Nanu -Nana Joachim Hoepp v OHMI - Vincci Hoteles (NAMMU) (Judgment) [2014] EUECJ T-498/13 (11 December 2014)

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(Community trade mark — Invalidity proceedings — Community word mark NAMMU — Relative ground for refusal — Proof of genuine use of the earlier mark — Article 57(2) and (3) of Regulation (EC) No 207/2009 and Rule 22(2) to (4) of Regulation (EC) No 2868/95)

Nanu-Nana Joachim Hoepp GmbH & Co. KG, established in Bremen (Germany), represented by A. Nordemann, lawyer, T. Boddien, and M. Maier, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

ACTION brought against the decision of the First Board of Appeal of OHIM of 27 June 2013 (Case R 611/2012-1) concerning invalidity proceedings between Nanu-Nana Joachim Hoepp GmbH & Co. KG and Vincci Hoteles SA,

composed of D. Gratsias (Rapporteur), President, M. Kancheva and C. Wetter, Judges,

having regard to the application lodged at the Court Registry on 16 September 2013,

1 On 3 August 2006, Vincci Hoteles SA filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

3 The goods and services in respect of which registration was sought are in, inter alia, Classes 3 and 44 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, inter alia, for each of those classes, to the following descriptions:

– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;

– Class 44: ‘Hygienic and beauty care for human beings or animals; beauty salons, physiotherapy, massage and manicure’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 52/2006 of 25 December 2006.

5 On 5 July 2007, the sign was registered as a Community trade mark under No 5238704.

6 On 10 March 2011, the applicant, Nanu-Nana Joachim Hoepp GmbH & Co. KG, applied to OHIM for a declaration that the trade mark in question was invalid in so far as it designated the goods and services listed in paragraph 3 above.

7 In support of that application for a declaration of invalidity, the applicant relied on the earlier German word mark NANU, registered on 19 August 1997 under No 39 647 710. That mark designates, inter alia, goods in Class 3, including ‘preparations for beauty care and personal hygiene’ and ‘essential oils and perfume oils’. The application for a declaration of invalidity was based on those two categories of goods (‘the goods relied on in support of the application for a declaration of invalidity’).

8 The proprietor of the contested Community trade mark requested that the applicant furnish proof of genuine use of that earlier trade mark, in accordance with Article 57(2) and (3) of Regulation No 207/2009.

9 By decision of 25 January 2012, the Cancellation Division rejected the application for a declaration of invalidity on the ground that genuine use of the earlier trade mark had not been proved.

10 On 26 March 2012, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

11 By decision of 27 June 2013 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. It held that the evidence of use of the earlier trade mark was insufficient.

12 In support of that conclusion, the Board of Appeal held that the request for proof of genuine use was admissible, so that the applicant was required to furnish proof of such use during the five-year period preceding the date the application for a declaration of invalidity was filed, that is, from 10 March 2006 to 9 March 2011, and during the five-year period preceding the date the application for the trade mark in question was published, that is, from 25 December 2001 to 24 December 2006. According to the Board of Appeal, the genuine use in question had to have taken place in Germany in so far as concerns the goods covered by the trade mark relied on in support of the application for a declaration of invalidity.

13 In the present case, various documents were submitted in order to show genuine use of the earlier trade mark. However, according to the Board of Appeal, they were not sufficient.

14 First, the affidavits submitted by the applicant set out only global turnovers in relation to sales of goods in Class 3, without any further detail; accordingly, the Board of Appeal held that it could not be excluded, from a reading of those affidavits, that goods in Class 3 other than those relied on in support of the application for a declaration of invalidity may have contributed to generating the global turnovers to which the affidavits made reference. In those circumstances, according to the Board of Appeal, it was impossible to draw any safe conclusions as to the time and extent of use of the earlier trade mark in connection with the goods relied on in support of the application for a declaration of invalidity.

15 Next, the Board of Appeal found that the photographs submitted were, in themselves, ‘inconclusive’ and did not show that the goods relied on in support of the application for a declaration of invalidity were marketed in Germany during the relevant period. In other words, the place of use was not established either.

16 Lastly, the Board of Appeal stated that it was not convinced by the applicant’s argument that it had been unable to submit other documents, such as, for example, invoices or catalogues.

