Cofra v EUIPO - Armand Thiery (1841) ( - Judgment) [2017] EUECJ T-233/15 (10 October 2017)

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(EU trade mark — Invalidity proceedings — EU word mark 1841 — Earlier national word mark AD-1841-TY — Relative ground for refusal — Genuine use of the earlier mark — Taking into account of additional evidence — Articles 57(2) and 76(2) of Regulation (EC) No 207/2009 (now Articles 64(2) and 95(2) of Regulation (EU) 2017/1001) — Rule 40(6) of Regulation (EC) No 2868/95 (now Article 19(2) of Delegated Regulation (EU) 2017/1430) — Point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001) — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001))

Cofra Holding AG, established in Zug (Switzerland), represented by M. Aznar Alonso, lawyer,

European Union Intellectual Property Office (EUIPO), represented by M. Capostagno and A. Folliard-Monguiral, acting as Agents,

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

Armand Thiery SAS, established in Levallois-Perret (France), represented by A. Grolée, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 26 February 2015 (Case R 805/2014-1) relating to invalidity proceedings between Armand Thiery and Cofra Holding,

composed of G. Berardis, President, D. Spielmann and Z. Csehi (Rapporteur), Judges,

having regard to the response of EUIPO lodged at the Court Registry on 9 November 2015,

having regard to the response of the intervener lodged at the Court Registry on 5 January 2016,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 20 May 2010, the applicant, Cofra Holding AG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods and services in respect of which registration was sought are in, inter alia, Class 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Clothing, footwear, headgear’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 140/2010 of 30 July 2010, and, on 12 November 2010, the sign at issue was registered as an EU trade mark under No 9119553, for all goods and services applied for.

5 On 30 November 2012, the applicant, Armand Thiery SAS, filed an application for a declaration that the contested mark was invalid under Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001).

6 The mark relied on in support of the application for a declaration of invalidity was the earlier French word mark AD-1841-TY, registered on 6 June 2007 under No 73504954, for goods in Class 25 corresponding to the following description: ‘Clothing for men, women and children including sportswear (except diving suits), suits, neckties, shirts, short-sleeve shirts, tee-shirts, polo shirts, sashes for wear, scarves, belts (clothing), hats, berets, caps and headgear, gloves (clothing), furs (clothing), jackets, coats, trousers, dresses, skirts, T-shirts, sweaters and knitwear, waterproof clothing, swimsuits, underwear of all kinds, pyjamas, dressing gowns, aprons (clothing), slippers, socks, footwear (except orthopaedic footwear)’.

7 The application for a declaration of invalidity was directed against the goods referred to in paragraph 3 above.

8 Before the Cancellation Division, the applicant requested that the intervener furnish proof of genuine use of the earlier mark.

9 By decision of 30 January 2014, the Cancellation Division rejected the application for a declaration of invalidity on the ground that the intervener had not provided proof of genuine use of the earlier trade mark.

10 On 21 March 2014, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Cancellation Division’s decision.

11 By decision of 26 February 2015 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the Cancellation Division’s decision and declared the contested mark registration invalid in respect of ‘clothing, footwear, headgear’.

12 In support of its decision, the Board of Appeal essentially took the view, first, that genuine use of the earlier mark had been proved for part of the goods covered by the earlier mark, namely ‘clothing for men, including sportswear, specifically shirts, t-shirts, polo shirts, jackets, waterproof clothing’ and, secondly, that there was a likelihood of confusion between the marks at issue for all the goods in Class 25 covered by the contested mark.

– order the applicant or EUIPO to pay the costs incurred by it in the proceedings before EUIPO and before the Court.

17 The first plea in law alleges, in essence, infringement of Article 57(2) of Regulation No 207/2009 (now Article 64(2) of Regulation (EU) 2017/1001) and Rule 40(6) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 19(2) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017, L 205, p. 1)), and the second plea in law alleges infringement of Article 8(1)(b) of Regulation No 207/2009.

The first plea in law, alleging infringement of Article 57(2) of Regulation No 207/2009 and Rule 40(6) of Regulation No 2868/95

18 In the first plea in law, which consists of two parts, the applicant claims, in essence, on the one hand, that the proof of genuine use of the earlier mark adduced at the appeal stage before the Board of Appeal was submitted out of time and, on the other hand, that that proof is insufficient to show genuine use of that mark.

