62011TJ0660_EN
Parties
Grounds
Operative part
Parties
In Case T‑660/11,
Polytetra GmbH,
established in Mönchengladbach (Germany), represented by R. Schiffer, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),
represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal, intervener before the General Court, being
EI du Pont de Nemours and Company,
established in Wilmington, Delaware (United States), represented by E. Armijo Chávarri, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 29 September 2011 (Case R 2005/2010-1) concerning opposition proceedings between EI du Pont de Nemours and Company and Polytetra GmbH,
THE GENERAL COURT (First Chamber),
composed of H. Kanninen, President, I. Pelikánová and E. Buttigieg (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 30 December 2011,
having regard to the response of OHIM lodged at the Court Registry on 12 April 2012,
having regard to the response of the intervener lodged at the Court Registry on 16 April 2012,
having regard to the decision of 13 June 2012 refusing to allow the lodging of a reply,
having regard to the change in the composition of the chambers of the Court,
having regard to the measures of organisation of procedure of 28 July 2014,
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 decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to hear the parties during the hearing,
further to the hearing on 4 November 2014,
gives the following
Judgment
Grounds
Background to the dispute
1. On 24 July 2007, the applicant, Polytetra GmbH, filed an application for registration of a Community trade mark with 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 word sign POLYTETRAFLON.
3. The goods and services in respect of which registration was sought are in Classes 1, 11, 17 and 40 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, for each of those classes, to the following description:
– Class 1: ‘Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed plastics; fire extinguishing compositions; tempering and soldering preparations; adhesives used in industry’;
– Class 11: ‘Heat exchangers; hot plates; tubular radiators; apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’;
– Class 17: ‘Plastics in extruded form for use in manufacture, in particular shrinkdown plastic tubing, roller coverings, corrugated tubes, lighting tube coverings, fibre-glass cloths, sweatbands, bags, fibre-glass conveyor belts, fibre-glass mesh fabrics, fibre-glass laminated plates, yarns, fabric articles, bellows, feed nozzles; welding and soldering wire of plastic; welding wire and welding film of plastic; plastic liners; gaskets; fluoro-plastic coatings; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal; rubber, gutta-percha, gum, mica and goods made from these materials and not included in other classes; semi-finished goods of fluoro-plastics, in particular of polytetrafluoroethylene, in particular in the form of plates, rods, pipes and foils’;
– Class 40: ‘Treatment of materials’.
4. The Community trade mark application was published in Community Trade Marks Bulletin No 9/2008 of 25 February 2008.
5. On 23 May 2008, EI du Pont de Nemours and Company filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to the registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6. The opposition was based on the earlier Community word mark TEFLON, which was registered on 7 April 1999 under number 432120, and renewed on 19 November 2006, in respect of goods and services in, inter alia, Classes 1, 11, 17 and 40 corresponding, for each of those classes, to the following description:
– Class 1: ‘Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry’;
– Class 11: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’;
– Class 17: ‘Rubber, gutta-percha, gum, asbestos, mica and goods made from those materials and not included in other Classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal’;
– Class 40: ‘Treatment of materials’.
7. The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), 8(2)(c) and 8(5) of Regulation No 40/94 (now Article 8(1)(b), 8(2)(c) and 8(5) of Regulation No 207/2009).
8. In the context of the opposition proceedings, the intervener submitted various documents as proof of the earlier mark’s reputation in relation to some of the goods covered by the earlier mark.
9. In the course of the opposition proceedings, the applicant requested proof of genuine use of the earlier mark on which the opposition was based, in accordance with Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009).
10. In response to that request, the intervener referred back to the documents relating to the reputation of the earlier mark and submitted additional evidence in order to show that the earlier mark had been put to genuine use.
11. By decision of 14 September 2010, the Opposition Division rejected the opposition. It took the view that the goods and services covered by the marks at issue were identical. However, it found that the signs at issue were very slightly similar on a visual and phonetic level and that, conceptually, they were different. Consequently, it ruled out any likelihood of confusion between the marks at issue. The Opposition Division further held that the evidence submitted by the intervener proved that the earlier mark had a reputation in relation to some of the goods that it covered but that the opposition could not be upheld under Article 8(5) of Regulation No 207/2009 as there was no similarity between the signs, this being a condition for application of that provision. Having rejected the opposition, the Opposition Division held that it was not necessary to examine proof of genuine use of the earlier mark.
12. On 15 October 2010, the intervener 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.
13. By decision of 29 September 2011 (‘the contested decision’), the First Board of Appeal of OHIM upheld the appeal, annulled the Opposition Division’s decision and, upholding the opposition, rejected the trade mark application in respect of all the goods and services in question. It held that the intervener had proved use of the earlier mark for some of the goods in Classes 1, 11 and 17, particularly in light of the fact that the non-stick material marketed by the intervener under that mark had been used by numerous undertakings in the European Union in the manufacture of a wide range of products and that that mark had been prominently displayed in brochures and advertisements for those products. By contrast, according to the Board of Appeal, use of the earlier mark had not been proved as regards the services in Class 40. It moreover acknowledged, as the Opposition Division had, that the earlier mark enjoyed an exceptional, worldwide reputation, including in the European Union, in relation to a number of goods for which it had been registered. It held that the goods covered by the marks applied for were in part identical and in part highly similar to the goods covered by the earlier mark for which genuine use had been proved and that, in contrast to what the Opposition Division had found, the signs at issue were similar. Consequently, according to the Board of Appeal, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, since some of the visual and phonetic differences between the signs at issue were counterbalanced by the identity or high degree of similarity between the goods in question. In those circumstances, the Board of Appeal did not consider it necessary to examine the opposition in so far as it was based on Article 8(2)(c) and (5) of Regulation No 207/2009.
Forms of order sought by the parties
14. The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
15. OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
16. In support of its action, the applicant raises two pleas in law: (i) breach of Article 8(1)(b) of Regulation No 207/2009 and (ii) breach of Article 42(2) and (3) and Article 15(1) of that regulation.
