62013TJ0508_EN
Parties
Grounds
Operative part
Parties
In Case T‑508/13,
Government of Malaysia, represented initially by R. Volterra, Solicitor, R. Miller QC, V. von Bomhard and T. Heitmann, lawyers, and subsequently by R. Volterra, R. Miller and V. von Bomhard,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),
represented by P. Bullock and N. Bambara, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Paola Vergamini,
residing in Castelnuovo di Garfagnana (Italy),
ACTION brought against the decision of the First Board of Appeal of OHIM of 27 June 2013 (Case R 326/2012-1), relating to invalidity proceedings between the Government of Malaysia and Mrs Paola Vergamini,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek, President, I. Labucka (Rapporteur) and V. Kreuschitz, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Registry of the General Court on 20 September 2013,
having regard to the response lodged at the Court Registry on 17 December 2013,
having regard to the reply lodged at the Court Registry on 16 April 2014,
further to the hearing on 6 February 2015,
gives the following
Judgment
Grounds
Background to the dispute
1. On 25 May 2010 Mrs Paola Vergamini, the other party to the proceedings before the Board of Appeal of OHIM, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2. The mark in respect of which registration was sought is the following figurative sign:
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3. The goods and services in respect of which registration was sought are in Classes 5, 18, 25, 29, 30, 31, 32 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose 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 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetical substances for medical use, foodstuffs for babies; plasters; materials for dressings; disinfectants; preparations for destroying vermin; fungicides, herbicides’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;
– Class 25: ‘Clothing, footwear, headgear’;
– Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, fruit compote; eggs, milk and milk products; edible fats and oils’;
– Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour, preparations made from cereals, bread, pastry and confectionery products, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’;
– Class 31: ‘Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; animal feeds; malt’;
– Class 32: ‘Beers; mineral water; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’;
– Class 43: ‘Providing of food and drink and temporary accommodation; temporary accommodation’.
4. The Community trade mark application was published in Community Trade Marks Bulletin
No 127/2010 of 13 July 2010.
5. On 13 October 2010 the applicant, the Government of Malaysia, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in its entirety.
6. The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) and (4) of Regulation No 207/2009.
7. The opposition was based on the figurative sign, reproduced below, which, for the purposes of Article 8(1)(a) and (b) of Regulation No 207/2009, is, in the applicant’s view, well known in the sense of Article 8(2)(c) of that regulation read in conjunction with Article 6 bis
of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended, and, for the purposes of Article 8(4) of that regulation, is a non-registered trade mark in the United Kingdom for which the applicant claims use for a range of goods and services, including food:
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8. On 16 December 2011 the Opposition Division rejected the opposition in its entirety. First, it took the view that the well-known character of the earlier sign within the meaning of Article 8(2)(c) had not been proved in any Member State of the European Union. Second, when assessing the criteria for the application of Article 8(4) of that regulation, it found that the evidence submitted by the applicant was not sufficient to conclude that, at the date of application for the mark applied for, the non-registered mark of the applicant had acquired the required goodwill (‘the attractive force which brings in custom’) in the United Kingdom.
9. On 14 February 2012 the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10. By decision of 27 June 2013 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal.
11. With regard to the ground for opposition referred to in Article 8(4) of Regulation No 207/2009, first of all, the Board of Appeal took the view that it had not been established that the United Kingdom tort or delict of passing off was available for signs functioning as certification marks. However, it indicated that, with regard to the ‘extended’ form of the action for passing off, which is recognised under national case-law and enables several traders to have rights over a sign which has acquired a reputation on the market, that tort or delict could be invoked in relation to goodwill acquired on the basis of a sign functioning as a certification mark. Next, it found that the evidence provided by the applicant was not capable of allowing, in the circumstances of the case, the safe conclusion that the marketing activities had resulted in the required goodwill from the point of view of the relevant public. Last, it concluded that, in the absence of proof of such goodwill, which is one of the cumulative conditions of passing off, the opposition based on Article 8(4) of Regulation No 207/2009 could not succeed.