The first part of the first plea in law alleging that certain documents adduced as proof of genuine use of the earlier mark were submitted out of time.

19 In the first part of the first plea in law, the applicant claims, in essence, that the Board of Appeal should not have taken into consideration the documents submitted by the intervener as item of evidence No 32 during the appeal proceedings (‘item of evidence No 32’). In that regard, first, it claims that Article 57(2) of Regulation No 207/2009, read in conjunction with Rule 40(6) of Regulation No 2868/95, precludes the taking into account of item of evidence No 32, in so far as that evidence was submitted after the time limit set for the intervener’s submission of proof of use of the earlier mark. Secondly, it maintains that, in the present case, there is no new evidence capable of justifying the late submission of item of evidence No 32. It adds in that context that that evidence is merely additional evidence intended to supplement the evidence submitted within the time limit initially set by the Cancellation Division and that the intervener could have submitted that evidence previously in August 2013.

21 In its contested decision, the Board of Appeal took the view that item of evidence No 32 should be accepted. It noted that the submission of proof of use supplementing the evidence submitted within the time limit set by the Opposition Division under Rule 40(6) of Regulation No 2868/95 remained possible after the expiry of that time limit and that the Board of Appeal was not prohibited from taking into account additional evidence produced out of time. It also stated that any consideration of such additional evidence was the outcome of the exercise of the discretion granted to EUIPO and the Boards of Appeal under Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001). Finally, it added that item of evidence No 32 was likely to be relevant to the question whether the proof of use of the mark had been provided in the present case.

22 In that regard, it should be borne in mind that Article 76(2) of Regulation No 207/2009 provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

23 It results from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see, to that effect, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 42, and of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 22).

24 In stating that EUIPO ‘may’ decide to disregard facts and evidence which are submitted out of time, Article 76(2) of Regulation No 207/2009 grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 43, and of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 23).

25 As regards, more specifically, the submission of proof of genuine use of an earlier trade mark during invalidity proceedings, it should be noted that, although, under Article 57(2) and (3) of Regulation No 207/2009 (Article 57(3) of Regulation No 207/2009 now being Article 64(3) of Regulation 2017/1001), if the proprietor of an EU trade mark so requests, the proprietor of an earlier national mark, being a party to the invalidity proceedings, is to furnish proof of genuine use of that earlier trade mark, in the absence of which the application for a declaration of invalidity is to be rejected, that regulation does not contain any provision specifying the time limit within which such proof must be furnished.

26 By contrast, Rule 40(6) of Regulation No 2868/95 provides in that regard that EUIPO is to invite the applicant for a declaration of invalidity to furnish proof of genuine use of the earlier mark, within such period as it may specify. Although it does follow from the wording of that provision that, where no proof of the use of the mark in question is produced within the time period set by EUIPO, the application for a declaration of invalidity must in principle be rejected automatically by the latter, this is not required where certain evidence intended to demonstrate that use has been produced within that time (see, by analogy, judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 86).

27 In that case, and unless it emerges that that evidence is entirely irrelevant for the purpose of establishing genuine use of the mark, the proceedings must take their course. EUIPO must, inter alia, as provided for by Article 57(1) of Regulation No 207/2009 (now Article 64(1) of Regulation 2017/1001), invite the parties, as often as necessary, to file observations on communications from the other parties or issued by EUIPO itself. In that context, if the application for a declaration of invalidity is rejected on the ground that the earlier mark was not the subject of genuine use within the meaning of Article 57(2) and (3) of Regulation No 207/2009, that rejection will not be as a result of the application of Rule 40(6) of Regulation No 2868/95, which is an essentially procedural provision, but solely of the application of the substantive provisions in Article 57 of Regulation No 207/2009 (see, by analogy, judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 87).

28 Consequently, contrary to what the applicant claims, it remains possible to submit evidence of use of the mark, in addition to the evidence provided within the time limit set by EUIPO pursuant to Rule 40(6) of Regulation No 2868/95, after the expiry of that time limit (see, by analogy, judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 88, and of 11 December 2014, CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 85 ). In that case, EUIPO is in no way prevented from taking account of evidence submitted out of time through use of the discretion conferred on it by Article 76(2) of Regulation No 207/2009 (see, by analogy, judgment of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 30).

