Case T-308/06

Buffalo Milke Automotive Polishing Products, Inc.

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for Community figurative mark BUFFALO MILKE Automotive Polishing Products – Earlier national figurative mark BÚFALO – Production of evidence for the first time before the Board of Appeal – Discretion granted by Article 74(2) of Regulation (EC) No 40/94 (now Article 76(2) of Regulation (EC) No 207/2009) – Genuine use of the earlier mark – Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009))

Summary of the Judgment

1.      Community trade mark – Procedural provisions – Opposition proceedings – Facts and evidence not submitted in support of the opposition within the prescribed time-limit – Account taken – Discretion of the Board of Appeal – Absence of any provision to the contrary

(Council Regulation No 40/94, Art. 74(2); Commission Regulation No 2868/95, Art. 1, Rule 22(2))

2.      Community trade mark – Procedural provisions – Opposition proceedings – Facts and evidence not submitted in support of the opposition within the prescribed time-limit – Account taken – Conditions – New factor

(Council Regulation No 40/94, Art. 74(2); Commission Regulation No 2868/95, Art. 1, Rule 22(2))

3.      Community 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 40/94, Art. 43(2) and (3))

1.      It is clear from the wording of Article 74(2) of Regulation No 40/94 on the Community trade mark that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of that regulation and that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is in no way prohibited from taking account of facts and evidence which are invoked or produced late.

However, it is equally apparent from that wording that the fact that a party has invoked or produced facts and evidence out of time does not confer on it an unconditional right to have those facts and evidence taken into consideration by the Office. Where the Office is called upon to give a decision in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where the Office considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account.

The possibility for parties to proceedings before the Office to submit facts and evidence after the expiry of the periods specified for that purpose is subject to the condition that there is no provision to the contrary. It is only if that condition is met that the Office has the discretion – attributed to it by the Court of Justice when interpreting Article 74(2) of Regulation No 40/94 – as regards the taking into account of facts and evidence submitted out of time.

However, by using the expression ‘unless otherwise specified’ in connection with provisions possibly limiting the Office’s discretion under Article 74(2) of Regulation No 40/94, the Court of Justice, in the judgment of 13 March 2007 in Case C‑29/05 P OHIM v Kaul, did not indicate expressly which provisions of Regulation No 40/94 were being referred to. Nor did it clarify whether that expression also encompassed Regulation No 2868/95 implementing Regulation No 40/94 and, in particular, Rule 22(2) of Regulation No 2868/95.

It should be pointed out that, Regulation No 2868/95 having been adopted by the Commission, in accordance with Article 140(1) of Regulation No 40/94, its provisions must be interpreted in accordance with the provisions of the latter regulation.

Accordingly, to submit, on the basis of Rule 22(2) of Regulation No 2868/95, that the Board of Appeal is required to exclude documents produced late and cannot apply Article 74(2) of Regulation No 40/94 would amount to reliance on an interpretation of a rule of the implementing regulation which is contrary to the clear wording of the general regulation.

Moreover, it is consistent with the spirit of OHIM v Kaul to preserve the possibility of additional evidence being accepted. In that case, the Court of Justice found that acceptance of evidence submitted late was justified on the basis of the principles of legal certainty and the sound administration of justice, pursuant to which the examination of the substance of an opposition must be as complete as possible, so as to avoid registration of marks which might subsequently be cancelled. Accordingly, those principles may prevail over the principle of procedural efficiency which underlies the need for compliance with time‑limits, if the circumstances of the individual case so warrant.

It follows that Rule 22(2) of Regulation No 2868/95 cannot be regarded as a ‘provision specifying otherwise’ for the purposes of OHIM v Kaul.

(see paras 22-24, 31-36)

2.      It is true that the General Court has already held that Article 43(2) and (3) of Regulation No 40/94 of the Community trade mark, as implemented by Rule 22(1) of Regulation No 2868/95 implementing Regulation No 40/94, in the version applicable before its amendment by Regulation No 1041/2005, now Rule 22(2) of the same regulation, following amendment, provides that submission of proof of use of the earlier mark after the expiry of the period specified for that purpose results, in principle, in the rejection of the opposition without the Office for Harmonisation in the Internal Market (Trade Marks and Designs) having a discretion in that regard.

