FCA US v EUIPO - Busbridge (VIPER) (EU trade mark - Judgment) [2018] EUECJ T-109/17 (18 October 2018)

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(EU trade mark — Invalidity proceedings — EU word mark VIPER — Earlier national word mark VIPER — Genuine use of the earlier mark — Goods for which the earlier mark has been used — Extent of use of the earlier mark — Article 57(2) and (3) of Regulation (EC) No 207/2009 (now Article 64(2) and (3) of Regulation (EU) 2017/1001))

FCA US LLC, established in City of Auburn Hills, Michigan (United States), represented by C. Morcom, QC,

European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 1 December 2016 (Case R 554/2016-1), relating to invalidity proceedings between R.D. Busbridge and FCA US,

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

having regard to the application lodged at the Court Registry on 21 February 2017,

having regard to the measures of organisation of procedure of 23 January 2018 and the applicant’s written and oral replies thereto,

1 On 9 June 2004, an application for registration of an EU trade mark was filed with the European Union Intellectual Property Office (EUIPO) 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 European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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 Classes 12, 28 and 37 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, for each of those classes, to the following description:

– Class 37: ‘Construction, repair and maintenance of motor vehicles and parts thereof’.

4 The application was published in Community Trade Marks Bulletin No 12/2005 of 21 March 2005, and, on 6 October 2005, the sign at issue was registered as an EU trade mark under No 3871101 for all the goods and services applied for. The proprietor of that mark is the applicant, FCA US LLC.

5 On 24 February 2014, Robert Dennis Busbridge (‘the applicant for a declaration of invalidity’) filed an application for a declaration of invalidity in respect of the contested mark pursuant to Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation No 2017/1001) and Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation No 2017/1001), read in conjunction with Article 8(1)(a) and (b) and Article 8(5) of that regulation (now Article 8(1)(a) and (b), and Article 8(5) of Regulation 2017/1001).

6 The marks relied on in support of the application for a declaration of invalidity were, first, the earlier United Kingdom word mark VIPER, registered on 12 November 2004 under number 1501909 for goods in Class 12 corresponding to the description ‘Sports cars; all included in Class 12’, (‘the earlier mark’) and, secondly, the mark VIPER, allegedly well known in all the EU Member States, within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as last revised at Stockholm on 14 July 1967 and amended on 28 September 1979 (United Nations Treaties Series vol. 828, No 11847 p. 108), for goods in Class 12 corresponding to the description ‘Sports cars, motor vehicles’.

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

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

9 On 28 January 2016, the Cancellation Division partially upheld the application for a declaration of invalidity and declared the contested mark invalid for ‘motor vehicles and parts thereof’ in Class 12.

10 On 23 March 2016, the applicant 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 decision of the Cancellation Division in so far as EUIPO declared the contested mark invalid for the goods in Class 12.

11 On 18 July 2016, the applicant for a declaration of invalidity lodged his observations and produced further evidence of use.

12 By decision of 1 December 2016 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.

13 In support of its decision, the Board of Appeal found, in essence, first, that genuine use of the earlier mark had been proved for ‘sports cars in kit form’, which were regarded as a subcategory of ‘sports cars’ covered by that mark, and, secondly, that the conditions for the application of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(a) and (b) of that regulation, were met as regards the goods in Class 12, covered by the contested mark. In particular, the Board of Appeal found that the goods covered by the sub-category ‘sports cars in kit form’, for which use of the earlier mark had been proved, were identical or similar to the goods in Class 12 covered by the contested mark.

14 Following clarifications provided at the hearing, the applicant claims that the Court should:

– order EUIPO to pay the costs, including those in connection with the proceedings before the Opposition Division and the Board of Appeal.