29 In the present case, it is apparent from the EUIPO file and the contested decision that the intervener submitted evidence, within the time limit set by the Cancellation Division, namely, inter alia, technical description sheets for articles of clothing, order forms, invoices issued by their manufacturer, documents certifying the lodging of various articles of clothing with a judicial officer and screen shots of its website, in order to establish genuine use of the earlier mark. However, that evidence was not deemed by that division sufficient to demonstrate that the earlier mark had been the subject of genuine use on the French market during the relevant period. The Cancellation Division also noted that the intervener could have submitted other evidence to corroborate that already submitted, such as receipts, invoices for sales to third parties or other accounting documents, brochures, catalogues or advertising referring to the goods offered or delivered to consumers during the relevant period on French territory.

30 Furthermore, it is not disputed that the intervener submitted during the procedure before the Board of Appeal and, consequently, after the expiry of the time limit set by the Cancellation Division, item of evidence No 32, including 500 till receipts dating from 2011 and 2012, in order to corroborate the evidence adduced previously.

31 In that regard, it must be stated that that evidence, which supplements that initially submitted, is, at first sight, likely to be relevant to the existence of genuine use of the earlier mark.

32 Furthermore, as EUIPO and the intervener rightly maintain before the Court, the stage of the proceedings at which that additional evidence was submitted and the circumstances surrounding it did not preclude that submission. In that respect, it must be stated that, in the proceedings before the Cancellation Division, the intervener had not been invited to comment on the applicant’s observations disputing the evidence submitted in order to show genuine use of the earlier mark.

33 Moreover, it is not apparent from the file that the intervener abused the time limits by knowingly employing delaying tactics or by demonstrating manifest negligence. It merely produced supplementary evidence after the evidence which it had initially produced was deemed insufficient by the Cancellation Division.

34 Accordingly, the Board of Appeal made proper use of the discretion conferred on it by Article 76(2) of Regulation No 207/2009 by taking into account evidence submitted for the first time before it.

35 The other arguments put forward by the applicant cannot call that finding into question.

36 First, as regards the applicant’s argument that there was no new evidence capable of justifying the late submission of item of evidence No 32, it suffices to note that neither the rules applicable in the present case nor the case-law indicate that the existence of such evidence is required in order for EUIPO to be able to take into account, making use of the discretion conferred on it by Article 76(2) of Regulation No 207/2009, supplementary evidence of the use of the earlier mark in addition to, after expiry of the time limit set, the evidence produced within that time limit.

37 Secondly, as regards the applicant’s argument that the intervener was negligent, it must be pointed out, as the latter maintains, that it is not necessary that the party concerned be unable to submit evidence within the time limit in order for additional evidence of use of the mark, submitted after expiry of the time limit set in that regard to be taken into account (see, by analogy, judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 117, and of 11 December 2014, CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 95).

38 It follows that the first part of the applicant’s first plea in law must be rejected.

The second part of the first plea in law, alleging, essentially, a lack of evidence of genuine use of the earlier mark

39 It is apparent from recital 10 of Regulation No 207/2009 that the legislature considered that there was no justification for protecting an earlier EU trade mark, except where it is actually used. In keeping with that recital, Article 57(2) and (3) of Regulation No 207/2009 provides that the proprietor of an EU 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 period of five years preceding the date of the application for a declaration of invalidity. Furthermore, if, at the date on which the EU 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 must furnish proof that the earlier trade mark was put to genuine use in that territory during the five years preceding that publication.

40 Under Rule 22(3) of Regulation No 2868/95 (now Article 10(3) of Delegated Regulation 2017/1430) — which applies mutatis mutandis in invalidity proceedings pursuant to Rule 40(6) of that regulation — the proof of use must relate to the place, time, extent and nature of use of the earlier mark.

41 According to settled case-law, it is apparent from Article 57(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of that regulation, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use is to restrict the number of conflicts between two marks, unless there is good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (judgment of 19 April 2013, Luna v OHIM — Asteris (Al bustan), T‑454/11, not published, EU:T:2013:206, paragraph 23 and the case-law cited).

42 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 and services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, the condition of genuine use of the mark requires that that mark, as protected on the relevant territory, be used publicly and externally (see judgment of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 29 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).

43 The question whether the Board of Appeal was right to find that proof of genuine use of the earlier mark had been furnished in the present case must be examined in the light of those considerations.

