JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

28 June 2017 (*)

(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark NN — Earlier national word mark NN — Relative ground for refusal — Lack of genuine use of the earlier mark — Articles 15(1)(a) and 42(2) of Regulation (EC) No 207/2009 — Form differing by elements altering the distinctive character)

In Case T‑333/15,

Josel, SL, established in Barcelona (Spain), represented initially by J.L. Rivas Zurdo, and subsequently by J. Güell Serra, lawyers

applicant,

v

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

defendant,

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

Nationale-Nederlanden Nederland BV, established in The Hague (Netherlands), represented initially by E. Morée and A. Janssen, and subsequently by A. Janssen, R. Sjoerdsma and C. Jehoram, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 14 April 2015 (Case R 1531/2014-4), relating to opposition proceedings between Josel and Nationale-Nederlanden Nederland,

THE GENERAL COURT (Sixth Chamber),

composed of G. Berardis, President, S. Papasavvas and O. Spineanu‑Matei (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 24 June 2015,

having regard to the response of EUIPO, lodged at the Court Registry on 16 December 2015,

having regard to the response of the intervener, lodged at the Court Registry on 21 January 2016,

having regard to the reassignment of the case to the Sixth Chamber and to a new Judge-Rapporteur,

having regard to the fact that no request for a hearing was submitted by the main 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

 Background to the dispute

1        On 13 January 2011, the intervener, Nationale-Nederlanden Nederland BV, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 1066097 designating the European Union for the word mark NN.

2        The services in respect of which that international registration was obtained are in Class 36 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: ‘Insurance; financial affairs; monetary affairs; real estate affairs’.

3        The international registration was notified to 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).

4        It was published in the Community Trade Marks Bulletin No 39/2011 of 25 February 2011.

5        On 30 August 2011, the applicant, Josel, SL, filed a notice of opposition, under Article 41 of Regulation No 207/2009, against that international registration, in so far as it designated the EU, in respect of all the services referred to in paragraph 2 above.

6        The opposition was based on the earlier Spanish word mark NN registered under number 1695295 for the services ‘home renting, insurance and financial services’ in Class 36, the validity of which was being disputed in revocation proceedings at national level. In this respect, it may be observed that the Juzgado de lo Mercantil de Barcelona (Commercial Court of Barcelona, Spain) annulled the registration of the earlier mark at first instance by its judgment of 24 July 2015, Josel, SL having failed to establish that the mark NN had been used to designate the services that it covered in the form in which it had been registered. In response to a measure of organisation of procedure, the parties informed the General Court that an appeal had been made against that judgment and that it was still pending before the Audiencia Provincial de Barcelona (Provincial Court, Barcelona, Spain).

7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8        On 28 May 2014, the Opposition Division rejected the opposition on the ground that proof of use of the earlier sign had not been provided, since the evidence submitted did not show the sign as it had been registered. It found that, while the registration concerned a word mark, the evidence showed a figurative mark with the letters ‘nn’ placed inside a circle, side by side, at slightly different levels. Moreover, the sign was accompanied by the words ‘núñez i navarro’ and, in some cases, by an additional word element.

9        On 17 June 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

10      By decision of 14 April 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular it stated that, although the earlier mark, as registered, was a word mark, the evidence provided contained no representation of that mark. Moreover, it considered that, among the variations made to the earlier mark, the element ‘núñez i navarro’ had a distinctive character and could not be considered negligible. In this respect, it also considered it likely that consumers would not refer to the sign in question, reproduced in the evidence provided, as the earlier mark NN, but rather to a mark NUÑEZ I NAVARRO. As a result, the Board of Appeal concluded that the documents, provided by the applicant to prove the use of the earlier mark, did not establish that the mark had been used in the form in which it had been registered or in an acceptable form that did not alter the distinctive character within the meaning of Article 15(1)(a) of Regulation No 207/2009.

 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

 The single plea in law, alleging infringement of Article 15(1)(a) and Article 42(2) and (3) of Regulation No 207/2009

13      In support of its action, the applicant raises a single plea in law, alleging, essentially, infringement of Article 15(1)(a) and Article 42(2) and (3) of Regulation No 207/2009.

 Preliminary observations

14      It must be borne in mind that, under Article 42(2) of Regulation No 207/2009, an applicant for an EU trade mark against which opposition has been filed may require proof that the earlier mark relied on in support of that opposition has been put to genuine use in the European Union, in connection with the goods or services in respect of which it is registered and on which the opposition is based, during the five years preceding publication of the application.

15      It should also be noted that Article 42(2) of Regulation No 207/2009 applies to national marks pursuant to Article 42(3) of the same regulation (see, to that effect, judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288 paragraph 44, and of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46 paragraph 28).

16      Furthermore, according to 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), proof of use must consist of indications concerning the place, time, extent and nature of use of the earlier trade mark.