12. As regards the grounds for opposition referred to in Article 8(1)(a) and (b) of Regulation No 207/2009, the Board of Appeal essentially took the view that the applicant had not established the well-known character of the earlier sign in the European Union and, specifically, that none of the evidence provided proved, to a sufficient extent, that the relevant public recognised that sign at the relevant point in time, namely 25 May 2010.
Forms of order sought by the parties
13. The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
14. OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of OHIM’s arguments
15. In the reply, the applicant argues that the new points raised by OHIM in the response are inadmissible under Article 135(4) of the Rules of Procedure of the General Court of 2 May 1991 and the case-law. It makes reference, in particular, to the following assertions:
– that its use of the earlier sign does not comply with the requirements of Article 8(4) of Regulation No 207/2009;
– that goodwill for the purposes of United Kingdom law on passing off actions can exist only as an asset of a business and that, in the present case, it belongs to importers, distributors and retailers;
– that the 1984 case-law laid down a de minimis
threshold for sales giving rise to goodwill for the purposes of United Kingdom law on passing off actions.
16. In that regard, it should be borne in mind that the purpose of bringing an action before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 65 of Regulation No 207/2009. Moreover, Article 135(4) of the Rules of Procedure of 2 May 1991 provides that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal.
17. In the present case, the Board of Appeal, in the contested decision, merely found that the earlier sign had not acquired the goodwill required under United Kingdom law in relation to a passing off action before the date of the filing of the Community trade mark application and did not examine the other conditions laid down by Article 8(4) of Regulation No 207/2009. Given that the question of whether the earlier sign had been used in the course of trade of more than mere local significance was not examined by the Board of Appeal, it is not for the Court to examine it, for the first time, in its review of the lawfulness of the contested decision (see, to that effect, judgment of 14 December 2011 in Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, ECR, EU:T:2011:739, paragraph 63 and the case-law cited). This argument is therefore inadmissible.
18. With regard to OHIM’s other arguments, concerning the conditions for bringing an action for passing off in the United Kingdom, it should be stated that they are intended to supplement the issues examined by the Board of Appeal and must therefore be declared admissible.
Substance
19. In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(4) of Regulation No 207/2009. This plea is divided into two parts.
Preliminary considerations
20. Under Article 8(4) of Regulation No 207/2009, the proprietor of a sign may oppose the registration of a Community trade mark if that sign satisfies four conditions. The sign relied on must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of application for registration of the Community trade mark; and, lastly, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those four conditions limit the number of signs other than marks which may be relied on to prevent registration of a Community trade mark valid throughout the European Union under Article 1(2) of Regulation No 207/2009 (see, to that effect, judgment of 24 March 2009 in Moreira da Fonseca
v OHIM — General Óptica (GENERAL OPTICA), T‑318/06 to T‑321/06, ECR, EU:T:2009:77, paragraph 32). Those conditions are cumulative, with the result that, where a sign does not satisfy one of them, the opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) of Regulation No 207/2009 cannot succeed (judgment of 30 June 2009 in Danjaq v OHIM — Mission Productions (Dr. No), T‑435/05, ECR, EU:T:2009:226, paragraph 35).
21. The first two conditions, namely those relating to the use and the more than mere local significance of the earlier sign, are apparent from the very wording of Article 8(4) of Regulation No 207/2009 and therefore must be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (judgment in GENERAL OPTICA, paragraph 20 above, EU:T:2009:77, paragraph 33).
22. By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to the law of the Member State governing that sign’ that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is entirely justified, given that Regulation No 207/2009 makes it possible for signs which fall outside the Community trade mark system to be relied on against a Community trade mark. Therefore, only the law of the Member State which governs the sign relied on can determine whether that sign predates the Community trade mark and whether it can justify a prohibition of the use of a subsequent trade mark (judgment in GENERAL OPTICA, paragraph 20 above, EU:T:2009:77, paragraph 34).
23. The opponent must establish that the sign concerned falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited (see, by analogy, judgment of 12 June 2007 in Budějovický Budvar v OHIM — Anheuser-Busch (BUDWEISER), T‑53/04 to T‑56/04, T‑58/04 and T‑59/04, EU:T:2007:167, paragraph 74).
