JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
1 October 2025 (*)
( EU trade mark – Invalidity proceedings – EU
word mark teamplay – Earlier national word mark TEAMPLAY – Relative ground for invalidity – Genuine use of the earlier mark – Article 57(5) of Regulation (EC) No 207/2009 – Article 15(1) of Regulation No 207/2009 – Independent subcategory of goods and services – Likelihood of confusion – Similarity between the goods and services – Article 8(1)(b) and Article 53(1)(a) of Regulation No 207/2009 )
In Case T‑1175/23,
Siemens Healthineers AG, established in Forchheim (Germany), represented by M. Taxhet, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Sunware s. r. o., established in Prague (Czech Republic),
THE GENERAL COURT (Seventh Chamber),
Composed, at the time of the deliberations, of K. Kowalik-Bańczyk, President, E. Buttigieg (Rapporteur) and I. Dimitrakopoulos, Judges,
Registrar: J. Čuboň, Administrator,
having regard to the written part of the procedure,
further to the hearing on 23 January 2025,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Siemens Healthineers AG, seeks the annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 October 2023 (Case R 747/2022-5) (‘the contested decision’).
I.      Background to the dispute
2        On 17 July 2020, the other party to the proceedings before the Board of Appeal, Sunware s.
r.
o.
, filed an application with EUIPO for a declaration of invalidity of the EU mark which had been registered following an application filed on 20 October 2014 by Siemens Aktiengesellschaft, the predecessor in law to the applicant, for the word sign teamplay.
3        The goods and services covered by the contested mark, in respect of which a declaration of invalidity was sought, were in Classes 9 and 42 in particular of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:
–        Class 9: ‘Data processing programs and computer software relating to medical data and information; electronic data receivers for the transmission and comparison of medical data and information’;
–        Class 42: ‘Development, generation and renting of data processing programs; development (setting up) of databases; analysis of data; evaluation of information; creation of statistics; creation and development of pages for the Internet; all the aforesaid services solely in the field of medical data and information’.
4        The application for a declaration of invalidity was based on the earlier Czech work TEAMPLAY, registered under No 333 931, covering, in particular, goods and services in Classes 9 and 42 and corresponding, for each of those classes, to the following description:
–        Class 9: ‘Computer software’;
–        Class 42: ‘Computer software rental, software creation, software as a service, consulting services in the field of information technologies’.
5        The ground relied on in support of the application for a declaration of invalidity was that referred to in Article 60(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), read in conjunction with Article 8(1)(b) of the same regulation.
6        Following a request made by the applicant before the Cancellation Division, EUIPO invited Sunware to furnish proof of genuine use of the earlier mark which had been relied on in support of the application for a declaration of invalidity. Sunware complied with that request within the time limit set.
7        By decision of 31 March 2022, the Cancellation Division upheld the application for a declaration of invalidity in part by declaring the contested mark invalid in respect of all the goods in question in Class 9 and in respect of all the services in question in Class 42 except for the ‘creation of statistics, solely in the field of medical data and information’.
8        On 4 May 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
9        By a communication from the Rapporteur of 5 July 2023, Sunware was invited to clarify the type of software marketed under the earlier mark, the method of delivering that software and the way in which the earlier mark was used in connection with that software.
On 10 September 2023, Sunware submitted its reply to the communication. On 20 September 2023, the applicant submitted its observations on that reply.
10      By the contested decision, the Board of Appeal upheld the appeal in part. It accordingly found that the application for a declaration of invalidity had to be rejected not only in respect of services of ‘creation of statistics, solely in the field of medical data and information’ in Class 42, but also in respect of services of ‘creation and development of pages for the Internet; all the aforesaid services solely in the field of medical data and information’ in that class. It noted, however, that the application for a declaration of invalidity had to be upheld in respect of the other goods and services referred to in paragraph 3 above since a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 was established regarding the latter. More specifically, it found in inter alia that those other goods and services were similar to the subcategories of goods and services in respect of which the genuine use of the earlier mark had been proved, namely ‘computer software, namely, information system software’ in Class 9 and ‘software as a service, namely, information system software as a service’ in Class 42.
