JUDGMENT OF THE GENERAL COURT (Third Chamber)
4 October 2023 (*)
(EU trade mark – Revocation proceedings – EU figurative mark Tante Mitzi Caffè CAFFÈ – STRUDEL – BARETTO – Lack of genuine use of the mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Facts relied on or evidence submitted for the first time before the Board of Appeal – Article 27(4) of Delegated Regulation (EU) 2018/625)
In Case T‑510/22,
Sastela, proizvodnja peciva in tort, d.o.o., established in Ljutomer (Slovenia), represented by U. Pogačnik, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Zenergo, svetovanje in druge storitve, d.o.o., established in Zgornja Polskava (Slovenia), represented by M. Maček, lawyer,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová-Pelzl (Rapporteur) and I. Nõmm, 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, Sastela, proizvodnja peciva in tort, d.o.o., seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 June 2022 (Case R 1413/2021-2) (‘the contested decision’).
Background to the dispute
2        On 14 December 2012, the applicant’s predecessor in law filed an application for registration of an EU trade mark with 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)).
3        Registration as a mark was sought for the following figurative sign:
4        The goods in respect of which registration was sought are in Class 30 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: ‘Coffee; Cakes’.
5        On 3 October 2013, the mark was registered and identified as a collective mark in the European Union Trade Mark Register.
6        On 29 September 2020, the applicant submitted a request for transfer of the mark under Article 20 of Regulation 2017/1001.
7        On 6 October 2020, EUIPO informed the applicant of the lack of proof demonstrating the satisfaction of the conditions required by Article 74 of Regulation 2017/1001 to be the proprietor of a collective mark.
8        By communication of 30 November 2020, the applicant stated that the mark at issue was not a collective mark, since the predecessor in law was a natural person who therefore could not be the proprietor of such a mark.
9        EUIPO corrected the registration of the mark at issue, with effect from 9 December 2020, by registering it as an individual mark.
10      On 14 December 2020, the mark was transferred to the European Union Trade Mark Register in the applicant’s name.
11      Furthermore, on 16 October 2020, the intervener, Zenergo, svetovanje in druge storitve, d.o.o., filed an application for revocation of the mark at issue on the basis of Article 58(1)(a) of Regulation 2017/1001.
12      By decision of 15 June 2021, the Cancellation Division declared the applicant’s rights to be revoked, with effect from 16 October 2020.
13      The Cancellation Division stated in particular, that the documents submitted by the applicant in order to demonstrate genuine use of the mark did not relate to the use of the mark at issue or did not contain any indication as to the time of the alleged use. It further stated that those documents did not provide any details on the turnover achieved, the number of goods sold or other information showing the extent of use of the mark at issue. Accordingly, it considered that no proof of use of a sufficient extent had been provided to be considered genuine.
14      On 13 August 2021, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 68 of Regulation 2017/1001, against the decision of the Cancellation Division.
15      By the contested decision, the Second Board of Appeal of EUIPO dismissed the appeal. It found that the applicant had not submitted sufficient evidence to demonstrate genuine use of the mark at issue.
16      Furthermore, it should be noted that the Board of Appeal found that the mark at issue, as registered on 3 October 2013, was still a collective mark. It further stated that, even if the mark at issue were to be regarded as an individual mark, the action should also be dismissed.
Forms of order sought
17      The applicant claims that the Court should:
–        alter the contested decision and the decision of the Cancellation Division of 15 January 2021;
–        state that there is no reason to find the mark at issue to be revoked;
–        in the alternative, annul the contested decision and refer the case back to EUIPO;
–        order EUIPO to pay the costs.
18      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event of being summoned to a hearing.
19      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
20      The first subparagraph of Article 18(1) of Regulation 2017/1001 and Article 58(1)(a) thereof provide that 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 or services in respect of which it is registered, and there are no proper reasons for non-use.
21      As regards the criteria for assessing genuine use, 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), applies, mutatis mutandis, to revocation proceedings under Article 19(1) of that regulation. It provides that proof of use must relate to the place, time, extent and nature of use of the mark at issue.
22      It should be further stated that, in proceedings for revocation of a mark, it is, as a rule, for its proprietor to establish 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).
23      In support of its action, the applicant relies on two pleas in law, alleging, first, infringement of Article 58(1)(a) of Regulation 2017/1001 and, secondly, infringement of Article 10 of Delegated Regulation 2018/625, read in conjunction with Article 19(1) thereof. In essence, it maintains that the Board of Appeal incorrectly found, in the contested decision, that the applicant had not established genuine use of the mark at issue.