However, the General Court has also held that the second sentence of Rule 22(2) of Regulation No 2868/95 cannot be interpreted as precluding additional evidence from being taken into consideration where new factors emerge, even if such evidence is adduced after the expiry of that time-limit.

Even if the acceptance of proof of use provided late had to be made subject to the appearance of a ‘new factor’, there may be valid reasons which support acceptance of such proof where the ‘new factor’, as referred to in the judgment of 12 December 2007 in Case T-86/05 CORPO livre, is the decision of the Opposition Division. In cases where the opponent produces relevant initial evidence within the period prescribed, judging in all good faith that it is sufficient to substantiate its claims, and learns only by the decision of the Opposition Division that that evidence has been deemed insufficient, there is no valid reason preventing the opponent from substantiating or clarifying the content of the initial evidence with additional evidence when it requests the Board of Appeal to carry out a new, full examination of the case.

The argument that opponents, which assume the burden of proof and must discharge that burden, are in general able to submit complete evidence from the beginning of the proceedings, in conjunction with their observations, is unconvincing. By definition, in all cases where evidence is submitted late, there is also a failure to comply with the time‑limit initially prescribed. If mere non‑compliance with the time‑limit were sufficient to exclude the possibility of submitting additional evidence, Article 74(2) of Regulation No 40/94 would never be applicable and would therefore be rendered meaningless.

(see paras 37-41)

3.      There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. In that regard, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly.

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark.

As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use.

The question whether use is sufficient to maintain or create market share for the goods or services protected by the mark thus depends on several factors and on a case‑by‑case assessment. The characteristics of those goods and services, the frequency or regularity of the use of the trade mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, or evidence of use which the proprietor is able to provide, are among the factors which may be taken into account.

To examine whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the low volume of goods marketed under the mark may be offset by a high intensity or a settled period of use of that mark or vice versa. In addition, the turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine.

Moreover, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.

(see paras 47-52)

JUDGMENT OF THE GENERAL COURT (Second Chamber)

16 November 2011 (*)

(Community trade mark – Opposition proceedings – Application for Community figurative mark BUFFALO MILKE Automotive Polishing Products – Earlier national figurative mark BÚFALO – Production of evidence for the first time before the Board of Appeal – Discretion granted by Article 74(2) of Regulation (EC) No 40/94 (now Article 76(2) of Regulation (EC) No 207/2009) – Genuine use of the earlier mark – Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009))

In Case T‑308/06,

Buffalo Milke Automotive Polishing Products, Inc., established in Pleasanton, California (United States), represented by F. de Visscher, E. Cornu and D. Moreau, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,

defendant,

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

Werner & Mertz GmbH, established in Mainz (Germany), represented initially by M. Thewes and V. Wiot, and subsequently by M. Thewes and P. Reuter, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 8 September 2006 (Case R 1094/2005-2), relating to opposition proceedings between Werner & Mertz GmbH and Buffalo Milke Automotive Polishing Products, Inc.,

THE GENERAL COURT (Second Chamber),

composed of N.J. Forwood, President, J. Schwarcz and A. Popescu (Rapporteur), Judges,

Registrar: S. Spyropoulos,

having regard to the application lodged at the Court Registry on 13 November 2006,

having regard to the response of OHIM lodged at the Court Registry on 10 April 2007,

having regard to the response of the intervener lodged at the Court Registry on 1 March 2007,

having regard to the reply of the applicant lodged at the Court Registry on 4 July 2007,

further to the hearing on 13 September 2011, at which none of the parties was present,

gives the following

Judgment

 Background to the dispute

1        On 20 February 2001, the applicant, Buffalo Milke Automotive Polishing Products, Inc., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 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 Community trade mark (OJ 2009 L 78, p. 1)).

2        The trade mark in respect of which registration was applied for is the following figurative sign:

3        The goods in respect of which registration was sought fall within Classes 3, 18 and 25 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 3: ‘Waxes, polishing creams, cleaning preparations, creams for leather, preservatives for leather, washing preparations’;

–        Class 18: ‘Bags’;

–        Class 25: ‘Clothing, including t-shirts, diapers’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 27/2002 of 8 April 2002.

5        On 25 June 2002, the intervener, Werner & Mertz GmbH, filed a notice of opposition to the registration of the trade mark applied for, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).

