JUDGMENT OF THE GENERAL COURT (First Chamber)
15 July 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark CACTUS OF PEACE CACTUS DE LA PAZ — Earlier Community word mark CACTUS and earlier figurative mark Cactus — Genuine use of the earlier mark — Article 42(2) of Regulation (EC) No 207/2009 — Article 76(1) and (2) of Regulation No 207/2009)
In Case T‑24/13,
Cactus SA, established in Bertrange (Luxembourg), represented by K. Manhaeve, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Isabel Del Rio Rodríguez, residing in Malaga (Spain),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 19 October 2012 (Case R 2005/2011-2), relating to opposition proceedings between Cactus SA and Isabel Del Rio Rodríguez,
THE GENERAL COURT (First Chamber),
composed of H. Kanninen (Rapporteur), President, I. Pelikánová and E. Buttigieg, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 21 January 2013,
having regard to the response lodged at the Court Registry on 4 April 2013,
having regard to the reply lodged at the Court Registry on 19 August 2013,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written part of the procedure and having therefore decided, acting upon a proposal of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,
gives the following
Judgment
Background to the dispute
1        On 13 August 2009, Mrs Isabel Del Rio Rodríguez filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services for which registration was sought are in Classes 31, 39 and 44 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 31: ‘Seeds, natural plants and flowers’;
–        Class 39: ‘Storage, distribution and transport of manure, fertilisers, seeds, flowers, plants, trees, tools and gardening goods of all kinds’;
–        Class 44: ‘Gardening, plant nurseries, horticulture’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 59/2009 of 14 December 2009.
5        On 12 March 2010, the applicant, Cactus SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier rights:
–        the Community word mark CACTUS, registered on 18 October 2002 under No 963694, for goods and services in Classes 2, 3, 5 to 9, 11, 16, 18, 20, 21, 23 to 35, 39, 41 and 42, corresponding, for certain of those classes, to the following description:
–        Class 31: ‘Foodstuffs not included in other classes; natural plants and flowers, grains; fresh fruits and vegetables; except cactuses, cactus seeds and, more generally, plants and seeds of the cactus family’;
–        Class 35: ‘Advertising, business management, among other management of shops, management of do-it-yourself or gardening shops, management of supermarkets or hypermarkets; business administration, office functions, among other advertising, radio and/or television advertising, dissemination of advertising matter, publication of publicity texts, direct mail advertising; market surveys; outdoor advertising; business management assistance; demonstration of goods, distribution of samples; opinion polling; personnel recruitment; cost-price analysis; public relations’;
–        Class 39: ‘Transport; packaging and storage of goods; travel arrangement, including haulage; storage of goods, rental of storage and/or warehouses; delivery of goods; courier services’;
–        the Community figurative mark, reproduced below, registered on 6 April 2001 under No 963595, for the same goods and services as those covered by the earlier word mark, with the exception of ‘foodstuffs not included in other classes; natural plants and flowers, grains; fresh fruits and vegetables’ in Class 31.
7        The opposition was directed against all the goods and services covered by the mark applied for and was based on all the goods and services covered by the earlier marks.
8        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
9        By decision of 2 August 2011, the Opposition Division upheld the opposition for ‘seeds, natural plants and flowers’ in Class 31 and ‘gardening, plant nurseries, horticulture’ in Class 44, which are covered by the earlier word mark. Registration of the mark applied for was therefore refused for those goods and services but accepted for the services in Class 39.
10      The Opposition Division considered, inter alia, that, following Mrs Del Rio Rodríguez’s request that the applicant prove that the earlier marks had been put to genuine use, the evidence submitted by the applicant demonstrated genuine use of the earlier word mark for ‘natural plants and flowers, grains; fresh fruits and vegetables; except cactuses, cactus seeds and, more generally, plants and seeds of the cactus family’ in Class 31, and for ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ services in Class 35.
11      On 28 September 2011, Mrs Del Rio Rodríguez filed an appeal with OHIM against the Opposition Division’s decision.
12      By decision of 19 October 2012 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal and dismissed the opposition in its entirety. First, it held that the Opposition Division had erred in considering that the applicant had adduced proof of genuine use of the earlier marks in respect of ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ services in Class 35. In that respect, the Board of Appeal found as follows: (i) those services were not covered by the earlier marks; (ii) although the applicant claimed use in respect of ‘supermarket services’, not only were those services not covered by the earlier marks but genuine use in respect of those services had not been demonstrated; (iii) the ‘management of supermarkets or hypermarkets’ in Class 35, which is covered by the earlier marks, corresponds to management services which are provided to third undertakings, with the result that that service should be regarded as different from retail services in terms of its nature, purpose and the end-users to whom it is directed. Next, the Board of Appeal considered that the applicant had not adduced proof, for the period between 14 December 2004 and 13 December 2009, of genuine use of the earlier marks for any of the goods or services covered by those marks. Finally, the Board of Appeal rejected the evidence produced by the applicant for the purposes of proving genuine use of the earlier marks in respect of the services in Class 39, on the ground that evidence had been submitted for the first time before that Board. The Board of Appeal noted that, in any event, that evidence was not capable of proving genuine use in respect of those services.
