JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
9 March 2022 (*)
(EU trade mark – Revocation proceedings – EU word mark STONES – Declaration of revocation in part – Article 58(1)(a) of Regulation (EU) 2017/1001 – Genuine use in the European Union – Article 19(1) and Article 10(3) of Delegated Regulation (EU) 2018/625)
In Case T‑766/20,
PrenzMarien GmbH, established in Berlin (Germany), represented by M. Kloth, R. Briske and D. Habel, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi and D. Hanf, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Molson Coors Brewing Company (UK) Ltd, established in Burton Upon Trent (United Kingdom), represented by H.-M. Elo and E. Hodge, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 29 September 2020 (Case R 274/2020-2), relating to revocation proceedings between PrenzMarien and Molson Coors Brewing Company (UK),
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen and J. Schwarcz (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 23 December 2020,
having regard to the response of EUIPO lodged at the Court Registry on 17 March 2021,
having regard to the response of the intervener lodged at the Court Registry on 4 March 2021,
further to the hearing on 17 November 2021,
gives the following
Judgment
Background to the dispute
1        On 14 January 2010, Coors Brewing 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 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (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 word sign STONES.
3        The goods in respect of which registration was sought are in Class 32 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Beer, bitter beer and lager’.
4        The application was published in Community Trade Marks Bulletin
No 34/2010 of 22 February 2010 and the trade mark was registered on 13 June 2010.
5        The trade mark was subsequently assigned to the intervener, Molson Coors Brewing Company (UK) Limited. The transfer of the trade mark was registered and published by EUIPO on 2 October 2010.
6        On 21 August 2018, the applicant, PrenzMarien GmbH, whose company name was previously Stone Brewing GmbH, made an application for revocation of the contested mark in its entirety. It relied on the ground set out in Article 58(1)(a) of Regulation 2017/1001, claiming that, within a continuous period of five years, the trade mark had not been put to genuine use in the European Union in connection with the goods in respect of which it was registered.
7        The intervener contended that the contested mark had been put to genuine use in the European Union during the relevant period, namely from 21 August 2013 to 20 August 2018 inclusive (‘the relevant period’) and produced evidence of use.
8        On 5 December 2019, the Cancellation Division partially revoked the contested mark in respect of the following goods in Class 32: ‘Lager’. It rejected the application for revocation in respect of the other goods in Class 32, namely ‘Beer, bitter beer’. In that regard, it found that the period during which use of the contested mark had been shown fell within the relevant period. It also considered that use shown in the United Kingdom of Great Britain and Northern Ireland satisfied the requirement as to the place of use. The Cancellation Division concluded that the evidence submitted, in particular promotional material and invoices, showed genuine use of the contested mark for the goods ‘Beer, bitter beer’.
9        On 4 February 2020, the applicant filed a notice of appeal against the decision of the Cancellation Division.
10      By decision of 29 September 2020 (‘the contested decision’), the Second Board of Appeal dismissed the appeal. It emphasised, inter alia, that the evidence, examined as a whole, showed sufficiently extensive use in the present case to be classified as genuine use in the European Union. The United Kingdom’s withdrawal from the European Union did not call that conclusion into question, given that, during the relevant period, the United Kingdom was still a member of the European Union and EU law was applicable in its territory.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        revoke the contested mark in its entirety;
–        order EUIPO to pay the costs.
12      EUIPO and the intervener contend that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant relies on two pleas in law, alleging, first, infringement of Article 58(1)(a) of Regulation 2017/1001 and, second, infringement of that provision, read in conjunction with Article 19(1) and Article 10(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).
The first plea, alleging infringement of Article 58(1)(a) of Regulation 2017/1001
14      The applicant submits, in essence, that EUIPO incorrectly applied Article 58(1)(a) of Regulation 2017/1001 in so far as genuine use in the European Union is required in respect of the goods and services for which the contested EU trade mark is registered.
