Boyer v EUIPO - Philicon-97 (PHILIBON DEPUIS 1957 www.philibon.com) (EU trade mark - Judgment) [2020] EUECJ T-718/18 (10 June 2020)

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(EU trade mark — Invalidity proceedings — EU figurative mark PHILIBON DEPUIS 1957 www.philibon.com — Earlier national figurative mark PHILICON — Relative ground for refusal — Well-known trade mark within the meaning of Article 6bis of the Paris Convention — Article 8(2)(c) of Regulation (EC) No 207/2009 (now Article 8(2)(c) of Regulation (EU) 2017/1001))

European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite, A. Folliard-Monguiral, H. O’Neill and V. Ruzek, acting as Agents,

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

Philicon-97 AD, established in Plovdiv (Bulgaria), represented by V. Pavlov and M. Lazarov, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 10 October 2018 (Case R 374/2018-4), relating to invalidity proceedings between Philicon 97 and Boyer,

composed of A. Kornezov, President, E. Buttigieg and G. Hesse (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 5 December 2018,

having regard to the response of EUIPO lodged at the Court Registry on 28 March 2019,

having regard to the response of the intervener lodged at the Court Registry on 27 March 2019,

1 On 15 January 2014, the applicant, Boyer, 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 in respect of which registration was sought are in Classes 29, 31 and 32 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 29: ‘Fruit preserved in alcohol; Fruit jellies; Fruit pulp; Fruit salads; Fruit marmalade; Fruit peel; Candied fruits and vegetables; Jams made from fruits; Preserved, frozen, dried and cooked fruits and vegetables; Slices of prepared fruits’;

– Class 31: ‘Citrus fruit, fresh; Fresh fruits; Fresh fruits, in particular melons; Berries; Fresh vegetables’;

– Class 32: ‘Fruit-based beverages; Juices; Fruit-based syrups; Preparations for making beverages; Non-alcoholic fruit extracts’.

4 The trade mark application was published in Community Trade Marks Bulletin No 2014/038 of 26 February 2014, and the figurative sign PHILIBON DEPUIS 1957 www.philibon.com was registered on 5 June 2014 under number 12501466 for all of the goods referred to in paragraph 3 above.

5 On 17 April 2015, the intervener, Philicon-97 AD, filed an application for a declaration of invalidity of the registered mark in respect of all the goods concerned.

6 The application for a declaration of invalidity of the contested trade mark was based on, inter alia, the following earlier rights:

– the unregistered word mark PHILICON, well known, within the meaning of Article 6bis of the Paris Convention, in Bulgaria for the goods ‘preserved (canned) fruits and vegetables; tomato concentrates and purée; vegetable spread made mainly of tomato and peppers (lutenitsa); canned tomatoes, peppers, gherkins, sweet corn, green peas; fruit compotes' in Class 29; and for the goods ‘natural juices; fruit drinks; nectars; tomato juices' in Class 32;

– the unregistered figurative mark PHILICON in red, green and white, well known, within the meaning of Article 6bis of the Paris Convention, in Bulgaria for the goods ‘preserved (canned) fruits and vegetables; tomato concentrates and purée; vegetable spread made mainly of tomato and peppers (lutenitsa); canned tomatoes, peppers, gherkins, sweet corn, green peas; fruit compotes' in Class 29 and for the goods ‘natural juices; fruit drinks; nectars; tomato juices' in Class 32, represented below:

7 The application for a declaration of invalidity of the contested trade mark was based in particular on Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), in conjunction with Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001), in respect of the unregistered word and figurative marks referred to in paragraph 6 above, well known within the meaning of Article 8(2)(c) of Regulation No 207/2009 (now Article 8(2)(c) of Regulation 2017/1001).

8 By decision of 21 December 2017, the Cancellation Division declared the EU trade mark PHILIBON invalid for all the goods concerned, on the basis of the earlier trade marks. It pointed out, first of all, that the relevant public was the public at large. It then found, having regard to that public, that the evidence submitted by the intervener, considered as a whole, showed that the earlier marks were well known in Bulgaria within the meaning of Article 6bis of the Paris Convention for ‘preserved (canned) vegetables, namely, tomato purée and peppers, gherkins, sweet corn and green peas; tomato concentrates and purée; vegetable spread made mainly of tomato and peppers (lutenitsa); canned tomatoes, peppers, gherkins, sweet corn and green peas' in Class 29 and ‘natural juices; fruit drinks; nectars' in Class 32.

9 On 17 February 2018, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

10 By decision of 10 October 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.

11 In particular, the Board of Appeal found that the intervener had to prove that the earlier marks had acquired a well-known character for the goods concerned in Classes 29 and 32 as at the date of filing of the application for registration of the contested mark on 15 January 2014, and that such character had been preserved on the filing date of the application for a declaration of invalidity, namely on 17 April 2015 (paragraph 24 of the contested decision). In the light of the evidence provided by the intervener, in particular promotional brochures, advertising and sponsorship or donation contracts, a statement concerning the volume of sales, evidence concerning the Union of the Processors of Fruit and Vegetables in Bulgaria and a market survey, the Board of Appeal found that the two earlier marks were well known in Bulgaria within the meaning of Article 6bis of the Paris Convention for ‘preserved (canned) vegetables, namely tomato purée and peppers, gherkins, sweet corn and green peas; tomato concentrates and puree; vegetable spread made mainly of tomato and peppers (lutenitsa); canned tomatoes, peppers, gherkins, sweet corn and green peas’ in Class 29. As regards the goods in Class 32, it found that it had been proved that the earlier figurative mark was well known for ‘natural juices; fruit drinks; nectars'. According to the Board of Appeal, for those goods, the evidence did not show the use of the earlier word mark in Latin script, but rather the use of its Cyrillic transliteration. However, it stated that the Cyrillic word ‘филикон’ was a direct transliteration of the word ‘philicon’ and that the relevant public would recognise, instantly and without mental effort, that these words are identical (paragraphs 26 to 32 of the contested decision). Taking into account the identity or similarity of the goods concerned, the at least average degree of visual similarity and the high degree of phonetic similarity of the marks at issue, as well as the, at most, normal level of attention of the relevant public and the higher than average degree of distinctiveness of the earlier marks, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public (paragraphs 33 to 53 of the contested decision).