Forms of order sought parties
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
14      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
15      In support of the application, the applicant relies on, in essence, three pleas in law, alleging respectively (i) infringement of Article 42(2) of Regulation No 207/2009; (ii) infringement of Articles 75 and 76(1) of that regulation, and (iii) infringement of Article 76(2) of that regulation.
16      It is appropriate to examine the second plea in law first.
The second plea in law, alleging infringement of Articles 75 and 76(1) of Regulation No 207/2009
17      The applicant puts forward two complaints. First, it claims that the Board of Appeal infringed Article 76(1) of Regulation No 207/2009 by examining of its own motion whether ‘retailing of natural plants and flowers, grains, fresh fruits and vegetables’ services in Class 35 were covered by the earlier marks and stating its view on the use of the earlier marks in respect of those services, when those issues had not been raised by the parties either before the Opposition Division or the Board of Appeal. The applicant submits, consequently, that the Board of Appeal also infringed Article 75 of Regulation No 207/2009 in so far as the applicant did not have the opportunity to present its comments on that point.
18      Secondly, the applicant submits that the Board of Appeal erred in considering that the services in Class 35 referred to above were not covered by the earlier marks and that the Opposition Division therefore erred in considering that genuine use of the earlier marks in respect of those services had been established.
19      OHIM submits, in essence, that, by virtue of the appeal brought before it, the Board of Appeal is called upon to carry out a full examination of the opposition, in terms of both law and fact. In that context, the Board of Appeal therefore has jurisdiction to consider any matter of law which must necessarily be examined for the purpose of assessing the facts and evidence, even where neither the parties nor the Opposition Division has expressed a view on the matter. In OHIM’s view, in the present case, the Board of Appeal was bound to examine ex officio whether the earlier marks covered ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ services in Class 35, in order to be able to give a ruling on the existence of a likelihood of confusion.
20      Furthermore, OHIM submits that the applicant’s right to be heard was observed, in so far as, first, the scope of an earlier right forms part of the subject-matter of the proceedings and, secondly, the applicant should have expected that the extension of the coverage of the earlier marks to retail services would be regarded as debatable, given that it was aware of the judgment of 7 July 2005 in Praktiker Bau- und Heimwerkermärkte (C‑418/02, ECR, EU:C:2005:425).
21      Finally, OHIM argues that the Board of Appeal was correct in deciding to exclude from the scope of protection of the earlier marks ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ services.
The first complaint
22      By virtue of Article 76(1) of Regulation No 207/2009, in proceedings relating to relative grounds for refusal of registration, such as the present proceedings, the examination of the facts carried out by OHIM is restricted to the facts, evidence and arguments provided by the parties and the relief sought.
23      In opposition proceedings, the criteria for applying a relative ground for refusal of registration, or any other provision relied on in support of claims put forward by the parties, naturally form part of the matters of law submitted for examination by OHIM. An issue of law may have to be ruled on by OHIM even when it has not been raised by the parties if it is necessary to resolve that issue in order to ensure the correct application of Regulation No 207/2009 with regard to the facts, evidence and arguments provided by the parties. Thus, the matters of law put forward before the Board of Appeal also include any issue of law which must necessarily be examined for the purpose of assessing the facts and evidence relied on by the parties and for the purpose of allowing or dismissing the claims, even if the parties have not put forward a view on those matters and even if OHIM has omitted to rule on that aspect (judgments of 1 February 2005 in SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, ECR, EU:T:2005:29, paragraph 21; of 13 June 2007, Grether v OHIM — Crisgo (FENNEL), T‑167/05, EU:T:2007:176, paragraph 104; and of 13 September 2010, Inditex v OHIM — Marín Díaz de Cerio (OFTEN), T‑292/08, ECR, EU:T:2010:399, paragraph 27).
24      It must also be noted that, in view of the continuity in terms of their functions between the departments of OHIM, the Board of Appeal is required to base its decision on all matters contained in the decision contested before it, and on the matters which any party concerned introduced either in the proceedings before the OHIM department which heard the application at first instance or, with the exception of submissions which have not been made in due time, in the appeal (see judgment of 10 July 2006 in La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, ECR, EU:T:2006:197, paragraph 58 and the case-law cited).
25      In the present case, proof of genuine use of the earlier marks is an issue raised by the parties before the Opposition Division and the Board of Appeal. Accordingly, the parties discussed before OHIM the evidence of genuine use of the earlier trade marks for all the goods and services covered by those marks, including those in Class 35.
26      In that respect, it must be stated that, at the appeal stage before the Board of Appeal, the applicant and Mrs Del Rio Rodríguez submitted comments on the use of the earlier word mark in respect of services in Class 35. Mrs Del Rio Rodríguez claimed that the applicant could prove use of the CACTUS trade mark only in relation to retailing of plants, seeds and vegetables and not in relation to plant cultivation, namely Mrs Del Rio Rodríguez’s business. The applicant stated that it did not challenge the Opposition Division’s finding that use of the earlier marks was established for ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ services in Class 35.
27      It should therefore be concluded that, although the parties did not dispute the Opposition Division’s finding concerning genuine use of the earlier marks in respect of ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ services in Class 35, they none the less submitted comments on that finding.
