JUDGMENT OF THE GENERAL COURT (Third Chamber)
8 March 2012 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark BIODANZA – Earlier national word mark BIODANZA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Death of the trade mark applicant before adoption of the decision of the Board of Appeal – Admissibility of the response – Absence of genuine use of the earlier trade mark – Article 42(2) and (3) of Regulation No 207/2009 – Proceedings before the Board of Appeal – Rights of defence – Article 75 of Regulation No 207/2009)
In Case T‑298/10,
Christina Arrieta D. Gross, residing in Hamburg (Germany), represented by J.‑P. Ewert, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard‑Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Rolando Mario Toro Araneda,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 13 April 2010 (Case R 1149/2009‑2), relating to opposition proceedings between Christina Arrieta D. Gross and Rolando Mario Toro Araneda,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz, President, I. Labucka and D. Gratsias (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 7 July 2010,
having regard to the response of OHIM lodged at the Registry on 29 October 2010,
having regard to the response lodged at the Registry on 15 November 2010 by the International Biocentric Foundation Ltd, Gabriela Cedilia Toro Acuña and Hilda Pilar Toro Acuña, Rolando Patricio Toro Acuña, Maria Verónica Toro Acuña, Ricardo Marcela Toro Durán and German Toro Gonzalez, Claudia Danae Toro Sanchez, Rodrigo Paulo Toro Sanchez, Mariela Paula Toro Sanchez, Viviana Luz Toro Matuk, Morgana Fonteles Toro, Anna Laura Toro Sant’ana, Joana Castoldi Toro Araneda and Claudete Sant’ana,
having regard to the written questions put to the parties by the Court,
having regard to the observations lodged by the parties at the Court Registry on 21 December 2010, 21 February, 28 March and 4 August 2011,
having regard to the plea of inadmissibility of the response of 15 November 2010 lodged by the applicant at the Court Registry on 14 January 2011,
having regard to the observations of OHIM on the plea of inadmissibility lodged at the Court Registry on 23 March 2011,
having regard to the observations on the plea of inadmissibility lodged at the Court Registry on 29 March 2011,
having regard to the order of 16 May 2011 that the plea be reserved for the final judgment,
having regard to the decision of 19 July 2011 refusing to authorise the lodging of observations on the observations of the applicant of 28 March 2011,
having regard to the changes in the composition of the Chambers of the Court,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1        On 30 September 2005 Rolando Mario Toro Araneda filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to 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 Community trade mark (OJ 2009 L 78, p. 1)).
2        The trade mark in respect of which registration was sought is the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 16, 41 and 44 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 16: ‘Paper, cardboard; office requisites; printed matter; photographs; books, magazines, bookbinding material; adhesive preparations for office use; educational and instructional material (except apparatus); printers’ type; printing blocks’;
–        Class 41: ‘Dance instruction, by integrating dance, movement, singing and/or music with psychoanalytical and/or psychotherapeutic aspects; arranging seminars and collective meetings for educational purposes; training of professional teachers; education; education and arranging of shows; education centres (education) for individuals and groups; entertainment and leisure; publication of books and magazines’;
–        Class 44: ‘Psychotherapeutic services provided to people, individually or in groups, by means of music and singing integration’.
4        The application for the Community trade mark was published in the Community Trade Marks Bulletin No 24/2006 on 12 June 2006.
5        On 11 September 2006, the applicant, Christina Arrieta D. Gross, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods and services referred to in paragraph 2 above.
6        The opposition was based, inter alia, on the German word mark BIODANZA (‘the earlier trade mark’), registered on 29 March 1995 under number 2905152, designating the goods and services in Classes 16 and 44 corresponding, for each of those classes, to the following description:
–        Class 16: ‘Books, instructive books, magazines’;
–        Class 41: ‘services of a psychotherapist, namely the therapeutic application of dance, motion and music; execution of workshops, continuous weekly group meetings, seminars, education, further education, trainings for professionals; teaching and educational material, excluding machines’.
7        The grounds relied on in support of that opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009).
8        The notice of opposition was written in German. By letter of 21 September 2006, OHIM asked the applicant to produce, within a period of two months, that is, by 22 November 2006, inter alia, a translation of that document in English, the language of the opposition proceedings. By letter of 2 November 2006, the applicant produced that translation.
9        By letter of 6 November 2006, OHIM informed the applicant that she had not produced the translation of the notice of opposition within the period of one month laid down for that purpose in Rule 16(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), as amended and that consequently, and pursuant to Rule 17(3) of that regulation, the opposition was inadmissible. It invited her to present any observations she might have by 7 January 2007. In her observations presented to OHIM on 8 January 2007, the applicant contested that conclusion of OHIM.
10      By letter of 25 January 2007, OHIM informed the parties that the opposition had been found to be admissible. On the same occasion it sent Mr Toro Araneda copies of the notice of opposition with its annexes.
11      On 14 March 2007, Mr Toro Araneda sent OHIM a letter in which he contested the admissibility of the opposition. OHIM responded by letter of 16 March 2007, in which it set out the reasons why it considered that the opposition was admissible. It also informed Mr Toro Araneda that that letter was not a decision against which an appeal may be lodged and that the question of admissibility of the opposition would be examined in the final decision on the opposition, against which Mr Toro Araneda would be entitled to bring an appeal if he so wished.