19 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 57(2) and (3) of Regulation No 207/2009. It claims that, contrary to what the Board of Appeal held, the earlier trade mark was put to genuine use in Germany in connection with the goods relied on in support of the application for a declaration of invalidity.

20 It is apparent from recital 10 in the preamble to Regulation No 207/2009 that the EU legislature considered that there is no justification for protecting an earlier trade mark, except where it is actually used. In accordance with that objective, Article 57(2) and (3) of Regulation No 207/2009 provides that the proprietor of a Community trade mark may request proof that the earlier trade mark has been put to genuine use, in the territory in which it is protected, during the five years preceding the date of the application for a declaration of invalidity. Furthermore, if, at the date on which the Community trade mark application was published, the earlier trade mark had been registered for not less than five years, the proprietor of the earlier trade mark is to furnish proof that the earlier trade mark was put to genuine use in that territory during the five years preceding that publication.

21 In addition, under Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 207/2009 (OJ 1995 L 303, p. 1), which is applicable mutatis mutandis in invalidity proceedings in accordance with Rule 40(6) of the same regulation, proof of use must relate to the place, time, extent and nature of use of the earlier trade mark and is, in principle, confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009.

22 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 (judgments of 19 December 2012 in Leno Merken, C‑149/11, ECR, EU:C:2012:816, paragraph 29, and 16 January 2014 in Optilingua v OHIM — Esposito (ALPHATRAD), T‑538/12, EU:T:2014:9, paragraph 27).

23 In order to determine whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes account of all the relevant factors in 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 not high may be offset by the fact that such use was extensive or very regular, and vice versa (see, judgment in ALPHATRAD, paragraph 22 above, EU:T:2014:9, paragraph 29 and the case-law cited).

24 It is in the light of those observations that the arguments advanced by the applicant in support of its single plea in law must be examined.

25 The applicant claims that proof of genuine use of a trade mark may be furnished by any means, including, as is apparent from Article 78(1)(f) of Regulation No 207/2009, with the help of affidavits, which constitute ‘solid and objective’ evidence.

26 It argues that, in the present case, it is apparent, as a matter of fact, from an affidavit (‘the first affidavit’) made on 18 September 2011 by the inhouse lawyer of Nanu-Nana Einkaufs- und Verwaltungsgesellschaft mbH, a company belonging to the same group as itself and to which the applicant had granted a licence (‘the licensee company’), that the earlier trade mark had been used continuously since its registration in 1997. It claims, in addition, that that same affidavit, as well as the affidavit drawn up on 24 May 2012 by the Head of the Import Department and Quality Manager of the licensee company (‘the second affidavit’) state that the earlier trade mark has been used in Germany in more than 250 shops operated by that company. The applicant states further that the nature of the use of the trade mark was demonstrated by photographs of the goods. Lastly, it stated that the extent of use had also been proved. The applicant submits that the nature of the ‘concrete goods’ bearing that trade mark, the quantity of goods sold under that trade mark from 2001 to 2011 and the turnover corresponding to those sales have been specified.

27 The applicant adds that identifying the goods to which the earlier trade mark was affixed is of little importance. According to the applicant, in order to determine whether that trade mark has been put to genuine use, it is necessary to ascertain only whether it has been used to designate the goods relied on in support of the application for a declaration of invalidity. In the applicant’s opinion, the two affidavits submitted before the bodies of OHIM establish such use, since they state that the earlier trade mark was constantly used for such goods, and in the manner shown in the photographs that were attached to those affidavits.

28 The applicant continues by arguing that it did not submit invoices in order to show genuine use of the earlier trade mark because of the particular manner in which its goods are purchased and distributed, that is, that at the point of sale, only a sales-slip is issued, which does not specify the trade mark of the goods, and that at the point of purchase from suppliers, the trade mark is not specified either. Therefore, the invoices that it could have submitted would not have set out the earlier trade mark and would have been incapable of proving genuine use. Similarly, the applicant states that it was unable to submit advertisements relating to its goods bearing the earlier trade mark because it does not advertise ‘concrete’ goods sold by it, these being low-priced goods.