28      As is apparent from paragraph 24 above, the Board of Appeal must base its decision, inter alia, on all matters raised in the appeal proceedings. Accordingly, the simple fact that the applicant and Mrs Del Rio Rodríguez did not expressly challenge the Opposition Division’s finding on the proof of use of the earlier marks in relation to the goods in question in Class 35 is not sufficient to bind the Board of Appeal in that respect. On the contrary, the Board of Appeal was required to examine whether, in the light of the comments submitted by the applicant and Mrs Del Rio Rodríguez, the Opposition Division’s findings could be upheld. The simple fact that it considered that that was not the case does not constitute an infringement of Article 76(1) of Regulation No 207/2009 by the Board of Appeal.
29      Nevertheless, it is clear from Article 75 of Regulation No 207/2009 that OHIM’s decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. As noted in paragraphs 27 and 28 above, neither the applicant nor Mrs Del Rio Rodríguez disputed the Opposition Division’s finding on proof of use of the earlier marks for the services in question in Class 35. In those circumstances, it must be held that, while the Board of Appeal was entitled, by virtue of Article 76(1) of Regulation No 207/2009, to examine of its own motion whether ‘retailing of natural plants and flowers, grains, fresh fruits and vegetables’ services in Class 35 were covered by the earlier marks for the purposes of determining whether those marks had been put to genuine use in respect of those services, it was none the less required to give the parties an opportunity to present their comments, under Article 75 of Regulation No 207/2009, which it failed to do.
30      It follows that the Board of Appeal committed a procedural error.
The second complaint
31      As regards whether ‘retailing of natural plants and flowers, grains; fresh fruit and vegetables’ services are covered by the earlier marks, it is common ground between the parties that those services are not expressly referred to in the list of services in Class 35 covered by the earlier marks, as is clear from paragraph 6 above.
32      However, the applicant submits, in essence, that the earlier marks must be regarded as covering all services potentially contained in Class 35, which include ‘retailing’.
33      Point IV of Communication No 4/03 of the President of the Office of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations (OJ OHIM 9/2003, p. 1647) states: ‘[t]he 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this, the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class’.
34      In the present case, it should be noted that the earlier marks contain all the general indications listed in the class heading of Class 35, namely ‘Advertising, business management, … business administration, office functions …’
35      Consequently, in accordance with OHIM’s practice described in Communication No 4/03, such use of all the general indications listed in the class heading of Class 35 constitutes, on the part of the applicant, a claim to all the services falling within that class.
36      It is true that, following the judgment of 19 June 2012 in Chartered Institute of Patent Attorneys (C‑307/10, ECR, EU:C:2012:361), Communication No 4/03 has, with effect from 20 June 2012, been repealed and replaced by Communication No 2/12. The latter communication requires some precision on the part of an applicant for a Community trade mark who uses all the general indications of the heading of a particular class of the Nice Agreement in identifying the goods or services for which protection of the trade mark is sought. However, in the light of the principle of legal certainty and in accordance with Point V of Communication No 2/12, as it used all the general indications listed in the class heading of Class 35, the applicant, whose earlier trade mark had been registered before that communication came into force, must be regarded as intending to cover all the services included in that class (see, to that effect, judgment of 31 January 2013 in Present-Service Ullrich v OHIM — Punt Nou (babilu), T‑66/11, EU:T:2013:48, paragraph 50).
37      According to settled case-law, retail trade in goods constitutes a service in Class 35 (see, to that effect, judgment in Praktiker Bau- und Heimwerkermärkte, cited in paragraph 20 above, EU:C:2005:425, paragraphs 34 to 37). As the applicant maintains, it is also evident from the Explanatory Note of the World Intellectual Property Organisation (WIPO) to the Nice Agreement that, with regard to services in Class 35, that class ‘includes the bringing together, for the benefit of others, of a variety of goods … enabling customers to conveniently view and purchase those goods’.
38      As regards the need to specify the goods or types of goods concerned by the retail trade in goods, as referred to in the judgment in Praktiker Bau-und Heimwerkermärkte, cited in paragraph 20 above (EU:C:2005:425), it should be noted, as stated in paragraph 36 above, that the applicant, whose earlier marks were registered before the entry into force of Communication No 2/12 and the judgment in Praktiker Bau-und Heimwerkermärkte, cited in paragraph 20 above (EU:C:2005:425), had the option of using all the general indications listed in the heading of Class 35 in order to demonstrate its intention to cover all the services in that class. A fortiori, the applicant was not required to specify the goods or types of goods concerned by the retail trade in goods.
39      Consequently, it must be held that the Board of Appeal erred in finding that ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ services were not covered by the earlier marks. The second complaint is therefore well founded.
40      It follows from all of the foregoing that the second plea in law must be upheld.
The first plea in law, alleging infringement of Article 42(2) of Regulation No 207/2009
41      The applicant argues that the Board of Appeal infringed Article 42(2) of Regulation No 207/2009 by finding that it had failed to show to the requisite legal standard that, in relation to ‘natural flowers and plants, grains’ in Class 31, the earlier marks had been put to genuine use.
