JUDGMENT OF THE GENERAL COURT (Single Judge)
13 October 2021 (*)
(EU trade mark – Revocation proceedings – EU figurative trade mark Frutaria – Genuine use of the trade mark – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) – Proof of genuine use – Nature of use)
In Case T‑12/20,
Markus Schneider, residing in Bonn (Germany), represented by M. Bergermann and D. Graetsch, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Walicka and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the Court, being
Frutaria Comercial de Frutas y Hortalizas, SL, established in Zaragoza (Spain), represented by J. Learte Álvarez and C. Anadón Giménez, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 8 October 2019 (Case R 284/2019-1), relating to revocation proceedings between M. Schneider and Frutaria Comercial de Frutas y Hortalizas,
THE GENERAL COURT (Single Judge),
Judge: D. Spielmann,
Registrar: A. Juhász-Tóth, administrator,
having regard to the application lodged at the Court Registry on 9 January 2020,
having regard to the response of EUIPO lodged at the Court Registry on 21 July 2020,
having regard to the response of the intervener lodged at the Court Registry on 8 July 2020,
having regard to the decision of the General Court (Fifth Chamber), pursuant to Article 14(3) and Article 29 of the Rules of Procedure of the General Court, to assign the case to D. Spielmann, sitting as a single Judge,
further to the hearing on 26 April 2021,
gives the following
Judgment
Background to the dispute
1        On 22 May 2007, Frutaria SAT 9413, established in Zaragoza (Spain) (‘the third-party company’), filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) 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 European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 29, 31, 35 and 39 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 29: ‘Preserved, dried and cooked fruits, vegetables and pulses; meat, fish, poultry and game; meat extracts; jams and jellies; fruit sauces; eggs, milk and milk products; edible oils and fats’;
–        Class 31: ‘Agricultural, horticultural and forestry products and grains; fresh fruits, pulses and garden produce; seeds, natural plants and flowers’;
–        Class 35: ‘Commercial retailing, import, export, and sales promotion of agrifood products in general, in particular fresh or preserved fruits and vegetables; advertising; advertising material services (brochures, prospectuses, printed sheets, samples); commercial management assistance in relation to franchising; business management; commercial management assistance and consultancy and commercial and industrial management assistance and consultancy’;
–        Class 39: ‘Warehousing, loading and unloading, packing and packaging, transport, delivery, distribution of agrifood products in general, and in particular, fresh or preserved fruit and vegetables’.
4        The trade mark application was published in Community Trade Marks Bulletin
No 2007/057 of 8 October 2007.
5        On 27 April 2010, the mark applied for was registered as an EU trade mark under No 5922885 in respect of all the goods and services referred to in paragraph 3 above.
6        On 14 April 2016, following an assignment thereof, the mark was transferred to the intervener, Frutaria Comercial de Frutas y Hortalizas, SL, in respect of all the goods and services referred to in paragraph 3 above.
7        On 19 May 2017 the applicant, Markus Schneider, filed an application for revocation of the registered mark based on the basis of Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001) with EUIPO, on the grounds that that mark had not been put to genuine use in the European Union within a continuous period of five years in connection with all the goods and services in respect of which it was registered.
8        On 3 November 2017, the intervener submitted several items of evidence to EUIPO in order to establish use of the contested mark.
9        By decision of 19 December 2018, the Cancellation Division partially upheld the application for revocation in respect of a significant part of the goods and services referred to in paragraph 3 above, and rejected the application in respect of the remainder of the goods and services covered by the contested mark, namely ‘dried fruits’ in Class 29, ‘fresh fruits’, ‘horticultural products’ and ‘garden produce’ in Class 31 and the ‘export of fresh or dried fruits and of fresh vegetables’ services in Class 35.
10      On 5 February 2019, the applicant filed a notice of appeal with EUIPO pursuant to Articles 66 to 71 of Regulation 2017/1001 against the decision of the Cancellation Division, supplemented by a statement of grounds of the appeal filed on 8 April 2019, on the basis that the contested mark was not revoked for all the goods and services referred to in paragraph 3 above.
11      By decision of 8 October 2019 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the appeal in part, annulling the Cancellation Division’s decision in so far as it had rejected the application for revocation in respect of ‘horticultural products; garden produce’ in Class 31 and ‘export of fresh or dried fruits and of fresh vegetables’ in Class 35, dismissed the remainder of the action, maintaining the registration of the mark for ‘dried fruits’ in Class 29, ‘fresh fruits and fresh vegetables’ in Class 31, and ‘export of fresh fruits’ in Class 35.
