JUDGMENT OF THE GENERAL COURT (Third Chamber)
12 March 2014 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark SPORT TV INTERNACIONAL – Earlier national figurative mark SPORTV – Relative ground for refusal – Proof of use of the earlier mark – Article 42(2) of Regulation (EC) No 207/2009 and Rule 22 of Regulation (EC) No 2868/95)
In Case T‑348/12,
Globosat Programadora Ltda, established in Rio de Janeiro (Brazil), represented by S. Micallef, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Sport TV Portugal, SA, established in Lisbon (Portugal), represented by B. Braga da Cruz and J. Pimenta, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 23 May 2012 (case R 2079/2010‑4), relating to opposition proceedings between Globosat Programadora Ltda and Sport TV Portugal, SA,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz, President, I. Labucka (Rapporteur) and D. Gratsias, Judges,
Registrar: T. Weiler, Administrator,
having regard to the application lodged at the Court Registry on 31 July 2012,
having regard to the response of OHIM lodged at the Court Registry on 5 December 2012,
having regard to the response of the intervener lodged at the Court Registry on 18 December 2012,
further to the hearing on 22 October 2013,
gives the following
Judgment
Background to the dispute
1        On 15 May 2008, the intervener, Sport TV Portugal, SA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        The trade mark in respect of which registration was sought is the word sign SPORT TV INTERNACIONAL.
3        The services in respect of which registration was sought are in Classes 35, 38 and 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, and correspond, for each of those classes, to the following description:
–        Class 35: ‘Internet advertising services; dissemination of advertising; billboard leasing services; advertising space rental services; billboard advertising services; television and radio advertising services; advertising in the form of animation; promotion agency services; sport and public relations promotion agency services; opinion polling services; organisation of publicity for commercial exhibitions; promotional and advertising services; business information services provided online from a computer database or the Internet’;
–        Class 38: ‘Broadcasting of television and radio programmes, news broadcasting; broadcasting of television and radio programmes and television and radio broadcasts by all means including by cable and satellite; interactive communications via the global telecommunication network (the Internet), by cable or by data transmission media, transmission of sound and images by satellite; services in the field of telecommunications, including online information on data and other information, images, graphics, sound and/or audiovisual material via computers and communications networks’;
–        Class 41: ‘Organisation and production of printed and electronic matter, in particular television and radio broadcasts, services relating to the production, editing, publication and broadcasting of television and radio programmes, publication of texts and periodicals online; broadcasting and production of information, radio and television entertainment programmes, audiovisual and multimedia programmes, whether for interactive use or not; organising of competitions’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 7/2009 of 20 February 2009.
5        On 22 June 2009, the applicant, Globosat Programadora Ltda, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 in relation to registration of the mark applied for in respect of all the services referred to in paragraph 3 above.
6        The opposition was based on the Portuguese figurative mark, registered on 2 October 1998 under number 329 507, reproduced below:
7        The services covered by the earlier mark fall within Classes 38 and 41 and correspond, for each of those classes, to the following description:
–        Class 38: ‘Broadcasting of television programmes; broadcasting of television by cable; broadcasting of television’;
–        Class 41: ‘Television productions; television programmes; production of television shows’.
8        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009.
9        The intervener requested that the applicant furnish proof of use of the mark on which the opposition was based. The applicant submitted various documents with a view to establishing use of the earlier mark.
10      On 24 August 2010, the Opposition Division rejected the opposition in its entirety. In particular, it considered that the proof of use of the earlier mark submitted by the applicant was insufficient, mainly on the ground that most of the evidence did not date from the relevant period or did not allow conclusions to be drawn regarding the place of use.
11      On 22 October 2010, the applicant filed an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
12      By decision of 23 May 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. The Board of Appeal considered, in essence, like the Opposition Division, that the applicant had not proven genuine use of the mark on which the opposition was based. More specifically, it considered that the evidence submitted by the applicant aimed at proving genuine use of the earlier mark was insufficient, in particular, in so far as none of it showed the mark as registered, with its figurative elements, or contained any information concerning the extent of use and most of the evidence submitted referred to Brazil and Angola.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs and annul all orders for costs made against the applicant during the administrative procedure.