The first part of the single plea, concerning misinterpretation of the conditions of the United Kingdom tort or delict of passing off
24. This first part is divided into three complaints.
25. With regard to the first complaint, that the Board of Appeal incorrectly interpreted and applied the conditions of the United Kingdom tort or delict of passing off in failing to recognise that the earlier mark fell within the ‘classic’ form of that action, the applicant argues, first, that the Board of Appeal did not accept that it had been established that that action was available for signs functioning as certification marks and, second, that it assessed the opposition under the assumption that it was based on the action in its ‘extended’ form, which negatively affected its assessment of the facts and evidence of the case.
26. In addition, the applicant specifies that, in the ‘classic’ form of passing off in the United Kingdom, the reputation and goodwill in the mark belong to the claimant exclusively. In the ‘extended’ form of passing off, however, the reputation and goodwill in the mark at issue are not held exclusively by a claimant but are shared amongst a class of independent traders, each of whom is fully entitled to exercise his rights against third parties.
27. The applicant adds that the opposition was based on the ‘classic’ form of passing off in the United Kingdom, since the three constituent elements of that form of passing off, namely, the goodwill acquired, misrepresentation and damage caused to that goodwill, were in place. Moreover, the applicant is in no doubt that passing off applies to certification marks.
28. OHIM contests that line of argument.
29. As a preliminary point, it should be noted that the applicant stated at the hearing that, in the meantime, it had registered and communicated its certification mark pursuant to Article 6 ter
of the Paris Convention for the Protection of Intellectual Property.
30. In that regard, it should be pointed out, first, that, since OHIM cannot take into account facts which have not been put forward before it by the parties, the lawfulness of its decisions cannot be challenged on the basis of such facts. It follows that the General Court, likewise, cannot take account of evidence intended to prove those facts (judgment of 18 July 2006 in Rossi
v OHIM, C‑214/05 P, ECR, EU:C:2006:494, paragraph 52). Second, it should be noted that, according to the wording of Article 8(4) of Regulation No 207/2009, that article can be applied only upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance.
31. In the present case, the law of the Member State applicable to the non-registered national trade mark is the Trade Marks Act 1994, section 5(4) of which provides:
‘A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented:
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade …’
32. It follows from section 5(4) of the Trade Marks Act 1994, as interpreted by the national courts, that the applicant must establish, in accordance with the legal rules governing actions for passing off, as laid down by the laws of the United Kingdom, that three conditions are satisfied: the goodwill acquired, misrepresentation and damage caused to that goodwill (judgment of 18 January 2012 in Tilda Riceland Private v OHIM — Siam Grains (BASmALI), T‑304/09, ECR, EU:T:2012:13, paragraph 19).
33. It is therefore appropriate, in this case, to examine first whether the earlier sign, presented by the applicant as a certification mark which distinguishes goods which are certified from those which are not, may provide the basis for an action for passing off in the United Kingdom. In the Board of Appeal’s view, the applicant did not establish that the United Kingdom passing off action applied to signs functioning as certification marks, as it was required to do.
34. In that regard, the Court has already considered it to be clear from national case-law that a sign used to designate goods or services may have acquired a reputation on the market for the purposes of the law applicable to an action for passing off (judgments of 11 June 2009 in Last Minute Network v OHIM — Last Minute Tour (LAST MINUTE TOUR), T‑114/07 and T‑115/07, ECR, EU:T:2009:196, paragraph 84, and BASmALI, paragraph 32 above, EU:T:2012:13, paragraph 28).
35. Moreover, it has already been held that it follows from national case-law, inter alia from that mentioned in paragraph 34 above, that a sign used to designate goods or services may have acquired a reputation on the market for the purposes of the law applicable to an action for passing off, even though it was used by several operators. It follows that those operators can have rights over a sign which has acquired a reputation on the market, under an ‘extended’ form of that action, recognised by national case-law (judgment in BASmALI, paragraph 32 above, EU:T:2012:13, paragraph 28).
36. Accordingly, it must be considered in the present case that, in so far as the earlier sign is used to designate goods or services certified by it, it may, as a certification mark, have acquired the goodwill required under United Kingdom law on passing off.