16 In support of its action, the applicant puts forward a single plea, alleging, in essence, infringement of Article 57(2) and (3) of Regulation No 207/2009 (now Article 64(2) and (3) of Regulation (EU) 2017/1001). The applicant submits that EUIPO’s adjudicating bodies erred in concluding that the applicant for a declaration of invalidity had established use of the earlier mark in respect of the goods designated by that mark, namely ‘sports cars’. In addition, the applicant argues that the evidence submitted by the applicant for a declaration of invalidity does not support the conclusion that the use of the earlier mark, as it was shown to have occurred, could be classified as genuine.

18 As a preliminary point, it should be recalled that Article 57(2) and (3) of Regulation No 207/2009 provides that the proprietor of an EU trade mark may require proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territory in which it is protected in connection with the goods or services for which it is registered and on which the application for a declaration of invalidity is based, provided that the earlier mark had been registered on that date for at least five years. 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.

19 Under Rule 22(3) 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 10(3) 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)), applicable mutatis mutandis in invalidity proceedings under Rule 40(6) of that regulation (now Article 19(2) of Delegated Regulation 2017/1430), proof of use must relate to the place, time, extent and nature of use of the earlier mark.

20 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 (see 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).

21 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 (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).

22 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).

23 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).

24 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 certain 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 (judgments 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).

25 On the other hand, 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 (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).

26 It is in the light of those considerations and the arguments submitted by the applicant that it is necessary to assess whether the Board of Appeal was correct in finding that proof of genuine use of the earlier mark had been furnished in the present case.

27 The earlier mark having been registered in the United Kingdom on 12 November 2004, less than five years before the date of publication, on 21 March 2005, of the application for registration of the contested mark, and the application for a declaration of invalidity of that mark having been lodged on 24 February 2014, the relevant period for the assessment of proof of genuine use of the earlier mark in the United Kingdom runs, in accordance with Article 57(2) and (3) of Regulation No 207/2009, from 24 February 2009 to 23 February 2014, as correctly noted by the Board of Appeal in paragraph 14 of the contested decision, without this being challenged by the applicant.

28 In addition, it should be noted that it is apparent, in essence, from the contested decision that, in view of the proof of genuine use of the earlier mark, the applicant for a declaration of invalidity provided, in the proceedings before the Cancellation Division, voluminous evidence (‘the initial evidence’), including the following from the relevant period:

– kitcar magazines from 2010, 2011, 2012 and 2013 which include articles about Cobretti Viper cars, referring to VIPER cars and advertisements for Cobretti Viper cars;

– a brochure entitled The Essential Buyer’s Guide relating to Cobra replicas from 1980 to 2011 and describing various cars, including Cobretti Viper cars;

– the first and last pages of a 2013 publication entitled Build your own kit, written by Steve Hole;

– invoices addressed to Cobretti from Silverback Publishing, dating from 2013 and 2014, and from kitcar magazine, between 2009 and 2013, and an example of advertising published in kitcar magazine;

– invoices dated 2009, 2010 and 2011, addressed to ‘Cobretti Engineering’ for the hire of stands in car showrooms and a leaflet indicating the presence of the Cobretti Viper car.

29 It also follows, in essence, from the contested decision that the applicant for a declaration of invalidity produced, before the Board of Appeal, the following additional evidence:

– a price list, an order form and a document describing a Cobretti Viper V8 car (Exhibit 1);

– an invoice from 14 June 2009, a letter from 20 May 2013, a photograph of a chassis identification plate and a photograph of a finished Viper car (Exhibit 2);

– four certificates concerning the Cobretti Viper car referring to four different chassis numbers from 2010, 2011 and 2016 (Exhibit 3);

– a ‘certificate of newness’ from 2016 and a photograph of a chassis identification plate (item 4);

– correspondence between the applicant for a declaration of invalidity and one of his clients concerning the construction of a Cobretti Viper car and an invoice dated 15 May 2013 (Exhibit 5);

– an invoice for the repair of a Cobretti Viper V8 car dated 19 March 2012, an invoice for the inspection of a COBRETTI VIPER 427 CABRIOLET, 298 VPH, dated 27 October 2011 and an invoice for the repair of a car dated 10 September 2013 (Exhibit 6);