24      It is appropriate, in the first place, to examine the items of evidence which were taken into account by the Board of Appeal and for which it considered that they were not capable of proving that the mark at issue had been put to genuine use, namely:
–        items of evidence 1 and 2: copy of the application form for registration of the mark at issue and copy of the letter sent by EUIPO to the applicant’s predecessor in law on 29 December 2015;
–        item of evidence 3: article on a provider of food and drink services called ‘Tante Mitzi Caffè’ owned by the applicant’s predecessor in law, published on an advice and bookings website, in particular for restaurants;
–        item of evidence 4: printout of the results of an image search for ‘Tante Mitzi’ on an internet search engine;
–        item of evidence 5: screenshot showing ‘Tante Mitzi Caffè’ on a social network;
–        item of evidence 6: extract from a website devoted to a provider of food and drink services owned by the applicant’s predecessor in law.
25      First, as regards items 1 and 2, the Board of Appeal noted, in paragraph 41 of the contested decision, that those items did not relate in any way to the use of the mark at issue and were therefore not relevant for the assessment of whether there was a use such as to maintain the rights.
26      In that regard, it is sufficient to state that those documents, namely the copy of the application form for registration and that of the letter sent by EUIPO to the applicant’s predecessor in law on 29 December 2015, do not relate in any way to the use of the mark, since they do not relate to the place, time, extent and nature of use which was made of the mark at issue, contrary to what is provided for in Article 10(3) of Delegated Regulation 2018/625. At most, those items are capable of proving registration of the mark at issue.
27      It must therefore be found that items 1 and 2 are not relevant for the assessment of genuine use of the mark.
28      Secondly, as regards items 3 to 6, described in paragraph 24 above, it should be noted, first, that items 3 to 5 are undated, as the Board of Appeal correctly found in paragraph 41 of the contested decision.
29      Second, as regards item 6, the Board of Appeal correctly stated, also in paragraph 41 of the contested decision, that that item contained a reference to the years 2009 to 2012, which predate the relevant period for the assessment of genuine use.
30      The date with regard to which it must be determined whether the continuous period of five years of lack of use has ended is the date on which the application concerned was filed (see, to that effect, judgment of 17 December 2020, Husqvarna, C‑607/19, EU:C:2020:1044, paragraphs 35 to 37). Thus, in this case, since the application for revocation of the mark at issue was filed on 16 October 2020, the period of five years referred to in Article 58(1)(a) of Regulation 2017/1001 runs from 16 October 2015 to 15 October 2020.
31      As regards, once again, items 1 to 6, it should be borne in mind that a mark must be used in a common and economically viable manner for its use to be considered genuine. In this sense, and according to the case-law, it is necessary for the proprietor to maintain or create shares in the market for the goods or services concerned (judgments of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraphs 37 and 43, and of 12 December 2019, Der Grüne Punkt v EUIPO, C‑143/19 P, EU:C:2019:1076, paragraphs 61 and 62).
32      In that regard, whether there is genuine use can be demonstrated by means of evidence relating to various factual criteria. Those criteria include in particular turnover and sales figures, the volume of commercial exploitation, the frequency and duration of the use, the production or marketing capacities, the degree of diversification of the undertaking and the nature of the goods and services concerned (see, to that effect, judgment of 10 June 2020, Leinfelder Uhren München v EUIPO – Schafft (Leinfelder), T‑577/19, not published, EU:T:2020:259, paragraph 29).
33      In the present case, the Board of Appeal correctly found in paragraph 47 of the contested decision that items 3 to 6 did not contain any specific information on the factual criteria referred to in paragraph 32 above.
34      Moreover, as regards specifically items 3 to 5, as the Board of Appeal correctly noted in paragraph 43 of the contested decision, they relate to the use of the mark at issue as a signboard of a provider of food and drink services or as being affixed to cups, without however demonstrating the use of the mark in respect of the goods for which registration had been requested, namely ‘coffee; cakes’ in Class 30.
35      According to the case-law, a trade mark has been put to genuine use where the mark is used in accordance with its essential function, which is to guarantee the identity of origin of the goods or services for which it was 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 8 April 2016, FRISA, T‑638/14, not published, EU:T:2016:199, paragraph 43 and the case-law cited).
36      It follows from the considerations set out in paragraphs 25 to 35 above that the Board of Appeal correctly found in the contested decision that items 1 to 6 were not capable of proving that the mark at issue had been put to genuine use.