15 At the hearing on 30 January 2020, the applicant withdrew its first plea in law, alleging an error in the determination of the applicable substantive law, which was recorded in the minutes of the hearing.

16 In support of its action, as delimited in paragraph 15 above, the applicant raises a single plea in law, alleging infringement of Article 8(2)(c) of Regulation No 207/2009. It submits that the evidence provided by the intervener does not show the well-known character of the earlier marks among the relevant public. However, the applicant does not contest either the comparison of the goods and signs or the assessment of the likelihood of confusion carried out by the Board of Appeal in the contested decision.

17 According to the case-law, the public amongst which an earlier trade mark must have acquired a reputation is that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector (judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraph 24). That case-law, which relates to the notion of reputation, is also applicable to the kindred notion of well-known status (judgment of 3 May 2018, J-M.-E.V. e hijos v EUIPO — Masi (MASSI), T‑2/17, not published, EU:T:2018:243, paragraph 40; see also, by analogy, judgment of 22 November 2007, Nieto Nuño, C‑328/06, EU:C:2007:704, paragraph 17).

18 As regards the definition of the relevant public in this case, it should be noted that the Cancellation Division found, without this being called into question by the Board of Appeal, that the relevant sector of the public was the public at large in Bulgaria. This is not contested by the parties.

19 Accordingly, it must be examined whether the Board of Appeal correctly concluded that the intervener had shown to a requisite legal standard that the earlier marks were well known in Bulgaria within the meaning of Article 6bis of the Paris Convention amongst the general public.

20 In that regard, it should be recalled that, according to Article 53(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid, on application to EUIPO or on the basis of a counterclaim in infringement proceedings, where there is an earlier trade mark as referred to in Article 8(2) of that regulation and the conditions set out in paragraph (1) or (5) of that article are fulfilled.

21 Article 8(2)(c) of Regulation No 207/2009 includes within the concept of an earlier trade mark those marks which are well known within the meaning of Article 6bis of the Paris Convention.

‘The countries of the Union [for the protection of industrial property] undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trade mark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods …’

23 It is clear from that provision that well-known marks within the meaning of Article 6bis of the Paris Convention are marks which, on the basis of their reputation in the territorial area at issue and, irrespective of whether proof of registration is provided, enjoy protection against a likelihood of confusion (judgment of 11 July 2007, Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraph 51).

24 Since Article 8(2)(c) of Regulation No 207/2009 refers to trade marks which are ‘well known in a Member State, in the sense in which the words “well known” are used in Article 6bis of the Paris Convention’, it is necessary, in order to ascertain how the existence of a well-known mark can be proved, to refer to the guidelines for the interpretation of that article (judgment of 17 June 2008, El Corte Inglés v OHIM — Abril Sánchez and Ricote Saugar (BoomerangTV), T‑420/03, EU:T:2008:203, paragraph 79).

25 Under Article 2 of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, adopted by the Assembly of the Paris Union and the General Assembly of the World Intellectual Property Organisation (WIPO) at the 34th series of meetings of the assemblies of the Member States of WIPO (20 to 29 September 1999), in determining whether a mark is a well-known mark within the meaning of the Paris Convention, the competent authority can take into account any circumstances from which it may be inferred that the mark is well known, including: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of any use of the mark; the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent to which they reflect use or recognition of the mark; the record of successful enforcement of rights in the mark, in particular, the extent to which the mark has been recognised as well known by competent authorities; the value associated with the mark (judgment of 17 June 2008, BoomerangTV, T‑420/03, EU:T:2008:203, paragraph 80).

26 Article 2(1)(c) of the joint recommendation referred to in paragraph 25 above states that those factors are ‘guidelines to assist the competent authority to determine whether the mark is a well-known mark [and] are not pre-conditions for reaching that determination’, that ‘the determination in each case will depend upon the particular circumstances of that case’, that, ‘in some cases all of the factors may be relevant’, ‘in still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not listed in [paragraph 25] above’, and that ‘such additional factors may be relevant, alone, or in combination with one or more of the factors listed in [paragraph 25] above’.

27 Furthermore, since the Court of Justice has held, in the judgment of 22 November 2007, Nieto Nuño (C‑328/06, EU:C:2007:704, paragraph 17), that well-known status is a kindred concept to that of reputation, regard must be had to the assessment criteria laid down by the Court of Justice for reputation, a concept which is referred to in Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) (judgment of 3 May 2018, MASSI, T‑2/17, not published, EU:T:2018:243, paragraph 52).