6        The opposition was based on the following German figurative mark:

7        This trade mark was registered on 15 July 1994 under No 2079354 for goods falling within Class 3 of the Nice Classification and corresponding to the following description: ‘Washing and bleaching preparation; cleaning, polishing, scouring and abrasive preparations; soaps, agents for impregnating, cleaning and caring for and preserving items made of leather, plastics and textiles, especially shoes; shoe polish, preparations for cleaning and caring for floors; preparations for cleaning and caring for carpets; upholstered furniture and textiles; stain removers, detergents for sanitary installations’.

8        The opposition related to the goods covered by the application falling within Class 3, which, after the limitation made during the proceedings before OHIM, correspond to the following description: ‘Waxes, polishing creams, cleaning preparations, creams for leather, preservatives for leather, washing preparations, all for the automotive vehicle care’.

9        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

10      On 15 July 2005, the Opposition Division rejected the opposition in its entirety, on the ground that the evidence produced by the intervener at the request of the applicant, in accordance with Article 43 of Regulation No 40/94 (now Article 42 of Regulation No 207/2009), was insufficient to prove that the earlier national trade mark had been put to genuine use in Germany during the five years preceding the date of publication of the Community trade mark application. It found that the documents produced had all been drawn up in-house by the intervener, that they were insufficient to show that there had been real and effective commercialisation of the goods on the relevant market and that, consequently, they did not provide an indication as to the extent of the use of the earlier trade mark.

11      On 9 September 2005, the intervener brought an appeal before the Board of Appeal against the decision of the Opposition Division.

12      On 14 November 2005, the intervener presented, as an annex to the statement setting out the grounds of appeal, additional evidence to that already produced at first instance. This new evidence comprised nine invoices dating from 20 April 2001 to 18 March 2002.

13      By decision of 8 September 2006 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the decision of the Opposition Division and remitted the case to it.

14      First, as regards the admissibility of the evidence produced for the first time by the intervener at the appeal stage before the Board of Appeal and intended to show that it had made use of the earlier trade mark in Germany between 8 April 1997 and 7 April 2002, the Board of Appeal found that the nine invoices constituted additional evidence, which aimed to confirm or support the documentary evidence produced in due time before the Opposition Division, and that they were admissible.

15      The Board of Appeal based its reasoning on Article 74(2) of Regulation No 40/94 (now Article 76(2) of Regulation No 207/2009), which gives OHIM a discretion to decide whether or not to take into account facts and evidence submitted late by examining all the relevant circumstances of the case.

16      Second, as regards whether that additional evidence was capable of proving use of the earlier mark for the purposes of Article 43(2) of Regulation No 40/94 (now Article 42(2) of Regulation No 207/2009), the Board of Appeal found that the evidence provided sufficiently proved the use of the earlier mark for ‘polishing cream’ and ‘leather conditioner’. The Board of Appeal concluded that that evidence supported and confirmed the information contained in the affidavit and price lists and that it seemed to correspond to the reports on turnover.

 Forms of order sought

17      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

18      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

19      In support of its action, the applicant raises a single plea, based on breach of Article 43 of Regulation No 40/94 and Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1). That plea is divided into two parts.

 Taking into account the invoices produced for the first time before the Board of Appeal

20      The applicant claims in essence that the Board of Appeal, in breach of Article 43 of Regulation No 40/94 and of Rule 22 of Regulation No 2868/95, declared admissible the documents produced belatedly for the first time before it. According to the applicant, the Board of Appeal should have taken into account the late stage of the proceedings at which the evidence was produced and the circumstances surrounding the production of that evidence in order to exclude it.

21      It is common ground between the parties that the documents produced by the intervener on 14 November 2005, with the statement setting out the grounds of appeal, in support of the documents already produced at first instance were not produced in due time, as the Board of Appeal also essentially finds in paragraphs 19 and 20 of the contested decision. However, the parties disagree as to whether it is possible for OHIM to take those documents into consideration.

22      In this respect, the Court would point out that it is clear from the wording of Article 74(2) of Regulation No 40/94 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of Regulation No 40/94 and that OHIM is in no way prohibited from taking account of facts and evidence which are invoked or produced late (Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 42).

23      However, it is equally apparent from that wording that the fact that a party has invoked or produced facts and evidence out of time does not confer on it an unconditional right to have those facts and evidence taken into consideration by OHIM (OHIM v Kaul, paragraph 43).

24      Where OHIM is called upon to give a decision in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (OHIM v Kaul, paragraph 44).

