Worldwide Machinery v EUIPO - Scaip (SUPERIOR MANUFACTURING) (EU trade mark - Judgment) [2022] EUECJ T-316/21 (01 June 2022)

Judgment Background to the dispute On 29 November 2012, Scaip Srl, the predecessor in law to the intervener, Scaip SpA, 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 in respect of which registration was sought are in Class 12 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Vehicles; apparatus for locomotion by land, self-propelled machines for creating oil pipelines, gas and water conduits, land vehicles comprising self-propelled equipment for placing pipes, kits for converting crawler land vehicles to land vehicles comprising self-propelled equipment for placing pipes, screening equipment, sifting buckets, self-propelled vehicles with screening equipment and sifting bucket, crawler vehicles with a loading platform, crawler land vehicles with vacuum lifters, suction cups for lifters, couplers, crimping machines, hydraulic chucks, self-propelled pipe bending machines’. The trade mark application was published in Community Trade Marks Bulletin No 2013/015 of 22 January 2013 and the mark was registered on 1 May 2013. On 19 October 2018, the applicant, Worldwide Machinery Ltd, filed an application for revocation of the contested mark, on the basis of Article 58(1)(a) of Regulation 2017/1001, on the ground that that mark had not been put to genuine use within a continuous period of five years in connection with all of the goods in respect of which it had been registered. By decision of 12 March 2020, the Cancellation Division of EUIPO partially upheld the application for revocation. It revoked the mark at issue in respect of the goods referred to in paragraph 3 above, with the exception of ‘self-propelled machines for creating oil pipelines, gas and water conduits, land vehicles, namely self-propelled equipment for placing pipes, kits for converting crawler land vehicles to land vehicles comprising self-propelled equipment for placing pipes, sifting buckets, suction cups for lifter, hydraulic chucks, self-propelled pipe bending machines’, for which it maintained the validity of the registration of the contested mark. On 11 May 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision in so far as the contested mark had not been revoked in respect of the goods referred to in paragraph 6 above. By decision of 25 March 2021 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal and found, in essence, like the Cancellation Division, that the evidence provided by the intervener was sufficient to prove genuine use of the contested mark in connection with the goods referred to in paragraph 6 above. Forms of order sought The applicant claims that the Court should: – annul the contested decision in its entirety and annul the decision of the Cancellation Division in so far as the application for revocation of the contested mark was rejected; – revoke the contested mark in relation to ‘self-propelled machines for creating oil pipelines, gas and water conduits, land vehicles, namely self-propelled equipment for placing pipes, kits for converting crawler land vehicles to land vehicles comprising self-propelled equipment for placing pipes, sifting buckets, suction cups for lifter, hydraulic chucks, self-propelled pipe bending machines’; – order the reimbursement of the costs incurred in the proceedings before the General Court. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. The intervener contends that the Court should: – dismiss the action as unfounded; – uphold the Cancellation Division’s decision and, consequently, reject the application for revocation of the contested mark as regards the remaining goods in Class 12; – order the applicant to pay the costs incurred by the intervener in all the phases of the proceedings. Law In support of the action, the applicant puts forward in essence a single plea in law, alleging infringement of Article 58(1)(a) of Regulation 2017/1001. That single plea is divided into three parts, alleging, first, that use of the contested mark in a single Member State is not sufficient to conclude that there has been genuine use in the European Union, secondly, that the evidence provided by the intervener does not make it possible to conclude that there has been genuine use of the contested mark and, thirdly, that a territorial contractual restriction cannot constitute a proper reason for non-use of the contested mark in all the Member States except for Italy. Article 58(1)(a) of Regulation 2017/1001 provides that the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings, if, within a continuous period of five years, the EU trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. In the present case, both the Cancellation Division and the Board of Appeal found that the period from 19 October 2013 to 18 October 2018 was the five-year period in respect of which the applicant was required to prove genuine use of the contested mark, a finding which the parties do not dispute. In interpreting the concept of ‘genuine use’, account should be taken of the fact that the ratio legis of the requirement that the earlier mark must have been put to genuine use is not to assess the commercial success of an undertaking or to review its economic strategy, nor is it to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 11 April 2019, Fomanu v EUIPO – Fujifilm Imaging Germany (Representation of a butterfly) , T‑323/18, not published, EU:T:2019:243 , paragraph 23 and the case-law cited). According to settled case-law, there is genuine use of a trade mark, for the purposes of Article 58(1)(a) of Regulation 2017/1001, 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 (judgment of 3 July 2019, Viridis Pharmaceutical v EUIPO , C‑668/17 P, EU:C:2019:557 , paragraph 38; see also, by analogy, judgment of 11 March 2003, Ansul , C‑40/01, EU:C:2003:145 , paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgment of 4 April 2019, Hesse and Wedl & Hofmann v EUIPO – (TESTA ROSSA) , T‑910/16 and T‑911/16, EU:T:2019:221 , paragraph 29 and the case-law cited). 