12      In his observations on the opposition, lodged with OHIM on 25 July 2007, Mr Toro Araneda reiterated his objection as to the admissibility of the opposition and submitted a request seeking proof of genuine use of the earlier mark for the goods and services relied on in support of the opposition, within the meaning of Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009).
13      Following the submission of that request, the applicant, in an annex to her observations lodged with OHIM on 6 November 2007, submitted copies of documents that showed, according to her, that the earlier trade mark had been used on documents relating to educational, therapeutic and other events.
14      On 30 July 2009, the Opposition Division allowed the opposition in part and rejected the application for registration of certain goods and services referred to in the application for registration.
15      On 30 September 2009, Mr Toro Araneda filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
16      Mr Toro Araneda died on 16 February 2010.
17      By decision of 13 April 2007 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal, annulling the Opposition Division’s decision and dismissing the opposition in its entirety. In particular, it held that the opposition was admissible (paragraphs 17 to 22 of the contested decision), but that the evidence of use of the earlier trade mark produced by the applicant was not sufficient to prove the genuine use of that trade mark, so the opposition had to be dismissed in its entirety (paragraphs 25 to 38 of the contested decision).
Forms of order sought
18      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs of the proceedings before the Court;
–        order the other party to the proceedings before the Board of Appeal to pay the costs of the proceedings before OHIM.
19      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs;
20      The International Biocentric Foundation Ltd (‘IBF’), Gabriela Cedilia Toro Acuña, Hilda Pilar Toro Acuña, Rolando Patricio Toro Acuña, Maria Verónica Toro Acuña, Ricardo Marcela Toro Durán, German Toro Gonzalez, Claudia Danae Toro Sanchez, Rodrigo Paulo Toro Sanchez, Mariela Paula Toro Sanchez, Viviana Luz Toro Matuk, Morgana Fonteles Toro, Anna Laura Toro Sant’ana, Joana Castoldi Toro Araneda and Claudete Sant’ana (‘the heirs of Mr Toro Araneda’) contend that the Court should;
–        declare the applicant’s opposition inadmissible;
–        in any event, dismiss the action and uphold the contested decision, in so far as it annulled the decision of the Opposition Division and dismissed the opposition;
–        order the applicant to pay the costs.
Law
Admissibility of the response of IBF and of the heirs of Mr Toro Araneda
21      IBF and the heirs of Mr Toro Araneda, represented by B. Vanbrabant and Y. Van Couter, lawyers, lodged a response in which they claim that, following the death of Mr Toro Araneda and under his will, the application for registration in question was transferred to IBF. On 10 November 2010, pursuant to Article 17 of Regulation No 207/2009, read in conjunction with Article 24 of that regulation, the IBF requested OHIM to register that transfer. The heirs of Mr Toro Araneda were his children and widow and, consequently, his ‘heirs at law’ and would intervene ‘inasmuch as it is necessary’.
22      In the context of a measure of organisation of procedure under Article 64 of the Rules of Procedure, the Court requested information from OHIM concerning the action it took on the request for registration of the transfer of the trade mark application in question, referred to by IBF and the heirs of Mr Toro Araneda.
23      By letter lodged at the Registry of the Court on 21 December 2010, OHIM responded, in essence, that it had considered that the documents submitted in support of that request were not sufficient to establish that the conditions for registration of a transfer were fulfilled and that it had, therefore, informed the applicant of the deficiencies noted, in accordance with Rule 31(6) of Regulation No 2868/95. OHIM added that it had set a period of two months during which the deficiencies noted had to be remedied, failing which the request for registration would be rejected.
24      By a document lodged at the Registry of the Court on 14 January 2011, the applicant raised a plea of inadmissibility in respect of the response of IBF and the heirs of Mr Toro Araneda. First, the applicant referred to ‘inconsistencies’ in the claims of IBF and the heirs of Mr Toro Araneda. Their lawyers acted, it is claimed, not only on behalf of IBF, but also on behalf of the heirs of Mr Toro Araneda, but failed to present any powers of attorney signed by them. Second, the heirs of Mr Toro Araneda are located in eight different countries and the questions relating to his succession had not yet been settled. Moreover, the applicant claimed that the response of IBF and the heirs of Mr Toro Araneda was not lodged in time.
25      By letter lodged at the Registry of the Court on 21 February 2011, OHIM informed the General Court that IBF had been recorded, on 10 February 2011, as the new proprietor of the contested Community trade mark application.
26      In the context of measures of organisation of procedure, the Court called on OHIM and IBF and the heirs of Mr Toro Araneda to present their observations on the plea of inadmissibility set out in the response and called on the applicant and IBF and the heirs of Mr Toro Araneda to present their observations on the OHIM letter of 21 February 2011.
27      In their observations on the admissibility of the response of IBF and of the heirs of Mr Toro Araneda, they and OHIM argued that this response was admissible. Furthermore, IBF and the heirs of Mr Toro Araneda produced, appended to their observations, the powers of attorney to the lawyers who had signed that response, drawn up by the heirs of Mr Toro Araneda.