– an invoice for the repair of a Cobretti Viper car dated 24 November 2011 (Exhibit 7);

– an invoice for the repair of a Cobretti Viper car dated 9 February 2011 and a certificate of roadworthiness (MOT certificate) concerning a vehicle of the model Viper of 15 July 2016 (Exhibit 8);

– an article published in Cobra magazine of September 2004 referring to the Viper car (Exhibit 9);

– an article published in the July 2014 edition of kitcar magazine referring to the Cobretti car and the Viper car (Exhibit 10);

– a three-page printout of the search results from a Google image search for the terms ‘cobretti viper’ dated 7 July 2016 (Exhibit 11).

30 In the contested decision, the Board of Appeal found that the initial evidence showed genuine use of the earlier mark in the United Kingdom during the relevant period for sports cars in kit form, a sub-category of sports cars (paragraphs 20 to 25 of the contested decision). It also concluded that the additional evidence strengthened and clarified the initial evidence (paragraph 30 of the contested decision).

31 As a preliminary point, first, as regards the duration of use, the applicant merely indicates that most of the initial evidence pre-dates the relevant period. In that regard, it should be noted that several documents produced before the Cancellation Division do not actually fall within the relevant period. Nevertheless, as correctly contended by EUIPO, at least the documents listed in paragraph 6 of the contested decision concern the relevant period. Accordingly, several items of evidence relate to the relevant period, without prejudice to the question whether they are sufficient to prove genuine use of the earlier mark.

32 Second, in so far as the applicant refers to an error in the contested decision as regards the goods covered by the earlier mark, it should be noted that the goods mentioned in paragraph 5 of the contested decision do not actually correspond to the goods designated by the earlier mark. However, as is apparent from paragraph 23 of the contested decision, the Board of Appeal, like the Cancellation Division, based its analysis on the correct description of the goods concerned, namely sports cars. It follows that the error relied on by the applicant has no bearing on the assessments set out in the contested decision.

33 Thirdly, in so far as the applicant submits in the application that it did not have the opportunity to comment on additional evidence of use produced by the applicant for a declaration of invalidity in the proceedings before the Board of Appeal, it is sufficient to note that the applicant does not put forward any specific arguments in support of a possible infringement of the right to be heard. In particular, it does not put forward any arguments regarding whether the proceedings before the Board of Appeal could have led to a different outcome if it had submitted argument on the evidence in question, a requirement which is clearly apparent from the case-law in order to make a finding of infringement of the rights of defence (see, to that effect, judgment of 15 July 2015, Australian Gold v OHIM — Effect Management & Holding (HOT), T‑611/13, EU:T:2015:492, paragraph 18 and the case-law cited).

34 In those circumstances, it is necessary to examine in greater detail the applicant’s arguments regarding the lack of use of the earlier mark for the goods covered by that mark and, secondly, those relating to the extent of the use of that mark.

The complaint alleging lack of use of the earlier mark for the goods covered by it

35 With respect to the use of the earlier mark for the goods covered by it, in the contested decision, the Board of Appeal found that the evidence produced by the applicant for a declaration of invalidity proved use of the earlier mark only for a subcategory of goods for which it was registered, namely ‘sports cars in kit form’. It stated that the applicant for a declaration of invalidity offered its sports cars in kit form on a niche market for car enthusiasts who were willing to attempt building their own sports car, and that, having regard to the specificities of the product and the market, ‘sports cars in kit form’ were considered to form a sub-category of ‘sports cars’, which could be viewed independently.

36 The applicant submits, in essence, that the evidence submitted by the applicant for a declaration of invalidity does not show use, in the course of trade, of the earlier mark in relation to completely assembled cars or complete component kits enabling a purchaser to assemble a car. It points out that it is clear from that evidence that the goods sold by the applicant for a declaration of invalidity are not in themselves complete kits from which it is possible to assemble cars since a donor vehicle and the motor must come from other sources.