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 in the course of trade 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 (judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (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). Moreover, for use of an EU trade mark to be deemed genuine, it is not required that that mark be used in a substantial part of the European Union. The possibility that the mark in question may have been used in the territory of a single Member State must not be ruled out, since the borders of the Member States must be disregarded and the characteristics of the goods or services concerned must be taken into account (judgment of 7 November 2019, Intas Pharmaceuticals v EUIPO – Laboratorios Indas (INTAS) , T‑380/18, EU:T:2019:782 , paragraph 80). Lastly, it must be pointed out that 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. It is therefore necessary to carry out an overall assessment which takes into account all the relevant factors of the particular case and entails a degree of interdependence between the factors taken into account (judgment of 8 July 2020, Euroapotheca v EUIPO – General Nutrition Investment (GNC LIVE WELL) , T‑686/19, not published, EU:T:2020:320 , paragraph 35). In that regard, it must be stated that, under Article 10(3) and (4) 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), which is applicable to revocation proceedings pursuant to Article 19(1) of that regulation, the proof of use of a trade mark must concern the place, time, extent and nature of use of the mark and is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 97(1)(f) of Regulation 2017/1001. It is in the light of those considerations that the three parts of the single plea must be examined. The second part of the single plea, alleging that the evidence does not serve to prove genuine use of the contested mark The applicant complains that the Board of Appeal found that there had been genuine use of the contested mark although the evidence provided by the intervener does not contain any indication regarding the place, time, extent or nature of use and that it relied to a large extent on probabilities or presumptions and not on solid and objective evidence. First, it submits that the Board of Appeal did not take into account the evidence submitted by the applicant which shows that the intervener in reality uses only the mark SCAIP or, at least, that it uses the contested mark in conjunction with the mark SCAIP. Secondly, it contends that the Board of Appeal erred in taking into consideration evidence which does not fall within the relevant period or which is undated. Thirdly, the applicant disputes the relevance of the invoices and the declaration by the account manager of the advertising agency on which the Board of Appeal relied, in particular, in the context of the assessment of the place and extent of use of the contested mark. Fourthly, it submits that the Board of Appeal should have disregarded items of evidence Nos 4 to 8 since they do not give any indication concerning the place, time, extent and nature of use of the contested mark. EUIPO and the intervener dispute the applicant’s arguments. It is apparent from paragraph 43 of the contested decision that, in order to furnish proof of genuine use of the contested mark, the intervener provided the following items of evidence: – exclusive distribution agreements dated 1996, 2007 and 2013 (renewed in 2015) between it and the applicant, the geographical scope of which is worldwide, with the exclusion of Italy and the listed ‘reserved customers’ (item of evidence No 1); – a fax dated 2002 relating to sketches of the contested mark (item of evidence No 2); – invoices dated 2009 to 2013 sent by the intervener to clients in Italy and also certificates of conformity and certificates regarding the machine-marking plates for the pipe layers and pipe benders sold (item of evidence No 3); – an undated catalogue showing a padding machine (items of evidence Nos 3.1 and 14); – extracts from the International Pipe Line & Offshore Contractors Association yearbook 2014-2015 (IPLOCA; international sector association) (item of evidence No 4); – a vacuum lift brochure, together with a related invoice which is dated 2016 and was issued by a printer to the intervener (item of evidence No 5); – a user manual dated 2012 concerning pipe bending machines, together with a related invoice which is dated 31 July 2014 and was issued by a printer to the intervener (item of evidence No 6); – an instruction manual for padding machines, together with a related invoice which is dated 31 May 2016 and was issued by a printer to the intervener (item of evidence No 6.1); – calendars dated 2013, 2014 and 2017 (item of evidence No 7); – an institutional brochure relating to pipeline equipment and related invoices which were