12      In particular, the Board of Appeal found that the distinctiveness of the contested mark was not altered by the use of signs which differ from the mark in its registered form. As regards the period and place of use, it found that all the evidence relied on demonstrated use of the mark during the relevant period, from 19 May 2012 to 18 May 2017, and that the requirement of place of use within the European Union was satisfied in the light of numerous invoices showing sales of goods to customers in Belgium, Ireland, Spain, France, Italy, Cyprus, Lithuania, the Netherlands, Poland, Portugal, Sweden and the United Kingdom and exports of goods from Spain to clients located in third countries.
13      As regards the nature of use, the Board of Appeal found that the condition of use of the sign as a trade mark was satisfied because the evidence relied on showed that the purpose of the contested mark was to identify the source of a range of goods rather than a single product and that it was natural that the description of the product in the invoices did not refer to the mark alongside each product. That was corroborated by the image of the box typically used for fresh fruit and vegetables.
14      As regards partial use and its extent, the Board of Appeal found that dried plums were not capable of constituting an independent subcategory of the category of ‘dried fruits’ in Class 29, unlike ‘fresh fruits’ and ‘fresh vegetables’ which could be identified as subcategories within the broad categories of ‘horticultural products; garden produce’ in Class 31 and, moreover, that the invoices and other materials showed a real and actual market presence that amounted to preserving an outlet for ‘dried fruits; fresh fruits and fresh vegetables’ and the ‘export of fresh fruits’. In particular, the single invoice for the sale of dried plums to a customer in Spain showed quantities of 357 000 kg and a total amount invoiced greater than EUR 421 000, sufficiently high for those amounts not to be regarded as token, minimal or notional. By contrast, there was no evidence of use of the contested mark for the category ‘export of fresh vegetables’.
Forms of order sought
15      The applicant claims that the Court should:
–        annul the contested decision in so far as it upholds the registration of EU trade mark No 5922885 for ‘dried fruits’ in Class 29, ‘fresh fruits and fresh vegetables’ in Class 31 and the ‘export of fresh fruit’ in Class 35;
–        order EUIPO to pay the costs, including the costs incurred in the appeal proceedings.
16      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
17      As a preliminary point, it should be noted that, given the date on which the application for revocation at issue was filed, namely 19 May 2017, which is decisive for the purposes of identifying the substantive law applicable, the present dispute is governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 6, and of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3).
18      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their respective pleadings to Articles 18 and 58 of Regulation 2017/1001 should be understood as referring respectively to Articles 15 and 51 of Regulation No 207/2009.
19      Moreover, it must be borne in mind that, pursuant to the first subparagraph of Article 15(1) of Regulation No 207/2009 (now the first subparagraph of Article 18(1) of Regulation 2017/1001) and to Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and there are no proper reasons for its non-use.
20      Furthermore, it follows from a combined reading of Article 51(1)(a) of Regulation No 207/2009 and Article 51(2) of that regulation that evidence of genuine use must in principle cover all of the goods or services for which a contested mark is registered. If the evidence of genuine use is adduced only in respect of part of the goods or services for which the contested mark is registered and if the other conditions laid down by Article 51(1)(a) of Regulation No 207/2009 are met, the rights of the proprietor of that mark may be declared to be revoked in respect of the goods or services for which it has not adduced evidence of genuine use, or even evidence of any use (judgment of 18 October 2016, August Storck v EUIPO – Chiquita Brands (Fruitfuls), T‑367/14, not published, EU:T:2016:615, paragraph 21).
21      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 51(1)(a) and (2) of Regulation No 207/2009, and consisting, in essence, of four parts, alleging (i) lack of use of the contested mark by the intervener; (ii) lack of use as a trade mark; (iii) failure to use the mark in its registered form; and (iv) lack of genuine use of the mark for the goods and services at issue.
The first part of the single plea in law, alleging lack of use of the contested mark by the intervener
22      The applicant criticises the Board of Appeal for having regarded as out of time his submission, made on 10 July 2019, that the intervener itself never made use of the sign at issue and that all the documents produced before the Board of Appeal related only to the third-party company. According to the applicant, those submissions did not constitute a new statement of the facts, but merely set out factual information that should have been taken into account by the Board of Appeal in its assessment of the facts.
23      The applicant submits that the Board of Appeal erred in law in its assessment, in the alternative, of his argument that the proprietor of the sign at issue did not use it. He claims, in particular, that there is nothing in the file to prove the existence of consent in good time on the part of the intervener authorising the use of the contested mark by a third party within the meaning of Article 18(2) of Regulation 2017/1001. Similarly, there is no evidence to establish or identify the relationship or link between the third-party company and the intervener.
24      EUIPO and the intervener dispute the arguments put forward by the applicant.
25      In the first place, and contrary to what is claimed by the applicant, the Board of Appeal’s finding set out in paragraph 15 of the contested decision, relating to the belated nature of the applicant’s argument that the intervener did not use the contested mark, must be upheld. It is apparent from the file that that submission was made to the Board of Appeal on 10 July 2019, that is to say, after the close of the written procedure. Accordingly, the Board of Appeal was fully entitled to find, in paragraph 15 of the contested decision, that the applicant’s submission had been made out of time.