38 First of all, it should be recalled that it is apparent from Article 57(2) and (3) of Regulation No 207/2009 that if the earlier trade mark has been used in relation to only part of the goods or services for which it is registered, it is, for the purpose of the examination of the application for a declaration of invalidity, to be deemed to be registered in respect only of that part of the goods or services. Consequently, where a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (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 36 and case-law cited).

39 In the present case, it should be noted, as EUIPO correctly submits, that the applicant does not raise any argument in the application specifically challenging the Board of Appeal’s finding that ‘sports cars in kit form’, for which the earlier mark was found to have been used, constitute an independent subcategory of the broader category of ‘sports cars’.

40 Moreover, even assuming that some of the applicant’s arguments submitted in response to the Court’s question and during the hearing are intended to call into question the Board of Appeal’s conclusion in that regard, it is sufficient to note that they are belated and therefore inadmissible.

41 Under Article 177(1)(d) and Article 84(1) of the Rules of Procedure of the General Court, the original application must contain the subject-matter of the proceedings and a summary of the pleas in law relied on; new pleas in law may not be introduced in the course of the proceedings unless they are based on matters of law or of fact which come to light in the course of the procedure. In the present case, the arguments at issue put forward by the applicant were not submitted at the application stage even though they are based on information that was already known to the applicant when the application was lodged. Moreover, those arguments do not present a sufficiently close connection with the pleas raised in the application.

42 It follows that the question whether ‘sports cars in kit form’, for which the earlier mark was found to have been used by the Board of Appeal, constitute an independent subcategory of the broader category of ‘sports cars’ does not fall within the scope of the present dispute.

43 Secondly, in so far as the applicant submits that the evidence provided by the applicant for a declaration of invalidity does not prove the use in the course of trade of the earlier mark for conventional cars, which are sold completely assembled, that argument must be rejected as ineffective, in so far as the Board of Appeal did not find such use to have occurred. Indeed, the latter merely found that the products sold under the earlier mark were sports cars in kit form which, in principle, must be assembled by the customers themselves.

44 Thirdly, the applicant submits, in essence, that the evidence submitted by the applicant for a declaration of invalidity does not show use of the earlier mark in relation to complete component kits enabling a purchaser to assemble a car.

45 The Board of Appeal found, in paragraph 20 of the contested decision, that the goods sold under the earlier mark were kit cars, although a donor vehicle was necessary in order to build a sports car called VIPER. It stated, relying in particular on the articles from specialist magazine kitcar, that the activity carried out by the applicant for a declaration of invalidity was not the sale or advertising of mere vehicle parts. In addition, it is apparent from paragraph 22 of the contested decision that the initial evidence was considered sufficient in order to conclude that the applicant for a declaration of invalidity had offered and sold kits for the building of VIPER sports cars. That conclusion, concerning the goods for which the earlier mark was used, is repeated at paragraph 30 of the contested decision, in the context of the assessments relating to additional evidence. Finally, in paragraph 25 of the contested decision, the Board of Appeal referred to particularities of sports cars proposed by the applicant for a declaration of invalidity, and to the fact that those cars were offered in a niche market for car enthusiasts seeking to build their own car.

46 As a preliminary point, it should be noted that the applicant does not dispute that ‘sports cars in kit form’ existed on the market or the fact that the market for such goods is niche. However, it denies that the evidence produced by the applicant for a declaration of invalidity proves the sale of complete component kits enabling a purchaser to assemble a complete car. It states that some parts, such as a donor vehicle and the engine, must come from other sources than the applicant for a declaration of invalidity. It also points out that the Board of Appeal incorrectly referred to the complete nature of kits sold by the applicant for a declaration of invalidity. Furthermore, the applicant submits that the Board of Appeal incorrectly relied on the definition of the term ‘kit car’ in the Oxford English Dictionary in order to conclude that the goods sold by the applicant for a declaration of invalidity corresponded to that definition.

