JUDGMENT OF THE GENERAL COURT (Third Chamber)
28 May 2020 (*)
(EU trade mark — Revocation proceedings — EU figurative mark STAYER — Genuine use of the trade mark — Article 18(1) and Article 58(1)(a) of Regulation (EU) 2017/1001 — Proof of genuine use — Categorisation of the goods in connection with which genuine use has been proved)
In Case T‑681/18,
ZAO Korporaciya “Masternet”, established in Moscow (Russia), represented by N. Bürglen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Söder, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Stayer Ibérica, SA, established in Pinto (Spain),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 7 September 2018 (Case R 1940/2017-5), relating to revocation proceedings between Korporaciya “Masternet” and Stayer Ibérica,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt
Nielsen, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,
Registrar: M. Marescaux, Administrator,
having regard to the application lodged at the Court Registry on 16 November 2018,
having regard to the response lodged at the Court Registry on 20 March 2019,
further to the hearing on 8 November 2019,
gives the following
Judgment
Background to the dispute
1        Stayer Ibérica, SA, the other party to the proceedings before the Board of Appeal of the European Union Intellectual Property Office (EUIPO), is the proprietor of the EU figurative mark STAYER, which was applied for on 7 October 2005 and registered on 20 April 2007 under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The goods in respect of which the contested mark is registered are in, inter alia, Class
8 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Hand held abrasive items (wheels and grinding wheels)’ (‘the goods concerned’).
3        On 11 May 2016, the applicant, ZAO Korporaciya “Masternet”, filed, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), an application for partial revocation of the contested mark on the ground that it had not been put to genuine use in connection with the goods concerned.
4        By decision of 25 July 2017, the Cancellation Division rejected the application for revocation.
5        On 6 September 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).
6        By decision of 7 September 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. It found, in essence, that the evidence submitted by the other party to the proceedings proved genuine use of the contested mark in connection with the goods concerned.
7        The Board of Appeal pointed out at the outset that, as the contested mark had been registered on 20 April 2007, the application for revocation had been filed on 11 May 2016 and, consequently, that mark had been registered for more than five years as at the date on which the application for revocation was filed, the relevant period with regard to which genuine use had to be proved ran from 11 May 2011 to 10 May 2016.
8        In that regard, the Board of Appeal stated that the other party to the proceedings had provided the following items of evidence: a sales agency agreement with a British company, regarding, inter alia, the distribution of diamond and abrasive discs in the United Kingdom and Ireland; a distributorship agreement with a Polish company for the distribution of power tool products in Poland; various catalogues or brochures for the Polish, Italian, English-speaking, Spanish and French markets in which representations of the contested mark appear in connection with discs or abrasive discs, and invoices issued to various companies established in Greece, Italy, Poland, Romania and Spain, dating from 10 May 2011 to 30 April 2016 and referring to sales of various types of discs.
9        In the light of those items of evidence, the Board of Appeal found, first of all, that the time and place of use and also actual and sufficient use of the contested mark had been proved. As regards the nature of use, the Board of Appeal also pointed out that the use of the contested mark or variants of that mark satisfied the conditions laid down by Article 18(1) of Regulation 2017/1001.
10      Lastly, as regards use in relation to the goods concerned, the Board of Appeal found that the items of evidence submitted proved that the contested mark had been used with or on ‘various types of abrasive discs for cutting and grinding’.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of the action, the applicant relies, in essence, on a single plea in law, alleging infringement of the first subparagraph of Article 18(1) of Regulation 2017/1001. In that regard, it submits that use of the contested mark has not been proved in connection with the goods concerned, which are goods in Class
8 and must therefore be attached, according to its interpretation, to hand-operated tools and not to power tools, even if they are hand held tools, which fall within Class
7.
