JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
19 January 2022 (*)
(EU trade mark – Revocation proceedings – EU word mark POMODORO – Genuine use of the trade mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Statement setting out the grounds of appeal – Period for lodging – Article 58(3) of Delegated Regulation (EU) 2018/625 – Facts or evidence submitted for the first time before the Board of Appeal – Article 27(4) of Delegated Regulation 2018/625 – Proof of genuine use)
In Case T‑76/21,
Masterbuilders, Heiermann, Schmidtmann GbR, established in Tübingen (Germany), represented by H. Hillers, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Francesco Cirillo, residing in Berlin (Germany),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 30 November 2020 (Case R 715/2020-5), relating to revocation proceedings between Masterbuilders, Heiermann, Schmidtmann and Mr Cirillo,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov, President, E. Buttigieg and D. Petrlík (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 5 February 2021,
having regard to the response lodged at the Court Registry on 10 May 2021,
having regard to EUIPO’s reply to the measure of organisation of procedure of 16 July 2021 and the applicant’s observations,
having regard to EUIPO’s reply to the measure of organisation of procedure of 7 September 2021 and the applicant’s observations,
gives the following
Judgment
Background to the dispute
1        On 31 May 2012, Mr Francesco Cirillo (the ‘trade mark proprietor’) filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (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 POMODORO.
3        The goods and services in respect of which registration was sought are in, inter alia, Class 9 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: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus’.
4        The trade mark application was published on 2 July 2012 and the mark at issue was registered on 9 October 2012.
5        On 18 February 2019, the applicant, Masterbuilders, Heiermann, Schmidtmann GbR, filed an application for revocation of that mark on the grounds of non-use. That application was based on Article 58(1)(a) of Regulation 2017/1001 and directed against the goods covered by the mark at issue in Class 9.
6        By decision of 4 February 2020 (‘the Cancellation Division’s decision’), EUIPO’s Cancellation Division upheld the application for revocation in its entirety.
7        On 17 April 2020, the trade mark proprietor filed a notice of appeal against that decision, contending that it should be annulled in its entirety.
8        By decision of 30 November 2020 (‘the contested decision’), the Fifth Board of Appeal upheld that appeal in part and annulled the Cancellation Division’s decision in so far as it related to ‘countdown timers; downloadable application software’ in Class 9 and dismissed the appeal as to the remainder.
9        In essence, the Board of Appeal found that the evidence submitted by the trade mark proprietor before both the Cancellation Division and the Board of Appeal was sufficient to prove genuine use of the mark at issue in connection with those goods.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        dismiss the appeal brought by the trade mark proprietor before the Board of Appeal;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      The applicant relies, in essence, on three pleas in law alleging (i) infringement of Article 68 and Article 101(1) of Regulation 2017/1001 for failing to comply with the time limit for filing the statement setting out the grounds of appeal; (ii) infringement of Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1) due to the submission of inadmissible evidence before the Board of Appeal; and (iii) lack of proof of genuine use of the mark at issue.
The first plea, alleging infringement of Article 68 and Article 101(1) of Regulation2017/1001
13      In paragraph 14 of the contested decision, the Board of Appeal noted that the trade mark proprietor’s filing on 13 June 2020 of his statement setting out the grounds of appeal complied with the four-month time limit for filing that statement laid down in Article 68(1) of Regulation 2017/1001, because the Cancellation Division’s decision had been notified to the proprietor by letter of 5 February 2020, with the result that that time limit lapsed on 15 June 2020.
14      The applicant submits, in essence, that the Board of Appeal infringed Article 68 and Article 101(1) of Regulation 2017/1001, since, as the Cancellation Division’s decision had been notified to the trade mark proprietor on 4 February 2020 by electronic means, the four-month time limit for filing the statement setting out the grounds of his appeal lapsed on 4 June 2020.
15      EUIPO contends that the applicant’s arguments must be rejected. In particular, in reply to the measures of organisation of procedure of 16 July and 7 September 2021, EUIPO stated that the Cancellation Division’s decision had been sent on 5 February 2020 to the trade mark proprietor by registered post without acknowledgement of receipt and that that decision had not been notified to the proprietor by electronic means since an attempt to notify the proprietor’s representative by fax had failed on 4 February 2020.