44 In the course of examining the genuine nature of the use of the earlier mark, the Board of Appeal considered the following evidence submitted by the intervener:

– 28 bundles of documents concerning various items of clothing, including, inter alia, the internal codes for those items (images of goods, technical sheets, order forms and invoices issued by the manufacturer (items of evidence Nos 1 to 28);

– 2 documents certifying the lodging of various models of articles of clothing and belts with a judicial officer, including images of those goods (items of evidence Nos 29 and 30);

– 500 till receipts referring to the type of item sold and the internal code for the item concerned (item of evidence No 32).

45 In the contested decision, the Board of Appeal considered, in essence, that the documents comprising items of evidence Nos 1 to 31 did not make it possible to draw conclusions regarding whether the goods covered by the earlier mark had been sold on the French market. As regards item of evidence No 32, it found that the items referred to on the till receipts were sold in French territory. It stated in that regard that, even though those till receipts did not refer to the earlier mark, it was able to confirm, on the basis of the indications in other evidence submitted by the intervener, that the type of item and the code indicated on the till receipts provided corresponded to the goods listed in that evidence. It also considered that the time and intensity of the use had been demonstrated. As regards the nature of the use, it considered that the use of the earlier mark, in the form apparent from the evidence produced by the intervener, was not such as to alter the distinctive character of that mark.

46 The applicant claims that the Board of Appeal was wrong to take the view that the intervener had provided proof of genuine use of the earlier mark.

47 First, it calls into question the evidential value of item of evidence No 32. It claims in that regard that that evidence was drawn up by the intervener and was not substantiated by other evidence of external and independent origin. It also disputes the credibility of the information which appears on the till receipts furnished by the intervener.

48 Secondly, the applicant calls into question the findings of the Board of Appeal concerning the time, extent and nature of the use of the earlier mark.

50 In that regard, in the first place, it should be noted that, in order to assess the evidential value of the till receipts which constitute item of evidence No 32 produced by the intervener, the credibility and veracity of the information contained therein must be examined. In the context of that examination, account must be taken, inter alia, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (see judgment of 16 July 2014, Nanu-Nana Joachim Hoepp v OHIM — Stal-Florez Botero (la nana), T‑196/13, not published, EU:T:2014:674, paragraph 31 and the case-law cited).

51 In the present case, first, it should be noted that the till receipts in question do, in fact, originate from the intervener.

52 Furthermore, it should be observed that till receipts, as EUIPO and the intervener rightly submit, are accounting documents showing a commercial transaction. Consequently, those documents, drawn up in accordance with the rules in force in the Member State concerned, must be recognised as reliable, even though they come from the intervener, contrary to what the applicant claims. Moreover, the evidential value of those documents has formerly been recognised by the case-law in the course of examination of the genuine use of a mark (see, to that effect, judgment of 8 November 2007, Charlott v OHIM — Charlo (Charlott France Entre Luxe et Tradition), T‑169/06, not published, EU:T:2007:337, paragraphs 45, 49 and 61; of 18 January 2011, Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, not published, EU:T:2011:9, paragraph 51, and of 16 July 2014, la nana, T‑196/13, not published, EU:T:2014:674, paragraph 48).

53 Secondly, in so far as the applicant calls into question the credibility of the information on the till receipts provided by the intervener in item of evidence No 32, it suffices to note, as EUIPO maintains, that the fact that the intervener had provided, in the course of the administrative procedure, an incorrect explanation concerning the meaning of the reference ‘(4)’, referred to on the till receipts in question, has no bearing on the Board of Appeal’s assessment of the use of the earlier mark.

54 Accordingly, the applicant’s objection alleging that item of evidence No 32 has no evidential value must be rejected.

55 In the second place, it must be examined whether the documents produced by the intervener are sufficient for proving genuine use of the earlier mark.

56 In that context, first of all, it should be noted that 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 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 (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 34, and of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

57 As for the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).

58 In order to examine, in a particular case, whether an earlier 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. In addition, the turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, the Courts of the European Union have stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 39; of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).

59 In the present case, first, it should be noted that the till receipts provided by the intervener (item of evidence No 32), linked to the goods covered by the internal codes contained therein and which also appear in items of evidence Nos 1 to 15, show that the intervener sold articles of clothing under the earlier mark in the relevant territory, namely France, as indicated correctly in paragraphs 44 and 45 of the contested decision.

