Advance Magazine Publishers v OHMI - Selecciones Americanas (VOGUE CAFE) (Judgment) [2016] EUECJ T-40/09 (01 March 2016)

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(Community trade mark — Opposition proceedings — Community word mark VOGUE CAFÉ — Earlier national figurative marks Vogue and VOGUE studio and application for the Community figurative mark VOGUE — Genuine use of earlier marks — Article 42(2) of Regulation (EC) No 207/2009)

Advance Magazine Publishers, Inc., established in New York, New York (United States), represented by T. Alkin, Barrister,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by R. Pethke and D. Botis, and subsequently by I. Harrington, acting as Agents,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 19 November 2008 (Case R 0280/2008-4) relating to opposition proceedings between Selecciones Americanas, SA and Advance Magazine Publishers, Inc.,

composed of H. Kanninen (Rapporteur), President, I. Pelikánová and E. Buttigieg, Judges,

having regard to the application lodged at the Court Registry on 26 January 2009,

having regard to the orders staying the proceedings of 24 April, 5 October 2009, 18 May 2010, 11 January 2011, 20 September 2011, 2 May 2012, 29 January 2012 and 29 August 2013,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,

1 On 11 November 2003, the applicant, Advance Magazine Publishers, Inc., 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 in respect of which registration was sought are, inter alia, in Class 25 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 to the following description: ‘Clothing; footwear; headgear; parts and fittings for all the aforesaid goods’.

4 On 3 February 2004, the applicant filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the Community figurative mark VOGUE filed by the opponent, Selecciones Americanas, SA, on 21 February 2003 under No 3064219, in respect of goods and services in Classes 25, 35 and 39 (see paragraph 7, third indent, below).

5 The application for the Community trade mark VOGUE CAFÉ was published in Community Trade Marks Bulletin No 40/2004 of 4 October 2004.

6 On 4 January 2005, Selecciones Americanas filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 to registration of the mark applied for in respect of the goods in Class 25 referred to in paragraph 3 above.

– the Spanish figurative mark filed and registered on 12 January 1952 under No 255186 in respect of ‘Corsetry articles, strips, supports and any similar garment’ in Class 25, reproduced below:

– the Spanish figurative mark filed on 7 March 2003 and registered on 10 June 2004 under No 2529728 in respect of ‘Corsetry and underwear for men, women and children, including pyjamas, stockings, tights and socks; clothing and sporting articles for men, women and children (not included in other classes), swimsuits’ in Class 25, reproduced below:

– application for Community figurative mark No 3064219, referred to in paragraph 4 above and reproduced below, in respect of goods and services in Classes 25, 35 and 39 and corresponding to the following description:

– Class 25: ‘Corsetry articles, strips, supports and any similar garment’;

– Class 35: ‘Advertising and business services in the corsetry and underwear market; import-export, agency and sole agency for corsetry and underwear for men, women and children, including pyjamas, stockings, tights and socks; clothing and sporting articles for men, women and children (not included in other classes), and swimsuits; information and consultancy services in relation to retailing the abovementioned products, including via worldwide computer networks’;

– Class 39: ‘Transport; packaging, storage and distribution of corsetry and underwear for men, women and children, including pyjamas, stockings, tights and socks; clothing and sporting articles for men, women and children (not included in other classes) and swimsuits’:

8 The opposition was based on all the goods and services covered by the earlier marks.

9 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

10 In accordance with Article 43(2) of Regulation No 40/94 (now Article 42(2) of Regulation No 207/2009), the applicant requested that the opponent prove genuine use of earlier mark No 255186 in respect of all the goods that it covered. The opponent provided several pieces of evidence and documents in reply.