II.    Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision and the decision of the Cancellation Division in so far as it declared the contested mark invalid in respect of some of the goods and services in Classes 9 and 42 and ensure that the contested mark remain in the Register of EU trade marks in respect of the goods and services concerned;
–        order EUIPO and Sunware to pay the costs incurred before the Court and in the proceedings before EUIPO.
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.
III. Law
13      Given the date on which the application for registration at issue was filed, namely 20 October 2014, which is decisive for the purpose of identifying the applicable substantive law, the facts of the present case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), as amended (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the applicant and EUIPO in their arguments to Article 8(1)(b), Article 18(1), Article 60(1)(a) and Article 64(5) of Regulation 2017/1001, should be understood as referring to Article 8(1)(b), Article 15(1), Article 53(1)(a) and Article 57(5) of Regulation No 207/2009, which are identical in content.
14      Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
15      In support of its action, and as is apparent from the hearing, the applicant relies on four pleas in law alleging, first, infringement of Article 95(1) of Regulation 2017/1001, secondly, infringement of the right to be heard, thirdly, infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 57(5) of that regulation, and, fourthly, infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation.
16      It is appropriate to begin by examining the second plea.
The second plea in law, alleging infringement of the right to be heard
17      The applicant claims, in essence, that the Board of Appeal infringed the applicant’s right to be heard since it completely disregarded some of the applicant’s arguments relating to the content and the interpretation of the evidence of genuine use of the earlier mark submitted by Sunware.
18      EUIPO disputes those arguments.
19      It should be borne in mind that, in EU trade mark law, Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision lays down the general principle of protection of the rights of the defence, which is also laid down in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union (see judgment of 26 March 2020, Armani v EUIPO – Asunción (GIORGIO ARMANI le Sac 11), T‑653/18, not published, EU:T:2020:121, paragraph 25 and the case-law cited).
20      The right to be heard guarantees every person the opportunity to make known his or her views effectively during an administrative procedure and before the adoption of any decision liable to affect his or her interests adversely (see judgment of 4 June 2020, EEAS v De Loecker, C‑187/19 P, EU:C:2020:444, paragraphs 68 and 69 and the case-law cited).
21      That right extends to all the factual and legal material which form the basis for the decision, but not to the final position which the authority intends to adopt (see judgment of 13 May 2020, Clatronic International v EUIPO (PROFI CARE), T‑5/19, not published, EU:T:2020:191, paragraph 102 and the case-law cited).
22      In the present case, in order to prove infringement of its right to be heard, the applicant does not claim that it was not put in a position to make known its views effectively on the factual and legal material which formed the basis of the contested decision. The applicant refers only to the alleged failure, by the Board of Appeal, to take into account the claims which the applicant made before it. By those arguments, the applicant also intends to call into question the findings which the Board of Appeal made which do not align with the arguments put forward by the applicant. The fact that the Board of Appeal did not accept the applicant’s arguments does not mean that the applicant’s right to be heard has not been respected in the present case. The right to be heard does not mean the right to have one’s argument prevail (judgment of 7 December 2018, Edison v EUIPO (EDISON), T‑471/17, not published, EU:T:2018:887, paragraph 72).
23      Accordingly, the second plea in law must be rejected.
The first plea in law, alleging infringement of Article 95(1) of Regulation 2017/1001
24      As a preliminary point, it must be noted that the applicant stated at the hearing, in response to a question from the Court, that the first plea in law alleged only the infringement of Article 95(1) of Regulation 2017/1001, reference to Article 27(4) of that regulation in the application having been made in error. The Court took formal note of that point.
25      The applicant criticises, in essence, the Board of Appeal for not carrying out, of its own motion, an additional examination which would have allowed it to find that information system software was not an independent subcategory of software. It adds that, in the observations submitted by Sunware in the document of 10 September 2023, Sunware had not claimed to have marketed information system software.
26      EUIPO disputes the applicant’s arguments.
27      Under Article 95(1) of Regulation 2017/1001, in invalidity proceedings, EUIPO is to limit its examination to the grounds and arguments submitted by the parties. In addition, it is apparent also from Article 19(2) 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), that it is for the proprietor of the contested mark to adduce proof of genuine use.