17      In this respect, genuine use of a mark cannot be proven 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).

18      Finally, it should be noted that, pursuant to Article 15(1)(a) in conjunction with Article 42(2) and (3) of Regulation No 207/2009, proof of genuine use of a national or EU earlier mark which forms the basis of an opposition to an EU trade mark application also includes proof of use of the earlier mark in a form that differs in elements which do not alter the distinctive character of that mark in the form in which it was registered (see judgment of 16 September 2013, Avery Dennison v OHIM — Dennison-Hesperia (AVERY DENNISON), T‑200/10, not published, EU:T:2013:467 paragraph 29 and the case-law cited; judgment of 5 December 2013, Olive Line International v OHIM — Carapelli Firenze (Maestro de Oliva), T‑4/12, not published, EU:T:2013:628 paragraph 22).

19      The applicant’s arguments must be assessed in the light of the foregoing considerations.

 The category in which the earlier mark falls

20      The applicant submits that, contrary to the Board of Appeal’s conclusion in the contested decision, the earlier mark is a figurative mark and not a word mark, since it includes a graphic representation.

21      EUIPO and the intervener dispute the applicant’s arguments.

22      In this respect, first, it must be stated that, upon the lodging of the notice of opposition with the Opposition Division, the applicant stated that the earlier mark, which forms the basis of its opposition, was a word mark. Furthermore, it provided at that time the mark’s registration certificate from the Oficina Española de Patentes y Marcas (Spanish Patent and Trade Mark Office), which also clarified that it was a word mark.

23      Second, the applicant, which indeed explicitly refers to a word mark in its application when it mentions the earlier mark, merely states, in support of its argument, that it does not agree with the Board of Appeal and refers, in this respect, to the documents it presented before the Opposition Division. However, those documents concern only the proof of use of the earlier mark as put forward by the applicant, the full significance of which was assessed by the Board of Appeal. They give no indication as to the category of the earlier mark and can in no way have an influence on its registration.

24      Accordingly, the Board of Appeal cannot be criticised for finding, in the contested decision, that the earlier mark was a word mark.

 Proof of genuine use of the earlier mark

25      The applicant claims, first, that the various pieces of evidence provided confirm the use of the earlier mark, since most of them correspond to the relevant period. Second, it submits that they demonstrate the place of the use, namely Spain, and reveal the extent of the use with regard to the number of units and invoice values.

26      Third, the applicant disputes the Board of Appeal’s view that genuine use was not demonstrated on the ground that the evidence included, in addition to the earlier mark NN, also the words ‘núñez i navarro’ (which refer to the name of the parent or holding company of the group of companies to which it belongs), a circle and the word element ‘hotels’. It submits, in this regard, that the additions are either ‘descriptive, non-distinctive terms’ or decorations unrelated to the mark. It maintains that the various variations of the earlier mark do not alter the fact that it has been genuinely used.

27      EUIPO and the intervener dispute the applicant’s arguments.

28      As a preliminary point, it should be made clear that the applicant was required to establish that the earlier mark had been put to genuine use between 25 August 2006 and 24 August 2011, as is apparent from paragraph 11 of the contested decision and is, moreover, uncontested by either the applicant or the intervener.

29      In order to prove genuine use of the earlier mark, the applicant submitted, during the administrative procedure before EUIPO, inter alia, various pieces of evidence, which were taken into consideration by the Board of Appeal in the contested decision. These include, in particular:

–        several contracts concluded between the applicant and its clients, bearing the following sign:

–        invoices featuring the following sign:

–        business cards bearing the following signs:

–        invoices featuring the following sign:

–        several advertisements featuring the above signs;

–        a declaration under oath from the applicant’s representative;

–        several brochures referring to the Núñez i Navarro hotels and advertisements relating to the hotel and temporary accommodation services provided by Núñez i Navarro.

30      It should be noted that the Board of Appeal in no way assessed whether the evidence presented referred to the place, time, extent and nature of use of the earlier mark.

31      The Board of Appeal merely stated, in paragraph 16 of the contested decision, that in light of the evidence presented and summarised in paragraph 29 above, the applicant had not demonstrated genuine use of the earlier mark in the form in which it was registered.

32      It follows that the only relevant argument is the applicant’s argument challenging the Board of Appeal’s assessment of whether or not the evidence presented demonstrates that the earlier mark had been used in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.

33      In this respect it is necessary to refer to Article 15(1)(a) of Regulation No 207/2009, which covers situations where an earlier national or EU trade mark is used in trade in a form slightly different from the form in which it was registered. The purpose of that provision, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotional requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the form of the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the earlier trade mark may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgments of 23 February 2006, Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65 paragraph 50; of 10 June 2010, Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229 paragraph 30; and of 5 December 2013, Maestro de Oliva, T‑4/12, not published, EU:T:2013:628 paragraph 23).

34      Therefore, in order to establish a change in the distinctive character of the earlier mark, it is necessary to perform an examination of the distinctive and dominant character of the elements that have been added, based on the intrinsic qualities of each of these elements as well as the relative position of the various elements in the configuration of the trade mark (see judgment of 10 June 2010, ATLAS TRANSPORT, T‑482/08, not published, EU:T:2010:229 paragraph 31 and the case-law cited; and judgments of 5 December 2013, Maestro de Oliva, T‑4/12, not published, EU:T:2013:628 paragraph 24; and of 12 March 2014, Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119 paragraph 30).