26      In the second place, and in any event, the Board of Appeal examined, in paragraph 15 of the contested decision, the substance of that claim and concluded that it was unfounded.
27      In that regard, it should be noted that, as stated in paragraph 6 above, by virtue of a transfer, which took place on 14 April 2016, the contested mark was transferred from the third-party company to the intervener in respect of all the goods and services referred to in paragraph 3 above.
28      According to Article 17 of Regulation No 207/2009, in order to be valid, an assignment of an EU trade mark must be made in writing and requires the signature of the parties to the contract, except when it is a result of a judgment. In the present case, it is apparent from the evidence in the file submitted to EUIPO that the contested mark was registered on 27 April 2010 by the third-party company and that the application for the transfer of its registration in respect of all the goods and services covered was submitted to EUIPO on 14 April 2016, in accordance with the conditions laid down in that provision. Consequently, the registration rights for the contested mark were assigned from the third-party company to the intervener. Furthermore, as is apparent from the evidence produced by the intervener and its submissions to the Court, the two undertakings now belong to the same group of companies.
29      In that regard, it should be noted that where an EU trade mark has been transferred within the five-year period prescribed by the first subparagraph of Article 15(1) and Article 51(1)(a) of Regulation No 207/2009, the use of the mark by its former proprietor or by a third party with the latter’s consent, during the relevant period during which he was the proprietor thereof, is such as to prove use of that trade mark by its current proprietor, within the meaning of Article 51(1)(a) of Regulation No 207/2009, despite the fact that, at the time that such use is found to have occurred, the proprietor of the trade mark had changed.
30      The transfer of a mark cannot lead to its new proprietor being deprived of the opportunity to adduce proof of genuine use of the mark in the course of the relevant period during which he was not the proprietor of the mark. Any contrary finding would lead to the new proprietor of the mark being exposed to a risk of revocation of his or her acquired rights, in respect of goods and services for which he or she could not yet reasonably have used the contested mark, without being able to benefit from the legitimate protection derived from the use to which that mark was actually put during the earlier relevant period prior to the acquisition of his or her rights, by its former proprietor or by a third party with the latter’s consent.
31      In the present case, the relevant period of five years, during which the contested mark had to be put to genuine use in the European Union, runs from 19 May 2012 to 18 May 2017. It is therefore necessary to distinguish the first part of the relevant period, prior to the assignment, running from 19 May 2012 to 14 April 2016, during which the third-party company was the proprietor of the contested mark, from the second part of the relevant period, subsequent to the assignment, running from 15 April 2016 to 18 May 2017, during which the intervener became the new proprietor of the contested mark.
32      In his submissions, the applicant does not take that evidence into account and regards the third-party company as a third party, within the meaning of Article 15(2) of Regulation No 207/2009, whilst criticising the Board of Appeal for not having found that the intervener had consented to the use of that mark by the third-party company during the relevant period. That argument cannot reasonably succeed.
33      In view of the evidence relied on by the Board of Appeal, referred to in paragraph 3 of the contested decision, dating from the first part of the relevant period, during which the third-party company was the proprietor of the contested mark, that company cannot be regarded as a third-party user within the meaning of Article 15(2) of Regulation No 207/2009. That provision contemplates use of a trade mark by a person other than the proprietor. In the present case, it must be stated that the third-party company was the proprietor of the contested mark until 14 April 2016 and that the evidence showing its use of that mark dates from the first part of the relevant period, that is to say, until that date. It follows, first of all, that the Board of Appeal was not required, de facto, to ask for evidence of or make a finding as to the existence of consent with respect to evidence of use dating from that period. Next, in the light of what was noted in paragraph 30 above, the use of the mark by its proprietor during the relevant period must be taken into account, notwithstanding the subsequent change in the proprietor of the mark.
34      Furthermore, the applicant’s argument that the intervener has not adduced sufficient evidence to establish the link between it and the third-party company must be rejected. First of all, that argument is ineffective given that, as is apparent from paragraph 6 above, the third-party company was the former proprietor of the contested mark and, therefore, the intervener was not obliged to adduce additional evidence to demonstrate its link with that mark.
35      In any event, as was noted by the Board of Appeal, it is apparent from the statement of the intervener’s marketing manager, and from the annexes thereto, that the intervener is the holding company, that the third-party company is part of the group of companies of which the holding company is composed and that the contested mark is used by the business division of that group. Accordingly, the applicant cannot reasonably claim that the relationship between the third-party company and the intervening company is not apparent from the evidence produced before the Board of Appeal.