60 Furthermore, those till receipts show that the intervener sold articles of clothing in different shops in France between the end of July 2011 and the middle of August 2012, accordingly during the relevant period to show use of the earlier mark, which runs from 30 November 2007 to 29 November 2012. In the light of that circumstance and in so far as the applicant does not dispute that the till receipts in question refer in fact to goods on which the earlier mark appears and which are listed in items of evidence Nos 1 to 15, it should be held that that mark was the subject of repeated use over approximately twelve and a half months during the relevant period. That period is, contrary to what the applicant claims, sufficient, in so far as it is sufficient that a trade mark has been put to genuine use during a part of the relevant period (see judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 40, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 45).

61 Secondly, as regards the extent of the use of the earlier mark, the Board of Appeal recognised, in paragraph 47 of the contested decision, that the documents produced by the intervener do not indicate the overall volume of goods sold under the earlier mark in the relevant period. Furthermore, it found that the 500 till receipts comprising item of evidence No 32 showed sales of articles of clothing for an amount of approximately EUR 10 000. It also pointed out that that amount was merely a sample of the sales carried out in French territory and that that was sufficient for a finding that the use of the earlier mark was not fictitious and solely intended to maintain the registration of that mark.

62 The applicant claims, in essence, that, given the nature and price of the goods in question and the significant number of the intervener’s shops in France, the volume of sales demonstrated was not sufficient to prove genuine use of the earlier mark.

63 In that regard, it should first be noted that, in accordance with the case-law referred to in paragraph 42 above, 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 was registered, in order to create or preserve an outlet for those goods and services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.

64 Next, it should be noted that the till receipts provided by the intervener, interpreted in the light of the information displayed in items of evidence Nos 1 to 15, show that clothing bearing the earlier mark was sold on the relevant market and that that mark was used publicly and outwardly.

65 It is true, as the applicant maintains, that the goods at issue are articles of clothing which, taking into account their price, are everyday items.

66 However, the instances of use shown constitute use which objectively is such as to create or preserve an outlet for the goods in question and which entails a volume of sales which, in relation to the period and frequency of use, is not so low that it may be concluded that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the earlier mark.

67 Thirdly, as regards the nature of the use of the earlier mark, it should be noted that, under point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001), the proof of genuine use of a mark also includes proof of its use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.

68 The purpose of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, which avoids imposing strict conformity between the form of the trade mark used and the form in which the mark was registered, is to allow its proprietor to make, in the commercial exploitation of the sign, changes which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be limited to situations in which the sign actually used by the proprietor of a trade mark to identify goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs may be regarded as broadly equivalent, the provision in question provides that the obligation to use the registered trade mark may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgment of 12 March 2014, Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 26 and the case-law cited).

69 A finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the added elements based on the intrinsic qualities of each of those elements and the relative position of the various elements within the arrangement of the trade mark (judgment of 12 March 2014, PALMA MULATA, T‑381/12, not published, EU:T:2014:119, paragraph 30).

70 In the present case, the Board of Appeal took the view, in paragraphs 51 to 57 of the contested decision, that the use made of the earlier mark was not capable of altering its distinctive character.

71 According to the applicant, the figurative elements accompanying the use of the earlier mark in the cases reproduced in paragraph 49 of the contested decision are not insignificant and the various graphic representations of that mark in those cases do not permit the conclusion that the element ‘AD-1841-TY’ could be perceived by consumers as a mark. The applicant submits that the use of the earlier mark alters the distinctive character of that mark.

73 The figurative elements which accompany, in some of the cases in question, the use of the earlier mark do not alter the distinctive character of that mark, in so far as they are banal and incidental.

74 Moreover, it should be noted that, in the cases in question, the three principal components of the earlier mark, namely the elements ‘AD’, ‘1841’ and ‘TY’ are always present at the same time in the signs as used, although a certain difference in positioning and size and some specific stylisation may be noted.

75 In that regard, it should be noted that the specific representation of a word mark is not generally of such a nature as to alter the distinctive character of that mark as registered (see judgment of 23 September 2015, L’Oréal v OHIM — Cosmetica Cabinas (AINHOA), T‑426/13, not published, EU:T:2015:669, paragraph 28 and the case-law cited). In the present case, since the earlier mark is a word mark, it may be used with a different script. Moreover, its three principal components remain legible and identifiable in the forms used.