42      First, the applicant argues, in that respect, that the Board of Appeal’s claim to the effect that the figurative sign Cactus is never represented on the relevant goods or next to them is incorrect. Several promotional brochures show the earlier marks next to pictures of flowers and plants marketed by the applicant. Secondly, the applicant maintains that the affixing of trade marks on or next to the goods in question is not the only acceptable use for the purposes of proving that a sign is used as a trade mark. The only relevant test is whether the trade mark is used ‘in relation to’ goods or services, that is to say, whether a link is established between the trade mark and the marketed goods or services (judgment of 11 September 2007 in Céline, C‑17/06, ECR, EU:C:2007:497, paragraphs 22 and 23). Thirdly, trade marks are not generally affixed to natural plants or flowers. Fourthly, the applicant maintains that the plants and flowers which appear in the promotional brochures are not referred to by any specific trade mark other than the earlier trade marks which appear next to the goods themselves or at the top of the pages of the brochures. By contrast, in relation to goods other than plants or flowers which also appear in the promotional brochures, specific reference is made to third party trade marks. That is the case with regard to champagne or desserts. The applicant accordingly infers that, for the average consumer, goods not bearing a separate third-party trade mark are sold under the earlier trade marks. Fifthly, the applicant frequently uses the stylised cactus in respect of the relevant goods in Class 31, in particular, as is apparent from the brochure entitled ‘Garden News’, on the wrapping paper used by the applicant to wrap flower arrangements and bouquets, and on the labels used to accompany wrapped flower arrangements and bouquets. Sixthly, business cards showing the earlier figurative trade mark clearly point to the existence of the subsidiary Resuma SA, which is responsible for the purchase and sale of plants and flowers, and that company’s use of the earlier trade marks in respect of those goods on behalf of the applicant. Seventhly, the applicant’s turnover for the period 1997 to 2010 with regard to the goods sold by the department ‘Cactus Blummen’ (Cactus Flowers) shows the extent of the applicant’s business in that sector. Eighthly, the numerous order forms, invoices and delivery notes concerning the sale of flowers and plants to customers residing in Luxembourg and its neighbouring countries clearly show the earlier trade marks with references being made to flowers and plants, often using the specific Latin names of those goods. In that respect, the applicant submits that the fact that the earlier figurative mark appears often at the top of invoices, orders and delivery notes and not in the name or description of each individual plant or flower does not preclude recognition of its use as a trade mark. The applicant claims that where a trade mark may also be a company or trade name, it is considered to be used ‘in relation to goods or services’ where the trade mark is used in such a way that a link is established between the sign which constitutes the company, trade or shop name and the goods marketed or the services provided (judgment in Céline, cited above, EU:C:2007:497, paragraph 23). The applicant also observes that a significant number of the invoices and delivery notes provided were not drawn up by the applicant but by other entities, such as Resuma and Caflora, whose company names are clearly indicated on their respective invoices and delivery notes. Those companies are involved in the running of the applicant’s flower and plant division. Next to their own company name, those companies use the earlier trade marks on behalf the applicant to designate the flowers and plants being marketed. Finally, the applicant maintains that a consumer who purchases a bouquet of flowers in a supermarket that sells goods under a ‘house trademark’ necessarily makes a link between that house brand label and the commercial origin of the flowers.
43      OHIM disputes the applicant’s arguments.
44      It is apparent from recital 10 in the preamble to Regulation No 207/2009 that the legislature considered that there was no justification for protecting an earlier trade mark, except where it was actually used. In keeping with that recital, Article 43(2) and (3) of Regulation No 207/2009 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the five years preceding the date of publication of the Community trade mark application against which an opposition has been filed (judgment of 18 January 2011 in Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, EU:T:2011:9, paragraph 24).
45      Under Article 15(1)(a) of Regulation No 207/2009, use of the Community mark is considered to include 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’;
46      Under Article 15(1)(a), in conjunction with Article 51(1)(a) of Regulation No 207/2009, proof of genuine use of an earlier trade mark against which an application for revocation has been filed also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (judgment of 10 June 2010 in Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, EU:T:2010:229, paragraphs 28 and 29).
47      The purpose of Article 15(1)(a) 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 sign used in trade differs from the form in which it was registered only in insignificant respects, so that the two signs may be regarded as broadly equivalent, the provision in question provides 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 judgment in ATLAS TRANSPORT, cited in paragraph 46 above, EU:T:2010:229, paragraph 30 and the case-law cited).
48      Furthermore, under Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, proof of use must relate to the place, time, extent and nature of use of the earlier mark.
49      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 (judgment of 30 November 2009 in Esber v OHIM — Coloris Global Coloring Concept (COLORIS), T‑353/07, EU:T:2009:475, paragraph 21; see also, by analogy, judgment of 11 March 2003 in Ansul, C‑40/01, ECR, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see, to that effect, judgment of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, ECR, EU:T:2004:225, paragraph 39; and judgments in COLORIS, cited above, EU:T:2009:475, paragraph 21, and VOGUE, cited in paragraph 44 above, EU:T:2011:9, paragraph 27).
50      When assessing whether use of a trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market 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, to that effect, judgments in VITAFRUIT, cited in paragraph 49 above, EU:T:2004:225, paragraph 40; COLORIS, cited in paragraph 49 above, EU:T:2009:475, paragraph 22; and VOGUE, cited in paragraph 44 above, EU:T:2011:9, paragraph 28).
51      Finally, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 28, and in VOGUE, cited in paragraph 44 above, EU:T:2011:9, paragraph 32).