37      In the second place, it should be borne in mind that Article 27(4) of Delegated Regulation 2018/625 provides:
‘… the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:
(a)      they are, on the face of it, likely to be relevant for the outcome of the case; and
(b)      they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’
38      In the present case, the applicant had submitted the following additional documents in the context of the appeal proceedings:
–        Annex 1: extract from the commercial register of the city of Udine (Italy) concerning the provider of food or drink services owned by the applicant’s predecessor in law;
–        Annex 2: handwritten declaration from the applicant’s predecessor in law intended to certify the use of the mark at issue;
–        Annex 3: annual accounts of a provider of food and drink services owned by the applicant’s predecessor in law.
39      In the contested decision, the Board of Appeal found that the two conditions provided for in Article 27(4) of Delegated Regulation 2018/625 were not met as regards Annexes 1 to 3.
40      The applicant does not expressly dispute the application made by the Board of Appeal of Article 27(4) of Delegated Regulation 2018/625. It merely submits, on the basis, in particular, of Annexes 1 to 3, that the mark at issue had been put to genuine use.
41      Even assuming that the applicant could be regarded as specifically contesting the application made by the Board of Appeal of Article 27(4) of Delegated Regulation 2018/625, it should be noted that the Board of Appeal stated in paragraph 34 of the contested decision that Annexes 1 to 3 referred to information relating to the operation of a provider of food and drink services and did not specifically relate to the use of the mark at issue in respect of the goods for which it had been registered. It therefore inferred that the first condition provided for Article 27(4) of Delegated Regulation 2018/625 was not fulfilled.
42      Admittedly, Annexes 1 to 3 are not, contrary to what the applicant maintains, such as to establish that the goods covered by the mark at issue, namely ‘coffee; cakes’ in Class 30, had been marketed under that mark.
43      Consequently, the first condition provided for in Article 27(4) of Delegated Regulation 2018/625 cannot be regarded as being fulfilled.
44      Furthermore, as regards the second condition provided for in Article 27(4) of Delegated Regulation 2018/625, the Board of Appeal stated, in paragraphs 36 to 38 of the contested decision, that it was also not satisfied. It specified, in particular, that Annexes 1 to 3 could not be regarded as merely supplementing the documents submitted during the proceedings before the Cancellation Division. It further stated that the applicant had not explained the reasons why it had not been able to submit those annexes before the Cancellation Division.
45      The applicant submits no argument in this respect.
46      Consequently, the second condition provided for in Article 27(4) of Delegated Regulation 2018/625 cannot be regarded as being fulfilled.
47      It follows from the foregoing that it cannot be concluded, in view of the arguments put forward by the applicant, that the Board of Appeal was wrong to not take into account, on the basis of Article 27(4) of the Delegated Regulation 2018/625, Annexes 1 to 3.
48      Consequently, those annexes cannot validly be relied on by the applicant before the Court in order to dispute the assessment made by the Board of Appeal as to the genuine use of the mark at issue.
49      In the light of the considerations set out in paragraphs 24 to 48 above, it must be stated that the arguments relied on by the applicant, taken as a whole, do not allow the conclusion that the Board of Appeal incorrectly found, in the contested decision, a lack of proof of genuine use of the mark at issue.
50      Furthermore, the applicant appears to rely on an independent complaint in which it maintains that it is not necessary to provide evidence relating to the turnover achieved or the quantity of goods sold or information on factors such as the volume of commercial exploitation, production or sales capacities and the regularity of sales.
51      However, contrary to what the applicant appears to maintain, the contested decision is not based on the ground that specific evidence was not submitted by the applicant, but on the ground that the evidence which it provided is not such as to establish that the mark at issue was put to genuine use in respect of the goods for which it had been registered.
52      Thus, a possible argument alleging an error of interpretation of the applicable texts which led the Board of Appeal to require the applicant to provide documents which it was not required to provide, must be rejected as ineffective.
53      Since all of the pleas and arguments relied on by the applicant have been rejected, the applicant’s entire form of order must be rejected and therefore, the appeal must be dismissed, without there being any need to rule on the admissibility of each of its parts.
Costs
54      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.
55      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. In contrast, since EUIPO has applied for the applicant to be ordered to pay costs only in the event of the parties being summoned to a hearing, it is appropriate, in the absence of such a hearing to be held, to decide that EUIPO must bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Sastela, proizvodnja peciva in tort, d.o.o. to bear its own costs and pay those incurred by Zenergo, svetovanje in druge storitve, d.o.o.;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Schalin
Škvařilová-Pelzl
Nõmm
Delivered in open court in Luxembourg on 4 October 2023.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.