11 By decision of 30 November 2007, the Opposition Division upheld the opposition for the goods in Class 25 corresponding to ‘clothing; footwear; headgear; parts and fittings for all the aforesaid goods’ and accordingly rejected the trade mark application in respect of those goods. The Opposition Division, first, considered that, for reasons of procedural economy, the likelihood of confusion would be assessed only in relation to earlier marks Nos 255186 and 2529728. Next, it considered that the evidence of genuine use of mark No 255186 in respect of the goods that it covered was sufficient. Furthermore, the Opposition Division noted that the goods covered by the earlier marks and the goods covered by the mark applied for were similar. The Opposition Division went on to conclude that the earlier marks and the mark applied for were similar. From a visual perspective, the Opposition Division considered that since the dominant element of the earlier marks was the word ‘vogue’, which was contained in the mark applied for, those marks were similar. From a phonetic perspective, it noted that the marks were very close overall, since Spanish consumers would pronounce the word ‘vogue’ in the same way. From a conceptual perspective, since the word ‘vogue’ has no meaning for the average Spanish consumer, those marks have no shared semantic connotation. In the light of all of those factors, the Opposition Division concluded that there was a likelihood of confusion between the earlier marks and the mark applied for on the part of the Spanish public on account of the identity or similarity of the goods and the similarity of the signs in respect of all the goods in Class 25 covered by the mark applied for. Finally, the Opposition Division noted that, in so far as registration of the mark applied for must be refused in respect of the goods in Class 25, it was not necessary to examine the opposition in relation to Community trade mark application No 3064219.

12 On 7 February 2008, the applicant filed a notice of appeal with OHIM against the Opposition Division’s decision.

13 By decision of 19 November 2008 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. The Board of Appeal, first, found that the Opposition Division had been right to conclude that, taken as a whole, the evidence submitted by the opponent was sufficient to demonstrate genuine use of earlier mark No 255186 in Spain during the five-year period up to 4 October 2004. It went on to consider that there was a likelihood of confusion between the mark applied for and earlier marks Nos 255186 and 2529728, in so far as, first, the goods covered by the marks at issue were either identical or similar and, secondly, the signs at issue were visually and phonetically similar. For reasons of procedural economy, the Board of Appeal followed the approach of the Opposition Division, that is, it assessed whether there was a likelihood of confusion on the basis solely of a comparison between the mark applied for and the two earlier marks Nos 255186 and 2529728. Finally, the Board of Appeal rejected the applicant’s request for suspension of the opposition proceedings pending the outcome of the opposition filed by the applicant to earlier Community trade mark application No 3064219 on the ground that the opposition filed by the opponent to the mark applied for was not solely based on trade mark application No 3064219 and therefore the validity of that application would have been decisive for the outcome of the opposition proceedings only if the opposition had been rejected for both other earlier marks Nos 255186 and 2529728.

16 The applicant relies on three pleas in law in support of its action, alleging (i) infringement of Article 43(2) of Regulation No 40/94 and Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 (OJ 1995 L 303, p. 1), in so far as the opponent did not prove genuine use of earlier mark No 255186, (ii) infringement of Article 8(1)(b) of Regulation No 40/94, in so far as there is no likelihood of confusion between the mark applied for and earlier mark No 2529728, and (iii) infringement of Rule 20(7) of Regulation No 2868/95, in so far as the Board of Appeal erred in rejecting its request for suspension of the proceedings pending the outcome of the proceedings opposing Community trade mark application No 3064219.

17 By letter lodged at the Court Registry on 18 November 2013, the applicant informed the Court that, at the conclusion of the proceedings before the Spanish courts, pending the outcome of which the proceedings in the present case were suspended several times, earlier marks Nos 255186 and 2529728 had been ‘cancelled’, as is apparent from the Spanish register of trade marks. Consequently, since the contested decision was based on those two marks, the applicant requested that the Court rule in its favour in respect of the action and the costs.

18 On 13 February 2014, by way of measures of organisation of procedure provided for in Article 64 of the Rules of Procedure of the General Court of 2 May 1991, the Court requested that the parties submit their observations on the inferences to be drawn from the declaration of invalidity of the two earlier marks examined in the contested decision, as regards, inter alia, the effects and legality of that decision and maintaining the subject matter of the case before the Court. The Court also requested that OHIM inform it of its practice as regards whether the opposition proceedings before it would continue after the abovementioned declaration of invalidity.

19 OHIM and the applicant replied to the Court’s request by letters lodged at the Court Registry on 27 February 2014 and 3 March 2014 respectively. OHIM claimed, inter alia, that a distinction should be made between, first, earlier mark No 2529728, which was cancelled by the Spanish court of first instance and should therefore be considered as never having produced any legal effect, and, secondly, earlier mark No 255186, which was revoked by that court on a date subsequent to that of the adoption of the contested decision. Accordingly, OHIM claims that the subject matter of the second plea in law, which concerns only earlier mark No 2529728, has ceased to exist. The part of the contested decision relating to earlier mark No 255186 was not affected by the revocation of that mark and the Court should accordingly rule on the legality of that decision in so far as concerns that mark and Community trade mark application No 3064219, which was not affected by the proceedings before the Spanish courts.

