ORDER OF THE GENERAL COURT (Eighth Chamber)
10 January 2025 (*)
( EU trade mark – Opposition proceedings – Application for EU word mark Voltwagen – Earlier EU word mark VOLKSWAGEN – Genuine use of the earlier mark – Article 47(2) of Regulation (EU) 2017/1001 – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation 2017/1001 – Action manifestly lacking any foundation in law )
In Case T‑87/24,
Štefan Košovan, residing in Preseľany (Slovakia), represented by A. Bělohlávek, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Volkswagen AG,
established in Wolfsburg (Germany), represented by F. Thiering and M. Jacob, lawyers,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, G. De Baere (Rapporteur) and S. Kingston, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
makes the following
Order
1        By his action under Article 263 TFEU, the applicant, Mr Štefan Košovan, seeks the alteration and, in the alternative, the partial annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 December 2023 (Case R 2216/2022-4) (‘the contested decision’).
Background to the dispute
2        On 18 February 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign Voltwagen.
3        The services in respect of which registration was sought are in Classes 37 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.
4        On 20 May 2020, the intervener, Volkswagen AG, filed a notice of opposition to registration of the mark applied for in respect of all the services referred to in the application for registration.
5        The opposition was based on the earlier EU word mark VOLKSWAGEN, filed on 12 December 1997 and registered on 10 May 1999 under number 703 702 for goods and services in Classes 1 to 42, including the following:
–        Class 12: ‘Vehicles’;
–        Class 37: ‘Repair, especially repair and maintenance of vehicles, including breakdown service (vehicle repair in the course of breakdown service)’.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) 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).
7        On the applicant’s request, EUIPO invited the intervener to furnish proof of genuine use of the earlier mark relied on in support of the opposition. The intervener complied with that request within the period prescribed.
8        On 16 September 2022, the Opposition Division rejected the opposition in its entirety.
9        On 14 November 2022, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10      By the contested decision, the Board of Appeal held that genuine use of the earlier mark had been proved for ‘motor vehicles’ in Class 12. It partially annulled the decision of the Opposition Division and upheld the opposition on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 for the following services in Class 37:
‘Automobile repair; vehicle maintenance and repair; overhaul of vehicles; vehicle tuning; vehicle maintenance; repair of axles for vehicles; tuning of motor vehicle engines; motor vehicle maintenance; fitting of replacement vehicle parts; mobile vehicle tuning services; vehicle breakdown repair services; vehicle service stations [refuelling and maintenance]; vehicle repair, maintenance and refuelling; arranging of vehicle repairs; vehicle service, repair, maintenance and refuelling; emergency vehicle repair services; vehicle service, repair, maintenance and refuelling; emergency vehicle repair services; vehicle repair as part of vehicle breakdown services; vehicle repair, maintenance, refuelling and recharging; advisory services relating to vehicle repair; assembly [installation] of accessories for vehicles; maintenance, servicing and repair of vehicles; inspection of vehicles prior to maintenance; inspection of vehicles prior to repair; service stations for the repair of vehicles; service stations for the maintenance of vehicles; provision of information relating to the maintenance of vehicles; garage services for vehicle maintenance; advisory services relating to vehicle maintenance; garage services for vehicle repair; replacement of batteries; maintenance and repair of electric vehicles; rebuilding and reconditioning of motors; machinery retrofit and conversion services; installation services of vehicles; installation services of vehicle wheels; installation services of vehicle seats; installation services of doors for vehicles; installation services of vehicle tires; installation services of vehicle cabs; installation services of windows for vehicles; installation services of seat cushions for the seats of vehicles; installation services of autonomous vehicles; installation services of driverless cars [autonomous cars]; installation services of trailers [vehicles]; installation services of all-terrain vehicles; installation services of remotely operated vehicles; installation services of steering wheels [vehicle parts]; installation services of rearview mirrors [vehicle parts]; installation services of sun visors [vehicle parts]; installation services of shaped vehicle mats; installation services of hardtops [roofs] for vehicles; installation services of fitted vehicle covers; installation services of folding hoods for vehicles; installation services of motors, electric, for land vehicles; installation services of aero-dynamic fairings for vehicles; installation services of spoilers for vehicles; installation services of rolling wheels for vehicles; installation services of stability control systems for vehicles; installation services of traction control systems for vehicles; installation services of spare wheels for vehicles; installation services of vehicle door panels; installation services of mirrors for vehicles; installation services of vehicles and conveyances; installation services of vehicles fitted with living accommodation; installation; services of luggage nets for vehicles; installation services of undercarts for vehicles; installation services of airbags for vehicles; installation services of air deflectors for vehicles; installation services of security alarm systems for vehicles; installation services of security systems for vehicles [other than locks]; installation services of wheeled vehicles; installation services of spray prevention flaps for vehicles; installation services of anti-theft devices for vehicles; installation services of braking systems for vehicles; installation services of vehicle roll bars; installation services of automatic guided vehicles; installation services of body panels for vehicles; installation services of brakes for vehicles; installation services of alarm instruments for vehicles; installation services of glass screens for vehicles; installation services of luggage carriers for vehicles; installation services of vehicles for animal transport; installation services of roof linings for vehicles; installation services of automotive interior trim; installation services of trim panels for vehicle bodies; installation services of load carrying vehicles; installation services of panels for vehicle bodies [shaped]; installation services