15      The applicant submits, in particular, that the classification of the use of the contested mark in the United Kingdom during the relevant period as use in the European Union within the meaning of Article 58(1)(a) of Regulation 2017/1001 constitutes an incorrect legal characterisation, in the specific context of the United Kingdom’s withdrawal from the European Union. According to the applicant, the unitary character of the EU trade mark corresponds to the concept of the European Union as a unitary territory with a single market. As a matter of principle, the trade mark has to be used in the relevant geographical area where it is registered. In order not to restrict the single market with ‘empty’ trade mark rights, the term ‘Union’ in the abovementioned provision must be understood as meaning ‘territory of the European Union at the time of the last decision on the matter’, that is to say, at the time of the decision in the present case.
16      The applicant submits that the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7; ‘the Withdrawal Agreement’) should be taken into consideration in the light of the possibility that there will be future provisions for the handling of existing EU trade marks and ongoing opposition proceedings.
17      According to the applicant, the case where the contested mark has been used only in the United Kingdom and not in the other EU Member States is not regulated in the Withdrawal Agreement. Article 54(1)(a) of the Withdrawal Agreement, read in conjunction with Article 54(5)(b) thereof, provides for the opposite case, namely that the fact that an EU trade mark registered in accordance with Regulation 2017/1001 – the holder of which is to become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services – had not been put into genuine use in the territory of the United Kingdom before the end of the transition period does not constitute a ground for revocation.
18      The applicant claims that, if the trade mark has been used only in the territory of the United Kingdom, there is no economic reason after the United Kingdom has left the European Union to allow trade mark conflicts in the European Union. According to the applicant, exceptions to the principle of the unitary character of the EU trade mark must be explicitly regulated, as indicated in Article 1(2) of Regulation 2017/1001, read in conjunction with Article 209 thereof. It would be wrong to assume that the trade mark proprietor would still be free to import the goods in question into the (new) single market. This was possible for the intervener during the five-year grace period.
19      Lastly, according to the applicant, the Board of Appeal made an additional error in the statement of reasons not to suspend the proceedings, in paragraph 17 of the contested decision.
20      EUIPO and the intervener dispute the applicant’s submissions.
21      As a preliminary point, it should be noted that the United Kingdom was a member of the European Union throughout the relevant period. Consequently, the intervener’s proven use of the contested mark during that period did take place in the European Union, as required by Article 58(1)(a) of Regulation 2017/1001.
22      Furthermore, it should also be noted, as a precaution and without this fact being decisive for the purposes of assessing the genuine use of the mark at issue during the relevant period (see paragraphs 23 to 32 below), that it is common ground that, on the date of adoption of the contested decision by the Board of Appeal, namely 29 September 2020, the transition period provided for by the Withdrawal Agreement had not yet expired.
23      The applicant seeks to rely on the economic logic of EU trade mark revocation proceedings and on the Withdrawal Agreement, and in particular on the absence of a specific provision in that agreement governing the present case, in order to argue that use demonstrated solely in the territory of the United Kingdom can no longer be relevant after 1 January 2021 and, more specifically, on the date of the Court’s judgment in the present case.
24      In that regard, according to the case-law, the territorial borders of the Member States should be disregarded in the assessment of genuine use within the meaning of Article 15(1) of Regulation No 207/2009 (see, to that effect, judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 44). In accordance with paragraphs 49 and 50 of that judgment, which are applicable by analogy to Article 58(1)(a) of Regulation 2017/1001, even use in a single Member State of the European Union may, in certain circumstances, be regarded as genuine use that makes it possible to preserve the rights in an EU trade mark.
25      As EUIPO correctly submits before the Court, no specific provision in the Withdrawal Agreement provides that the use of an EU trade mark in the United Kingdom before the latter’s withdrawal from the European Union on 1 February 2020, as well as during the subsequent transition period which lasted until 31 December 2020, is no longer to be regarded as use in the European Union within the meaning of Article 58(1)(a) of Regulation 2017/1001. In the absence of any express provision to the contrary and in the light of the clarity of Article 58(1)(a) of Regulation 2017/1001, it must be found that the legislature implicitly accepted that the protection conferred on an EU trade mark should be maintained even where genuine use of that mark is demonstrated only in the territory of the United Kingdom, for as long as the latter remained a member of the European Union.