29 In this connection, the applicant relies on the judgment of 16 December 2008 in Deichmann-Schuhe v OHIM — Design for Woman (DEITECH) (T‑86/07, EU:T:2008:577; ‘the judgment in DEITECH’), which was delivered in a Community trade mark case concerning opposition proceedings, in which the applicant in that case, the proprietor of the contested earlier trade marks, also claimed that it was impossible to submit invoices with a view to proving genuine use of those trade marks. The applicant cites, in particular, paragraphs 61 and 62 of that judgment, in which the Court held that, in the light of the particular circumstances of the case as a whole, the affidavits provided by the applicant in that case were to be regarded as appropriate and sufficient evidence of use of the contested earlier trade marks and that, taking account of the particular method of distribution of its products, a different conclusion would lead to denying any evidential value whatsoever to those affidavits.

30 In those circumstances, the applicant claims that not to recognise as being sufficient evidence of use of the earlier trade mark the two affidavits submitted before the bodies of OHIM and the photographs that accompanied them would amount to denying them any evidential value whatsoever, which would be contrary to Article 78(1)(f) of Regulation No 207/2009.

31 The applicant acknowledges that if affidavits contain, inter alia, irregularities or inconsistencies or are unclear, they may not be regarded as sufficient evidence of genuine use of a trade mark. On the other hand, according to the applicant, where an affidavit does not contain such defects, it is capable of sufficing on its own. The applicant claims that that is the case here. There is no objective reason, according to the applicant, to doubt the veracity of the particulars contained in the affidavits it submitted before the bodies of OHIM, particularly since the Board of Appeal did not take the view that the earlier trade mark had been used in a manner other than that set out in those affidavits. The applicant claims, lastly, that the correctness of the affidavits it submitted may not be called in question solely on the ground that they are from employees of a company belonging to its group.

32 Nevertheless, the applicant has attached to its application a new affidavit, dated 2 September 2013, made by the Head of the Import Department and Quality Manager of the licensee company (‘the third affidavit’). That third affidavit, in the applicant’s own words, ‘confirms’ the two previous affidavits and further specifies, with the help of data in table form compiled on 31 August 2011 from the computerised merchandise management system of the applicant’s licensee company, the products, quantities and sales value of goods in Class 3 that were distributed by the applicant’s licensee company from 2001 to 2011. Furthermore, the applicant states that even though the third affidavit was submitted only before the Court, it is admissible on the very ground that it is merely ‘further concretisation’ of the previous affidavits.

34 Having regard to those arguments, it should be observed that, in order to conclude that it had not been established that the earlier trade mark had been put to genuine use during the two periods referred to in Article 57 of Regulation No 207/2009, that is to say, during the five years preceding the date of the application for a declaration of invalidity and the five years preceding the date of publication of the application for the trade mark in question, the Board of Appeal held, in essence, that the evidence submitted by the applicant for the purpose of proving use of that trade mark did not contain sufficient particulars as to the place, time and extent of its use in connection with the goods relied on in support of the application for a declaration of invalidity.

35 It should also be observed that the applicant, which disputes that conclusion, relies on three affidavits by employees of the licensee company, as well as the photographs attached to the first of those affidavits, and the photographs and the table annexed to the last of those affidavits. It takes the view, moreover, that the first two affidavits constitute sufficient evidence, since they are not vitiated by irregularities or inconsistencies, and that the last of those written affidavits has merely confirmative value.

36 In this connection, the Court points out, in the first place, that it follows from Article 65 of Regulation No 207/2009 that facts not submitted by the parties before OHIM bodies cannot be submitted at the stage of the action before the Court and that the Court cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision (judgments of 18 December 2008 in Les Éditions Albert René v OHIM, C‑16/06 P, ECR, EU:C:2008:739, paragraphs 137 and 138, and 25 October 2013 in Biotronik SE v OHIM — Cardios Sistemas (CARDIO MANAGER), T‑416/11, EU:T:2013:559, paragraph 19).

37 In the present case, the third affidavit, dated 2 September 2013, was submitted by the applicant for the first time before the Court. The same is true of the data in table form, dated 31 August 2011, which accompanied that affidavit, which table — according to the information provided by the applicant — came directly from a computerised merchandise management system. Moreover, those two documents contain figures that do not appear in the first and second affidavits. Consequently, those two documents cannot, in any event, be regarded as mere confirmations of the latter. Accordingly, the Court cannot review the legality of the contested decision on the basis of those two documents, which were not submitted before the bodies of OHIM. They are thus inadmissible, as OHIM contends.