52      In the present case, first, it should be noted that the applicant was requested to demonstrate use of the earlier marks, in the territory of the European Union, in respect of the period from 14 December 2004 to 13 December 2009 — the publication date of the Community trade mark application being 14 December 2009.
53      Secondly, it should be noted that the evidence produced by the applicant on 15 February 2011 for the purpose of establishing proof of genuine use of the earlier trade marks was as follows:
–        an extract from the webpage showing the history of the applicant’s company from 1966 to 1978;
–        copies of promotional brochures;
–        two photographs of wooden stalls used as points of sale for plants and flower arrangements, on the front of which appears the word ‘Blummen’, preceded by the stylised cactus of the earlier figurative mark;
–        a sample of wrapping paper bearing the word ‘Blummen’ preceded by the stylised cactus of the earlier figurative mark;
–        a label which may be affixed to plants or bouquets of flowers, bearing the word ‘Blummen’, preceded by the stylised cactus of the earlier figurative mark;
–        business cards of employees of the company Resuma, responsible for the purchase and sale of plants and flowers on behalf of the applicant;
–        copies of invoices, order forms and delivery notes;
–        information relating to the applicant’s turnover between 1997 and 2010 in the plants and flowers sector.
54      The Board of Appeal considered that the evidence submitted by the applicant was insufficient to establish genuine use of the earlier marks in respect of any of the goods or services covered by those marks and, in particular, in connection with ‘natural plants and flowers, grains; fresh fruits and vegetables; except cactuses, cactus seeds and, more generally, plants and seeds of the cactus family’ in Class 31.
55      The Board of Appeal stated, in that respect, that the promotional brochures submitted by the applicant showed plants, flowers, fruits, foodstuffs and drinks marketed by the applicant under a number of trade marks, which differ from the earlier marks. It observed that the figurative sign Cactus appeared as the supplier’s name at the top of what appears to be the first page of the magazine ‘Cactus News’. It also noted that the figurative sign Cactus was never represented on the relevant goods or next to them. In the Board of Appeal’s view, the only promotional brochure that could allow a connection to be established between the sign CACTUS and the goods in question, owing to the appearance of the sign CACTUS on the wrapping paper of a bouquet of flowers, bore a date that fell outside the relevant period, namely 14 December 2004 to 13 December 2009. The Board of Appeal stated that, although the copy invoices and delivery notes showed the sale of different types of flowers and plants, the sign Cactus never appeared next to the goods sold, but was merely depicted at the top of the invoices in its figurative form, Cactus, or, more often, as Cactus SA, which is a company name. According to the Board of Appeal, use of a company name, trade name or shop name only exists in relation to goods or services where the sign constituting the company name, trade name or shop name is affixed to those goods or services or used in such a way that a link is established between the sign constituting the company name, trade name or shop name and the goods and services being marketed. The Board of Appeal stated that, in the present case, the invoices submitted did not constitute evidence that the sign was used in relation to the goods in question. Finally, the Board of Appeal concluded that the evidence submitted by the applicant as a whole led it to find that the sign CACTUS in its word form or Cactus in its figurative form was being used as a company name, The applicant failed to establish that that company name was also used as a trade mark for the goods in question in Class 31. In the Board of Appeal’s view, genuine use must appear not merely probable or credible but must actually be proved.
56      As a preliminary point, it must be noted, as OHIM also observed, that in its application before the Court, the applicant focuses its criticism on the part of the contested decision which states that, with regard to goods in Class 31, the applicant did not prove genuine use of the earlier marks in relation to ‘natural plants and flowers, grains’.
57      It is true that, in its reply, the applicant states that it cannot accept the findings of the Board of Appeal concerning the absence of genuine use of the earlier marks in so far as concerns ‘fresh fruits and vegetables’ in Class 31. The applicant adds, however, that it did not specifically focus, in the application, on proof of use of the earlier marks in relation to ‘fresh fruits and vegetables’, concentrating rather on proof of use of the earlier marks in respect of goods more relevant for the purposes of the opposition, namely ‘natural flowers and plants, grains’.
58      It should be noted, taking into account the requirements set out in Article 44(1)(c) of the Rules of Procedure of the General Court of 2 May 1991 that the first plea in law is restricted to proof of use of the earlier marks in relation to ‘flowers and natural plants, grains’ in Class 31.
59      As regards the examination of proof of genuine use of the earlier marks in relation to flowers, plants and seeds, in the first place, it should be noted that several documents provided by the applicant, including those referred to in paragraph 53 above, show only the figurative element of the earlier figurative mark, namely the stylised cactus, without the word element ‘Cactus’. In its pleadings before the Court, the applicant submits that the use of the stylised cactus constitutes use of the earlier figurative mark which does not alter its distinctive character. OHIM contends that that argument is inadmissible on the ground that it was relied on for the first time before the Court.
60      First, it should be noted, as the applicant maintains in the reply, that, in its submissions of 15 February 2011 before the Opposition Division, the applicant had already stated that the wrapping paper and labels showed the stylised cactus ‘used as an abbreviation’ of the earlier figurative mark. Accordingly, by that statement, the applicant was arguing that items bearing the stylised cactus could be used for the purposes of establishing genuine use of the earlier figurative mark, thereby implying that the abbreviated use of the earlier figurative mark did not alter its distinctive character. OHIM, which did not file a rejoinder, did not challenge the submission made by the applicant in the reply. In those circumstances, it must be held that OHIM’s argument had no basis in fact and consequently its objection of inadmissibility must be rejected.
