Artur Florêncio & Filhos, Affsports v EUIPO - Anadeco Gestion (sflooring) (EU trade mark - Judgment) [2020] EUECJ T-533/19 (08 July 2020)

Judgment Background to the dispute On 28 June 2013, the applicant, Artur Florêncio & Filhos, Affsports Lda, filed an application for registration of an EU trade mark with 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), 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)). Registration as a mark was sought for the following figurative sign: The goods and services in respect of which registration was sought are in Classes 19, 27 and 37 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 19: ‘Flooring for sports and multi-use flooring, flooring for games and industrial flooring, manufactured from non-metallic materials, in particular modular flooring of copolymer polypropylene; wood paving; rubber flooring; flooring of EDPM (ethylene propylene diene monomer) rubber; resin flooring; porous concrete flooring’; – Class 27: ‘Carpets and floor coverings for sports, games and industry’; – Class 37: ‘Construction, application and maintenance of flooring; application of coverings on surfaces of flooring for sports, games and industry’. The trade mark application was published in Community Trade Marks Bulletin No 2013/160 of 26 August 2013. On 25 November 2013, the intervener, Anadeco Gestion, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above. The opposition was based on the earlier Spanish word mark T-FLOORING, which was filed on 14 May 1999 and registered on 22 May 2000 in respect of goods in Class 27 corresponding to the following description: ‘Floor covering’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). In response to the applicant’s request, the intervener furnished various pieces of evidence seeking to establish genuine use of the earlier mark, namely catalogues, invoices, advertisements, brochures and posters. The applicant contested that evidence on the ground that it did not have sufficient probative value and the intervener therefore submitted additional evidence on 28 May 2018, which was outside of the prescribed time limit, namely catalogues from 2010 and an advertisement. The Opposition Division decided to take that additional evidence into consideration. By decision of 24 July 2018, the Opposition Division upheld the opposition in respect of all of the goods and services at issue, finding, first, that the intervener had furnished proof of genuine use of the earlier mark during the relevant period in Spain and, second, that there was a likelihood of confusion in respect of all of the goods and services at issue. On 24 September 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision. By decision of 20 May 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. First, the Board of Appeal confirmed the Opposition Division’s finding, that is, that the opponent had provided sufficient and conclusive evidence, including the additional evidence, of the duration, place, extent and nature of the use of the earlier mark in relation to ‘floor covering’ in Class 27 (paragraph 24 of the contested decision). Second, the Board of Appeal found, as did the Opposition Division, that, taking into account the fact that the goods and services were identical or similar, the average degree of visual and phonetic similarity between the signs and the normal degree of distinctiveness of the mark, the differences resulting from the first letters and the figurative element of the contested mark were insufficient to rule out with certainty a likelihood of confusion on the part of the relevant public (paragraph 45 of the contested decision). Forms of order sought The applicant claims that the Court should: – uphold the action in its entirety; – annul the contested decision in its entirety; – amend the contested decision and grant the applicant’s trade mark application; – order EUIPO to pay the applicant’s costs, including those incurred by the applicant in the appeal before the Board of Appeal; – order the intervener to pay the costs incurred by the applicant in the proceedings before EUIPO. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. Law Admissibility of the third head of claim By its third head of claim, the applicant asks the Court to amend the contested decision and to grant its trade mark application. EUIPO contends that that request is inadmissible. In that regard, it should be noted that a head of claim requesting that the Court alter the decision of a Board of Appeal of EUIPO, in accordance with Article 72(3) of Regulation 2017/1001, by adopting the decision that the Board of Appeal should have taken, is admissible. However, the competent bodies of EUIPO do not adopt formal decisions recording the registration of an EU trade mark which might be the subject of an appeal. Consequently, the Board of Appeal does not have power to take cognisance of an application that it register an EU trade mark. In those circumstances, it is similarly not for the Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect (see, to that effect, judgment of 20 March 2019, Meesenburg