issued by a printer and are dated 26 October and 30 November 2016 and also invoices dated 2014, 2015 and 2017 which were issued to the intervener for the printing of labels bearing the contested mark (item of evidence No 8); – sales invoices dated 2014 to 2016 which were issued by the intervener to various clients in Italy, together with the corresponding technical sheets for padding buckets, pipe bending machines, vacuum lifts, suction pads and padding machines (item of evidence No 9 and the evidence submitted on 14 August 2019); – photographs showing pipe layers, dated 18 December 2018 (item of evidence No 10); – three sales invoices dated 2016 and 2017 which were issued by the intervener to a client in Australia (items of evidence Nos 11 to 13); – an undated old user manual (item of evidence No 15); – a cancellation decision of the Australian Intellectual Property Office dated 18 August 2017 (item of evidence No 16); – extracts from TMview relating to two trade marks registered in the name of the applicant (items of evidence Nos 17 and 18); – undated extracts from the intervener’s website showing its machines (item of evidence No 19); – a declaration by an account manager in an advertising agency, which is dated 7 February 2018, stating that many advertising projects were carried out for the intervener in the period 2012 to 2015, together with the profile of the intervener’s undertaking, extracts from catalogues and a photograph taken inside the intervener’s plant in Parma (Italy) showing a pipe bending machine (item of evidence No 20). Contrary to what the applicant seems to submit, it is in no way necessary for each item of evidence to give information about all four elements to which proof of genuine use must relate, namely the place, time, extent and nature of use. An accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 5 March 2019, Meblo Trade v EUIPO – Meblo Int (MEBLO) , T‑263/18, not published, EU:T:2019:134 , paragraph 84 and the case-law cited). The question whether a trade mark has been put to genuine use requires that an overall assessment be carried out, taking into account all the relevant factors. Thus each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning (see judgment of 21 November 2013, Recaro v OHIM – Certino Mode (RECARO) , T‑524/12, not published, EU:T:2013:604, paragraph 31 and the case-law cited). The time of use In the present case, in the first place, it must be stated, as the Board of Appeal observed in paragraph 45 of the contested decision, that the distribution agreement which was renewed in 2015 (item of evidence No 1), the extracts from the IPLOCA yearbook 2014-2015 (item of evidence No 4), the vacuum lift brochure, together with a related invoice dated February 2016 (item of evidence No 5), the user manuals concerning pipe bending machines and padding machines, together with related invoices dated 31 July 2014 and 31 May 2016 (items of evidence Nos 6 and 6.1), the calendars dated 2013, 2014 and 2017 (item of evidence No 7), the invoices dated 26 October and 30 November 2016 relating to the printing of an institutional brochure for pipeline equipment and the invoices dated 2014, 2015 and 2017 relating to the printing of labels bearing the contested mark (item of evidence No 8), the sales invoices dated 2014 to 2016 (item of evidence No 9) and those dated 2016 and 2017 (items of evidence Nos 11 to 13) and the declaration referring to advertising projects for the intervener in the period 2012 to 2015 (item of evidence No 20) fall within the relevant period. The contested mark appears in all of those items of evidence, with the sole exception of the distribution agreement which, however, relates to the relevant goods. Consequently, the Board of Appeal was right in finding, in paragraph 49 of the contested decision, that the evidence provided sufficient indications concerning the time of use. That finding cannot be called into question by the applicant’s arguments. First, as regards the extracts from the IPLOCA yearbook (item of evidence No 4), with regard to which the applicant observes that only the third page is dated 2014-2015 and that that page does not show use of the contested mark, it must be stated that, on the one hand, the first two pages show machines to which the contested mark is affixed, whereas the third page shows a photograph of one of the intervener’s machines which has the caption ‘lowering pipe with Superior pipelayers – Italy’. On the other hand, the three pages extracted all appear to come from IPLOCA yearbooks since they have the same format and binding. The handwritten information on the second page according to which that page dates from 2014-2015 is borne out by the third page, which specifically states that it was published that year and which shows that the goods marketed under the contested mark were promoted in that yearbook, at the very least, during the year 2014-2015. Secondly, as regards the brochure (item of evidence No 5) and the user manuals (items of evidence Nos 6 and 6.1), which are, according to the applicant, undated or do not fall within the relevant period and with regard to which the applicant submits that no connection can be made between them and the invoices related to their printing, it must be stated that those invoices fall within the relevant period and that they mention reference numbers relating to the printing of the brochure and the user manuals. As the intervener has correctly pointed