25      In this respect, it is necessary to reject at the outset the applicant’s argument that OHIM v Kaul is not applicable to this case as the evidence in that case did not concern the genuine use of the earlier mark. It is sufficient to note that in OHIM v Kaul, the Court of Justice provided its interpretation of Article 74(2) of Regulation 40/94, which, contrary to the applicant’s submission, is in no way limited to dealing with the late production of evidence relating to the merits of the action, but enables OHIM to take account of any type of facts or evidence submitted late. Moreover, the Court of Justice recently confirmed that its interpretation of Article 74(2) of Regulation No 40/94 also applies in cases where proof of genuine use of the earlier mark is produced late (see, to that effect, judgment of 19 May 2011 in Case C‑308/10 P Union Investment Privatfonds v OHIM, not published in the ECR, paragraphs 40 to 45).

26      As regards the manner in which OHIM should exercise the discretion referred to above, the Court finds, first, that the Board of Appeal was right in finding expressly that it had the necessary discretion, for the purposes of Article 74(2) of Regulation No 40/94, where it stated, in paragraph 22 of the contested decision, that ‘it is at [OHIM’s] discretion to decide, considering all the relevant circumstances of the case, whether or not to take into account belated facts and evidence’.

27      Second, the statement of reasons provided by the Board of Appeal is sufficient justification for its decision to accept, in view of the circumstances, the evidence submitted for the first time before it. The Board of Appeal states, in paragraph 25 of the contested decision, that, in its decision, the Opposition Division found that the intervener had failed to provide independent evidence on its actual sales that could confirm or support the documents that it had drawn up in-house on the extent of use of the earlier mark. Accordingly, the Board of Appeal considered that it had discretion and that it was justified in admitting the evidence filed with the statement of the grounds of the appeal, which aimed to confirm or support the documentary evidence filed in due time before the Opposition Division.

28      Third, the contested decision specifically addressed the relevance of the nine invoices to the outcome of the case and decided to accept them because they constituted additional evidence which clarified issues relating to the extent of use of the earlier mark, i.e. issues for which evidence had already been presented at first instance. Moreover, the Court shares OHIM’s view that the Board of Appeal not only assessed the prima facie relevance of the materials, as required by the Court of Justice, but carried out a complete examination of those materials which demonstrated that the newly filed evidence did in fact change the outcome of the proceedings, as shown by paragraphs 26 to 31 of the contested decision.

29      Fourth, as regards ‘other’ circumstances that might argue against the invoices filed late being taken into account, it is in no way apparent from the documents before the Court that the intervener had any intention of unduly prolonging the proceedings, or was negligent in the presentation of the evidence at first instance.

30      The applicant’s argument that the stage of the proceedings at which the late submission of the evidence takes place argues against that evidence being taken into consideration cannot succeed either. In the present case, following the decision of the Opposition Division, the intervener had the possibility of submitting additional evidence in support of its action and the Board of Appeal had the discretion to accept it. The Board of Appeal took it into consideration and what the applicant claims to be a delay in the proceedings constitutes in reality only the normal conduct of the proceedings in which the Board of Appeal may find it necessary to annul the decision of the Opposition Division.

31      Lastly, as to whether there was any provision in the Regulations or any other circumstance that argued against the acceptance of new evidence at that stage of the proceedings, it should be borne in mind that the possibility for parties to proceedings before OHIM to submit facts and evidence after the expiry of the periods specified for that purpose is not unconditional, but, as is apparent from paragraph 42 of OHIM v Kaul, is subject to the condition that there is no provision to the contrary. It is only if that condition is met that OHIM has the discretion – attributed to it by the Court of Justice when interpreting Article 74(2) of Regulation No 40/94 – as regards the taking into account of facts and evidence submitted out of time (Case T‑86/05 K & L Ruppert Stiftung v OHIM – Lopes de Almeida Cunha and Others (CORPO livre) [2007] ECR II‑4923, paragraph 47).

32      However, by using the expression ‘unless otherwise specified’ in connection with provisions possibly limiting OHIM’s discretion under Article 74(2) of Regulation No 40/94, the Court of Justice, in OHIM v Kaul, did not indicate expressly which provisions of Regulation No 40/94 were being referred to. Nor did it clarify whether that expression also encompassed Regulation No 2868/95 and, in particular, Rule 22(2) of Regulation No 2868/95.