37. That being so, the question still arises as to whether the applicant, in its capacity as administrator of a certification system, must be the sole proprietor of the goodwill attached to marketing the goods and services bearing the certification mark at issue.
38. The Court takes the view that public bodies too may be protected by passing off actions to the extent that their activities can generate goodwill. If those bodies make use of a particular sign that belongs to them exclusively, they may rely on the goodwill attached to the marketing of goods and services bearing that sign. Similarly, if those bodies share the use of any sign with other operators, the goodwill may be relied on by the same public bodies and by the operators in question. At any rate, in the present case, goodwill may have been generated.
39. In the event that an earlier sign is used by several operators, ownership of the goodwill must be assessed in the light of the circumstances of the case. Consequently, in order to determine whether the applicant is the sole owner of the goodwill, the attractive force which brings in custom in respect of the certification mark must be assessed.
40. In that regard, it must be pointed out that the applicant explained in detail the functioning of its certification system in relation to the compliance of the goods concerned with Sharia law, its function of inspecting the manufacturing processes developed by parties wishing to become authorised users of its mark, and its function of monitoring use of that mark by those users so as to ensure that the quality standards of its system are complied with. Those explanations must, in the applicant’s view, mean that the authorisation it gives to users regarding use of its mark and certification system amounts, from a legal perspective, to a licence to use the mark. The applicant is of the view that those users were mere licensees and acquired rights neither in the ownership of the mark nor in the reputation or goodwill attaching to it. During the hearing, the applicant stressed that it shared neither the goodwill nor the reputation of the mark.
41. Consequently, in the applicant’s view, the Board of Appeal thus erred in considering that the goodwill in the earlier mark was shared between it and the authorised users and that the opposition should be based on the ‘extended’ form of passing off. In doing so, the applicant argues, the Board of Appeal failed to identify the correct business to which the goodwill attaches.
42. The Court takes the view that, in the present case, having regard to the applicant’s certification system relating to the compliance of goods with Sharia law, to its function of inspecting the manufacturing processes developed by third parties wishing to become authorised users of its certification mark and to its function of monitoring use of the certification mark by those authorised users so as to ensure that the quality standards of its system are complied with, it is the applicant that must be regarded as the owner of the goodwill.
43. When consumers of products and users of services see the certification mark awarded by the applicant, they are informed of the compliance of those products or services with the halal diet according to the control system guaranteed in Malaysia. Moreover, the certification mark can indicate a public profile, governmental in origin, which informs consumers of that compliance and reinforces the applicant’s exclusive ownership of it, as opposed to an ownership shared with other operators, even those who are authorised to use the mark.
44. However, it is apparent from paragraph 41 of the contested decision, and from the Board of Appeal’s assessment, that the existence of the goodwill required by United Kingdom law on passing off, both in its ‘extended’ and ‘classic’ form, has not been demonstrated.
45. With regard to the halal certification system relied on by the applicant, it should also be noted that the Board of Appeal did not question its existence.
46. The Board of Appeal did stress that none of the evidence, on its own or in combination, allowed any safe and direct conclusions about the consumer’s perception of the applicant’s certification mark invoked in the United Kingdom and, consequently, the accrual of the required goodwill from the point of view of the relevant public buying the final certified product.
47. However, the applicant stated that OHIM had accepted that the evidence submitted before the Board of Appeal confirmed some use of the sign, which, in the applicant’s view, confirms the existence of some goodwill.
48. In that regard, it should be stated that some use of a sign, as was found by the Board of Appeal in paragraph 41 of the contested decision, does not necessarily prove the existence of goodwill, that is to say, some use of a given sign may amount to actual use, but not to the point of exercising an attractive force over the customers who, in such a situation, will make their choices according to the good reputation the applicant might have acquired. Consequently, regardless of whether the passing off in the present case is the ‘classic’ form or the ‘extended’ form, the applicant has not demonstrated the existence of goodwill — that is to say, the attractive force which brings in custom — in its certification mark.
49. None of the evidence provided by the applicant demonstrates that consumers genuinely knew the applicant’s certification mark to the point of giving it priority over the other signs inscribed on the goods to which it was affixed.