14      EUIPO disputes those arguments.
15      It must be pointed out at the outset that the applicant and EUIPO refer, in their written pleadings, to the provisions of Regulation 2017/1001. However, in view of the date on which the application for revocation in question was filed, namely, in the present case, 11 May 2016, which is decisive for the purposes of identifying the substantive law applicable, the present dispute is governed by the substantive provisions of Regulation No 207/2009. Since Articles 18 and 58 of Regulation 2017/1001 correspond to Articles 15 and 51 of Regulation No 207/2009, the parties’ references to the former articles must be understood as referring to the latter articles (see, to that effect, judgment of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraphs 3 and 25). According to the first subparagraph of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 51(1)(a) of that regulation, in revocation proceedings, the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO, if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
16      Under Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 10(3) and (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), the indications and evidence of use must establish the place, time, extent and nature of use of the trade mark and are, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 76(1)(f) of Regulation No 40/94.
17      As is clear from the case-law, there is genuine use of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and services for which it is registered, in order to create or preserve an outlet for those goods and 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 judgment of 5 March 2019, Meblo Trade v EUIPO — Meblo Int (MEBLO), T‑263/18, not published, EU:T:2019:134, paragraph 36 and the case-law cited).
18      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 and services covered 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 judgment of 5 March 2019, MEBLO, T‑263/18, not published, EU:T:2019:134, paragraph 37 and the case-law cited).
19      Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned. It is necessary to carry out an overall assessment which takes into account all the relevant factors in the particular case and entails a degree of interdependence between the factors taken into account (see, to that effect, judgment of 5 March 2019, MEBLO, T‑263/18, not published, EU:T:2019:134, paragraph 38 and the case-law cited).
20      It is in the light of the foregoing that the present plea must be examined.
21      It must be pointed out at the outset that, as EUIPO rightly states, the applicant does not call into question the Board of Appeal’s findings that the evidence submitted by the other party to the proceedings satisfies the requirements relating to the time, place, extent and nature of use (see paragraph 9 above). Only the Board of Appeal’s findings relating to the proof by the other party to the proceedings of use in relation to the goods concerned, in particular those referred to in paragraph 10 above, fall to be assessed by the Court in the context of the present case.
22      In that regard, it must be pointed out that the contested mark was filed in Spanish in respect of ‘instrumentos manuales abrasivos (discos y muelas)’ in Class
8 and in English in respect of ‘hand held abrasive items (wheels and grinding wheels)’ in Class
8. It must also be pointed out that, in English, the word ‘discs’ can also be used to refer to ‘wheels’.
23      Contrary to what the applicant submits and as the Board of Appeal stated in the contested decision, there is no notable difference between the description of the goods concerned in Spanish, the first language used in the application for registration of the contested mark, and the description of those goods in English, the second language used in that application.
24      As was rightly stated by the Board of Appeal, which referred in that regard to the definitions of the words ‘instrumento’ and ‘manual’ taken from the online Spanish dictionary Diccionario de la lengua Española, the term ‘instrumentos’ may be translated as ‘items’ and the qualifier ‘manuales’ may be translated as ‘hand held’ and also as ‘operated by hand’. The Board of Appeal pointed out in that regard that hand held instruments or items include hand-operated items.
25      Consequently, since the term ‘hand held’ is one of the translations of the Spanish term ‘manuales’, the Board of Appeal was right in finding in the contested decision that those terms designate all the ‘hand held abrasive items’ rather than the ‘hand-operated abrasive items’, a more restricted category, which, according to the interpretation favoured by the applicant covers items that are ‘operated or controlled by hand, rather than automatically or electronically’.
26      Moreover, as EUIPO also submits in its written pleading, account must also be taken of the fact that the reference made to ‘hand held abrasive items’ is immediately followed by the terms ‘wheels and grinding wheels’ in brackets. The use of those brackets has the effect here of restricting the scope of protection sought solely to ‘wheels and grinding wheels’ which are included in the category of ‘hand held abrasive items’ (see, to that effect, judgment of 4 October 2016, Lidl Stiftung v EUIPO — Horno del Espinar (Castello), T‑549/14, not published, EU:T:2016:594, paragraph 71). The contested mark has been registered in respect of ‘wheels and grinding wheels’ as such and not in respect of all or only some types of hand held items to which those wheels and grinding wheels may be connected.
