JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
3 May 2023 (*)
(European Union trade mark – Opposition proceedings – Application for the European Union figurative mark TEHA – Earlier national figurative mark tema – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Lack of genuine use of the mark – Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) – Use in a form which differs in elements which alter the distinctive character of the trade mark – Article 15(1), second subparagraph, point (a), of Regulation No 207/2009 (now Article 18(1), second subparagraph, point (a), of Regulation 2017/1001))
In Case T‑52/22,
Chambre de commerce et d’industrie territoriale de la Marne en Champagne, established in Châlons-en-Champagne (France), represented by T. de Haan, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ambrosetti Group Ltd, established in London (United Kingdom), represented by G. Guglielmetti, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, U. Öberg and E. Tichy-Fisslberger (Rapporteur), Judges,
Registrar: T. Henze, Acting Registrar,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, the chambre de commerce et d’industrie territoriale de la Marne en Champagne (Chamber of Commerce and Industry, Marne en Champagne, France), seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 November 2021 (Case R 837/2021-4) (‘the contested decision’).
Background to the dispute
2        On 9 August 2017, the intervener, Ambrosetti Group Ltd, applied to the European Union Intellectual Property Office (EUIPO) for registration of an EU trade mark under 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).
3        The mark applied for is the following figurative sign:
4        The services for which registration has been applied for are, inter alia, in Class 41 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.
5        The trade mark application was published in the European Union Trade Marks Bulletin
No 163/2017 of 29 August 2017.
6        On 29 November 2017, the applicant’s predecessor in title, the chambre de commerce et d’industrie de Reims Épernay (Chamber of Commerce and Industry, Reims Épernay, France) filed an opposition to the registration of the mark applied for in respect of the services referred to in paragraph 4 above.
7        The opposition was based on the earlier French figurative mark reproduced below and designating, inter alia, services in Class 41:
8        The ground invoked in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
9        Following a request made by the intervener, EUIPO invited the applicant to provide evidence of genuine use of the earlier mark cited in opposition. The applicant complied with that request within the time limit set.
10      The evidence relates to the use of a sign corresponding to the single word element ‘tema’, written in lower- or upper-case letters, as well as the use of the following two figurative signs:
11      On 19 March 2021, the Opposition Division rejected the opposition.
12      On 10 May 2021, the applicant lodged an appeal with EUIPO under Articles 66 to 71 of Regulation 2017/1001 against the decision of the Opposition Division.
13      By the contested decision, the Fourth Board of Appeal of EUIPO dismissed the appeal. It held that the applicant had not provided evidence of genuine use of the earlier mark. It held that the evidence submitted by the applicant related to a form of the earlier mark which differed in elements which altered the distinctive character of the earlier mark in the form in which it had been registered.
Forms of order sought by the parties
14      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs, including those incurred before the Board of Appeal of EUIPO.
15      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
16      The intervener contends that the Court should:
–        dismiss the action and confirm the contested decision;
–        order the applicant to pay the costs, including those incurred in the proceedings before EUIPO and the Board of Appeal.
Law
17      Having regard to the date of submission of the application for registration at issue, namely 9 August 2017, which is decisive for the purposes of identifying the applicable substantive law, the facts of the present case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Moreover, since, according to settled case-law, procedural rules are generally deemed to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
18      As regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the proceedings in their arguments raised before the Court to Article 8(1)(b) and Article 47(2) and (3) of Regulation 2017/1001 should be understood as referring to Article 8(1)(b) and Article 42(2) and (3), which are identical, of Regulation No 207/2009. Furthermore, the references to Article 18(1), second subparagraph, point (a), of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the parties to the proceedings in their written pleadings are to Article 15(1), second subparagraph, point (a), of Regulation No 207/2009, which are slightly different in content, without that fact being relevant to the present case.
19      In support of its action, the applicant puts forward a single plea in law alleging infringement of Article 15(1), second subparagraph, point (a), of Regulation No 207/2009. More specifically, it does not dispute that the evidence which it submitted to EUIPO does not relate to the use of the earlier mark in the exact form in which it was registered, but maintains that its dominant elements are used in it in a way which does not alter its distinctive character.
20      EUIPO, supported by the intervener, contests the applicant’s arguments and considers that the Board of Appeal was entitled to conclude that the applicant had not demonstrated genuine use of the earlier mark.
21      In the present case, it is established that none of the evidence adduced by the applicant before EUIPO relates to the earlier mark in the form in which it was registered. It must therefore be examined whether the Board of Appeal was essentially correct in considering that the applicant had also failed to demonstrate genuine use of the earlier mark in a form which constituted an admissible difference within the meaning of Article 15(1) of Regulation No 207/2009.