33      It should be pointed out that, Regulation No 2868/95 having been adopted by the Commission, in accordance with Article 140(1) of Regulation No 40/94 (now Article 145 of Regulation No 207/2009), its provisions must be interpreted in accordance with the provisions of the latter regulation (Case T‑191/07 Anheuser-Busch v OHIM – Budějovický Budvar (BUDWEISER) [2009] ECR II‑691, paragraph 73).

34      Accordingly, in the present case, the applicant’s arguments that, on the basis of Rule 22(2) of Regulation No 2868/95, the Board of Appeal was required to exclude the documents produced late by the intervener and could not apply Article 74(2) of Regulation No 40/94 would amount to reliance on an interpretation of a rule of the implementing regulation which is contrary to the clear wording of the general regulation (see BUDWEISER, paragraph 73 and the case-law cited).

35      Moreover, it is consistent with the spirit of OHIM v Kaul to preserve the possibility of additional evidence being accepted. In that case, the Court of Justice found that acceptance of evidence submitted late was justified on the basis of the principles of legal certainty and the sound administration of justice, pursuant to which the examination of the substance of an opposition must be as complete as possible, so as to avoid registration of marks which might subsequently be cancelled. Accordingly, those principles may prevail over the principle of procedural efficiency which underlies the need for compliance with time‑limits, if the circumstances of the individual case so warrant.

36      It follows that Rule 22(2) of Regulation No 2868/95 cannot be regarded as a ‘provision specifying otherwise’ for the purposes of OHIM v Kaul.

37      It is true that the General Court has already held that Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009), as implemented by Rule 22(1) of Regulation No 2868/95, in the version applicable before its amendment by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4), now Rule 22(2) of the same regulation, following amendment, provides that submission of proof of use of the earlier mark after the expiry of the period specified for that purpose results, in principle, in the rejection of the opposition without OHIM having a discretion in that regard (CORPO livre, paragraphs 48 and 49).

38      However, the General Court has also held that the second sentence of Rule 22(1) of Regulation No 2868/95 cannot be interpreted as precluding additional evidence from being taken into consideration where new factors emerge, even if such evidence is adduced after the expiry of that time-limit (CORPO livre, paragraph 50).

39      Even if the acceptance of proof of use provided late had to be made subject to the appearance of a ‘new factor’, in the present case there are valid reasons which support acceptance of such proof.

40      In this particular case, the ‘new factor’, as referred to in CORPO livre, is the decision of the Opposition Division. In cases where the opponent produces relevant initial evidence within the period prescribed, judging in all good faith that it is sufficient to substantiate its claims, and learns only by the decision of the Opposition Division that that evidence has been deemed insufficient, there is no valid reason preventing the opponent from substantiating or clarifying the content of the initial evidence with additional evidence when it requests the Board of Appeal to carry out a new, full examination of the case.

41      The argument that opponents, which assume the burden of proof and must discharge that burden, are in general able to submit complete evidence from the beginning of the proceedings, in conjunction with their observations, is unconvincing. By definition, in all cases where evidence is submitted late, there is also a failure to comply with the time‑limit initially prescribed. If mere non‑compliance with the time‑limit were sufficient to exclude the possibility of submitting additional evidence, Article 74(2) of Regulation No 40/94 would never be applicable and would therefore be rendered meaningless.

42      Having regard to all of the foregoing, the Court holds that the arguments put forward by the applicant do not affect the legality of the decision of the Board of Appeal to take account of the evidence of genuine use of the earlier mark produced for the first time before the Board of Appeal. The first part of the applicant’s plea must therefore be rejected as unfounded.

 Proof of genuine use of the earlier mark

43      The applicant claims that the Board of Appeal was wrong to consider that overall the documents produced by the intervener were sufficient to prove genuine use of the earlier mark. The nine invoices filed for the first time before the Board of Appeal, even examined in association with the other evidence, do not, in the applicant’s submission, prove genuine use of the earlier mark in German territory during the relevant period.

44      As is clear from the ninth recital in the preamble to Regulation No 40/94, the legislature considered there to be no justification for protecting an earlier trade mark except where the mark has actually been used. In keeping with that recital, Article 43(2) and (3) of Regulation No 40/94 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the five years preceding the date of publication of the Community trade mark application against which notice of opposition has been given.