16      Article 68(1) of Regulation 2017/1001 provides that, in the case of an appeal against a decision of a EUIPO department, a written statement setting out the grounds of appeal is to be filed within four months of the date of notification of the decision.
17      In accordance with Article 56(2) and (3) of Delegated Regulation 2018/625, notifications by EUIPO may be made, in particular, by electronic means, by post or by courier; where the addressee has indicated contact details for communicating through electronic means, EUIPO has the choice between those means and notification by post or courier.
18      Next, pursuant to the first sentence of Article 58(1) of that regulation, decisions subject to a time limit for appeal are to be notified ‘by courier service or registered post, in both cases with advice of delivery’.
19      In addition, the first sentence of Article 58(3) of that regulation provides that, where notification is effected by courier service or registered post, whether or not with advice of delivery, it is to be deemed to be delivered to the addressee on the 10th day following that of its posting, unless the letter has failed to reach the addressee or has reached the addressee at a later date.
20      Lastly, Article 67(3) of that regulation provides that, where a time limit is expressed as one month or a certain number of months, it is to expire on the relevant subsequent month on the day which has the same number as the day on which the relevant event occurred.
21      In the present case, EUIPO has demonstrated, with supporting evidence, that the Cancellation Division’s decision had been notified on 5 February 2020 by registered post without acknowledgement of receipt.
22      The applicant has not succeeded in calling that finding into question by claiming that the Cancellation Division’s decision was notified on 4 February 2020 by electronic means, which would have had the effect of triggering the time limit for filing the statement setting out the grounds of appeal. The three documents on which it relies in order to dispute EUIPO’s claim to the contrary, annexed to its observations on EUIPO’s replies to the measures of organisation of procedure, do not demonstrate that notification by electronic means was made. The first of those documents – the letter notifying the trade mark proprietor of the Cancellation Division’s decision – is dated 4 February 2020 and states that that decision was adopted on the same day. Similarly, the electronic file relating to the mark at issue, accessible on EUIPO’s website, contains only the information that that decision was notified on 5 February 2020. The statement setting out the grounds of appeal merely states that that decision was notified on 4 February 2020. Accordingly, none of those documents specifies the means by which such notification was made.
23      Admittedly, the statement setting out the grounds of appeal states that the Cancellation Division’s decision was notified to the trade mark proprietor on 4 February 2020. However, that statement contradicts the electronic file relating to the mark at issue, according to which that decision was notified on 5 February 2020, as well as EUIPO’s statement before the Court, supported by proof of dispatch, according to which that decision was notified on that same date by registered post without acknowledgement of receipt, which means that it was received by the trade mark proprietor after that date. Moreover, there is nothing in the file to support the applicant’s argument.
24      Consequently, the applicant has not succeeded in demonstrating that the Cancellation Division’s decision was notified on 4 February 2020 by electronic means.
25      In those circumstances, it must be concluded, in accordance with the first sentence of Article 58(3) of Delegated Regulation 2018/625, that the notification of the Cancellation Division’s decision on 5 February 2020 must be deemed to have been delivered to its addressee on the 10th day following that posting, namely on 15 February 2020.
26      That conclusion is not called into question by the fact that EUIPO notified that decision by registered post without acknowledgement of receipt and that such method of notification does not comply with the first sentence of Article 58(1) of that regulation on the ground that that decision sets in motion a time limit for bringing an appeal.
27      Admittedly, it is apparent from Article 61 of Delegated Regulation 2018/625 that, where the provisions applicable to the notification of a document have not been observed, that document is deemed to have been notified on the date established as the date of receipt.
28      However, that provision is not intended to affect the legal situation of the addressees of documents notified by EUIPO where defects in notification are attributable to EUIPO. Thus, if EUIPO has erred by effecting notification by registered post without acknowledgement of receipt, as in the present case, Article 61 of Delegated Regulation 2018/625 must be applied in conjunction with Article 58(3) of that regulation, which means that, in such a case, the document concerned is deemed to have been notified on the date established as the date of its actual receipt only if it has reached the addressee after the 10th day following its posting. However, it has not been shown that that was the case here.