26      That finding is not invalidated by the line of argument a contrario made by the applicant, which refers to the fact that the Withdrawal Agreement contained a specific provision according to which the fact that an EU trade mark – the holder of which is to become the holder of a trade mark in the United Kingdom following the latter’s withdrawal from the European Union, consisting of the same sign, for the same goods or services – had not been put to genuine use in the territory of the United Kingdom before the end of the transition period does not constitute a ground for revocation (Article 54(1)(a) of the Withdrawal Agreement, read in conjunction with Article 54(5)(b) thereof), if such use was demonstrated in the rest of the territory of the European Union.
27      Rather, that example reinforces the importance which the legislature attaches to taking into account the use of an EU trade mark in a part of the territory of the European Union, since such use is sufficient to preclude revocation of the corresponding new trade mark rights in the United Kingdom, even though that trade mark has not previously been used there and the territory in question is no longer part of the European Union at the date of the effects of the provisions referred to in paragraph 26 above.
28      In the present case, however, the use of the contested mark in the United Kingdom must be considered relevant, especially since it was indeed use in the territory of the European Union during the relevant period, the genuineness of which will be assessed in connection with the second plea. For that reason, first, the applicant’s argument based on Article 209 of Regulation 2017/1001, claiming that exceptions to the principle of the unitary character of the EU trade mark have to be explicitly stated, must also be rejected as unfounded. The present case is not, as a matter of fact, an exception, but a direct application of Article 58(1)(a) of that regulation.
29      Second, the applicant has not relied on any legal basis in support of its claim that the date of the last decision given in the present case, that is to say, a decision of the General Court or, in the event of an appeal, of the Court of Justice of the European Union, is decisive (see paragraphs 15 and 18 above), with the exception of a purely indicative reference, at the hearing, to the supposed practice of the courts in Germany, which has no connection with the present proceedings.
30      As regards the economic claim relied on in that regard in the application, linked to the United Kingdom’s departure from the European Union, alleging in particular that, at the time of the final decision in the present proceedings, all participants in the single market will allegedly be prohibited from using a sign that has never been used within the single market that now exists, it must be held that such reasoning cannot, in the present case, take precedence over the clear wording of Article 58(1)(a) of Regulation 2017/1001 which is applicable to the relevant period. Thus, contrary to what the applicant submitted at the hearing, it cannot be held that the protection of the contested mark has become ‘superfluous’ in the light of the significant changes in the situation, or even that there was no legitimate interest in maintaining the mark at issue.
31      Moreover, the economic logic underlying that provision is discernible even in the particular context of the United Kingdom’s withdrawal from the European Union, of which the Board of Appeal was aware on the date of adoption of the contested decision. In so far as genuine use in the European Union constitutes the condition for an EU trade mark to remain protected, that new context will have to be taken into consideration, where appropriate, in possible future proceedings, namely in the event that the relevant period of five years laid down by that provision falls, in part or in whole, after 1 January 2021 (see also Articles 126 and 127 of the Withdrawal Agreement).
32      In the light of those factors, the applicant’s first plea must be rejected, without it being necessary to adopt a position on the issue of the statement of reasons for the contested decision as regards the suspension of the administrative procedure requested by the applicant (see paragraph 19 above), which does not constitute an independent complaint and has no bearing on the foregoing conclusions.
The second plea, alleging infringement of Article 58(1)(a) of Regulation 2017/1001, read in conjunction with Article 19(1) and Article 10(3) of Delegated Regulation 2018/625
33      The applicant claims, in essence, that EUIPO incorrectly applied Article 58(1)(a) of Regulation 2017/1001, read in conjunction with Article 19(1) and Article 10(3) of Delegated Regulation 2018/625, in that the evidence of use submitted by the intervener is insufficient to prove genuine use during the relevant period between 21 August 2013 and 20 August 2018. In particular, the contested decision ignored the fact that the beer market is a mass market, even though the applicant extensively substantiated that fact. In the context of such a mass market, the alleged use on the basis of the submitted invoices can only be considered token at best. The applicant also disputes the authenticity of certain items of evidence, in particular the brochures submitted by the intervener, on account of the handwritten dates, and submits that the evidence taken as a whole does not demonstrate genuine use. Since the evidence is not sufficient to prove use of the contested mark in connection with ‘bitter beer’, it is, according to the applicant, certainly insufficient to prove use in connection with the goods covered by the general term ‘beer’.