45      Under Rule 22(3) of Regulation No 2868/95, proof of use must relate to the place, time, extent and nature of use of the earlier mark (see judgment of 10 September 2008 in Case T‑325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 27 and the case-law cited).

46      In interpreting the notion of genuine use, account must be taken of the fact that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, where there is no good commercial justification resulting from a function actually performed by the mark on the market (Case T-174/01 Goulbourn v OHIM – Redcats (Silk Cocoon) [2003] ECR II-789, paragraph 38). However, the purpose of the provision is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade‑mark protection to the case where large-scale commercial use has been made of the marks (Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraph 38, and judgment of 8 November 2007 in Case T‑169/06 Charlott v OHIM – Charlo (Charlott France Entre Luxe et Tradition), not published in the ECR, paragraph 33).

47      There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 13 May 2009 in Case T‑183/08 Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK), not published in the ECR, paragraph 20 and the case-law cited). In that regard, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (Silk Cocoon, paragraph 39; VITAFRUIT, paragraph 39, and Charlott France Entre Luxe et Tradition, paragraph 34).

48      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (BUDWEISER, paragraph 101).

49      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (BUDWEISER, paragraph 102).

50      The question whether use is sufficient to maintain or create market share for the goods or services protected by the mark thus depends on several factors and on a case‑by‑case assessment. The characteristics of those goods and services, the frequency or regularity of the use of the trade mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, or evidence of use which the proprietor is able to provide, are among the factors which may be taken into account (Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 71).

51      To examine whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case (BUDWEISER, paragraph 104). That assessment entails a degree of interdependence between the factors taken into account. Thus, the low volume of goods marketed under the mark may be offset by a high intensity or a settled period of use of that mark or vice versa. In addition, the turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (Case C‑40/01 Ansul [2003] ECR I‑2439, paragraph 39, and order in Case C‑259/02 La Mer Technology [2004] ECR I‑1159, paragraph 21).

52      Moreover, the General Court has held that genuine use of a trade mark could not be proved by means of probabilities or suppositions, but had to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (Case T‑39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II‑5233, paragraph 47).

53      The question whether the Board of Appeal was right to find that the intervener had provided proof of genuine use of the earlier mark should therefore be examined in the light of the foregoing considerations.

54      It should be noted that, since the application for registration of the mark in question was published on 8 April 2002, the period of five years referred to in Article 43(2) and (3) of Regulation No 40/94 therefore ran from 8 April 1997 until 7 April 2002. Moreover, the evidence provided by the intervener to the Opposition Division aimed at establishing genuine use of the earlier mark in Germany is as follows:

–        affidavit by the Managing Director of the intervener, dated 3 December 2003;

–        two brochures containing details of items for sale under the figurative sign of the intervener with translation of relevant parts; none of these documents is dated;

–        two copies of product packaging with incorporated English translation, neither of which is dated;

–        two price lists with partial translations, bearing the indication ‘valid from’ and the dates 1 April 2001 and 1 January 2000;

–        three monthly turnover reports dated 1997, 1998 and 1999;

–        two turnover reports dated 2003.

55      The evidence provided by the intervener for the first time before the Board of Appeal in support of the evidence already produced at first instance consists of nine invoices from 20 April 2001 to 18 March 2002.

56      In this respect, it should be noted that the applicant draws a distinction between the arguments relating to the materials produced before the Opposition Division and those relating to the probative value of the invoices filed for the first time before the Board of Appeal.

57      As regards the materials produced at first instance, the applicant claims that they are manifestly insufficient to establish genuine use of the earlier mark, first, as regards the affidavit, because it emanates from the intervener and, second, as regards the other materials, because none of them contains all the indications required by Rule 22(3) of Regulation No 2868/95, that is to say information on the time, place, extent and nature of use.

58      With respect to the affidavit, it is important to note that it is settled case-law that, in order to assess the probative value of ‘statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up’ within the meaning of Article 76(1)(f) of Regulation No 40/94 (now Article 78(1)(f) of Regulation No 207/2009), it is necessary to check the probability and the veracity of the account it contains, by taking account of, inter alia, the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (see, to that effect, judgments of 16 December 2008 in Case T‑86/07 Deichmann-Schuhe v OHIM – Design for Woman (DEITECH), not published in the ECR, paragraph 47, and jello SCHUHPARK, paragraph 38).

