JUDGMENT OF THE GENERAL COURT (Second Chamber)
6 September 2023 (*)
(EU trade mark – Revocation proceedings – EU figurative mark OPTIVA MEDIA – Genuine use of the mark – Article 18(1) and Article 58(1)(a) of Regulation (EU) 2017/1001 – Proof of genuine use – Assessment of the evidence)
In Case T‑601/22,
Consultora de Telecomunicaciones Optiva Media, SL, established in Madrid (Spain), represented by C. Rivadulla Oliva, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Optiva Canada Inc., established in Mississauga, Ontario (Canada), represented by E. Edissonov Kirilov, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, J. Schwarcz (Rapporteur) and R. Norkus, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Consultora de Telecomunicaciones Optiva Media, SL, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 July 2022 (Joined Cases R 1533/2021-5 and R 1740/2021-5) (‘the contested decision’).
Background to the dispute
2        The applicant is the proprietor of EU trade mark No 10939767, which was registered on 20 March 2015 following an application which was filed on 5 June 2012 in respect of the following figurative sign:
3        The services in respect of which registration was sought are in Classes 35, 38 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 35: ‘Business management consultancy services; business services; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’;
–        Class 38: ‘Telecommunications’;
–        Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer software; consultancy in the design and development of computer hardware; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’.
4        On 11 June 2020, the intervener, Optiva Canada Inc., filed an application for revocation of the contested mark with EUIPO, on the basis of Article 58(1)(a) of 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), on the ground that that mark had not been put to genuine use within a continuous period of five years. That application concerned all of the services referred to in paragraph 3 above.
5        On 13 August 2021, the Cancellation Division partially revoked the contested mark in respect of all the services, except for the following services in Class 42: ‘IT services; design and development of computer software; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’.
6        On 6 September 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division (Case R 1533/2021-5), in so far as the latter had partially upheld the application for revocation. It filed its statement setting out the grounds of appeal outside of the prescribed time limit laid down in Article 68 of Regulation 2017/1001.
7        On 8 October 2021, the intervener also filed a notice of appeal with EUIPO against the decision of the Cancellation Division (Case R 1740/2021-5), in so far as the latter had not upheld the application for revocation in its entirety. The statement setting out the grounds of appeal was filed on 13 December 2021. The applicant did not file a response.
8        By the contested decision, the Board of Appeal, first, joined the two appeals referred to in paragraphs 6 and 7 above, secondly, dismissed the appeal in Case R 1533/2021-5 as inadmissible and, thirdly, upheld the intervener’s appeal and annulled the decision of the Cancellation Division in so far as it had rejected the application for revocation of the contested mark in respect of the following services in Class 42: ‘IT services; design and development of computer software; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’.
9        In essence, the Board of Appeal found that the evidence provided by the applicant did not prove genuine use of the contested mark in connection with the following services in Class 42: ‘IT services; design and development of computer software; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’. Consequently, it found that the contested mark also had to be revoked in respect of those services.
Forms of order sought
10      The applicant claims that the Court should annul the contested decision in so far as the application for revocation was upheld in respect of the following services in Class 42: ‘IT services; design and development of computer software; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
12      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The subject matter of the action
13      It is apparent from the application that the applicant disputes the contested decision only in so far as it upheld the appeal (Case R 1740/2021-5) and revoked the mark in respect of the services in Class 42 which have been referred to in paragraph 10 above. It does not call into question the Board of Appeal’s decision declaring the appeal in Case R 1533/2021-5 inadmissible.
14      However, the applicant claims on several occasions that the contested mark is used in connection with all the services in Classes 35, 38 and 42 in respect of which it was registered, which are related to telecommunications services, business consultancy services and scientific services.
15      Since the appeal in Case R 1533/2021-5 relating to the services in Classes 35 and 38 was declared inadmissible because a statement setting out the grounds of appeal had not been filed within the time limit, the Board of Appeal thus, as is apparent from paragraphs 24 and 32 of the contested decision, limited its examination of the Cancellation Division’s decision to the proof of genuine use in respect of the services in Class 42, as set out in Case R 1740/2021-5.