20 By letter lodged at the Court Registry on 14 May 2014, the applicant submitted observations on the observations lodged by OHIM on 27 February 2014. The applicant, in reply to OHIM’s argument that the revocation of earlier mark No 255186 took effect after the date of adoption of the contested decision, pointed to the Guidelines for Examination in the Office in respect of Community trade marks (‘the OHIM guidelines’), under which ‘if the decision taken in the national proceedings invalidates, revokes or results in some other way in the extinguishment of the right or transfers the opponent’s earlier right, the opposition will be deemed unfounded in so far as it is based on that earlier right’.

21 By letter lodged at the Court Registry on 25 July 2014 OHIM submitted observations on the observations lodged by the applicant on 14 May 2014. OHIM contended that (i) the applicant’s assertions should have been made in the application and must therefore be rejected as inadmissible, (ii) in order to reject the opposition as unfounded, earlier mark No 255186 would have had to expire before the adoption of the contested decision, which had not been demonstrated in the present case, (iii) the OHIM guidelines relied on by the applicant, dated 2 January 2014, were issued following the date of adoption of the contested decision, and (iv) those guidelines were not binding.

22 On 17 June 2015, the Court requested that the applicant, by way of measures of organisation of procedure provided for in Article 64 of the Rules of Procedure of the General Court of 2 May 1991, indicate the date on which the effects of earlier mark No 255186 had, following its revocation, expired, and provide, in particular, relevant documentation in support of its claims. The applicant complied with that request by letter lodged at the Court Registry on 3 July 2015, indicating, inter alia, that the revocation of earlier mark No 255186 took effect on 4 March 2009, the date on which the decision of the Spanish court of first instance was delivered.

23 By way of measures of organisation of procedure provided for in Article 89 of the Rules of Procedure of the General Court, the Court requested that the applicant justify, with regard, inter alia, to the Spanish register of trade marks and Article 55(2) of Spanish Law No 7/2001 of 7 December 2001 on trade marks, the date of 4 March 2009 given by the applicant (see paragraph 22 above). By letter lodged at the Court Registry of 15 September 2015, the applicant complied with the Court’s request, reiterating, in essence, that the date of 4 March 2009 corresponded to the date of delivery of the judgment of Commercial Court No 4, Barcelona, which, at first instance, revoked earlier mark No 255186. By letter of 28 September 2015, OHIM notified the Court that it had no further observations to make with regard to the applicant’s observations.

24 According to settled case-law, the objective of the action must continue, like the interest in bringing proceedings, until the final decision, failing which there will be no need to adjudicate, which presupposes that the action must be liable, if successful, to procure an advantage for the party bringing it (see, to that effect, judgments of 7 June 2007 in Wunenburger v Commission, C‑362/05 P, ECR, EU:C:2007:322, paragraph 42; 10 December 2010 in Ryanair v Commission, T‑494/08 to T‑500/08 and T‑509/08, ECR, EU:T:2010:511, paragraph 43, and 8 October 2014 in Fuchs v OHIM — Les Complices (Star in a circle), T‑342/12, ECR, EU:T:2014:858, paragraph 23).

25 In the present case, it must be observed that, among the marks relied on in support of the opposition, earlier mark No 2529728 was cancelled ab initio, while earlier mark No 255186 was subject to a declaration of revocation following the adoption of the contested decision, which the parties do not contest.

26 It must therefore be determined whether, following the cancellation of earlier mark No 2529728 and the revocation of mark No 255186, annulment of the contested decision could still procure an advantage for the applicant.

27 As regards earlier mark No 2529728, it should be recalled that it was cancelled by Commercial Court No 4, Barcelona, which entails its retroactive removal from the legal order. It follows that the present action, in so far as it concerns that mark, has become devoid of purpose (see, to that effect, orders of 27 September 2010 in Hidalgo v OHIM — Bodegas Hidalgo — La Gitana (HIDALGO), T‑365/08, EU:T:2010:407, paragraph 6, and 12 April 2013 Oster Weinkellerei v OHIM — Viñedos Emiliana (Igama), T‑474/11, EU:T:2013:190, paragraph 3). As a consequence, there is no longer any need to adjudicate on the second plea in law, by which the applicant disputes the Board of Appeal’s finding of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, between the mark applied for and earlier mark No 2529728 only.