28 In that regard, it must be inferred from the judgment of 14 September 1999, General Motors (C‑375/97, EU:C:1999:408), that a trade mark cannot be required to be known by a given percentage of the defined public. In examining the degree of knowledge required in respect of a well-known trade mark or a trade mark which has acquired a reputation, all the relevant facts of the case must be taken into consideration, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. Furthermore, a trade mark cannot be required to have a reputation or well-known status ‘throughout’ the territory of the Member State. It is sufficient for it to exist in a substantial part of it (see, by analogy, judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraphs 24 to 28).

29 In the present case, the applicant, in essence, calls into question the evidential value of some of the evidence presented by the intervener, on the ground that it is insufficient. In particular, it criticises the Board of Appeal for not having pointed out the presence of the sign FRESH on some items of evidence. The applicant claims that the Board of Appeal also ignored the fact that certain activities to promote the earlier marks were local whereas those of national scope concerned short periods of time. Furthermore, the contested decision does not state the reasons why the market study provided by the intervener would have made it possible in the present case to establish the well-known status of the earlier marks.

31 It should be noted from the outset that, first, as the Board of Appeal found in paragraph 24 of the contested decision, the relevant dates for the purposes of establishing the reputation of the earlier marks are the filing dates of the application for registration of the contested mark, 15 January 2014, and of the application for a declaration of invalidity, 17 April 2015. According to the case-law, a document drawn up some time before or after those dates may contain useful information, in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on whether the relevant period is close to or distant from those dates (see, to that effect, judgment of 16 December 2010, Rubinstein v OHIM — Allergan (BOTOLIST), T‑345/08 and T‑357/08, not published, EU:T:2010:529, paragraph 52 and the case-law cited).

32 Second, several of the applicant’s criticisms of the evidence filed by the intervener before the Board of Appeal are based on the fact that it merely identified the types of goods concerned in respect of which the intervener submitted evidence, without verifying which of the marks which it is claimed are well known was affixed to those goods, even though different signs would have been affixed to those goods, namely the earlier word mark, the earlier figurative mark, the indication ‘Philicon 97 AD’ or the sign represented below:

33 In that respect, it is worth examining whether the elements of difference between the earlier word mark and the earlier figurative mark are of such importance that they prevent the relevant public from continuing to perceive the goods in question as coming from the same undertaking (see, to that effect, judgment of 17 March 2015, Spa Monopole v OHIM — South Pacific Management (Manea Spa), T‑611/11, not published, EU:T:2015:152, paragraphs 76 to 86).

34 In the present case, as correctly argued by both EUIPO and the intervener, the distinctive character of the earlier figurative mark derives principally from its word element ‘philicon’, which is the element to which the relevant public will refer, whether in respect of the earlier word mark or the earlier figurative mark. The typeface used for the earlier figurative mark is decorative. That font allows the word element ‘philicon’ to be clearly visible and perfectly intelligible. Furthermore, it is undisputed that the representation of a tomato will be perceived by the relevant public either as an allusion to the letter ‘o’, due to its round shape, or as a description of certain goods covered by the trade mark in question. The figurative elements do not therefore deprive the word element ‘philicon’ of its distinctive and dominant character in the earlier figurative mark. The same applies to the sign PHILICON as represented in paragraph 32 above. As regards the sign ФИЛИКОН, also present in the evidence, it must be held, as stated by the Board of Appeal, that the word ‘филикон’ is a transliteration of the word mark PHILICON and that the relevant Bulgarian public will perceive, instantly and without mental effort, the words ‘philicon’ and ‘филикон’ as being identical. Therefore, the differences between the earlier word and figurative marks and those marks and their variants do not prevent the relevant public from continuing to perceive the goods concerned as coming from the same undertaking, namely the intervener.

35 In those circumstances, the Board of Appeal could, without committing an error of law, consider the earlier marks and the signs referred to in paragraph 32 above to be broadly equivalent and, therefore, examine together the evidence submitted by the applicant comprising those marks and those signs.

36 It is in the light of those preliminary observations that the evidential value of the evidence provided by the intervener must be examined. That evidence is summarised in paragraph 4 of the contested decision (Annexes 2 to 7 to the intervener’s observations in the administrative proceedings).

37 Thus, Annex 2 to the intervener’s observations in the administrative proceedings consists of the following documents:

– three certificates dated 2004, 2005 and 2008 from the Union of the Processors of Fruit and Vegetables in Bulgaria with a translation into English, which state that the intervener has been a member of the organisation since 1999;

– an undated printout from the website of the Union of the Processors of Fruit and Vegetables in Bulgaria showing its members list in which the intervener appears;

– a statement dated 26 May 2015, signed by the intervener’s chief accountant, with a translation into English, indicating the quantities of goods sold under the earlier marks from 2008 to 2014 in Bulgaria, those goods including fresh juice, preserved vegetables, ketchup, compotes, gherkins (pickled cucumbers), lutenitsa (vegetable spread made of tomato and pepper), jams and marmalades, sauces and tomato puree.