50. It follows that the applicant has not demonstrated any goodwill in the certification mark, which is one of the cumulative conditions for a passing off action in the United Kingdom. Therefore, any error made by the Board of Appeal in applying the ‘extended’ form instead of the ‘classic’ form of passing off cannot, in any event, invalidate the contested decision.
51. Accordingly, the first complaint must be rejected.
52. In the second complaint, the applicant claims that the Board of Appeal wrongly required a minimum level of ‘required’ or ‘sufficient’ goodwill in order to satisfy the first condition of the United Kingdom tort or delict of passing off.
53. With regard to the assessment of the existence of goodwill in the earlier non-registered trade mark and whether it is sufficient, the applicant argues that it is for the court to assess its extent. Should that extent be found to be limited, it may prove more difficult for the claimant in a passing off action to provide evidence that the other conditions of passing off are satisfied.
54. The applicant is essentially of the view that the Board of Appeal should have assessed the extent of the reputation and goodwill in the earlier non-registered trade mark to ascertain whether the first condition of passing off was satisfied and that it should then have assessed whether the other conditions for a passing off action in the United Kingdom were satisfied.
55. OHIM contests that line of argument.
56. With regard to the requirement of a minimum level of goodwill, it should be borne in mind that the courts in the United Kingdom are very unwilling to assume that a business can have customers but no goodwill (judgment of 9 December 2010 in Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, ECR, EU:T:2010:505, paragraphs 110 to 115).
57. It should also be considered that, contrary to what the applicant has claimed, the Board of Appeal did not require a minimum level of goodwill in its certification mark, when it found that the distribution of products bearing that mark was limited and not suitable, regardless of such a threshold.
58. The Board of Appeal focused on the fact that the evidence provided did not allow for the safe conclusion that the applicant’s marketing activities had resulted in the required goodwill from the point of view of the relevant public. In addition, it must be considered that, when the Board made reference, in paragraph 37 of the contested decision, to a certain level of goodwill, namely ‘sufficient goodwill’, it merely wished to refer to the requirement that goodwill exist in the applicant’s sign in relation to its customers in order for the passing off action to succeed.
59. Furthermore, it should be pointed out that, during the hearing, OHIM stated that it did not think that the de minimis
rule was relevant, thereby following the same reasoning as the Board of Appeal, which, in paragraph 33 of the contested decision, used the words ‘regardless of a possible de minimis
threshold’. Therefore, the Board of Appeal simply took the view that the proven extent of goodwill was rather limited and not capable, regardless of a possible minimum level, of allowing, in the circumstances of the case, the safe conclusion that the marketing activities had resulted in the required goodwill from the point of view of the relevant public.
60. It follows from the foregoing that, contrary to what the applicant claims, the Board of Appeal never required it to demonstrate a minimum level of goodwill in its certification mark. The Board of Appeal merely required proof that the goodwill existed as a first condition for a passing off action, because the absence of that condition would, according to the United Kingdom courts, obviate the need to examine the other conditions and would mean dismissing the claim for passing off out of hand ( Assos of Switzerland and Roger Maier v Asos and Asos.com [2013] EWHC 2831 (Ch)).
61. Consequently, the second complaint must be rejected.
62. As regards the third complaint, concerning the alleged erroneous definition of the relevant public, the applicant indicates that, in the context of a passing off action, account should be taken of the reputation and goodwill acquired in relation to all of its customers, namely professionals as well as end consumers. In the applicant’s view, the Board of Appeal failed to consider the relevant professional customers, who, in the present case, include the retailers, wholesalers and importers in the United Kingdom, as they had purchased the products bearing the earlier non-registered trade mark.
63. The applicant argues that the promotion and advertisement of its certification process and the purchases made by the retailers and wholesalers, as well as the imports made by the companies located in the United Kingdom, are evidence of the existence of goodwill in its mark.
64. OHIM contests that line of argument.
65. It should be noted, with regard to the relevant public, that it is clear from national case-law that, in an action for passing off, the misleading nature of the representation of the defendant’s goods and services must be assessed with regard to the claimant’s customers, that is to say, the customers of the applicant (judgment in LAST MINUTE TOUR, paragraph 34 above, EU:T:2009:196, paragraph 60).