out, the reference numbers in question correspond to those mentioned on the last page of the brochure and on the first page of the user manuals, with the result that a connection can be made between the invoices and the documents in question. Although it is true that the first page of the user manual relating to a pipe bending machine (item of evidence No 6) mentions the date of February 2012, the intervener has explained that that is the revision date of that manual, which is, moreover, confirmed by the information ‘REV 01’, but that that manual was indeed printed in 2014, which is confirmed by the corresponding invoice which reproduces the reference number of that manual. Accordingly, it must be held that, like the invoices related to their printing, the brochure and the user manuals in question fall within the relevant period. Thirdly, as regards the calendars submitted by the intervener (item of evidence No 7), which do not, according to the applicant, contain any indication regarding the time of use, it must be stated that that argument is unfounded, since it is clearly stated on the extracts from those calendars that they relate to the months of January and December 2013, January, July and November 2014 and August 2017. Fourthly and lastly, as regards the institutional brochure relating to pipeline equipment and the labels bearing the contested mark (item of evidence No 8), which also do not, according to the applicant, contain any indication regarding the time of use, it must be stated that the annexed invoices fall within the relevant period and state clearly that they relate to the printing of the institutional brochures and labels in question. Those documents therefore contain information regarding the time of use and fall within the relevant period. In the second place, the Board of Appeal found in essence, first, in paragraphs 46 to 48 of the contested decision, that the evidence which did not fall within the relevant period or was undated should not be disregarded without further consideration and, secondly, in paragraph 75 of that decision, that it contributed, in the present case, towards substantiating the use of the contested mark together with other documents and information. In that regard, the applicant submits that the Board of Appeal should have disregarded that evidence, since it does not prove use of the contested mark. According to the case-law, it is not precluded that, in assessing the genuineness of use of a trade mark during the relevant period, account may be taken, where appropriate, of any circumstances subsequent to that period which may make it possible to confirm or better assess the extent to which that mark was used during the relevant period (see judgment of 3 October 2019, 6Minutes Media v EUIPO – ad pepper media International (ADPepper) , T‑668/18, not published, EU:T:2019:719 , paragraph 85 and the case-law cited). The same applies to circumstances which are prior to the relevant period (see, to that effect, judgment of 5 July 2016, Future Enterprises v EUIPO – McDonald’s International Property (MACCOFFEE) , T‑518/13, EU:T:2016:389, paragraph 55 and the case-law cited). However, in both cases, the taking into consideration of such circumstances is necessarily subject to the submission of documents showing use of the contested mark during that period (judgment of 7 July 2021, Frommer v EUIPO – Minerva (I-cosmetics) , T‑205/20, not published, EU:T:2021:414 , paragraph 53). In addition, although undated documents may, in certain cases, be used to establish use of a mark (see, to that effect, judgment of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY) , T‑287/13, EU:T:2015:99 , paragraph 68), such evidence can, however, be relevant for proving such use during the reference period only to the extent to which it serves to confirm facts inferred from other items of evidence (judgment of 2 February 2017, Marcas Costa Brava v EUIPO – Excellent Brands JMI (Cremcaffé by Julius Meinl) , T‑686/15, not published, EU:T:2017:53 , paragraph 59). First, as regards the distribution agreements dated 1996 and 2007 (item of evidence No 1), the fax dated 2002 relating to sketches of the contested mark (item of evidence No 2), the invoices dated 2009 to 2013 (item of evidence No 3) and the undated extracts from the intervener’s website (item of evidence No 19), the Board of Appeal confined itself, in paragraph 48 of the contested decision, to noting, relying on the case-law of the General Court, that the evidence that was dated outside the relevant period or undated was not simply to be disregarded without further consideration, as it could serve to show how the mark had been used in relation to the relevant goods, or to provide information regarding the type of goods manufactured by the proprietor of the mark or could contain conclusive indirect proof, and could not therefore be ignored in the overall assessment of the evidence. However, contrary to what the applicant assumes, the Board of Appeal did not, subsequently, in any way rely on that evidence in its assessment of the use which the intervener had made of the contested mark. Secondly, as regards the evidence which does not fall within the relevant period and was taken into account by the Board of Appeal, it must be stated that the photograph dated 18 December 2018 (item of evidence No 10) can serve to show how the contested mark appears on a pipe layer and therefore substantiates, in particular, items