35      In the present case, the earlier mark, composed of two letters ‘n’, is a word mark, as noted in paragraph 24 above. The signs used in the evidence are composed of a reproduction of the two letters ‘n’ in the form of a figurative element where they are placed at two different levels inside a dark-coloured circle, and the word element ‘núñez i navarro’; in some instances the word element ‘hotels’ and an address are also present.

36      It is therefore necessary to examine whether the Board of Appeal correctly found that those variations were of a nature that affected the distinctive character of the earlier mark as it was registered.

37      It should be noted that a word mark is a mark consisting entirely of letters, words or groups of words, without any specific figurative element. The protection offered by the registration of a word mark applies to the word in the application for registration and not to the individual figurative or stylistic characteristics which that mark might possess (judgement of 2 December 2009, Volvo Trademark v OHIM — Grebenshikova (SOLVO), T‑434/07, EU:T:2009:480 paragraph 37).

38      As a result, the font that the sign might be presented in must not be taken into account (see, by analogy, judgment of 7 July 2015, Alpinestars Research v OHIM — Tung Cho and Wang Yu (A ASTER), T‑521/13, not published, EU:T:2015:474 paragraph 47). It follows that a word mark may be used in any form, in any colour or font type.

39      It should be noted that, even if reproduction of the word element ‘nn’, which forms the earlier mark, within the signs used in the evidence could, in principle, be sufficient to prove genuine use of the earlier mark in respect of the services in question, this is not the case if the modifications and additions in documents produced as evidence, as stated in paragraph 35 above, have an intrinsic distinctive character that alters the character of that mark and, as a consequence, means that the mark is no longer recognised as such within the signs used.

40      First, the applicant’s argument that the letters ‘nn’ found in the documents produced as evidence are used in the same font type as that in which the earlier mark was registered, must be disregarded. The Court, without needing to rule on this argument, notes that it is not relevant in the present case since, given that the earlier mark is a word mark (see paragraph 24 above), it is not distinguished by the use of a particular font, as was noted in paragraph 38 above.

41      For the sake of completeness, it should be noted that, if the earlier mark had to be considered a figurative mark, as the applicant now claims (see paragraph 20 above), the element ‘nn’ would have to have been identically reproduced in the marks used, with no changes to the shape, colour or font of the characters.

42      Second, concerning the word element ‘núñez i navarro’, it should be observed that the applicant’s argument that the term ‘núñez i navarro’ referred to the name of the parent or holding company of the group of companies to which it belonged has no effect on the possible alteration, by this term, of the distinctive character of the earlier mark, which must be analysed in accordance with the case-law stated in paragraph 34 above.

43      In this context, first, it must be noted that, admittedly, the word mark ‘núñez i navarro’ is always placed below the circle containing the letters ‘nn’. However, in the majority of the pieces of evidence presented it occupies a central position, especially when either the word element ‘hotels’ or the reference to an address is placed below it.

44      Second, the word element ‘núñez i navarro’, in terms of width, occupies a much more significant space than that of the word mark ‘nn’, having regard to the number of characters each contains.

45      Lastly, with regard to the fact that the surnames ‘núñez’ and ‘navarro’ appear in the marks used, the letters ‘nn’ are very likely to be perceived as constituting the initials of those surnames. Furthermore, it must be noted that, as surnames, the words ‘núñez’ and ‘navarro’ are not generic terms referring to the services in question and therefore have normal distinctive character when they are used to describe those services.

46      In the circumstances, it is necessary to approve the Board of Appeal’s conclusion that the addition of the word element ‘núñez i navarro’ to the earlier mark changes its distinctive character.

47      Accordingly, without needing to rule on the impact of the other modifications and additions in the evidence presented as mentioned in paragraph 35 above, the Court rejects, as unfounded, the single plea in law, alleging infringement of Article 15(1)(a) and Article 42(2) and (3) of Regulation No 207/2009.

 The arguments alleging infringement of Article 8(1)(b) of Regulation No 207/2009

48      It must be noted that, although the applicant recognises that, in the contested decision, the Board of Appeal ruled solely on the alleged lack of proof of use of the earlier mark and, as a result, the current action concerns only this question, it nevertheless proceeds to an analysis of likelihood of confusion and submits that there is such a likelihood in the present case.

49      Clearly these arguments are ineffective. Indeed, since the question of proof of use of the earlier mark constitutes a preliminary question as to whether there is a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009 and, as discussed in paragraph 47 above, the Board of Appeal correctly held that there was no proof of genuine use of the earlier mark, the Board of Appeal had no need to rule on the question of whether there was any likelihood of confusion.

50      It follows from all the foregoing that the application must be dismissed in its entirety.

 Costs

51      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.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders the applicant to pay the costs.

Delivered in open court in Luxembourg on 28 June 2017.

* Language of the case: English.