and services concerned and offer the possibility of obtaining them.
91      Consequently, the Board of Appeal should have taken items Nos 5, 8, 9, 11, 15, 27 and 28 into consideration in its analysis of whether the use of the contested mark was genuine.
92      As regards item No 35, it must be stated that it is possible to subscribe directly to the applicant’s services on the website ‘mymoodmix.moodmedia.fr’, which therefore fulfils a commercial function. However, it must be pointed out that the element ‘mood mix’ occupies a significant position on the web pages represented whereas the word sign MOOD MEDIA does not appear on that page. It is apparent from that arrangement that the goods and services are marketed under the element ‘mood mix’ and not under the contested mark. Consequently, the Board of Appeal was right in excluding item No 35 from its analysis of whether the use of the contested mark was genuine (see, to that effect, judgment of 21 June 2012, Fruit of the Loom v OHIM – Blueshore Management (FRUIT), T‑514/10, not published, EU:T:2012:316, paragraphs 65 and 66).
(d)    The assessment of the evidence of genuine use of the contested mark
93      The Board of Appeal found that the evidence was insufficient to establish genuine use of the contested mark and that, even assuming that some of the documents could serve to indicate use of the combination of terms ‘mood’ and ‘media’, they were limited in number and did not refer to all of the goods and services.
94      First of all, the applicant claims that the Board of Appeal imposed a quantity criterion which is not provided for in Article 15(1)(a) of Regulation No 207/2009 in finding that the evidence of use submitted predominantly related to use of the contested mark in a modified form.
95      That argument must be rejected. As is pointed out by the intervener, it is apparent from the contested decision that the Board of Appeal found that the variations in the sign altered the distinctive character of the contested mark in the form in which it had been registered and that it was for that reason that it found that the evidence was insufficient to prove use of the contested mark. It did not therefore, as the applicant claims, interpret the provisions of Regulation No 207/2009 broadly.
96      Moreover, it must be stated that the intervener’s argument that the applicant did not dispute the finding that there was a lack of evidence of genuine use of the contested mark must be rejected. By stating that the Board of Appeal did not take into consideration all of the evidence which it had submitted in order to show genuine use of the contested mark as a trade mark, the applicant has also called into question the Board of Appeal’s finding that the evidence which it had adduced was insufficient to establish that genuine use.
97      It is apparent from all of the foregoing that the Board of Appeal incorrectly excluded a significant number of items of evidence which should have been taken into account in order to assess whether there had been genuine use of the contested mark. Consequently, it cannot be ruled out that if the Board of Appeal had taken that evidence into account in assessing whether there had been genuine use of the contested mark, the conclusion could have been different. The contested decision must therefore be annulled. It will be for the Board of Appeal, by taking that evidence into account, to determine whether or not it is sufficient to prove genuine use of the contested mark. It will also be for the Board of Appeal to ascertain, with regard to the documents which should have been taken into account but were not, whether the criteria relating to the place and time are satisfied.
98      The applicant’s first head of claim must therefore be upheld and the decision of the Board of Appeal must be annulled, inasmuch as it excluded items of evidence which should have been taken into account when analysing whether the use of the contested mark was genuine and therefore concluded that the applicant had not proved genuine use of that mark.
C.      The applicant’s second head of claim, seeking the rejection of the application for revocation
99      By its second head of claim, the applicant requests in essence that the Court adopt the decision which EUIPO should have taken, namely a decision rejecting the application for revocation.
100    It must be borne in mind that the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72; see, also, judgment of 28 January 2016, Gugler France v OHIM – Gugler (GUGLER), T‑674/13, not published, EU:T:2016:44, paragraph 100 and the case-law cited).
101    In the light of the circumstances of the present case and of the fact that the Board of Appeal did not analyse the items of evidence containing the signs referred to in paragraphs 43 and 50 above and certain signs which were regarded as having been used as a trade name or a domain name, the applicant’s claim cannot be granted, since that would imply, in substance, the exercise of administrative and investigatory functions specific to EUIPO and would therefore upset the institutional balance on which the division of jurisdiction between EUIPO and the Court is based (see, to that effect, judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 67 and the case-law cited).
102    The applicant’s second head of claim must therefore be rejected.
IV.    Costs
103    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.
104    Since EUIPO has essentially been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
105    Pursuant to Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 July 2020 (Case R 1767/2019‑1);
2.      Dismisses the action as to the remainder;
3.      Orders EUIPO to bear its own costs and to pay those incurred by Mood Media Netherlands BV;
4.      Orders Tailoradio Srl to bear its own costs.
Marcoulli
Frimodt Nielsen
Schwarcz
Delivered in open court in Luxembourg on 2 March 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.