36      It follows that, in the contested decision, the Board of Appeal did not err in law in taking into account, for the purposes of proving use of the contested mark within the meaning of Article 51(1)(a) of Regulation No 207/2009, the evidence dating from the whole of the relevant period, since it demonstrated use of the mark by its proprietor, regardless of whether that proprietor was, at the relevant time, the third-party company or the intervener.
37      Accordingly, the first part of the single plea in law, alleging lack of use of the contested mark by its proprietor, must be rejected as unfounded.
The second part of the single plea in law, alleging lack of use of the contested mark as a trade mark for the goods and services concerned
38      The applicant claims that the Board of Appeal disregarded the fact that the evidence of use submitted by the third-party company was not assessed in respect of the contested mark, but only by reference to that company’s name. In that regard, the presence of the additional word element ‘sat 9413’, corresponding to the abbreviation of the legal form ‘Sociedad Agraria de Transformación’ and its registration number ‘9413’, shows that the name ‘frutaria’, which appears on the invoices, was not used to designate the goods and services for which the contested mark was registered, but rather the third-party company. That assessment is also corroborated by the fact that, as is apparent from the invoices produced before the Board of Appeal by the intervener, all the fruit varieties sold bore different and specific names of the contested mark. The applicant adds that the photograph of a single box bearing the name ‘frutaria’, on which the Board of Appeal relied, does not constitute evidence indicating that those goods were actually transported in that type of box, or where, how and to what extent such boxes were used.
39      EUIPO and the intervener dispute the arguments put forward by the applicant.
40      It should be recalled that 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 (see, to that effect, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Genuine use of the mark entails public and outward use thereof (see, to that effect, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
41      It should also be noted that the purpose of a company, trade or shop name is not, of itself, to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to indicate a business. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or indicating a business, such use cannot be considered as being ‘in relation to goods or services’ (see judgment of 13 May 2009, Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK), T‑183/08, not published, EU:T:2009:156, paragraph 21 and the case-law cited).
42      By contrast, there is use ‘in relation to goods’ where the proprietor of the mark or a third party affixes the sign constituting its company, trade or shop name to the goods which it markets. Furthermore, even where the sign is not affixed, there is use ‘in relation to goods or services’ where the sign is used in such a way that a link is established between the sign constituting the company name, trade name or shop name and the goods marketed or the services provided (see, to that effect, judgments of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraphs 22 and 23, and of 8 May 2017, Les Éclaires v EUIPO – L’éclaireur International (L’ECLAIREUR), T‑680/15, not published, EU:T:2017:320, paragraph 35). To the extent that that condition is fulfilled, the fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods or services (see judgment of 30 November 2009, Esber v OHIM – Coloris Global Coloring Concept (COLORIS), T‑353/07, not published, EU:T:2009:475, paragraph 38 and the case-law cited; judgment of 18 July 2017, Savant Systems v EUIPO – Savant Group (SAVANT), T‑110/16, not published, EU:T:2017:521, paragraph 26).
43      Furthermore, genuine use of a mark relates to the market on which the proprietor of the EU trade mark carries out its commercial activities and on which it hopes to put its mark to use. Thus, for the purposes of assessing the outward use of a mark, the relevant public to which marks are aimed is comprised not only of end consumers, but also of specialists, industrial customers and other professional users (see, to that effect, judgment of 7 July 2016, Fruit of the Loom v EUIPO – Takko (FRUIT), T‑431/15, not published, EU:T:2016:395, paragraph 49 and the case-law cited).
44      It is in the light of the above that the assessment of whether the Board of Appeal correctly held that the evidence relied on demonstrated use of the contested mark for the categories of goods and services in question must be conducted.
45      In the contested decision, the Board of Appeal found that the evidence relied on, namely the sales invoices for the goods at issue, included, in their headings, the shape of the contested mark with the additional element ‘sat 9413’ referring to the company name of the third-party company. The Board of Appeal took the view that it was apparent from the evidence produced by the intervener that the contested mark was used to identify the source of a line of products rather than a single product, and that the fact that the description in the invoices did not state whether they related to goods covered by the contested mark did not mean that those invoices related to other marks. According to the Board of Appeal, it was natural that the description of the product in the invoices did not refer to the contested mark alongside each product. The use of that mark is also supported by the other items of evidence submitted, such as the image of a box generally used for transporting fresh fruit and vegetables.
46      Those findings of the Board of Appeal must be upheld. Although it is true that the sign appearing on the sales invoices for goods and services, prior to 8 April 2015, may serve to designate the company name of the third-party company, that does not preclude the fact that the affixing of that sign to the invoices also served to identify the commercial origin of the goods and services relied on by the Board of Appeal, namely dried fruits, fresh fruits and vegetables and the export of fresh fruits. In that regard, it should be noted that the invoices were addressed to customers from, inter alia, Europe, Asia and Latin America and related to the sale of fresh fruit and vegetables and of dried fruit.