59      It follows that, whilst it is true that, in view of the links between the author of the affidavit and the intervener, that affidavit must be corroborated by the content of the other evidence provided by the intervener in order to have probative value, the fact remains that the circumstance that such an affidavit emanates from the Managing Director of the intervener cannot in itself render it worthless. Moreover, as observed below, the information provided by the affidavit is in fact confirmed by other evidence submitted to OHIM. Accordingly that argument of the applicant’s must be rejected.

60      As for the applicant’s argument that none of the other evidence contains the indications required by Rule 22(3) of Regulation No 2868/95, the Court shares the view of OHIM that the method applied by the applicant to the analysis of the evidence, consisting in breaking down the material submitted into different pieces in an attempt to discard as much as possible of it as irrelevant, is incompatible, first, with the principle that the evidence must be assessed globally and, second, with the position adopted by the Court of Justice in Ansul, according to which when assessing whether there has been genuine use of the trade mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real (see Ansul, paragraph 38).

61      Moreover, although Rule 22 of Regulation No 2868/95 refers to indications concerning the place, time, extent and nature of use, and gives examples of acceptable evidence, such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing, that rule does not state that each piece of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use.

62      It follows that the applicant’s contention that certain pieces of evidence cannot be taken into account because they do not prove all of the four required elements at the same time cannot succeed, especially as, in the present case, the brochures, price lists and statements submitted clearly establish the place, time and nature of use, either directly or by inference.

63      In this respect, it should be noted that on the brochures and the two copies of packaging, the products are presented in German. It is true that on one of the packages, the instructions for use and the description of the product are also in English and French, but that is explained, as the intervener states, by the fact that the products in question were re‑imported from other European countries. In any event, those instructions and that description cannot cast doubt on the fact that the target market is indeed Germany. The price lists, drawn up in German marks and/or in Euro according to the year also prove this, thus corroborating the affidavit by the intervener’s Managing Director on the place of use. The figurative mark as registered appears on all the brochures, packages and price lists. The turnover reports indicate that sales were in fact made and, moreover, the invoices bear this out. Although the term ‘bufalo’ has been abbreviated in certain cases, the abbreviation can only be referring to the term ‘bufalo’. Thus, for example, an invoice of 20 December 2001 mentions ‘buf. shoe polish schwarz 75 ml’. The reference of that product appears on another invoice of the same date and corresponds in that invoice to the product ‘bufalo shoe polish black 75ml’. The nature of use is therefore sufficiently substantiated.

64      Contrary to the applicant’s submission, use has been established not only for shoe care products. The brochures demonstrate that in addition to shoe polish, the intervener marketed, inter alia, soaps on which it is expressly stated that they are suited to ‘all smooth leathers’, leather grease polish and products on which only leather goods or clothes are depicted, therefore indicating that BUFALO products are intended for them. The applicant’s arguments on that point are therefore not relevant and must be rejected.

65      It also necessary to reject the applicant’s argument that evidence which is either undated or bears a date which falls outside the relevant period is equally irrelevant. Even if such evidence could not support a conclusion of genuine use on its own, the Court considers that, since the market life of a product usually extends over a given period of time, and continuity of use is one of the indications relevant for establishing that use has been objectively intended to create or maintain a market share, evidence of this kind, far from being irrelevant, must, in the present case, be taken into account and should be evaluated in conjunction with the rest of the evidence, inasmuch as it can offer ex post facto proof of real and genuine commercial exploitation of the mark.

66      As regards the invoices filed for the first time before the Board of Appeal, the applicant contests their probative value on the ground, first, that they only show sporadic use, considering the nature of the goods (low-priced products), the extent of the geographical market concerned (Germany) and the relevant consumers (the general public), and that they only correspond to a minute fraction of the turnover mentioned in the affidavit, second, that they are issued by a different entity, for which there is no proof that it is the owner’s authorised licensee, third, that they do not relate to the entire five‑year period, but only to 13 months and, fourth, that they can at best show use in relation to shoes only and not for polishing creams and leather conditioners in general.

67      In the present case, as regards the supplementary invoices and their impact on the assessment of the extent of use, the Board of Appeal correctly held that, in conjunction with the rest of the evidence, those invoices ‘… provid[e] evidence of use which objectively is such that it creates or preserves an outlet for polishing cream and leather conditioner. Furthermore, the volume of sales, in relation to the period and frequency of use, is not so low that it might be concluded that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark’.