17. Before examining the pleas raised by the applicant, the Court considers it necessary to examine of its own motion whether the duty to state reasons for the contested decision has been observed in the present case.
The duty to state reasons
18. It should be noted that, under the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM are to state the reasons on which they are based. According to the case-law, that duty has the same scope as that under the second paragraph of Article 296 TFEU and its purpose is, first, to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and, second, to enable the EU judicature to exercise its power to review the legality of the decision (see judgments of 6 September 2012 in Storck
v OHIM, C‑96/11 P, EU:C:2012:537, paragraph 86, and of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 43 and the case-law cited).
19. In the present case, although the applicant disputes that genuine use, within the meaning of Article 42(2) of Regulation No 207/2009, has been demonstrated for the earlier mark ‘as used in the market’ and doubts the fact that ‘films, resins, finishes, homopolymers, copolymers’, for which the intervener at most proved use, must be regarded as falling within Class 1, it has not formally raised a plea alleging a failure to state reasons or an inadequate statement of reasons. However, an absence of reasons or an inadequate statement of reasons constitutes an infringement of essential procedural requirements for the purposes of Article 263 TFEU and is a plea involving a matter of public policy which may, and indeed must, be raised by the EU judicature of its own motion (judgments of 2 December 2009 in Commission v Ireland and Others, C‑89/08 P, ECR, EU:C:2009:742, paragraph 34, and of 27 March 2014 in Intesa Sanpaolo
v OHIM — equinet Bank (EQUITER), T‑47/12, ECR, EU:T:2014:159, paragraph 22).
20. The parties having been heard, during the hearing, on whether the contested decision contains sufficient reasons so far as concerns the correspondence between the goods in respect of which the Board of Appeal relied on evidence adduced by the intervener, on the basis of which it had held that genuine use of the earlier mark had been demonstrated, and those in respect of which that mark was registered and which are cited as justification for the opposition, it is appropriate for that plea to be raised of the Court’s own motion. If the contested decision does not contain adequate reasoning in that regard, it will be impossible for the Court to review the legality of the Board of Appeal’s finding in paragraph 28 of the contested decision on genuine use of the earlier mark in relation to each of the goods for which genuine use has been found (see paragraph 26 below).
21. When questioned on that point during the hearing, OHIM answered that the Board of Appeal was, in principle, required to ascertain whether the goods and services for which the mark had been put to use did fall within the categories of the goods and services for which that mark had been registered, as provided for in Regulation No 207/2009 and the guidelines for examination in the Office in relation to evidence of genuine use.
22. OHIM acknowledges that, in the present case, the contested decision does not contain detailed reasoning and does not contain a ‘category by category’ analysis of each of the goods for which genuine use of the earlier mark has been accepted. However, in its view, even though the reasoning contained in the contested decision is rather concise in that regard, the Board of Appeal conducted a thorough assessment of all the evidence submitted by the intervener, which is apparent from the contested decision.
23. It must nevertheless be pointed out, first, that a decision which (i) concludes that an earlier mark has been put to genuine use within the meaning of Article 42(2) of Regulation No 207/2009 and (ii) does not make clear to what extent the evidence produced supports that conclusion in relation to each of the goods or services or each of the categories of goods or services for which that use has been accepted is vitiated by inadequate reasoning. Second, it should also be pointed out that that provision requires that the Board of Appeal establish a link between the goods or services for which it considers genuine use to have been demonstrated and all or a part of the goods and services in respect of which that mark is registered, in order to allow a subsequent assessment of a likelihood of confusion (see, to that effect, judgment in EQUITER, cited in paragraph 19 above, EU:T:2014:159, paragraph 27).
24. A lack of precision in that regard in an OHIM decision renders it impossible for a review to take place of the application by the Board of Appeal of the last sentence of Article 42(2) of Regulation No 207/2009, according to which ‘[i]f the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services’. According to settled case-law, it follows from Article 42(2) and (3) of that regulation that, if 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 in opposition proceedings only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. On the other hand, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for those goods or services necessarily covers the entire category for the purposes of the opposition (judgments of 14 July 2005 in Reckitt Benckiser (Spain) v OHIM — Aladin (ALADIN), T‑126/03, ECR, EU:T:2005:288, paragraph 45, and 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 23).
25. Accordingly, it is for the Board of Appeal to assess, where use is proved only in respect of a part of the goods or services in a category for which the earlier mark is registered and which is cited as justification for the opposition, whether that category includes independent subcategories covering the goods and services in respect of which use is demonstrated, so that it must be held that use has been proved only in respect of that subcategory of goods and services or, on the other hand, whether such subcategories are not possible (see, to that effect, judgment in EQUITER, cited in paragraph 19 above, EU:T:2014:159, paragraph 20 and the case-law cited).
26. In the present case, the Board of Appeal found, in paragraph 28 of the contested decision, that genuine use of the earlier mark had been proved for ‘chemicals used in industry and science, unprocessed artificial resins, unprocessed plastics; adhesives used in industry’ in Class 1, ‘apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’ in Class 11 and ‘plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal’ in Class 17, on which the opposition was based.
27. In order to justify its finding, the Board of Appeal stated, in paragraphs 22 to 25 of the contested decision, that the polytetrafluoroethylene (PTFE) produced by the intervener was used, under licences, as a coating in a number of final products of third parties. It then rejected, in paragraph 26 of the contested decision, the applicant’s argument that use of that mark was not proved for the final products of third parties as such, on the ground that the intervener’s coatings were integral to the makeup and structure of the goods and that that mark had been displayed in a prominent position in the brochures and advertisements for those goods.
28. In that regard, it must be stated that, in its reasoning concerning the proof of genuine use of the earlier mark, the Board of Appeal confined itself to relying, in paragraph 22 of the contested decision, on the fact that the intervener supplied PTFE in various forms, such as resin, granular compression moulding resin, white powder or fluoropolymer dispersion. However, those goods are not listed, as such, among the goods in respect of which the earlier mark was registered.