of electric sunroofs for vehicles; installation services of freight carrying vehicles; installation services of remote control vehicles, other than toys; installation services of electric trucks [vehicles]; installation services of modular chassis systems for vehicles; installation services of vehicles incorporating apparatus for tipping; installation services of vehicles incorporating apparatus for loading; installation services of passenger carrying vehicles; installation services of seat trays adapted for use in vehicles; installation services of vehicles for travel by land; installation services of vehicle windows incorporating aerials for radio reception; installation services of vehicles for locomotion by land; installation services of electric vehicles; installation services of container cars; installation services of transport trailers; installation services of self-driving transport vehicles; installation services of driverless transporter vehicles; repair and maintenance of vehicles; repair and maintenance of vehicle wheels; repair and maintenance of vehicle seats; repair and maintenance of doors for vehicles; repair and maintenance of vehicle tires; repair and maintenance of vehicle cabs; repair and maintenance of windows for vehicles; repair and maintenance of seat cushions for the seats of vehicles; repair and maintenance of autonomous vehicles; repair and maintenance of driverless cars [autonomous cars]; repair and maintenance of trailers [vehicles]; repair and maintenance of all-terrain vehicles; Repair and maintenance of remotely operated vehicles repair and maintenance of steering wheels [vehicle parts]; repair and maintenance of rearview mirrors [vehicle parts]; repair and maintenance of sun visors [vehicle parts]; repair and maintenance of shaped vehicle mats; repair and maintenance of hardtops [roofs] for vehicles; repair and maintenance of fitted vehicle covers; repair and maintenance of folding hoods for vehicles; repair and maintenance of motors, electric, for land vehicles; repair and maintenance of aero-dynamic fairings for vehicles; repair and maintenance of spoilers for vehicles; repair and maintenance of rolling wheels for vehicles; repair and maintenance of stability control systems for vehicles; repair and maintenance of traction control systems for vehicles; repair and maintenance of spare wheels for vehicles; repair and maintenance of vehicle door panels; repair and maintenance of mirrors for vehicles; repair and maintenance of vehicles and conveyances; repair and maintenance of vehicles fitted with living accommodation; repair and maintenance of luggage nets for vehicles; repair and maintenance of undercarts for vehicles; repair and maintenance of airbags for vehicles; repair and maintenance of air deflectors for vehicles; repair and maintenance of security alarm systems for vehicles; repair and maintenance of security systems for vehicles [other than locks]; repair and maintenance of wheeled vehicles; repair and maintenance of spray prevention flaps for vehicles; repair and maintenance of anti-theft devices for vehicles; repair and maintenance of braking systems for vehicles; repair and maintenance of vehicle roll bars; repair and maintenance of automatic guided vehicles; repair and maintenance of body panels for vehicles; repair and maintenance of brakes for vehicles; repair and maintenance of alarm instruments for vehicles; repair and maintenance of glass screens for vehicles; repair and maintenance of luggage carriers for vehicles; repair and maintenance of vehicles for animal transport; repair and maintenance of roof linings for vehicles; repair and maintenance of automotive interior trim; repair and maintenance of trim panels for vehicle bodies; repair and maintenance of load carrying vehicles; repair and maintenance of panels for vehicle bodies [shaped]; repair and maintenance of electric sunroofs for vehicles; repair and maintenance of freight carrying vehicles; repair and maintenance of remote control vehicles, other than toys; repair and maintenance of electric trucks [vehicles]; repair and maintenance of modular chassis systems for vehicles; repair and maintenance of vehicles incorporating apparatus for tipping; repair and maintenance of vehicles incorporating apparatus for loading; repair and maintenance of passenger carrying vehicles; repair and maintenance of seat trays adapted for use in vehicles; repair and maintenance of vehicles for travel by land; repair and maintenance of vehicle windows incorporating aerials for radio reception; repair and maintenance of vehicles for locomotion by land; repair and maintenance of electric vehicles; repair and maintenance of container cars; repair and maintenance of transport trailers; repair and maintenance of self-driving transport vehicles; repair and maintenance of driverless transporter vehicles; installation services of batteries.’
Forms of order sought
11      The applicant claims that the Court should:
–        alter or, in the alternative, annul the contested decision in so far as the Board of Appeal upheld the opposition for the services in Class 37 specified in paragraph 10 above;
–        order the intervener to pay the costs incurred before EUIPO;
–        order EUIPO and the intervener to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
13      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
15      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to that article, to give a decision without taking any further steps in the proceedings, notwithstanding that one of the parties has requested a hearing (order of 26 February 2024, Thomas Henry v EUIPO – Shanghai Chengzhi Enterprise Service Center (MATE MATE), T‑505/23, not published, paragraph 11).
16      In support of his action, the applicant raises two pleas in law, the first alleging infringement of Article 54(1) of Decision No 2020-1 of 27 February 2020 of the Presidium of the Boards of Appeal on the Rules of Procedure before the Boards of Appeal, read in conjunction with Article 95(2) of Regulation 2017/1001 and Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), and the second alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
17      By the first part of the second plea in law, alleging an incorrect assessment of the evidence of genuine use of the earlier mark with regard to ‘motor vehicles’ in Class 12, the applicant claims, in essence, an infringement of Article 47(2) of Regulation 2017/1001. That part should be considered to constitute a third plea in law, which will be examined before the second plea.
First plea: infringement of Article 54(1) of Decision No 2020-1 of 27 February 2020 of the Presidium of the Boards of Appeal on the Rules of Procedure before the Boards of Appeal, read in conjunction with Article 95(2) of Regulation 2017/1001 and Article 27(4) of Delegated Regulation 2018/625
18      The applicant claims that the Board of Appeal exceeded its discretion in allowing new evidence of genuine use of the earlier mark.