38 Annex 3 to the intervener’s observations in the administrative proceedings contains the following evidence:

– eight forms of the wholesaler METRO for confirmation of prices during promotion periods in 2013 for lutenitsa, tomato puree, pickled cucumbers, preserved tomato dices and preserved red peppers, which refer to the intervener as a supplier, and printouts of METRO product brochures from 2013 showing that lutenitsa, tomato puree and pickled cucumbers had been marketed under the earlier marks, the prices being in Bulgarian leva (BGN);

– three forms from the supermarket chain Billa for confirmation of prices fixed for promotion periods in the years 2011 and 2014 in respect of tomato puree and preserved red peppers, which refer to the intervener as a supplier, and printouts of Billa product brochures from 2013 showing that tomato puree and preserved red peppers had been marketed under the earlier marks, the prices being in BGN;

– two contracts for advertising in the weekly brochures of the Kaufland supermarkets, dated 21 December 2011 and 12 September 2012, signed by the intervener, showing a weekly circulation of 1.3 million copies and 3.7 million weekly readers of each brochure, and, as correctly noted by the Board of Appeal in paragraph 4 of the contested decision, printouts of brochures of products in Kaufland supermarkets for the years 2011 and 2012 showing nectars and fruit juices associated with the sign FRESH and the earlier figurative mark, the prices being in BGN;

– six contracts for advertising in the weekly brochures of the Fantastiko supermarkets, dated 2012 and 2013, printouts of brochures of goods in Fantastiko supermarkets for 2012 and 2013 showing tomato puree, fruit compotes, preserved green peas and sweet corn marketed, as noted by the Board of Appeal, ‘under the [sign] ФИЛИКОН (PHILICON in Cyrillic script) and [the earlier figurative mark]’, and lutenitsa and tomato puree marketed, as noted by the Board of Appeal, under ‘the signs PHILICON, ФИЛИКОН and [PHILICON as represented in paragraph 32 above]’, the prices being in BGN;

– extracts from promotional brochures of the МАГАЗИНЪ 345 supermarket, from 2008 and 2009, which show tomato puree, preserved red peppers, green peas, sweet corn and pickled cucumbers marketed, as noted by the Board of Appeal ‘under [the sign] ФИЛИКОН and [the earlier figurative mark]’, and, as noted by the Board of Appeal, nectars and fruit juices associated with the sign FRESH and the earlier figurative mark, the prices being in BGN;

– a number of METRO promotional brochures from 2008 and 2009 showing lutenitsa, pickled cucumbers, preserved vegetables, tomato puree and tomato juice marketed under the earlier marks, tomato puree and tomato juice marketed, as noted by the Board of Appeal, ‘under the signs PHILICON and [PHILICON as represented in paragraph 32 above]’, as well as fruit juices and nectars associated with the sign FRESH and the earlier figurative mark, as also noted by the Board of Appeal, the prices being in BGN;

– printouts of more than 70 product brochures of the retail chains METRO, Billa, CBA, Kaufland and Fantastiko for the period from 2010 to 2013, which show lutenitsa, pickled cucumbers, ketchup, tomato puree, preserved green peas, preserved sweet corn, preserved tomato dices, preserved red peppers, preserved mushrooms, peppers puree marketed, as noted by the Board of Appeal, ‘under the [sign] ФИЛИКОН and [the earlier marks]’, lutenitsa, tomato puree and pickled cucumbers marketed, as noted by the Board of Appeal, ‘under the signs ФИЛИКОН, PHILICON and [PHILICON as represented in paragraph 32 above]’, as well as, as the Board of Appeal correctly pointed out, nectars and fruit juices associated with the sign FRESH and marketed ‘under the [sign] ФИЛИКОН and [the earlier figurative mark]’, the prices being in BGN;

– a declaration signed on 6 July 2015 by the person responsible for translating into English the Bulgarian terms used in the product descriptions of all brochures.

39 Annex 4 to the intervener’s observations in the administrative proceedings contains the following documents:

– a contract with the Municipality of Plovdiv (Bulgaria), dated 8 October 2002, for outdoor advertising for a period of three years, signed by the intervener, with photographs of three advertising banners bearing the earlier figurative mark attached thereto, two of them relating to fruit juices;

– a statement signed by the Commercial Director of the intervener on 20 April 2015 in which he states that the television commercials in Annex 7 to the intervener’s observations in the administrative proceedings were broadcast on various national television channels in the period from 2008 to 2009;

– four contracts signed by the intervener in relation to the broadcasting of television advertisements in the period from 2008 to 2009 for natural juices associated with the sign FRESH and the earlier marks, and lutenitsa, associated with the earlier marks, on various television channels in Bulgaria, including national channels Nova TV and bTV;

– a statement signed by the Commercial Director of the intervener on 20 April 2015, in which he confirms the advertising of products associated with the earlier marks on public transport vehicles in the Bulgarian cities of Plovdiv, Varna and Bourgas for the period from 2008 to 2009;

– six contracts with transport companies, signed by the intervener, and photographs of public transport vehicles on which the earlier figurative mark and the sign www.philicon.net are visible for lutenitsa and fruit juices associated with the sign FRESH, as correctly stated by the Board of Appeal.

40 Annex 5 to the intervener’s observations in the administrative proceedings comprises contracts and certificates of sponsorship or donation from the periods between 2008 and 2011 and from 2012 to 2013, with regard to the sponsorship of events and donations of products and funds to various organisations, as well as an honorary diploma issued to the intervener on 13 April 2010 for ‘best new product for the tourist sector’.

41 Annex 6 to the intervener’s observations in the administrative proceedings is a market survey entitled ‘Awareness and associations with [PHILICON] brand’, carried out by GfK Bulgaria during the period from 1 to 13 December 2014. Although the survey dates from 2014, it shows that the majority of the respondents who were aware of the ‘PHILICON brand’ had been aware of it for five or more years.

42 Annex 7 to the intervener’s observations in the administrative proceedings is a DVD containing video advertisements some of which are for lutenista and others for fruit juices. The former show the earlier figurative mark and the word ‘philicon’ can be heard. The latter show, as the Board of Appeal observed, the sign www.philicon.net, the sign FRESH and the earlier figurative mark.