29      Since the notification of the Cancellation Division’s decision was thus deemed to have been delivered on 15 February 2020, the time limit for filing the statement setting out the grounds of appeal lapsed, in accordance with Article 67(3) of Delegated Regulation 2018/625, on 15 June 2020.
30      Since the trade mark proprietor filed that statement on 13 June 2020, it was therefore admissible.
31      Consequently, the first plea must be dismissed.
The second plea, alleging infringement of Article 27(4) of Delegated Regulation 2018/625
32      In paragraph 19 of the contested decision, the Board of Appeal stated that the trade mark proprietor had filed before it new evidence of use of the mark at issue. It took the view, in paragraphs 20 and 21 of that decision, that, in accordance with Article 95(2) of Regulation 2017/1001 and Article 27(4) of Delegated Regulation 2018/625, it could accept evidence submitted for the first time before it which is relevant and which supplements the evidence submitted before the Cancellation Division. In paragraph 22 of that decision, the Board of Appeal found that, in the present case, that evidence satisfied those conditions, with the result that it should accept it.
33      The applicant submits that the evidence of genuine use of the mark at issue, which was produced by the trade mark proprietor for the first time in his statement setting out the grounds of appeal, is inadmissible under Article 27(4) of Delegated Regulation 2018/625. The evidence is not, the applicant argues, a mere ‘supplement’, but is the main evidence submitted before EUIPO, the volume of which is four times greater than that of the evidence submitted before the Cancellation Division. Furthermore, neither the trade mark proprietor nor EUIPO explain why that evidence could not have been submitted within the time limit set at first instance. There is no justification for the belated submission of such evidence.
34      EUIPO contends that the applicant’s arguments should be rejected.
35      Under Article 95(2) of Regulation 2017/1001, EUIPO may disregard evidence which is not submitted in due time by the parties.
36      However, the exercise of EUIPO’s discretion provided for in that provision is circumscribed by Article 27(4) of Delegated Regulation 2018/625 the purpose of which, in accordance with recital 8 of that delegated regulation, is to accurately reflect the boundaries of EUIPO’s discretion when examining belated evidence. According to Article 27(4), the Board of Appeal may thus accept evidence submitted for the first time before it only where that evidence satisfies two conditions. First, it ‘[is], on the face of it, likely to be relevant for the outcome of the case’. Secondly, it ‘[has] not been produced in due time for valid reasons, in particular where [it is] merely supplementing relevant facts and evidence which had already been submitted in due time, or [is] filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal’.
37      That provision seeks to reconcile two potentially conflicting requirements. First, it is consistent with the principle of sound administration and the need to ensure the proper conduct and effectiveness of proceedings that the parties have an incentive to respect the time limits imposed on them by EUIPO when hearing a case. The fact that EUIPO may take into account facts and evidence produced by the parties outside the prescribed time limits only under certain conditions has such an incentive effect (see, to that effect, judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 47).
38      Secondly, by nevertheless preserving the possibility for the department called upon to decide a dispute to take into account facts and evidence submitted late by the parties, such discretion is, in the case of revocation proceedings, likely to contribute to ensuring that marks are not cancelled where it is possible to prove genuine use of those marks before that board. As the Court has previously held, reasons of legal certainty and sound administration speak in favour of that approach (see, to that effect and by analogy, judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 48).
39      So far as concerns the first condition set out in paragraph 36 above, it has not been disputed that it was satisfied in the present case.
40      As regards the second condition referred to in paragraph 36 above, it should be recalled that supplementary evidence is characterised by a link with other evidence previously submitted in due time which it supplements (see, to that effect, judgments of 14 May 2019, Guiral Broto v EUIPO – Gastro & Soul (Café del Sol and CAFE DEL SOL), T‑89/18 and T‑90/18, not published, EU:T:2019:331, paragraph 42, and of 9 September 2020, Kludi v EUIPO – Adlon Brand (ADLON), T‑144/19, not published, EU:T:2020:404, paragraph 56).
41      In the present case, it is true that the trade mark proprietor filed before the Board of Appeal a large number of items of evidence of use of the mark at issue for ‘timers’, which are referred to as ‘countdown timers’ in the contested decision (‘the timers’), and for a downloadable software application for downloading an electronic version of those timers (‘the application’). Similarly, it is common ground that that evidence could have been produced before the Cancellation Division.