34      EUIPO and the intervener dispute the applicant’s submissions.
35      In that regard, under Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. However, that article provides that no person may claim that the proprietor’s rights in a trade mark should be revoked where, during the interval between expiry of that period and filing of the application for revocation, genuine use of the trade mark has been started or resumed.
36      The rationale for the requirement that a mark must have been put to genuine use in order to be protected under EU law is that EUIPO’s register cannot be compared to a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 20 and the case-law cited).
37      According to the case-law, 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 (judgment of 21 November 2013, Recaro v OHIM – Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 19; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43, and order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 27).
38      The Court has thus held that the analysis of whether use of an earlier trade mark is genuine cannot be confined merely to establishing that that mark has been used in the course of trade, since that use must also be genuine, in accordance with Regulation 2017/1001. Not all proven commercial exploitation can therefore automatically be deemed to constitute genuine use of the mark in question (judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 32).
39      Genuine use of the mark thus entails use of the mark on the market for the goods and services protected by that mark and not just internal use by the undertaking concerned. Use of the mark must relate to goods or services already marketed or which are about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (judgments of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 39, and of 14 March 2017, IR v EUIPO – Pirelli Tyre (popchrono), T‑132/15, not published, EU:T:2017:162, paragraph 88; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
40      As regards the criteria for assessing whether use of the trade mark is genuine, it must be borne in mind that, in making such an assessment, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the extent and frequency of use of the mark (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 22 and the case-law cited).
41      Furthermore, a global assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the low volume of goods marketed under the mark may be offset by the fact that use of the mark was very extensive or very regular and vice versa (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 23 and the case-law cited).
42      Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 26 and the case-law cited).
43      As to the extent or scale of the use to which the contested trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 31 and the case-law cited).
44      The turnover and the volume of sales of the goods under the contested mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the market. As a result, use of a trade mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be classified as genuine, provided that it is regarded as warranted, in the relevant economic sector, as a means of maintaining or creating market shares for the goods or services protected by the mark. It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not, so that a de minimis rule, which would not allow EUIPO or, following the bringing of an action, the Court, to appraise all the circumstances of the dispute before it, cannot be laid down (see judgment of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 32 and the case-law cited).
45      In the interpretation of the notion of genuine use, account must be taken of the fact that the rationale for the requirement that the contested mark must have been put to genuine use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to cases where large-scale commercial use has been made of the marks (see judgments of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM – Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 18 and the case-law cited, and of 15 July 2015, TVR Automotive v OHIM – TVR Italia (TVR ITALIA), T‑398/13, EU:T:2015:503, paragraph 45 and the case-law cited).
46      It should also be noted that a word mark is a mark consisting entirely of letters, words or groups of words, without any specific figurative element. The protection offered by the registration of a word mark applies to the word in the application for registration and not to the individual figurative or stylistic characteristics which that mark might possess. As a result, the font that the sign might be presented in must not be taken into account. It follows that a word mark may be used in any form, in any colour or font type (see judgment of 28 June 2017, Josel v EUIPO – Nationale-Nederlanden Nederland (NN), T‑333/15, not published, EU:T:2017:444, paragraphs 37 and 38 and the case-law cited).
47      Lastly, according to the case-law, there is no rule in the EU trade mark system that requires use of the trade mark on its own, independently of any other mark or sign, to be proved. Therefore, the case could arise where two or more trade marks are used jointly and autonomously, with or without the name of the manufacturer’s company (judgment of 6 November 2014, Popp and Zech v OHIM – Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 43; see also, to that effect, judgments of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraphs 33 and 34, and of 14 December 2011, Völkl v OHIM – Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 100).
48      The applicant’s complaints must be examined in the light of those principles.
49      In the present case, as is apparent from a combined reading of paragraphs 5 and 28 of the contested decision, proof of genuine use consists of a sworn witness statement, dated 17 December 2018, signed by the intervener’s brand manager, according to which the contested mark was used in the United Kingdom for the product ‘Bitter beer’ during the relevant period, which is confirmed by a table showing the volume of STONES beer sold in each year of the relevant period.
