JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

20 July 2017 (*)

(EU trade mark — Revocation proceedings — EU figurative trade mark Art’s Cafè — Genuine use of the mark — Article 15(1) and Article 51(1) of Regulation (EC) No 207/2009)

In Case T‑309/16,

Cafés Pont, SL, established in Sabadell (Spain), represented by E. Manresa Medina and J. Manresa Medina, lawyers,

applicant,

v

European Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,

defendant,

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

Giordano Vini SpA, established in Diano d’Alba (Italy), represented by F. Jacobacci and L. Ghedina, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 1 April 2016 (Case R 1110/2015-2), relating to revocation proceedings between Giordano Vini and Cafés Pont,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias (Rapporteur), President, A. Dittrich and P. G. Xuereb, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 19 June 2016,

having regard to the response of EUIPO lodged at the Court Registry on 5 December 2016,

having regard to the response of the intervener lodged at the Court Registry on 28 November 2016,

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

gives the following

Judgment

1        On 29 December 2006, the applicant, Cafés Pont, SL, filed an application for registration of an EU trade mark with the European 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 EU trade mark (OJ 2009 L 78, p. 1)).

2        Registration as a mark was sought for the following figurative sign:

3        The goods and services in respect of which registration was sought are in Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:

–        Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.’

4        The mark in dispute was registered on 4 January 2008.

5        On 1 July 2014, the intervener, Giordano Vini SpA, filed an application for revocation of the mark at issue pursuant to Article 51(1)(a) and Article 56(1) of Regulation No 207/2009 in respect of all of the goods referred to in paragraph 3 above.

6        By decision of 29 April 2015, the Cancellation Division revoked the mark at issue as from 1 July 2014, on the ground that it had not been genuinely used in a form which did not differ from the registered mark by elements altering its distinctive character. Furthermore, the Cancellation Division dismissed the applicant’s arguments based on the alleged bad faith of the applicant for revocation.

7        On 9 June 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

8        By decision of 1 April 2016 (‘the contested decision’), the Board of Appeal dismissed the appeal. Since the mark at issue was registered on 4 January 2008 and the application for revocation was filed on 1 July 2014, the Board of Appeal found that the applicant was required, pursuant to Article 51(1)(a) of Regulation 207/2009, to show genuine use for a period between 1 July 2009 and 1 July 2014. The Board of Appeal observed, first of all, that none of the evidence relied on by the applicant reproduced the mark in the form in which it had been registered. However, in accordance with Article 15(1)(a) of Regulation No 207/2009, the Board of Appeal examined whether the mark at issue had been used in a form differing in elements which did not alter the distinctive character of the mark in the form in which it had been registered. In that regard, the Board of Appeal pointed out that the applicant relied on two types of evidence in order to demonstrate the use of the mark at issue. These are, first, the invoices and, second, the figurative elements reproduced below:

and

9        According to the Board of Appeal, those elements concern solely the product ‘coffee’, to the exclusion of the other goods for which the mark at issue has been registered (see paragraph 3 above).

10      As regards the figurative elements reproduced in paragraph 9 above, the Board of Appeal considered, next, that the word sign Art’s Cafè was used in a form which, because of its very small relative size and the absence of the atypical stylisation characterising the mark at issue altered the distinctive character of the mark such as it had been registered. Consequently, according to the Board of Appeal, that evidence does not demonstrate genuine use of that mark within the meaning of Article 51(1)(a) of Regulation No 207/2009. The Board of Appeal arrived at the same result as regards the invoices produced by the applicant, since they contain solely the reference ‘Café molido Art’s Cafè 250 g’ in the part reserved for the description of the goods sold. Having regard to the absence of any figurative element reminiscent of the form in which the mark at issue was registered and the addition of the expressions ‘café molido’ and ‘250 g’, such a reference cannot be regarded as a use of the mark at issue such as it has been registered within the meaning of Article 51(1)(a) of Regulation No 207/2009, read in conjunction with Article 15(1)(a) of that regulation. The Board of Appeal added that, in any event, the extent of the use of the trade mark demonstrated by the invoices was very limited. In those circumstances, the affidavit from the applicant’s proprietor alleging genuine use of the mark at issue for all the goods in respect of which it has been registered cannot, by itself, suffice to demonstrate such use.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

12      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      In support of its action, the applicant raises, in essence, a single plea in law alleging infringement of Article 51(1)(a) of Regulation No 207/2009, read in conjunction with Article 15(1)(a) of that regulation. In that context, the applicant submits, first, that the invoices produced refer to the coffee Art’s Cafè in the manner usually used on invoices, namely by using only the name and a brief description of the goods. The applicant also submits that the Board of Appeal disregarded the geographical extent of the use, which includes the Netherlands and Spain. As the coffee market is highly competitive, the applicant followed an approach which is common among operators in the sector of placing its coffee on the market both under its trade mark Art’s Cafè presented as a ‘secondary’ mark under the main trade mark Pont, which is already well known on the hotel and catering market and acts as to guarantee quality. According to the applicant, that strategy is intended to prepare for entry into sector of direct sales to end consumers on the retail market under the trade mark Art’s Cafè, which requires considerable efforts in view of the characteristics of the coffee market and current conditions.

