JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
29 June 2017 (*)
(EU trade mark — Revocation proceedings — EU word marks AN IDEAL WIFE, AN IDEAL LOVER and AN IDEAL HUSBAND — No genuine use of the marks — Article 51(1)(a) of Regulation (EC) No 207/2009 — No proper reason for non-use)
In Joined Cases T‑427/16 to T‑429/16,
Isabel Martín Osete, residing in Paris (France), represented by V. Wellens, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Danielle Rey, residing in Toulouse (France), represented by P. Wallaert and J. Cockain-Barere, lawyers,
ACTIONS brought against the decisions of the Second Board of Appeal of EUIPO of 21 April 2016 (Cases R 1528/2015‑2, R 1527/2015‑2 and R 1526/2015‑2), concerning revocation proceedings between Ms Rey and Ms Martín Osete,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis, President, S. Papasavvas (Rapporteur) and O. Spineanu-Matei, Judges,
Registrar: J. Weychert, Administrator,
having regard to the applications lodged at the Court Registry on 29 July 2016,
having regard to the responses of EUIPO lodged at the Court Registry on 31 October 2016,
having regard to the responses of the intervener lodged at the Court Registry on 24 November 2016,
having regard to the decision of the President of the Sixth Chamber of the General Court of 4 April 2017 joining Cases T‑427/16 to T‑429/16 for the purposes of the oral procedure and of the decision closing the proceedings,
further to the hearing on 4 May 2017,
gives the following
Judgment
Background to the dispute
1        On 16 August, 25 August and 5 September 2006, the applicant, Ms Isabel Martín Osete, filed applications for registration of European Union trade marks at 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)).
2        The marks in respect of which registration was sought are the word signs AN IDEAL WIFE, AN IDEAL LOVER and AN IDEAL HUSBAND.
3        The goods in respect of which registration was sought are in Class 3 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’.
4        The EU trade mark applications were published in Community Trade Marks Bulletin No 2/2007, No 3/2007 and No 7/2007 of 15 January, 22 January and 19 February 2007 respectively.
5        On 29 June 2007, the word marks AN IDEAL WIFE, AN IDEAL LOVER and AN IDEAL HUSBAND (‘the registered marks’) were registered as EU trade marks.
6        On 6 November 2012, the intervener, Ms Danielle Rey, lodged three applications for revocation of the registered marks on the basis of Article 51(1)(a) of Regulation No 207/2009, on the grounds that those marks had not been put to genuine use for all of the goods listed during an uninterrupted period of five years and that there was no proper reason for non-use.
7        By three decisions of 8 June 2015, the Cancellation Division revoked the registered marks in their entirety as from 6 November 2012.
8        On 29 July 2015, the applicant filed three notices of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decisions of the Cancellation Division.
9        By three decisions of 21 April 2016 (‘the contested decisions’), the Second Board of Appeal of EUIPO dismissed the applicant’s appeals. As a preliminary point, it found that the applicant had partially surrendered the registered marks by limiting the goods covered by those marks to ‘perfumery’ alone. The Board of Appeal, therefore, limited its examination to those goods. For the rest, it held that the evidence of use presented by the applicant within the prescribed time limit was almost non-existent and showed that for four of the five years during which use had to be shown the perfumes protected by the registered marks were not ready to be placed on the market. It added that the applicant had not managed to launch a viable commercial enterprise, but had distributed some perfumes by hand to friends (or friends of friends) in literary salons and suchlike. The Board of Appeal concluded, therefore, that the evidence presented within the prescribed time limit did not contain any solid or reliable information as to the place, time, extent and nature of the use of the registered marks. The Board of Appeal also took the view that the industry rules and regulations, which were, according to the applicant, an obstacle to her ambition to sell perfumes, could not be regarded as constituting a proper reason for non-use. It added that, even if the evidence filed outside the prescribed time limit were taken into consideration, it would not be such as to alter the assessment of the applicant’s situation which indicated that the registered marks had to be revoked in their entirety.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decisions;
–        order EUIPO to pay the costs.
