EN Official Journal of the European Union C 294/19

Appeal brought on 28 May 2015 by Naazneen Investments Ltd against the judgment of the General Court (Seventh Chamber) delivered on 18 March 2015 in Case T-250/13: Naazneen Investments Limited v Office for Harmonisation in the Internal Market (OHIM)

(Case C-252/15 P)

(2015/C 294/25)

Language of the case: English

Parties

Appellant: Naazneen Investments Ltd (represented by: P. Goldenbaum, Rechtsanwältin, I. Rohr, Rechtsanwältin)

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs), Energy Brands, Inc.

Form of order sought

The appellant claims that the Court should

— Set aside the judgment of the General Court of 18 March 2015 in Case T-250/13,

— Annul the decision of the Board of Appeal in Case R-1101/2011-2, alternatively, remit the case back to the Court, if necessary and

— Order OHIM to pay its own costs and those of the appellant before the Court of Justice, the General Court and the Board of Appeal and,

— Should Energy Brands, Inc. intervene in the proceedings, order Energy Brands, Inc. to pay its own costs.

Pleas in law and main arguments

The appellant claims that the General Court misinterpreted the scope of Article 75 and Article 51(1)(a) of Regulation No. 207/2009 (1), did not carry out a correct and complete overall assessment of all evidence provided and all relevant circumstances of the case — or wrongly denied the failure of the Board of Appeal to do so — and did not sufficiently take into account, or misapplied, the principles of the case-law. Also, there is a distortion of facts with respect to several of its findings.

I. Infringement of Article 75 of Regulation No. 207/2009

The General Court erred in law with its finding that the Board of Appeal had given adequate reasons for its decision. In particular, it did not consider that the Board of Appeal had completely ignored pages 6-22 of the Grounds of Appeal and that it had failed to take into consideration all evidence provided and to provide any own arguments for its finding. In the context of proper reasons for non-use, the General Court erred in procedure, because it based its finding on the new aspect of the applicant’s licensee’s alleged obligations to control and supervise the manufacture of the products.

II. Infringement of Article 51 paragraph 1a of Regulation No. 207/2009

1. Genuine use

The General Court

— Wrongly found that the Board of Appeal had taken into account the affidavits provided, although it had not dealt with the probative value of these affidavits at all,

— Based its finding on wrong facts when it confirmed a very limited economic significance of an order of 12 pallets of bottles in order to carry out ‘test sales’,

— Wrongly established and applied a rule that a market of significant size — such as that for beverages as products for mass consumption — automatically resulted in higher requirements for extent of use,

— Did not observe the principle that there is no continuous use requirement,

— Erred in law when it found that the reasons why the mark had not been used more extensively and throughout the relevant period only had to be examined in the assessment of the reasons for non-use of that mark,

— Did not take into account the difference between ‘non-use’ cases and ‘limited extent of use cases’,

— Wrongly established a principle that when the Board of Appeal assesses the genuine use of a trademark, it only had to take into account the evidence of the existence of such use and not evidence explaining non-use of that mark,

— Wrongly established a rule that in the context of advertising and other promotional activities, only big campaigns could be relevant,

— Wrongly denied the relevance of printouts from the proprietor’s website and failed to take into account the appellant’s explanations and evidence provided in that regards,

— Showed a wrong understanding of the term ‘token’.

In the context of examining the relevance of a modest commercial volume in (re-)launch phases, the General Court

— Made a calculation error,

— Failed to take into account the defectiveness of the products and the revocation proceedings initiated by a third party as a plausible reason and

— Erred in law with respect to the required quality of reasons for limited extent of use. In the context of genuine use, the reasons for not using the mark to a larger extent do not have to fulfil the requirement of justified reasons for non-use, but it must be sufficient that they make it plausible why the extent has not been larger.

2. Justifiable reasons for non-use

2.1 Problems concerning the manufacturing of ‘SMART WATER’ beverages

The General Court

— Based its finding on a distortion of facts, because there actually had not been any neglect of obligations to control and supervise the manufacture of the products,

— Showed a wrong understanding to the criteria ‘independently of the will of the trademark proprietor’ and ‘obstacle’ according to Article 19 (1) of the TRIPS Agreement, in particular by not asking whether it would have been unreasonable to produce and market new products but whether it had been impossible,

— Failed to see that the appellant had provided detailed explanations as to why it had not been possible to easily and quickly continue with the producing and delivering, which neither the Board of appeal nor the General Court itself have taken into consideration.

2.2 Revocation proceedings brought by a third party

The General Court

— Failed to see that revocation proceedings are clearly independent of the will of a trademark proprietor,

— Applied an incorrect standard when it based its finding on the statement that the revocation proceedings did not prevent the proprietor from using the mark,

— Established a wrong criterion of ‘direct consequences’: The General Court conceded that, if such revocation proceedings led to the revocation of the mark, an action for damages might be instituted. However, it denied a proper reason for non-use because this was not a ‘direct consequence’ of the revocation proceedings: The findings of the General Court in that regard are contrary to the ratio legis of the requirement of genuine use. The succinct statement that it was up to the proprietor to assess and calculate the risks and either use the mark despite the uncertainty of becoming liable for damages or back down and abstain from using the mark would clearly discriminate small and medium-sized enterprises. This would also open up for an easy possibility of abuse the tool of revocation proceedings by third parties interested in a registered mark.

(1) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, OJ L 78, p. 1.