of evidence Nos 4, 5, 6 and 7, which fall within the relevant period and from which it is apparent that that mark is used on the goods in question. Thirdly, as regards the undated evidence which was taken into account by the Board of Appeal, it must be stated that the catalogue showing a padding machine (items of evidence Nos 3.1 and 14) is similar to the instruction manual for padding machines (item of evidence No 6.1), which, as has been stated in paragraph 29 above, falls within the relevant period, and that it can therefore serve to substantiate the use of the contested mark on material related to the use of those goods. The same is true of the old user manual (item of evidence No 15). Accordingly, it must be stated that items of evidence Nos 3.1, 10, 14 and 15 are relevant for the purposes of assessing whether there has been genuine use of the contested mark in the light of the items of evidence which they substantiate and which fall within the relevant period. The Board of Appeal did not therefore err in taking into account those items of evidence which did not fall within the relevant period or were undated and which it regarded as contributing, in the present case, towards substantiating the use of the contested mark together with other documents and information. The place of use In the present case, the Board of Appeal found, in paragraphs 54 and 55 of the contested decision, that the place of use was Italy, which could be inferred from the invoices addressed to clients located in different Italian cities (item of evidence No 9) as well as from the fact that some goods had been manufactured in Italy and exported to Australia (items of evidence Nos 11 to 13). Furthermore, the Board of Appeal pointed out in essence that the intervener had assigned advertising projects to an agency located in Italy which had used the contested mark in the graphics artwork (item of evidence No 20), with the result that the relevant goods could be regarded as having been promoted in Italy. The applicant does not in itself dispute the Board of Appeal’s finding that the place of use of the contested mark is Italy and that a conversion kit manufactured by the intervener was exported to Australia. However, it submits – in addition to its argument that use of the contested mark in a single Member State is not sufficient to prove genuine use in the European Union, which will be examined below in the context of the first part of the single plea – that the Board of Appeal erred in assuming that the advertising projects (item of evidence No 20) took place in the European Union or were intended for a public in the European Union and that they related to the contested mark. It also observes that the invoices (item of evidence No 9) show that use of the contested mark is confined only to a small area of Italy. In that regard, first, although it is true that the written declaration and the annexed advertising projects do not state the place in which those projects were disseminated, it must, however, be pointed out that, in the context of an overall assessment, those documents may be taken into consideration in conjunction with other items of evidence in order to establish that those projects were disseminated within the European Union. In the present case, it is apparent from the invoices submitted by the intervener (item of evidence No 9) that the relevant goods were placed on the Italian market. Furthermore, contrary to what the applicant claims, the advertising projects annexed to the written declaration show a number of photographs of the relevant goods bearing the contested mark and display the information that the intervener is the manufacturer of those goods covered by the contested mark and is established in Parma. In those circumstances, in accordance with the case-law which has been referred to in paragraph 25 above, it can be deduced from that accumulation of items of evidence that the advertising projects in question targeted, at the very least, the Italian public. Secondly, although it is true that the invoices submitted by the intervener are addressed to clients in the regions of Tuscany, Emilia-Romagna and Lombardy, the intervener also provided extracts from the IPLOCA yearbook (item of evidence No 4). Since IPLOCA is an association which operates internationally, it can be deduced from that that its yearbook, in which the contested mark appears clearly, as has been stated in paragraph 28 above, was disseminated internationally, which therefore includes, inter alia, other Member States. Consequently, contrary to what the applicant claims, the use of the contested mark is not confined to those regions of Italy. The Board of Appeal was there right in finding, in paragraph 55 of the contested decision, that the relevant goods had been promoted, at the very least, in Italy. The nature of use In the present case, it must be pointed out that, in the first place, the items of evidence submitted by the intervener, such as the extracts from the IPLOCA yearbook (item of evidence No 4), the vacuum lift brochure (item of evidence No 5), the user manuals concerning pipe bending machines and padding machines (items of evidence Nos 6 and 6.1) and the calendars showing photographs of vacuum lifts, pipe layers and pipe bending machines (item of evidence No 7), show that the contested mark was affixed to the relevant goods. The applicant’s argument that the calendar extracts can, at the very most, show use in