76 In the light of the foregoing, the Board of Appeal did not err in finding that proof of genuine use of the earlier mark had been furnished in the present case.

77 It is therefore necessary to reject the second part and accordingly the first plea in law in its entirety.

The second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

78 In support of its second plea in law, the applicant argues that the Board of Appeal committed errors in its analysis of the likelihood of confusion. First, it submits that the analysis of the similarity between the signs at issue carried out by the Board of Appeal is incorrect. Secondly, it maintains that the marks at issue peacefully co-existed over a certain period, which reduces the likelihood of confusion between them.

79 Pursuant to Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, upon application by the proprietor of an earlier trade mark, a trade mark is to be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the two marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), the term ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

80 According to the case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

81 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

82 The question whether, in the present case, there is a likelihood of confusion, as found by the Board of Appeal between the contested mark and the earlier mark must be examined in the light of those considerations.

83 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

84 In the present case, since the earlier mark is a French mark and the goods in question are everyday consumer goods, the Board of Appeal was correct in finding that the relevant public is made up of the average consumer, who is reasonably well informed and reasonably observant and circumspect, belonging to the general public on French territory, which, moreover, is not disputed by the applicant.

85 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

86 In the present case, the Board of Appeal took the view, rightly and without being challenged, moreover, on that point by the applicant, that the goods covered by the contested mark, in Class 25, were partly identical and partly similar to those, in the same class, for which the earlier mark must be regarded as registered in the light of the evidence submitted by the intervener.

87 It should be noted that, according to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 15 October 2015, Wolverine International v OHIM — BH Stores (cushe), T‑642/13, not published, EU:T:2015:781, paragraph 49 and the case-law cited).

88 Moreover, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant elements. The perception of the marks by the consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

89 In the present case, first, in terms of the visual comparison, the Board of Appeal considered the signs at issue to be similar, given the presence of the same number, made up of four digits, which constitutes the single element of the contested mark and appears in the central position of the earlier mark. It also considered that the presence of the pairs of letters ‘ad’ and ‘ty’ in the earlier mark was not sufficient to remove the impression of similarity of the marks at issue, on the ground that those elements are positioned in such a way as to frame the number in question and, consequently, to draw visual attention to that number.

90 The applicant maintains that the Board of Appeal failed to appreciate that the earlier mark was twice as long as the contested mark.

91 In that regard, it must be noted that the Board of Appeal did not focus exclusively on the number ‘1841’ in its analysis. It is apparent from the contested decision that the Board of Appeal took into account the elements ‘ad’ and ‘ty’ of the earlier mark and their positioning in that mark. Furthermore, by stating that those elements are positioned in such a way as to attract attention to the number ‘1841’, it necessarily took into consideration the two hyphens separating the three elements ‘ad’, ‘1841’, and ‘ty’. Accordingly, the Board of Appeal took into consideration all the elements of the earlier mark in the context of the visual comparison of the signs at issue and, even though it attributed more weight to the numerical element, it did not regard the other elements of that mark as negligible.

92 Next, it should be noted that the Board of Appeal did not err in concluding that there was visual similarity between the signs at issue.

93 The signs at issue are partly identical, in so far as they share the element ‘1841’ which constitutes the contested mark.

94 As regards the earlier mark, it should be noted that, even though, as a general rule, signs are perceived as a whole and the relevant public does not engage in an analysis of their various details, the fact remains that, when perceiving a composite sign, it will break it down into something which has a concrete meaning.

95 In the present case, it should be noted that four-digit numbers beginning with 20, 19, 18, etc. are normally perceived by the public as referring to a year (see, to that effect, judgment of 29 October 2015, NetMed v OHIM — Sander chemisch-pharmazeutische Fabrik (SANDTER 1953), T‑21/14, not published, EU:T:2015:815, paragraph 93). Accordingly, it is very likely that the relevant public will perceive the number element in the earlier mark as referring to the year 1841.

96 That circumstance along with the position of the elements ‘ad’ and ‘ty’ at the sides in upper case and the separation of the element ‘1841’ from those elements using hyphens permit the view that that number attracts the attention of the relevant public to a greater extent in the earlier mark.

97 Accordingly, the signs at issue, taken as a whole, must be regarded, from a visual perspective, as possessing, at the very least, an average degree of similarity, the element that they have in common not being outweighed by sufficient differences.