29. ‘Resins’ are indeed listed, as ‘unprocessed artificial resins’, among the goods in Class 1 for which the earlier mark is registered. Nevertheless, it must be noted that artificial resins in the form of semi-finished goods fall within Class 17, according to the Nice Classification. However, the Board of Appeal did not specify whether the resins it cites in paragraph 22 of the contested decision were unprocessed goods falling within Class 1, as covered by the earlier mark, or semi-finished goods falling within Class 17 and, in case of the latter, to which goods they corresponded among those in that class for which the earlier mark was registered.
30. Furthermore, even assuming that the Board of Appeal regarded PTFE as corresponding to ‘unprocessed artificial resins’ in Class 1 for which the earlier mark had been registered, it is not clear from the contested decision what the relationship of that product is with other goods falling within the same class for which the Board of Appeal considered genuine use to have had been established.
31. Neither can it be determined from the contested decision whether, in referring to PTFE under various forms and to coatings or to a raw material used in the makeup of the various goods, the Board of Appeal is referring to all or a part of the goods in Class 1 or all or a part of the goods in Class 17 for which the earlier mark was registered.
32. Moreover, it should be stated that, as regards the conclusion in paragraph 26 of the contested decision, the Board of Appeal did not clearly identify the goods, among those for which the earlier mark had been registered and on which the opposition was based, to which that conclusion was to be applied. In addition, in paragraphs 24 and 25 of the contested decision, the Board of Appeal makes reference to various final products of third parties containing the intervener’s non-stick materials, namely shatter resistant fittings for lamps and glass guard fluorescent lamps, surface protection for garden paving, high temperature cable systems for gas turbines, impregnated lubrication for bicycles and car wax, hoses, tennis racket head grommets, sealing tape for plumber junctions, kitchen scrunge, plastics used in microwaves, household appliances and cookware. However, it must be found that none of those goods are listed, as such, among the goods for which the earlier mark had been registered and on which the opposition was based.
33. Additionally, the clarifications provided by the intervener during the hearing, in response to a question from the Court asked in relation to issues raised in that respect by the applicant, are not apparent in the reasoning of the contested decision. It cannot, in particular, be determined, on the basis of the reasoning of the contested decision, whether ‘films, resins, finishes, homopolymers, copolymers’, for which the intervener had produced, as evidence of genuine use, annual sales figures to which the applicant made reference, consisted of unprocessed goods falling within Class 1 or semi-finished goods falling within Class 17, nor which goods among those for which the earlier mark had been registered were manufactured and marketed by the intervener directly under the earlier mark or which were the final products of third parties for which genuine use was proved by the fact that those third parties were using that mark in respect of their goods, the makeup and structure of which incorporate the intervener’s goods.
34. Where sufficient reasons for reviewing the legality of the contested decision are lacking, it is not for the General Court to conduct an analysis based on reasoning not apparent from that decision. It is for OHIM to investigate the application for registration of a Community trade mark and to decide upon it. It is then for the Court, if necessary, to review the evaluation made by the Board of Appeal in the decision adopted on the basis of the grounds relied on by the Board of Appeal in support of its conclusion. It is not, by contrast, for the Court to put itself in OHIM’s place in exercising the powers vested in OHIM by Regulation No 207/2009 (see, to that effect, judgment of 15 March 2006 in Athinaiki Oikogeniaki Artopoiia v OHIM — Ferrero (FERRÓ), T‑35/04, ECR, EU:T:2006:82, paragraph 22).
35. Accordingly, it must be stated that the contested decision is vitiated by inadequate reasoning since it does not enable the Court to understand the extent to which the pieces of evidence produced by the intervener and relied on by the Board of Appeal allegedly proved genuine use of the earlier mark for each of the goods among those for which that mark had been registered and on which the opposition was based, for which that use had been regarded as proved.
36. Nevertheless, that inadequacy of reasoning vitiating the contested decision does not concern, as such, the fundamental conclusion contained in paragraph 26 of the contested decision and the subject of the first part of the second plea, according to which use of the earlier mark was shown for the final products on the ground that the intervener’s coatings are integral to the makeup and structure of third parties’ final products, such that the applicant was able to formulate, in the first part of the second plea, the objections to that finding and defend its rights. Neither does it concern the assessment of the probative value of the evidence relating to use of the earlier mark for ‘films, resins, finishes, homopolymers, copolymers’ referred to in the second part of the second plea. Accordingly, the Court is able to exercise its power of review over the legality of the contested decision in relation to those objections.
The second plea, alleging infringement of Article 42(2) and (3) and Article 15(1) of Regulation No 207/2009
37. The applicant argues first of all that the Board of Appeal took into consideration, for the purposes of the assessment of genuine use of the earlier mark, evidence that was not from the relevant period.
38. The applicant’s other arguments may be divided into two parts.
39. In the context of the first part of the second plea, the applicant submits that the evidence from the relevant period proves, at best, the use of the earlier mark for the films, resins, finishes, homopolymers, copolymers used by third parties as raw materials, ingredients or components for their final products, in particular for the surfaces of those products, but not for those final products as such.
40. By the second part of the second plea, the applicant disputes that the intervener adduced sufficient and appropriate evidence to prove genuine use of the earlier mark, even for films, resins, finishes, homopolymers and copolymers. According to the applicant, neither evidence which does not bear any indication of dates nor evidence on which the earlier mark is not shown as ‘used in the market’ may be taken into account for the purposes of assessing whether the earlier mark has been put to genuine use.