28      Accordingly, in the present case, the Board of Appeal did not infringe Article 95(1) of Regulation 2017/1001 by limiting its examination of the proof of genuine use of the earlier mark to the grounds submitted and the applications made by the parties before it, in addition to the evidence submitted by Sunware.
29      Furthermore, as regards the applicant’s argument that the Board of Appeal excluded the observations submitted on 10 September 2023 by Sunware, it must be observed that the latter claimed that it marketed various types of software which aim to manage and ensure the quality of production and storage processes, to plan the shifts of different teams and to implement an online training platform. It should be noted that that software may be included in the category of ‘information system software’, as defined by the Board of Appeal. The Board of Appeal found that information system software included various application software, which facilitate, inter alia, data collection, storage, retrieval, processing, and reporting for various purposes, including decision-making, data analysis, and efficient operation of an organisation for its business operations.
30      In those circumstances, the mere fact that Sunware did not strictly use the expression ‘information system software’ does not make it possible to find that the Board of Appeal relied on grounds or arguments which had not been submitted before it.
31      It follows that the applicant is not justified in claiming that the Board of Appeal infringed Article 95(1) of Regulation
2017/1001. Consequently, the first plea in law must be rejected.
The third plea in law, alleging infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 57(5) of that regulation
32      In its third plea in law, the applicant submits, in essence, that the Board of Appeal made an error of assessment by finding that Sunware had shown that there was genuine use of the earlier mark for some of the goods and services in respect of which it is registered. In that regard, the applicant disputes the definition of the subcategories of ‘information system software’, in Class 9, and of ‘information system software as a service’ in Class 42, given by the Board of Appeal, and also the extent of the genuine use of the earlier mark for the goods and services referred to above.
33      EUIPO disputes the applicant’s arguments.
34      Under Article 57(5) of Regulation No 207/2009, if the examination of the application for a declaration of invalidity reveals that the trade mark should not have been registered in respect of some or all of the goods or services for which it is registered, the mark is to be declared invalid in respect of those goods or services.
35      Article 15(1) of Regulation No 207/2009 states that, if, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the European Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark is to be subject to the sanctions provided for in that regulation, unless there are proper reasons for non-use.
36      Under Article 57(2) of Regulation No 207/2009, if the proprietor of the EU
trade mark so requests, the proprietor of an earlier EU
trade mark, being a party to the invalidity proceedings, is to furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, 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 the proprietor of that earlier trade mark cites as justification for his application, 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 this effect, the application for a declaration of invalidity is to be rejected. If the earlier EU
trade mark has been used in relation to part only of the goods or services for which it is registered, it is, for the purpose of the examination of the application for a declaration of invalidity, to be deemed to be registered in respect only of that part of the goods or services.
37      Under Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), the proof of use must concern the place, time, extent and nature of use of the earlier trade mark.
38      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. Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraphs 37 and 43).
39      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
40      Furthermore, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).
41      In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case and entails a degree of interdependence between the factors taken into account. Accordingly, as regards the assessment of the extent of the use, a low volume of goods marketed under the trade mark may be compensated for by a high intensity of use or a period of very regular use of that trade mark or vice versa. In addition, the turnover and the volume of sales of the product under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. As a result, the Court of Justice has stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (see judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42 and the case-law cited).
42      Furthermore, an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 66 and the case-law cited). Accordingly, although the probative value of an item of evidence is limited to the extent that, individually, it does not show with certainty whether, and how, the goods or services concerned were placed on the market, and although that item of evidence is therefore not in itself decisive, it may nevertheless be taken into account in the global assessment as to whether the use is genuine. That is also true, for example, where that evidence corroborates the other relevant factors of the present case (see, to that effect, judgments of 6 March 2014, Anapurna v OHIM – Annapurna (ANNAPURNA), T‑71/13, not published, EU:T:2014:105, paragraph 45, and of 23 September 2015, L’Oréal v OHIM – Cosmetica Cabinas (AINHOA), T‑426/13, not published, EU:T:2015:669, paragraph 53).