22      In paragraphs 18 to 20 of the contested decision, the Board of Appeal found that the earlier mark consisted of a rectangle divided into two parts, namely, on the left, a blue rectangle, in which the combination of the letters ‘t’ and ‘e’ with a white outline was placed, and, on the right, a black rectangle, in which the combination of the letters ‘m’ and ‘a’ written in white was placed, with each letter having a specific font. It considered that the distinctive character of the earlier mark was derived, first, from the specific stylisation of the letters ‘te’ as opposed to ‘ma’ and, secondly, from the contrast of the blue and black colour combination. Due to the different fonts and the colour combination, the earlier mark was not dominated by the word element ‘tema’. Since the combination of the letters ‘t’ and ‘e’ as well as the letters ‘m’ and ‘a’ are written in different fonts, the Spanish term ‘tema’ would only be recognised after a second analysis. Furthermore, the Board of Appeal pointed out that that term does not exist in French.
23      In paragraph 23 of the contested decision, the Board of Appeal essentially concluded that the differences between the mark as registered and the figurative signs as used could not be regarded as negligible and constituted, on the contrary, an alteration of the distinctive character of the earlier mark. The use of a completely different colour combination alters the distinctive character of the earlier mark. The blue and black rectangles, present in the mark as registered, were either not present in the figurative signs as used or were present only in part. The earlier mark as registered had a dominant colour combination while the figurative signs as used were discreet. Furthermore, given that the distinctive elements of the earlier mark as registered were the specific different and visually eye-catching stylisation of the letters ‘t’ and ‘e’ in relation to ‘ma’ and the contrasting blue and black colour combination, namely the combination of the white letters ‘te’ framed on a blue background and the white letters ‘ma’ in bold type on a black background, consumers would be led to perceive ‘te’ and ‘ma’ as two distinct elements. By contrast, due to the use of the same font and colour of the letters in the figurative signs as used, the letters would be immediately perceived as one word, namely ‘tema’. Thus, the use of the word ‘tema’ alone, without those figurative elements, would change the distinctive character of the sign. The same reasoning applies to the figurative signs to which the evidence relates, in which the word ‘tema’ is written as a single homogeneous unit, accompanied by a circular figurative element.
24      The Board of Appeal also found that the curved elements present in the figurative signs as used were not mere decorative elements, but rather distinctive elements which had no equivalent in the mark as registered.
25      As a preliminary point, it should be noted that, although Article 15(1), second subparagraph, point (a), of Regulation No 207/2009 refers solely to the use of a European Union trade mark, it must be applied, by analogy, to the use of a national trade mark, in so far as Article 42(3) of that regulation provides that Article 42(2) thereof applies to earlier national trade marks referred to in Article 8(2)(a) of that regulation, ‘by substituting use in the Member State in which the earlier national trade mark is protected for use in the [European Union]’ (judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 17).
26      Furthermore, by virtue of a combined application of Article 15(1), second subparagraph, point (a), of Regulation No 207/2009 and Article 42(2) and (3) of that regulation, proof of genuine use of an earlier national or EU trade mark which forms the basis of an opposition to an application for an EU trade mark also includes proof of use of the earlier mark in a form which differs in elements which do not alter the distinctive character of that mark in the form in which it was registered (see judgment of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited).
27      The purpose of Article 15(1), second subparagraph, point (a), of Regulation No 207/2009 is to avoid imposing strict conformity between the form in which the trade mark is used and the form in which the trade mark was registered and to allow the proprietor of the latter to make variations to the sign, in the course of its commercial exploitation, which, without altering its distinctive character, enable it to be better adapted to the requirements of marketing and promotion of the goods or services concerned. In such situations, where the sign used in the course of trade differs from the form in which it was registered only in negligible respects, so that the two signs may be regarded as equivalent overall, the abovementioned provision provides that the obligation to use the registered trade mark may be fulfilled by adducing evidence of use of the sign which constitutes its form used in the course of trade (judgments of 23 February 2006, Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 50, and of 15 December 2015, ARTHUR & ASTON, T‑83/14, EU:T:2015:974, paragraph 18).
28      The distinctive character of a trade mark within the meaning of Regulation No 207/2009 means that that mark makes it possible to identify the product in respect of which registration is sought as originating from a particular undertaking and thus to distinguish that product from those of other undertakings (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited).