14      In that regard, it should be recalled that, under Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), which applies by analogy to revocation proceedings in accordance with Rule 40(5) of that regulation, evidence of genuine use of a trade mark must concern, as cumulative requirements, the place, time, extent and nature of the use made of the trade mark (judgment of 13 February 2015, Husky CZ v OHIM — Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 62).

15      As regards the nature of the use, it should be borne in mind that the point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, which avoids imposing strict conformity between the form of the trade mark used and the form in which the mark was registered, is to allow its proprietor in the commercial exploitation of the sign to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, such that the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgment of 12 March 2014, Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), Case T‑381/12, not published, EU:T:2014:119, paragraph 26 and case-law cited).

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

17      In the present case, first, the applicant does not dispute the Board of Appeal’s assessment that the evidence it produced before that Board concerned the product ‘coffee’ exclusively.

18      Furthermore, as is clear from paragraphs 21 to 36 of the contested decision, the main ground on which the Board of Appeal based its conclusion concerning the lack of genuine use of the mark at issue is taken from the fact that the evidence produced by the applicant for that purpose does not show that mark either in the form in which it was registered or in a form which does not alter its distinctive character within the meaning of Article 15(1)(a) of Regulation No 207/2009. In that context, the Board of Appeal concluded that that evidence did not satisfy the criterion relating to the nature of the use of the mark at issue within the meaning of Article 51(1)(a) of that regulation. It is purely for the sake of completeness that the Board of Appeal referred, in paragraph 37 of the contested decision, to the limited extent of the use shown by the invoices produced.

19      In that regard, it should be borne in mind that the Board of Appeal explained its conclusion concerning the nature of the alleged use by means of the figurative elements reproduced in paragraph 8 above in essence by reference to the very small relative size of the words ‘art’s café’ and the absence of the atypical stylisation characterising the mark at issue (see paragraph 10 above). It is clear from the applicant’s arguments that it does not dispute the Board of Appeal’s assessments, in accordance with the rules set out in paragraphs 15 and 16 above, as to the nature of the alleged use of the mark at issue, as resulting from the evidence showing those figurative elements. In contrast, first, the applicant explains the commercial logic which, in its view, explains the simultaneous use of all the signs set out in paragraph 8 above, without, however, calling into question the Board of Appeal’s reasoning, at the end of which it concluded that affixing the word element ‘art’s café’ did not constitute use of the mark at issue within the meaning of Article 51(1)(a) of Regulation No 207/2009, read in conjunction with Article 15(1)(a) thereof. Second, as regards the Board of Appeal’s assessment of the nature of the use which emerged from the invoices produced by the applicant, the applicant merely asserts, in essence, that the use of the word element ‘art’s cafè’ preceded by the reference ‘café molido’ and followed by the reference ‘250 g’ follows the usual rules for drafting invoices. It is clear that that fact alone is not sufficient to invalidate the Board of Appeal’s assessment, in particular since the marks may be used in a multitude of contexts other than the invoicing of goods or services which they are intended to distinguish.

20      In any event, it must also be stated that the figurative element of the mark at issue, whose graphic presentation is neither negligible nor trivial, is a distinctive element of it, such that the use of a word mark without that element cannot constitute use of the mark at issue within the meaning of Article 51(1)(a) of Regulation No 207/2009, read in conjunction with Article 15(1)(a) of that regulation. Moreover, account being taken of the descriptive character of the word ‘café’ for that product, the figurative element of the mark at issue must be regarded as an important element of that mark.

21      It follows that the Board of Appeal did not err in concluding that the evidence provided by the applicant was not capable of demonstrating the genuine use of the mark at issue from the point of view of its nature during the relevant period between 1 July 2009 and 1 July 2014.

22      As that finding suffices to declare the mark at issue revoked, the applicant’s arguments made by way of completeness against the assessments which the Board of Appeal made concerning the importance of the use must be rejected as ineffective.

23      Consequently, the application must be dismissed without it being necessary to rule on the intervener’s arguments claiming the inadmissibility of some annexes produced by the applicant before the General Court.

 Costs

24      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.

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

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Cafés Pont, SL to pay the costs.

Gratsias      Dittrich      Xuereb

Delivered in open court in Luxembourg on 20 July 2017.

*      Language of the case: English.