14      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
15      The intervener claims that the Court should:
–        dismiss the action;
–        uphold the contested decision;
–        order the applicant to pay the costs.
Law
16      In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended.
17      The applicant claims that all the documents submitted before the Opposition Division and before the Board of Appeal show genuine use of the SPORTV trade mark in Portugal during the relevant period, that is between 20 February 2004 and 19 February 2009. It also claims that the Board of Appeal did not analyse that evidence in the light of the case-law, but paid attention only to the number of viewers or subscribers, which is tantamount to assessing the applicant’s commercial success.
18      OHIM and the intervener dispute the applicant’s arguments.
19      According to settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 in the preamble to that regulation, and from Rule 22(3) of Regulation No 2868/95 that the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be capable of being relied upon in opposition to a Community trade mark application – failing which there must be a proper economic reason for the lack of genuine use relating to its actual function on the market – is to restrict the number of conflicts that could arise between two marks. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013 in Case T‑355/09 Reber v OHIM – Wedl & Hofmann (Walzer Traum), not published in the ECR, and the case-law cited).
20      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, by analogy, Case C‑40/01 Ansul [2003] ECR I‑2439, paragraph 43). In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraph 39, see also, to that effect and by analogy, Ansul, paragraph 37).
21      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (VITAFRUIT, paragraph 40, see also, by analogy, Ansul, paragraph 43).
22      As to the extent of the use to which the earlier 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 (VITAFRUIT, paragraph 41, and Case T‑334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 35).
23      To examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was low may be offset by a high intensity or some settled period of use of that mark and vice versa (VITAFRUIT, paragraph 42, and HIPOVITON, paragraph 36).
24      The turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (VITAFRUIT, paragraph 42, and HIPOVITON, paragraph 36). Even minimal use can therefore be sufficient to be classified as genuine, provided that it is justified, in the economic sector concerned, to maintain or create a share in the market 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 OHIM or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot be laid down (Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 72).
25      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 (Case T‑39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II‑5233, paragraph 47, and Case T-356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II-3445, paragraph 28).
26      The present plea in law must therefore be examined in the light of those considerations.
27      The Board of Appeal found, at paragraph 24 of the contested decision, that, in the present case, the evidence submitted by the applicant was insufficient to prove genuine use of the earlier mark. It noted, inter alia, that the evidence did not contain information concerning the number of SPORTV programmes among Globosat TV’s Brazilian programmes, their viewers, subscribers and turnover relating to subscription.
28      Since the application for a Community trade mark submitted by the intervener was published on 20 February 2009, the five-year period referred to by Article 42(2) and (3) of Regulation No 207/2009 covers, as the Board of Appeal noted at paragraph 13 of the contested decision, the period from 20 February 2004 to 19 February 2009.
29      It should be noted that it is apparent from the contested decision that the applicant produced, in the course of the administrative procedure, the following documents with a view to proving genuine use of the earlier mark:
–        copies of online and print articles taken from the 24 HORAS website, the magazine todotv and the newspaper Record respectively (Annexes A6, A7 and A12 to the application);
–        two extracts printed from the website www.tvcabo.pt (Annex A8 to the application);
–        a sworn declaration of the applicant’s lawyers (Annex A9 to the application);
–        copies of television programming schedules published in the magazines TV24, Zapping! Tv Cabo, Tele Satélite (Annexes A10, A13 to A16 of the application);
–        a DVD containing four television advertisements (Annex A11 to the application).
30      As regards, first, the copies of the television programming schedules from the Portuguese monthly magazine TV24, dated October 2009, it must be stated, as the Board of Appeal did, that that item of evidence does not relate to the relevant period, since it is subsequent to 19 February 2009. Therefore, it does not have to be taken into account in the assessment of genuine use of the earlier mark.
31      As regards, second, the article taken from the daily online newspaper 24 HORAS, the Board of Appeal correctly found, at paragraphs 17 and 18 of the contested decision, that that item of evidence was not relevant to Portugal, where the genuine use must be shown. As OHIM claims, that article deals with the distribution of television channels in the United States of America and, therefore, cannot be taken into account with a view to establishing genuine use of the earlier mark in Portugal. The same goes for the extract from the magazine todotv, in so far as, as OHIM correctly noted, that article concerns the Brazilian market and nothing indicates that the magazine in which it appeared was published in Portugal.
32      As regards, third, the sworn declaration of the applicant’s lawyers, it must be held that that declaration merely states that the earlier mark was used in Portugal between 2005 and 2009 to identify television services and is not supported by any documentary evidence.
33      In that regard, it must be noted that, according to the case-law, probative value can be attributed to a sworn declaration drawn up for the purposes of Article 78(1)(f) of Regulation No 207/2009 only if that declaration is supported by other evidence (see, to that effect, judgment of 13 June 2012 in Case T‑312/11 Süd-Chemie v OHIM – Byk-Cera (CERATIX), not published in the ECR, paragraph 30 and the case-law cited).
34      However, in the present case the declaration of the applicant’s lawyers, Messrs M. and K., is not supported by other evidence capable of establishing genuine use of the earlier mark in Portugal.
35      That conclusion cannot be challenged by the other evidence submitted by the applicant. Thus, the copies of the television programming schedules published in the Portuguese magazines Zapping! TV Cabo and Tele Satélite show only that the television programmes entitled SporTV News and Arena SporTV were broadcast by satellite. The same applies to the printed extracts taken from the website www.tvcabo.pt. As is apparent from that item of evidence, the channel PFC, produced by Globosat, broadcasts programmes about sport in Brazil, including SporTV, and is available in Portugal via the TVCabo offer. As the Board of Appeal held, that evidence, besides the fact that it does not show the earlier mark as registered in its figurative form, can only show an availability in Portugal of programmes about Brazilian sport referring to SporTV, and, as the Board of Appeal also observed, does not present any information about the interest the Portuguese television market has in Brazilian sport.
36      Similarly, as regards the article from the newspaper Record, it must be noted that the extract produced shows only that, since 27 March 2005, a programme entitled ‘Troca de passes’, produced by SporTV, a Brazilian pay-television channel, and GNT Portugal, is broadcast every Sunday evening. As OHIM held, that information provides no indication relating to turnover, extent of use or number of viewers, but once again merely shows the availability, for the Portuguese public, of a programme coproduced by SporTV.
37      As regards the DVD containing four advertisements, it must be held that those advertisements refer to the earlier mark, both on the television screens and on the presenters’ clothing. However, the only link with the relevant territory, namely Portugal, is the mention of the local time in Lisbon at the end of each advertisement.
38      It must be stated that none of the evidence submitted by the applicant indicates the turnover or mentions the market shares held in Portugal. In addition, it is not possible, from the evidence submitted, to evaluate the commercial volume of the overall use, the frequency of use or the length of the period during which the mark was used, in accordance with the case-law referred to at paragraph 22 above.
39      The applicant alleges that the Board of Appeal paid attention solely to the number of viewers or subscribers but did not take into account the fact that the channel is broadcast in Portugal. Consequently, according to the applicant, by requiring large-scale use and by wanting to assess the commercial success of the undertaking or its economic strategy, the Board of Appeal failed to have regard to the settled case-law.
40      In this respect, it must be found that the applicant’s claims are not well founded. The Board of Appeal, during the assessment of the evidence adduced by the applicant seeking to prove genuine use of the earlier mark, stated that that evidence did not contain information relating to the number of viewers or subscribers or to the turnover concerning the subscriptions to the channel produced by Globosat. However, in doing so, it did not set a de minimis threshold or other quantitative criterion, but merely stated that the evidence adduced by the applicant did not include information which could be considered to be solid and objective evidence of effective and sufficient use of the trade mark on the Portuguese market within the meaning of the case-law referred to at paragraph 25 above. It follows that the Board of Appeal in no way failed to have regard to the case-law relied on by the applicant and referred to at paragraph 24 above.
41      Therefore, the Board of Appeal was correct to find that the applicant had not proved genuine use of the earlier mark to the requisite legal standard.
42      It follows that the present plea in law must be rejected, as must the action in its entirety.
Costs
43      Under Article 87(2) 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.
44      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Globosat Programadora Ltda to pay the costs.
Czúcz
Labucka
Gratsias
Delivered in open court in Luxembourg on 12 March 2014.
[Signatures]
* Language of the case: English.