Großhandel v EUIPO (Triotherm+) , T‑760/17, not published, EU:T:2019:175 , paragraph 12 and the case-law cited). Accordingly, the applicant’s claims in which it asks the Court to amend the contested decision and grant its trade mark application must be rejected as inadmissible. Substance In support of its action, the applicant submits two pleas in law, the first alleging insufficient proof of genuine use of the earlier mark within the meaning of Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) and the second alleging that there is no likelihood of confusion (Article 8(1)(b) of Regulation 2017/1001). As regards the first plea, it should be noted at the outset that the applicant raises the fact that, since the mark applied for was published on 26 August 2013, the proof of use should have covered the period from 26 August 2008 to 25 August 2013 and not, as stated in paragraph 16 of the contested decision, the period from 11 July 2006 to 10 July 2011. EUIPO submits that that was merely a clerical error, which has no effect on the legality of the contested decision. According to EUIPO, the Board of Appeal did in fact base its findings on the correct time period, as identified by the Opposition Division in its decision. The intervener submits that the opposed application for registration was published on 11 July 2011, with the result that, in accordance with Article 42(2) of Regulation No 207/2009, the relevant period is from 11 July 2006 to 10 July 2011. In that regard, as stated in paragraph 2 of the contested decision, the trade mark application was published on 26 August 2013. The Board of Appeal was therefore wrong to state in paragraph 16 of the contested decision that that application was published on 11 July 2011 and to conclude that the reference period ran from 11 July 2006 to 10 July 2011. As the applicant submits, in accordance with Article 42(2) of Regulation No 207/2009, proof of use must cover the period from 26 August 2008 to 25 August 2013. However, first, it should be noted that the Board of Appeal did not challenge the Opposition Division’s finding that, since the EU trade mark application was published on 26 August 2013, the reference period was from 26 August 2008 to 25 August 2013. Second, as EUIPO submits, the invoices referred to in the contested decision are dated 2002, 2004, November 2012, December 2012, July 2013, November 2013, 2014 and 2015. As a result, had the Board of Appeal taken the period from 11 July 2006 to 10 July 2011 as the basis of its assessment of proof of use, it would have had no option but to find that none of the invoices fell within that period. Those two factors thus support the conclusion that, as EUIPO contends, the reference period mentioned in paragraph 16 of the contested decision was the result of a mere clerical error. That error cannot therefore affect the validity of the Board of Appeal’s reasoning and cannot, of itself, be of any consequence for the legality of the contested decision. According to settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of that regulation (now recital 24 of Regulation 2017/1001) and of 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) (now Article 10(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018, supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), 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 an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a sound economic reason for the lack of genuine use of the earlier mark resulting from an actual function of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM — Wedl & Hofmann (Walzer Traum) , T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited). 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, by analogy, judgment of 11 March 2003, Ansul , C‑40/01, EU:C:2003:145 , paragraph 43). In addition, 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 (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT) , T‑203/02, EU:T:2004:225, paragraph 39; see also, by analogy, judgment of 11 March 2003, Ansul , C‑40/01, EU:C:2003:145 , paragraph 37). 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 exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, VITAFRUIT , T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul , C‑40/01, EU:C:2003:145 , paragraph 43). 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 (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON) , T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT , T‑203/02, EU:T:2004:225, paragraph 41). In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case (judgments of 8 July 2004, HIPOVITON , T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT , T‑203/02, EU:T:2004:225, paragraph 42). Furthermore, the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the opposing party to produce additional evidence to dispel possible doubts as to its genuineness (judgment of 8 July 2004, HIPOVITON , T‑334/01, EU:T:2004:223, paragraph 37). Lastly, genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT) , T‑356/02, EU:T:2004:292 , paragraph 28, and of 30 November 2009, Esber v