16      It must be borne in mind that actions may be brought before the Courts of the European Union only against decisions of the Boards of Appeal, with the result that it is only arguments directed against the decision of the Board of Appeal itself that are admissible in such an action (see, to that effect, judgments of 22 April 2015, Rezon v OHIM – mobile.international (mobile.de proMotor), T‑337/14, not published, EU:T:2015:220, paragraph 23, and of 16 May 2019, KID-Systeme v EUIPO – Sky (SKYFi), T‑354/18, not published, EU:T:2019:333, paragraph 99).
17      In the present case, only the applicant’s arguments in connection with the services at issue in Class 42, namely ‘IT services; design and development of computer software; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’, are therefore admissible.
Substance
18      In support of its action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 18(1)(a) and of Article 58(1)(a) of Regulation 2017/1001, which consists of two complaints. It disputes the Board of Appeal’s assessment of the proof of genuine use of the contested mark with regard to ‘IT services; design and development of computer software; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’.
19      By the first complaint, the applicant claims that the Board of Appeal did not analyse the evidence correctly and that its resulting assessment of the use of the contested mark was thus manifestly incorrect and unfair. By the second complaint, it submits that EUIPO did not properly take into account the use of the mark in black and white, which is a version which does not alter the distinctive character of the mark, and therefore incorrectly assessed the use of the contested mark.
20      Assuming, at the outset, that the applicant intends to rely on bad faith on the part of the intervener, which, in the context of a fraudulent strategy, is attempting unfairly to take over the contested mark, such an argument must be rejected as ineffective. In that regard, it must be borne in mind that Article 63(1)(a) of Regulation 2017/1001 does not make the admissibility or merits of an application for revocation subject to good faith on the part of the applicant for revocation (see, to that effect, judgment of 7 September 2022, Peace United v EUIPO – 1906 Collins (MY BOYFRIEND IS OUT OF TOWN), T‑699/21, not published, EU:T:2022:528, paragraph 24 and the case-law cited).
21      Next, it must be pointed out that, pursuant to the first subparagraph of Article 18(1) and to Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of an EU trade mark are be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for its non-use (judgment of 15 March 2023, Zelmotor v EUIPO – B&B Trends (zelmotor), T‑194/22, not published, EU:T:2023:130, paragraph 14).
22      In the present case, both the Cancellation Division and the Board of Appeal regarded the period from 11 June 2015 to 10 June 2020 as being the five-year period in respect of which the applicant was required to prove genuine use of the contested mark, a finding which the parties do not dispute.
23      The ratio legis for the requirement that a mark must have been put to genuine use in order to be protected under EU law is that EUIPO’s register cannot be regarded as a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 15 March 2023, zelmotor, T‑194/22, not published, EU:T:2023:130, paragraph 17 and the case-law cited).
24      According to settled case-law, there is genuine use of a trade mark, for the purposes of Article 58(1)(a) of Regulation 2017/1001, 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. Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgment of 15 March 2023, zelmotor, T‑194/22, not published, EU:T:2023:130, paragraph 18 and the case-law cited).
25      As regards the criteria for assessing genuine use, under Article 10(3) 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), which is applicable to revocation proceedings in accordance with Article 19(1) of that regulation, proof of use must relate to the place, time, extent and nature of use of the contested mark (judgment of 15 March 2023, zelmotor, T‑194/22, not published, EU:T:2023:130, paragraph 19).
26      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 in the course of trade is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40 and the case-law cited).
27      Furthermore, 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 actual and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).
28      It must also be added that, in proceedings for revocation of a trade mark, it is, in principle, for the proprietor of the mark to prove genuine use of that mark (see judgment of 23 January 2019, Klement v EUIPO, C‑698/17 P, not published, EU:C:2019:48, paragraph 57 and the case-law cited).