43      In order to prove genuine use of the earlier mark between 17 July 2015 and 16 July 2020 (‘the relevant period’), Sunware submitted the following evidence before the Cancellation Division, the content of which was reiterated by the Board of Appeal in paragraph 7 of the contested decision:
–        invoices issued by Sunware during the relevant period, addressed to clients in the Czech Republic, referring to the use of the earlier mark, inter alia, for ‘implementation analysis of information system Teamplay’, ‘Teamplay – system core, takeway design’, ‘ordering system development – Teamplay’, and ‘TEAMPLAY – 3rd partially system extension’;
–        invoices issued by Sunware outside of the relevant period, in 2015 and 2020, addressed to clients in the Czech Republic and referring, inter alia, to the use of the earlier mark for ‘information system Teamplay’ and ‘service support package – information system Teamplay’;
–        a ‘software license agreement on the provision, use and maintenance of computer program Teamplay’, signed on 17 October 2016 between Sunware and a client in the Czech Republic;
–        an ‘offer [of] cooperation on a pilot implementation project’ entitled ‘TeamPlay Factory Q’, dated 9 January 2020 and addressed to a client in the Czech Republic;
–        ‘implementation price offers’ for ‘Teamplay enterprise’ and for ‘computer program TEAMPLAY’ dated 5 December 2016 and 30 January 2018, and addressed to clients in the Czech Republic, referring, in particular, to the sale of TEAMPLAY shift planner software, the price of delivering the software (namely Teamplay core and possibly selected modules) and the service contract for two years and for software modifications;
–        email exchanges dating from December 2016 between Sunware and clients based in the Czech Republic referring to, in particular, ‘the price of the software’ and the ‘service contract for [two] years’.
44      The Board of Appeal found, in paragraph 74 of the contested decision, that Sunware had shown genuine use of the earlier mark for the subcategories of goods and services covered by that mark, namely ‘computer software, namely, information system software’ in Class 9, and ‘software as a service, namely, information system software as a service’, in Class 42.
45      It must be noted that the applicant does not dispute the relevant period or the fact that the contested mark was used during that period. Moreover, it does not dispute the fact that the genuine use of that mark had to be demonstrated in the territory of the Czech Republic. By contrast, first, it criticises the Board of Appeal for finding that information system software was a subcategory of software in Class 9 and that information system software as a service was a subcategory of software as a service in Class 42. Secondly, it claims, in any event, that the proof submitted by the other party to the proceedings cannot show sufficiently extensive use of the earlier mark for those subcategories of goods and services.
The subcategories of information system software in Class 9 and of information system software as a service in Class 42
46      The Board of Appeal found in paragraph 71 of the contested decision, that the subcategories of ‘information system software’ and ‘information system software as a service’ were ‘a homogeneous category within the broader category of computer software, denoting specialised applications specifically designed for managing and optimising data within organisational contexts’. It specified that the latter formed a subcategory of the broader category of computer software since they enabled organisations to manage and utilise effectively information resources for their business operations.
47      The applicant claims that the definition of subcategories given by the Board of Appeal is incorrect. It argues that software can be split into only two subcategories, namely ‘application software’ and ‘system software’ which may, themselves, be subdivided. It submits, in essence, that ‘information system software’ is not a subcategory of software, but might, at most, refer to software as a whole. Consequently, in its view, the evidence submitted by Sunware cannot show use of the earlier mark for information system software in Class 9 and information system software as a service in Class 42.
48      In addition, at the hearing, the applicant stated that it had implicitly relied, in the application, on a complaint alleging that the statement of reasons for the contested decision was inadequate as regards the definition of the subcategories of goods and services for which genuine use had, according to the Board of Appeal, been proved.
49      EUIPO disputes the applicant’s arguments.
–       The statement of reasons for the contested decision
50      It is evident from an overall reading of the application that the applicant disputes the merits of the Board of Appeal’s findings, and not an absence of or an inadequate statement of reasons in that regard. As is apparent from the case-law, the review of compliance with the obligation to state reasons for a decision subject to review by the EU judicature, which relates to the infringement of essential procedural requirements and to the question whether the decision discloses in a clear and unequivocal fashion the reasoning followed by the institution which adopted it, must be distinguished from the review of the merits of that decision, which relates to the infringement of the applicable rules of law (see, to that effect, judgments of 2 April 1998, Commission v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraphs 63 and 67, and of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 35 and the case-law cited).
