Case T‑598/18

Grupo Textil Brownie, SL

v

European Union Intellectual Property Office

Judgment of the General Court (Third Chamber), 30 January 2020

(EU trade mark — Opposition proceedings — Application for EU word mark BROWNIE — Earlier national word marks BROWNIES, BROWNIE, Brownies and Brownie — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Genuine use of the earlier mark — Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001))

1. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Material date for the examination of a relative ground for refusal — Date of filing of the application for registration — Withdrawal of the Member State concerned from the EU — Not relevant

   (Art. 50 TEU; Council Regulation No 207/2009, Arts 8(1) and (2)(a)(ii) and 42(3))

   (see paragraph 19)

2. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Interpretation having regard to the rationale of Article 42(2) and (3) of Regulation No 207/2009

   (Council Regulation No 207/2009, Recital 10 and Art. 42(2) and (3); Commission Regulation No 2868/95, Art. 1, rule 22(3))

   (see paragraph 30)

3. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment

   (Council Regulation No 207/2009, Art. 42(2) and (3); Commission Regulation No 2868/95, Art. 1, rule 22 (3))

   (see paragraphs 31-34, 51)

4. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Use during the period of five years

   (Council Regulation No 207/2009, Art. 42(2) and (3))

   (see paragraphs 37, 38)

5. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Use during the period of five years — Account taken of evidence of use outside this period — Conditions

   (Council Regulation No 207/2009, Art. 42(2) and (3); Commission Regulation No 2868/95, Art. 1, rule 22 (3))

   (see paragraph 41)

6. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Probative value of the evidence — Criteria for assessment

   (Council Regulation No 207/2009, Arts 42(2) and (3), and 78(1)(f))

   (see paragraphs 53, 74, 76)

7. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Use of the mark in a form which differs through factors not altering the distinctive character of the mark — Subject matter and scope of Article 15(1)(a) of Regulation No 207/2009

   (Council Regulation No 207/2009, Arts 15(1), second paragraph, (a), and 42(2) and (3))

   (see paragraphs 61-63)

8. EU trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice — Principle of legality — Need for a strict and complete examination in each particular case

   (see paragraph 93)

Résumé

In the judgment in Grupo Textil Brownie v EUIPO — The Guide Association (BROWNIE) (T‑598/18), delivered on 30 January 2020, the General Court specified some aspects concerning the proof of genuine use of the earlier mark and dismissed the action brought against the decision of the Board of Appeal of the European Union Intellectual Property Office (EUIPO), relating to opposition proceedings between The Guide Association (‘the intervener’) and Grupo Textil Brownie (‘the applicant’).

In the present case, the intervener filed a notice of opposition to registration of the word mark BROWNIE, on the basis of the series of earlier United Kingdom word marks BROWNIES, BROWNIE, Brownies and Brownie (taken together, ‘the earlier mark’). The applicant requested that the intervener furnish proof of the genuine use of the earlier mark. Considering that the intervener had furnished such proof, the Opposition Division of EUIPO concluded that there was a likelihood of confusion between the marks at issue with regard to some goods and services and accordingly it upheld the opposition in part. The appeal against that decision was dismissed by the Board of Appeal of EUIPO.

In the first place, concerning the impact of the withdrawal of the United Kingdom from the European Union, ( 1 ) the Court pointed out that, in order to assess whether there exists a genuine relative ground for opposition, it is appropriate to look at the time of filing of the application for an EU trade mark against which a notice of opposition, based on an earlier trade mark, has been filed. It is therefore necessary to examine the various aspects of the earlier mark as they were at the time of filing of such an application. The fact that the earlier trade mark could lose the status of a trade mark registered in a Member State ( 2 ) at a time after the filing of the application for registration of the EU trade mark against which a notice of opposition, based on that earlier mark, has been filed — in particular following the possible withdrawal of the Member State concerned from the European Union in accordance with Article 50 TEU, without specific provision having been made in that respect in any agreement concluded under Article 50(2) TEU — is therefore, in principle, irrelevant to the outcome of the opposition. Moreover, the existence of an interest in bringing proceedings before the Court against a decision of the Boards of Appeal of EUIPO allowing such an opposition based on such an earlier national mark — or upholding a decision of the Opposition Division in that sense — is not, in principle, affected.

In the second place, the Court observed that, in so far as the applicant had argued that some of the evidence did not fall within the relevant period, it clearly follows from Article 42(2) and (3) of Regulation No 207/2009 that it is only genuine use which must occur during the relevant period. Provided that evidence relied on to demonstrate genuine use relates to use made during the relevant period, it cannot be required that that evidence was itself established during that relevant period. Consequently, the applicant’s argument that some of the evidence does not fall within the relevant period solely because it was established outside that period is not, as such, capable of nullifying its probative value in the light of Article 42(2) and (3) of Regulation No 207/2009.

In the third place, in respect of the evidence relating to use made before or after the relevant period, the Court pointed out that it is clear from the case-law that the consideration of such evidence is possible to confirm or better to assess the extent to which the earlier mark was used and the actual intentions of the proprietor during that period. However, such evidence can be taken into consideration only if other evidence relating to the relevant period has been produced.

In the fourth place, as regards the advertising material relied upon as evidence of genuine use, the Court accepted, on the one hand, that it was true that it has previously been held that it is, in principle, necessary to demonstrate that the advertising material referring to the earlier mark, in respect of which genuine use must be proved, has been distributed to a sufficient degree to the relevant public in order to establish the genuine nature of the use of the trade mark at issue. However, the Court observed, on the other hand, that it also follows from the case-law that, in the assessment of the evidence of genuine use of a mark, each piece of evidence is not to be analysed separately, but together, in order to determine its most likely and coherent meaning. Thus, even if the probative value of an item of evidence is limited, to the extent that, individually, it does not show with certainty whether, and how, the goods concerned were placed on the market, and that item of evidence is therefore not in itself decisive, it may nevertheless be taken into account in the overall assessment of whether the use of that mark is genuine. That is the case, for example, when that item of evidence is accompanied by other evidence. In the present case, the Court held that advertising material was one of a number of items of evidence, so that it could be taken into account by the Board of Appeal.

In the fifth and last place, concerning the probative value of an affirmed statement intended to demonstrate genuine use of the earlier mark, the Court noted that it follows from Article 78(1)(f) of Regulation No 207/2009 ( 3 ) that statements in writing, sworn or affirmed or having a similar effect under the law of the State in which they are drawn up, form part of the investigative measures that EUIPO may undertake. In the present case, the affirmed statement was made in the form of a witness statement, in the form prescribed by civil procedure rules applicable in England and Wales. Moreover, the Court observed that it follows from the case-law that where, as in the present case, a statement has been produced for the purposes of Article 78(1)(f) of Regulation No 207/2009 by a staff member responsible for management functions within the party that is required to demonstrate genuine use of the earlier trade mark, probative value can be attributed to that statement only if it is supported by other evidence, as in the present case.

( 1 ) The withdrawal agreement had not yet been definitively adopted at the end of the deliberations.

( 2 ) Within the meaning of Articles 8(2)(a)(ii) and 42(3) of 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 ) Now Article 97(1)(f) of Regulation 2017/1001.