19      It is appropriate to note that the Board of Appeal considered that genuine use of the earlier mark had been proved for ‘motor vehicles’ in Class 12 and confirmed the Opposition Division’s conclusion that it had not been proved for the services ‘repair, especially repair and maintenance of vehicles, including breakdown service (vehicle repair in the course of breakdown service)’ in Class 37. Consequently, for the purposes of the examination of the opposition under Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal found that the earlier mark was deemed to be registered only for ‘motor vehicles’ in Class 12.
20      In the contested decision, the Board of Appeal accepted the evidence produced by the parties for the first time before it on the ground that the requirements for taking it into account, provided for in Article 95(2) of Regulation 2017/1001 and in Article 27(4) of Delegated Regulation 2018/625, had been met. It considered that that evidence was likely to be relevant for the outcome of the case and supplemented evidence which had already been submitted in due time.
21      As regards genuine use of the earlier mark for ‘motor vehicles’ in Class 12, the examination of which is the only one relevant in the context of the present action, the Board of Appeal concluded that that use had been proved by the evidence produced before the Opposition Division, considered as a whole. It stated that the additional evidence produced by the intervener in the appeal proceedings before it merely confirmed that conclusion.
22      It is therefore apparent from the contested decision that the Board of Appeal, in its assessment of the place, time, nature and extent of use of the earlier mark for ‘motor vehicles’ in Class 12, relied solely on the evidence produced by the intervener before the Opposition Division.
23      It follows that, assuming that the Board of Appeal had been wrong to accept the evidence produced for the first time before it, that consideration is not such as to alter its conclusion that the intervener had proved genuine use of the earlier mark for motor vehicles.
24      Consequently, the first plea in law must be rejected as ineffective.
Third plea: infringement of Article 47(2) of Regulation 2017/1001
25      The applicant claims that the Board of Appeal erred in concluding that the evidence submitted by the intervener proved genuine use of the earlier mark for ‘motor vehicles’ in Class 12.
26      Under Article 47(2) of Regulation 2017/1001, if the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition must furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which he or she cites as justification for his opposition, or that there are proper reasons for non-use, provided that the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to that effect, the opposition must be rejected. If the earlier EU trade mark has been used in relation to only part of the goods or services for which it is registered, it must, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
27      It is apparent from Article 10(3) of Delegated Regulation 2018/625 that the evidence of use must establish the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.
28      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. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgments of 31 January 2019, Pandalis v EUIPO, C‑194/17 P, EU:C:2019:80, paragraph 83 and the case-law cited, and of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraphs 31 and 32 and the case-law cited).
29      The applicant does not raise any arguments to challenge the Board of Appeal’s conclusion that the evidence produced by the intervener before the Opposition Division established the time and place of the use of the earlier mark. It claims that use of the earlier mark has not been proved for ‘motor vehicles’ in Class 12.
30      In the contested decision, with regard to the nature of the use, the Board of Appeal in the first place found that the evidence of use produced by the intervener before the Opposition Division clearly showed that the sign VOLKSWAGEN, which was also in the intervener’s company name, was used as a trade mark in the course of trade. In the second place, it stated that that evidence showed use of the earlier mark in the form in which it was registered, namely as the word mark VOLKSWAGEN. It noted that that evidence showed that the intervener also used other signs, such as car model names, the abbreviation of the earlier mark, namely ‘VW’, and the logo including that abbreviation, be it separately or in combination with the earlier mark. In the third place, the Board of Appeal confirmed the Opposition Division’s finding that it was clear from the evidence produced before it that the earlier mark had a presence in the field of vehicles. However, it added that that evidence proved only genuine use of the earlier mark for ‘motor vehicles’ in Class 12, constituting a subcategory of the category of vehicles.
31      Furthermore, the Board of Appeal found that the evidence submitted by the intervener concerning sale figures for VOLKSWAGEN vehicles in Europe showed that, during the relevant period, there was commercial use of the earlier mark at a level which was sufficient to establish genuine use.
32      In the first place, the applicant argues that the Board of Appeal disregarded the evidence in which the word ‘volkswagen’ was used as a company name without designating the goods at issue. He submits that the Board of Appeal’s general statement that the sign VOLKSWAGEN had also been used other than as a company name is not sufficient to establish its use as a trade mark.
33      According to the case-law, there is use ‘in relation to goods’ when the proprietor of the mark affixes the sign constituting its company, trade or shop name to the goods which it markets or to the packaging. Furthermore, even where the sign is not affixed, there is use ‘in relation to goods’ where the sign is used in such a way that a link is established between the sign which constitutes the company, trade or shop name and the goods marketed. Where that condition is satisfied, the fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods or services (see judgment of 5 March 2020, Dekoback v EUIPO – DecoPac (DECOPAC), T‑80/19, not published, EU:T:2020:81, paragraph 61 and the case-law cited).
34      The applicant does not explain why evidence relating only to the use of the word ‘volkswagen’ as a company name would be relevant for establishing use of the sign VOLKSWAGEN as a trade mark and he cannot validly criticise the Board of Appeal for not having taken into account that evidence.
35      In addition, contrary to what the applicant claims, the Board of Appeal did not merely state that the sign VOLKSWAGEN had been used ‘otherwise than as a company name’, but cited extracts from the evidence produced and found that it established a clear link between the use of the sign VOLKSWAGEN and vehicles and, therefore, that that sign was used as a trade mark.