28      In her observations relating to the OHIM letter of 21 February 2011, the applicant reiterated her objection as to the admissibility of the response of IBF and the heirs of Mr Toro Araneda, on the ground that the questions relating to the succession of Mr Toro Araneda had not yet been settled. She argued that the recordal of IBF as the new proprietor of the contested trade mark application resulted from an error committed by OHIM. Such an erroneous recordal cannot, according to her, constitute a transfer of ownership in the contested mark.
29      IBF and the heirs of Mr Toro Araneda did not submit observations on the abovementioned letter from OHIM.
30      First, with regard to the plea of inadmissibility of the response of IBF and the heirs of Mr Toro Araneda based on the assertion that it is out of time, it should be noted that, under Article 133(1) of the Rules of Procedure, the Registrar shall inform the Office and all the parties to the proceedings before the Board of Appeal of the lodging of the application. He shall arrange for service of the application after determining the language of the case in accordance with Article 131(2) of the Rules of Procedure.
31      Furthermore, it is apparent from the first subparagraph of Article 135(1) of the Rules of Procedure that the period within which the response must be submitted is two months from the service of the application. Under Article 102(2) of those rules, that time-limit shall be extended on account of distance by a single period of ten days.
32      In the present case, the service of the application referred to in Article 133(1) of the Rules of Procedure was effected by letter of 8 September 2010. It follows that, without it being necessary to consider the exact date of receipt of that service by IBF and the heirs of Mr. Toro Araneda, the period for lodging the response was still running when they submitted it on 15 November 2010.
33      Second, with regard to the plea of inadmissibility of the response of IBF and the heirs of Mr Toro Araneda that is based, essentially, on their alleged lack of locus standi, it should be noted that, under Article 134(1) of the Rules of Procedure, the parties to the proceedings before the Board of Appeal other than the applicant may participate, as interveners, in the proceedings before the General Court by responding to the application in the manner and within the period prescribed.
34      In the present case, since Mr Toro Araneda died before the contested decision was adopted (see paragraphs 16 and 17 above), the question arises as to who was the other party before the Board of Appeal when that decision was adopted.
35      It should be noted, in that regard, that it is apparent from Article 5 of Regulation No 207/2009 that the proprietors of Community trade marks are natural or legal persons. Consequently, a Community trade mark cannot be registered in the name of a deceased person. As OHIM has rightly pointed out, that conclusion is confirmed by Rule 84(2)(d) of Regulation No 2868/95, which provides that the name and address of the Community trade mark applicant is to be entered in the Register of Community Trade Marks.
36      Furthermore, Article 16(1) of Regulation No 207/2009 provides that the Community trade mark as an object of property shall be dealt with as a national trade mark registered in a Member State, to be determined in accordance with subparagraphs (a) and (b) of that paragraph. Under Article 24 of that regulation, that provision is to apply to applications for Community trade marks, such as that submitted by Mr Toro Araneda. Accordingly, the application for a Community trade mark constitutes, even before the registration of the Community trade mark sought, an object of property.
37      This character of the application for registration reflects the fact that, as is confirmed by Rule 84(2)(d) of Regulation No 2868/95, cited in paragraph 35 above, once the registration procedures have been complied with, the applicant automatically becomes the proprietor of the registered Community mark. To acknowledge that the application to register a Community trade mark has the character of an object of property is, moreover, consistent with the provision in Article 8(2)(b) of Regulation No 207/2009 which, for the purposes of the relative grounds for refusal of registration set out in that article, treats such an application, subject to its registration, as equivalent to an earlier trade mark. It should be noted, moreover, that under Article 24 of Regulation No 207/2009, Article 17 of that regulation, relating to the transfer of a Community trade mark, applies to the application for registration and therefore allows the transfer of an application for registration from one person to another even before registration of the trade mark applied for.
38      In the light of all the above considerations, it must be concluded that a deceased person cannot be the proprietor of an application for registration of a Community trade mark. Furthermore, there is no provision in Regulation No 207/2009 that the death of the applicant for registration of a Community trade mark entails the expiry of that application. Such a conclusion would be contrary to the nature of the application for registration as an object of property and to the considerations set out in the previous paragraph.
39      Accordingly, it follows that in the event of the death of the proprietor of an application to register a Community trade mark, that application is transferred to another person, to be determined according to the provisions of the law of succession of the Member State referred to in Article 16(1) of Regulation No 207/2009.
40      In order to ensure the efficient conduct of the proceedings before OHIM, it is for the new proprietor of such an application to register its transfer with OHIM. However, regardless of the moment when that registration takes place, the new proprietor of the application for registration must be considered as having acquired that status from the moment of death of the initial applicant.
41      Furthermore, in the absence of any provision to the contrary in Regulation No 207/2009 and Regulation No 2868/1995, it must be concluded that the acts and decisions of OHIM that were adopted before OHIM becomes aware of the death of an applicant for registration and which, consequently, continue to refer to the deceased applicant rather than the new proprietor of that application remain valid, subject to the possibility for the latter to contest them, in so far as they affect him adversely, by all appropriate means or, where relevant, to submit an application for restitutio in integrum, within the meaning of Article 81 of Regulation No 207/2009.