66. The property protected by an action for passing off is not property in a word or name, which third parties are restrained from using, but the very customer base which is undermined by the usage in question, since the reputation of a trade mark is the power of attraction which brings in custom and the criterion which distinguishes an established business from a new business (judgment in LAST MINUTE TOUR, paragraph 34 above, EU:T:2009:196, paragraph 61).
67. In the present case, the Board of Appeal made reference, in paragraph 33 of the contested decision, to ‘the opponent’s customers of the [halal] certified product’. It must be pointed out that the Board of Appeal has never argued that the relevant public consisted solely of end consumers. It must be stated that the intermediate agents, that is to say, the retailers, wholesalers and importers, purchased the products bearing the applicant’s certification mark and therefore constituted, in the same way as the end consumers, the ‘opponent’s customers’ and that they were thus not excluded from the concept of relevant public.
68. In addition, the Court notes that the Board of Appeal examined the evidence provided by the applicant, namely a list of Malaysian exporters and European importers, the customs declarations of one shipment, a commercial invoice concerning that shipment and invoices addressed to retailers. It follows from the foregoing, contrary to what the applicant claims, that the Board of Appeal did also take professional customers into account.
69. Consequently, the third complaint must be rejected.
The second part of the single plea, concerning the erroneous assessment of the evidence submitted to prove the reputation and goodwill of the earlier mark in the United Kingdom
70. The applicant claims that, in the assessment of the evidence it submitted to the Board of Appeal, the Board took into account neither the significance that professional and end consumers, both Muslim and non-Muslim, attach to its mark, nor the scope of that mark in the United Kingdom, nor the applicant’s worldwide and international activities.
71. In the applicant’s view, the Board of Appeal wrongly failed to consider the primary group of consumers who are the target of its mark and certification programme, that is to say, Muslim consumers, and, because of that, nowhere in the contested decision was the goodwill in its mark considered from the perspective of those consumers, for whom the halal nature of a product is the decisive factor in making a purchasing decision.
72. In addition, according to the applicant, the Board of Appeal identified a large number of advertisements in a newspaper, all from before the date of the Community trade mark application, most of which were focused on the Malaysian export market and which were published and circulated in the United Kingdom. Consequently, the advertisements in that newspaper would surely have generated some amount of reputation and goodwill in the mark at issue amongst the relevant public and trade in the United Kingdom.
73. OHIM contests that line of argument.
74. It should be stated, as the Board of Appeal noted in paragraph 29 of the contested decision, that goodwill is normally proved by evidence of trading activities, advertising, consumers’ accounts etc. Genuine trading activities, which result in acquiring reputation and gaining customers, are usually sufficient to establish goodwill.
75. In that regard, in the first place, the Court considers it appropriate to examine the way in which professional and end consumers, both Muslim and non-Muslim, perceive the applicant’s certification mark. In the second place, an examination should be carried out of evidence such as publications, events, information regarding the applicant’s activity on the international level aimed at demonstrating the scope of the mark in the United Kingdom.
76. In the first place, with regard to the perception by Muslim consumers of any sign that specifies that certain products are in compliance with Sharia law, it should be stated that that type of sign is likely to attract particular attention from those consumers. However, those consumers will pay attention first to the product itself and to the distinctive mark that identifies it, and it is only afterwards that they will make sure that the product complies with the halal diet by looking for the sign that shows this, namely either the earlier non-registered trade mark or another equivalent sign. As a result, those consumers will notice the applicant’s certification mark, but only after perceiving the other signs incorporated into the product or service.
77. It should therefore be noted, just as the Board of Appeal did, that the evidence provided by the applicant does not demonstrate that Muslim consumers knew the certification mark at issue or that it was able to influence their purchasing decisions.
78. At the hearing, OHIM argued that in 2010 the halal market in the United Kingdom represented a very high level of turnover owing to the presence of a very large Muslim community. Nevertheless, the Malaysian products bearing the applicant’s certification mark are not the only halal products produced in the world, nor are they the only halal products marketed in the United Kingdom. For that reason, the existence of evidence, including turnover, that Muslim consumers in the United Kingdom knew the applicant’s particular certification mark and actively looked for it on the halal products that bear it was essential to establish the existence of goodwill in that mark.
