Case T-108/08

Zino Davidoff SA

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for Community word mark GOOD LIFE – Earlier national word mark GOOD LIFE – Genuine use of the earlier mark – Duty of diligence – Article 74(1) of Regulation (EC) No 40/94 (now Article 76(1) of Regulation (EC) No 207/2009)

Summary of the Judgment

Community trade mark – Procedural provisions – Examination of the facts of the Office’s own motion – Duty of diligence – Genuine use of the earlier mark

(Council Regulation No 40/94, Art. 74(1))

Article 74(1) of Regulation No 40/94 on the Community trade mark is statement of the duty of diligence, under which the relevant institution is required to examine carefully and impartially all the relevant factual and legal aspects of the case in question.

Similarly, in the context of the assessment of whether sufficient evidence of genuine use of an earlier mark has been adduced, it falls to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and its Boards of Appeal to examine, carefully and impartially, all the evidence submitted by the parties to the dispute.

(see paras 19-20)

JUDGMENT OF THE GENERAL COURT (First Chamber)

15 July 2011 ( )

(Community trade mark – Opposition proceedings – Application for Community word mark GOOD LIFE – Earlier national word mark GOOD LIFE – Genuine use of the earlier mark – Duty of diligence – Article 74(1) of Regulation (EC) No 40/94 (now Article 76(1) of Regulation (EC) No 207/2009)

In Case T‑108/08,

Zino Davidoff SA, established in Fribourg (Switzerland), represented by H. Kunz-Hallstein and R. Kunz-Hallstein, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by R. Pethke and J. Laporta Insa, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

I. Kleinakis kai SIA OE, established in Athens (Greece), represented by K. Siotou, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 30 November 2007 (Case R 298/2007-2), relating to opposition proceedings between I. Kleinakis kai SIA OE and Zino Davidoff SA,

THE GENERAL COURT (First Chamber),

composed of J. Azizi (Rapporteur), President, E. Cremona and S. Frimodt Nielsen, Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Registry of the Court on 27 February 2008,

having regard to the response of OHIM lodged at the Registry of the Court on 10 June 2008,

having regard to the response of the intervener lodged at the Registry of the Court on 30 May 2008,

having regard to the reply lodged at the Registry of the Court on 12 November 2008,

having regard to the rejoinder of OHIM lodged at the Registry of the Court on 15 January 2009,

further to the hearing on 2 March 2011,

gives the following

Judgment

Background to the dispute

1 On 14 June 2000 the applicant, Zino Davidoff 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 Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The mark for which registration was sought is the word sign GOOD LIFE.

3 The goods in respect of which registration was sought are in Class 3 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.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 27/2001 of 26 March 2001.

5 On 15 June 2001 the intervener, I. Kleinakis kai SIA OE, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for, on the ground of likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

6 The opposition was based on the earlier Greek word mark GOOD LIFE, registered under No 102703 and covering goods in Classes 3 and 5, corresponding to the following description: ‘perfumery, cosmetics and namely fragrant and air freshening preparations’.

7 On 3 June 2005 the applicant requested proof of genuine use in Greece of the earlier trade mark.

8 On 3 October 2005, in order to prove genuine use of the earlier trade mark in Greece, the intervener submitted the following documents:

– the application for cancellation of the earlier trade mark filed by the applicant, based on the non-use of the mark, together with Decision No 2910/2002 of 8 April 2002 of the Greek Administrative Trade Marks Committee (‘the Greek decision’) rejecting that application for cancellation;

– 10 invoices dated between 17 May 2000 and 27 September 2005;

– 17 photocopies of photos showing the interior and exterior of retail outlets, allegedly clients of the intervener;

– scanned photos of three products bearing the GOOD LIFE trade mark.

9 On 20 December 2006 the Opposition Division rejected the opposition in its entirety. Genuine use of the earlier mark had not been proved. The documents on which the Greek decision was based were neither specified nor produced. Further, only two of the documents produced as proof of genuine use, it was stated, relate to the reference period, and the volume of sales is not sufficient for a finding of genuine use of the mark.

10 On 16 February 2007 the intervener filed a notice of appeal with OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Opposition Division.