42      In the present case, it follows from the above that IBF, registered by OHIM as the new proprietor of the contested Community trade mark after the death of Mr Toro Araneda (see paragraph 25 above), must be considered as having been the proprietor of that application from the moment of his death and, consequently, as having been the other party in the proceedings before the Board of Appeal at the moment when the contested decision was adopted. Consequently, and pursuant to Article 134(1) of the Rules of Procedure, it can participate as intervener in the proceedings before the General Court.
43      The applicant’s argument that the registration of IBF as the new proprietor of the contested Community trade mark is the result of an error on the part of OHIM cannot alter that conclusion. By that argument the applicant is, in essence, requesting the Court to review the decision of OHIM in relation to that registration. However, that decision does not form part of the subject-matter of this case, which concerns an action against the contested decision only. While it is true that the General Court is entitled to examine the locus standi of any of the parties before it, such an examination cannot lead it to question an OHIM decision that is not contested before it.
44      It follows from Articles 58 to 65 of Regulation No 207/2009 that the decision of the competent instance of OHIM relating to the registration of the transfer of a Community trade mark or of an application for registration of such a trade mark may be contested by an appeal to the Board of Appeal, which decision may, in turn, be contested by an action before the General Court. However, it is apparent from Article 59 of Regulation No 207/2009 that only parties to the proceedings that have led to a decision of a department of OHIM can contest it.
45      Furthermore, that challenge can only relate to the issue of whether the formal registration conditions for such a transfer, as set out in Article 17(2) to (5) of Regulation No 207/2009 and in Rule 31 of Regulation No 2868/95, were fulfilled. In so far as a Community trade mark and an application for registration of such a trade mark, as objects of property, are treated as equivalent to national trade marks registered in a Member State determined in accordance with the conditions set out in Article 16(1) of Regulation No 207/2009, it is for the authority or court of that Member State that has jurisdiction to deal with questions relating to the ownership of a national trade mark to decide also on questions relating to the ownership of a Community trade mark, or of an application for a Community trade mark, governed by the law of that Member State. However, neither OHIM nor the Courts of the European Union are required to examine or decide on such legal questions arising from national law.
46      In the present case it should be noted that, if the OHIM decision relating to the registration of IBF as proprietor of the contested trade mark application after the death of Mr Toro Araneda had been the subject of a challenge, it would have been possible to suspend these proceedings pending the outcome. However, the only party to the proceedings that led to that decision was IBF itself, whose application was granted by that decision and it had no reason to contest it. The applicant, however, was not a party to the proceedings that led to that decision.
47      The applicant is the author of an opposition to that application. The grounds on which an opposition may be based, as laid down in Article 41(1) of Regulation No 207/2009, are solely the relative grounds for refusal in Article 8 of that regulation (Case T‑224/01 Durferrit v OHIM – Kolene (NU-TRIDE) [2003] ECR II‑1589, paragraph 72 and Case T‑255/08 Montero Padilla v OHIM – Padilla Requena (JOSE PADILLA) [2010] ECR II‑2551, paragraph 28). Those are the terms on which OHIM is required to give a decision on the opposition (NU‑TRIDE, paragraph 72). The question as to who is the proprietor of the registration application is not, therefore, one that must be decided within the context of the examination of an opposition.
48      It follows from all of the foregoing considerations that the response is admissible with regard to IBF. As it is a single response containing heads of claim that are identical for IBF and the heirs of Mr Toro Araneda, it is not necessary to examine the locus standi of the heirs of Mr Toro Araneda (see, by analogy, Case T‑361/08 Peek & Cloppenburg et van Graaf v OHIM – Queen Sirikit Institute of Sericulture (Thai Silk) [2010] ECR II‑1207, paragraph 36 and the case-law cited).
49      Consequently, the plea of inadmissibility of the response of IBF and the heirs of Mr Toro Araneda, raised by the applicant, must be rejected and that response must be declared admissible.
Substance
50      In support of its action, the applicant puts forward two pleas in law, the first alleging infringement of Article 42(2) and (3) of Regulation No 207/2009 and the second infringement of Rule 22(2) of Regulation No 2868/95.
The first plea, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009
51      It should be noted that, by virtue of Article 42(2) and (3) of Regulation No 207/2009, an applicant for a Community trade mark, against which an opposition is filed, may require proof that the earlier national mark, relied on in support of that opposition, has been put to genuine use during the five years preceding publication of the application.
52      Furthermore, under Rule 22(3) of Regulation No 2868/95, as amended, proof of use must relate to the place, time, extent and nature of use of the earlier mark.
53      In accordance with settled case-law, it is apparent from the abovementioned provisions and, and taking account of recital 10 in the preamble to Regulation No 207/2009, that the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, where there is no good commercial justification deriving from active functioning of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade-mark protection to the case where large‑scale commercial use has been made of the marks (see, to that effect, Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraphs 36 to 38 and the case-law cited).
54      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 origin of the goods or services for which it was registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, Case C‑40/01 Ansul [2003] ECR I‑2439, paragraph 43). Furthermore, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (VITAFRUIT, paragraph 53 above, paragraph 39; see also, to that effect and by analogy, Ansul, paragraph 37).
55      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 the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (VITAFRUIT, paragraph 53 above, paragraph 40; see also, by analogy, Ansul, paragraph 54 above, paragraph 43).
