The Sunrider Corp. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2006-05-11
19. After referring, in paragraphs 36 to 42 of the judgment under appeal, to the case-law of the Court of Justice (Case C‑40/01 Ansul  [2003] ECR I‑2439) and to its own case-law and having examined, in paragraphs 43 to 53 of the same judgment, the evidence adduced by the opposing party, the Court of First Instance, in paragraph 54 of that judgment, concluded its analysis as follows:
‘It follows that the other party to the proceedings before the Board of Appeal furnished proof that sales were made, with its consent, to a Spanish customer during the period from May 1996 to May 1997 of around 300 [cases] of 12 items each of concentrated juices of various fruits, representing sales of approximately EUR 4 800. Although the scale of the use to which the earlier trade mark was put is limited and although it might be preferable to have more evidence relating to the nature of the use during the relevant period, the facts and evidence put forward by the other party to the proceedings are sufficient for a finding of genuine use. Consequently, OHIM was right to find, in the contested decision, that the earlier trade mark was put to genuine use in respect of some of the products for which it was registered, namely for fruit juices.’
38. By the second part of the first ground of appeal, the appellant alleges that the Court of First Instance committed an error of law by failing to consider, in the course of the examination of the first part of the first plea at first instance, whether, at the time it gave its ruling, it could lawfully adopt a new decision with the same operative part as the contested decision, as required by its own case-law (Case T‑308/01 Henkel  v OHIM – LHS (UK) (KLEENCARE)  [2003] ECR II‑3253, paragraph 29).
49. In addition, under Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on a point of law only. The Court of First Instance thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts and evidence are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C‑37/03 P BioID  v OHIM  [2005] ECR I-7975, paragraph 43 and case-law cited).
54. Under Article 63 of Regulation No 40/94, the Court of First Instance may annul or alter a decision of an OHIM Board of Appeal only ‘on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of Regulation [No 40/94] or of any rule of law relating to [its] application or misuse of power’.
55. It follows that the Court of First Instance may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of those grounds for annulment or alteration. The Court of First Instance may not, however, annul or alter that decision on grounds which come into existence subsequent to its adoption.
69. In those circumstances, the first part of the second ground of appeal, alleging that the labels produced by the opposing party cannot in themselves prove use of the earlier trade mark during the relevant period nor support the other evidence, is not such as to justify setting aside the judgment under appeal and must therefore be rejected as ineffective.
70. Second, as is apparent from the case-law of the Court of Justice, 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 the commercial exploitation of the mark in the course of trade 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 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 (see, regarding Article 10(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), a provision which is identical to Article 15(1) of Regulation No 40/94, Ansul , paragraph 43, and order in La Mer Technology , paragraph 27).
71. The question whether use is sufficient to maintain or create market share for the goods or services protected by the mark thus depends on several factors and on a case-by-case assessment. The characteristics of those goods and services, the frequency or regularity of the use of the trade mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, or evidence of use which the proprietor is able to provide, are among the factors which may be taken into account (see, to that effect, order in La Mer Technology , paragraph 22).
72. 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. A de minimis rule, which would not allow OHIM or, on appeal, the Court of First Instance, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (see, to that effect, order in La Mer Technology , paragraph 25). Thus, when it serves a real commercial purpose, in the circumstances referred to in paragraph 70 of this judgment, even minimal use of the trade mark can be sufficient to establish genuine use (order in La Mer Technology , paragraph 27).
76. Third, contrary to the appellant’s assertions, the fact that in the present case the proof of use of the earlier trade mark was established only for the sale of products intended for a single customer does not a priori preclude the use being genuine (see, to that effect, order in La Mer Technology , paragraph 24), even though it follows from that situation that the mark was not present in a substantial part of the territory of Spain, in which it is protected. As OHIM has maintained, the territorial scope of the use is only one of several factors to be taken into account in the determination of whether it is genuine or not.
77. Lastly and fourthly, regarding the appellant’s argument that a judgment delivered by the Bundesgerichtshof in a case concerning a trade mark other than the trade mark VITAFRUT, it is clear from the case-law referred to in paragraphs 70 to 72 of this judgment that, when assessing whether use of the mark is genuine, regard must be had to all the circumstances of the case and 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. It follows that courts ruling in two different cases may assess differently the genuine nature of the use alleged before them, even when instances of that use may have generated comparable sales volumes.
85. As the Court of First Instance rightly held, in paragraph 65 of the judgment under appeal, in order to assess the similarity of the products or services concerned, all the relevant features of the relationship between those products or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see, regarding Article 4(1)(b) of Directive 89/104, a provision which is substantively identical to Article 8(1)(b) of Regulation No 40/94, Case C-39/97 Canon  [1998] ECR I-5507, paragraph 23).
88. In complaining that the Court of First Instance did not hold that the differences between the goods in question were more important than the one characteristic they shared, namely that they are aimed at the same potential end-consumers, the appellant is, in reality, asking the Court of Justice to substitute its own assessment of the facts for that of the Court of First Instance, contained in paragraphs 66 and 67 of the judgment under appeal (see, by analogy, regarding the assessment of the similarities between two trade marks, Case C‑361/04 P Ruiz-Picasso and Others  v OHIM  [2006] ECR I-0000, paragraph 23, and Case C‑206/04 P Muelhens  v OHIM  [2006] ECR I-0000, paragraph 41). Unless there has been distortion, which has not been alleged here, such an argument is not a point of law which is subject, as such, to review by the Court of Justice, for the reasons given in paragraph 49 of this judgment.