61      Next, it should be noted that the earlier figurative mark is made up of a figurative element, namely a stylised cactus, followed by the word element ‘Cactus’. The two elements comprising the earlier figurative mark therefore convey, in their respective forms, the same semantic content. It should be added that, both in the figurative mark registered and the abbreviated form of that mark, the representation of the stylised cactus is the same, with the result that the consumer equates the abbreviated form of that mark with its registered form. It follows that the earlier figurative mark, as registered, and the mark, as used by the applicant in its abbreviated form, must be regarded as essentially equivalent. It must therefore be concluded that the applicant’s use only of the stylised cactus does not alter the distinctive character of the earlier figurative mark.
62      Moreover, some of the invoices referred to in paragraph 53 above make no reference to the earlier marks but include, in the heading, the company name, Cactus SA, followed by the address of the group’s registered office. First, it should be observed that when a word mark, such as the earlier word mark, is also a company name, it is possible for the company name to be used as a trade mark (see, to that effect, judgments of 27 September 2007 in La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, EU:T:2007:299, paragraph 74, and of 2 February 2012, Goutier v OHIM — Euro Data (ARANTAX), T‑387/10, EU:T:2012:51, paragraph 37). However, it should be noted that the purpose of a company name is to identify a company and not, of itself, to distinguish goods or services. Accordingly, there is use in relation to goods or services where a third party affixes the sign constituting his company name to the goods which it markets, and where, even if the sign is not affixed, the third party uses that sign in such a way that a link is established between the sign which constitutes the company name and the goods marketed or the services provided by the third party (see, to that effect, judgment in Céline, cited in paragraph 42 above, EU:C:2007:497, paragraphs 21 to 23).
63      It therefore follows from the considerations set out in paragraphs 61 and 62 above that it is necessary to take into account, when examining genuine use of the earlier marks, the documents provided by the applicant which show the figurative mark in its abbreviated form of a stylised cactus as well as the applicant’s company name, since, in any event, those documents establish a link between, on the one hand, the abbreviated shape of the earlier figurative mark or the applicant’s company name and, on the other hand, plants, flowers and seeds.
64      In the second place, it should be noted that several of the documents submitted by the applicant referred to in paragraph 53 above show the earlier marks next to the names of plants and flowers or a representation of plants and flowers. This can be seen in the following documents:
–        two promotional brochures, relating respectively to the periods from 23 March to 3 April 2004 and from 21 September to 2 October 2004, which show a range of gardening products, including plants and seeds, with the title ‘Garden News’ on the first page, preceded by the stylised cactus of the earlier figurative mark and, at the bottom of the last page, the representation of the earlier figurative mark;
–        the promotional brochure dated 7 June 2005, whose title consists of the earlier figurative mark depicted in large letters beside the word ‘News’, below which is a representation of a bouquet of flowers;
–        the promotional brochure showing goods for sale in the period from 24 to 30 October 2005, which includes, at the bottom of the first page, the words ‘Bascharage SUPER CACTUS’, preceded by the stylised cactus of the earlier figurative mark. A representation of flower arrangements with the name of the ‘Plants and Flowers’ department of the Hobbi Bascharage store can also be seen on the second page of that promotional brochure;
–        the promotional brochure dated 5 June 2005, with the same title as that of 7 June 2005 and showing, on the first and second pages, bouquets of flowers for Mothers’ Day and plants;
–        the promotional brochure dated 20 November 2008, with the same title as that of 7 June 2005 and showing, on the fourth page, a bouquet of flowers close to a representation of the earlier figurative mark;
–        promotional brochures bearing the dates 12 January, 8 June and 12 October 2010 in which the earlier figurative trade mark is represented beside plants or flowers or appears on the wrapping paper used for a bouquet of flowers;
–        two photographs showing stalls used as points of sale for plants and flower arrangements with, on the front, the word ‘Blummen’, which means ‘flowers’ in Luxembourgish, preceded by the stylised cactus of the earlier figurative mark;
–        invoices and delivery notes relating to the sale of plants and flowers, which include, in the heading, the earlier figurative mark;
–        invoices relating to the sale of plants and flowers, which include, in the heading, the company name;
–        the document showing the turnover of the applicant’s department ‘Cactus Blummen’ between 1997 and 2010;
–        business cards of two employees showing, at the top of the cards, the earlier figurative mark, with the employee’s name, job title and contact details in the middle and the address of the company Resuma, which is responsible for managing the applicant’s ‘Plants and Flowers’ division, at the bottom;
–        a sample of wrapping paper and a specimen of a label used for affixing to plants or bouquets of flowers, showing the earlier figurative mark in its abbreviated form followed by the word ‘Blummen’.
65      It is true that, as the parties themselves state, the earlier marks are not directly affixed to the flowers or plants which are represented in the promotional brochures and marketed by the applicant. As the applicant correctly submits, it is not, however, necessary that the mark concerned be affixed to the goods for there to be genuine use of the mark in relation to those goods (see, to that effect, judgment of 6 March 2014 in Anapurna v OHIM — Annapurna (ANNAPURNA), T‑71/13, EU:T:2014:105, paragraphs 44 and 60).