47 In that regard, first, it must be held that the Board of Appeal correctly defined kit cars as cars which, in principle, must be assembled by the customers themselves. As EUIPO contends, these are car enthusiasts who are ready to devote considerable time and resources in order to assemble a vehicle themselves using the particular concept developed and sold by the supplier of the kit cars. Their purpose is thus to have a specific car, which may, following assembly, be deemed roadworthy. It is also apparent from articles published in specialist magazine kitcar that such cars may take several months or even years to build.

48 Therefore, kit cars have certain specificities and are, moreover, niche products, as the Board of Appeal correctly held, without being challenged by the applicant.

49 In accordance with the case-law referred to in paragraph 22 above, 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, including in particular 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 the goods or services at issue, and the characteristics of the market.

50 It follows that the Board of Appeal correctly took account, in the assessment of the genuine use of the earlier mark, of the nature of the goods for which the mark was found to have been used as well as the characteristics of the relevant market.

51 Next, it must be held that the Board of Appeal did not define, contrary to what the applicant submits, a kit car as a kit which includes all the parts necessary for assembling a car. It found that the earlier mark had been used for sports cars in kit form despite the need for, in respect of certain vehicle components, a donor vehicle.

52 Admittedly, the Board of Appeal referred, in response to the applicant’s arguments, to the ‘comprehensive nature’ of the kits proposed by the applicant for a declaration of invalidity under the earlier mark.

53 However, that fact does not make it possible to conclude that, in the present case, the Board of Appeal found that the goods sold by the applicant for a declaration of invalidity were kits containing all the components necessary to build a car.

54 In the passage in question, reference is also made to the particularities of the kit cars market, including the fact that the relevant public is composed of persons who wish to build their own car and to whom the applicant for a declaration of invalidity offers kits, the precise content of which may vary depending on the customer’s request, making it possible to build a specific car, namely the sports cars known under the trade mark VIPER.

55 It follows that the applicant’s arguments alleging the incomplete nature of kits offered by the applicant for a declaration of invalidity are based on a misreading of the contested decision.

56 The applicant’s other arguments do not call into question the Board of Appeal’s finding that the applicant for a declaration of invalidity offers sports cars in kit form in the relevant market.

57 First, as regards the question whether it is necessary that all the components of a kit car are manufactured or sold by their suppliers in order for it to be deemed that they offer a kit car on the market, it must be noted that the applicant merely indicates that the kits offered by the applicant for a declaration of invalidity do not contain all the components necessary to build a car, and does not put forward any specific arguments capable of establishing that the sale of a kit car necessarily requires the sale of kits containing all components needed for assembly of the car.

58 Furthermore, the applicant’s argument that, in essence, some elements required in order to build VIPER sports cars come from sources other than the applicant for a declaration of invalidity and hence are not sold by the latter cannot succeed, since it is apparent from the file that the kits proposed by the applicant also include components from other manufacturers, such as the engine or suspension.

59 In any event, it should be noted that even the use of the earlier trade mark for partial kits only, sold for the building of specific sports cars in kit form, namely the VIPER sports car, may be considered, taking account of the purpose of the goods, as falling within the scope of ‘sports cars in kit form’ (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 41). Accordingly, the question whether all the components of the VIPER sports cars in kit form are manufactured or sold by the applicant for a declaration of invalidity is not decisive.

60 Secondly, as regards the applicant’s argument that, in essence, the Board of Appeal relied on a dictionary definition of the term ‘kit-car’ in order to establish that the goods sold by the applicant for a declaration of invalidity were sports cars in kit form, it should be noted that it is clearly apparent from the contested decision that the Board of Appeal based its analysis on the evidence submitted by the applicant and dating from the relevant period, and, in particular, on the articles published in specialist magazine kitcar as well as on the frequent and regular insertion of advertisements concerning the earlier mark in that magazine.

61 In those circumstances, it must be held that the Board of Appeal did not err in finding that the earlier mark had been used for sports cars in kit form. Accordingly, the applicant’s complaint alleging lack of use of the earlier mark for the goods covered by it must be rejected.

