Cases T‑910/16 and T‑911/16

Kurt Hesse

and

Wedl & Hofmann GmbH

v

European Union Intellectual Property Office

Judgment of the General Court (Fifth Chamber), 4 April 2019

(EU trade mark — Revocation proceedings — EU figurative mark TESTA ROSSA — Partial revocation — Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) — Proof of use — Outward use of the contested mark — Equal treatment)

1. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal

   (Council Regulation No 207/2009, Art. 65(2))

   (see paragraph 22)

2. EU trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment

   (Council Regulation No 207/2009, Arts 15(1) and 51(1)(a); Commission Regulation No 2868/95, Art. 1, Rule 22(3))

   (see paragraphs 28-31, 37-40, 45-47, 66, 68)

3. EU trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Genuine use — Criteria for assessment — Public and outward use of the mark — Sales of goods through franchisees and licensees — Included

   (Council Regulation No 207/2009, Arts 15 and 51(1)(a))

   (see paragraph 37-40)

Résumé

In the judgment in Hesse and Wedl & Hofmann v EUIPO — (TESTA ROSSA) (T‑910/16 and T‑911/16), delivered on 4 April 2019, the Court dismissed the actions brought against the decision of the European Union Intellectual Property Office (EUIPO) by which EUIPO had, on the basis of Article 51(1)(a) of Regulation No 207/2009, ( 1 ) revoked the rights of the proprietor of the figurative mark TESTA ROSSA in respect of some of the goods registered.

The present case arises out of the revocation proceedings between Mr Hesse (the applicant in Case T‑910/16 and intervener in Case T‑911/16) and Wedl & Hofmann (the applicant in Case T‑911/16 and intervener in Case T‑910/16). Mr Hesse had submitted that EUIPO should have confirmed the complete revocation of the contested mark, the proprietor of which is Wedl & Hofmann. Wedl & Hofmann had maintained that it had provided proof of genuine use in connection with all the goods and services in respect of which its mark had been registered and not only in connection with the goods in Classes 21 and 25.

The Court was called upon to rule on whether evidence of use that does not concern sales to end consumers, but sales to Wedl & Hofmann’s licensees and franchisees, can be regarded as evidence of genuine use. In that respect, Mr Hesse had maintained that that evidence had not proved that the goods had been distributed to end consumers and had not, therefore, established that the contested mark had been used publicly and outwardly.

In that regard, the Court pointed out that genuine use of a trade mark requires that the mark be used publicly and outwardly, but it observed, however, that that outward use does not mean that it is necessarily use aimed at end consumers. Accordingly, taking the view that outward use of a mark must consist of use aimed at end consumers would effectively mean that marks used only in inter-corporate relations are excluded from the scope of Regulation No 207/2009. Consequently, the Court held that the evidence submitted by Wedl & Hofmann, referring to sales of goods through its franchisees and licensees, was capable of establishing that the contested mark has been used publicly and outwardly.

Furthermore, the Court held that EUIPO had been right in finding, first, that the documents concerning the use of the contested mark had proved that it had not been used in a purely internal manner in connection with the goods in Classes 21 and 25 for the sole purpose of promoting the sale of other goods and, secondly, that there had been no genuine use of that mark in connection with goods and services other than the goods in Classes 21 and 25.

In addition, the Court rejected the plea alleging infringement of the principle of equal treatment regarding the assessment of genuine use depending on the size of the undertaking.

In view of all of the foregoing, the actions in Cases T‑910/16 and T‑911/16 were dismissed.

( 1 ) Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).