11      EUIPO and the intervener contend that the Court should:
–        dismiss the actions;
–        order the applicant to pay the costs.
Law
12      In support of her actions, the applicant raises, in essence, a single plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009.
13      That plea is divided into two parts alleging that the Board of Appeal erred in interpreting, first, the concept of ‘genuine use’ and, second, that of ‘proper reason for non-use’.
The first part of the single plea in law, alleging an error in the interpretation of the concept of genuine use
14      The applicant claims, in essence, that the Board of Appeal erred in holding that she had not established that the registered marks had been put to genuine use during the relevant period in regard to perfumery products.
15      EUIPO and the intervener dispute those arguments.
16      Under Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of the 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 in respect of which it is registered, and there are no proper reasons for non-use. However, that article states that no person may claim that the proprietor’s rights in a trade mark should be revoked where, during the interval between expiry of that period and filing of the application for revocation, genuine use of the trade mark has been started or resumed.
17      According to 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 21 November 2013, Recaro v OHIM — Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 19 and the case-law cited).
18      Accordingly, the analysis of whether use of an earlier trade mark is genuine cannot be confined merely to establishing that that mark has been used in the course of trade, since the use must also be genuine, in accordance with the provisions of Regulation No 207/2009. Not all proven commercial exploitation can therefore automatically be deemed to constitute genuine use of the mark in question (judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 32).
19      With regard to the criteria for assessing whether use of the trade mark is genuine, it must be borne in mind that, in making such an assessment, 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 extent and frequency of use of the mark (see judgment of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM — Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 22).
20      Furthermore, a global assessment must be carried out which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under the mark in question may be offset by the fact that use of that mark was very extensive or very regular, and vice versa(see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 23 and the case-law cited).
21      Lastly, genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 26 and the case-law cited).
22      As to the extent or scale of the use to which the trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 31 and the case-law cited).
23      In the light of the foregoing, it is necessary to examine whether, in the light of the applicant’s arguments, the Board of Appeal acted correctly in law in finding that the evidence adduced by the applicant did not demonstrate genuine use of the registered marks.
24      As a preliminary point, on the one hand, it should be pointed out that, as the intervener lodged her applications for revocation with EUIPO on 6 November 2012, the five-year period referred to in Article 51(1)(a) of Regulation No 207/2009 runs from 6 November 2007 to 5 November 2012 (‘the relevant period’).
25      On the other hand, it should be noted that, in the context of the proceedings before the Board of Appeal, the period within which the applicant was required to produce evidence of genuine use of the registered marks expired on 25 April 2013. It is not disputed that the applicant produced part of the evidence outside of that period. However, the Board of Appeal found, essentially, that, even if the evidence produced outside of that period were taken into consideration, it would not be such as to demonstrate that the registered marks had been put to genuine use during the relevant period. It is therefore necessary to rely on all of the evidence submitted by the applicant in order to determine whether the Board of Appeal acted correctly in law in finding that the registered marks had not been put to genuine use.
26      In the first place, the applicant claims that she produced a great deal of evidence before the Board of Appeal and that, even if certain relevant factors are lacking in some items of evidence, the combination of all the relevant factors in the evidence as a whole is such as to establish genuine use. She states, in this regard, that one of those relevant factors relates to the fact that she encountered numerous problems stemming from regulatory issues during the relevant period.