47      Furthermore, the applicant’s argument, that the photograph of a box for transporting goods should not have been taken into account by the Board of Appeal as evidence of the fact that the contested mark was used to designate the goods and services at issue, must be rejected. As the Board of Appeal rightly acknowledged, the box displayed in that photograph was a box commonly used for the transport of fresh fruit and vegetables. Consequently, that photograph was an additional element confirming the use of the contested mark together with the terms ‘sat 9413’ on invoices in order to designate the goods and services at issue.
48      It is apparent from the consideration set out above that, contrary to what the applicant claims, the use on the invoices of the contested mark supplemented by the terms ‘sat 9413’, referring to the company name of the proprietor of that mark, does not lead to the conclusion that the contested mark was not used as a sign designating the goods and services in question and that it would be perceived solely as a company name (see, to that effect and by analogy, judgment of 6 November 2014, Popp and Zech v OHIM – Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 45).
49      Consequently, the Board of Appeal did not err in finding that the evidence relied on showed that the contested mark was used to designate the goods and services at issue.
50      In the light of the foregoing, the second part of the single plea in law must be rejected as unfounded.
The third part of the single plea in law, alleging failure to use the contested mark in its registered form
51      The applicant criticises the Board of Appeal for having upheld the rights of the contested mark in respect of the goods and services at issue even though that mark had not been used in its registered form but in forms whose differing aspects alter its distinctive character.
52      As regards, first, the use of the sign on the invoices prior to 8 April 2015, reproduced below, the applicant submits that the word element ‘frutaria’ is devoid of any distinctive character because of its descriptive meaning, which is understood by the target public as designating a ‘fruit shop’ and the addition of the word element ‘sat 9413’:
53      He adds that the changes to the colour, graphic design and size of the components comprising that sign differ lead to a considerable difference from the sign in its registered form, as a result of which the relevant public cannot discern use of the contested mark therein.
54      As regards, next, the use of the other figurative signs, it should be noted that the applicant confirmed at the hearing that in his action he was referring to the two signs reproduced below:
55      The applicant submits that, in view of the lack of distinctive character of the word element ‘frutaria’, the target public will attach greater importance to the graphic representation of those signs. In that regard, he submits that the font, the typeface, all of the graphic elements and the colours of the text differ from the registered sign and that the presence of the additional word element ‘de nuestros campos’ also accentuates those differences. He concludes therefrom that the new graphic design does not constitute a mere modernisation and that all the characteristic features of the contested mark have been abandoned, as a result of which the use of that sign is not such as to constitute use of the contested trade mark capable of maintaining the right thereto.
56      EUIPO and the intervener dispute the applicant’s arguments.
57      According to Article 15(1)(a) of Regulation No 207/2009, proof of genuine use of a trade mark also includes proof of its use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.
58      The purpose of Article 15(1)(a) of Regulation No 207/2009, which is to avoid imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered, constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, such that the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgments of 10 June 2010, Atlas Transport v OHIM – Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 30; of 21 June 2012, Fruit of the Loom v OHIM – Blueshore Management (FRUIT), T‑514/10, not published, EU:T:2012:316, paragraph 28; and of 12 March 2014, Borrajo Canelo v OHIM – Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 26 and the case-law cited).
59      The finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the elements added, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the different elements within the arrangement of the trade mark (judgment of 12 March 2014, PALMA MULATA, T‑381/12, not published, EU:T:2014:119, paragraph 30, and of 20 July 2017, Cafés Pont v EUIPO – Giordano Vini (Art’s Cafè), T‑309/16, not published, EU:T:2017:535, paragraph 16).
60      It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was right to conclude that the differences between the signs used and the contested mark in its registered form did not alter the distinctive character of that mark.
61      In the contested decision, the Board of Appeal found that the contested mark derived its distinctive character from the word element ‘frutaria’ and that the figurative elements, namely the small square, the semi-circular line, the reverse curved line and the colour green – which it considered not to be striking for fruit and vegetables – were of ancillary importance, occupied a secondary position and would therefore be perceived by the relevant public as purely decorative elements. It also rejected the applicant’s argument that the word element ‘frutaria’ was descriptive of the goods and services in question, stating that the grammatically correct word in Spanish was ‘frutería’ and not ‘frutaria’. In that regard, it found that a basic understanding of Spanish by the public as a whole was not a well-known fact in other Member States.