51      Assuming that the applicant intended to rely on the inadequacy of the statement of reasons as regards the definition of the subcategories of goods and services for which genuine use had allegedly been proved, it should be noted that the Board of Appeal stated, in paragraph 70 of the contested decision, that information systems refer, in particular, to software applications or a set of interconnected software applications and hardware components designed to manage, process, store, and distribute information within an organisation or across various entities. The Board of Appeal specified, moreover, that information systems were used in various industries to facilitate data collection, storage, retrieval, processing, and reporting for various purposes, including decision-making, data analysis, and efficient operation of an organisation. It accordingly explained, in paragraph 71 of that decision, that information system software was distinct from other software capable of being used, in particular, for word processing or as design tools.
52      In those circumstances, it must be held that the Board of Appeal therefore disclosed in a clear and unequivocal fashion the reasons for which it found that information system software and information system software as a service were independent subcategories of software and of software as a service.
53      Consequently, the applicant’s argument alleging infringement of the obligation to state reasons must be rejected.
–       The merits of the contested decision
54      As is apparent from Article 57(2) of Regulation No 207/2009 (see paragraph 36 above), and from settled case-law, if the earlier mark has been used only in relation to part of the goods or services for which it is registered, it is, for the purpose of the examination of the application for a declaration of invalidity, deemed to be registered in respect of that part of the goods or services only. Consequently, it must be borne in mind that, where a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong (see, to that effect, judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45, and of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23).
55      It also follows from the case-law that, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Accordingly, since consumers do employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a subcategory of goods or services (see judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 32 and the case-law cited; judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 29). By contrast, the nature of the goods or services at issue and their characteristics are not, as such, decisive with regard to the definition of subcategories of goods or services (judgment of 5 June 2024, Supermac’s v EUIPO – McDonald’s International Property (BIG MAC), T‑58/23, not published, EU:T:2024:360, paragraph 65).
56      It is important therefore to assess in a concrete manner – principally in relation to the goods or services for which the proprietor of a mark has furnished proof of use of his or her mark – whether those goods or services constitute an independent subcategory in relation to the goods and services falling within the class of goods or services concerned, so as to link the goods or services for which genuine use of the mark has been proved to the category of goods or services covered by the registration of that trade mark (judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 46).
57      In the present case, first, the applicant claims that the Board of Appeal has not defined the necessary subcategories on the basis of the criterion of the purpose or intended use. However, it must be observed that the Board of Appeal took into account, for the purpose of defining the subcategories of goods and services in Classes 9 and 42 covered by the earlier mark, the purpose of the information system software by referring to their ability, within an information system, to facilitate the use and management of information resources for the business operations of organisations.
58      Secondly, the applicant submits that it is appropriate to distinguish, amongst software, the subcategories of system software, on the one hand, and application software, on the other. However, contrary to what the applicant claims, such a distinction does not make it possible to call into question the fact that information system software is an independent subcategory of software. The Board of Appeal found, in paragraph 70 of the contested decision, that information system software covered a software application or several software applications and hardware components. Consequently, the applicant is not justified in claiming that the concept of ‘information system software’, adopted by the Board of Appeal, was as broad as the concept of software itself.
59      Thirdly, the applicant claims that an information system is system software. However, it is sufficient to find that it is referring, in that regard, to Annex A.11 to the application. First, it is not apparent from reading that annex that information system software is system software. Secondly, that annex contains texts which appear to originate from an internet forum and an artificial intelligence (AI) chatbot. The applicant does not identify the sources on which those texts are based.
60      It must accordingly be found that the Board of Appeal was correct to find that information system software and information system software as a service were independent subcategories of, respectively, software in Class 9 and software as a service in Class 42.
Proof of use of the earlier mark for information system software in Class 9 and information system software as a service in Class 42
61      In the global assessment of the evidence submitted by Sunware, the Board of Appeal noted, in paragraph 73 of the contested decision, that genuine use of the earlier mark for the subcategories of goods in Class 9, namely ‘information system software’, and of services in Class 42, namely ‘information system software as a service’, was demonstrated.
62      The applicant argues, in essence, that the evidence submitted by Sunware does not demonstrate sufficiently extensive use of the earlier mark for information system software in Class 9 and information system software as a service in Class 42. It takes the view, in particular, that, without an affidavit from Sunware confirming its turnover, the evidence cannot demonstrate sufficient turnover in respect of the information technology and software market of an EU country.