66      In the third place, it is important to take into account, when examining evidence of genuine use of earlier trade marks, the specific circumstances of the individual case, in accordance with the case-law cited in paragraph 50 above. In that respect, it must be noted, as the applicant submits in its pleadings, that the applicant has many retail stores which offer various different goods for sale bearing its own trade marks (house brand label) or third-party trade marks. The applicant adds, without being contradicted by OHIM, that supermarkets operated under the Cactus mark have their own bakery, butcher, fish and flower departments providing to consumers fresh goods to which marks are not generally affixed. In that respect, it should also be noted that the parties agree that, in the specific plants and flowers sector, it is not usual practice to affix a mark directly to those goods.
67      It must also be noted that, in the plants and flowers sector, the applicant has a certain degree of expertise and experience, which is not disputed by OHIM. It is apparent from several documents submitted by the applicant that it has a ‘Plants and Flowers’ division, which is managed by subsidiaries of the Cactus group, such as Resuma or Caflora. That division has specialist staff, as evidenced by the business cards provided by the applicant, and produces a number of promotional brochures which refer to ‘florists’ and ‘gardeners’ who ‘know their business’ and can ‘give the best advice’ to customers as well as make ‘arrangements’, ‘personalised bouquets’ and ‘bouquets in water’ or deal with ‘special orders’ ‘on the spot’. In that respect, it should also be noted that the applicant distributes brochures (‘Garden News’) specialising in plants, flowers and gardening, which include numerous items giving advice to customers. It should also be noted that the applicant has specialist shops under the name ‘Blummen’, which means ‘flowers’ in Luxembourgish, and that the applicant’s ‘Plants and Flowers’ division has a significant turnover, as shown by the document concerning sales between 1997 and 2010 cited in paragraph 53 above.
68      It should also be observed that the applicant publicises its expertise in the plants and flowers sector, as shown not only by the specialist gardening promotional brochures but also other promotional brochures of a more general nature.
69      Accordingly, in view of the context of the present case, as described in paragraphs 66 to 68 above, and, in particular, the applicant’s specific expertise in the plants and flowers sector, which it publicises, it must be considered that the documents submitted by the applicant which show the earlier marks establish to the requisite standard that there is a link between those marks and plants, flowers and seeds which bear no mark. Those documents show that the applicant offers for sale or sells those goods with the earlier marks as the only indication of a trade mark, with the result that those marks are the only signs that provide an indication of the commercial origin of the goods in question.
70      That conclusion is not affected by the consideration referred to by the Board of Appeal and OHIM that, in the light of the registration of the earlier marks in relation to retail services in Class 35, the earlier marks must be regarded as designating the applicant’s stores which retail plants, flowers and seeds, not those goods themselves. Although the earlier marks are also registered to designate retail services in respect of the sale of plants, flowers and seeds, as is apparent from paragraphs 31 to 39 above, that does not mean, given the context of the present case described in paragraphs 66 to 68 above, that those same marks may not also designate plants, flowers and seeds which bear no mark and which are offered for sale in shops operated by the applicant.
71      In those circumstances, it must be concluded that the Board of Appeal erred in deciding that the applicant had not proved genuine use of the earlier marks in relation to ‘natural flowers and plants, grains’ in Class 31.
72      It follows that the first plea in law must be upheld.
The third plea in law, alleging infringement of Article 76(2) of Regulation No 207/2009
73      The applicant claims that the Board of Appeal infringed Article 76(2) of Regulation No 207/2009 by rejecting the evidence submitted by the applicant before the Board of Appeal for the purposes of proving genuine use of the earlier marks in respect of services in Class 39. In the alternative, the applicant maintains that the evidence submitted before the Board of Appeal is capable of establishing that the earlier marks were put to genuine use in relation to the services in Class 39.
74      OHIM disputes the applicant’s arguments.
75      Article 76(2) of Regulation No 207/2009 provides that ‘[OHIM] may disregard facts or evidence which are not submitted in due time by the parties concerned’.
76      According to settled case-law, it can be inferred from the wording of Article 76(2) of Regulation No 207/2009 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of that regulation and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late (judgments of 13 March 2007 in OHIM v Kaul, C‑29/05 P, ECR, EU:C:2007:162, paragraph 42; 12 December 2007, in K & L Ruppert Stiftung v OHIM — Lopes de Almeida Cunha and Others (CORPO livre), T‑86/05, ECR, EU:T:2007:379, paragraph 44; and 28 March 2012 in Rehbein v OHIM — Dias Martinho (OUTBURST), T‑214/08, ECR, EU:T:2012:161, paragraph 42).
77      None the less, although parties to proceedings before OHIM may submit facts and evidence after expiry of the periods specified for that purpose, the possibility to do so is not without conditions, but is subject to there being no provision to the contrary. It is only if that condition is met that OHIM has the discretion — attributed to it by the Court of Justice when interpreting Article 76(2) of Regulation No 207/2009 — to take into account facts and evidence submitted out of time (judgments in CORPO livre, cited in paragraph 76 above, EU:T:2007:379, paragraph 47, and OUTBURST, cited in paragraph 76 above, EU:T:2012:161, paragraph 43).