50      That witness statement is accompanied by a number of annexes, listed in paragraph 5 of the contested decision, consisting of (i) multiple invoices dating from 2013 to 2018, addressed to various customers in the United Kingdom, or even to the United Kingdom supermarket retailer ASDA, referring to the mark at issue and, for some, followed by information concerning the type of beer, namely ‘bitter’, (ii) two screenshots of websites, dated 2017, mentioning that mark in relation to cans of bitter beer offered for sale with prices in pounds sterling, or a screenshot showing the trade mark stones bitter on a full beer glass, which, according to the intervener, dated from 2014, (iii) four brochures with handwritten dates between 2012 and 2015 mentioning the mark at issue or stones bitter in relation to beers, (iv) a printout from Facebook with an image of beer glasses bearing the mark at issue and (v) a printout from a newspaper with pictures of a hockey team sponsored by stones.
51      In paragraph 24 of the contested decision, the Board of Appeal stated that, in accordance with Article 19(1) of Delegated Regulation 2018/625, read in conjunction with Article 10(3) thereof, the indications and evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or services for which it is registered.
52      As regards the witness statement of 17 December 2018, the Board of Appeal found, in paragraphs 29 to 32 of the contested decision, in essence, that Article 10(4) of Delegated Regulation 2018/625, relating to the supporting documents and items which may be provided for the purpose of proving use of a mark, referred, inter alia, to statements in writing sworn or affirmed as referred to in Article 97(1)(f) of Regulation 2017/1001.
53      The Board of Appeal, while acknowledging that, in accordance with settled case-law, the witness statement of 17 December 2018 could not, on its own, constitute sufficient proof of use (judgments of 7 June 2005, Lidl Stiftung v OHIM – REWE-Zentral (Salvita),
T‑303/03, EU:T:2005:200, paragraphs 40 to 42, and of 16 July 2014, Nanu-Nana Joachim Hoepp v OHIM – Stal-Florez Botero (la nana),
T‑196/13, not published, EU:T:2014:674, paragraph 32), nonetheless confirmed the Cancellation Division’s analysis that the information provided was corroborated by additional evidence.
54      In paragraph 33 of the contested decision, the Board of Appeal emphasised that the evidence had to be considered as a whole. In paragraph 34 of that decision, it referred to paragraphs 4 and 5 of the witness statement of 17 December 2018 providing volume figures for sales of STONES beer for, first, ‘on-premises’ customers (for example pubs, bars, restaurants) and, second, ‘off-premises’ customers (for example, retail stores). According to the Board of Appeal, throughout the relevant period, total sales were 1.5 million litres per year minimum, and in several years exceeded 3 million litres per year.
55      In paragraphs 36 and 37 of the contested decision, the Board of Appeal referred to the invoices submitted by the intervener. It stated that ‘the 18 invoices for “STONES” beer dated between 2013 and 2018 (three invoices per year) addressed to “on-premises” customers in various regions of the UK … substantiate[d] and corroborate[d] the evidence of volumes at paragraph 4 of the witness statement’. Next, it stated that ‘the 36 invoices for “STONES” beer dated between 2013 and 2018 (six invoices per year) … addressed to ASDA … substantiate[d] and corroborate[d] the evidence of volumes at paragraph 5 of the witness statement’. According to the Board of Appeal, the invoices refer to sales of STONES bitter in cans to two of ASDA’s distribution centres (Lutterworth and Doncaster).
56      In particular, in paragraph 38 of the contested decision, the Board of Appeal stated that the high amount of sales shown in the invoices directed to ASDA permitted the conclusion that the extent of use of the contested mark was sufficient.
57      In paragraphs 39 and 40 of the contested decision, in response to the applicant’s claims that the intervener had only produced invoices for sales totalling 133 754.23 pounds sterling (GBP) in six years (EUR 151 570.293), that is to say, an alleged average turnover of GBP 22 292.38 per annum, the Board of Appeal found that, even on the basis of those figures alone, such use could not be regarded as token, also taking into account the other evidence which, according to the Board of Appeal, confirmed the presence of the contested mark on the market.