29      The finding that the distinctive character of the mark as registered has been altered requires an examination of the distinctive and dominant character of the added elements on the basis of the intrinsic qualities of each of those elements and the relative position of the various elements in the configuration of the mark (see judgment of 23 September 2020, CEDC International v EUIPO Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 139 (not published) and the case-law cited).
30      Furthermore, where a trade mark consists of or is composed of several elements and one or more of them are not distinctive, the alteration of those elements or their omission is not such as to affect the distinctive character of the trade mark as a whole (see judgment of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 30 and the case-law cited).
31      It is in the light of those considerations that the substance of the applicant’s three complaints in support of its single plea in law must be examined. The Court considers it appropriate to examine, first of all, the second, then the third and, finally, the first of the applicant’s complaints.
32      As regards the applicant’s second complaint, in relation to the earlier mark as registered, the applicant points out that the word elements are, in principle, more distinctive than the figurative elements. The applicant submits that the word element ‘tema’ is dominant because of its central position. The figurative elements, which, according to the applicant, are decorative elements, are limited to a stylised presentation and colours framing the word element. The omission of those elements from the figurative signs as used does not alter the distinctive character of the earlier mark. Furthermore, the applicant contests the division of the word element ‘tema’ into ‘te’ and ‘ma’ since those elements have no meaning. The relevant public would refer to the services in question by retaining the word element ‘tema’ as a whole, regardless of the weak stylisation of the elements.
33      Furthermore, the applicant points out that the relevant public is the French public which does not speak Spanish, so that the meaning of the word ‘tema’ in Spanish would not affect the perception of the earlier mark by that public.
34      EUIPO and the intervener dispute the applicant’s arguments.
35      As a preliminary point, it is common ground between the parties that the word element ‘tema’ has no meaning in French. It must be stated that that fanciful element confers a certain distinctive character on the earlier mark. By contrast, it must be examined whether the Board of Appeal was essentially correct in considering the figurative element to be distinctive.
36      In that regard, it should be noted at the outset that, although, as the applicant maintains, where a complex mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name of the mark than by describing the figurative element of the mark, it does not follow that the word elements of a mark must always be regarded as more distinctive than the figurative elements. In the case of a complex mark, the figurative element may have an equivalent place to that of the word element. It is then necessary to examine the intrinsic qualities of the figurative element and those of the word element of the contested mark, as well as their respective positions, in order to identify the dominant component (see judgment of 20 September 2017, Jordi Nogues v EUIPO – Grupo Osborne (BADTORO), T‑350/13, EU:T:2017:633, paragraph 29 and the case-law cited).
37      In the present case, the earlier mark is a figurative sign consisting of a rectangle divided into two parts: on the left, a blue rectangle in which is placed the combination of the letters ‘t’ and ‘e’, with a white outline, and, on the right, a black rectangle in which is placed the combination of the letters ‘m’ and ‘a’, each letter in a specific font, those two letters being in white.
38      In paragraph 19 of the contested decision, the Board of Appeal stated that the distinctive character of the earlier mark lay in the specific, very different and visually eye-catching stylisation of the letters ‘t’ and ‘e’ as opposed to ‘ma’ and in the contrasting combination of the colours blue and black.
39      In paragraph 20 of the contested decision, the Board of Appeal stated that, because of the different fonts used and the combination of colours, the earlier mark was not dominated by the combination of letters forming the element ‘tema’.
40      It follows from the case-law that a graphic style, even if it has a certain particularity, can be regarded as a distinctive figurative element only if it is capable of making an immediate and lasting impression on the memory of the relevant public in such a way as to enable the latter to distinguish the goods of the proprietor of the figurative mark from those of other suppliers on the market. That is not the case if the graphic style used remains largely customary in the eyes of the relevant public or if the figurative element has the function merely of highlighting the information conveyed by the word elements (see, to that effect, judgment of 27 October 2016, Caffè Nero Group v EUIPO (CAFFÈ NERO), T‑37/16, not published, EU:T:2016:634, paragraph 42 and the case-law cited).
41      In the present case, the graphic stylisation of the earlier mark is capable of making an immediate and lasting impression on consumers. The combination of colours, together with the specific stylisation of the letters making up the word element, gives the figurative element a distinctive character, so that the figurative element will not be regarded as insignificant.
42      Consequently, the distinctive character of the earlier mark also lies in the specific, very different and visually eye-catching stylisation of the letters ‘te’ as opposed to ‘ma’ and the contrast in the colour combination.
43      Therefore, the Board of Appeal did not err in law when it held, first, in paragraph 20 of the contested decision, that, because of the different fonts and the combination of colours, the sign was not dominated in its entirety by the word element ‘tema’ and, secondly, in paragraph 23 of the contested decision, that the use of the word ‘tema’ alone, without those figurative elements, did indeed alter the distinctive character of the sign.