43 The applicant’s arguments concerning the evidential value of that evidence are based on six key complaints.

44 First, as to the evidential value of the extracts from brochures of METRO stores (Annex 3 to the intervener’s observations in the administrative proceedings), the applicant submits that those stores are reserved to professionals and that, therefore, they do not target the relevant public. The applicant adds that those brochures do not indicate either their geographical coverage or the size of the population concerned.

45 In that respect, even if it is conceded that METRO shops are intended for professionals, it must be noted that the goods presented in those brochures are not offered in industrial quantities. On the contrary, those goods have the typical format of everyday consumer goods. They are the same goods which, according to the documents in the case, are offered in Billa or Kaufland supermarkets. As pointed out by the intervener, the professional consumer who has access to METRO stores may therefore buy those goods for his or her own household. Furthermore, as the intervener argues, those professional consumers, such as the owners of smaller shops, purchase those goods in order to sell them to end consumers. The evidence in question is therefore not devoid of all evidential value.

46 Furthermore, as regards the geographical scope and the size of the population concerned by those brochures and those of the other retail chains, the Board of Appeal noted, in paragraphs 26 and 27 of the contested decision, that the evidence included a large number of promotional brochures originating from the retail chains METRO, Billa, Kaufland, CBA, Fantastiko and МАГАЗИНЪ 345 (Annex 3 to the intervener’s observations in the administrative proceedings), showing that a variety of processed fruit and vegetable products had been offered for sale under the signs PHILICON, ФИЛИКОН, PHILICON in red, green and white and PHILICON as represented in paragraph 32 above during the period from 2008 to 2013. The Board of Appeal rightly pointed out that the advertising contracts with the Kaufland stores indicated that each of those promotional brochures was distributed in 1.3 million copies and was read by 3.7 million weekly readers. Considering that METRO, Billa, CBA and Kaufland stores were among the largest retail chains in Bulgaria, the Board of Appeal could rightly find, without committing any error of assessment, that the evidence confirmed that the goods had been offered to a significant part of the relevant public.

47 The Board of Appeal also clarified that that evidence supported the written statement of the chief accountant produced in Annex 2 to the intervener’s observations in the administrative proceedings, which specified the quantities of processed fruit and vegetables that had been marketed under the earlier marks by year and by product in the period from 2008 to 2014. In that regard, the Board of Appeal correctly noted that the quantities of lutenitsa sold during the period from 2008 to 2014 were between 700 000 and 1.1 million units per year, while for tomato puree the volumes varied between 300 000 and 470 000 units per year and the quantities of juice sold were between 1.6 and 2.7 million units per year. It found that the quantities of the other goods mentioned, such as preserved vegetables, gherkins and ketchup, were considerable. It concluded that, for a country with a population of between 7.2 and 7.5 million in the period from 2010 to 2014, it was clear that the goods marketed under the earlier trade marks had reached a substantial part of the population of the country.

48 It is therefore apparent from the contested decision that, although the brochures in question did not all indicate their geographical scope or the size of the population concerned, the evidence, taken as a whole, duly informed the Board of Appeal about the share of the relevant public to which the goods shown in the brochures had been offered. In view of the evidence mentioned in paragraphs 26 and 27 of the contested decision, the finding of the Board of Appeal that the goods marketed under the earlier marks had reached a substantial part of the population residing in Bulgaria must be upheld. Moreover, the applicant does not contest that the retail chains in question have numerous shops located in Bulgaria.

49 Second, as regards the evidential value of the statement of the intervener’s chief accountant, the applicant claims, first of all, that it is not accompanied by any photograph or label, which the Board of Appeal should have noted, in so far as one of the earlier marks is a figurative sign.

50 In that respect, first, it should be noted that the statement in question expressly indicates that the sales volumes submitted are those of the goods marketed by the applicant under the ‘brand “PHILICON” (ФИЛИКОН)’.

51 Second, the evidence relating to the promotion of the earlier marks (Annexes 3, 4 and 5 to the intervener’s observations in the administrative proceedings) shows that both marks and their variants were used in relation to the goods concerned. Those sales volumes are therefore relevant for the examination of the recognition of the earlier word mark and that of the earlier figurative mark. In those circumstances, contrary to what is argued by the applicant, there was no need for the Board of Appeal to point out or require that that statement be accompanied by photographs or labels. Consequently, the applicant’s arguments must be rejected.

52 Next, the applicant submits that the Board of Appeal, when analysing the evidential value of the sales volumes contained in the statement of the chief accountant failed to take into consideration the presence of the 40 members of the Union of the Processors of Fruit and Vegetables in Bulgaria the list of whom was submitted to it. According to the applicant, without an indication of the volume marketed by other producers of processed fruit and vegetables in the Bulgarian market, the Board of Appeal could not find that the quantities sold by the intervener were considerable in view of the specific characteristics of the relevant market in Bulgaria.

53 In that respect, first, in paragraph 28 of the contested decision, the Board of Appeal rightly pointed out that the fact that the Union of the Processors of Fruit and Vegetables in Bulgaria, of which the intervener has been a member since 1999, had more than 40 members confirmed that the sector in question was competitive.

54 Second, it must be held, in line with what was stated by the Board of Appeal in paragraph 27 of the contested decision, that the quantities of lutenitsa, juice, preserved vegetables, gherkins and ketchup sold during the period from 2008 to 2014 were considerable in relation to the number of people living in Bulgaria. Thus, for example, the quantities of lutenitsa sold by the intervener were between 700 000 and 1.1 million units per year when the volume of juices sold ranged from 1.6 to 2.7 million units per year for a country with a population of between 7.2 million and 7.5 million inhabitants.