36      It is sufficient to state in that regard that the Board of Appeal relied in particular on Enclosures 2, 5, 7, 8 and 11 concerning awareness of the earlier mark and its reputation as a German automobile trade mark; on Enclosure 4 concerning use of the sign VOLKSWAGEN in combination with the word ‘golf’ to designate a car model; on Enclosures 9 and 10 containing extracts from the intervener’s website stating ‘if you own a Volkswagen vehicle’ and clarifying that VOLKSWAGEN is a registered trade mark, and on Enclosures 13 to 15, which contain extracts from the intervener’s German website in which the expression ‘your Volkswagen’ is used, which, in the view of the Board of Appeal, clearly establishes a link between the sign and the goods at issue.
37      In the second place, the applicant claims that the cars manufactured by the intervener are marketed using the abbreviation for VOLKSWAGEN, namely ‘VW’, or the VW logo. He submits that, in several items of evidence submitted by the intervener in which the abbreviation ‘VW’ or the VW logo appears, there is nothing to suggest that the use of the word ‘volkswagen’ refers not to that abbreviation ‘VW’ or to that logo, but to the earlier mark. Similarly, Enclosure 11, which is an extract from the website ‘de.statista.com’ in which a graphic shows that VOLKSWAGEN is known as an automotive brand to 98% of the German public, does not mean that the reputation concerns solely the trade mark and it cannot be excluded that the public associates the word ‘volkswagen’ with the company Volkswagen as a car manufacturer. The applicant claims that the reputation of Volkswagen as a car manufacturer and the use of the abbreviation ‘VW’ or of the VW logo do not constitute proof of genuine use of the earlier mark. Enclosures 2, 7, 8 and 11 cannot be read as referring exclusively to the word sign VOLKSWAGEN.
38      It should be noted that Enclosure 2 is a press article published on 12 November 2015 on the website ‘horizont.net’, which includes a photograph of the VW logo and which is entitled ‘Volkswagen gehört weiterhin zu den stärksten deutschen Automarken’ (Volkswagen remains one of the strongest German car brands). Enclosure 7 is an extract from the website ‘handelsblatt.com’, dated 30 June 2020, which states that the ‘Brand Finance Global 500’ ranking chose VOLKSWAGEN as one of the strongest brands and includes a photograph of the VW logo. Enclosure 8 is an extract from the website ‘rankingthebrands.com’, which indicates that the 2020 Brand Finance Global 500 report ranked VOLKSWAGEN as the 25th strongest brand in the world and includes the VW logo and the abbreviation ‘VW’. In addition, Enclosure 11 is made up of an extract from the website ‘de.statista.com’ from 16 June 2020 entitled ‘Bekanntheit deutscher Marken des Automobilindustrie nach ausgewählten Ländern 2017’ (Awareness of German brands in the automotive industry in selected countries in 2017), which shows the statistical results of a survey on the reputation of German automobile marks in three countries and which indicates that 98% of the German public knew the VOLKSWAGEN brand.
39      Contrary to what the applicant claims, that evidence, which was produced by the intervener and taken into account by the Board of Appeal, relates not to the intervener’s reputation as a car manufacturer, but to the reputation of the earlier mark. The fact that the abbreviation ‘VW’ or the VW logo appears in certain places in that evidence is immaterial in so far as, by virtue of its content, it clearly refers to awareness of the VOLKSWAGEN sign as a trade mark.
40      Furthermore, according to the case-law, the condition of genuine use of a trade mark may only be satisfied where a trade mark is used in conjunction with another mark, provided that the first mark continues to be perceived as indicative of the origin of the product concerned (see judgments of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 142 and the case-law cited, and of 14 December 2022, Agrarfrost v EUIPO – McCain (Shape of a smiley), T‑553/21, not published, EU:T:2022:813, paragraph 57 and the case-law cited).
41      Consequently, contrary to what the applicant claims, the fact that, in certain places in the evidence submitted by the intervener, the earlier mark does not appear on its own, but with the abbreviation ‘VW’ or the VW logo, is immaterial to the assessment of genuine use of that mark.
42      Lastly, it is sufficient to point out that the applicant does not explain why the word ‘volkswagen’ might be perceived solely as a reference to the abbreviation ‘VW’ or to the VW logo and not as a representation of the earlier mark.
43      In the third place, the applicant claims that the Board of Appeal could not take into account Enclosure 12, which comprises a decision of the Bundesgerichtshof (Federal Court of Justice, Germany) of 11 April 2013, because that decision is not binding on EUIPO, was handed down before the relevant period and did not concern the genuine use of the earlier mark.
44      Suffice it to note that, on the one hand, the Board of Appeal referred to Enclosure 12 among a body of evidence establishing the reality of the commercial use of the earlier mark for vehicles. On the other hand, it took it into account only for the sake of completeness in its assessment of the extent of the use.
45      It follows that, even assuming that the Board of Appeal was not required to take Enclosure 12 into consideration, the applicant does not establish or even claim that the Board of Appeal’s assessment, either of the use of the sign VOLKSWAGEN in the course of trade or of the extent of use, would have been different and would have led to different conclusions.
46      In the fourth place, the applicant claims that the word ‘volkswagen’ can be read as meaning ‘a car manufactured by the company Volkswagen’ and that that meaning does not designate the origin of the goods and services, but is purely descriptive.