56      To examine 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. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that the commercial volume achieved under the mark was not high may be offset by a high intensity or some settled period of use of that mark or vice versa (VITAFRUIT, paragraph 53 above, paragraph 42, and Case T‑334/01 MFE Marienfelde v OHIM − Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 36).
57      The turnover and the volume of sales of the goods 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 goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (VITAFRUIT, paragraph 53 above, paragraph 42, and HIPOVITON, paragraph 56 above, paragraph 36). Even minimal use can therefore be sufficient to be classified as genuine, provided that it is justified, in the economic sector concerned, to maintain or create market share for the goods or services protected by the mark. It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule, which would not allow OHIM or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 72).
58      As is apparent from the first subparagraph of Article 15(1) of Regulation No 207/2009, only trade marks genuine use of which has been suspended during an uninterrupted period of five years are subject to the sanctions provided for by the regulation. Accordingly, it is sufficient that a trade mark has been put to genuine use during a part of the relevant period for it not to be subject to the sanctions (VITAFRUIT, paragraph 53 above, paragraph 45, and HIPOVITON, paragraph 56 above, paragraph 40).
59      Finally, 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 actual and sufficient use of the trade mark on the market concerned (Case T‑39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II‑5233, paragraph 47, and Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 28).
60      In the present case, to justify its conclusion that genuine use of the earlier trade mark had not been proved, the Board of Appeal stated as follows, at paragraphs 35 and 36 of the contested decision:
‘35       It follows clearly from the … decision [of the Opposition Division] that the evidence of use submitted by the opponent consists only of advertisements that can simply prove that the opponent advertised for a yearly ‘BIODANZA’ festival during the whole of the relevant period and for workshops both on a regular and irregular basis from 2002.
36      However, contrary to the finding of the [Opposition Division], such advertisements cannot prove the fact that they were distributed to a potential German clientele, nor the extent of any distribution, nor the number of sales or contracts made for the services protected by the mark. The mere existence of advertisements could, at most, make it probable or credible that the services advertised under the earlier mark were sold or, at least, offered for sale within the relevant territory, but it cannot prove that fact as was unduly supposed by the contested decision …’
61      At the end of paragraph 36 of the contested decision, the Board of Appeal referred to VITAKRAFT, paragraph 59 above (paragraph 34).
62      By its first plea, the applicant contests the conclusion of the Board of Appeal that the evidence it had submitted did not prove the genuine use of the earlier trade mark.
63      In that regard, she alleges that the Board of Appeal did not take into account the fact that copies of advertisements that she had placed in various magazines in Germany were included in the evidence of genuine use of the trade mark that she had submitted to OHIM.
64      In particular, the applicant lists in her application seven advertisements published in the German magazines Körper Geist und Seele Hamburg, Connection-Gesund Leben, Lebenswege Magazin, Frankfurter Ring and Die Kunst zu Leben. The Board of Appeal allegedly ignored these advertisements and referred exclusively, and incorrectly, to advertising documents distributed by the applicant herself, such as flyers and leaflets, for which there was no proof that they had actually been distributed to the relevant public.
65      It should be noted that, summarising the decision of the Opposition Division, the Board of Appeal mentioned, at paragraph 11, eleventh indent of the contested decision, the fact that the evidence of genuine use of the earlier trade mark produced by the applicant included, in particular, ‘newspaper advertisement clippings’. Moreover, the term ‘advertising’ used at paragraphs 35 and 36 of the contested decision includes the advertising that appears in newspapers or magazines.
66      Contrary to what the applicant claims, therefore, the Board of Appeal did not ignore the existence of that type of advertising in the evidence of genuine use of the earlier trade mark. However, it follows from the contested decision that, in essence, the Board of Appeal considered that the production of copies of advertising that had appeared in magazines was not, in itself, sufficient to prove that that advertising had received significant distribution to the intended consumers.
67      The inclusion of the trade mark at issue, in relation to the goods or services covered, in advertising addressed to the relevant consumers constitutes a public, outward use of that trade mark, within the meaning of paragraph 54 above. In the course of an assessment carried out in accordance with the case-law referred to in paragraphs 55 to 58 above, such use may demonstrate genuine use of that trade mark, as required by Article 42(2) of Regulation No 207/2009.
68      Nevertheless, such use of the trade mark concerned cannot be proved by the simple production of copies of advertising material mentioning that trade mark in relation to the intended goods or services. It must also be demonstrated that this material, regardless of its nature, has been sufficiently distributed to the relevant public to establish the genuine nature of the use of the trade mark at issue.
69      Where advertising has appeared in the printed press, that entails adducing evidence of the distribution of the newspaper or of the magazine concerned to the relevant public. It cannot be otherwise unless the advertising has appeared in newspapers or magazines that are very well known, the circulation of which is a well-known fact that OHIM can take into consideration even if it is not apparent from the evidence submitted to it by the parties (see, with regard to OHIM taking well-known facts into consideration, Case T‑185/02 Ruiz‑Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraphs 28 and 29, and the case-law cited).