OHIM — Coloris Global Coloring Concept (COLORIS) , T‑353/07, not published, EU:T:2009:475, paragraph 24). In support of its plea alleging insufficient proof of genuine use of the earlier mark, the applicant submits five arguments, relating to the evidence provided by the intervener, namely catalogues, invoices, advertisements, brochures and posters, and to the fact that the additional evidence was produced out of time. The catalogues The applicant claims, in essence, that, as regards the catalogues for 2008-2009, 2009-2010 and 2011-2012 submitted by the intervener, the date as indicated on the relevant catalogue does not seem to be part of the graphic print of the catalogue itself, bearing in mind in particular the typeface and the fact that, for one of the catalogues, the date is skewed and not horizontal, as would be expected having regard to the rest of the catalogue. Furthermore, the applicant claims that the positioning of the date varies from one catalogue to the next. The intervener contends that the applicant’s allegation that the date on the catalogues may have been added or forged is a serious accusation, which is not substantiated. In any event, as pointed out in paragraph 30 above, the condition relating to genuine use of the trade mark requires that the mark be used publicly and outwardly. It should be pointed out that the intervener has not provided any information on whether the catalogues were actually distributed and to what extent, which it could have done, for example, by producing invoices for the printing of the catalogues. Thus, while the reference period runs from 26 August 2008 to 25 August 2013, all that the invoices actually establish is that the catalogues were distributed for a two-month period, namely November and December 2012 (see paragraph 52 below). The invoices As regards the invoices submitted by the intervener, the applicant claims, first, that the invoice dated 8 November 2012 indicates the trading of only a very small number of products, namely five, for an amount of approximately EUR 38. Second, the invoice of 20 December 2012 refers to the sale of only one catalogue. Third, the invoice dated 29 November 2013 mentions the sale of only five products, for a total amount of EUR 17. Fourth, the invoice dated 7 November 2013 refers to Andorra and is therefore outside the scope of the relevant territory. Fifth, the invoice of 31 July 2013 is for an amount of only EUR 34. Sixth, the invoices of 20 March 2014, 10 August 2015 and 8 July 2016 do not relate to the relevant period and are therefore inadmissible as evidence. Seventh, the invoices of 1 April 2004, 6 November 2002, 31 October 2002 and 11 August 2002 are also inadmissible, not only because they were issued outside of the relevant period, but because they concern goods purchased by the applicant and not goods which it sold. In total, over a period of five years, the only invoices relating to ‘floor covering’ amount to less than EUR 80, which, according to the applicant, cannot be regarded as establishing genuine use of the mark. EUIPO states that, amongst the various invoices which prove the sale of products and catalogues of the earlier mark, there are four which undisputedly fall within the relevant period, demonstrating the sale of 15 products for a total of EUR 72, as well as the sale of 33 catalogues for a total of EUR 103. Two further invoices, which only slightly postdate the relevant period, prove the sale of another 33 products for a total of EUR 145. EUIPO contends that those two invoices, dated only three months after the expiry of the relevant period, should be taken into account. The intervener states that invoices made out to customers outside of Spain amount to exports of goods and should therefore also be taken into account. As EUIPO submits, four invoices undisputedly fall within the relevant period. Two of those relate to products covered by the earlier mark and two relate to the sale of catalogues. In relation to the sale of goods, as EUIPO states, one invoice, dated 8 November 2012, relates to the sale of five products covered by the earlier mark for a total amount of EUR 39. The second invoice, dated 31 July 2013, concerns the sale of ten products for a total of EUR 33. However, it should be noted that the sales were not of ‘floor coverings’ but only of parts related to floor coverings. Thus the invoices bear the references ‘P. ADAPT’, ‘P. DILATA’ and ‘DILAT’. That also explains the very low price. No floor covering’, whatever its dimensions, could be invoiced at such low prices. Thus, all that is proven by the opponent is the sale of 15 products related to ‘floor coverings’ for a total of EUR 72 over a period of eight months. Furthermore, it must be noted that there is no evidence to suggest that ‘floor coverings’ were sold on at least one occasion, even outside the relevant period. The finding made by the Board of Appeal in paragraph 21 of the contested decision that the invoices provided by the intervener demonstrate sales of products covered by the earlier mark ‘in rather small quantities, but on a regular