27      It follows from the foregoing that the Board of Appeal cannot be criticised for having in the contested decision examined the evidence which the other party to the proceedings had submitted by considering the description of the goods concerned given in the application for registration of the contested mark and reproduced in the contested decision, a description which, both in Spanish and in English, refers to ‘hand held abrasive items (wheels and grinding wheels)’.
28      Moreover, the Board of Appeal can also not be criticised for having found that the evidence submitted by the other party to the proceedings proved use of the contested mark in relation to ‘various types of abrasive discs for cutting and grinding’.
29      That evidence does indeed refer to wheels which have been offered or sold on the market as such and to which the contested mark is affixed. As is stated in the contested decision, the sales agency agreement with a British company concerns, inter alia, the distribution of diamond and abrasive discs in the United Kingdom and Ireland; the various catalogues and brochures provided, which relate to the Polish, Italian, English-speaking, Spanish and French markets, show representations of the contested mark in connection with numerous types of discs or abrasive discs and, lastly, the many invoices submitted, which were issued to various companies established in Greece, Italy, Poland, Romania and Spain, refer to a number of types of discs or abrasive discs.
30      Those findings, which are based on evidence that shows that ‘wheels and grinding wheels’ as such were marketed and sold, are not called into question by the observation which the Board of Appeal also made in the contested decision that that evidence as well as other items of evidence also prove that those ‘various types of abrasive discs for cutting and grinding’ are ‘abrasive instruments that are meant to be inserted in different tools used for cutting or grinding’, including ‘hand held tools’.
31      As has already been pointed out, the mark was registered in respect of wheels and grinding wheels, and not in respect of all or only some types of hand held items to which those wheels and grinding wheels may be connected as accessories or additions. In the present case, the other party to the proceedings was not required to prove use of the contested mark in relation to various tools that can be used for cutting or grinding using wheels.
32      Moreover, that distinction suggested by the applicant is irrelevant with regard to the present proceedings since the wheels at issue have the same characteristics overall, namely that they are capable of wearing something away by means of rubbing, irrespective of the type of tools in which they may be inserted. Consequently, those goods constitute a sufficiently homogeneous category of goods and a sub-categorisation on the basis of the various types of tools is not necessary in order to assess the proof of use of the contested mark.
33      As EUIPO states in its written pleading, it is therefore irrelevant whether the other party to the proceedings before the Board of Appeal manufactures ‘manual instruments’, which, even if they were both ‘hand held’ and ‘hand operated’, could function automatically or electrically.
34      Likewise, for the purposes of assessing the proof of use of the contested mark in relation to the goods concerned, the Board of Appeal cannot be criticised for not having required the other party to the proceedings to prove use of the contested mark having regard to the formal and stringent interpretation of the Nice Classification suggested by the applicant.
35      The applicant submits that, in the light of the Nice Classification, goods for grinding, that is to say those that wear something away by means of rubbing using an abrasive, fall within either Class
7 or Class
8. It observes, in that regard, that Class
7 covers, inter alia, ‘machines, machine tools, power-operated tools’ and includes mainly machines and machine tools, motors and engines, whereas Class
8 covers, inter alia, ‘hand tools and implements, hand-operated’ and includes mainly hand-operated tools and implements for performing tasks such as drilling, shaping, cutting and piercing.