70      In the present case, the advertising relied upon by the applicant before the Board of Appeal appeared in magazines whose circulation in Germany is not a well‑known fact. It seems that they are publications specialised in the area of services covered by the earlier trade mark. In the absence of any indication of the circulation of those magazines in the observations submitted by the applicant to OHIM and, still less, any evidence in that regard, the Board of Appeal correctly observed, in essence, at paragraph 36 of the contested decision, that the copies of the advertising supplied by the applicant could, at most, make the genuine use of the earlier trade mark probable or plausible but without proving it, as required by Article 42(2) of Regulation No 40/94.
71      The applicant claims, moreover, that the Board of Appeal failed to take into consideration, when examining the genuine use of the earlier trade mark, the nature of the goods and services covered by that trade mark.
72      She claims, more specifically, that the ‘product’ she offers to consumers consists, essentially, of music and dance workshops, that is, ‘intangible’ services. The physical goods covered by the earlier trade mark, it is claimed, are only goods deriving from those services.
73      The Board of Appeal allegedly did not take account of that distinctive feature of the present case but referred instead to the case-law cited in paragraph 59 above which, it is argued, was developed in relation to the genuine use of trade marks registered for physical goods. The applicant claims that, for goods of that nature, it is usual to submit all kinds of physical evidence of the use of the trade mark concerned, such as photographs or samples of the goods bearing the trade mark at issue. She invokes, in support of her argument, the guidelines of the United States Patent and Trademark Office, which, she claims, make a distinction in this regard between trade marks registered for goods and those registered for services.
74      The applicant adds that the above considerations are, in general, applicable a fortiori in the case of the services covered by the earlier trade mark, which are offered in the context of ‘walk in’ workshops, without prior enrolment, where the clients pay the participation fee at the time of their first participation. Accordingly, there are no enrolment forms or invoices and the advertising material that she submitted to OHIM was the only physical representation of the earlier trade mark that her clients were confronted with. A form was only used for subscription to the annual Biodanza festival and a copy of that form was, it is claimed, submitted to OHIM.
75      It should be noted, in that regard, that under the terms of Rule 22(4) of Regulation No 2868/95, as amended, the evidence of genuine use of a trade mark is, in principle, 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 207/2009.
76      However, that provision contains only a list of examples of supporting documents and items, which does not therefore constitute an exhaustive list. It does not mean that all the types of supporting documents and items are required in order to prove the use of the earlier mark or that the types of supporting documents and items are confined to those set out in Rule 22(3) of Regulation No 2868/95 (judgment of 5 October 2010 in Case T‑92/09 Strategi Group v OHIM – RBI (STRATEGI), not published in the ECR, paragraph 43).
77      Furthermore, it follows from the case-law cited in paragraph 55 above that the assessment of the genuine nature of the use of a trade mark must, in particular, have regard to the nature of the goods or services covered by that trade mark as well as the uses regarded as warranted in the economic sector concerned. However, contrary to what the applicant claims, the case-law according to which the genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence, cited in paragraph 59 above, is also applicable to trade marks for services, it being necessary for the evidence required to be compatible with the nature of the services covered by such a trade mark.
78      In the present case, it should be noted that the Board of Appeal did not in any way require the applicant to prove the genuine use of her trade mark with evidence that she was not able to provide, owing to the nature of the goods and services covered by her trade mark or to her trade practices. The Board of Appeal confined itself to noting, in the contested decision, that the evidence submitted by the applicant did not establish the genuine use of her trade mark, within the meaning of the provisions and of the relevant case-law.
79      The applicant cannot claim that she was not able to submit any other evidence of the genuine use of her trade mark than that relied upon before OHIM.
80      In particular, the distribution of the magazines in which the advertising of the applicant appeared could be proved by appropriate documentation, drawn up by their publishers or, in the absence of that, by written declarations such as those set out in Article 78(1)(f) of Regulation No 207/2009. Moreover, the applicant could have submitted, in particular, internal documents from her company or, where relevant, photographs, to prove that the workshops and festivals concerned by this advertising were actually organised.
81      Finally, it should be noted that several of the brochures submitted by the applicant to prove the genuine use of her trade mark contain an enrolment form to be completed and returned to her. In fact, she did not submit any copy of a completed form.
82      In any event, even in the absence of enrolment forms or invoices, the applicant could, in particular, have submitted other accounting documents, such as copies of her business accounts or her declarations to the tax authorities, in order to prove the turnover that she had obtained from the services covered by the earlier trade mark. No document of that kind was submitted to OHIM.
83      The foregoing considerations are not called into question by the applicant’s reference to the guidelines of the United States Patent and Trademark Office. Independently of the fact that those guidelines concern the system of trade mark registration in the United States, which is governed by its own rules, which are not necessarily analogous to the relevant provisions of Regulation No 207/2009 and of Regulation No 2868/95, it is sufficient to note that the part of the guidelines in question, relied on by the applicant, concerns the production of samples relating to the use of trade marks and not proof of genuine use of the trade marks.
84      The applicant claims, finally, that Mr Toro Araneda acted in bad faith by making an application seeking proof of the genuine use of the earlier trade mark. She alleges that she had worked with him over the years and that, therefore, he was perfectly aware that she had made extensive, factual use of the earlier trade mark. She adds that she had invoked the bad faith of Mr Toro Araneda in her written pleadings before OHIM. She considers that the Board of Appeal should have rejected the application seeking proof of the genuine use of the earlier trade mark for this reason.