29      It is in the light of the foregoing considerations that it must be examined whether the Board of Appeal was right in finding, in the contested decision, that the evidence which the applicant had submitted as regards the services at issue did not prove genuine use of the contested mark.
30      In order to prove genuine use of the contested mark, the applicant, in the course of the administrative proceedings before EUIPO, submitted, inter alia, the following documents:
–        Annex 1: a registration certificate in respect of the EU trade mark proprietor’s designation, which is reproduced below and was registered in Spain in 2009 in respect of Classes 35, 38 and 42 under the ‘nombre comercial No 288 594’:
–        Annex 2: a TMview list of the intervener’s trade mark applications and registrations;
–        Annex 3: an email of 17 January 2020 from the EU trade mark proprietor to the intervener;
–        Annex 4: five invoices showing the contested EU trade mark in the letterhead: invoice No 1 of 30 November 2015, addressed to AZDIO in the United Kingdom, in the amount of EUR 9 650 for ‘JavaScript Engineer’; invoice No 2 of 30 December 2016, addressed to UTE Vodafone-Orange in Spain, in the amount of EUR 17 423.82 for ‘Extensión para la Plataforma software’; invoice No 3 of 30 January 2017, addressed to TIVO in the United States, in the amount of 10 602.52 United States dollars (USD) for ‘Offshore Millicom/Wayuu QE’; invoice No 4 of 31 January 2018, addressed to Telefonica in Spain, in the amount of EUR 7 719.80 for ‘Desarrollo Plataforma Yomvi’; invoice No 5 of 31 August 2019, again addressed to TIVO, in the amount of EUR 9 626.40 for ‘Offshore’;
–        Annex 5: four commercial offers by the EU trade mark proprietor, bearing the contested EU trade mark: in January 2016 the ‘services offer: support for the launch of a television product’ to Vodafone, in April 2016 the ‘offer: development support .NET’, in April 2017 the ‘offer: graphic support’ and, in June 2017, the ‘offer: development support .NET 2017-2018’, all three to Telefonica; the documents are in Spanish without a translation into the language of the proceedings, with the exception of page 8 of the Vodafone offer;
–        Annex 6: a screenshot of a Google search for ‘optiva media’ of 30 August 2020 showing the contested EU trade mark;
–        Whois screenshots for www.optivamedia.com, which was registered in 2002, and www.optiva.com, which was registered in 2016, both in the name of Network Solutions LLC (pp. 4 and 7 of the observations of 31 August 2020);
–        three Instagram posts and one Facebook post of exhibition stands showing the contested EU trade mark, two dating from September 2017 (IBC show and AWS summit) and two concerning the IBC 2018 show (pp. 16 and 17 of the observations of 31 August 2020);
–        the link ‘http://www.optivamedia.com/clients’, which was submitted in order to provide more information about its clients and its services in general.
The first complaint, alleging an incorrect and unfair assessment of the evidence
31      The applicant claims that the Board of Appeal did not make the effort to analyse the facts and evidence, that its conclusions were therefore manifestly incorrect and unfair and that it thus erred in the application of the law. It contends that the evidence submitted is sufficient to prove use of the contested mark.
32      To that end, the applicant briefly describes certain items of evidence. It thus observes that the invoice in Annex 4.1 clearly refers to JavaScript Engineer Volia, which is a software service in IT services. It submits that the invoice in Annex 4.2 refers to a software platform in connection with audiovisual football rights, which is also an IT service related to software. It argues that Annex 4.3 concerns an invoice which refers to an online television platform for the online provider Yomvi. It contends that Annex 5.1 refers to a commercial offer for an online television platform for Vodafone. It adds that it also submitted four commercial offers to its clients in the telecommunications sector. It submits that a mere search on Google and some screenshots also show that the mark is used on the market. It concludes that the contested mark has been put to genuine use in connection with the services in respect of which it is registered.