79. As regards the perception of the applicant’s certification mark by non-Muslim consumers, it should be noted that the applicant stated at the hearing that, since the United Kingdom was a multicultural society, everyone, including non-Muslim consumers, perfectly knew the meaning of the word ‘halal’.
80. According to the applicant, its certification mark is interpreted by non-Muslim consumers as a symbol of quality and not only as a symbol of compliance with Sharia law. It refers, in that regard, to advertising slogans in one newspaper, such as ‘The mark of Quality, Hygiene & Safety’, ‘Peace of mind for non-Muslims too’ and ‘Besides the Brand, There’s One Symbol You Can Trust’. At the hearing, it stated that that newspaper was available worldwide in paper and electronic format and was not accessible only by subscription, as the Board of Appeal had erroneously stated in paragraph 38 of the contested decision. Consequently, in the applicant’s view, the Board incorrectly concluded that the earlier mark was disregarded by consumers who did not follow a halal diet and that it was therefore more difficult to establish its goodwill. The applicant also refers to numerous articles published in that newspaper and on a number of websites. Last, it indicates that it participated in two events, in the United Kingdom, at which it promoted its certification mark.
81. In that regard, it should be noted that, according to the case-law, Article 8(4) of Regulation No 207/2009 does not concern the ‘genuine’ use of a sign relied on in support of an opposition and that there is nothing in the wording of Article 43(2) and (3) of the regulation to suggest that the requirement of proof of genuine use applies to such a sign. Nevertheless, in order to be capable of preventing registration of a new sign on the basis of the abovementioned article, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade (judgment of 29 March 2011 in Anheuser-Busch v Budějovický Budvar, C‑96/09 P, ECR, EU:C:2011:189, paragraph 159).
82. In relation to the time at which the goodwill must be established, pursuant to Article 8(4) of Regulation No 207/2009, the relevant date is the date of the filing of the application for a Community trade mark against which the opposition has been made (judgment in Golden Elephant Brand, paragraph 56 above, EU:T:2010:505, paragraph 99). Accordingly, the relevant date, in the present case, is 25 May 2010. The Court finds that a number of items of evidence mentioned by the applicant cannot be taken into account in respect of the relevant period.
83. In the present case, in any event, it must be held that the Board of Appeal was correct to find that the applicant had not provided evidence of genuine use of the certification mark. The evidence submitted by the applicant is insufficient to demonstrate the attractive force which brings in custom in respect of its certification mark and, consequently, the goodwill in that mark. The applicant provides no proof allowing an understanding of the perception, by the public in question, of that mark. It shows that it advertised and disclosed its mark, but does not provide proof regarding the perception of it by Muslim and non-Muslim consumers.
84.
Last, in that regard, it should be noted, like OHIM did, that, of all the halal organisations approached by the applicant to confirm that they were aware of its certification mark, only one organisation responded, which is clearly insufficient to demonstrate goodwill in that mark.
85. In the second place, it should be ascertained whether the Board of Appeal correctly examined the evidence aimed at proving the scope of the earlier non-registered trade mark in the United Kingdom.
86. First, it must be noted that, with regard to the turnover concerning the ‘Global Halal food market’, the applicant provided actual figures for the years 2004, 2005 and 2009 and estimated figures for the year 2010 regarding inter alia France and the United Kingdom.
87. However, as the Board of Appeal notes in paragraph 34 of the contested decision, those figures are of little evidential value, in so far as they do not indicate what percentage of turnover was achieved by products bearing the earlier sign during the relevant period. The document in question indicates that ‘most of the products’ have the earlier mark, that the number of companies certified as halal in Malaysia ‘continues to increase every year …’ and that the potential of those companies that export to the world, especially in Europe, is ‘huge’. Because of their lack of precision, they cannot be taken into account, since, in the context of Article 8(4) of Regulation No 207/2009, the use of an earlier sign cannot be proved by means of probabilities or suppositions (see, to that effect, judgment of 23 October 2013 in Dimian
v OHIM — Bayer Design Fritz Bayer (Baby Bambolina), T‑581/11, EU:T:2013:553, paragraph 29).