55 Therefore, these data, having regard to the competitive nature of the sector concerned and the number of inhabitants of Bulgaria, were sufficient for the Board of Appeal to conclude that the quantities sold by the intervener were considerable.

56 Finally, as regards the credibility of the sales volumes shown in the statement of the chief accountant, it must be noted, as was done by the Board of Appeal, that they were supported by the other items of evidence.

57 Thus, the presence of the goods concerned, bearing the earlier trade marks, in major retail chains is capable of substantiating those volumes. In fact, those chains manage several department stores that make large quantities of the same product available to their many consumers. This is all the more true where a product features on their promotional brochures. In the present case, it is clear from the documents in the case that the intervener made significant investments in promoting the products concerned in the brochures of major retail chains.

58 Similarly, the 2014 market survey according to which 40.5% of a sample of 1 000 people in the Bulgarian population knew of the earlier marks is such as to corroborate those volumes, given that such recognition is an indicator of the effective promotion or commercial success of the mark (Annex 6 to the intervener’s observations in the administrative proceedings).

59 Therefore, the applicant’s entire line of argument regarding the evidential value of the statement of the intervener’s chief accountant must be rejected.

60 Third, as to the presence of the sign FRESH on some items of evidence, the applicant emphasises that the statement of the chief accountant refers, as regards juices, to the sign FRESH. The applicant criticises the Board of Appeal for not having duly analysed it even though the METRO store brochures showed that the word ‘fresh’ was emphasised in such a way that it could be perceived as the trade mark associated with those goods.

61 It is worth noting that in the contested decision the Board of Appeal did not omit to mention, where it considered it relevant, that for some of the goods, such as juices, the earlier marks appeared alongside the sign FRESH (paragraphs 4, 27, 29 of the contested decision). Therefore, it cannot be inferred from the content of the contested decision that the Board of Appeal did not take into account the presence of the sign FRESH on some of the items of evidence in its overall assessment of the evidence filed by the intervener.

62 Furthermore, according to the case-law, there is no rule in the EU trade mark system that obliges the proprietor of a trade mark to prove the use of his or her mark on its own, independently of any other mark or sign. Two or more trade marks may be used jointly and autonomously. Thus, the joint use of a mark with the earlier mark does not, as such, undermine the function of that mark as a means of identifying the goods concerned (see, to that effect, judgment of 6 November 2014, Popp and Zech v OHIM — Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 43 and the case-law cited).

63 In the present case, it must be stated that even though the sign FRESH would be perceived as a trade mark or is emphasised on the goods concerned, it is always accompanied by the earlier trade marks.

64 In that regard, it can be noted that, according to the documents before the Court, the quantities of juice sold with the earlier figurative mark range between 1.6 million and 2.7 million units per year (Annex 2 to the intervener’s observations in the administrative proceedings). It is apparent from the brochures of the major retail chains and advertising contracts (Annexes 3 and 4 to the intervener’s observations in the administrative proceedings) that the earlier trade marks were used, in combination with the sign FRESH, in such a way that the relevant public will consider that the goods bearing, inter alia, the earlier trade marks originate from the intervener, that is to say, the proprietor of those marks.

65 It should be observed that the brochures in question show that the earlier figurative mark is affixed in a prominent position on the goods concerned. Additionally, on several brochures of different shops, the photograph of the goods concerned is accompanied by text which presents those goods as coming from the proprietor of the trade mark ФИЛИКОН (see, for example, pages 540, 541, 544, 574, 614 and 617 of EUIPO’s file). It is also apparent from the photographs of the public buses, which are attached to the advertising contracts, that the earlier figurative mark is clearly visible and occupies a non-negligible position on those buses (see pages 732, 746, 747, 755 and 761 of EUIPO’s file).

66 Accordingly, the Board of Appeal could take account, in its overall assessment, of the evidence showing the earlier marks used in conjunction with the sign FRESH.

67 Fourth, so far as the television advertisements are concerned, the applicant argues that the Board of Appeal did not examine the frequency of those advertising spots in relation to the number of television channels accessible in Bulgaria. According to the applicant, the Board of Appeal also failed to examine how advertisements limited to four months in 2008 and one month in 2009 could have met the requisite intensity requirement and established well-known character prior to 15 January 2014. Furthermore, only the earlier figurative mark appeared in those advertisements, which rules out the possibility that they may have contributed to the well-known character of the earlier word mark.

68 It must be noted that, contrary to what the applicant claims, the fact that the earlier figurative mark appears in the advertisements in question does not rule out that they may have contributed to the well-known character of the earlier word mark, for the reasons explained in paragraphs 32 to 34 above.

69 Furthermore, the Board of Appeal correctly held, in paragraph 29 of the contested decision, that Annex 4 to the intervener’s observations in the administrative proceedings showed national advertising activities on a number of television channels concerning the marketing of lutenitsa under the earlier figurative mark and fruit juice under the earlier figurative mark in conjunction with the sign FRESH and referring to www.philicon.net. It noted that the written statement of the Commercial Director of the intervener confirmed that the video advertisements in Annex 7 to the intervener’s observations in the administrative proceedings had been broadcast in the national media.

70 In the present case, it is apparent from Annexes 4 and 7 to the intervener’s observations in the administrative proceedings that the intervener made substantial advertising investments in the period from 2008 to 2009 in order for the earlier marks to appear on pay-television channels, but also for them to appear on free national television channels. As correctly noted by the Board of Appeal, that evidence shows that the video advertisements for lutenitsa and juices were broadcast during the peak viewing hours of the most popular national free television channels in Bulgaria, namely Nova TV and bTV.