62      Those findings must be upheld.
63      As regards, in particular, the comparison of the contested mark with the sign in the invoices prior to 8 April 2015, produced by the intervener, it should be noted that the Board of Appeal took the view that the style and configuration of the term ‘frutaria’ and the figurative elements were, respectively, identical and practically identical to the elements present in the contested mark and that the only differences between them resided in the presence of the word element ‘sat 9413’ below the word element ‘frutaria’ used in the contested sign, and in the colour used, which was an acceptable variation of the contested mark. As regards the word element ‘sat 9413’, which is smaller and placed below the dominant element ‘frutaria’, it found that it had only a secondary role in the overall impression of the sign and that it had at most a weak inherent distinctive character.
64      In that regard, the Board of Appeal’s finding that the sign used and the contested mark are practically identical and both contain the dominant distinctive element ‘frutaria’, in the same size and font, must be upheld. Therefore, the sign used differs only by the presence of the smaller additional word element ‘sat 9413’, in smaller typeface, below the element ‘frutaria’. Thus, in view of its size, its position in the sign and the fact that that word element designates the legal form of the company concerned and its registration number, the element ‘sat 9413’ is of very weak distinctiveness. Furthermore, as the Board of Appeal correctly held in paragraph 30 of the contested decision, in view of the fact that the word element ‘frutaria’ is the dominant element in the contested mark and that the colour green, used in that mark, is only weakly distinctive for fruit and vegetables, recourse to a different colour in the sign used appears to be an acceptable variation of the contested mark.
65      It follows that the Board of Appeal did not err in finding that the differences between the registered sign and the sign used in the invoices prior to 8 April 2015 were not such as to alter the distinctive character of the former.
66      As regards the comparison of the registered sign with the figurative sign ‘Frutaria’ supplemented by the terms ‘from our orchards’ and the figurative sign ‘Frutaria’ supplemented by the terms ‘de nuestros campos’, the Board of Appeal also found that the element ‘frutaria’ was the most striking and distinctive element in those signs. It noted that the signs contain a wavy element below the word ‘frutaria’ and that the word element ‘de nuestros campos’, which appears in the sign used in the invoices subsequent to 8 April 2015, was devoid of any distinctiveness in so far as it was barely visible.
67      It should be noted that the differences between those signs and the sign in its registered form are admittedly greater than with the variant of the contested mark, set out in paragraph 62 above. The wavy element, although still present, has a modified and curved stylisation in red or black respectively. Similarly, the element ‘frutaria’ in the two signs used is characterised by a more modern font, a larger size, and the alternative use of either the colour black, as regards the sign present on the invoices subsequent to 8 April 2015, or a colour gradation ranging from light green to darker green from the left to the right of the word, as regards the sign in the statement of the intervener’s marketing manager. Furthermore, those signs include additional word elements, namely the expressions ‘de nuestros campos’ and ‘from our orchards’ respectively.
68      However, those differences are not capable of significantly altering the distinctiveness of the contested mark. When a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see judgment of 2 February 2011, Oyster Cosmetics v OHIM – Kadabell (Oyster cosmetics), T‑437/09, not published, EU:T:2011:23, paragraph 36 and the case-law cited; judgment of 12 March 2014, PALMA MULATA, T‑381/12, not published, EU:T:2014:119, paragraph 38). Therefore, it must be held that the element ‘frutaria’, in view of its nature, size and position, is indeed the more distinctive element of the two signs used and the amendments made appear to be ancillary. In particular, they must rather be regarded as a modernisation of the sign in its registered form and will not prevent the target public from identifying the commercial origin of the goods and services. It must also be held that the added terms ‘from our orchards’ and ‘de nuestros campos’ are hardly visible and will, moreover, be devoid of distinctive character for the relevant English-speaking and Spanish-speaking public.
69      Consequently, the Board of Appeal correctly found that the use of the abovementioned signs did not alter the distinctive character of the contested mark. The third part of the single ground of appeal must therefore be rejected as unfounded.
The fourth part of the single plea in law, alleging insufficient use of the contested mark for the goods and services at issue
70      The applicant submits that the evidence submitted is not sufficient to demonstrate genuine use of the contested mark in respect of the categories of goods and services for which registration has been upheld.
71      As regards the category of ‘fresh vegetables’ in Class 31, he submits, first, that proof of use for that category is almost entirely lacking. The vast majority of invoices only rarely provide evidence of sales of tomatoes; such occasional use is insufficient to demonstrate genuine use. Secondly, the use of the contested mark for the sale of tomatoes is not, in any event, capable of demonstrating extensive use for the whole category of ‘fresh vegetables’ because tomatoes constitute a separate subcategory. The same arguments are put forward in relation to the use of the contested mark for ‘dried fruits’ in Class 29. First of all, the sale of dried plums is not capable of demonstrating use of the contested mark for all the goods concerned falling within that category and, moreover, a single sale to a sole customer is not sufficient to demonstrate genuine use. Nor, in addition, does the evidence submitted demonstrate proof of use of the contested mark for those goods.