47      It is sufficient to point out that the applicant does not explain why the fact that the word ‘volkswagen’ could be understood as referring to the cars manufactured by the Volkswagen company does not correspond to the use of the sign VOLKSWAGEN in accordance with the essential function of the mark, which is to guarantee to the consumer the identity of the origin of the goods covered by the mark.
48      In the fifth place, the applicant claims, first, that the Board of Appeal asserted, without giving reasons, that the use of the earlier mark in combination with car model names, the abbreviation ‘VW’ or the VW logo did not alter its finding that the earlier mark had been put to genuine use in the form in which it had been registered.
49      That argument cannot be upheld. It should be noted, on the one hand, that the Board of Appeal found that the evidence submitted by the intervener showed that the earlier mark was used in the form in which it had been registered, namely as the word mark VOLKSWAGEN. It specified that that was also the case where the earlier mark was used with other signs such as car model names, the abbreviation ‘VW’ or the VW logo.
50      On the other hand, the Board of Appeal indicated that it was not apparent from the evidence submitted by the intervener that the earlier mark was used in a form different from that under which it had been registered, but that several signs were used simultaneously without altering the distinctive character of the registered sign. It added that the joint use of separate marks, such as the name of the core brand and the name of various car models as well as a logo, was common commercial practice in the vehicle sales sector.
51      Second, the applicant cannot validly argue that the use of a car model name, the abbreviation ‘VW’ or the VW logo in combination with the earlier mark is capable of altering that mark’s distinctive character.
52      It is sufficient to note in that regard that the applicant does not dispute that the earlier mark is used in the form in which it was registered, namely as a word mark. He does not claim that, in the evidence submitted by the intervener, the sign VOLKSWAGEN appears in a form different from that under which it was registered.
53      Furthermore, according to the case-law, there is no rule in the EU trade mark system that obliges the opponent to prove the use of the trade mark on its own, independently of any other mark or sign. Therefore, the case could arise where two or more trade marks are used jointly and autonomously, with or without the name of the manufacturer’s company (see judgments of 8 July 2020, Austria Tabak v EUIPO – Mignot & De Block (AIR), T‑800/19, not published, EU:T:2020:324, paragraph 14 and the case-law cited, and of 19 October 2022, Castel Frères v EUIPO – Shanghai Panati (Representation of Chinese characters), T‑323/21, not published, EU:T:2022:650, paragraph 14 and the case-law cited). Thus, joint use of other signs with the earlier mark cannot, in itself, undermine the function of the mark as a means of identifying the products at issue (see, to that effect, judgments of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 36, and of 19 October 2022, Representation of Chinese characters, T‑323/21, not published, EU:T:2022:650, paragraph 14).
54      Third, it must be pointed out that the applicant does not present any evidence in support of his claim that the public is used to the origin of the cars being designated by the abbreviation ‘VW’ or the VW logo and not by the sign VOLKSWAGEN, which will be seen as a mere addition.
55      In any event, that claim is contrary to the practices in the automobile sector, as reported by the Board of Appeal and the intervener, whereby the public is accustomed to several trade marks being used simultaneously. Indeed, it is common in the automobile sector to use a core brand in combination with car model names or with an abbreviation or a logo.
56      It follows from all of the foregoing that the third plea must be rejected as manifestly unfounded.
Second plea: infringement of Article 8(1)(b) of Regulation 2017/1001
57      The applicant claims that the Board of Appeal wrongly concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. This plea is divided, in essence, into two parts, alleging that the Board of Appeal committed errors of assessment concerning, first, the comparison of the ‘motor vehicles’ covered by the earlier mark and the services in Class 37 covered by the mark applied for, referred to in paragraph 10 above, and, second, the comparison of the signs at issue.
58      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
59      The risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
60      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgments of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 47 and the case-law cited, and of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
61      In the contested decision, the Board of Appeal considered that the goods in Class 12 covered by the earlier mark and the services in Class 37 covered by the mark applied for, referred to in paragraph 10 above, targeted the public at large and the professional public, both of whom have a high level of attention. It indicated that the relevant territory for assessing the likelihood of confusion was the European Union and that it was focusing its assessment on the non-German- and non-Dutch-speaking part of the relevant public.
62      The applicant does not challenge those conclusions of the Board of Appeal.
First part: errors of assessment concerning the comparison of the ‘motor vehicles’ in Class 12 covered by the earlier mark and the services in Class 37 covered by the mark applied for
63      The applicant challenges the Board of Appeal’s conclusions concerning the similarity of the ‘motor vehicles’ in Class 12 covered by the earlier mark and the services in Class 37 covered by the mark applied for, referred to in paragraph 10 above, which he divides into three categories: (i) vehicle maintenance and repair services; (ii) vehicle retrofit and conversion services; and (iii) maintenance and repair services concerning mechanical, technical or electronic parts of the vehicles.
64      According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see judgments of 11 November 2020, EUIPO v John Mills, C‑809/18 P, EU:C:2020:902, paragraph 100 and the case-law cited, and of 22 September 2021, Sociedade da Água de Monchique v EUIPO – Ventura Vendrell (chic ÁGUA ALCALINA 9,5 PH), T‑195/20, EU:T:2021:601, paragraph 39 and the case-law cited).
65      Other factors may also be taken into account, such as the distribution channels of the goods or services concerned or the fact that those goods or services are often sold in the same specialist sales outlets, which is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the impression that the same undertaking is responsible for the production of those goods or provision of those services (see judgment of 2 June 2021, Himmel v EUIPO – Ramirez Monfort (Hispano Suiza), T‑177/20, EU:T:2021:312, paragraph 44 and the case-law cited).