and continuous basis during the entire relevant period’ is therefore incorrect. As regards the sales of catalogues for ‘floor coverings’, according to case-law, the affixing of a trade mark on a magazine, periodical, review, journal or catalogue is in principle capable of constituting ‘valid use of the sign’ as a trade mark for the goods and services designated by that mark, if the content of those publications confirms the use of the sign for goods and services covered by the earlier trade mark (see judgment of 5 February 2020, Globalia Corporación Empresarial v EUIPO — Touring Club Italiano (TC Touring Club) , T‑44/19, not published, EU:T:2020:31, paragraph 67 and the case-law cited). In the present case, as EUIPO also notes, one invoice, also dated 8 November 2012, indicates the sale of three catalogues for a total price of EUR 45. A second invoice, dated 20 December 2012, refers to the sale of 30 catalogues (not just one catalogue as the applicant claims) for a total of EUR 58. There is nothing in the file to explain the difference in the price of those catalogues, that is, EUR 15 for the catalogues covered by the first invoice and approximately EUR 2 for those covered by the second invoice. In any event, first, the sale of those catalogues relates only to the months of November and December 2012, and therefore does not extend the period covered by the sale of the products mentioned in paragraph 46 above. Second, the number of catalogues sold is very small. In total, the two invoices for products related to ‘floor coverings’ and the two invoices for catalogues, which are the only invoices to fall within the relevant period, cover only very small sums and are spread over a period of only eight months. Whilst it is possible that the assessment of the genuine use of the earlier mark during the relevant period may, where appropriate, take account of evidence produced after that date, which may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO — Générale Biscuit-Glico France (PEPERO original) , T‑459/18, not published, EU:T:2019:119 , paragraph 63 and the case-law cited), the finding made in paragraph 55 above that the volume of sales was very low cannot be called into question by taking into account the two invoices mentioned by EUIPO which postdate the relevant period by three months, namely an invoice of 7 November 2013 referring to Andorra concerning the sale of 20 parts related to ‘floor coverings’ for a total amount of EUR 72, and an invoice of 29 November 2013 concerning the sale of 13 parts related to ‘floor coverings’ for a total amount of EUR 73 (not, as the applicant states, five products for a total amount of EUR 17). As regards the other invoices referred to by the applicant, as set out in paragraph 42 above, neither EUIPO nor the intervener dispute that they should be taken into account. In that regard, as the applicant points out, the invoices for 2014, 2015 and 2016 postdate the reference period. The invoices for 2002 and 2004, other than those which relate to a period long before the relevant period, relate not to the sale of goods covered by the earlier mark, but to purchases made in the name of the earlier mark. The advertisements As regards the advertisements taken from a Spanish magazine dated April 2014, the applicant submits that that evidence does not pertain to the relevant period. Neither EUIPO nor the intervener have put forward any arguments in that regard. In any event, it is clear from the fact that those advertisements postdate the reference period by more than eight months that they cannot be taken into consideration. The brochures and posters The applicant submits that the brochures and posters which refer to the earlier mark are intended only for internal use because they do not contain any reference to the year in which they were circulated. Neither EUIPO nor the intervener have put forward any arguments in that regard. As the applicant submits, an analysis of those documents, particularly because they are technical documents, leads to the assumption that they are internal company documents. As recalled in paragraph 30 above, the condition relating to genuine use of the trade mark requires that the mark be used publicly and outwardly. Moreover, the intervener has not adduced any evidence as to the scale of distribution of those brochures and posters. In any event, the fact that that evidence is undated means that it is not possible to find that it falls within the relevant period. The additional evidence The applicant maintains that the additional evidence was produced out of time and should not, therefore, have been accepted. EUIPO states that it is right that the contested decision took account of the additional evidence. In that regard, it should be noted that where evidence which is considered to be relevant for the purposes of establishing use of the earlier mark has been produced within the time limit set by EUIPO under Rule 22(2) of Regulation No 2868/95, the submission of additional proof of such use remains possible after the expiry of that time limit. In such cases, EUIPO