38 In the second place, according to settled case-law, the fact that an affidavit is from an employee of the company relying on it cannot, on its own, deprive that affidavit of all evidential value (see, to that effect, judgment of 13 June 2012 in Süd-Chemie v OHIM — Byk-Cera (CERATIX), T‑312/11, EU:T:2012:296, paragraph 30 and the case-law cited). That also applies where, as in the present case, the affidavit is not from an employee of the company relying on it but from an employee of a company in the same group. However, contrary to what is claimed by the applicant, the particulars in an affidavit by a person linked, in any manner whatsoever, to the company relying on it must, in any event, be supported by other evidence (order of 21 October 2013 in Lyder Enterprises v CPVO — Liner Plants (1993) (SOUTHERN SPLENDOUR), T‑367/11, EU:T:2013:585, paragraph 49, and judgment of 12 March 2014 in Globosat Programadora v OHIM — Sport TV Portugal (SPORT TV INTERNACIONAL), T‑348/12, EU:T:2014:116, paragraphs 32 and 33).

39 In the present case, in the first affidavit, it is stated that the group to which the applicant belongs mainly uses three separate trade marks, including the earlier trade mark. It is stated, furthermore, that the earlier trade mark has been ‘in use at least since 1997 in Germany for thousands of different products, inter alia for goods [in C]lass 3’. It is also remarked that, from 2001 to 2011, more than 4.5 million products in Class 3 were sold, with a total turnover of more than EUR 10 million for Class 3 only. According to that affidavit, amongst the products sold are, ‘for example’, eye shadow, lip gloss, hairspray, perfumes, soaps, shampoos, essential oils, fragrance oils, massage oils, potpourris, bath salts and bath additives. Lastly, the first affidavit concludes by setting out the annual turnover, generated from 2001 to 31 August 2011, ‘regarding the sale of goods [in C]lass 3 under the [earlier] trademark … in Germany’.

40 Four sets of photographs are attached to the first affidavit. First, two photographs of a gift basket containing a shower gel and a body lotion; secondly, two photographs depicting a box of soaps; thirdly, a photograph of an effervescent tablet for the bath; and, fourthly, two photographs depicting a bottle of massage oil.

41 The second affidavit ‘confirms’ the correctness of the information set out in the first. It states, in addition, that the earlier trade mark is generally printed on labels or stickers affixed to the products to be sold and that consumers do not receive an invoice but only sales-slips, which do not mention the trade mark in question. It also states that the invoices issued by suppliers do not mention the trade mark but only the description of the goods. In those circumstances, according to the second affidavit, it is not possible to demonstrate the use of the earlier trade mark with the help of invoices.

42 The Court points out that none of those documents proves that the earlier trade mark was put to genuine use in Germany during the relevant periods in order to designate the goods relied on in support of the application for a declaration of invalidity.

43 First of all, although the first affidavit indicates, approximately, the quantity of goods in Class 3 sold under the earlier trade mark from 2001 to 2011 and the turnover corresponding to those sales, it does not specify the volume, nor the value of sales of the goods relied on in support of the application for a declaration of invalidity. First, it is clear from the documents in the file relating to the proceedings before OHIM that those goods, that is, ‘preparations for beauty care and personal hygiene’ and ‘essential oils and perfume oils’, are not the only goods in Class 3 designated by the earlier trade mark, since the earlier trade mark also designates ‘hair lotions’. Secondly, it is not a priori inconceivable that goods included in Class 3 but in respect of which the earlier trade mark had not been registered may have been sold under that trade mark. Accordingly, the particulars provided in the first affidavit do not make it possible to ascertain what use was in fact made of the earlier trade mark, particularly because they do not show the extent of that use in Germany during the relevant periods.

44 In order to arrive at a different conclusion, it would, in any event, have to be assumed that the goods relied on in support of the application for a declaration of invalidity made up a not inconsiderable share of the sales of goods in Class 3.

45 However, according to settled case-law, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (see judgments in CARDIO MANAGER, paragraph 36 above, EU:T:2013:559, paragraph 33, and ALPHATRAD, paragraph 22 above, EU:T:2014:9, paragraph 32 and the case-law cited). The Board of Appeal was therefore correct in declining to rely on such suppositions.