62 In the contested decision, the Board of Appeal found that the initial evidence was sufficient in respect of the extent of the use of the earlier mark. It based its finding, in essence, on articles published in specialist magazine kitcar, on the frequent and regular insertion of advertisements in respect of the earlier mark in the magazine and on the presence of that mark at motor shows. In that context, the Board of Appeal took account of the particularities of the market for kit cars and stated that those particularities could have a bearing on the assessment of the evidence of use.

63 As regards the further evidence, the Board of Appeal found that it strengthened and clarified the initial evidence. It pointed out that the invoices produced were evidence of transactions by the applicant for a declaration of invalidity with seven different clients in the United Kingdom and that the items supplied provided evidence of that party’s long presence in the market for kit cars.

64 The applicant submits that the evidence produced by the applicant for a declaration of invalidity did not adequately prove genuine use of the earlier mark and disputes, in essence, the extent to which it had been used.

65 In that regard, it should be noted that, in accordance with the case-law referred to in paragraph 21 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.

66 First, in so far as the applicant submits that a large quantity of the evidence produced does not fall within the relevant period, it must be held that the initial evidence taken into account by the Board of Appeal does relate to that period.

67 Secondly, in so far as the applicant submits observations on the additional evidence, it must be noted that it neglects information that may be obtained from the initial evidence (see paragraph 28 above) which makes it possible to conclude, as found by the Board of Appeal, that the presence of the earlier mark on the market was sufficiently shown.

68 It is apparent from the initial evidence and, in particular, from the articles published in specialist kit car magazines, that the applicant for a declaration of invalidity offered and sold, during the relevant period, kits for building VIPER cars to car enthusiasts. That fact is inter alia apparent from articles referring to personal stories of customers who built such a car. Consequently, those articles are indirect evidence of the presence of the earlier mark on the market of cars in kit form.

69 In addition, it is apparent from the initial evidence that the applicant for a declaration of invalidity regularly promoted the VIPER sports car in specialist magazine kitcar during the relevant period. The initial evidence also provided sufficient evidence to show that the VIPER sports car and, therefore, the earlier mark, were present at several kit car showrooms during the relevant period.

70 Moreover, the initial evidence is corroborated by exhibits 2 and 5 produced among the additional evidence (see paragraph 29 above), since those documents constitute conclusive evidence of use of the earlier mark during the relevant period in respect of kits for the construction of a VIPER sports car.

71 In those circumstances, the evidence produced by the applicant for a declaration of invalidity, taken into account by the Board of Appeal in the context of the assessment of the extent of the use of the earlier mark, shows that kits for building VIPER sports cars were consistently sold or, at least, offered on the relevant niche market during the relevant period. It follows that the earlier mark was used publicly and outwardly.

72 Admittedly, none of the evidence pertaining to the relevant period, taken individually, demonstrates the volume of goods sold under the earlier mark, and the invoices referring, in essence, to partial kits for the construction of the VIPER sports car are few. However, given the specificities of the relevant market, it is apparent from the evidence, taken as a whole, that the earlier mark was used for the purposes of creating business opportunities and that the use shown cannot be considered symbolic or for the sole purpose of preserving the rights conferred by the mark.

73 Thirdly, in so far as the applicant reiterates that the evidence provided is not such as to prove the use of the earlier mark for assembled cars or kits making it possible to build an assembled car, it is sufficient to refer to the findings in paragraphs 43 to 59 above.

74 In the light of all of the foregoing, the applicant’s second complaint must be rejected and, consequently, the action must be dismissed in its entirety.

75 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.

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

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> FCA US v EUIPO - Busbridge (VIPER) (EU trade mark - Judgment) [2018] EUECJ T-109/17 (18 October 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T10917.html Cite as: ECLI:EU:T:2018:697, [2018] EUECJ T-109/17, EU:T:2018:697

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