42      However, the evidence on which the Board of Appeal based its conclusions was intended to prove facts which had already been relied on before the Cancellation Division and is of the same nature as the evidence which was submitted to that division within the time limit. Furthermore, that evidence was filed in order to challenge the Cancellation Division’s conclusions based on the lack of proof of use of the mark at issue in connection with the timers and the application within the five-year period preceding the application for revocation, which extended from 18 February 2014 to 17 February 2019 inclusive. Consequently, the evidence submitted before the Board of Appeal merely supplements relevant facts and evidence already submitted in due time and challenges the Cancellation Division’s conclusion.
43      That applies, in particular, to the most voluminous items of evidence filed before the Board of Appeal. First, Annex 3 to the statement setting out the grounds of appeal, which contains 100 sample invoices for the sale of the timers, supplements Annex 3 filed before the Cancellation Division, which already contained a number of examples of such invoices. Secondly, Annex 4 to that statement, which contains approximately 100 emails from persons requesting to download the application, supplements Annex 5 filed before the Cancellation Division, which contained extracts from the trade mark proprietor’s website relating to the possibility of downloading that application, a list of persons who had made a download request and several examples of such requests from various persons. Thirdly, Annex 7 to that statement, which contains 21 press articles relating to the technique behind the timers and the application, supplements Annex 0 filed before the Cancellation Division, which also contained a number of press articles on that subject.
44      Next, contrary to the applicant’s claim, the fact that the number of items of evidence submitted for the first time before the Board of Appeal is considerably greater than that of the items of evidence submitted before the Cancellation Division is not such as to make that evidence inadmissible.
45      There is nothing in Article 27(4) of Delegated Regulation 2018/625, in any other provision of that regulation or in Regulation 2017/1001 to indicate that evidence submitted for the first time before the Board of Appeal should be rejected where the number of such items of evidence or their volume exceeds a certain threshold. Thus, if that evidence satisfies the conditions laid down in Article 27(4), the Board of Appeal may accept it.
46      In those circumstances, the Board of Appeal was entitled to take the view that the evidence produced for the first time before it supplemented the relevant evidence which had already been submitted to the Cancellation Division and that it was therefore not produced in due time for valid reasons.
47      It follows that the second condition set out in Article 27(4) of Delegated Regulation 2018/625 may be regarded as satisfied and that the Board of Appeal was therefore right to accept the evidence produced for the first time before it.
48      Consequently, the second plea must be rejected.
The third plea, alleging lack of proof of genuine use of the mark at issue
49      In paragraphs 35 to 79 of the contested decision, the Board of Appeal took the view that use of the mark at issue should be examined by reference to the place, time, extent and nature of use of that mark in connection with the goods and services in respect of which it was registered.
50      As regards the time of use of the mark at issue for the timers and the application in Class 9, the Board of Appeal observed, in paragraph 35 of the contested decision, that that mark has been used for the timers since 2013 and that the application has been available for download since October 2018. As regards the place of use of those goods, it noted, in paragraph 37 of that decision, that the timers were sold in 23 Member States and that the application was downloaded by customers across the European Union.
51      In paragraphs 38 to 53 of that decision, as regards the extent of use of the timers and the application, the Board of Appeal found, first of all, that sales of the timers were approaching 2 700 items and that such a number had to be considered sufficient to prove genuine use, in view of the fact that the low overall volume of sales was offset by the frequency of use and its territorial scope. Next, the Board of Appeal noted that the application had been downloaded 1 621 times since October 2018, mainly by customers in the European Union. According to the Board of Appeal, that number could be considered significant and as showing that the trade mark proprietor intends to maintain a market share for the application under the mark at issue.
52      As regards the nature of use of the mark at issue as registered, the Board of Appeal found, in paragraphs 54 to 79 of the contested decision, that the evidence sufficiently indicated the nature of use of that mark in its registered form and functioning as a trade mark.
53      By contrast, the Board of Appeal found that there was no proof of genuine use of the mark at issue for goods in Class 9 other than the timers and the application. The Board of Appeal therefore concluded that genuine use of that mark had been proved only in connection with those two products and that the trade mark proprietor’s appeal should be dismissed as regards the remaining goods in Class 9.