58      In that regard, the Board of Appeal emphasised, inter alia, the importance of the following:
–        the witness statement of 17 December 2018, to which the illustrative invoices are attached, sets out that those invoices are merely exemplary of the wide sales made of beer under the contested mark each year during the relevant period; moreover, the invoice numbers are not consecutive (paragraph 41 of the contested decision);
–        the screenshots of the websites ‘www.groceries.asda.com’ and ‘www.drinksdirect.co.uk’, dated 2017, showing the trade mark STONES affixed to cans of beer offered for sale in the United Kingdom (with prices marked in pounds sterling) also corroborate the reality of the sales of ‘STONES’ beer to ‘off-premises’ customers (paragraph 42 of the contested decision);
–        various items of evidence relating to the promotion of the contested mark, including four brochures dated 2012 (out of the relevant period), 2014 and 2015, an extract from a United Kingdom newspaper dated 2014 promoting ‘STONES’ beer, the photograph of a bar with a ‘STONES’ beer tap taken in June 2017 (taken from Facebook), the two photographs (one taken from Facebook dated 2017, one from a national newspaper dated 19 February 2018) showing a hockey team with the ‘STONES’ mark on their uniforms, also corroborate the witness statement; this also applies to the abovementioned brochures, notwithstanding the fact that they contain only a handwritten date; they cannot be ignored since they must be seen in conjunction with the rest of the evidence (paragraphs 43 and 44 of the contested decision).
59      In those circumstances, the Board of Appeal concluded that, notwithstanding the applicant’s claims relating to mass consumption markets, which include the market for beer, the volume of sales under the contested mark in the present case was sufficient to prove genuine use, since it was demonstrated that the intervener had created and maintained a market share for the goods sold under the trade mark during the relevant period. According to the Board of Appeal, the evidence related both to sales of beer and to the advertising of the contested mark. The Board of Appeal rejected various references made by the applicant to certain previous decisions of the Boards of Appeal of EUIPO and to judgments of the Court as not comparable with the present case, in the light of the volumes of sales in question (paragraphs 45 to 50 of the contested decision).
60      As to the nature of use, the Board of Appeal confirmed, in paragraph 51 of the contested decision, the Cancellation Division’s undisputed reasoning and finding that the mark has been used as registered or in a form which does not alter its distinctive character.
61      In paragraph 52 of the contested decision, the Board of Appeal found that the contested mark had been used for ‘bitter beer’ (corresponding to the registered goods), which belongs to the category of the registered goods ‘Beer’. As to ‘beer’, the intervener was not, according to the Board of Appeal, required to prove use of the mark for different kinds of beers.
62      Lastly, according to the Board of Appeal, use in the United Kingdom had been proven, since the invoices were addressed to customers based in the United Kingdom, the websites offered the goods in pounds sterling and the promotional material was in English with prices in pounds sterling. The Board of Appeal stated that, regardless of the massive amounts of beer sold each year across the European Union, use solely in the United Kingdom could be sufficiently extensive to constitute genuine use, and found that that was indeed the case in the present case ‘for the reasons set out in the [Cancellation Division’s] decision’ (the Board of Appeal also referred to the decision of the Fourth Board of Appeal of 31 January 2020, R 1524/2018-4, Stone brewing/Stones et al., § 33) (paragraphs 53 and 54 of the contested decision).
63      None of the applicant’s claims (see paragraph 33 above) invalidates the Board of Appeal’s finding relating to genuine use of the contested mark, carried out following a global analysis of the evidence.
64      First, as regards the applicant’s criticisms relating to the fact that the brochures submitted contain only handwritten dates, which is uncommon in the relevant sector and calls into question their evidential value, in so far as those dates may have been added retroactively, in addition to which the applicant raised uncertainties as to the place where the brochures were produced, it must be stated, first, that those brochures must be evaluated taking into account the fact that reference is made to them in the witness statement of 17 December 2018 and, second, that they constitute only one of the items of evidence of use of the contested mark in the present case, as recalled in paragraph 58 above. Furthermore, the Board of Appeal was fully entitled to find that some pages of the brochures specified that the prices were indicated in pounds sterling and were therefore intended for United Kingdom consumers. Accordingly, although it is not possible to attach decisive probative value to those brochures, they constitute at least one of the items of evidence which must be taken into account in the global assessment.