28 As regards earlier mark No 255186, the parties agree that its revocation took effect after the date of adoption of the contested decision. Accordingly, it is clear that on the date of adoption of that decision, that mark still produced all its effects.

29 According to case-law, the purpose of the action is retained when, on the date of adoption of the decision of the Board of Appeal relating to opposition proceedings, the earlier right existed and produced legal effects (see, to that effect, judgment of 15 March 2012 in Cadila Healthcare v OHIM — Novartis (ZYDUS), T‑288/08, EU:T:2012:124, paragraph 22, confirmed by order of 8 May 2013 in Cadila Healthcare v OHIM, C‑268/12 P, EU:C:2013:296, paragraphs 32 and 33, and judgment in Star in a circle, cited in paragraph 24 above, EU:T:2014:858, paragraphs 22 to 29). For the Court to find that the dispute becomes devoid of purpose when, in the course of the proceedings, a revocation decision is reached would amount to taking into account matters arising after the adoption of the contested decision (see, to that effect, judgments of 4 November 2008 in Group Lottuss v OHIM — Ugly (COYOTE UGLY), T‑161/07, EU:T:2008:473, paragraphs 47 to 50, and Star in a circle, cited in paragraph 24 above, EU:T:2014:858, paragraph 24).

30 It must therefore be held, in the present case, that the subject matter of the action, in so far as it concerns the part of the contested decision relating to earlier mark No 255186, has not ceased to exist. The Court must therefore examine the first plea in law in which the applicant disputes the Board of Appeal’s finding that the proof of genuine use of earlier mark No 255186 was sufficient.

31 That finding cannot be invalidated by the applicant’s arguments that the OHIM guidelines provide that the opposition is deemed to be unfounded where it is based on a right revoked by a decision delivered in the context of national proceedings. The paragraph of the guidelines cited by the applicant concerns the effects, on the opposition, of the revocation of a mark on which the opposition is based. However, there is nothing in those guidelines to suggest that the revocation of a mark on which the opposition is based, which takes place after the contested decision of the Board of Appeal, renders the action brought against it devoid of purpose. In any event, it must be recalled that the OHIM guidelines are no more than a consolidated set of rules setting out the line of conduct which OHIM itself proposes to adopt (judgment of 12 March 2014 in Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, EU:T:2014:119, paragraph 44; see also, to that effect, judgments of 12 May 2009 in Jurado Hermanos v OHIM (JURADO), T‑410/07, ECR, EU:T:2009:153, paragraph 20, and 7 July 2010, Valigeria Roncato v OHIM — Roncato (CARLO RONCATO), T‑124/09, EU:T:2010:290, paragraph 27).

32 Having regard to all the foregoing considerations, it must be concluded, first, that there is no need to adjudicate on the second plea in law, which concerns the part of the contested decision relating to earlier mark No 2529728 and, secondly, that the Court must rule on the first plea in law, which concerns the part of the contested decision relating to earlier mark No 255186 and the third plea in law, which refers to Community trade mark application No 3064219, whose effects have not been affected by the outcome of the national proceedings brought against the earlier Spanish marks Nos 255186 and 2529728.

The second plea in law, alleging infringement of Article 43(2) of Regulation No 40/94 and Rule 22(3) of Regulation No 2868/95

33 The applicant submits that the evidence adduced by the opponent gives no indication of places, times or the importance or nature of the use of earlier mark No 255186. The applicant claims, in particular, first, that the packaging, labels, ribbons, advertising and samples of women’s underwear bear no indication of the place, time or extent of the use of that mark and, secondly, that the catalogue for the mark VOGUE showing the collection of women’s underwear for 2003 and 2004 gives no indication of the place or extent of that use and, thirdly, that the invoices make no reference to the mark and do not establish its use.

34 The applicant also claims that, contrary to the Board of Appeal’s finding in paragraph 14 of the contested decision, the description of the products in Spanish in the catalogue for the mark VOGUE and the reference to an address in Barcelona in the same catalogue merely show that the opponent is established in Spain and that the catalogue is addressed to Spanish customers. That evidence does not prove that that catalogue was actually distributed in Spain or the extent of such distribution.

35 Furthermore, the applicant submits that the invoices and catalogue for the mark VOGUE, taken together, do not prove use of earlier mark No 255186, in so far as the invoices do not prove that that catalogue was distributed in Spain and that catalogue does not prove use of earlier mark No 255186 in the sales referred to in those invoices.

