JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
16 June 2016 (*)
(European Union trade mark — Opposition proceedings — Application for European Union word mark KULE — Earlier national word marks and well-known mark CULE — Relative grounds for refusal — No genuine use of the earlier trade marks — Article 42(2) of Regulation (EC) No 207/2009 — Article 8(1)(b) of Regulation No 207/2009 — Article 8(5) of Regulation No 207/2009)
In Case T‑614/14,
Fútbol Club Barcelona, established in Barcelona (Spain), represented by J. Carbonell Callicó, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by K. Zajfert and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Kule LLC, established in New York, New York (United States), represented by F. Rodgers, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 18 June 2014 (Case R 2375/2013-4), relating to opposition proceedings between Fútbol Club Barcelona and Kule,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka and I. Ulloa Rubio (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 14 August 2014,
having regard to the response of EUIPO lodged at the Court Registry on 10 December 2014,
having regard to the response of the intervener lodged at the Court Registry on 14 April 2015,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,
gives the following
Judgment
Background to the dispute
1        On 22 April 2011, the intervener, Kule LLC, filed an application for registration of a European Union 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).
2        The mark in respect of which registration was sought is the word sign KULE.
3        The goods in respect of which registration was sought are in Classes 14, 18 and 25 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 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments’;
–        Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Backpacks; Handbags; Purses; Trunks and travelling bags; Umbrellas, parasols and walking sticks; Wallets; Whips, harness and saddlery’;
–        Class 25: ‘Clothing, footwear, headgear’.
4        The European Union trade mark application was published in Community Trade Marks Bulletin No 145/2011 of 3 August 2011.
5        On 2 November 2011, the applicant, Fútbol Club Barcelona, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier trade marks:
–        the Spanish word mark CULE, applied for on 19 November 1982 and registered on 5 October 1983 under No 1021594, designating goods in Class 14 and corresponding to the following description: ‘Precious metals and their alloys and goods in precious metals or coated therewith (except cutlery forks and spoons), jewellery, precious stones; horological and other chronometric instruments, medals, trophies’;
–        the Spanish word mark CULE, applied for on 19 November 1982 and registered on 20 March 1984 under No 1021596, designating goods in Class 18 and corresponding to the following description: ‘Leather and imitations of leather, handbags, suitcases and travel bags and sport bags, coin holders, travel and sports bags, trunks and suitcases; leather, umbrellas, parasols and walking sticks, whips, harness and saddlery’;
–        the Spanish word mark CULE, applied for on 19 November 1982 and registered on 12 February 1986 under No 2716946, designating, inter alia, goods in Class 25 and corresponding to the following description: ‘Clothing, dresses, shirts, pants, socks, stockings, dress gloves, boots, shoes and slippers, caps, berets and hats’;
–        the non-registered word mark CULE, which is well known in Spain within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8        Following a request by the intervener, the applicant submitted evidence in order to demonstrate genuine use of the earlier trade marks for the purposes of Article 42(2) and (3) of Regulation No 207/2009.
9        On 1 October 2013, the Opposition Division rejected the opposition.
10      On 29 November 2013, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
11      By decision of 18 June 2014 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, regarding the earlier Spanish trade marks, it found that the documents filed by the applicant did not demonstrate genuine use of the earlier trade marks for the purposes of Article 42(2) of Regulation No 207/2009 and Rule 22(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), as amended. The Board of Appeal noted, first, that the documents submitted by the applicant did not demonstrate use of the earlier trade marks in relation to the goods concerned. Second, it found that the documents submitted out of time by the applicant could not be taken into account as evidence of genuine use of the earlier trade marks. Regarding the earlier well-known trade mark, the Board of Appeal found that, upon expiry of the period referred to in Rule 19(1) of Regulation No 2868/95, the applicant had not, contrary to the requirements laid down by Rule 20(2) of that regulation, proved the existence, validity and scope of protection of the earlier trade mark which was well known in Spain. It rejected the opposition as unfounded pursuant to Rule 20(1) of Regulation No 2868/95.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        refuse the application for registration;
–        order EUIPO and the intervener to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
14      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the applicant’s second head of claim
15      By its second head of claim, the applicant is asking the Court to refuse the application for registration of the intervener’s trade mark, which constitutes, in essence, a request for the Court to issue directions.
16      It should be noted that it follows from settled case-law that, in an action before the Courts of the European Union against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with judgments of the EU judicature. Accordingly, it is not for the General Court to issue directions to EUIPO. It is for the latter to draw the appropriate inferences from the operative part and grounds of the EU judicature’s judgments (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited). Therefore, the applicant’s head of claim requesting the Court to issue directions to EUIPO to refuse the application for registration is inadmissible.
17      Accordingly, the applicant’s second head of claim is inadmissible.
Admissibility of evidence produced for the first time before the Court
18      It should be pointed out that — as was observed by EUIPO — the applicant produced before the Court, as an annex to the application, a document which had not been produced during the proceedings before the Board of Appeal. The document in question is an extract from the magazine Brandfinance Football 50 published in May 2013, which ranks Fútbol Club Barcelona fourth among the fifty biggest football clubs.