41. OHIM and the intervener dispute the applicant’s arguments.
42. In that regard, it should be observed, in the first place, that it is apparent from recital 10 in the preamble to Regulation No 207/2009 that the EU legislature considered that there is no justification for protecting an earlier trade mark, except where it is actually used. Article 42(2) and (3) of Regulation No 207/2009 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the period of five years preceding the date of publication of the trade mark application against which an opposition has been filed (see judgment of 27 September 2007 in La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, EU:T:2007:299, paragraph 51 and the case-law cited).
43. Under Rule 22(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), clarifying the provisions of Article 42(2) and (3) of Regulation No 207/2009, evidence of use must concern the place, time, extent and nature of use of the earlier trade mark (see judgment in LA MER, cited in paragraph 42 above, EU:T:2007:299, paragraph 52 and the case-law cited).
44. Although the concept of genuine use therefore excludes all minimal and insufficient use as the basis for a finding that a mark is being put to real and effective use on a given market, nevertheless 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 (see, to that effect, judgments of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, ECR, EU:T:2004:225, paragraph 38, and 23 February 2006 in Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, ECR, EU:T:2006:65, paragraph 32).
45. 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 on the relevant territory, be used publicly and outwardly (see judgment in LA MER, cited in paragraph 42 above, EU:T:2007:299, paragraph 54 and the case-law cited).
46. More specifically, to assess whether a particular trade mark has been put to genuine use in a particular case, an overall assessment of the documents in the file must be carried out, taking account of all the relevant factors in the case. 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 goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment in LA MER, cited in paragraph 42 above, EU:T:2007:299, paragraph 55 and the case-law cited).
47. Last, 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 (see judgment in LA MER, cited in paragraph 42 above, EU:T:2007:299, paragraph 59 and case-law cited).
48. According to Rule 22(4) of Regulation No 2868/95, evidence is, 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 78(1)(f) of Regulation No 207/2009 (see judgment of 13 May 2009 in Schuhpark Fascies v OHIM — Leder & Schuh (jello SCHUHPARK), T‑183/08, EU:T:2009:156, paragraph 25).
49. The second plea must be assessed in the light of the above considerations.
50. In the present case, it is clear from paragraphs 6 and 7 of the contested decision and from the analysis of the documents in the file OHIM submitted to the Court that, responding to the request for proof of genuine use of the earlier mark, the intervener referred to the documents submitted in order to prove the reputation of the earlier mark, namely:
– an excerpt of a website showing the properties of PTFE;
– a witness statement setting out the history of its activities, the goods and services offered by the applicant under the TEFLON mark, the annual sales figures of the non-stick materials it sells under the earlier mark in Europe from 1998 to 2000 and the annual fees for the licences for use of its coatings between 2003 and 2006 and the advertising activities and costs, in particular, for the years from 2004 to 2007;
– extracts from dictionaries in different languages showing definitions of the term ‘teflon’;
– surveys and reports conducted in June, July and November 2001 and in July 2006 on consumer awareness, including in the Member States, of the TEFLON mark, of the features of the products covered by that mark and of the possible uses of them;
– a list of its subsidiaries operating worldwide, including in the European Union;
– guidelines for the correct use of the TEFLON trade marks under licences, entitled ‘TEFLON Trademark Licence, Trademark Usage Rules’, decisions of the national courts of Member States on disputes involving the unauthorised use of that mark and OHIM decisions on oppositions based on the TEFLON mark;
– information on the manner of use of the TEFLON mark and specimens of labels of goods on which that mark appears;
– advertisements and magazine articles.
51. The intervener also produced before OHIM other evidence to demonstrate that the earlier mark had been put to genuine use. That evidence comprises:
– sales figures from 2003 to 2008 in Member States for sales of films, resins, finishes, homopolymers and copolymers, under the TEFLON mark, and marketing communications figures for those products over the same period;
– an excerpt from its website setting out the various forms and features of the products sold under the TEFLON mark and their possible uses;
– information on the history of fluoropolymers, including PTFE, as marketed under the TEFLON mark, and their possible uses in various sectors of industry;
– brochures and advertisements relating to the products using the coatings and components covered by the TEFLON mark;
– information on the ‘Licensed Applicator Program’ of the products covered by the TEFLON mark and a list of the applicators it licenced with excerpts of their websites and brochures on the use of its products covered by the TEFLON mark in other products.
The relevant period
52. In this case, the application for a Community trade mark filed by the applicant was published on 25 February 2008. Consequently, the period of five years referred to in Article 56(2) of Regulation No 207/2009, read in conjunction with Article 42(2) of that regulation, runs, as indicated in paragraph 21 of the contested decision, from 25 February 2003 to 24 February 2008 inclusive. The earlier mark being a Community trade mark, the territories for which evidence of use is sought are those of EU Member States.
53. It should be stated that one of the pieces of evidence on which the Board of Appeal based its finding of genuine use of the earlier mark is not from the relevant period, as the applicant submits. That Spanish magazine, to which reference is made in paragraphs 22, 24 and 25 of the contested decision, published in 2002, cannot, on its own, serve as proof of genuine use of the earlier mark for the period between 25 February 2003 and 24 February 2008 inclusive.
54. Nevertheless, the Court considers that, since the market life of a product usually extends over a given period of time, and continuity of use is one of the indications relevant for establishing that use has been objectively intended to create or maintain a market share, the documents not from the relevant period, far from being irrelevant, must be taken into account and should be evaluated in conjunction with the rest of the evidence, inasmuch as they can offer proof of real and genuine commercial exploitation of the mark (see, to that effect, judgments of 13 April 2011 in Bodegas y Viñedos Puerta de Labastida v OHIM — Unión de Cosecheros de Labastida (PUERTA DE LABASTIDA), T‑345/09, EU:T:2011:173, paragraph 32 and the case-law cited, and 16 November 2011 in Buffalo Milke Automotive Polishing Products v OHIM — Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, ECR, EU:T:2011:675, paragraph 65).
55. It follows that, since the Board of Appeal did not base its assessment of genuine use of the earlier mark on the single Spanish magazine mentioned in paragraph 53 above, but took that item into account in conjunction with other evidence in finding that genuine use of that mark had been proved, it did not err as to the evidence taken into account in that assessment.