36 Finally, the applicant claims that the fact that the sample of women’s underwear provided by the opponent bears a label referring to earlier mark No 255186 does not demonstrate that the goods referred to on the invoice also bore a label featuring that mark.

38 As is clear from the ninth recital of Regulation No 40/94 (now recital 10 of Regulation No 207/2009), the legislature considered there to be no justification for protecting an earlier mark except where the mark has actually been used. In keeping with that recital, Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009) provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the period of five years preceding the date of publication of the Community trade mark application against which an opposition has been filed (judgment of 18 January 2011 in Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, EU:T:2011:9, paragraph 24).

39 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 (judgment of 30 November 2009 in Esber v OHIM — Coloris Global Coloring Concept (COLORIS), T‑353/07, EU:T:2009:475, paragraph 21; see also, by analogy, judgment of 11 March 2003 in Ansul, C‑40/01, ECR, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see, to that effect, judgment of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, ECR, EU:T:2004:225, paragraph 39; and judgments in COLORIS, cited above, EU:T:2009:475, paragraph 21, and VOGUE, cited in paragraph 38 above, EU:T:2011:9, paragraph 27).

40 Furthermore, by virtue of Rule 22(3) of Regulation No 2868/95, as amended, proof of use must relate to the place, time, extent and nature of the use of the earlier mark.

41 To examine, in a particular case, whether a contested trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment implies 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 use of the mark was extensive or very regular, and vice versa (see, by analogy, judgment in VITAFRUIT, cited in paragraph 39 above, EU:T:2004:225, paragraph 42). Moreover, it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (judgments of 17 April 2008 in Ferrero Deutschland v OHIM, C‑108/07 P, EU:C:2008:234, paragraph 36, and 24 May 2012 in TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, EU:T:2012:263, paragraph 34).

42 Finally, 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 effective and sufficient use of the trade mark on the market concerned (judgment of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 28, and judgment in VOGUE, cited in paragraph 38 above, EU:T:2011:9, paragraph 32).

43 In the present case, it should be noted that the opponent was requested to demonstrate use of earlier mark No 255186 in Spain, during the period from 3 October 1999 to 3 October 2004 — the application for a Community trade mark having been published on 4 October 2004.

44 Furthermore, it must be noted that the evidence adduced by the opponent seeking to establish genuine use of earlier mark No 255186 was as follows:

– a catalogue for the mark VOGUE showing corsetry items for the 2003-2004 collection;

45 The applicant does not dispute the presence of earlier mark No 255186 on several of the pieces of evidence submitted by the opponent, referred to in paragraph 44 above, such as the packaging boxes, labels of underwear items, the satin ribbon, the catalogue for the mark VOGUE showing corsetry items for the 2003-2004 collection, advertising for bras and the sample of women’s underwear.

46 As regards the invoices submitted by the opponent, which are dated within the period from 15 February 2000 to 22 December 2005, it is true, as the parties note and the Board of Appeal acknowledges, that earlier mark No 255186 does not appear on any of them.

47 However, according to case-law, the fact that the earlier mark is not referred to on invoices cannot demonstrate that they are not relevant for the purposes of proving genuine use of that mark (see, to that effect, judgment of 27 September 2007 in La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, EU:T:2007:299, paragraph 65; judgment in MAD, cited in paragraph 41 above, EU:T:2012:263, paragraph 60, and judgment of 16 September 2013 in Avery Dennison v OHIM — Dennison-Hesperia (AVERY DENNISON), T‑200/10, EU:T:2013:467, paragraph 37).

48 In the present case, although the invoices submitted by the opponent do not refer to earlier mark No 255186, they clearly show the names of models of underwear (inter alia, Luxury, Liza or Lulu), to which a code is attached (inter alia, CO or T). In the catalogue for the mark VOGUE submitted by the opponent which shows the women’s underwear items for the collection 2003-2004, the last page shows the Lilas, Lulu, Lady, Luxury and Liza collections and the goods corresponding to each of those collections, that is, inter alia, corsets, to which the code CO corresponds, and tangas, to which the code T corresponds.

49 It should also be noted that the name of the Basic model, along with the code T, which appears on invoices Nos 232690 of 7 October 2003, 232688 of 7 October 2003, 252280 of 14 June 2004 and 248571 of 28 April 2004, also appears on the label of the sample of women’s underwear submitted by the opponent, beside the sign VOGUE.