71 In that regard, it is common ground that such investment in advertising alone cannot establish whether the earlier trade marks were well known on 15 January 2014. However, it should be borne in mind that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, may be insufficient to constitute proof of the accuracy of those facts (see judgment of 27 June 2019, Bodegas Altún v EUIPO — Codorníu (ANA DE ALTUN), T‑334/18, not published, EU:T:2019:451, paragraph 35 and the case-law cited).

72 The intervener’s advertising investments therefore had to be assessed in the light, in particular, of sales volumes (Annex 2 to the intervener’s observations in the administrative proceedings, see paragraphs 49 to 54 above) and the results of the market survey (Annex 6 to the intervener’s observations in the administrative proceedings, see paragraphs 85 and 86 below). It is apparent from the contested decision that the Board of Appeal did indeed carry out an overall assessment of the evidence submitted by the intervener. Furthermore, there is nothing in the contested decision to suggest that the Board of Appeal failed to take into account the fact that the video advertisements were broadcast for four months in 2008 and one month in 2009. It duly set out the facts and legal considerations which are of decisive importance to the context of the contested decision (see, to that effect, judgments of 12 November 2008, Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T‑7/04, EU:T:2008:481, paragraph 81; and of 25 October 2012, riha v OHIM — Lidl Stiftung (VITAL&FIT), T‑552/10, not published, EU:T:2012:576, paragraph 26).

73 The applicant’s line of argument as regards the television advertisements must therefore be rejected, without prejudice to the subsequent overall assessment of all the evidence below.

74 Fifth, as regards the other documents relating to the promotion of the earlier marks, the applicant submits that advertising on public roads and buses as well as sponsorships and donations are limited to local actions around the city of Plovdiv. The applicant maintains that the Board of Appeal failed to analyse how those documents, in view of their date and local character, could contribute to establishing the well-known character of the earlier marks.

75 In the present case, the documents before the Court show that the Board of Appeal rightly considered that Annex 4 to the intervener’s observations in the administrative proceedings showed advertising activities on public buses in three of the larger cities in Bulgaria, namely Plovdiv, Varna and Bourgas, and not, as argued by the applicant, only around the city of Plovdiv. The documents in the case also show that the advertising contracts in question were signed for a term of one year, during which the buses concerned operated in the cities in question almost entirely covered by promotional posters. That fact, together with the population density of the three cities mentioned above, was an indication of the number of consumers likely to have been in contact with the earlier marks. That indication was therefore relevant to the Board of Appeal’s overall assessment of the evidence.

76 Moreover, there is nothing in the contested decision to suggest that the Board of Appeal failed to assess that evidence in the light of the date of that evidence, in accordance with the case-law cited in paragraph 31 above, and the cities to which it related. On the contrary, it duly set out the facts and legal considerations of decisive importance to the context of the contested decision. Moreover, it merely noted that Annex 5 to the intervener’s observations in the administrative proceedings proved that the intervener had sponsored a number of events, without drawing any specific conclusions.

77 Furthermore, as regards the information relating to the advertising banners on public roads, it should be noted that the Board of Appeal correctly found, in paragraph 26 of the contested decision, that, having regard to that information, the intervener had been involved in the promotion and advertising of products marketed under the earlier trade marks since at least 2002. Although that information is, admittedly, insufficient to demonstrate the relevant public’s knowledge of the earlier marks, it is such as to establish that, by the date of filing of the contested mark, the relevant public could have been familiar with the goods concerned for a period of at least nine years.

78 Consequently, and without prejudice to the subsequent overall assessment of the evidence, the applicant’s arguments with regard to advertising on public roads and buses as well as sponsorships and donations are unconvincing and must be rejected.

79 Sixth, as regards the market survey, the applicant claims that it does not contain either the earlier figurative mark or the sign PHILICON as represented in paragraph 32 above. It criticises the Board of Appeal for being satisfied with a survey that posed leading questions and whose results were unconvincing. Furthermore, according to the applicant, that survey did not contain the exact list of goods in respect of which the Board of Appeal found that the well-known character of the earlier marks was established. The applicant also questions the credibility of the percentages presented in Table X2.

80 First, contrary to the applicant’s contention, the fact that the earlier figurative mark and the sign PHILICON, as represented in paragraph 32 above, do not appear in that study is irrelevant, for the reasons set out in paragraphs 33 to 34 above.

81 Next, it should be noted that, in paragraph 30 of the contested decision, the Board of Appeal considered that the results of the market survey gave at least an indication of the awareness of the PHILICON mark among the relevant public and that those results had to be assessed together with the other evidence which, in itself, was already convincing.

82 Therefore, the Board of Appeal did not merely rely on the market survey in order to find that the well-known character of the earlier marks had been established for the goods concerned. Moreover, it rightly considered that the results of the market survey gave at least an indication of the awareness of the PHILICON mark among the relevant public.

83 It must be borne in mind that, in order to satisfy the condition relating to well-known character, an earlier mark must be known by a significant part of the relevant public, without it being necessary for that mark to be known by a given percentage of the public in question (see, to that effect and by analogy, judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraphs 24, 25 and 27 to 29).

84 In the present case, it must be noted, as was done by the Board of Appeal, that the market survey provided by the intervener was carried out in December 2014 by an independent company among 1 000 members of the Bulgarian population, aged 15 years or more. The survey provides details of the gender of the respondents, their age group and place of residence. It also specifies the questions put to them.