33      EUIPO and the intervener dispute the applicant’s arguments.
34      It is therefore necessary to examine the evidence which was taken into account by the Board of Appeal and which the applicant refers to in the application, in order to ascertain whether the Board of Appeal correctly analysed and assessed it.
–       The invoices
35      The Board of Appeal stated, in paragraph 39 of the contested decision, that the five invoices submitted in Annex 4 did not demonstrate any use of the contested mark for IT services or for the design or development of software.
36      According to the Board of Appeal’s analysis in paragraph 42 of the contested decision, the invoice of 30 November 2015, which is set out in Annex 4.1, states that the services invoiced might be related to ‘IT’ or ‘software’, but that they could also mean that a JavaScript engineer called Fernando G. provided any kind of business consultant or telecommunications service, which was not necessarily related to ‘IT services’ or to the design or development of a piece of software. The Board of Appeal stated that the meaning of the word ‘volia’ in the description was unclear.
37      Contrary to what the applicant claims, the invoice of 30 November 2015, which is set out in Annex 4.1, was therefore indeed analysed by the Board of Appeal. It must be pointed out that the applicant has not put forward any specific arguments explaining why the Board of Appeal’s findings are incorrect. It merely states that JavaScript Engineer Volia is a software service in IT services and adds that all the services mentioned in the invoices include the services in Classes 35, 38 and 42 for which the mark was registered, thus acknowledging that that invoice could also relate to services in Classes 35 and 38.
38      The invoice of 30 December 2016, which is set out in Annex 4.2, was taken into account by the Board of Appeal in paragraph 41 of the contested decision. According to the Board of Appeal, the description given did not clearly determine the nature of the service invoiced and the word ‘software’ was insufficient to conclude that the services at issue were IT or software development services. It stated that it was the obligation of the applicant to provide many more details about the services provided in order to be able to ascertain their nature.
39      Contrary to what the applicant claims, the Board of Appeal did analyse the invoice of 30 December 2016 and concluded that it did not have sufficient details regarding the services provided to be able to ascertain the nature of those services. The applicant does not, however, provide any additional details to allow the nature of the services to be ascertained or to make it possible to understand why the Board of Appeal’s conclusion is incorrect. It merely states that Annex 4.2 refers to a software platform in connection with audiovisual football rights (online television), which is also an IT service related to software, and adds that all the services mentioned in the invoices include the services in Classes 35, 38 and 42 for which the mark was registered.
40      The invoice of 30 January 2017, in Annex 4.3, which is referred to by the applicant was analysed by the Board of Appeal in paragraph 40 of the contested decision, in conjunction with the invoices of 31 January 2018 and 31 August 2019, which are set out in Annexes 4.4 and 4.5. The Board of Appeal mentioned the descriptions contained in those invoices in that paragraph of the contested decision and concluded that it was unclear which kind of services had been invoiced. It stated that the name Yomvi was also mentioned in the offers made to Telefonica, but took the view that it would be pure speculation to assume that the description ‘Desarrollo Plataforma Yomvi’ included IT or software services.
41      Contrary to what the applicant claims, the Board of Appeal did therefore indeed take the invoice set out in Annex 4.3 into account. However, the applicant has not provided any additional explanation which makes it possible to dispel the Board of Appeal’s doubts. It confines itself to stating that Annex 4.3 refers to an online television platform for the online provider Yomvi, although the invoice of 30 January 2017 in Annex 4.3 does not mention Yomvi, but refers to ‘Offshore Millicom/Wayuu QE’ services. It adds that all the services mentioned in the invoices include the services in Classes 35, 38 and 42 for which the mark was registered.
–       The commercial offers
42      The Board of Appeal also analysed, in paragraph 38 of the contested decision, the service offers to the undertakings Vodafone and Telefonica which are set out in Annex 5 and pointed out that it was unclear whether a service agreement had ultimately been concluded as a result of those offers, but that, in any event, the applicant had failed to show that those agreements included IT services or the design or development of software.