98 Secondly, from a phonetic perspective, the Board of Appeal took the view that the signs at issue were similar, given the significant impact of the sound of the number ‘1841’ which features and is pronounced in both cases.

99 The applicant claims that the Board of Appeal did not take into consideration the fact that the relevant consumer will pronounce all the elements of the earlier mark and maintains, in essence, that the additional elements ‘ad’ and ‘ty’ of that mark differentiate the signs at issue from a phonetic point of view.

100 In that regard, it should be noted, as EUIPO and the intervener maintain, that the applicant’s arguments are based on a misreading of the contested decision. The Board of Appeal did not consider that the elements ‘ad’ and ‘ty’ of the earlier mark were negligible from a phonetic point of view. It merely concluded that the signs at issue displayed a certain degree of phonetic similarity since they share the same number, ‘1841’, which has a particularly lengthy pronunciation.

102 The signs at issue coincide in the presence of the element ‘1841’, which is pronounced in the same way.

103 Furthermore, it is very likely that the relevant public will pronounce the earlier mark, without the hyphens as ‘adé mille huit cent quarante-et-un téigrec’. Given the lengthy pronunciation of the element ‘1841’, contrary to what the applicant claims, the pronunciation of the elements ‘ad’ and ‘ty’ is not sufficient to outweigh the phonetic similarity identified by the Board of Appeal between the signs at issue. Accordingly, those signs cannot be considered to be phonetically different.

104 Thirdly, from a conceptual point of view, the Board of Appeal found that there was a certain degree of similarity between the signs at issue, in so far as they share the number ‘1841’, which alludes to a year in the 19th century. It stated that it was not unusual for dates to appear on goods since they can be used to indicate the age and, accordingly, the prestige of a company.

105 The applicant disputes, in essence, the existence of conceptual similarity between the signs at issue. According to the applicant, the relevant public does in fact identify the number ‘1841’, which comprises the contested mark, as a year. However, it claims that the earlier mark does not allude to the same idea, since it is more likely that a French consumer will consider that that mark refers to a car number plate. It maintains that, in France, vehicles are numbered sequentially at national level from AA-001-AA to ZZ-999-ZZ.

106 It should be noted that the contested mark, comprising the single number ‘1841’, is understood by the relevant public as referring to the year corresponding to that number. In that regard, it is necessary to uphold the Board of Appeal’s assessment that that year serves, in essence, as an indication of the prestige of the company. By using realistic and common dates, the companies in question generally wish to refer to the year of their founding, or, from an advertising perspective, the tradition and durability of their goods bearing the mark in question (judgment of 29 October 2015, SANDTER 1953, T‑21/14, not published, EU:T:2015:815, paragraph 93).

107 As regards the earlier mark, similar considerations apply. As stated in paragraphs 94 and 95 above, the relevant public will perceive the number in the earlier mark as referring to the year 1841. It should also be noted that only the element ‘1841’ is likely to have meaning for the relevant public, while the other word elements ‘ad’ and ‘ty’ have no clear and specific meaning for the same public.

108 Accordingly, in so far as the marks at issue coincide in terms of the element ‘1841’, they display a certain degree of conceptual similarity, which was correctly noted by the Board of Appeal.

109 That finding cannot be called into question by the applicant’s argument concerning the association between the earlier mark and car registration numbers in France.

110 In that regard, it should be observed, first of all, that, it is true that, according to the case-law, the conceptual differences between the marks at issue may be such as to counteract to a large extent the visual and phonetic similarities between those marks. For there to be such a counteraction, however, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately and the other mark must have no such meaning or an entirely different meaning (judgment of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 93 and the case-law cited).

111 In the present case, it should be noted that the French vehicle registration system, referred to by the applicant, uses numbering which includes, in the centre, three digits. Thus, in so far as the earlier mark contains, in the centre, four digits, it is unlikely that the relevant French consumer would perceive that mark, which covers clothing goods, as a car registration number.

112 Consequently, the conditions for finding that there is a conceptual difference between the signs at issue, likely to outweigh their visual and phonetic similarities, are not satisfied.