19      In that regard, it should be borne in mind that, according to settled case-law, the purpose of bringing an action before the General Court is to secure review of the legality of the decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 and that, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it. Indeed, to admit such documents would be contrary to Article 135(4) of the Rules of Procedure of the General Court, under which the parties’ pleadings may not change the subject matter of the proceedings before the Board of Appeal (see judgment of 22 January 2015 in MIP Metro v OHIM — Holsten-Brauerei (H), T‑193/12, not published, EU:T:2015:44, paragraph 16 and the case-law cited).
20      Given that the document in question was produced for the first time before the Court, it must be discounted as inadmissible, without it being necessary to examine its probative value.
Substance
21      In support of its action, the applicant raises three pleas in law, the first alleging, in essence, infringement of Article 42(2) of Regulation No 207/2009, the second alleging infringement of Article 8(1)(b) of that regulation, and the third alleging infringement of Article 8(5) thereof.
22      The first plea in law, alleging infringement of Article 42(2) of Regulation No 207/2009, is divided into two parts. The first part concerns, in essence, the documents produced by the applicant after expiry of the period prescribed by the Opposition Division. The second part concerns whether the documents produced by the applicant within the period prescribed are sufficient.
First part of the plea, concerning, in essence, the documents produced by the applicant after expiry of the period prescribed by the Opposition Division and rejected by the Board of Appeal
23      The applicant argues that the Board of Appeal erred in refusing to take into account the documents produced for the first time before it during the appeal proceedings against the Opposition Division’s decision. Under Articles 59, 60 and 76(2) of Regulation No 207/2009, those documents should not have been regarded as having been produced out of time and should have been admitted. In addition, the applicant observes that, according to case-law, evidence of genuine use may be submitted before the Board of Appeal where the Opposition Division rejects the evidence submitted to it within the period prescribed as insufficient.
24      EUIPO and the intervener contest the applicant’s arguments.
25      In that regard, according to settled case-law, it follows from the wording of Article 76(2) of Regulation No 207/2009 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are pleaded or produced out of time, that is to say, after the time limit set by the Opposition Division and, as the case may be, for the first time before the Board of Appeal (judgment of 18 July 2013 in New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 30; see also judgment of 11 December 2014 in CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 44 and the case-law cited).
26      In stating that EUIPO ‘may’ decide to disregard facts and evidence pleaded or produced out of time, Article 76(2) of Regulation No 207/2009 grants EUIPO a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account (see judgment of 11 December 2014, Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraph 45 and the case-law cited).
27      It is therefore necessary to ascertain whether the Board of Appeal exercised its discretion correctly and whether it provided an adequate statement of reasons.
28      In the present case, the Board of Appeal found in paragraph 15 of the contested decision that, having regard to the stage of the proceedings at which the documents in question were produced out of time, it was necessary for it to refuse to take those documents into account.
29      In addition, the Board of Appeal stated that the evidence submitted out of time was not actually relevant to the case at hand. It also stated, in paragraph 16 of the contested decision, that the evidence adduced out of time did not provide any indication concerning the place, time or extent of use of the earlier trade marks in relation to the goods in question and was not, consequently, likely to be truly relevant.
30      The Court finds that, in accordance with the case-law cited in paragraph 26 above, the Board of Appeal effectively exercised its discretion, providing a statement of reasons and taking due account of all the relevant circumstances, in deciding whether or not to take the additional evidence produced out of time before it into account for the purposes of giving the decision it was required to take.
31      Accordingly, the first part of the first plea in law must be rejected.
Second part, concerning whether the documents produced by the applicant are sufficient
32      The applicant submits, in essence, that the decision of the Board of Appeal is vitiated by an error of law as regards the assessment of the evidence of use of the earlier trade marks.
33      Indeed, the applicant argues that the evidence which it has produced shows that its earlier trade marks are widely used to identify Fútbol Club Barcelona and that the earlier trade marks are used on the market by certain licence-holders in order to distinguish clothes and accessories.
34      EUIPO and the intervener contest the applicant’s arguments.
35      Under Rule 22(3) of Regulation No 2868/95, proof of use is to consist of indications concerning the place, time, extent and nature of use of the earlier trade mark.
36      There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003 in Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
37      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 exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003 in Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
38      As regards the extent of the use made of the earlier trade mark, account must be taken, in particular, of the commercial volume of the use to which that mark has been put, on the one hand, and the length of the period during which that mark was used and the frequency of that use, on the other (judgments of 8 July 2004 in VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41, and MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35).
39      Furthermore, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002 in Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47; 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28; and 8 December 2015 in Giand v OHIM — Flamagas (FLAMINAIRE), T‑583/14, EU:T:2015:943, paragraph 28).