65      Second, as regards the applicant’s criticisms of the figures presented in the tables in paragraphs 4 and 5 of the witness statement of 17 December 2018, relating to the volumes of sales under the contested mark, it is sufficient to note, as the Board of Appeal did and in accordance with EUIPO’s submissions before the Court, that the illustrative invoices which were submitted as evidence already show a volume of sales which cannot be regarded as merely token, to which must be added the promotional material which confirms genuine use.
66      More specifically, even if account had to be taken only of the volumes of sales shown in the invoices submitted, as the applicant claims (see also paragraph 57 above) – notwithstanding the fact that they are not numbered consecutively, which is an indication that they were merely illustrative invoices (see, by analogy, judgment of 13 June 2019, Pielczyk v EUIPO – Thalgo TCH (DERMÆPIL SUGAR EPIL SYSTEM),
T‑398/18, not published, EU:T:2019:415, paragraphs 69 and 70) – that volume nonetheless exceeds, according to figures not disputed by the applicant, GBP 22 000 on average per annum and, overall, amounts to EUR 151 570.293 (see paragraph 39 of the contested decision). Even for a mass consumption and foodstuffs sector such as the beer sector, it cannot be ruled out, in accordance with the case-law referred to in paragraph 45 above, that products, without even constituting niche products, may nevertheless be sold under a trade mark in a way that constitutes genuine use, even though the volume may seem relatively modest in relation to the volumes of the sector of the relevant product as a whole.
67      It should be borne in mind that, according to that case-law, the rationale for the requirement that the contested mark must have been put to genuine use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to cases where large-scale commercial use has been made of the marks. It is not inconceivable, in particular in the beer sector, that real and genuine uses are in volumes which cannot, however, be compared to the volume of that sector as a whole at EU level, particularly in a context in which breweries may be craft or family run breweries. The purpose of creating or maintaining a market for the goods in question must be assessed on a case-by-case basis and is part of a strategy on which the undertaking which is the proprietor of the trade mark decides, in so far as it cannot be disputed whether that purpose is real and the sales takes place over the relevant period, as in the present case. In addition, other items of evidence such as the screenshots of the websites show that the goods sold to ASDA’s distribution centres were offered for sale to the general public or that sponsorship agreements were concluded with sports teams, which made it possible to advertise the contested mark. In those circumstances, the various references to case-law made by the applicant in paragraphs 40 to 44 of the application, which concern examples of use in volumes which are not comparable with the present case, must also be disregarded.
68      Lastly, the applicant’s claim that, in essence, ‘bitter beer’ should be regarded as an independent subcategory of ‘beer’ and that the Board of Appeal erred in recognising on that basis that use of the contested mark in connection with ‘bitter beer’ was also use in connection with ‘beer’ must be rejected. In that regard, first, it is common ground that bitter beer constitutes a kind of beer. Second, the relevant criteria for determining whether or not goods for which use has been established constitute a coherent subcategory of goods capable of being viewed independently are the purpose and intended use (judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 44). There is no difference in purpose or intended use between the goods ‘Beer’ and ‘Bitter beer’ or, moreover, a sufficiently clear delimitation to define those goods as forming a separate category. Thus, the fact that ‘bitter beer’ is a traditional United Kingdom beer which has its own brewing style and history, as the applicant claims, is irrelevant, so that it is also not necessary to rule on the admissibility of Annex 9 to the application, entitled ‘What is an English bitter’, which seeks to demonstrate that fact.
69      Accordingly, the applicant’s second plea must also be rejected and the action must be dismissed in its entirety.
Costs
70      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, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders PrenzMarien GmbH to pay the costs.
Marcoulli
Frimodt Nielsen
Schwarcz
Delivered in open court in Luxembourg on 9 March 2022.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.