44      It follows that the applicant’s second complaint, according to which distinctiveness derives from the word element, must be rejected.
45      With regard to the applicant’s third complaint, concerning the figurative signs as used, the applicant contests the Board of Appeal’s assessment that the use of a combination of different colours impairs distinctiveness, since it considers that the colours used in the earlier mark as registered are not distinctive. Furthermore, the colours of the figurative signs as used are the same as those of the earlier mark, namely blue, black and white. In addition, the use of basic colours which are neither distinctive nor dominant does not alter the distinctive character of the earlier mark as registered.
46      The applicant also submits that the curved elements of those figurative signs as used are merely small decorative elements with an off-centre position. Consequently, those elements have little or no distinctiveness.
47      EUIPO and the intervener dispute the applicant’s arguments.
48      It should be noted at the outset that, contrary to what the applicant claims, the colours of the mark as registered and those of the figurative signs as used are not the same. The mark as registered is composed of blue, black and white, whereas the figurative signs as used are composed of turquoise, brown, white and light blue.
49      In the present case, the figurative signs as used consist of the word element ‘tema’, written in capital letters, in a single colour, either brown or white, in a standard font and without a background or on a rectangular background of turquoise colour. They also have a figurative element representing two curved elements, placed above the word element in the upper right-hand corner of the word element. Those curved elements are either the same size or larger than the word element and are of various colours, namely brown, light blue and white respectively.
50      The specific stylisation of the word element and the contrast of the colour combination from which the distinctive character of the earlier mark as registered derives are not reproduced in the figurative signs as used.
51      It was therefore without error that the Board of Appeal held, in paragraph 23 of the contested decision, that the differences between the earlier mark as registered and the figurative signs as used could not be regarded as negligible and constituted an alteration of distinctive character.
52      That conclusion cannot be called into question by the applicant’s arguments.
53      First, as regards the colours of the figurative signs as used, it is sufficient to note that the distinctive character of the figurative element does not derive from the colours themselves, but from the stylisation of the letters of the word element combined with the contrast of the combination of the colours blue and black.
54      Secondly, as regards the distinctive character of the curved elements, it must be noted, as is apparent from paragraph 49 above, that those elements are visually striking in relation to the word element, given their size and the apparent colour contrast. Those elements are not, therefore, as the applicant maintains, decorative elements which are not very distinctive, or even non-distinctive. Therefore, their addition alters the distinctive character of the earlier mark as registered.
55      Consequently, the Board of Appeal correctly concluded in paragraph 25 of the contested decision that genuine use had not been demonstrated within the meaning of Article 15(1) of Regulation No 207/2009. Therefore, the applicant’s third complaint should be rejected.
56      As regards the applicant’s first complaint that EUIPO erred in law when it concluded in paragraph 17 of the contested decision that any differences between the mark as registered and the mark as used should be confined to insignificant elements and that the figurative signs as used and registered should be broadly equivalent, the applicant submits that it is possible for there to be non-insignificant differences between signs which do not, however, alter the distinctive character of the mark as registered.
57      EUIPO and the intervener dispute the applicant’s arguments.
58      First, it should be pointed out, as EUIPO did, and as the intervener maintained, that the Board of Appeal correctly noted, in paragraphs 13 to 17 of the contested decision, the legal bases as they follow from the case-law cited, in particular in paragraphs 26 to 30 above. According to that case-law, the sign used in trade may differ from the form in which it was registered only in negligible respects, so that the two signs may be regarded as broadly equivalent.
59      Secondly, it must also be noted that, in the light of the foregoing, the Board of Appeal was right to conclude that the differences between the signs, which are not negligible, alter the distinctive character of the earlier mark as registered.
60      Consequently, the applicant’s first complaint must be rejected as unfounded.
61      As none of the applicant’s arguments are well founded, the action must therefore be dismissed in its entirety.
Costs
62      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.
63      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance, in essence, with the forms of order sought by EUIPO and the intervener.
64      In that regard, it suffices to state that, since this judgment dismisses the action brought against the contested decision, point 2 of the operative part of that decision continues to govern the costs incurred in the course of the appeal proceedings before EUIPO (see, to that effect, judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 131).
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders the chambre de commerce et d’industrie territoriale de la Marne en Champagne to pay the costs.
Costeira
Öberg
Tichy-Fisslberger
Delivered in open court in Luxembourg on 3 May 2023.
T. Henze
S. Papasavvas
Acting Registrar
President
*      Language of the case: English.