40      It is in the light of those principles that it is necessary to examine whether the Board of Appeal erred in finding that the applicant had not provided proof of genuine use.
41      It is common ground that the five-year period referred to in Article 42(2) of Regulation No 207/2009 is the period preceding 3 August 2011, that is, the date on which the application for registration of the contested trade mark was published in the Community Trade Marks Bulletin.
42      In the present case, it is apparent from the contested decision that the applicant produced the following documents before the Opposition Division in order to prove genuine use of the earlier trade mark:
–        an extract from the Spanish dictionary of the Real Academia Española which defines the term ‘culé’;
–        five print-outs from websites dedicated to sports news in Spain making reference to Fútbol Club Barcelona and its supporters or players, nicknamed ‘culés’;
–        a print-out from a website making reference to Fútbol Club Barcelona and the ‘lotería culé’;
–        a print-out from Wikipedia containing information on Fútbol Club Barcelona and stating that its supporters are nicknamed ‘culé[s]’;
–        two other print-outs from websites dedicated to sports news in Spain and making reference to Fútbol Club Barcelona and its supporters or players, nicknamed ‘culés’;
–        a print-out of a Google search for the term ‘culé’ showing five references, two of which refer to an open online dictionary forum and two of which refer to Fútbol Club Barcelona.
43      The Board of Appeal considered in paragraph 14 of the contested decision that that evidence does not prove genuine use, on the ground that it does not concern the goods in question. As has been mentioned by EUIPO, that evidence refers to Fútbol Club Barcelona and establishes that the term ‘culé’ designates a supporter or player of that club.
44      In that regard, concerning, in the first place, the screenshot of the dictionary of the Real Academia Española which defines the term ‘culé’ as ‘belonging to Fútbol Club Barcelona’ or as a ‘player or supporter of that club’, it should be noted that that evidence is irrelevant, as it does not concern the goods in respect of which the earlier trade marks were registered.
45      Concerning, in the second place, the print-outs from websites dedicated to sports news in Spain, it should be noted that it is apparent from that evidence that the term ‘culé’ is used to refer to supporters or players of Fútbol Club Barcelona, but that there is no reference therein to the fact that the earlier trade marks are used in connection with the goods concerned. In any event, it is impossible to ascertain whether that evidence is from the relevant period, given that it is undated.
46      Concerning, in the third place, the ‘lotería culé’ lottery ticket, it should be pointed out that that evidence does not demonstrate use of the earlier trade marks in connection with the goods covered by those marks.
47      Concerning, in the fourth place, the print-out from Wikipedia, it should be pointed out that that document describes the history of Fútbol Club Barcelona and includes information on that football club. The only reference to the term ‘culé’ is made in relation to its supporters, who are designated using that nickname. Furthermore, it is settled case-law that a Wikipedia article constitutes information lacking certainty, as it is taken from a collective encyclopaedia established on the internet, the content of which may be amended at any time and, in certain cases, by any visitor, even anonymously (see, to that effect, judgments of 10 February 2010 in O2 (Germany) v OHIM (Homezone), T‑344/07, EU:T:2010:35, paragraph 46, and 16 November 2011 in Dorma v OHIM — Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS), T‑500/10, not published, EU:T:2011:679, paragraph 55).
48      Lastly, concerning the screenshot of the search engine Google, it should be pointed out that that evidence merely confirms that the term ‘culé’ is used to designate the players or supporters of Fútbol Club Barcelona.
49      It should be recalled, in that regard, that, in the context of Article 42 of Regulation No 207/2009, proof of use is to consist of indications concerning the place, time, extent and nature of use of the earlier trade mark (see judgment of 5 October 2010 in Strategi Group v OHIM — RBI (STRATEGI), T‑92/09, not published, EU:T:2010:424, paragraph 41 and the case-law cited).
50      In the present case, the applicant has not adduced evidence to show the place, time, extent or nature of use of the earlier trade marks in relation to the goods covered. Indeed, the documents produced by the applicant show that the Spanish term ‘culé’ is used in relation to Fútbol Club Barcelona, more specifically as a nickname bestowed upon its supporters or its players. However, the use of that term has not been proved in relation to the goods covered by the earlier trade marks.
51      As a result, it must be held that that evidence is not, in itself, capable of showing genuine use of the earlier trade marks in connection with the goods which they designate.
52      Therefore, the second part of the first plea in law must be rejected and, accordingly, the first plea in law must be rejected in its entirety.
53      Consequently, given that the applicant has not demonstrated genuine use of the earlier trade marks, the second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected. It follows that the third plea in law, alleging infringement of Article 8(5) of that regulation, must also be rejected, without it being necessary to give a ruling regarding the admissibility of that plea.
Costs
54      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT
hereby:
1.      Dismisses the action;
2.      Orders Fútbol Club Barcelona to pay the costs.
Van der Woude
Wiszniewska-Białecka
Ulloa Rubio
Delivered in open court in Luxembourg on 16 June 2016.
[Signatures]
* Language of the case: English.