46 The fact that the first affidavit provides examples of certain goods sold under the earlier trade mark is equally not capable of invalidating the conclusion set out in paragraph 43 above. Admittedly, certain goods mentioned by way of example are included amongst those relied on in support of the application for a declaration of invalidity. However, no details are given in that affidavit as to the volume and value of the sales of those goods. As stated above, the only figures provided in that affidavit concern goods in Class 3 generally.

47 The same is true of the photographs reproduced in the annexes to the first affidavit and submitted again before the Court in the annexes to the third affidavit, which relate to five separate products only and which, having regard to their small number, are not capable of showing genuine use of the earlier trade mark. Moreover, as the Board of Appeal pointed out, the labels affixed to the goods in the photographs are almost all in English or in a language other than German, so that the photographs in question do not, on their own, show that the earlier trade mark was in fact used in Germany.

48 Lastly, although the second affidavit purports to ‘confirm’ the correctness of the first affidavit, it does not provide any additional particulars as to the quantities and value of sales relating to the goods relied on in support of the application for a declaration of invalidity. Like the first affidavit, it therefore does not prove that the earlier trade mark was in fact used. As to the remainder, the second affidavit sets out the reasons why it seemed pointless, to the applicant, to provide invoices in support of the applicant’s claims. However, in so doing, the second affidavit does not contribute to showing genuine use of the earlier trade mark.

49 In short, following an overall assessment of the evidence submitted by the applicant before the bodies of OHIM, it must be concluded that the Board of Appeal was right in holding that proof of genuine use of the earlier trade mark had not been furnished before it and in inferring that the application for a declaration of invalidity based on that trade mark could not succeed.

50 That conclusion is not called in question by the judgment in DEITECH, paragraph 29 above (EU:T:2008:577), paragraphs 61 and 62 of which are relied on by the applicant. Indeed, contrary to what is claimed by the applicant, the present case can clearly be distinguished from that submitted to the Court for assessment in the DEITECH case.

51 In this connection, first, by contrast with the applicant in the present case, the applicant in DEITECH had submitted — in addition to the written statements of its employees — brochures, which, according to the Court, constituted sufficiently solid and objective supporting evidence to corroborate the affidavits submitted in that case, at least as regards the place of use, time of use and the nature of the product in respect of which the earlier trade marks had been used (judgment in DEITECH, paragraph 29 above, EU:T:2008:577, paragraph 50).

52 Secondly, in its judgment in DEITECH, as regards the extent of use of the earlier trade marks, the Court observed in the judgment in DEITECH, paragraph 29 above (EU:T:2008:577, paragraphs 49 and 57), that the statements which were at issue contained ‘precise particulars as to the volumes of sales of shoes bearing the [earlier trade mark] and as to the turnover generated by such sales’. By contrast, as the Court has found in paragraphs 43 to 48 above, the documents submitted by the applicant in the present case are not sufficiently precise.

53 Moreover, in its judgment in DEITECH, paragraph 29 above (EU:T:2008:577, paragraphs 59 and 60), the Court held that the difficulties relied on by the applicant in that case in providing evidence other than affidavits were plausible having regard to the specific method of distribution in that case. By contrast, in the present case, it must be observed, as did the Board of Appeal, that the applicant could have submitted before the bodies of OHIM additional evidence to the two affidavits it submitted, such as excerpts from its analytical accounts or documents from a management software package identifying the sales of the goods relied on in support of the application for a declaration of invalidity, which indeed it did — belatedly — apply itself to doing before the Court (see paragraph 37 above). Thus, in any event, those two affidavits were not the only evidence on which the applicant could rely in order to show the extent of use of the earlier trade mark.

54 Accordingly, in the judgment in DEITECH, paragraph 29 above (EU:T:2008:577), it was in the light of the particular circumstances as a whole, namely, the precise nature of the particulars contained in the written statements submitted by the applicant in DEITECH and the plausible nature of its difficulties in providing other evidence, that the Court concluded that the affidavits submitted by the applicant had to be regarded as both appropriate and sufficient evidence as regards the extent of use of the trade mark. It is apparent from paragraphs 52 and 53 above that there are no such circumstances in the present case.

55 In the light of all the foregoing, the single plea in law must be rejected, and, in consequence, the action dismissed in its entirety.

56 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

57 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM.

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