66      Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see judgment of 22 September 2021, chic ÁGUA ALCALINA 9,5 PH, T‑195/20, EU:T:2021:601, paragraph 46 and the case-law cited).
–       Comparison of ‘motor vehicles’ and vehicle maintenance and repair services
67      In the contested decision, the Board of Appeal considered that vehicle maintenance and repair services in Class 37 and ‘motor vehicles’ in Class 12 were similar to an average degree on the ground that they were complementary and that they could share the same distribution channels.
68      The applicant argues that the Board of Appeal was wrong to conclude that ‘motor vehicles’ in Class 12 and vehicle maintenance and repair services shared the same distribution channels. The Board of Appeal relied on the existence of a network of the car manufacturer’s official partners without taking account of the way in which they operate and how they are perceived by the relevant public. He submits that the Board of Appeal relied on the assumption – which is incorrect and which contradicts economic reality – that consumers only seek the services of the authorised partners of the car manufacturers and consider those partners to be economically linked to the manufacturers.
69      In the first place, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that ‘motor vehicles’ in Class 12 and vehicle maintenance and repair services target the same public.
70      In the second place, it is sufficient to observe that the applicant does not raise any arguments to challenge the Board of Appeal’s assessment that there is a complementarity between ‘motor vehicles’ and vehicle maintenance and repair services, owing to the fact that the use of vehicles necessitates regular repair, maintenance or replacement of parts.
71      It is appropriate to reject as ineffective the applicant’s argument that the fact that the relevant public may regard goods or services as complementary is not sufficient for the public to believe that they have the same commercial origin. According to the applicant, the public would have to consider it usual for them to be sold under the same trade mark.
72      The applicant relies on the case-law according to which the existence of an aesthetically complementary nature between the goods at issue is not enough to establish similarity between them. For that, the consumers must consider it normal that the goods are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same (judgments of 1 March 2005, Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI), T‑169/03, EU:T:2005:72, paragraph 63, and of 11 July 2007, Mülhens v OHIM – Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraph 37).
73      Suffice it to point out, however, that, in the present case, the complementarity between motor vehicles, on the one hand, and vehicle maintenance and repair services, on the other, stems not from a mere aesthetic connection, but from a functional connection, each one being indispensable or important for the use of the other (see, to that effect, judgment of 27 February 2020, Knaus Tabbert v EUIPO – Carado (CaraTwo), T‑203/19, not published, EU:T:2020:76, paragraph 47).
74      In any event, the Court has found that vehicle repair, maintenance and servicing services in Class 37 and goods in Class 12 are often provided by the same undertakings which market motor vehicles (judgment of 26 January 2006, Volkswagen v OHIM – Nacional Motor (Variant), T‑317/03, not published, EU:T:2006:27, paragraph 44).
75      In the third place, the applicant submits that the Board of Appeal was wrong to conclude that ‘motor vehicles’ and vehicle maintenance and repair services shared the same distribution channels.
76      It is sufficient to note that the applicant focuses his arguments on the perception by the consumer of the links between car manufacturers and their authorised partners, without however disputing that those partners are likely to sell vehicles and to offer vehicle maintenance and repair services.
77      In that regard, in the application, the applicant asserts that the car manufacturer’s authorised partners ‘may act as both dealers for the vehicles produced by the car manufacturer and providers of authorised garages/maintenance and repair services’. He also states that ‘it is common knowledge that the official authorised partners tend to provide premium services’ and that ‘it is necessary for the authorised partners to inform the public about which car manufacturers (car brands) they cooperate with’.
78      This shows that the applicant acknowledges that motor vehicle sales and vehicle maintenance and repair services may be offered in the same place, by the same undertaking, in particular by official dealers for the car manufacturer, under the same trade mark and that he cannot therefore validly dispute that they share the same distribution channels.
79      Moreover, it is worth recalling that the Board of Appeal also found that the car manufacturer itself could distribute vehicles and offer vehicle repair and maintenance services. It relied in particular on Enclosures 9, 10 and 13 to 15, which contain extracts from the intervener’s websites concerning vehicle service and maintenance plans and programmes and repair and maintenance services offered by it.
80      The applicant, however, does not raise any arguments to dispute that the intervener offered such services.
81      It follows from the foregoing that, in so far as the applicant disputes neither the existence of a functional complementarity between ‘motor vehicles’ and vehicle maintenance and repair services nor the fact that they share the same distribution channels, he cannot legitimately dispute that those goods and services are similar to an average degree.
82      That conclusion is not called into question by the applicant’s arguments.
83      First, it should be noted that the Board of Appeal relied on the fact that vehicle maintenance and repair services could be provided by a car manufacturer’s official dealers in order to establish that those services and ‘motor vehicles’ shared the same distribution channels and not, as the applicant claims, in order to establish their complementarity.
84      Second, contrary to what the applicant claims, the Board of Appeal did not rely on the assumption that vehicle maintenance and repair services are provided exclusively by car manufacturers’ authorised partners and not in independent garages. It merely pointed out that it was common in the automotive industry for the place of distribution of vehicles of a specific brand also to offer repair, maintenance and installation services for those vehicles under the same brand. In taking the view that car manufacturers’ official dealers offered vehicle repair and maintenance services, the Board of Appeal did not exclude that such services may also be supplied by independent providers.