50 Accordingly, when the invoices are read, first, in the light of the catalogue for the mark VOGUE and, secondly, of the sample of women’s underwear, it may be concluded that the goods referred to on the invoices are clearly identifiable along with their connection with earlier mark No 255186, even though that mark does not appear on the invoices.

51 In those circumstances, the applicant is wrong to claim that neither the catalogue for the mark VOGUE nor the sample of women’s underwear proves use of earlier mark No 255186 in the context of the sales listed on the invoices. It must be added in that regard that the opponent cannot be required to provide evidence that all the underwear items listed on the invoices bear a label featuring the mark VOGUE. It is not necessary that the mark applied for be affixed to the goods for there to be genuine use of the mark in relation to those goods (see, to that effect, judgment of 6 March 2014 in Anapurna v OHIM — Annapurna (ANNAPURNA), T‑71/13, EU:T:2014:105, paragraphs 44 and 60). It suffices that use of the mark establishes a connection between the mark and the marketing of those goods. As shown above, the presence of earlier mark No 255186, inter alia, in the catalogue for the mark VOGUE and on the sample of women’s underwear establishes that link.

52 As regards the period of use, the Board of Appeal noted, first, that 25 of the 30 invoices submitted by the opponent concerned the relevant period (see paragraph 43 above) and, secondly, that the catalogue for the mark VOGUE which related to the 2003-2004 collection also covered the period in question. That finding is not contradicted by the applicant, which claims, on the contrary, that the Board of Appeal ‘correctly’ observed that the invoices related to a period between 2000 and 2005.

53 As regards the place of use of earlier mark No 255186, it is clear from the contested decision that the catalogue includes a description of the goods written, inter alia, in Spanish and an address in Barcelona, the labels feature information in Spanish or an address in Spain, the Spanish word ‘línea’ appears on a packaging box and the invoices are written in Spanish and refer to the same Spanish address as that indicated on the labels. The Board of Appeal considered that that evidence as a whole was sufficient to establish use of earlier mark No 255186 in Spain.

54 The applicant does not dispute that the labels contain information in Spanish or an address in Spain, that the Spanish word ‘línea’ appears on a packaging box or that the invoices are in Spanish and refer to the same Spanish address as that indicated on the labels. Nor does the applicant dispute that the catalogue shows that the opponent is established in Spain and that that catalogue is addressed to Spanish customers.

55 The applicant merely claims that there is no evidence of actual distribution of the catalogue in Spain or of the extent of such distribution. While the mere submission of catalogues without any information or evidence relating to their distribution to the public or the extent of any such distribution is not sufficient to demonstrate use of a mark (see, to that effect, judgment in VITAKRAFT, cited in paragraph 42 above, EU:T:2004:292, paragraph 34), it must be noted, as is clear from the contested decision (see paragraph 44 above), that, in the present case, the opponent did not provide only the catalogue for the mark VOGUE as the sole evidence of use of earlier mark No 255186 in Spain.

56 As regards the extent of the use, it must be observed that, while use of the mark need not always be quantitatively significant for it to be deemed genuine, the fact remains that the concept of genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, to that effect, judgment in Ansul, cited in paragraph 39 above, EU:C:2003:145, paragraphs 36, 39, and 43). As the Board of Appeal correctly noted, the extent of the use of earlier mark No 255186 is, in the present case, clearly demonstrated by the invoices which refer to the goods described in the catalogue for the mark VOGUE. That finding is not, moreover, disputed by the applicant, which merely claims that the packaging, labels, ribbons, advertising, sample of women’s underwear and catalogue for the mark VOGUE provide no indication as to the extent of the use of earlier mark No 255186. Although Rule 22(3) of Regulation No 2868/95, referred to in paragraph 40 above, provides that proof of use must relate to the place, time, extent and nature of use of the earlier mark, that rule does not state that each item of evidence must necessarily give information about each of those elements (see judgment in AVERY DENNISON, cited in paragraph 47 above, EU:T:2013:467, paragraph 85 and the case-law cited).

57 It follows from the foregoing, as the Board of Appeal correctly noted, that the items of evidence adduced by the opponent, taken together, provide sufficient information concerning the place, time, extent and nature of use of earlier mark No 255186 for the goods that it covers.