27      In that regard, it should be noted that, as is apparent from the contested decisions, the Board of Appeal found that the documents submitted within the prescribed period consisted of letters from ostensible customers stating that they had bought perfumes from the applicant, emails written by the latter confirming that orders had been sent and various statements indicating that the regulatory issues had constituted a major obstacle to the launch of the applicant’s perfumes or that a designer had started to design packaging for her perfumes in 2009, but had had to put the project on hold because the perfumes contained too many allergens. Those documents also included letters seeking to secure a meeting with an important client, others referring to perfumes in general or stating how difficult it was to create a perfume, toxicological reports, information on perfumes from other operators, a series of photographs and undated advertising flyers. The Board of Appeal found that those documents had shown that, during four of the five years of the relevant period, the perfumes protected by the registered marks were not ready to be marketed. It added that no use had been demonstrated for 2012. According to the Board of Appeal, the applicant had not managed to mount a viable commercial enterprise, but had distributed some perfumes by hand to friends (or friends of friends) in literary salons and suchlike. The Board of Appeal also found that the scale and frequency of use were vanishingly small in the present case and that the applicant was unable to indicate any turnover.
28      In the present case, it must be held that the documents produced by the applicant do not support the view that the Board of Appeal erred in failing to find that there had been genuine use of the registered marks. On this point it should be noted that the intervener states that certain documents produced by the applicant before the Court were not produced before the Board of Appeal. However, that assertion is not shared by EUIPO, which, as it indicated at the hearing, is of the view that none of the documents produced by the applicant in the present action is new. In any event, such a matter is irrelevant in the present cases, as none of the documents produced before the Court makes it possible to challenge the contested decisions.
29      In that regard, it must be stated that, as the Board of Appeal rightly found, the applicant has produced no invoice, no sales figures, no advertising figures and no data indicating the market share of the perfumery products marketed under the registered marks. Before the Court, the applicant produced a table which she had compiled with a view to summarising the sales figures for the perfumes protected by the registered marks. It appears from that table that, for the period from 12 December 2006 to 12 March 2012, the applicant sold perfumes under those three marks for a total amount of EUR 2 385 and GBP 3 733. Without it being necessary to rule on either the admissibility of that document or on its evidential value, it is quite clear that the figures for the sales of the perfumes protected by the registered marks were particularly low, given that the price of each perfume was between 18 and 60 euros, and between 4 and 30 pounds.
30      According to the case-law, the turnover achieved and the volume of sales of the goods under the trade mark being contested cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, use of a mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use may therefore be sufficient to be classified as genuine, provided that it is regarded as warranted, in the relevant economic sector, as a means of maintaining or creating market shares for the goods or services protected by the mark. It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine, with the result that a de minimis rule, which would not allow EUIPO, or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot be laid down (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 32 and the case-law cited).
31      However, the smaller the commercial volume of the use of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of that mark’s use (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 33 and the case-law cited).
32      In this regard, it is clear from the documents produced by the applicant that the sales which she claims to have made under the registered marks were made at a number of literary salons, in particular those organised by the Oscar Wilde Society in Paris, and at infrequent meetings with a small number of loyal customers. In addition, the advertising documents or correspondence with potential suppliers, which is not supported by any evidence such as invoices or purchase orders, also do not make it possible to find a high degree of intensity or consistency over time in the use of those marks and do not, therefore, make it possible to remove potential doubts as to the genuine use of the marks in question.
33      In addition, it must be held that the applicant does not dispute that, as the Board of Appeal established, the perfumes protected by the registered marks were being re-worked between 2008 and 2011. Such a fact tends to confirm that, during the greater part of the relevant period, those perfumes could not be marketed, as the Board of Appeal correctly held.
34      Moreover, the applicant also complains that the Board of Appeal did not accept the proper reasons for non-use on which she had relied before it. By such a complaint, the applicant acknowledges that she did not make use of the registered marks during at least part of the relevant period but takes the view that the Board of Appeal should have found that there was a proper reason explaining that lack of use.
35      Finally, while it was pointed out in paragraph 19 above that, in order to determine whether there is genuine use, it is necessary to rely in particular on the characteristics of the relevant market and on 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 protected by the mark, it must be held that, in the present cases, the applicant has not provided any information that would have enabled the Court to understand the particular features of the market in question.