88. Second, as far as the list of Malaysian exporters and European importers is concerned, the applicant mentioned, in relation to the United Kingdom, three entities. It also submitted an export declaration of 1892 cartons of foodstuffs issued in favour of an importer, dated 10 May 2008. The certification mark is shown on 1600 packages of a product. It also provided a commercial invoice issued in favour of another importer, dated 5 May 2010, concerning 14 different products, one of which bore the mark on 85 of its packages.
89. First of all, with regard to the commercial invoice issued in favour of an importer, the Board of Appeal correctly found, in paragraph 35 of the contested decision, that its date raises the question as to whether the products referred to were actually available in the United Kingdom before the relevant period, that is to say, before the date of the Community trade mark application. In any event, even taking that commercial invoice into account, only the 85 packages of the product on which the applicant’s certification mark is shown need to be taken into account. However, 85 packages is a manifestly insufficient quantity to prove knowledge of that mark by the relevant public.
90. The same is true of the 1600 packages of a product imported by another company. The applicant has provided proof of sale in the United Kingdom only for a total of 1685 products with packaging bearing its certification mark, during the years 2008 and 2010 — with uncertainty as to the date in respect of the sale of 85 products in 2010, as the Board of Appeal correctly noted in paragraph 35 of the contested decision. Such a quantity is negligible and therefore cannot suffice to demonstrate knowledge of that mark by the relevant public.
91. Third, in relation to the list of retailers, it should be observed that the applicant identified supermarkets in Birmingham, Manchester, London, Croydon, Romford, Enfield and Surrey (United Kingdom), department stores in London, Birmingham and Manchester and supermarket chains in various locations in the United Kingdom.
92. With regard to the department stores, the applicant mentions the ‘Malaysian Kitchen’ promotion done by the Malaysia External Trade Development Corporation from 11 to 19 September 2010. In that regard, it cites an article entitled ‘Our food a hit at Selfridges’ published in a newspaper on 15 September 2010, which explicitly mentions that that promotion had started on Saturday, that is to say, 11 September 2010. It should be pointed out, as the Board of Appeal stated in paragraph 36 of the contested decision, that that article does not prove the extent of possible sales before the relevant point in time in the present case. Even though that article makes reference to the promotion of 22 000 food products by 16 companies, it does not indicate whether they had been sold before or after the relevant period.
93. In addition, with regard to a supermarket chain, the applicant mentions that there was a week of promotional events in 2007, relating to a ‘Visit Malaysia’ publicity campaign. However, it should be pointed out, as the Board of Appeal correctly stated in paragraph 36 of the contested decision, that the applicant provided evidence neither on the products promoted nor on whether they involved its certification mark, which gives no indication of whether the sales of those products actually took place.
94. It should also be pointed out that the list of retailers and the images of a number of products sold by them bearing the applicant’s certification mark do not allow the true scope of its marketing and of its knowledge by the relevant public to be perceived. Moreover, that list does not indicate the date of sale of those products, either.
95. Fourth, it should be noted that, with regard to the two events, mentioned in paragraph 80 above, in which the applicant participated, the applicant submitted only two images, one of a flier, entitled ‘Malaysia — Your Reliable Trading Partner’, and the other of its booth in 2007. As the Board of Appeal stated in paragraph 37 of the contested decision, those images do not illustrate what impact the applicant’s participation in those events had on professionals and end consumers in the United Kingdom.
96. In the context of the second part of the single plea, the arguments put forward by the applicant to demonstrate that the Board of Appeal erroneously assessed the evidence submitted to prove the reputation and goodwill of the earlier non-registered trade mark in the United Kingdom therefore cannot succeed.
97. In the light of all the foregoing, it must be held that the Board of Appeal was correct to find that evidence of the existence of goodwill in the earlier non-registered trade mark in the United Kingdom had not been provided in the present case. Accordingly, the action should be dismissed in its entirety.
Costs
98. Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM, in accordance with the form of order sought by the latter.
Operative part
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders the Government of Malaysia to pay the costs.