54      First, the applicant submits that the low number of timers sold cannot be regarded as warranted as a means of maintaining or creating a market share for those goods. Furthermore, the number of persons likely to have purchased those goods is, it is argued, very low. According to the applicant, the trade mark proprietor is not a seller of those goods, but focuses on spreading the time management technique he has developed.
55      Secondly, the applicant takes the view that genuine use of the mark in connection with the application has likewise not been proved, since the trade mark proprietor has only presented a website on which there is a ‘Request Software’ icon without showing the number of downloads which he claims were made. Moreover, the term ‘pomodoro’ is used to refer only to the timer project and it has not been shown that the download requests are connected with the trade mark proprietor.
56      EUIPO contends that the applicant’s arguments should be rejected.
57      In the first place, in so far as the applicant refers to its observations produced before the Cancellation Division on 28 August 2019 and to those produced before the Board of Appeal on 14 August 2020, it should be borne in mind that, under Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure of the General Court, the application must contain a summary of the pleas in law relied on. It is settled case-law that, although specific points in the text of the application can be supported and supplemented by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for a failure to set out the essential elements of the legal argument, which must, under the provisions referred to above, appear in the application itself (see judgments of 16 November 2017, Nanogate v EUIPO (metals), T‑767/16, not published, EU:T:2017:809, paragraph 31, and of 8 July 2020, Scorify v EUIPO – Scor (SCORIFY), T‑328/19, not published, EU:T:2020:311, paragraph 20).
58      Similarly, it is not for the Court to assume the role of the parties by seeking to identify the relevant material in the documents to which they refer (judgments of 16 November 2017, metals, T‑767/16, not published, EU:T:2017:809, paragraph 32, and of 8 July 2020, SCORIFY, T‑328/19, not published, EU:T:2020:311, paragraph 21).
59      Consequently, the applicant’s arguments in the observations which it submitted during the administrative proceedings before EUIPO, to which it merely refers, must be rejected as inadmissible.
60      In the second place, it should be noted that it is not disputed that the five-year period preceding the application for revocation, within which the trade mark proprietor was required to prove genuine use of the mark at issue, extended from 18 February 2014 to 17 February 2019 inclusive, as mentioned in paragraph 33 of the contested decision.
61      As regards, in the third place, the extent of use of the mark at issue in connection with the timers, it is clear from case-law that 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 (judgments of 21 November 2013, Recaro v OHIM – Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 19, and of 23 September 2020, Polfarmex v EUIPO – Kaminski (SYRENA), T‑677/19, not published, EU:T:2020:424, paragraph 39).
62      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 extent and frequency of use of the mark (judgments of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 22, and of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 42).
63      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 (judgments of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 31, and of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 45).
64      In the present case, the trade mark proprietor initially produced, before the Cancellation Division, a statement, referred to in paragraph 43 of the contested decision, to which is attached a report entitled ‘Pomodoro Timer Sales Report for the Period 18.02.2014‑18.02.2019’ indicating that 2 765 timers were sold during the period referred to in paragraph 60 above. That document distinguishes between sales of timers by the unit (9 items sold), in crates of eight (2 056 items sold) and by the unit together with a book on the method developed by the trade mark proprietor (700 items sold).
65      Next, before the Board of Appeal, the trade mark proprietor produced a report from e-commerce platform ‘Shopify’ (‘the Shopify report’), drawn up for that period, from which it is apparent that 970 items were sold with the help of that platform in 23 Member States for a total sum of approximately EUR 28 000.
66      Lastly, in order to corroborate the sales apparent from the above documents, the trade mark proprietor produced, again before the Board of Appeal, 100 sample invoices, not numbered consecutively, in respect of the sales of 1 645 timers during the same period in 23 Member States.
67      As regards the probative value of those documents, the applicant cannot claim that there is a significant contradiction between the evidence produced before the Cancellation Division, on the one hand, and that produced before the Board of Appeal, on the other. It is true that, in paragraph 45 of the contested decision, it is noted that the Shopify report shows a sales volume of 970 items. However, apart from the fact that this sales volume might represent only a portion of the sales of timers during the period referred to in paragraph 60 above, that sales volume, namely 970 items, is accounted for by the fact that that report identifies certain sales of crates of eight timers as a single item sold rather than eight items sold. It is apparent from the ‘Pomodoro Timer Sales Report for the Period 18.02.2014‑18.02.2019’, produced before the Cancellation Division, that each sale of a crate of eight timers is assigned a code, namely 002‑001‑G‑S, and that 2 056 timers were sold in crates of eight. The same code also appears in the Shopify report to identify the sale of 258 items, which, in respect of crates of eight timers, means the sale of 2 064 timers.