36      In view of that classification, the applicant submits that the difference that exists between, on the one hand, ‘power tools’, even those that are hand held, and, on the other hand, ‘hand-operated tools’, namely hand held tools that function manually and not electrically, makes it necessary to distinguish between two categories of wheels and grinding wheels: those that are intended to be inserted into the former type of tools and those that are intended to be inserted into the latter type of tools. The applicant maintains that none of the evidence submitted by the other party to the proceedings proved use of the contested mark in relation to accessories for the latter type of tools, hand held tools that function manually and not electrically, the only ones which, according to the applicant, are capable of falling within Class
8.
37      Such evidence was not, however, necessary.
38      First, the interpretation suggested by the applicant does not take into account the meaning of the terms ‘hand held abrasive items’, as set out in paragraphs 22 to 27 above and given by the Board of Appeal, which is not as strict as that which the applicant suggests because it does not distinguish between power tools and tools that function manually and not electrically.
39      Secondly, it follows from the foregoing, in particular from paragraphs 29 and 30 above, that the evidence submitted proves use in relation to the goods concerned as such, namely wheels and grinding wheels, which are indeed capable of falling within the category ‘abrading instruments [hand instruments]’ defined by Class
8 of the Nice Classification.
40      Thirdly and in any event, it must be borne in mind that the Nice Classification is, in essence, designed to reflect the needs of the market and not to impose any artificial segmentation of the goods. Consequently, the class headings contain ‘general indications’ relating to the sector within which the goods or services ‘in principle’ fall. Likewise, it must be borne in mind that the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes (see, to that effect, judgment of 25 October 2012, riha v OHIM — Lidl Stiftung (VITAL&FIT), T‑552/10, not published, EU:T:2012:576, paragraph 39). The purpose of that classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services (see, to that effect, judgments of 30 September 2015, Gat Microencapsulation v OHIM — BASF (KARIS), T‑720/13, not published, EU:T:2015:735, paragraph 44, and of 19 June 2018, Erwin Müller v EUIPO — Novus Tablet Technology Finland (NOVUS), T‑89/17, not published, EU:T:2018:353, paragraph 32). Moreover, the Nice Classification cannot determine, in itself, the nature and characteristics of the goods at issue (see, to that effect, order of 16 July 2015, Basic v OHIM, C‑400/14 P, not published, EU:C:2015:514, paragraph 56).
41      In the present case, to require, as the applicant suggests, the other party to the proceedings to provide evidence of use of ‘wheels and grinding wheels’, which fall within the category of ‘abrading instruments [hand instruments]’ in Class
8 of the Nice Classification, in relation to a particular type of tool into which those wheels and grinding wheels may be inserted, even though it is clear from the evidence submitted that those wheels have been marketed and sold as such, would be contrary to the purpose of Regulation No 207/2009 of conferring protection on any EU trade mark which is actually used (see recital 10 of that regulation).
42      The Board of Appeal was therefore right in rejecting the applicant’s argument, which was reiterated in the context of the present action, that the examination of the evidence of use was carried out having regard to goods which fall within Class
7, rather than in relation to the goods concerned in Class
8.
43      Lastly, the applicant’s claim that the Board of Appeal failed to have regard to the apportionment of the burden of proof by requesting that it prove use in relation to the goods concerned cannot succeed. It is clear from the contested decision that the Board of Appeal found that proof of use had to be furnished by the other party to the proceedings, proof of use which was indeed furnished by the other party to the proceedings in the present case.
44      It follows from all of the foregoing that the action must be dismissed in its entirety.
Costs
45      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. However, according to Article 135(1) of the Rules of Procedure, if equity so requires, the General Court may decide that an unsuccessful party is to pay only a proportion of the costs of the other party in addition to bearing his own, or even that he is not to be ordered to pay any.
46      In the present case, although the applicant has been unsuccessful, the fact remains that the lack of intelligibility of the contested decision, acknowledged by EUIPO, may have contributed towards inducing the applicant to bring the present action. The Court therefore considers it fair in the circumstances of the case to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Frimodt Nielsen
Kreuschitz
Półtorak
Delivered in open court in Luxembourg on 28 May 2020.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.