85      It should be noted, in that regard, that neither Article 42 nor any other provision of Regulation No 207/2009 expressly provides that the application seeking proof of genuine use shall be refused in the event of bad faith on the part of the party making the application. Nor can such a rule be implied from the applicable provisions. To make absence of bad faith on the part of the applicant a condition for the admissibility of an application seeking evidence of genuine use would needlessly complicate the procedure and would, ultimately, be contrary to the ratio legis of the provisions relating to it, referred to in paragraph 53 above.
86      To establish the bad faith of the party making such an application, OHIM would have to find not only that the trade mark at issue had been put to genuine use during the relevant period, but that the party making the application seeking proof of such use was aware of that fact. However, the first finding would already be sufficient to conclude that there had been genuine use of the trade mark at issue and to examine the merits of the opposition based on that use, without the need to consider whether the party making the application seeking proof of use had acted in bad faith.
87      Furthermore, it should be noted that, even if the party making an application seeking proof of the genuine use of a trade mark was aware of a use of that trade mark, even actual or extensive use, this would not necessarily mean that such an application had been made in bad faith. It is legitimate to want to submit for assessment by the competent bodies of OHIM the question of whether the use that one is aware of is sufficient to constitute a genuine use, within the meaning of Article 42(2) of Regulation No 207/2009 and of the relevant case-law.
88      It follows that the Board of Appeal did not commit an error of law by not refusing the application seeking proof of the genuine use of the earlier trade mark, on the grounds of the alleged bad faith of the party making the application, Mr Toro Araneda.
89      It follows from all of the foregoing that the first ground of appeal is unfounded and must be rejected.
The second plea, alleging infringement of Rule 22(2) of Regulation No 2868/95
90      By its second plea, the applicant alleges that the Board of Appeal infringed Rule 22(2) of Regulation No 2868/95, under which:
‘Where the opposing party has to furnish proof of use or show that there are proper reasons for non-use, [OHIM] shall invite him to provide the proof required within such period as it shall specify. If the opposing party does not provide such proof before the time limit expires, [OHIM] shall reject the opposition.’
91      The applicant claims that, whereas the Opposition Division had invited her to provide proof of the genuine use of the earlier trade mark and had then held that such use had been proved, the Board of Appeal did not inform her that it considered that such proof had not been provided, nor did it notify her that its assessment of the evidence of that use supplied to the Opposition Division would be antipodal to the findings of the Opposition Division. The applicant considers, therefore, that she was deprived of a ‘second instance’.
92      In that regard she alleges that the Board of Appeal infringed a principle of ‘procedural justice’. Various provisions of Regulation No 207/2009, Regulation No 2868/95 and Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 1996 L 28, p. 11), demonstrate the existence of that principle. That principle, it is claimed, also forms part of the principles generally accepted in this respect in the Member States that must be taken into account in accordance with Article 83 of Regulation No 207/2009. The applicant refers, in particular, to Article 139 of the German Zivilprossesordnung (code of civil procedure), Articles 8 to 14 of the French code of civil procedure, Articles 180 to 192 of the Austrian Zivilprossesordnung (code of civil procedure) and to the judgment of the High Court of Justice (England & Wales) Queen’s Bench Division in Clarapede v Commercial Union Association (1883) 32 WR 700, 710 11.
93      That plea is based on an erroneous perception of the nature and methods of the proceedings before the Board of Appeal and must be rejected.
94      It is apparent from Rule 22(2) of Regulation No 2868/95 that the opposing party, against which an application has been made seeking evidence of the genuine use of the earlier trade mark relied on in support of its opposition, must furnish the evidence proving such use within the period specified by the Opposition Division for that purpose.
95      With regard to the Board of Appeal, it is apparent from Article 64(1) of Regulation No 207/2009 that, following the examination as to the allowability of the appeal before it, it shall decide on the appeal and may, in so doing, ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that is, in this case, decide itself on the genuine use of the earlier trade mark, confirming or setting aside the contested decision in that respect.
96      It follows from Articles 62(2) and 78 of Regulation No 207/2009 that, for the purposes of the examination as to the merits of the appeal brought before it, the Board of Appeal is to invite the parties, as often as necessary, to file observations on communications issued by itself and that it may also order preliminary measures, among which feature the submission of matters of fact or evidence. Article 64(2) of Regulation No 207/2009 states that if the Board of Appeal remits the case for further prosecution to the department whose decision was appealed against, that department is to be bound by the ratio decidendi of the Board of Appeal, ‘in so far as the facts are the same’. Such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before OHIM, including those before the Board of Appeal (Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 58).
97      However, the above provisions cannot be interpreted as giving the holder of an earlier trade mark, relied on in support of an opposition, the right to obtain from the Board of Appeal a period of time in order to present new evidence to prove the genuine use of its trade mark, nor an unconditional right to ensure that such evidence, which may be provided spontaneously, is taken into consideration by that board. Under Article 76(2) of Regulation No 207/2009, OHIM may disregard evidence which is not submitted in due time by the parties concerned. Evidence submitted for the first time before the Board of Appeal has not been submitted ‘in due time’, within the meaning of that provision, and that board has a discretion as to whether or not to take such information into account when making the decision which it is called upon to give (see, to that effect, OHIM v Kaul, paragraphs 61 to 63).