11 By decision of 30 November 2007 (‘the contested decision’), the Second Board of Appeal of OHIM allowed the appeal, annulled the decision of the Opposition Division and remitted the case to it for further prosecution. According to the Board of Appeal, the Greek decision finding that there was genuine use of the earlier mark in Greece is ‘very relevant for the case at hand’ (paragraphs 19 and 20 of the contested decision). Moreover, two invoices and a photocopy of the photo of a retail outlet had been provided in support of the proof of genuine use. The invoices of 17 May 2000 and 8 January 2001 show the sale of 19 287 and 782 items respectively bearing the earlier mark (paragraph 22 of the contested decision). While there is not much evidence, it is sufficient to show that the earlier mark was put to genuine use in Greece (paragraph 24 of the contested decision). Although none of the evidence on its own might be sufficient to prove genuine use of that mark, the evidence provided by the intervener as a whole, especially taking into account the relevance of the Greek decision, is sufficient for a finding that the earlier mark was put to genuine use in accordance with Article 43(3) of Regulation No 40/94 (now Article 42(3) of Regulation No 207/2009), in relation to the goods for which it was registered (paragraph 26 of the contested decision).

Forms of order sought

12 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM or the intervener to pay the costs.

13 OHIM contends that the Court should:

– declare the second and fourth pleas inadmissible;

– dismiss the remainder of the application;

– order the applicant to pay the costs.

14 The intervener contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

15 The applicant puts forward five pleas in law in support of its action, namely, first, the plea alleging breach of the principle of legality by taking the Greek decision into account, second, the plea alleging breach of Article 43(2) of Regulation No 40/94 (now Article 42(2) of Regulation No 207/2009) and an erroneous finding of fact, third, the plea alleging breach of Rule 22(2) and (3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), fourth, the plea alleging breach of Article 74(1) of Regulation No 40/94 (now Article 76(1) of Regulation No 207/2009) and an erroneous finding of fact and, fifth, the plea alleging breach of Article 73, second sentence, of Regulation No 40/94 (now Article 75, second sentence, of Regulation No 207/2009).

16 In the contested decision, the Board of Appeal held that there had been genuine use of the earlier mark, on the basis of the Greek decision and the invoices of 17 May 2000 and 8 January 2001.

17 The applicant claims that the Board of Appeal thus acted in breach of the principle of legality, Article 43(2) and Articles 73 and 74 of Regulation No 40/94, and Rule 22(2) and (3) of Regulation No 2868/95.

18 OHIM and the intervener submit that the Board of Appeal correctly held that there had been genuine use of the earlier mark. The evidence submitted is sufficient for a finding that the earlier mark had been put to genuine use in Greece during the reference period. The invoice of 17 May 2000 concerns 19 287 items and the invoice of 8 January 2001 concerns 782. However, in the rejoinder, OHIM concedes the incorrect translation and therefore misinterpretation by the Board of Appeal of those invoices, which indicate a smaller number of items sold than initially found by the Opposition Division and repeated by the Board of Appeal. OHIM contends that those invoices are however negligible in the overall assessment of the evidence of genuine use, of which the principal evidence is the Greek decision that led the Board of Appeal to find that there had been genuine use of the earlier mark.

19 Article 74(1) of Regulation No 40/94 provides that ‘[OHIM] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [OHIM] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought’. That provision is a statement of the duty of diligence, under which the relevant institution is required to examine carefully and impartially all the relevant factual and legal aspects of the case in question (see, to that effect, Case C‑269/90 Technische Universität München [1991] ECR I‑5469, paragraph 14; Case C‑405/07 P Netherlands v Commission [2008] ECR I‑8301, paragraph 56; Case T‑167/94 Nölle v Council and Commission [1995] ECR II‑2589, paragraph 73, and order in Case T‑369/03 Arizona Chemical and Others v Commission [2005] ECR II‑5839, paragraph 85).

20 Similarly, in the context of the assessment of whether sufficient evidence of genuine use of an earlier mark has been adduced, it falls to OHIM and its Boards of Appeal to examine, carefully and impartially, all the evidence submitted by the parties to the dispute.

21 In the present case, the Board of Appeal based the contested decision on the Greek decision on the ground that it is ‘relevant for the case at hand’ as well as on the invoices of 17 May 2000 and of 8 January 2001. The Board of Appeal considered that, although none of that evidence on its own might be sufficient to prove genuine use of the earlier mark, the evidence as a whole is sufficient for that purpose (paragraph 26 of the contested decision).

22 In that regard, firstly, it must be noted that, in the contested decision, the Board of Appeal merely stated that it ‘is of the opinion that the [Greek] decision … is, in fact, very relevant for the case at hand’, while admitting that the Greek decision does not contain any indication of the nature of the evidence submitted during the administrative procedure preceding the adoption of that decision.