68      The Board of Appeal reached this conclusion after a careful assessment of the evidence and on the basis of the following concrete findings of fact:

‘The nine invoices are dated between April 2001 and March 2002. The affidavit of the [intervener’s] Managing Director indicated that the opponent had obtained a turnover of [EUR] 6 653 237 … for shoe care products and furniture during the period 2000-2003. The nine invoices represent sales of around EUR 1 600 …, and show that the BUFALO items are delivered to different customers in small quantities (12, 24, 36, 48, 60, 72 or 144 pieces). This appears to be consistent with the low turnover figures mentioned in the affidavit, which are barely above one million euros per year for products widely used like shoe polish, in the largest European market, Germany, with approximately 80 million of potential consumers. Furthermore, the prices charged in the invoices largely coincide with those referred to in the price lists filed under enclosure (d) before the Opposition Division’.

69      These findings are consistent with the case-law of Court of Justice, according to which, when it serves a real commercial purpose, even minimal use of the mark or use by only a single importer in the Member State concerned can be sufficient to establish genuine use (Ansul, paragraph 39, and order in La Mer Technology, paragraph 27).

70      It follows that the applicant’s contention that the sales reflected in the invoices merely show sporadic use, in view of the nature of the goods and the extent of the geographical market, must be rejected.

71      Moreover, the assessment of the extent of use should not rest exclusively on the amount of sales specifically indicated in the invoices. The invoices also give indications indirectly about use of the earlier mark. For instance, the fact that the invoices submitted do not bear consecutive numbers, and are mainly dated from different months, leads to the conclusion that the intervener has only filed evidence corresponding to examples of sales. Nevertheless, these examples make it possible to assume with a reasonable degree of certainty that the overall sales of the products in question are in reality much higher than those specifically referred to. Likewise, the fact that these invoices are addressed to various retailers shows that the extent of use is sufficiently widespread to amount to a real and serious commercial effort, and that it is not a mere attempt to simulate genuine use by always using the same distribution channels.

72      Consequently, the Board of Appeal was right to consider that the figures shown in the invoices were not so low so as to imply that these sales were only made to keep the mark on the register and not to genuinely use it and that that was sufficient to conclude that, in the present case, the intervener had adduced the necessary proof of that genuine use.

73      As regards the contention that the invoices are issued by a different entity and not by the intervener, for which there is no proof that it is the owner’s authorised licensee, the Court would point out that the company from which the invoices emanate appears in a brochure but also in the price list valid from 1 April 2001 and in a turnover report concerning the years 2000 to 2003. On the price list, the name of that company appears, followed by ‘Vertriebsgesellschaft mbH’, which can be translated in English as ‘trading company’. The same words appear on the letterhead used for the nine invoices. Moreover, the email address of the company in the lower margin of the invoices shows that that address is hosted by the intervener’s website, namely ‘BNS@WERNER-MERTZ.COM’. Those factors support the intervener’s assertion that the company concerned is a trading company of the intervener or, at the very least, a company with close links to the intervener.

74      Furthermore, the contention that the invoices do not relate to the entire five‑year period but only to 13 months must also be rejected, since what is required is not use throughout the entire period of five years, but during a period long enough to establish that such use is genuine. In addition, the affidavit provides more information in that regard and it cannot therefore be maintained that the use here was confined to a 13‑month period only.

75      Finally, the argument that the evidence can at best show use in relation to shoes only and not for polishing creams and leather conditioners in general must also be rejected, to the extent that it introduces a differentiation which does not correspond to any real market segment into which the goods on which the opposition is based could be commercially subdivided.

76      It follows that the invoices filed for the first time before the Board of Appeal were sufficient to show, in conjunction with the rest of the evidence, that the earlier German mark on which the opposition was based had been put to genuine use in relation to the goods specified by the Board of Appeal. Consequently, the second part of the plea must also be rejected and the action must therefore be dismissed in its entirety.

 Costs

77      Under Article 87(2) 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 incurred by OHIM and the intervener, as applied for by them.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Buffalo Milke Automotive Polishing Products, Inc. to pay the costs.

Forwood

Schwarcz

Popescu

Delivered in open court in Luxembourg on 16 November 2011.

[Signatures]

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* Language of the case: English.