98      In the present case, it is apparent from paragraph 13 of the contested decision that the Board of Appeal invited the applicant to submit her observations on the statement of grounds of Mr Toro Araneda, which she did on 10 February 2010. It is apparent from these observations, which appear in the file relating to the proceedings before OHIM, communicated to the General Court under Article 133(3) of the Rules of Procedure, that the applicant did not submit any new evidence of the genuine use of the earlier trade mark, but invited the Board of Appeal to re-examine the evidence already submitted and provided a brief commentary in this regard.
99      It follows that the Board of Appeal fully observed the provisions applicable to the proceedings before it. Nor can it be criticised, in this respect, for infringing a general principle of European Union law.
100    Although the applicant has not specified the exact principle that she is relying on in the context of her argument, it cannot but relate to the general principle of protection of the right to defend oneself, which, in the law of trade marks, is enshrined in Article 75, second sentence, of Regulation No 207/2009. According to that general principle, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known. The right to be heard extends to all the factual and legal material which forms the basis of the decision, but not to the final position which the authority intends to adopt (see Case T‑317/05 Kustom Musical Amplification v OHIM (Shape of a guitar) [2007] ECR II‑427, paragraphs 24, 26 and 27 and the case-law cited).
101    In the present case, as observed in paragraph 98 above, the Board of Appeal gave the applicant the opportunity to submit her observations. However, contrary to what the applicant seems to allege, the Board of Appeal was not bound to inform her of the final position that it intended to take, namely that the evidence submitted to the Opposition Division was not sufficient to prove the genuine use of the earlier trade mark, and to afford her the opportunity to submit her observations on that position, or even to submit additional evidence.
102    Those considerations are not called into question by the national provisions and case-law invoked by the applicant.
103    It should be noted, in that regard, that under the terms of Article 83 of Regulation No 207/2009, in the absence of procedural provisions in that regulation, Regulation No 2868/95 or Regulation No 216/96, OHIM ‘shall take into account the principles of procedural law generally recognised in the Member States’.
104    First, the question raised by the reasoning of the applicant in the present case is fully covered by the applicable procedural provisions, as is apparent from paragraphs 95 to 99 above, and therefore Article 83 is not applicable.
105    Second, even on the assumption that it is applicable, it is doubtful that ‘the principles of procedural law generally recognised’ can be deduced from the national provisions and case-law relating to civil procedure, given that, notwithstanding the guarantees of independence that they and their members enjoy, the Boards of Appeal are still OHIM bodies and not courts (see OHIM v Kaul, paragraph 51, and Case T‑63/01 Procter & Gamble v OHIM (Soap bar shape) [2002] ECR II‑5255, paragraph 23).
106    In any event, the national provisions and case-law relied on by the applicant are, first, analogous to the provisions mentioned in paragraph 96 above and, second, concern the obligation of a court to obtain the observations of the parties as to the questions that are relevant to resolve the dispute and which the parties have not dealt with sufficiently in their reasoning and to enable them to correct procedural errors, if such a correction does not prejudice the opposing party.
107    No useful lesson can be drawn from them in this case, in which the applicant was given sufficient opportunity to submit evidence of the genuine use of her earlier trade mark and her observations on the appeal of the other party before the Board of Appeal and in which she has not been criticised for any procedural error.
108    It follows from all of the above considerations that the second plea is unfounded and must be dismissed, together with the application in its entirety.
109    With regard to the head of claim submitted by IBF and the heirs of Mr Toro Araneda to the effect that the opposition should be rejected as inadmissible, it should be noted that it seeks alteration of the contested decision. In particular, it seeks to amend the grounds for rejecting the opposition by the contested decision, but not its operative part, which rejects the opposition (see, to that effect, Case T‑405/05 Powerserv Personalservice v OHIM – Manpower (MANPOWER) [2008] ECR II‑2883, paragraphs 21 to 24). However, since IBF and the heirs of Mr Toro Araneda have sought dismissal of the action and confirmation of the contested decision ‘in any event’, it must be concluded that the head of claim seeking alteration of the contested decision and the reasoning underlying it are submitted in the alternative only. Consequently, as the action must be dismissed on the grounds indicated above, that head of claim and reasoning need not be examined.
Costs
110    Under Article 87(2) 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs of OHIM and of IBF and of the heirs of Mr Toro Araneda, in accordance with the form of order sought by them.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Grants leave to the International Biocentric Foundation Ltd, Gabriela Cedilia Toro Acuña and Hilda Pilar Toro Acuña, Rolando Patricio Toro Acuña, Maria Verónica Toro Acuña, Ricardo Marcela Toro Durán and German Toro Gonzalez, Claudia Danae Toro Sanchez, Rodrigo Paulo Toro Sanchez, Mariela Paula Toro Sanchez, Viviana Luz Toro Matuk, Morgana Fonteles Toro, Anna Laura Toro Sant’ana, Joana Castoldi Toro Araneda and Claudete Sant’ana to intervene before the General Court;
2.      Dismisses the action;
3.      Orders Christina Arrieta D. Gross to pay the costs.
Czúcz
Labucka
Gratsias
Delivered in open court in Luxembourg on 8 March 2012.
[Signatures]
* Language of the case: English.