85      Third, the applicant is also wrong to criticise the Board of Appeal for having relied on the assumption that the cooperation between a car manufacturer and its authorised garages is exclusive.
86      It is sufficient to note in that regard that the Board of Appeal relied on a practice of the motor vehicle market whereby official dealers in a vehicle brand’s distribution network also offer repair and maintenance services in finding that those goods and services are offered under the same brand, at the same point of sale and target the same end consumer.
87      That assessment of the Board of Appeal does not preclude other providers, such as authorised garages, from being able to provide repair and maintenance services for different brands of vehicle. The applicant’s argument that authorised garages cooperate with several car manufacturers is thus ineffective.
88      Fourth, the applicant argues, in essence, that the fact that vehicle repair and maintenance services can be provided by authorised partners of car manufacturers is not sufficient for the relevant public to consider that those services and motor vehicles have the same commercial origin or that manufacturers and their authorised partners are linked economically. He claims that the relationship between a car manufacturer and its authorised partners is based strictly on business cooperation between two independent entities.
89      It is appropriate to recall that, in accordance with the case-law cited in paragraph 65 above, the fact that ‘motor vehicles’ and vehicle repair and maintenance services share the same distribution channels, that is to say, they are offered by the same undertaking, in the same sales outlet and under the same trade mark, is such as to strengthen the impression that the same undertaking is responsible for the production of those goods or the provision of those services.
90      In that regard, it should be noted that the applicant’s arguments do not relate to the assessment of the similarity of the goods and services at issue. In so far as those arguments concern, in essence, the global assessment of the likelihood of confusion, suffice it to hold that they are ineffective.
91      In accordance with the case-law cited in paragraph 59 above, the assessment of the likelihood of confusion means that a certain interdependence between different factors must be taken into account, in particular the level of attention of the relevant public, the degree of similarity of the goods and services covered by the marks at issue, the degree of similarity of the signs at issue and the distinctiveness of the earlier mark. However, the economic links that might exist between the proprietor of the earlier mark and its authorised partners are not among the relevant factors in that assessment.
92      In any event, it should be recalled that the Board of Appeal referred to the services provided by official dealers as part of a car manufacturer’s distribution network. The applicant cannot reasonably claim that consumers will perceive such a dealer, which sells vehicles and which provides maintenance and repair services under that manufacturer’s trade mark, as not being economically linked to the manufacturer.
93      It is sufficient to note in that regard that the Court of Justice has observed that the essential function of the trade mark is in no way compromised by the freedom to import where the proprietor of the mark in the importing State and the proprietor of the mark in the exporting State are one and the same or where, even if they are separate persons, they are economically linked. It has held that an economic link exists where, inter alia, the goods in question have been put into circulation by a licensee, by a parent company, by a subsidiary of the same group, or by an exclusive distributor. In all those situations, the trade mark proprietor or the entity of which that proprietor is part can control the quality of the goods to which the mark is affixed (see, by analogy, judgment of 20 December 2017, Schweppes, C‑291/16, EU:C:2017:990, paragraphs 43 and 44 and the case-law cited).
94      Furthermore, the applicant merely claims that the Board of Appeal relied on a number of earlier EUIPO decisions to conclude that ‘motor vehicles’ in Class 12 and vehicle maintenance and repair services in Class 37 were similar. He disputes the assessments contained in those decisions as well as their relevance to the present case.
95      It should be noted in that regard that, after having assessed the functional complementarity between vehicle maintenance and repair services and ‘motor vehicles’, the Board of Appeal referred to several EUIPO decisions solely for the sake of completeness, in order to illustrate the fact that that complementarity had already been established.
96      The applicant’s arguments concerning those decisions are therefore ineffective.
–       Comparison of ‘motor vehicles’ and vehicle retrofit and conversion services
97      In the contested decision, referring to the reasoning concerning vehicle maintenance and repair services, the Board of Appeal found that ‘motor vehicles’ in Class 12, on the one hand, and vehicle retrofit and conversion services and vehicle tuning in Class 37, on the other, were complementary and shared the same distribution channels and that they were similar, at least to a certain degree.
98      The applicant claims that vehicle tuning is usually offered by independent specialised workshops and interferes with a vehicle’s settings. Car manufacturers have no interest in altering the settings of a vehicle as they have defined them. Retrofit and conversion services provide vehicles with newer parts and change vehicles in a way that has been neither anticipated nor endorsed by the car manufacturer.
99      It should be noted that the applicant does not challenge the Board of Appeal’s findings that, first, vehicle retrofit, conversion and tuning services require extensive mechanical, technical and electronic knowledge of vehicles and, second, the manufacturer and its authorised distributors, as specialists in vehicles of a specific brand, possess such knowledge, which will be sought by consumers.
100    In addition, EUIPO and the intervener contend that, contrary to what the applicant claims, vehicle manufacturers and their dealers provide such services and that consumers are likely to contact them directly. In that regard, the intervener maintains that the manufacturer and its authorised partners have original spare parts and that it is in a manufacturer’s interest to upgrade a vehicle’s basic configuration in order to satisfy its customers. EUIPO also submits that car manufacturers are not restricted to selling vehicles, but have an interest in offering additional services, such as vehicle tuning services.
101    It is sufficient to hold that, by his unsubstantiated claims, the applicant does not establish that the Board of Appeal erred in finding that those services could be provided by the car manufacturer and its official dealers and that they therefore shared the same distribution channels as ‘motor vehicles’ in Class 12.