68      It follows that there is no significant contradiction between the evidence produced during the proceedings before EUIPO.
69      In addition, apart from the argument relating to such a contradiction, the applicant has put forward no other evidence calling into question the probative value of the documents referred to in paragraphs 64 to 66 above.
70      In those circumstances, it must be held that, as is apparent from paragraph 43 of the contested decision, the trade mark proprietor has sufficiently proved that he sold approximately 2 700 timers within the period referred to in paragraph 60 above, with those sales covering the entirety of that period and being made in 23 Member States.
71      Admittedly, that sales volume does not appear to be very significant.
72      Nevertheless, the turnover and the volume of sales of the goods under a trade mark 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, with the result that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine and even minimal use can 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 (judgments of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 32, and of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 46).
73      In the present case, that sales volume was achieved for specific goods, which are not everyday consumer goods, namely timers, in the online retail sector. Next, that volume was reached during the first years of marketing those goods, which began in 2013. Furthermore, given that the timers were sold in 23 Member States throughout the entire period referred to in paragraph 60 above, those sales were very regular and covered a broad territorial scope.
74      Those circumstances thus offset the low volume of timers sold, with the result that such a volume may therefore be considered sufficient, in the online retail sector, as a means of maintaining or creating a market share for those goods; the requirement that the mark must have been put to genuine use is not intended 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 10 June 2020, Leinfelder Uhren München v EUIPO – Schafft (Leinfelder), T‑577/19, not published, EU:T:2020:259, paragraph 24).
75      That conclusion is not called into question by the applicant’s argument that the number of persons who purchased timers – whether by the item, crates of eight or together with a book – amounts to fewer than 200 per year. That fact alone is not such as to show that the mark at issue was not put to genuine use since, first, such a figure is not negligible, and, secondly, a finding of genuine use results from an overall assessment which takes into account all the relevant factors of the case (see, to that effect, judgments of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 23, and of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 43), in particular the fact that use of the mark was very regular, which implies a degree of interdependence between those factors, which, as is apparent from paragraph 73 above, is the case here. In that regard, an overall assessment must be carried out which takes into account all the relevant factors of the present case. That assessment implies a degree of interdependence between the factors taken into account. Thus, the low volume of goods sold under the mark may be offset by the fact that use of the mark was very extensive or very regular and vice versa (see judgments of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 23 and the case-law cited, and of 23 September 2020. SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 43).
76      Likewise, while the applicant maintains that the Board of Appeal erred in describing the timers as ‘countdown timers’ instead of ‘kitchen timers, non-electric’, it provides no details informing the Court of the effect of such an error, even if proved, on the legality of the contested decision.
77      In the fourth place, as regards genuine use of the application, it should be noted first of all that, contrary to the applicant’s assertion, the trade mark proprietor did not prove genuine use solely by presenting the page from a website on which there is an icon for making an application download request.
78      The trade mark proprietor also submitted, in Annex 4 to his statement setting out the grounds of appeal, a list of the number of application downloads emanating from the Gmail email service, from which it is apparent that 1 621 download requests were made within the period referred to in paragraph 60 above.
79      Furthermore, as the Board of Appeal pointed out in paragraph 49 of the contested decision, the trade mark proprietor submitted to the Board of Appeal 100 sample application download requests with the aim of corroborating that volume of 1 621 requests.
80      As EUIPO states, first, such a sample is sufficiently large and reliable to corroborate the fact that there were 1 621 application download requests. Secondly, the very high proportion, within that sample, of download requests from persons residing or established in the European Union, namely 99%, supports the Board of Appeal’s assessment that the application was downloaded mainly by customers ‘in the EU’.
81      The applicant has not adduced evidence capable of calling into question the probative value of that evidence.
82      It merely asserts that there was no ‘download’ of the application from the trade mark proprietor’s website, since it was necessary to send a download request by email.