72      As regards the service ‘export of fresh fruits’ in Class 35, the applicant submits that the sales invoices for the goods, on which the Board of Appeal relied, do not demonstrate use of the contested mark because the name ‘frutaria’ was used only by reference to the third party undertaking and not by reference to the services concerned.
73      EUIPO and the intervener dispute the arguments put forward by the applicant.
74      It is therefore necessary to address the two complaints comprising the present part of the single plea in law, according to which, first, the use of the contested mark for goods and services cannot extend the protection of the contested mark to all the categories at issue, but only to subcategories corresponding to the goods used, and, secondly, the evidence relied on by the Board of Appeal does not show, in any event, sufficient use of that mark for that use to be classified as genuine for the categories of goods and services covered.
The extent of the use of the contested mark
75      The applicant submits that, in the light of the goods for which the contested mark was used and the broad nature of the categories at issue, the protection conferred should have been restricted to only the goods concerned by the evidence relied on by the Board of Appeal. Consequently, the use of the contested mark for dried plums, tomatoes and broccoli does not make it possible to extend the protection of the mark to all categories of ‘dried fruits’ and ‘fresh vegetables’.
76      It should be borne in mind that the purpose of Article 57(2), last sentence, and Article 57(3) of Regulation No 207/2009 is to prevent a trade mark which has been used in part from enjoying extensive protection on the sole ground that it has been registered for a wide range of goods or services. Thus, when those provisions are applied, it is necessary to take account of the breadth of the categories of goods or services for which the earlier mark was registered, in particular the extent to which the categories concerned are described in general terms for registration purposes, and to do this in the light of the goods or services in respect of which genuine use has, of necessity, actually been established (see, to that effect, and by analogy, judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraphs 42 to 44).
77      It follows therefrom 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 only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, 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 the goods or services necessarily covers the entire category (see, to that effect, judgments of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 45, and of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23).
78      Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. It must be observed in that regard that, in practice, it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the notion of ‘some of the goods or services’ within the meaning of Article 51(2) of Regulation No 207/2009 cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (judgments of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 46, and of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 24).
79      The Court notes in that regard that, since consumers are searching primarily for a product or service which meets their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, inasmuch as consumers do employ the criterion of purpose or intended use before making any purchase, it is of fundamental importance in the definition of a subcategory of goods or services (judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 29, and of 16 May 2013, Aleris v OHIM – Carefusion 303 (ALARIS), T‑353/12, not published, EU:T:2013:257, paragraph 22).
80      As regards the protection conferred on ‘dried fruits’ in the present case, the Board of Appeal first defined them as fruit from which moisture had been removed for preservation and took the view that the method used to dry one type of fruit was the same for all types of fruit and vegetables. It added that the purpose and intended use of dried plums could not be distinguished from those of other varieties of dried fruit and that an undertaking which offers one type of dried fruit could also supply other kinds of dried fruit to the same end consumer. Similarly, those goods are, according to the Board of Appeal, marketed in the same shops and store sections as other dehydrated products. The Board of Appeal concluded that ‘dried plums’ did not constitute a separate subcategory capable of being viewed independently of the category of ‘dried fruits’.
81      The Board of Appeal’s assessment in that regard must be upheld. First of all, it should be noted that the category of ‘dried fruits’ cannot be regarded as very broad or general, but, on the contrary, as a sufficiently precise and defined category referring to fruit from which moisture has been removed for conservation purposes, as found by the Board of Appeal. Next, it is common ground that dried plums are preserved using the same methods as for other varieties of dried fruit and are packaged and marketed in the same manner. Lastly, there is nothing to indicate, in the light of the case-law cited in paragraph 79 above, that dried plums have a different purpose or intended use from those of other ‘dried fruits’. In that regard, dried plums are targeted at the same consumer and have the same purpose as other ‘dried fruit’, namely ordinary consumption as a food.
82      Consequently, the Board of Appeal was right to find that dried plums could not be distinguished from the rest of the abovementioned category other than in an arbitrary manner.
83      As regards the protection conferred on the whole category of ‘fresh vegetables’ on account of sales of tomatoes, the Board of Appeal found that the word ‘vegetables’ included, in its ordinary meaning, all edible and non-sweet parts of a flowering plant consumed as food by humans or animals. It considered that tomatoes and broccoli, in the light of those characteristics, naturally fell within that category, which could not be divided other than in arbitrary manner.
84      That finding must be upheld. Although tomatoes may, in their botanical and scientific definitions, fall within the category of fruit on account of some of their common characteristics, it must be stated that they are closer, in their everyday acceptance by the general public, to fresh vegetables. From the consumer’s point of view, as the Board of Appeal correctly held, their purpose and intended use are similar to those of other fresh vegetables such as cucumbers, aubergines, squash, peppers and courgettes, and may be eaten cooked or raw. Moreover, tomatoes are generally marketed in a similar way to other fresh vegetables in markets, shops and supermarkets and are usually found in the same store sections.