102    With regard to the applicant’s arguments that the earlier EUIPO decisions referred to by the Board of Appeal do not confirm the conclusions of that board, it is sufficient to hold that they are ineffective. After all, the Board of Appeal did not rely on such decisions in support of its reasoning.
–       Comparison of ‘motor vehicles’ and maintenance and repair services concerning mechanical, technical or electronic parts of the vehicles
103    The applicant claims that the fact that maintenance and repair services concerning mechanical, technical or electronic parts of the vehicles in Class 37 relate to vehicle parts does not mean that vehicle owners would seek them directly from the car manufacturer or its authorised partners. Services concerning vehicle design, luggage nets or luggage carriers are more likely to be provided by specialised garages.
104    It is sufficient to hold that those arguments of the applicant are unsubstantiated and are not such as to call into question the Board of Appeal’s assessment that maintenance and repair services concerning mechanical, technical or electronic parts of the vehicles and ‘motor vehicles’ are functionally complementary and share the same distribution channels or its conclusion that they are similar to an average degree.
105    It follows from all of the foregoing that the first part must be rejected as manifestly unfounded.
Second part: errors of assessment concerning the comparison of the signs at issue
106    In the contested decision, the Board of Appeal found that both the word element ‘volkswagen’ comprising the earlier mark and the word element ‘voltwagen’ comprising the mark applied for would be perceived, as a whole, as a meaningless expression, at least for the non-German- and non-Dutch-speaking part of the relevant public. It concluded that the signs at issue were visually and phonetically similar to a high degree. It considered that the conceptual comparison remained neutral in so far as, for the non-German- and non-Dutch-speaking part of the relevant public, neither of the signs at issue conveyed a concept as a whole.
107    As a preliminary point, it should be noted that the applicant does not dispute the Board of Appeal’s conclusion that the signs at issue were very similar on the visual level.
108    As regards the phonetic comparison, the Board of Appeal observed that the signs at issue would be pronounced the same way depending on the relevant language, with three syllables: on the one hand, ‘volks’, ‘wa’ and ‘gen’ and, on the other, ‘volt’, ‘wa’ and ‘gen’, the only difference being at the end of their first syllable, ‘ks’ and ‘t’ respectively.
109    The applicant simply claims that the Board of Appeal erred in not taking into account the different pronunciation of the first letters of the signs at issue, the ‘v’ of the sign VOLKSWAGEN being pronounced as ‘f’.
110    Suffice it to point out in that regard that the applicant does not explain why, depending on the language spoken by the non-German- and non-Dutch-speaking part of the relevant public taken into consideration by the Board of Appeal, the initial ‘v’ would be pronounced differently in each of the signs at issue.
111    In any event, the applicant does not claim that a different pronunciation of the first letter of each of the signs at issue would call into question the high degree of phonetic similarity of those signs.
112    As regards the conceptual comparison, the applicant submits that the relevant public will immediately grasp the concept of both of the signs at issue. On the one hand, the earlier sign will be understood as the combination of the words ‘volk’ and ‘wagen’ and as meaning the ‘people’s car’. That concept will be known to the public throughout the European Union on account of VOLKSWAGEN’s promotional activities. On the other hand, the applicant claims that, in any event, the expression ‘voltwagen’ has a clear semantic content for the relevant public. The sign applied for will be understood as the combination of the words ‘volt’ and ‘wagen’ and is a clear reference to electric cars. The word ‘volt’ is known by the public throughout the European Union as a unit for measuring electrical force and the word ‘wagen’ is part of basic vocabulary which is understood even by part of the public at large whose level of German knowledge is not proficient. The applicant claims that the conceptual differences between the signs at issue are sufficient to overcome the visual and phonetic similarities.
113    It should be noted that the applicant relies on the case-law according to which the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract visual and phonetic similarities between them, provided that at least one of those signs has a clear and specific meaning for the relevant public, with the result that that public is capable of grasping it immediately (judgments of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 20, and of 17 September 2020, EUIPO v Messi Cuccittini, C‑449/18 P and C‑474/18 P, not published, EU:C:2020:722, paragraph 85).
114    It is sufficient to point out, however, that the conditions set out in that case-law are not met in the present case.
115    The Board of Appeal, by excluding the German- and Dutch-speaking part of the relevant public, took into account the part of the public for whom the signs at issue were meaningless.
116    The applicant, however, merely asserts, without proof, that the signs at issue, as a whole, have a meaning for a substantial part of the public of the European Union that speaks neither German nor Dutch. He does not prove that that part of the relevant public breaks down the word elements of the signs at issue into words which have a meaning for it. In that regard, as EUIPO and the intervener maintain, the applicant submits no evidence in support of his claim that the words ‘volk’, ‘volt’ and ‘wagen’ can be understood by the non-German- and non-Dutch-speaking part of the relevant public.
117    It follows that the second part must be rejected as manifestly unfounded and, accordingly, the second plea must be rejected in its entirety.
118    It follows from all of the foregoing that the action must be dismissed as manifestly lacking any foundation in law.
Costs
119    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.
120    Since the applicant has been unsuccessful, he 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 costs to be awarded against the applicant only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Mr Štefan Košovan shall bear his own costs and pay those incurred by Volkswagen AG.
3.      The European Union Intellectual Property Office (EUIPO) shall bear its own costs.
Luxembourg, 10 January 2025.
V. Di Bucci
A. Kornezov
Registrar
President
*      Language of the case: English.