The third plea in law, alleging infringement of Rule 20(7) of Regulation No 2868/95

59 The applicant claims that the Board of Appeal erred in rejecting its request for suspension of the opposition proceedings brought against the mark applied for pending the outcome of the opposition to Community trade mark application No 3064219. The applicant submits in that regard, in essence, that, as the opposition based on earlier marks Nos 255186 and 2529728 should have been rejected, the outcome of the opposition proceedings against Community trade mark application No 3064219 was decisive.

61 It must be noted that the Board of Appeal enjoys broad discretion to suspend proceedings. Rule 20(7)(c) of Regulation No 2868/95, applicable to proceedings before the Board of Appeal in accordance with Rule 50(1) of that regulation, illustrates that broad discretion, stating that the Board of Appeal can suspend opposition proceedings where appropriate under the circumstances. Suspension remains optional for the Board of Appeal, which avails itself of the option only when it considers it appropriate. Proceedings before the Board of Appeal are therefore not automatically suspended as a result of a request for suspension by a party before it (see, to that effect, judgments of 16 September 2004 in Metro-Goldwyn-Mayer Lion v OHIM — Moser Grupo Media (Moser Grupo Media), T‑342-/02, ECR, EU:T:2004:268, paragraph 46, and 16 May 2011 in Atlas Transport v OHIM — Atlas Air (ATLAS), T‑145/08, ECR, EU:T:2011:213, paragraph 69).

62 The fact that the Board of Appeal has broad discretion to suspend proceedings before it does not mean that its assessment falls outside the scope of judicial review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ascertaining that no manifest error of assessment or misuse of powers has occurred (judgment in ATLAS, cited in paragraph 61 above, EU:T:2011:213, paragraph 70, and judgment of 25 November 2014 in Royalton Overseas v OHIM — S.C. Romarose Invest (KAISERHOFF), T‑556/12, EU:T:2014:985, paragraph 31).

63 In that regard, it is apparent from case-law that, in exercising its discretion with respect to the suspension of proceedings, the Board of Appeal must observe the general principles governing procedural fairness within a European Union governed by the rule of law. It follows that, in exercising that discretion, the Board of Appeal must take into account not only the interests of the party whose Community mark is contested, but also those of the other parties. As the Board of Appeal noted, the decision whether or not to suspend must follow upon a weighing of the competing interests (judgments in ATLAS, cited in paragraph 61 above, EU:T:2011:213, paragraph 76, and KAISERHOFF, cited in paragraph 62 above, EU:T:2014:985, paragraph 33).

64 In the present case, it must be observed that the Board of Appeal justified the decision not to suspend the proceedings on the basis that, since the opposition to the mark applied for was not based solely on Community trade mark application No 3064219, but also on earlier marks Nos 255186 and 2529728, the outcome of the opposition to Community trade mark application No 3064219 would have been decisive in respect of the outcome of the opposition to the mark applied for only if that opposition had been rejected for earlier marks Nos 255186 and 2529728.

65 Given that the Board of Appeal had upheld the opposition based on earlier marks Nos 255186 and 2529728, it was correct in concluding that there were, consequently, no grounds for suspending the proceedings pending the outcome of the opposition proceedings brought against Community trade mark application No 3064219.

66 It follows that the third plea in law must be rejected and the action therefore dismissed in its entirety.

67 Under Article 134(1) 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.

68 Under Article 137 of those rules, where a case does not proceed to judgment, the costs are to be in the discretion of the General Court.

69 It is clear from paragraphs 33 to 66 above, that, with the sole exception of the claim seeking annulment of the contested decision in so far as it concludes that there is a likelihood of confusion between the mark applied for and earlier mark No 2529728, which became devoid of purpose, the applicant has been unsuccessful in its submissions.

70 Accordingly, the applicant must be ordered to pay the costs in accordance with the form of order sought by OHIM.

1. Declares that there is no longer any need to adjudicate on the application for annulment of the decision of the Fourth Board of Appeal of OHIM of 19 November 2008 (Case R 0280/2008 — 4), in so far as it concludes that there is a likelihood of confusion between the Community trade mark applied for, VOGUE CAFÉ, and the Spanish figurative mark VOGUE studio registered under number 2529728;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Advance Magazine Publishers v OHMI - Selecciones Americanas (VOGUE CAFE) (Judgment) [2016] EUECJ T-40/09 (01 March 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T4009.html Cite as: [2016] EUECJ T-40/09, EU:T:2016:119, ECLI:EU:T:2016:119, [2016] EUECJ T-40/9

Court of Justice of the European Communities (including Court of First Instance Decisions)