63      EUIPO disputes the applicant’s arguments.
64      In that regard, in the first place, concerning, in essence, how the earlier mark was used, it must be observed that the Board of Appeal carried out a global assessment of the evidence by referring, in paragraphs 47, 57, 63 to 66 and 74 of the contested decision, to the evidence submitted by Sunware taken as a whole, in particular the invoices submitted in items 1, 2, 3, 6 and 8, to find that genuine use of the earlier mark had been proved as regards the subcategories of ‘information system software’, in Class 9, and of ‘information system software as a service’, in Class 42. That finding is not marred by an error of assessment.
65      The invoices referred to in paragraph 64 above, addressed to various clients, refer to the Teamplay software, systems, computer program or information system. In addition, the Articles 1.3, 2.3 and 3 of the software licence agreement on the provision, use and maintenance of the Teamplay computer program (see the third indent of paragraph 43 above) refer to ‘software Teamplay’, ‘delivery of software’ and ‘implementation of software modifications’. Furthermore, the evidence file also contains price offers for ‘implementation’ for ‘Teamplay Enterprise – software’, as the Cancellation Division noted in its decision of 31 March 2022, for which the statement of reasons is reiterated in paragraph 7 of the contested decision. In those circumstances, it must be found that the earlier mark was used for ‘information system software’, as included in Class 9.
66      In addition, the licence agreement referred to in paragraph 65 above provides for the provision of Teamplay software via the internet, for the duration of that agreement, in exchange for the payment of a licence fee. It follows from the ‘implementation price offers’ that the applicant proposed signing licence agreements in the course of marketing Teamplay software. Moreover, it must be found that the evidence file also contains invoices addressed to other clients, relating to the ‘annual licence fee for Teamplay’. Although those invoices were, admittedly, addressed to clients located outside of the European Union, they nevertheless support the other evidence, from which it is apparent that the applicant did not merely sell information system software, but also provided it as a service. In those circumstances, it must be found that the Board of Appeal was correct to find that the earlier mark had been used for ‘information system software as a service’, as included in Class 42.
67      That finding is not called into question by the applicant’s other arguments.
68      First, it disputes the relevance of the evidence submitted by Sunware which predate and postdate the relevant period.
69      In that regard, it must be found, as the Board of Appeal did in paragraph 50 of the contested decision, that it may be relevant to take into account evidence which falls outside the relevant period. Indeed, it is clear from the case-law that it is possible to take account of such evidence relating to use made before or after the relevant period, in so far as it makes it possible to confirm or better assess the extent to which the mark in question was used and the actual intentions of the proprietor of that mark during that period. However, such evidence can be taken into consideration only if other evidence relating to the relevant period has been produced (judgment of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 41 and the case-law cited).
70      That is the case here. The invoices submitted by Sunware that fall outside the relevant period, which date from 2015 and 2020, several months before and after the relevant period, support other evidence submitted by Sunware.
71      Secondly, the applicant claims that the partial translations into English of the evidence submitted by Sunware are inconsistent with the original text, in particular in so far as the earlier mark appears only in the English translation of the sections concerning the invoices, and therefore do not support the finding that that evidence is self-explanatory.
72      In that regard, it must be observed that the invoices to which the applicant refers contain sections written in Czech and others written in English. In so far as the earlier mark appeared only in the English sections, those invoices were not translated into that language, contrary to what the applicant claims.
73      In the second place, as regards the extent of the use of the earlier mark, as is apparent from paragraph 43 above, Sunware submitted before the Cancellation Division and the Board of Appeal, inter alia, 17 invoices, a licence agreement and price offers addressed, in particular, to clients in the Czech Republic, which fall within the relevant period and confirm the sale of goods and services covered by the earlier mark. Those invoices amount in total to more than EUR 150 000.