The first part of the second plea, relating to use of the earlier mark for goods other than ‘films, resins, finishes, homopolymers, copolymers’
56. The applicant submits that the evidence from the relevant period proves, at best, use of the earlier mark for the films, resins, finishes, homopolymers and copolymers, ‘probably’ falling within Class 1, used by third parties as raw materials, ingredients or components for their products, in particular for the surfaces of those products, but not for those final products as such. It submits that the earlier mark is affixed to third parties’ final products as an indication pertaining to one of their components, thus contributing to promoting them by reference to the quality of the raw material identified by the TEFLON mark, but that the products themselves are always identified and sold under the manufacturer’s own mark. Thus, the use of the earlier mark by those third parties does not constitute, according to the applicant, ‘use for the third [parties’] final product’, but rather for the goods manufactured by the intervener, namely, films, resins and coatings. In addition, it maintains that, given that the question of whether a raw material used as an ingredient or component of a product is similar to the product itself is debatable, use of a mark for such a product cannot be inferred from proof that it has been used for the raw material, which might be similar, that constitutes it.
57. Consequently, according to the applicant, genuine use of the earlier mark has not been proved for the goods in Classes 11 and 17, contrary to what the Board of Appeal held.
58. OHIM notes that it is not uncommon, and may be considered a well-known fact, for a product to bear two trade marks, one being the manufacturer’s mark identifying the finished product and the other being the mark identifying a component thereof, the presence of which may influence consumer choice and even be decisive in that respect. That phenomenon is known in marketing literature as ‘ingredient branding’ or as a ‘sub-species of co-branding’.
59. OHIM submits that the Board of Appeal carried out an in-depth assessment of the evidence submitted by the intervener, from which it emerges that the mark TEFLON, as a reference to a coating, is used in respect of different goods manufactured by third parties for which the coating is integral to their makeup and structure, with the result that it must be confirmed that genuine use of the earlier mark has been proved for those goods. Consequently, OHIM is of the view that, given the specificity of the sector in which ‘co-branding’ is carried out and therefore the existence of a sub-segment of the market consisting of goods which compete with each other on the basis of the type of coating that has been applied to them, the Board of Appeal was right to take the view that the earlier mark, which ‘literally’ indicates a special type of coating, has also become a ‘co-brand’ of the finished product.
60. The intervener contends that use of the earlier mark has been proved for all the products referred to in paragraph 28 of the contested decision. It maintains that, as its resins, plastics, adhesives, chemicals and coatings are integral to the makeup and structure of third parties’ final products, which are sold under the earlier mark, use of it can be claimed also on the basis of such sales. It claims that, in its submissions, the applicant mixes up two distinct concepts: the production and the marketing of goods. In its view, in assessing the use of a mark, it should be determined whether a product is sold under the mark at issue, irrespective of whether the trade mark holder manufactures part (for example, the resins or coatings) or the entirety of that product, or whether the product is sold under two or more marks. According to the intervener, the case-law of the Court confirms that two or more marks may be used to market the same product.
61. In the present case, as regards proof of genuine use of the earlier mark, the Board of Appeal noted, in paragraph 22 of the contested decision, that the intervener supplied PTFE, in various forms. It stated that the intervener operated through the ‘Licensed Applicator Program’, the participants of which were chosen for their knowledge, experience and workmanship in applying the coatings of the TEFLON mark. In paragraphs 24 to 26 of the contested decision, the Board of Appeal observed, while making reference to the various pieces of evidence submitted by the intervener, that numerous undertakings in the European Union were using the intervener’s product as a component in or coating of their products, ‘ranging [from] cookware to aerospace, from automotive to semiconductor processing, from communications cabling to fabrics’.
62. Moreover, it follows from paragraph 24 of the contested decision, in which reference is made to ‘licensed users’, from the file relating to the proceedings before OHIM, submitted to the Court, and from the intervener’s response to the Court’s written question that the intervener grants licences for use of the TEFLON mark to third parties incorporating its raw materials or coatings into their products. The relevant licensee is therefore authorised to market its product while displaying, in addition to its own mark, the intervener’s TEFLON mark. Moreover, those facts were confirmed by the intervener during the hearing in response to questions from the Court.
63. In concluding, in paragraph 26 of the contested decision, that the coatings produced by the intervener were integral to the makeup and structure of third parties’ final products and that the earlier mark had been displayed in the brochures and advertisements for those products, the Board of Appeal rejected the applicant’s argument that ‘use of the earlier mark is not shown for the whole product’.
64. Accordingly, the Board of Appeal concluded that use of the earlier mark within the European Union had been established, over the relevant period, for the goods mentioned in paragraph 26 above.
65. In that regard, it must be recalled that the rationale for the requirement that a mark must be the subject of genuine use in order to be protected under EU law is that OHIM’s register cannot be regarded as a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, and in accordance with recital 10 in the preamble to Regulation No 207/2009, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (judgment of 15 September 2011 in centrotherm Clean Solutions
v OHIM — Centrotherm Systemtechnik (CENTROTHERM), T‑427/09, ECR, EU:T:2011:480 paragraph 24).
66. In view of the parties’ arguments, the question of whether proof of use of the earlier mark in respect of third parties’ final products incorporating the intervener’s component, simultaneously with other marks of those products, can constitute proof of genuine use of the earlier mark for the final products for which that mark was registered will be assessed in two sections. First, it must be examined whether a component and the product incorporating it can be regarded as falling within the same group of goods, such that proof of use of the earlier mark for third parties’ final products incorporating that component would constitute proof of genuine use of the earlier mark for the final products for which the earlier mark was registered. Second, the essential function of a trade mark must be taken into account, which is to identify the commercial origin of the goods it designates.