23 However, where OHIM, including its Boards of Appeal, decides to base its decision on a national decision as a piece of evidence, which is, in principle, permissible (see, to that effect, Case T‑122/99 Procter & Gamble v OHIM (Soap bar shape) [2000] ECR II‑265, paragraph 61, and Case T‑337/99 Henkel v OHIM (Round red and white tablet) [2001] ECR II‑2597, paragraph 58), it must, in accordance with the principles set out at paragraphs 19 and 20 above, examine with all the required care and in a diligent manner whether that piece of evidence is such as to show the genuine use of an earlier mark.

24 In this case, a diligent examination of the Greek decision would have revealed that it only briefly refers to the documents submitted and the arguments raised by the parties during the procedure that led to its adoption. Furthermore, those documents were not put in the file before OHIM and were therefore not available to the Board of Appeal. Indeed, the evidence submitted by the intervener during the proceedings before OHIM did not contain any document from the file of the proceedings before the Greek authority. In those circumstances, the Board of Appeal was not in a position to understand the reasoning, including the assessment of the evidence, or to identify the evidence on which the Greek decision finding a genuine use of the earlier mark was based.

25 The Board of Appeal could not adopt the conclusion of the Greek authorities, as evidence of genuine use of the earlier mark, without further examining whether the Greek decision was based on conclusive evidence, since such evidence must be produced by the intervener. Consequently, the Board of Appeal acted in breach of Article 74(1) of Regulation No 40/94 and the duty of diligence, insofar as it acknowledged the probative value of the Greek decision for the purposes of proof of genuine use of the earlier trade mark, despite the lack of conclusive evidence.

26 Secondly, it must be examined whether the Board of Appeal could nonetheless legitimately find that there was proof of genuine use of the earlier mark by basing its decision, in particular, on the invoices of 17 May 2000 and 8 January 2001. In that regard, it must be noted that, by reason of an incorrect translation and interpretation, the Board of Appeal wrongly inferred that they established the sale of 19 287 and 782 items respectively. As was indicated by the applicant and admitted by OHIM during these proceedings, the column translated as indicating ‘quantity’ in fact corresponds to ‘price per item’ in Greek drachmas. As was acknowledged by OHIM, the Board of Appeal thus based its decision, by reason of a lack of diligence in translation, on incorrect figures in the contested decision.

27 Thus, it is clear from a correct translation of the invoice of 17 May 2000 that, instead of 19 287 essential oils, creams and perfumed soaps invoiced, only 30 essential oils, one cream and nine soaps, that is 40 items in total, were sold. In respect of the invoice of 8 January 2001, it is clear from a correct translation that only 45 soaps bearing the earlier mark were sold. By contrast, as was acknowledged by OHIM during these proceedings, the 1 500 perfumed sachets mentioned in that invoice do not bear the earlier mark and are therefore not capable of amounting to evidence of its use. Thus, the number of articles sold is considerably smaller than that found by the Board of Appeal in the contested decision. Consequently, the Board of Appeal made an error which was not negligible in its assessment of the invoices of 17 May 2000 and 8 January 2001.

28 Given that the Greek decision was only of limited probative value, the correct evaluation of the data on the invoices was decisive in assessing the genuine use of the earlier mark. However, as the assessment of those two invoices was based on a mistranslation, it follows that the entire contested decision is vitiated by an error of assessment of the facts resulting from a lack of diligence. Consequently, during the administrative procedure that resulted in the adoption of the contested decision, the Board of Appeal acted in breach of Article 74(1) of Regulation No 40/94 and the duty of diligence by failing to examine carefully and impartially all the relevant evidence in this case. It cannot be ruled out that, if that evidence had been correctly examined, the Board of Appeal might, depending on the circumstances, have reached a different finding as regards proof of genuine use of the earlier mark.

29 Consequently, this procedural error is such as to lead to the annulment of the contested decision. The plea alleging breach of Article 74 of Regulation No 40/94 must be accepted.

30 Therefore, the contested decision must be annulled and it is not necessary to examine the other pleas.

Costs

31 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. Since OHIM has been unsuccessful, it must be ordered to pay, in addition to its own costs, the costs incurred by the applicant, in accordance with the form of order sought by the latter.

32 Under the third subparagraph of Article 87(4) of the Rules of Procedure, the intervener will bear its own costs.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 30 November 2007 (Case R 298/2007-2);

2. Orders OHIM to bear its own costs and to pay those incurred by Zino Davidoff SA;

3. Orders I. Kleinakis kai SIA OE to bear its own costs.

Azizi Cremona Frimodt Nielsen

Delivered in open court in Luxembourg on 15 July 2011.

[Signatures]