74      The applicant claims that use of the earlier mark was not sufficiently extensive.
It provides, in support of its argument, the turnover on the information technology and software market in Germany for 2021. In addition to the fact that that turnover does not relate to either the relevant territory or period to be taken into account for the examination of the genuine use of the earlier mark, it is sufficient to bear in mind that the requirement of genuine use does not seek to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (judgment of 26 September 2013, Centrotherm Systemtechnik v centrotherm Clean Solutions, C‑609/11 P, EU:C:2013:592, paragraph 72). In the present case, the number of invoices and the amount they represent within the territory of the Czech Republic alone during the relevant period supports the finding that the use of the earlier mark was not merely token, minimal or notional for the sole purpose of preserving the rights conferred by it.
75      The applicant also claims that, since Sunware has not submitted an affidavit, it cannot be found that the evidence which it submitted does not represent the entirety of its turnover.
76      However, the evidence submitted by Sunware alone, issued throughout the relevant period for amounts which cannot be regarded as derisory, demonstrates continuous use of the earlier mark, irrespective of whether that evidence represented the entirety of its turnover.
77      It follows from the foregoing that the Board of Appeal was correct to find, in the global assessment of the evidence submitted by Sunware, that the earlier mark had been put to genuine use during the relevant period for ‘information system software’ in Class 9 and ‘information system software as a service’ in Class 42. Accordingly, the third plea in law must be rejected.
The fourth plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation
78      The Board of Appeal found that, as regards the identity of the marks at issue, the similarity of the goods and services covered and the average degree of inherent distinctiveness of the earlier mark, there was a likelihood of confusion in respect of the relevant public even if that public was highly attentive.
79      The applicant does not dispute the high level of attention of the relevant public, the fact that the marks at issue are identical or the inherent distinctive character of the earlier mark. By contrast, it submits that the goods and services covered by those marks are not similar, therefore there can be no likelihood of confusion.
80      EUIPO disputes the applicant’s arguments.
81      In accordance with Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, at the request of the proprietor of an earlier trade mark, the EU trade mark is to be declared invalid where, because of its identity with, or similarity to, an 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.
82      The risk that the relevant public may 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).
83      For the purpose of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment 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).
84      According to settled case-law, in assessing the similarity of the goods and services concerned, all the relevant factors relating to them should be taken into account, including, in particular, their nature, their intended use, their method of use and whether they are in competition with each other or are complementary (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23). Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
85      Complementary goods or services are those in respect of 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 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited).
86      The similarity of the goods and services covered by the marks at issue must be examined in the light of those principles.
–       The comparison between ‘data processing programs and computer software relating to medical data and information’ and ‘computer software, namely, information system software’
87      In paragraph 82 of the contested decision, the Board of Appeal found that ‘data processing programs and computer software relating to medical data and information’ in Class 9, as covered by the contested mark and ‘computer software, namely, information system software’, in the same class, as covered by the earlier mark, were similar. In its view, those goods shared the same intended use, namely the efficient processing and organisation of data. The Board of Appeal also found, in essence, that the goods were complementary because, when used together, they created a comprehensive data management system within a healthcare facility.
88      The applicant claims, first, that all software is intended to organise data, therefore that fact is not sufficient to prove the similarity between the types of software covered by the marks at issue. It also argues that the software covered by the contested mark concerned the management of medical information, which is particularly sensitive, whereas Sunware claims, in its observations of 10 September 2023, that the software covered by the earlier mark was intended for managing and ensuring the quality of production and storage processes, for shift planning and for online learning. Those types of software therefore, in the applicant’s view, concerned different sectors and had different intended uses.
89      In that regard, it must be found that the marks at issue each cover subcategories of application software. More specifically, it follows from paragraphs 29, 58 and 59 above that information system software, as the Board of Appeal defined it, is application software relating to the processing and organisation of data, even if it may be used for different purposes, including managing and ensuring the quality of production and storage processes, for shift planning and for online learning. In addition, as Sunware had noted in its observations of 10 September 2023, that software could be used, in particular, in the medical sector. It is appropriate to state that some of the invoices submitted for the purpose of proving genuine use of the earlier mark for the information system software were addressed to companies in the medical sector. Consequently, it must be found that the goods covered by the marks at issue have a common intended use, namely the processing and organisation of data, including in the medical sector.
90      Secondly, the applicant criticises the Board of Appeal for finding that data processing programs and computer software relating to medical data and information were complementary to information system software for the sole reason that they could be used at the same time and next to each other.