– Whether a component and a product integrating that component belong to the same group of goods
67. According to the case-law, it is necessary to interpret Article 42(2) and (3) of Regulation No 207/2009 as seeking to prevent a trade mark which has been used in relation to part of the goods or services for which it is registered being afforded extensive protection merely because it has been registered for a wide range of goods or services. In those circumstances, only the goods which are not in essence different from those for which the proprietor of the earlier mark has succeeded in proving genuine use and which belong to a single group which cannot be divided other than in an arbitrary manner are covered by that mark (see, to that effect, judgment in ALADIN, cited in paragraph 24 above, EU:T:2005:288, paragraphs 44 and 46).
68. In the present case, it must be stated that the non-stick materials that the intervener supplies to its customers undergo a process of transformation, either by those customers or by the undertakings licenced by the intervener, resulting in products for sale to the end consumer in order to be used as such. In those circumstances, even in the event that third parties’ final products incorporate the intervener’s non-stick materials or if their coating is manufactured from those materials, they, both by their nature and by their intended purpose, are essentially different from non-stick materials and do not belong to the same group as them, a group which cannot be divided other than in an arbitrary manner within the meaning of the case-law cited in paragraph 67 above (see, to that effect and by analogy, judgment of 3 May 2012 in Conceria Kara v OHIM — Dima (KARRA), T‑270/10, EU:T:2012:212, paragraph 53).
69. It follows that, in the present case, proof of use of the earlier mark in respect of third parties’ final products incorporating the intervener’s component does not permit the conclusion that it has been used for the final products for which that mark was registered. The Board of Appeal did not substantiate the conclusion in paragraph 26 of the contested decision with any argument refuting this finding. Accordingly, the Board of Appeal was wrong to consider that genuine use of the TEFLON mark had been proved for the final products in that respect.
– The essential function performed by the earlier mark
70. According to the case-law cited in paragraph 45 above, genuine use of a trade mark may be found only where that mark is used to guarantee the identity of origin of the goods or services for which it was registered. Following the conclusion of the Board of Appeal in paragraph 26 of the contested decision would be tantamount to taking the view that those final products originate from the intervener, together with its customers, when the intervener does not claim that this is the reality of its commercial operation and nothing in the case file shows that this is the case (see, to that effect, judgment in KARRA, cited in paragraph 68 above, EU:T:2012:212, paragraph 54).
71. Instead, it is apparent from the case file that the TEFLON mark is used by third parties to indicate the presence of the raw material or of a coating originating from the intervener, as the applicant maintains, and not to denote a link either between the intervener and the third party’s product or between that third party and its product.
72. First, the intervener stated, in response to the written question of the Court, that use of the TEFLON mark by third parties was subject to a number of conditions aimed, essentially, at ensuring that those third parties source raw materials originating from the intervener, either from the intervener itself or from applicators licenced by the intervener, that they submit their products manufactured with those materials for the approval of the intervener or of a licenced applicator, and that they enter into a licence relating to that mark. It follows moreover from a document attached to that response, entitled ‘Trademark usage guidelines’, that the licensee must use the following wording when selling its product: ‘[m]anufactured and distributed by [licensee], who assumes liability for the manufacture for this Product’.
73. Second, the examples regarding the manner of using the earlier mark, given by the intervener in the guidelines on using the TEFLON mark under licence, entitled ‘TEFLON Trademark Licence, Trademark Usage Rules’ (both those included in OHIM’s file, submitted to the Court, and those produced in response to the Court’s written question) also illustrate the fact that the intervener wishes that mark to identify those coatings, resins or other raw materials or components and not to indicate the commercial origins of third parties’ final products incorporating those materials. The intervener makes it clear, by way of example, that the correct use of the earlier mark involves using one of the following formulations in relation to the third party’s final product: ‘Valves coated with TEFLON non-stick resin’, ‘TEFLON brand resin’, ‘Wear resistance with TEFLON fluoropolymer’, ‘Valves lined with TEFLON industrial coatings’ or ‘I cook with pans that have TEFLON coating’.
74. It must moreover be pointed out that OHIM accepts that the TEFLON mark ‘literally’ indicates a special type of coating (see paragraph 59 above).
75. Third, it follows from the evidence provided by the intervener before OHIM that the earlier mark is used in reference to third parties’ final products along with the manufacturer’s own mark. OHIM and the intervener regard this as ‘co-branding’ of those final products.
76. It is true, according to the case-law relied on by the intervener, that there is no rule in the Community trade mark system that obliges the opponent to prove the use of his earlier mark on its own, independently of any other mark (judgments of 8 December 2005 in Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, ECR, EU:T:2005:438, paragraphs 33 and 34; 21 September 2010 in Villa Almè
v OHIM — Marqués de Murrieta (i GAI), T‑546/08, EU:T:2010:404, paragraph 20; and 14 December 2011 in Völkl
v OHIM — Marker Völkl (VÖLKL), T‑504/09, ECR, EU:T:2011:739, paragraph 100).
77. Nevertheless, in the cases giving rise to the judgments cited in paragraph 76 above, the marks for the same product identified the same commercial origin of that product, each thus being capable, independently, of performing the essential function in respect of that product. In the present case, as has been noted above, the earlier mark is affixed to third parties’ final products to indicate the presence of a component originating from the intervener, but the goods themselves are still identified by, and sold under, the manufacturer’s own mark, which indicates the commercial origin of those goods.
78. Such a commercial practice reflects the will of the manufacturers of the final products to indicate to the consumer that they are at the origin of the transformation of the raw materials covered by the TEFLON mark and to enable the consumer to identify who is the ultimate creator of those goods (see, to that effect, judgment in KARRA, cited in paragraph 68 above, EU:T:2012:212, paragraph 55).
79. Fourth, it follows from the case-law that the aim of the essential function of a mark in the context of assessing its use, namely to identify the commercial origin of the goods or services, is to enable the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent purchase (judgment of 27 February 2002 in Rewe-Zentral
v OHIM (LITE), T‑79/00, ECR, EU:T:2002:42, paragraph 26).