85 As the Board of Appeal noted in the contested decision, in response to the first question entitled ‘Do you know the brand PHILICON and if yes approximately from how long?’, corresponding to Table X1, 40.5% of the participants replied that they had been aware of the mark, that percentage rising to 50% or more for persons aged between 30 and 49, that is to say, the most economically active part of the population. Most of the respondents who were aware of the PHILICON brand had been aware of it for five or more years.

86 For the second question of the survey, corresponding to Table X2, participants were asked to indicate which of the following goods they associated with that PHILICON mark: canned fruits and vegetables, tomato products, juices, confectionery and dairy products.

87 In that regard, first, contrary to the applicant’s contention, the question referred to in paragraph 86 above cannot be regarded as ‘leading’ in so far as it offers respondents a multiple choice between several goods, some of which are not covered by the earlier marks. The respondents are therefore not ‘led’, as they do not have to choose only from goods covered by those marks.

88 Second, the fact that the market survey does not contain the exact list of goods in respect of which the Board of Appeal found that the well-known character of the earlier marks was established is, contrary to the applicant’s argument, irrelevant. As EUIPO rightly points out, the market survey refers to general categories of processed fruit and vegetables, namely canned fruit and vegetables, tomato products and juices. The other items of evidence, including various promotional materials (Annexes 3 and 4 to the intervener’s observations in the administrative proceedings), specified goods for which the earlier marks were actually used, either preserved vegetables (namely, tomato puree and peppers, gherkins, sweet corn and green peas), tomato concentrates and puree, lutenitsa, canned tomatoes, peppers, gherkins, sweet corn and green peas, natural juices, fruit drinks and nectars. All of those goods are covered by the abovementioned general categories.

89 As regards the decision of the Second Board of Appeal in Case R 925/2010-2 relied on by the applicant in support of its arguments, it must be noted that the survey produced before that board did not clearly indicate which questions had been asked and did not specify for which goods the mark was known. Therefore, the evidential value of the survey in Case R 925/2010-2 is undoubtedly not comparable to that of the market survey provided by the intervener in the present case. Furthermore, according to settled case-law, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 as interpreted by the EU judicature and not on the basis of a previous decision-making practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited), and, although the reasons of fact or of law contained in an earlier decision may constitute arguments to support a plea alleging infringement of a provision of Regulation No 207/2009 (see judgment of 14 November 2007, Castell del Remei v OHIM — Bodegas Roda (CASTELL DEL REMEI ODA), T‑101/06, not published, EU:T:2007:340, paragraph 65 and the case-law cited), the applicant has not shown that the factual and legal situation giving rise to Case R 925/2010-2 was comparable to that in the present case. The decision of the Second Board of Appeal relied on by the applicant is therefore irrelevant to the present case.

90 Finally, as regards the applicant’s argument that the percentages shown in Table X2 exceed 100%, it must be noted that, as the intervener rightly points out, consumers could, in the present case, indicate an awareness of the PHILICON mark for more than one category of goods. That argument must therefore be rejected.

91 Consequently, the applicant’s entire line of argument regarding the market survey is unconvincing and must be rejected.

92 Moreover, the mere fact that, in accordance with the market survey provided by the intervener, only 5.5% of those questioned associated the PHILICON brand with juices could not, in itself, call into question the Board of Appeal’s findings as to the well-known character of the earlier marks, including those relating to juices in Class 32, in so far as, as has already been noted, the Board of Appeal did not base its findings on the well-known character of the earlier marks on that market survey alone, but on an overall assessment of the multiple items of evidence submitted by the intervener, several of which establish to the requisite legal standard the well-known character of the earlier trade marks for juices (see, in particular, paragraph 37, third indent, above, paragraph 38, third, fifth to seventh indents, above and paragraph 39, first and third to fifth indents, above).

93 Having regard to the foregoing and to the outcome of the overall assessment of the evidence referred to in paragraphs 37 to 42 above, it must be held that the intervener provided detailed information about the knowledge of the earlier marks, the intensity, geographical extent and duration of their use and the investments made for their promotion, showing that they were known by a significant part of the relevant public. The Board of Appeal was therefore entitled to conclude, in paragraphs 31 and 32 of the contested decision, that the well-known character of the earlier marks in Bulgaria was established for the goods referred to in paragraph 11 above amongst the relevant public.

94 The Court finds, having regard to the evidence and all of the foregoing considerations, that the intervener demonstrated to the requisite legal standard that the earlier word mark and the earlier figurative mark were well known in Bulgaria in the sense of Article 6bis of the Paris Convention for ‘preserved (canned) vegetables, namely, tomato purée and peppers, gherkins, sweet corn and green peas; tomato concentrates and puree; vegetable spread made mainly of tomato and peppers (lutenitsa); canned tomatoes, peppers, gherkins, sweet corn and green peas’ in Class 29 and ‘natural juices; fruit drinks; nectars’ in Class 32.

95 Therefore, the single plea in law, alleging infringement of Article 8(2)(c) of Regulation No 207/2009, must be rejected and the action dismissed in its entirety, and there is no need to rule on the admissibility of the applicant’s second head of claim.

96 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Boyer v EUIPO - Philicon-97 (PHILIBON DEPUIS 1957 www.philibon.com) (EU trade mark - Judgment) [2020] EUECJ T-718/18 (10 June 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T71818.html Cite as: EU:T:2020:257, ECLI:EU:T:2020:257, [2020] EUECJ T-718/18

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