91      In that regard, it must be found that the applicant’s argument is based on an incorrect reading of the contested decision. The Board of Appeal found that data processing programs and computer software relating to medical data and information, on the one hand, and information system software, on the other, could process different types of data within the same healthcare facility. It deduced accordingly that they could interact and be integrated into a comprehensive data management system. Therefore, it did not find that they were complementary for the sole reason that they could be used simultaneously.
92      In those circumstances, it must be found that the Board of Appeal was correct to find that data processing programs and computer software relating to medical data and information and information system software were similar.
–       The comparison between ‘electronic data receivers for the transmission and comparison of medical data and information’ and ‘computer software, namely, information system software’
93      In paragraph 83 of the contested decision, the Board of Appeal found that ‘electronic data receivers for the transmission and comparison of medical data and information’, in Class 9, as covered by the contested mark, were complementary to ‘computer software, namely, information system software’, in the same class, covered by the earlier mark, since software can process data received by electronic receivers, facilitating meaningful comparisons and analyses. It deduced accordingly that those receivers and that software were similar to a low degree.
94      The applicant claims that the goods referred to in paragraph 93 above are not complementary. In its view, information system software cannot be similar to data receivers for the transmission and comparison of medical data and information, in so far as information system software does not process the same data as those receivers. It argues that the goods in question are not, in any event, perceived by the relevant public as being distributed by the same undertaking.
95      In that regard, it must be found that electronic data receivers for the transmission and comparison of medical data and information are intended to be used for collecting and transmitting medical data and information. However, it must be noted that those medical data and that medical information must necessarily be processed and interpreted by software, including information system software within healthcare organisations.
96      It follows that information system software is important for using electronic data receivers for the transmission and comparison of medical data and information. In addition, in so far as they are used by healthcare facilities, the consumers may therefore think that those goods come from the same undertaking.
97      Accordingly, the Board of Appeal was correct to find that ‘electronic data receivers for the transmission and comparison of medical data and information’ in Class 9 were similar to ‘computer software, namely, information system software’ in the same class.
–       The comparison between the services of ‘development, generation and renting of data processing programs; development (setting up) of databases; analysis of data; evaluation of information; all the aforesaid services solely in the field of medical data and information’ and ‘software as a service, namely, information system software as a service’
98      In paragraph 84 of the contested decision, the Board of Appeal found that there was at least a low degree of similarity between the services of ‘development, generation and renting of data processing programs; development (setting up) of databases; analysis of data; evaluation of information; all the aforesaid services solely in the field of medical data and information’, in Class 42, covered by the contested mark, and ‘software as a service, namely, information system software as a service’, in the same class, covered by the earlier mark, due to their complementarity, common intended use and the fact that they targeted the same consumers and that they were often provided by the same undertakings.
99      The applicant claims, in particular, that the analysis and evaluation of medical data and information and the development of medical databases covered by the contested mark
have no connection with online training, ensuring the quality of production and storage processes or shift planning as covered by the earlier mark.
100    In that regard, it must be found that the services in question that are covered by the marks at issue concern, in particular, different types of application software which make it possible to process and organise data in various sectors, including the health sector. In addition, the applicant does not dispute that those services may target the same users in the healthcare sector and that they may be provided by the same undertakings.
101    Accordingly, it must be found that the Board of Appeal’s conclusion that the services of ‘development, generation and renting of data processing programs; development (setting up) of databases; analysis of data; evaluation of information; all the aforesaid services solely in the field of medical data and information’, in Class 42, covered by the contested mark, and ‘software as a service, namely, information system software as a service’, in the same class, covered by the earlier mark, are similar, at least to a low degree, is not vitiated by an error of assessment.
102    It follows that the applicant has not established that the Board of Appeal made an error of assessment by finding that the goods and services covered by the marks at issue were similar.
103    Furthermore, the applicant has not put forward any specific arguments to contest the global assessment of the likelihood of confusion carried out by the Board of Appeal.
104    In those circumstances, it must be found that the Board of Appeal was correct to find that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 was established in the present case.
105    It follows that the fourth plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.
IV.    Costs
106    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.
107    Since a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Siemens Healthineers AG to pay the costs.
Kowalik-Bańczyk
Buttigieg
Dimitrakopoulos
Delivered in open court in Luxembourg on 1 October 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.