80. In the present case, use of the TEFLON mark in relation to third parties’ final products does not ensure the essential function of that mark within the meaning of the case-law cited in paragraph 79 above in respect of those final products. From the circumstances of the present case noted in paragraphs 70 to 78 above it can be concluded that the consumer is capable of easily distinguishing the commercial origins, first, of the non-stick material covered by the TEFLON mark and, second, of the final product covered by the manufacturer’s mark. If the consumer’s experience proves to be positive as regards the coating or another component of the third party’s final product, identified by the TEFLON mark, he would look for a corresponding product containing the component covered by that mark. Thus, the presence of the TEFLON mark on third parties’ final products guides the consumer’s choice towards the product by reference to the positive experience relating to the coating or certain functional characteristics of the product owing to the presence of the raw material designated by that mark and not in respect of the final product as such. However, if the experience of the consumer or end user of the product as such proves to be positive, he will look for the same product based on the manufacturer’s mark of origin identifying that product.
81. It follows from the foregoing considerations that the TEFLON mark used by third parties in respect of their final products does not perform the essential function of guaranteeing the origin of those goods. Consequently, contrary to what the Board of Appeal concluded in paragraph 26 of the contested decision, such a use of the earlier mark cannot be regarded as use for those goods for the purposes of Article 42(2) and (3) of Regulation No 207/2009.
82. The findings in paragraphs 69 and 81 are not invalidated by the arguments of OHIM or by those of the intervener.
83. First, the Court cannot accept OHIM’s argument – referring to particular characteristics of the final products in question and to specific conditions of the market for those goods – that genuine use of the TEFLON mark identifying the component must be accepted also for third parties’ final products which include that component, since the goods at issue compete with each other on the basis of their coating or of the raw material they contain.
84. In that regard, it is true that, according to the case-law cited in paragraph 46 above, the characteristics of the goods, and those of the market in question, which influence the commercial strategy of the proprietor of the trade mark, must be taken into account in the context of assessing genuine use of a mark. However, even though the consumer’s choice, as regards a final product, may be influenced by the characteristics the product acquires owing to the presence of a raw material or a component, and that, consequently, the market for that product may be created by reference to a component it contains, such as, in this case, the coatings identified by the earlier mark, that does not mean that a mark identifying that component and its commercial origin may be regarded as identifying the commercial origin of that product.
85. The presence of the earlier mark, identifying a component of the product, in advertisements, brochures or even on the product itself, noted by the Board of Appeal in paragraph 26 of the contested decision, is a commercial strategy of the manufacturer of the final product indicating certain functional characteristics of that product due to the presence of a component identified by the TEFLON mark.
86. Use of the TEFLON mark in respect of third parties’ final products may thus result in that mark performing an advertising or communication function aimed at informing or persuading the consumer (see, in relation to the advertising and communication functions of a trade mark, judgments of 18 June 2009 in L’Oréal and Others, C‑487/07, ECR, EU:C:2009:378, paragraph 58, and 23 March 2010 in Google France and Google, C‑236/08 to C‑238/08, ECR, EU:C:2010:159, paragraphs 75, 77 and 91). Nevertheless, it does not thereby perform the essential function of guaranteeing the origin of the final product, the only relevant factor for the assessment of genuine use of a mark within the meaning of Article 42(2) and (3) of Regulation No 207/2009.
87. Second, it is true that, as the intervener notes, genuine use of a mark for the goods for which it is registered does not necessarily mean that the proprietor relying on use of his mark for those goods is the manufacturer of them. In particular, it follows from Article 15(2) of Regulation No 207/2009 that the proprietor of a mark is entitled to rely on use of it by a third party with his consent. The third party may use the mark for the goods which it itself manufactures and markets. In addition, it is not uncommon for a proprietor of a mark to market under that mark goods which he has had manufactured by another firm.
88. Nevertheless, none of those circumstances has been established or relied on in the present case as regards use of the TEFLON mark for third parties’ final products. The intervener has not produced evidence showing that the TEFLON mark is used by third parties in respect of final products to indicate the commercial origin of those goods as being either the intervener or a third party, as has been noted in paragraph 70 et seq. above.
89. Third, as regards the intervener’s argument derived from the judgment of 11 March 2003 in Ansul (C‑40/01, ECR, EU:C:2003:145, paragraph 41), which it advanced during the hearing, it should be pointed out that it was, indeed, accepted by the Court of Justice in that judgment that, in the case of component parts integral to goods being sold under the same mark, genuine use of the mark for those parts must be considered to relate to the goods previously sold and to serve to preserve the proprietor’s rights in respect of those goods. Nevertheless, even supposing that the situation of component parts is comparable to that of a component which forms an integral part of a final product which cannot, in principle, be replaced throughout the life of the product, it is clear that the circumstances of the present case are different to those giving rise to the judgment in Ansul, cited above (EU:C:2003:145). In that case, the commercial origin of the component parts in question and that of the product for which those parts were to be used was the same. In the present case, third parties’ final products have a different commercial origin to that of the component identified by the TEFLON mark originating from the intervener.
90. Fourth, a risk of unfair conduct on the part of a third party that might wish to register a mark identical or similar to the earlier mark in respect of the final products, or the question of the possible reputation of the earlier mark, raised by the intervener during the hearing, are of no relevance to the assessment of genuine use of the earlier mark. In any event, the findings in paragraphs 69 and 81 above do not deprive the earlier mark of any protection in respect of an application for registration of an identical or similar mark for final products. Nothing would prevent the intervener from arguing, if it wished, that there was a likelihood of confusion for that mark of the third party in view of a similarity between the goods and between the marks and, if proved, in view of the unusually high distinctiveness as a result of the public’s recognition of the earlier mark on the market. It is not ruled out, moreover, that such a likelihood of confusion could be relied on in relation to an application for registration of a mark similar or identical to the earlier mark in respect of goods that are not similar if the intervener proved the reputation of the earlier mark, within the meaning of Article 8(5) of Regulation No 207/2009.