connection with Class 16 cannot therefore succeed. Furthermore, the contested mark also appears on an institutional brochure of the intervener relating to pipeline equipment (item of evidence No 8), in the headers of the intervener’s invoices which relate to the sale of conversion kits, hydraulic mandrels, pipe bending machines, suction pads, vacuum lifts, screening buckets and padding machines (items of evidence Nos 9 and 11 to 13), on the brochure and user manuals (items of evidence Nos 5, 6 and 6.1) and on the extracts from the IPLOCA yearbook (item of evidence No 4), which show clearly that the intervener is the manufacturer of the goods covered by the contested mark. The Board of Appeal was therefore right in finding in essence, in paragraphs 64 and 74 of the contested decision, that the contested mark had been used in accordance with its essential function, which is to identify and guarantee the identity of the origin of the goods for which it is registered, and in connection with all of the relevant goods. That finding cannot be called into question by the applicant’s argument that it is not possible to establish from the description of the items invoiced (items of evidence Nos 9 and 11 to 13) whether what was involved were goods bearing the contested mark. First, according to the case-law, it is not necessary that the mark be affixed to the goods for there to be genuine use of the mark in relation to those goods. It is sufficient that the use of the mark establishes a connection between that mark and the marketing of the goods. The presence of the mark on invoices, in articles and in advertisements relating to the goods concerned is capable of establishing that connection (see judgment of 24 March 2021, Novomatic v EUIPO – adp Gauselmann (Power Stars) , T‑588/19, not published, EU:T:2021:157 , paragraph 53 and the case-law cited). Secondly, when they are assessed together with the other items of evidence in accordance with the case-law which has been referred to in paragraph 25 above, the invoices in question do show that the items invoiced related to goods sold under the contested mark, whether or not the mark was affixed to the goods themselves. On the one hand, that is apparent from the technical sheets submitted on 14 August 2019 and from the catalogue, brochure and user manuals (items of evidence Nos 3.1, 5, 6, 6.1 and 14), which mention the reference numbers of the models of some of the relevant goods which appear specifically on those invoices. On the other hand, as has already been stated in paragraph 45 above, the various photographs of the relevant goods sold by the intervener (see, in particular, items of evidence Nos 4, 5, 6, 6.1, 7, 10, 14 and 20) show that the contested mark is affixed to those goods. Consequently, the applicant’s argument is unfounded. Furthermore, it is also necessary to reject the applicant’s argument that a user manual, since it is usually distributed after a sale has taken place, cannot contribute towards maintaining or creating market shares for the goods protected by the contested mark. On the one hand, a mark affixed to a user manual enables the consumer, on the occasion of a subsequent acquisition, to repeat the experience if was a positive experience, or to avoid doing so, if it was negative, and that use of the mark therefore relates specifically to the essential function of trade marks. On the other hand, the invoices submitted by the intervener (item of evidence No 9) show that a user manual is frequently provided at the time of sale of the product in question and not afterwards. In the second place, the Board of Appeal found, first, in paragraph 69 of the contested decision, that, although the evidence showed that the contested mark had been used in the form in which it was registered on the invoices and on the goods themselves, that evidence in addition showed that the contested mark had also been used in the form reproduced below: It found, secondly, in paragraph 70 of that decision, that the fact that the contested mark had been used together with the ‘house’ mark SCAIP did not alter its distinctive character, within the meaning of Article 18(1)(a) of Regulation 2017/1001. In that regard, it must be stated that the applicant disputes only the Board of Appeal’s assessment in paragraph 70 of the contested decision, submitting that the Board of Appeal did not take into account the evidence that it had submitted which showed that the intervener in reality uses only the mark SCAIP or, at the very least, that it uses the contested mark together with the mark SCAIP. However, first, it is apparent from the evidence submitted by the intervener that the intervener has indeed used the contested mark in connection with the relevant goods and not only the mark SCAIP. The argument that the intervener has also marketed goods covered by the contested mark which bear only the mark SCAIP, even if it were proved, is irrelevant in that regard. Secondly, the Board of Appeal did, in paragraph 70 of the contested decision, take into account the applicant’s argument that the contested mark had been used together with the ‘house’ mark SCAIP, but found that that did not alter the distinctive character of the contested mark, within the meaning of Article 18(1)(a) of Regulation 2017/1001, since it is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group, which is the ‘house’ mark. The applicant has not put forward any argument which is capable of