36      In those circumstances, the Board of Appeal was right to find that the applicant had failed to prove genuine use of the registered marks during the relevant period.
37      In the second place, the applicant maintains that the most significant evidence that she adduced, whilst, admittedly, showing use outside the relevant period, also confirmed genuine use and her intention during the relevant period.
38      The Board of Appeal acknowledged that the use of a trade mark after the relevant period was valid when it confirmed or clarified the extent of the use of a mark during the relevant period. Nevertheless, it stated that it was not, on its own, a decisive fact.
39      In this regard, it must be noted that, in the assessment of the genuine nature of use during the relevant period, account can be taken, where appropriate, of circumstances subsequent to that period. Such circumstances may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (see judgment of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 38 and the case-law cited).
40      In the present cases the documents subsequent to the relevant period produced by the applicant consist of an invoice dated 3 September 2014 issued by a supplier of perfume bottles and relating to an order placed by the applicant for 20 000 perfume bottles, extracts from the applicant’s website, including an online shop for purchasing the perfumes protected by the registered marks, documents showing that the applicant won the award for Best Fragrance at the 2014 Beauty Challengers Awards for the perfumes protected by the registered marks, and extracts from magazines and emails exchanged with potential retailers and distributors of the perfumes protected by the registered marks.
41      However, it is evident that the documents referred to in paragraph 40 above do not provide any clear information as to genuine use of the registered marks during the relevant period. At most, they suggest that the applicant began to make genuine use of those marks after that period as she ordered a large number of bottles to market her perfumes in 2014 and, in that same year, she received a prize for her perfumes after working on their reformulation during the relevant period. Furthermore, since it follows from what was stated in paragraph 36 above that the applicant failed to adduce evidence of genuine use of the registered marks during the relevant period, the documents postdating that period do not make it possible to confirm or assess better the scale of use of the registered marks during the relevant period or to reveal the applicant’s actual intentions during that period.
42      In the third place, the applicant criticises the Board of Appeal for having disregarded the evidence which she had provided on the basis of an individual assessment rather than on that of a global assessment of that evidence, which, she submits, demonstrated clearly her intention to gain market share while at the same time having to overcome regulatory hurdles.
43      In this regard, it should be borne in mind that genuine use implies real use of the mark on the market concerned for the purpose of identifying goods or services. Genuine use is therefore to be regarded as excluding minimal or insufficient use for the purpose of determining that a mark is being put to real, effective use on a given market. Thus, even if it is the owner’s intention to make real use of his trade mark, if the trade mark is not objectively present on the market in a manner that is effective, consistent over time and stable in terms of the configuration of the sign, with the result that it cannot be perceived by consumers as an indication of the origin of the goods or services in question, then there is no genuine use of the trade mark (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO AIRE), T‑156/01, EU:T:2003:198, paragraph 35 and the case-law cited).
44      Furthermore, as has already been stated in paragraph 20 above, a global assessment must, according to the case-law, be carried out by taking into account all the relevant factors of the particular case.
45      In the present case, it must be held that the Board of Appeal did not make an individual assessment of the evidence, but carried out a global assessment of the relevant factors when it took the view that the absence of turnover was not offset by the scale and frequency of use, which it found to be vanishingly small, and concluded that there had not been genuine use of the registered marks during the relevant period, notwithstanding the applicant’s intention to put her marks to actual use.
46      In those circumstances, the present complaint is unfounded and must be rejected, together with the first part of the single plea as a whole.
The second part of the single plea in law, alleging an error in the interpretation of the concept of ‘proper reason for non-use’
47      The applicant criticises the Board of Appeal for not having found that proper reasons for non-use existed during the relevant period, namely, in the present case, regulatory constraints emanating both from the International Fragrance Association (‘IFRA’) and from the European Union, which made it extremely difficult to use the registered marks for perfumery products during the relevant period.