43      The applicant has not, in the present case, provided any explanation as regards the reasons why the contested decision is incorrect in that regard, but merely stated that it was a commercial offer for an online television platform for Vodafone and that the other commercial offers were intended for its clients in the telecommunications sector. It added that all the services mentioned in those commercial offers include the services in Classes 35, 38 and 42 for which the mark was registered.
–       The screenshots and photographs
44      Next, the Board of Appeal found, in paragraphs 36 and 37 of the contested decision, that the remaining documents which had been submitted by the applicant and have been listed in paragraph 30 above were not relevant for the purpose of determining whether genuine use of the contested mark had been shown with regard to the IT and software services in Class 42. As regards the four photographs, it stated that it was not clear that they had actually been taken at the trade fairs in Madrid or Amsterdam and that, in any event, the pictures did not show that the mark had been used for IT services or the design or development of computer software.
45      The applicant does not put forward any argument which serves to rebut that finding. It states that it submitted a screenshot of 30 August 2020. It argues that that screenshot makes it possible to conclude that the mark is used on the market when the most used internet search engine is used. It also submits, by means of links to accounts on the social networks Instagram and Facebook, images of the contested mark at the international trade fairs in Madrid and Amsterdam, without giving any other information or explanations.
46      It must be pointed out in that regard that the screenshot which dates from 30 August 2020 falls outside of the relevant period of 11 June 2015 to 10 June 2020. The taking into account of that screenshot is not, however, necessarily irrelevant. It is clear from the case-law that it is possible to take such evidence relating to use made before or after the relevant period into consideration, in so far as it makes it possible to confirm or better assess the extent to which the contested mark was used and the actual intentions of the proprietor of that mark during that period. However, such evidence can be taken into consideration only if other evidence relating to the relevant period has been produced (judgment of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 41). That is not, however, the case here.
47      Having regard to all the evidence which the applicant submitted before EUIPO, it must be borne in mind that, in order for use of the contested mark with regard to IT services to be acknowledged, the applicant is required to prove that those services were actually provided under that mark (see, to that effect, judgment of 23 March 2017, Cryo-Save v EUIPO – MedSkin Solutions Dr. Suwelack (Cryo-Save), T‑239/15, not published, EU:T:2017:202, paragraph 39). Moreover, the Board of Appeal correctly stated that the terms included in Class 42 were extremely broad and that, in order to maintain the contested mark, first, the trade mark proprietor needed to show that it offered a wide range of IT and software services for all imaginable types of undertakings. It observed that, otherwise, the proof of use would need to be sufficiently specific to be able to build appropriate subcategories for those broad terms. Secondly, it stated that the evidence adduced had to make it possible to determine whether the IT and software services allegedly offered were in line with the limitation in Class 42. It observed, in paragraph 49 of the contested decision, that it had been emphasised repeatedly that the invoices were insufficient and that the applicant had had a number of opportunities to submit supplementary evidence.
48      In the present case, it must, however, be stated that the applicant confines itself to stating, in a very summary fashion, that it furnished proof of genuine use of the contested mark in connection with IT services, which is, it submits, sufficiently apparent from the annexed evidence. However, it must be observed that mere indications like Yomvi, JavaScript Engineer Volia or software on only five invoices are insufficient to establish that what is involved concerns IT services or computer software design and development services. As regards the commercial offers, it must be stated that they are unsigned and confidential and that no contract resulting from them has been annexed or even mentioned. That is true, a fortiori, of the screenshot of 30 August 2020 or the photographs of international trade fairs, which do not contain sufficient information to prove that the services invoiced may be regarded as IT services or computer software design and development services.