may take account of evidence submitted out of time through use of the discretion conferred on it by Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001) (see judgment of 4 May 2017, Comercializadora Eloro v EUIPO , C‑71/16 P, not published, EU:C:2017:345 , paragraph 58 and the case-law cited). As regards the exercise of that discretion for the purposes of the possible taking into account of evidence submitted out of time, the Court of Justice has held that where EUIPO is called upon to give a decision in opposition proceedings, taking such facts or evidence into account is, in particular, likely to be justified where EUIPO considers, first, that the material produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that material was produced and the circumstances surrounding it do not preclude such matters being taken into account (judgments of 13 March 2007, OHIM v Kaul , C‑29/05 P, EU:C:2007:162 , paragraph 44, and of 18 July 2013, New Yorker SHK Jeans v OHIM , C‑621/11 P, EU:C:2013:484, paragraph 33). In the present case, since the Opposition Division and the Board of Appeal considered that the original evidence was relevant for the purposes of establishing use of the earlier mark, it was open to them to accept the evidence submitted out of time. The additional evidence consists of a 2010 catalogue for the earlier mark and an advertisement. As regards the 2010 catalogue, there is no evidence as to how widely that catalogue was distributed. As regards the advertisement, that was for a promotion to celebrate the earlier mark’s 20th anniversary, corresponding to the period ‘1988/2008’. There is no date on that advertisement but it cannot be ruled out that, in the light of the period covered, it covers at least the beginning of the relevant period, which commenced on 26 August 2008. Overall assessment As pointed out in paragraph 31 above, an assessment of the genuine use of an earlier mark involves, inter alia, taking into account the commercial volume and frequency of use. It is also noted in paragraph 34 above that, the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the opposing party to produce additional evidence. In the present case, it follows from the foregoing that no proof has been provided of the sale of ‘floor coverings’ covered by the earlier mark T-FLOORING, despite it being a relatively standard product for which it should have been easy to produce numerous invoices over a period of five years. Thus, during the relevant period, namely from 26 August 2008 to 25 August 2013, only a small number of parts related to ‘floor coverings’ were sold and those sales took place during a period of only eight months, from November 2012 to July 2013. The few catalogues the sale of which has been proved correspond to the same period. The advertisement relating to the period ‘1988-2008’ covers only the first months of the relevant period. It is not possible to determine whether the catalogues for 2008-2009, 2009-2010 and 2011-2012 were in fact distributed and to what extent. The other evidence, for the reasons stated above, is of little or no probative value. Taken as a whole, the evidence submitted by the intervener does not make it possible to establish a relatively constant use of the earlier mark capable of offsetting the low volume of sales under that mark, contrary to what was found by the Opposition Division and confirmed by the Board of Appeal. Accordingly, the first plea must be upheld and, by way of consequence, the contested decision annulled, without the need to examine the second plea, alleging that there is no likelihood of confusion. Costs 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. Furthermore, under Article 134(2) of the Rules of Procedure, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared. Since EUIPO and the intervener have been largely unsuccessful, they must be ordered to bear their own costs and each of them to pay half of the costs incurred by the applicant before the Court. The applicant also claims that EUIPO should be ordered to pay the costs incurred in the appeal proceedings before the Board of Appeal and the intervener to pay the costs incurred before EUIPO. In that context, it should be noted that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Consequently, in so far as the applicant’s claim is also in respect of costs relating to the proceedings before the Opposition Division, which are not recoverable, that claim is inadmissible. EUIPO and the intervener must also therefore be ordered each to pay half of the costs incurred by the applicant before the Board of Appeal. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 May 2019 (Case R 1870/2018-4); 2. Dismisses the action as to the remainder; 3. Orders EUIPO and Anadeco Gestion, SA to bear their own costs and each to pay half of the costs incurred by Artur Florêncio & Filhos, Affsports Lda before the General Court and the Board of Appeal. Marcoulli Frimodt Nielsen Norkus Delivered in open court in Luxembourg on 8 July 2020. E. Coulon S. Papasavvas Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII