Thus, a Board is not obliged to follow faithfully the considerations and conclusions set out in a Cancellation Division’s decision. If that were not so, the effectiveness of the separate legal remedies of opposition to the registration of a Community trade mark, on the one hand, and revocation proceedings and proceedings for a declaration of invalidity in respect of a registered Community trade mark, on the other, would be undermined, even though it is possible, under Regulation No 207/2009, to bring such proceedings in turn or in parallel. That assessment is confirmed by the fact that, under Article 42(2) and Article 57(2) of Regulation No 207/2009, the five-year periods in respect of which genuine use of a Community trade mark is required may be different depending on the date of filing of the application for revocation or for a declaration of invalidity or of the publication of the application for registration.

The principle of res judicata, which prohibits a final judicial decision being called into question, is not applicable so far as concerns the relationship between a final decision in opposition proceedings and an application for a declaration of invalidity, given, inter alia, first, that proceedings before the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) are administrative and not judicial and, second, that the relevant provisions of Regulation No 207/2009, namely Article 53(4) and Article 100(2), lay down no rule to that effect. That also applies in the converse situation concerning the relationship between proceedings leading to a final decision on revocation or on an application for a declaration of invalidity and opposition proceedings. The fact remains that the findings made in a final decision on revocation or invalidity cannot be entirely ignored by OHIM in the context of a decision in opposition proceedings between the same parties, relating to the same subject-matter and based on the same grounds, provided that those findings or decided issues are not affected by new facts, new evidence or new grounds. That assertion is no more than a specific expression of the case-law according to which the previous decisions of OHIM are a factor which may be taken into consideration in assessing whether a sign is suitable for registration.

According to settled 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. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether there is real commercial exploitation of the mark in the course of trade, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating market share for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark. However, 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 the use must also be genuine, in accordance with the wording of Article 42(2) of Regulation No 207/2009. Moreover, whether a mark is deemed to have been put to ‘genuine use’ will depend on the characteristics of the goods or service concerned on the corresponding market. Not all proven commercial exploitation can therefore automatically be deemed genuine use of the mark in question.

As regards the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use, on the one hand, and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other. Furthermore, in examining whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors specific to the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by a high intensity or a certain consistency over time of the use of that trade mark or vice versa. Lastly, 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 actual and sufficient use of the trade mark on the market concerned.

As regards the duration of use, the Court has held that only trade marks genuine use of which has been suspended during an uninterrupted period of five years are subject to the sanctions provided for in Article 15(1) of Regulation No 207/2009. Accordingly, it is sufficient that a trade mark has been put to genuine use during a part of that period for it not to be subject to the sanctions. Similarly, Rule 22(3) of Regulation No 2868/95 lays down the criterion of ‘time’ of use without requiring that continuous use be demonstrated during the five-year period, and distinguishes it from, inter alia, the criteria of the extent and nature of use, which, taken together only, demonstrate genuine use of the earlier trade mark. It is only by taking into consideration all the evidence submitted to the Board of Appeal for assessment that proof of genuine use of the mark at issue can be established.

Accordingly, the provision for a five-year period in Article 42(2) and Article 15(1) of Regulation No 207/2009 does not mean that proof of genuine use of the earlier trade mark has to be provided for each of the years covered by that period separately, rather it is sufficient to demonstrate that, taking account of all the relevant factors specific to the particular case, for at least part of that period, that trade mark was used not merely in a token manner, but was actually used and used in order to create or preserve an outlet for the goods or services in question. In particular, if this were not so, in a situation such as that in the present case, the occurrence of even only a temporary financial crisis preventing the use of the earlier trade mark for a limited period, even though its proprietor envisages continuing to use that mark in the near future, might be sufficient to preclude him opposing the registration of a similar trade mark.

(see paras 44, 46, 52, 53)