49      It must therefore be held that, contrary to what the applicant claims, the Board of Appeal took into account, and analysed, all the documents on which the applicant had relied in the present case, in order to assess whether the use of the contested mark was genuine. Since the applicant has not put forward any argument to dispute the merits of the Board of Appeal’s findings in that regard and has not adduced any additional evidence to prove genuine use of the contested mark, such genuine use, for the purposes of the case-law referred to in paragraphs 24 to 28 above, cannot be deduced from the documents on which the applicant relied in its written pleadings without recourse being had to presumptions. However, according to the case-law referred to in paragraph 27 above, 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 actual and sufficient use of the trade mark on the market concerned.
50      It must be borne in mind that, pursuant to the case-law cited in paragraph 28 above, in proceedings for revocation of a trade mark, it is, in principle, for the proprietor of the mark to prove genuine use of that mark and, in particular, the fact that the services at issue were IT services and computer software design and development services.
51      Consequently, the Board of Appeal did not make any error of assessment in finding that the evidence submitted by the applicant was not sufficient to prove genuine use of the contested mark in connection with ‘IT services; design and development of computer software; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’.
The second complaint, alleging use of the mark in another form which does not alter its distinctive character
52      The applicant submits that use of the contested mark in a differing form, that of a black and white version which does not alter the distinctive character of the mark, has also been proved. It argues that that use of the contested mark was, however, completely ignored by the Board of Appeal.
53      The applicant thus submits that, although it has used the EU trade mark in a form which differs from that in which that mark was registered, the differences are minimal and do not alter the distinctive character of the mark, with the result that that use must be considered to be genuine use. It contends that the black and white version of the mark therefore complies with the concept of, and the criteria for, genuine use. To that end, it cites two decisions of the Boards of Appeal and states that images are publicly accessible on its social network accounts.
54      EUIPO and the intervener dispute that line of argument.
55      In the first place, it must be stated that the Board of Appeal neither refused to take into account the use of the contested mark in a form which differed from that in which it had been registered nor, more generally, addressed that issue. The contested decision is based solely on the ground that the evidence which the applicant adduced does not serve to prove that the contested mark has been put to genuine use in connection with the services in respect of which it was registered.
56      In that regard, it must be borne in mind that it is not for the Court, in its review of the legality of the contested decision, to carry out an assessment on which the Board of Appeal has not adopted a position (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
57      In those circumstances, the line of argument developed by the applicant in the context of this complaint is ineffective.
58      In the second place, it must be pointed out that the applicant’s reference to the various images relating to the use of the mark which are publicly accessible on its social media networks, by merely mentioning links to accounts on the social networks Instagram and Facebook, must be rejected.
59      In that regard, it is sufficient to note that it is not, first, for the adjudicating bodies of EUIPO to search on the applicant’s websites or social networks for the evidence which makes it possible to establish that the contested mark is well known and, secondly, for the Court to re-examine that evidence on the basis of information which the applicant did not provide to the adjudicating bodies of EUIPO in order to establish that there has been genuine use of the contested mark.
60      In the present case, the Board of Appeal did not therefore err in finding that the documents submitted by the applicant in the context of the revocation proceedings before EUIPO did not contain any evidence which made it possible to conclude that there had been genuine use as a trade mark or to know the scale of use of the mark. Consequently, the Board of Appeal was also right in finding, in paragraph 50 of the contested decision, that all the documents submitted by the applicant were, as a whole, incapable of showing genuine use of the contested mark for ‘IT services; design and development of computer software; none of the aforesaid being services offered to third parties in connection with the supply of advertising services, marketing services or media buying and planning services’ which was capable of ensuring that the rights were maintained.
61      The single plea in law must therefore be rejected and consequently the action must be dismissed in its entirety.
Costs
62      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.
63      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only if the oral part of the procedure is opened, it is appropriate, since no hearing has been held, to order EUIPO to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Consultora de Telecomunicaciones Optiva Media, SL to bear its own costs and to pay those incurred by Optiva Canada Inc.;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Marcoulli
Schwarcz
Norkus
Delivered in open court in Luxembourg on 6 September 2023.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.