78      In the present case, there is a provision which precludes the taking into account of the material submitted for the first time before the Board of Appeal by the applicant, namely, as is clear from the contested decision, Article 42(2) and (3) of Regulation No 207/2009, as implemented by Rule 22(2) of Regulation (EC) No 2868/95. That rule provides as follows:
‘Where the opposing party has to furnish proof of use or show that there are proper reasons for non-use, [OHIM] shall invite him to provide the proof required within such period as it shall specify. If the opposing party does not provide such proof before the time limit expires, [OHIM] shall reject the opposition.’
79      It is apparent from the second sentence of that provision that submission of proof of use of the earlier mark after the expiry of the period specified for that purpose results, in principle, in the rejection of the opposition without OHIM having a discretion in that regard. Genuine use of the earlier mark is a preliminary matter, which must accordingly be settled before a decision is taken on the opposition proper (judgments in CORPO livre, cited in paragraph 76 above, EU:T:2007:379, paragraph 49, and OUTBURST, cited in paragraph 76 above, EU:T:2012:161, paragraph 45).
80      However, the General Court has also held that the second sentence of Rule 22(2) of Regulation No 2868/95 cannot be interpreted as precluding additional evidence from being taken into consideration where new factors emerge, even if such evidence is adduced after the expiry of the time-limit (judgments of 8 July 2004 in MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, ECR, EU:T:2004:223, paragraph 56; CORPO livre, cited in paragraph 76 above, EU:T:2007:379, paragraph 50; and OUTBURST, cited in paragraph 76 above, EU:T:2012:161, paragraph 46).
81      The General Court has also held that Rule 22(2) of Regulation No 2868/95 must be understood as not precluding the admission of additional evidence which merely supplements other evidence submitted within the time-limit laid down from being taken into account, where the initial evidence was not irrelevant, but was held to be insufficient. Such reasoning, which in no way renders the above rule superfluous, is all the more appropriate because the applicant did not abuse the time-limits by knowingly employing delaying tactics or by demonstrating manifest negligence, and because the additional evidence which it submitted merely corroborated the evidence resulting from the written affirmations which were submitted within the time-limits (see, to that effect, judgment in OUTBURST, cited in paragraph 76 above, EU:T:2012:161, paragraph 53).
82      In the present case, in paragraphs 37 to 43 of the contested decision, the Board of Appeal, in reliance on the criteria set out in paragraphs 75 to 81 above, concluded that it did not have any discretion allowing it to take into account the evidence submitted to it for the first time by the applicant because the applicant had never previously submitted any proof of use of the earlier marks in relation to the services in Class 39.
83      The applicant does not contend that, at a stage prior to the appeal before the Board of Appeal, it provided evidence with a view to demonstrating genuine use of the earlier marks in relation to the services in Class 39. Furthermore, it is not apparent from the file that the applicant submitted before the Opposition Division, within the prescribed time-limit, relevant evidence to demonstrate genuine use of the earlier marks in relation to the services in question.
84      It should therefore be concluded that the evidence produced before the Board of Appeal was the first and only evidence of use of the earlier marks in relation to the goods in Class 39.
85      Having regard to the considerations set out in paragraphs 75 to 84 above, it must be held that, in the present case, the Board of Appeal had no discretion as to whether or not to take into account the evidence submitted for the first time before it.
86      The Board of Appeal was therefore correct to reject the evidence of use of the earlier marks in relation to services in Class 39, produced before it by the applicant for the first time.
87      The third plea in law must therefore be rejected.
88      In the light of all of the foregoing, in connection with the first plea, (i) point 1 of the operative part of the contested decision must be annulled in so far as it rejected the opposition on the grounds that ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ services in Class 35 were not covered by the earlier marks, and (ii) in connection with the second plea, point 2 of the operative part of the contested decision, which annulled the decision of the Opposition Division, must be annulled in so far as it allowed the opposition based on ‘natural flowers and plants, grains’ in Class 31, as well as point 1 of the operative part of the contested decision, which, for the same reasons, rejected the opposition in so far as it was based on those goods.
89      The remainder of the action is dismissed.
Costs
90      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
91      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. However, if it appears justified in the circumstances of the case, the General Court may order that one party, in addition to bearing his own costs, pay a proportion of the costs of the other party.
92      In the circumstances of the present case, as the action is well founded with regard to the first and second pleas in law, OHIM must be ordered to pay two thirds of the costs incurred by the parties and the applicant to pay the remaining third.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Annuls point 1 of the operative part of the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 19 October 2012 (Case R 2005/2011-2) in so far as it rejected the opposition on the grounds that ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ services in Class 35 were not covered by the earlier marks.
2.      Annuls point 2 of the operative part of the decision of the Second Board of Appeal of OHIM referred to above in so far as it annulled the part of the decision of the Opposition Division allowing the opposition based on ‘natural plants and flowers, grains’ in Class 31, and point 1 of the operative part of that decision, which rejected the opposition based on those goods.
3.      Dismisses the action as to the remainder.
4.      Orders Cactus SA to pay one third of the costs incurred by the parties before the General Court and orders OHIM to pay two thirds of those costs.
Kanninen
Pelikánová
Buttigieg
Delivered in open court in Luxembourg on 15 July 2015.
[Signatures]
* Language of the case: English.