48      EUIPO and the intervener dispute those arguments.
49      In the present case, the Board of Appeal took the view that the industry rules and regulations, which were, according to the applicant, an obstacle to her ambition to sell perfumes, could not be regarded as constituting a proper reason for non-use. First, the Board of Appeal pointed out that the rules referred to in the evidence applied to all traders in perfumes and not just to the applicant. Second, it noted that Directive 2003/15/EC of the European Parliament and of the Council of 27 February 2003 amending Council Directive 76/768/EEC on the approximation of the laws of the Member States relating to cosmetic products (OJ 2003 L 66, p. 26) had come into force long before the applicant filed her trade mark application in 2006. The Board of Appeal added that the applicant must therefore have been aware of the requirements of the directive and should have designed her perfumes accordingly.
50      In that regard, it should be recalled that, according to the case-law, only obstacles which have a sufficiently direct relationship with a trade mark, making its use impossible or unreasonable, and which arise independently of the will of the proprietor of that mark, may be described as ‘proper reasons’ for non-use of that mark. A case-by-case assessment is necessary in order to determine whether a change in the strategy of the undertaking with a view to circumventing the obstacle under consideration would make the use of that mark unreasonable (see judgment of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 96 and the case-law cited).
51      The applicant maintains, first, that the amendments to the IFRA regulations constituted the most significant regulatory constraint that she faced during the relevant period and obliged her to rework the perfumes which she markets under the registered marks. She states that IFRA, whose members account for 90% of global production by volume of perfume compounds, is the governing body of the perfume industry and, as such, monitors and regulates the use of materials used in perfumes. She adds that any person who is serious about marketing his or her perfume on the European market must ensure compliance with IFRA standards. She states that, since she relied on a producer belonging to IFRA for the production of her perfumes, she had to have her formulas re-worked in order to comply with the amended standards. The applicant adds, second, that the large number of amendments to EU law during the relevant period forced her to alter significantly the perfumes which she markets under the registered marks. The applicant states that Council Directive 76/768/EEC of 27 July 1976 on the approximation of the laws of the Member States relating to cosmetic products (OJ 1976 L 262, p. 169) was amended at least 30 times during the relevant period and was finally replaced by Regulation (EC) No 1223/2009 of the European Parliament and of the Council of 30 November 2009 on cosmetic products (OJ 2009 L 342, p. 59).
52      In this regard, it must be held that, as the Board of Appeal correctly pointed out, the rules of IFRA and of the European Union apply to all operators in the perfumes sector and not just to the applicant. Moreover, compliance with the applicable rules is inherent in any commercial activity and cannot, unless a particularly broad interpretation of the concept of ‘proper reason for non-use’ is to be adopted, justify the absence of genuine use during the relevant period. Finally, the problems associated with the manufacture of the products of an undertaking form part of the commercial difficulties encountered by that undertaking. According to the case-law, the concept of proper reasons refers to circumstances unconnected with the trade mark proprietor rather than to circumstances associated with his commercial difficulties (see judgment of 18 March 2015, Naazneen Investments v OHIM — Energy Brands (SMART WATER) (T‑250/13, not published, EU:T:2015:160, paragraph 66 and the case-law cited).
53      In those circumstances, it must be held that, as EUIPO correctly asserts, the existence of complex regulations applicable in a certain field cannot be regarded as an obstacle which makes it impossible or unreasonable to use registered marks within the meaning of the case-law cited in paragraph 50 above. Therefore, the Board of Appeal did not err when it found that the applicant could not rely in the present case on any proper reason for non-use of the registered marks.
54      It follows from all of the foregoing that the second part of the single plea in law must be rejected and that the action must be dismissed in its entirety.
Costs
55      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, she must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the actions;
2.      Orders Ms Isabel Martín Osete to pay the costs.
Berardis
Papasavvas
Spineanu-Matei
Delivered in open court in Luxembourg on 29 June 2017.
E. Coulon
G. Berardis
Registrar
President
*      Language of the cases: English.