113 Having regard to the foregoing, it is necessary to take the view that the marks at issue are similar overall.

114 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

115 The Board of Appeal considered that, in the light of the identity or similarity of the goods in question and the similarity between the signs at issue, there was a likelihood of confusion between those signs for those goods. According to the Board of Appeal, the relevant public will not remember minor differences between those signs and will more easily retain the number ‘1841’ as the dominant element and think that the contested mark is a simplified version of the earlier mark.

116 In that regard, it should be observed that there is identity or similarity between the goods in question and that the signs at issue, taken together, display an average degree of visual similarity. Furthermore, there is a certain degree of phonetic and conceptual similarity between those signs.

117 In addition, taking into account the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on an imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26), the Board of Appeal was able to find, without committing any error, that there is a likelihood of confusion between the marks at issue.

118 That finding cannot be called into question by the arguments put forward by the applicant.

119 In the first place, as regards the applicant’s argument that, in essence, the Board of Appeal was obliged to give more weight to the visual comparison in the overall analysis of the likelihood of confusion, it should be noted that, it is true that, in clothes shops, while oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually (see, to that effect, judgment of 6 October 2004, New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 50). Nevertheless, that circumstance cannot undermine the Board of Appeal’s finding regarding the likelihood of confusion, given that it has been demonstrated in paragraphs 89 to 97 above that the signs at issue are, in any event, visually similar.

120 Furthermore, as regards the alleged errors committed by the Board of Appeal in comparing the signs, it should be noted that those arguments have already been examined and, accordingly, are not capable of calling into question the findings set out in that regard in paragraphs 89 to 113 above.

121 In the second place, as regards the applicant’s argument that many companies were established in 1841, it is sufficient to state that such an argument is insufficiently precise and intelligible to undermine the analysis of the likelihood of confusion carried out by the Board of Appeal. It must therefore be rejected as inadmissible pursuant to Article 177(1)(d) of the Rules of Procedure of the General Court.

122 In the third and last place, as regards the applicant’s arguments alleging that the marks at issue coexisted, it is sufficient to observe that those arguments were not put forward during the proceedings before the adjudicating bodies of EUIPO and must therefore be rejected as manifestly inadmissible. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), with the result that it is not the Court’s function to review the elements of law and fact produced before it which have not previously been produced before the adjudicating bodies of EUIPO (see, to that effect, judgment of 17 March 2010, Mäurer + Wirtz v OHIM — Exportaciones Aceiteras Fedeoliva (tosca de FEDEOLIVA), T‑63/07, EU:T:2010:94, paragraphs 22 and 23 and the case-law cited).

123 The second plea in law must also be dismissed, as must the action in its entirety. In so far as the contested decision is upheld, there is no need to rule on the intervener’s second head of claim.

124 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs.

125 It should be noted that EUIPO has claimed that the applicant should be ordered to pay the costs incurred in the present proceedings, while the intervener has claimed that the applicant or EUIPO should be ordered to pay the costs incurred by it before EUIPO and the Court. Given that EUIPO has been successful, it is necessary to read the form of order sought by the intervener as relating only to the applicant.

126 First, as regards the form of order sought by the intervener relating to the costs incurred before the Cancellation Division, it should be borne in mind that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows that costs incurred for the purposes of the proceedings before the Cancellation Division cannot be regarded as recoverable costs (see judgment of 25 April 2013, Bell & Ross v OHIM — KIN (Wristwatch case), T‑80/10, not published, EU:T:2013:214, paragraph 164 and the case-law cited). Consequently, the intervener’s head of claim to the effect that the applicant should be ordered to pay the costs incurred before the Cancellation Division must be rejected.

127 Secondly, as regards the intervener’s claim concerning the costs of the proceedings before the Board of Appeal, it suffices to note that, since the present judgment dismisses the action against the contested decision, the costs in question continue to be governed by paragraph 3 of the operative part of that decision.

128 Thirdly, since the applicant has been unsuccessful in the present proceedings, it must be ordered to pay the costs incurred in connection with those proceedings, in accordance with the form of order sought by EUIPO and the intervener.

2. Orders Cofra Holding AG to bear its own costs and to pay those incurred, in connection with the present proceedings, by the European Union Intellectual Property Office (EUIPO) and by Armand Thiery SAS.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Cofra v EUIPO - Armand Thiery (1841) ( - Judgment) [2017] EUECJ T-233/15 (10 October 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T23315.html Cite as: [2017] EUECJ T-233/15, ECLI:EU:T:2017:714, EU:T:2017:714

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