83      However, such a fact is not capable, in itself, of showing that the application was not downloaded, since there is no reason why such a download should not be subject to the prior authorisation of the trade mark proprietor.
84      In those circumstances, it must be held that, within the period referred to in paragraph 60 above, the mark at issue was used for the exploitation of the application, in respect of which there were 1 621 download requests, mainly in the European Union.
85      Although that volume is not particularly significant, it is not a token volume either. Having regard to uses that are viewed as warranted in the online retail sector for downloadable software applications as a means of maintaining or creating market shares for such goods, such a volume, emanating mainly from Member States, must be regarded as sufficiently significant to demonstrate the frequency and territorial scope of the use of the mark at issue in the marketing of the application, in particular in circumstances where, as is apparent from paragraph 35 of the contested decision, that application has been available for download only since October 2018, that is to say, for less than six months within the period referred to in paragraph 60 above.
86      Next, use of the mark at issue in connection with the application cannot be called into question, as the applicant maintains, on the ground that that mark was used, to that end, in the form ‘Pomodoro Timer Project – Request Software’.
87      Proof of genuine use of a mark, in cancellation proceedings, also includes proof of use of that mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered. In that regard, it must be borne in mind that the purpose of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 is to avoid imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, and to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (see, to that effect, judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 27 and the case-law cited).
88      In the present case, it is common ground that the mark at issue appeared on the application download requests, accompanied by other terms such as ‘technique’, ‘timer’ and ‘project’, which should be regarded, as the Board of Appeal stated in paragraph 61 of the contested decision, as descriptive additions which do not alter the distinctive character of the mark at issue. In that regard, the fact that it has not been proved that the application was actually downloaded is not capable of calling into question the proof of use of the mark at issue provided by the documents referring to download requests and, more broadly, to the trade mark proprietor’s website, since it is sufficient that the use of the mark relates to goods about to be marketed and for which preparations by the undertaking to secure customers are under way.
89      Lastly, the applicant claims that the Board of Appeal failed to demonstrate the link between various items of evidence produced before the Board of Appeal and the trade mark proprietor, in that some of that evidence, which comes from third parties, relates to Cirillo Consulting GmbH and not to the trade mark proprietor. That is the case, it is argued, with the application download requests and with the testimony in Annex 6 to the statement setting out the grounds of appeal, in which an engineer sets out proposals for developing the trade mark proprietor’s website from which the application may be downloaded.
90      In that regard, it is sufficient to bear in mind that use of the mark by a company which is economically linked to the trade mark proprietor is presumed to be use of that mark with the consent of the proprietor and is therefore to be deemed to constitute use by the proprietor, in accordance with Article 18(2) of Regulation 2017/1001 (judgments of 17 February 2011, J & F Participações v OHIM – Plusfood Wrexham (Friboi), T‑324/09, not published, EU:T:2011:47, paragraph 32, and of 30 January 2015, Now Wireless v OHIM – Starbucks (HK) (now), T‑278/13, not published, EU:T:2015:57, paragraph 38).
91      It is clear from the examination of the various items of evidence produced by the trade mark proprietor, in particular the heading of the invoices for the sale of the timers, that the proprietor is the manager of Cirillo Consulting and of FC-Garage GmbH, which appear to be the entities marketing both the timers and the application to the public, such evidence showing that the use of the mark at issue is outwardly directed and is not just internal use within the trade mark proprietor’s undertaking (see, to that effect, judgments of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 39, and of 23 September 2020, SYRENA, T‑677/19, not published, EU:T:2020:424, paragraph 41).
92      Therefore, the use of the mark at issue by those two companies, whether to market the timers or the application, is presumed to be use of that mark with the consent of its proprietor.
93      It follows from all of the foregoing that it is necessary to dismiss the third plea and, with it, the action in its entirety.
Costs
94      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. In the present case, the applicant has been unsuccessful and EUIPO has applied for costs in the present proceedings. Accordingly, the applicant must be ordered, in addition to bearing its own costs, to pay all of the costs incurred by EUIPO in the present proceedings.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Masterbuilders, Heiermann, Schmidtmann GbR to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) in the proceedings before the General Court.
Kornezov
Buttigieg
Petrlík
Delivered in open court in Luxembourg on 19 January 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.