91. It follows from the foregoing considerations that the contested decision is vitiated by an error of law in that the Board of Appeal concluded, in paragraph 26 of the contested decision, that the intervener had proved use of the earlier mark for final products on account of the fact that the coatings produced by the intervener were integral to the makeup and structure of third parties’ final products and that the earlier mark had been displayed in brochures and advertisements for those goods.
The second part of the second plea, relating to use of the earlier mark for ‘films, resins, finishes, homopolymers and copolymers, which probably fall within Class 1’
92. The applicant disputes that the intervener adduced sufficient and appropriate evidence to prove genuine use of the earlier mark, even for ‘films, resins, finishes, homopolymers and copolymers’, which it regards as ‘probably’ falling within Class 1. According to the applicant, neither evidence which does not bear any indication of dates nor evidence on which the earlier mark is not shown as ‘used in the market’ may be taken into account for the purposes of assessing whether the earlier mark has been put to genuine use.
93. During the hearing, in response to a written question from the Court, the applicant specified that, in the context of that argument, it claimed in particular that, while presenting information relating to annual sales figures of goods such as ‘films, resins, finishes, homopolymers, copolymers’, the intervener remained unable to provide evidence in which the earlier mark was shown with reference to those goods. By contrast, the evidence in which the TEFLON mark appeared concerned, in the applicant’s view, only the final products of third parties. For those goods, the intervener had not presented evidence that would allow sales volumes to be estimated.
94. In that regard, it should be recalled that in order to determine whether use of a mark is genuine, an overall assessment must be carried out which takes account of all the relevant factors in the particular case. That assessment entails a degree of interdependence between the factors taken into account (see, to that effect, judgments of 8 July 2004 in MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, ECR, EU:T:2004:223, paragraph 36, and VITAFRUIT, cited in paragraph 44 above, EU:T:2004:225, paragraph 42). Thus each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning. In the course of such an analysis, it cannot be excluded that a body of evidence will enable proof of the facts to be established, even though each of those items of evidence, taken in isolation, would not be capable of proving those facts (judgments of 15 December 2010 in Epcos v OHIM — Epco Sistemas (EPCOS), T‑132/09, EU:T:2010:518, paragraph 28, and 29 February 2012 in Certmedica International and Lehning entreprise
v OHIM — Lehning entreprise and Certmedica International (L112), T‑77/10 and T‑78/10, EU:T:2012:95, paragraph 57).
95. In the present case, the earlier mark appears, inter alia, on the brochures, advertisements and website excerpts concerning third parties’ final products, as the applicant acknowledges. It is true that some of those documents are not dated, but, in the context of an overall assessment, they may still be taken into consideration in conjunction with other pieces of evidence pertaining to the relevant period, in order to prove that the earlier mark has been put to genuine use (see, to that effect, judgment of 17 February 2011 in J & F Participações
v OHIM — Plusfood Wrexham (Friboi), T‑324/09, EU:T:2011:47, paragraph 33).
96. In that regard, it should be pointed out, first of all, that some of the magazines and website excerpts referred to by the Board of Appeal do bear a date and fall within the relevant period.
97. Next, as has been found in the context of the analysis of the first part of the second plea, the earlier mark has been used by third parties to refer to coatings or raw materials originating from the intervener. Those coatings and raw materials correspond, in view of the information provided by the intervener concerning the possible uses of the goods it manufactures and markets under the earlier mark, to the goods sold by the intervener under that mark over the relevant period, as follows inter alia from a witness statement and the document concerning the annual turnover figures achieved by selling ‘films, resins, finishes, homopolymers, copolymers’ in the European Union between 2003 and 2008, to which the applicant makes reference. The applicant has provided no evidence showing the inaccuracy of those annual sales figures produced by the intervener and pertaining to the relevant period. Moreover, it has not disputed the relevance of the data contained in those documents.
98. Last, it is also apparent from the file, and more specifically from the two documents mentioned in paragraph 97 above, the content of which the applicant does not dispute, that the intervener launched a major advertising effort over the relevant period in relation to the goods it was selling under the TEFLON mark. According to the case-law, use of a mark may be regarded as genuine where that mark is used to secure customers, particularly in the form of advertising campaigns (see, to that effect, judgment in Ansul, cited in paragraph 89 above, EU:C:2003:145, paragraph 37). That element may therefore be an important indication that the earlier mark has been put to genuine use over the relevant period for the intervener’s non-stick materials (see, to that effect, judgment of 14 December 2006 in Gagliardi v OHIM — Norma Lebensmittelfilialbetrieb (MANŪ MANU MANU), T‑392/04, EU:T:2006:400, paragraph 86).
99. It follows that the evidence not bearing a date and those pieces of evidence in which the earlier mark is shown with reference to third parties’ final products could legitimately be taken into account by the Board of Appeal in the overall assessment of the evidence of genuine use of the earlier mark for the goods originating from the intervener. That part of the second plea must therefore be rejected.
100. It follows from the foregoing that the contested decision must be annulled in so far as it is vitiated, first, by inadequate reasoning as regards the Board of Appeal’s conclusion in paragraph 28 of the contested decision and, second, by an error of law in relation to the Board of Appeal’s conclusion in paragraph 26 of the contested decision. In those circumstances, there is no need to examine the first plea relied on by the applicant nor to assess whether the documents it produced before the Court in support of that plea are admissible.
Costs
101. 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 OHIM has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant. Since the applicant has not applied for costs against the intervener, the latter must be ordered to bear its own costs.
Operative part
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Annuls the decision of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 29 September 2011 (Case R 2005/2010-1);
2. Orders OHIM to bear its own costs and to pay those incurred by Polytetra GmbH;
3. Orders EI du Pont de Nemours and Company to bear its own costs.