85      Consequently, the Board of Appeal did not err in finding that tomatoes fell within the subcategory of ‘fresh vegetables’ and that that subcategory, in the light of the common characteristics of the goods comprising it and its restricted and easily definable scope, could not be divided on the basis of objective criteria, but only in an arbitrary manner.
86      Furthermore, the Board of Appeal’s assessment that broccoli also fall within the category of ‘fresh vegetables’ is not disputed by the applicant, who has neither criticised such a finding nor put forward any arguments to that effect. That assessment must also be upheld.
87      As regards the applicant’s argument that proof of use for ‘exports of fresh fruit and vegetables’ was not adduced given that the sign used served only to designate the company concerned, it must be stated that that argument overlaps with the second part of the single plea, relating to the lack of use of the contested mark. In that regard, it is apparent from paragraphs 45 to 50 above that the use on the invoices of the contested mark together with the terms ‘sat 9413’, relating to the company name of the proprietor of that mark, showed use of the contested mark for the goods and services covered by those invoices, with the result that that argument must be rejected.
The extent of the use
88      By his arguments, the applicant submits that the evidence relied on by the Board of Appeal does not demonstrate sufficiently extensive use of the contested mark in order for it to be classified as genuine.
89      As noted in paragraph 40 above, 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 those services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. In addition, genuine use of the mark entails public and outward use thereof.
90      Although the concept of genuine use 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, the fact remains that the requirement of genuine use is intended neither to assess the commercial success or economic strategy of an undertaking, nor to restrict trade mark protection to the large-scale commercial use of marks (judgment of 15 September 2011, centrotherm Clean Solutions v OHIM – Centrotherm Systemtechnik (CENTROTHERM), T‑427/09, EU:T:2011:480, paragraph 26 and the case-law cited).
91      The assessment as to whether use of the trade mark is genuine must be based on an overall assessment of all the relevant factors in the specific case, namely the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted within the economic sector concerned in order to maintain or create a market share for the goods or services covered by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40).
92      That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. In addition, the turnover and the volume of sales pertaining to 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 business volume, 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, the Court has stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
93      Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).
94      In the present case, as regards, first of all, the applicant’s argument that the one-off sale of dried plums to a single customer was not sufficient to demonstrate genuine use of the contested mark for the category of ‘dried fruits’, that argument cannot succeed.
95      In that regard, the fact that proof of use was furnished only for the sale of products to a single customer does not make it possible a priori to rule out its genuineness (judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 76 and the case-law cited).
96      Furthermore, it is apparent from the evidence in the file, as taken into account by the Board of Appeal in the contested decision, that that sale entailed significant quantities and a total amount invoiced greater than EUR 451 000. Those quantities and that amount, although they relate to a one-off sale to a single customer in Spain, cannot be described as symbolic or as being purely intended to preserve the rights conferred by the contested mark. On the contrary, that amount and those quantities demonstrate an intention to create, or at least maintain, markets for those goods. Consequently, the Board of Appeal did not err in finding, on the basis of the evidence relied on, that the contested mark had been put to genuine use for the category of ‘dried fruits’.
97      As regards, next, ‘fresh vegetables’, the same finding must be made. The invoices taken into account relate to sales of more than 500 000 kg of tomatoes for an amount invoiced greater than EUR 44 000 in August 2014, and 572 434 kg of tomatoes for an amount invoiced greater than EUR 48 000 in October 2016. As regards sales of broccoli, one invoice shows sales of more than EUR 85 000 in December 2015. Those amounts and quantities are sufficiently high with respect to the relevant market not to be regarded as symbolic.
98      As regards, lastly, ‘fresh fruits’, apart from the fact that genuine use of the registered mark is not disputed in that regard by the applicant, the invoices produced by the intervener establish the existence of significant sales in Spain and of exports to third countries, in an amount of several hundred thousand euros and relating to a wide variety of fruit, such as cherries, mandarins, apples, plums, oranges, apricots, pears, peaches, lemons and grapes.
99      Consequently, the Board of Appeal was right to find that those amounts and quantities of the goods sold were not such as to demonstrate mere token, minimal or notional use of the contested mark.
100    It follows that the fourth part of the single plea in law, alleging lack of genuine use of the goods and services at issue, must be rejected and, accordingly, the action dismissed in its entirety.
Costs
101    Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he must be ordered to pay, in addition to his own costs, the costs incurred by EUIPO and the intervener, in accordance with the forms of order sought by those parties.
On those grounds,
THE GENERAL COURT (Single Judge)
hereby:
1.      Dismisses the action;
2.      Orders Markus Schneider to pay the costs.
Spielmann
Delivered in open court in Luxembourg on 13 October 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.