calling that finding into question. It follows from all of the foregoing that the Board of Appeal was right in finding, in paragraphs 64, 71 and 74 of the contested decision, that the contested mark had been used to identify the commercial origin of the relevant goods, in a form which did not alter its distinctive character, and had been used in connection with those goods. The extent of use In the present case, in paragraphs 58 to 61 of the contested decision, the Board of Appeal found that the use of the contested mark was sufficiently extensive. First, it pointed out that the evidence clearly showed that the relevant goods had been sold in Italy, to different clients and for several years, and that at least a ‘conversion kit’ had been exported from Italy to Australia. Secondly, it pointed out that, although concrete information regarding price and revenue realised was indeed missing, that was due to reasons of confidentiality. Thirdly, it found that, although the number of products sold and/or exported was quite low, given the regularity and length of use, as well as the nature of the goods, the specific niche market (highly specialised goods for the pipeline industry) and the considerably high price of some machines, the contested mark had been used in a serious attempt to create and maintain an outlet for the relevant goods. Fourthly and lastly, it observed that the intervener had assigned relevant advertising projects to an agency located in Italy which had used the contested mark in the graphics artwork and had regularly printed labels bearing that mark. In that regard, the applicant submits, as regards the invoices submitted by the intervener (items of evidence Nos 9 and 11 to 13), that crucial information regarding prices and revenue is missing in the invoices addressed to clients in Italy and that the export of a single conversion kit with a low value to Australia cannot in itself constitute proof of genuine use. Furthermore, it claims that the declaration by the account manager of the advertising agency (item of evidence No 20) does not contain any verifiable information as to the scope of the alleged advertising projects. The question whether use is sufficient to maintain or create market share for the goods or services protected by the mark depends on several factors and on a case-by-case assessment. The characteristics of those goods or 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 undertaking which is the proprietor of that mark or merely some of them, or evidence of use of the mark which the proprietor is able to provide, are among the factors which may be taken into account (see judgment of 11 May 2006, Sunrider v OHIM , C‑416/04 P, EU:C:2006:310 , paragraph 71 and the case-law cited). It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule , which would not allow EUIPO or, following the bringing of an action, the Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down. Thus, when it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use (see judgment of 11 May 2006, Sunrider v OHIM , C‑416/04 P, EU:C:2006:310 , paragraph 72 and the case-law cited). In the present case, as regards the frequency and length of use of the contested mark, it must first of all be pointed out, as observed by the Board of Appeal that, on the one hand, 12 invoices relating to the sale of the relevant goods were sent to a number of clients established in various Italian cities (item of evidence No 9) and that, on the other hand, three invoices, one of which relates to the sale of a conversion kit, were sent to a client established in Australia (item of evidence No 11). Those invoices therefore show that the contested mark was used publicly and outwardly on a number of occasions during the relevant period. Next, it must be stated that the evidence shows that the contested mark was used regularly during the relevant period, namely between 2013 and 2017 (see, in particular, items of evidence Nos 4, 5, 6, 6.1, 7, 8, 9, 11 to 13 and 20). As regards the commercial volume, it must first of all be stated that the invoices submitted by the intervener (items of evidence Nos 9 and 11) show that four conversion kits, six hydraulic/pneumatic mandrels, five lined bending sets, two bending machines, seven vacuum lifts, seven suction pads, four screening buckets and one padding machine were sold between 2014 and 2016. In that regard, it must be borne in mind that, according to settled case-law (see paragraph 15 above), the purpose of the requirement for genuine use 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 cases where large-scale commercial use has been made of the marks. Consequently, the turnover and the volume of sales of the goods under the contested 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 contested mark need not always be quantitatively significant in order to be deemed genuine (see, to that effect, judgment of 6 March 2019, Serenity Pharmaceuticals v EUIPO – Gebro Holding (NOCUVANT) , T‑321/18, not published, EU:T:2019:139 , paragraph 50 and the case-law cited). Accordingly, although the sales which have been referred to may be considered to be rather low, it must, however, be pointed out, as the Board of Appeal in essence did in paragraph 60 of the contested decision, that those goods are not everyday consumer goods, but are aimed at a highly specialised professional public and are part of a specific niche market, that of the pipeline industry. Furthermore, although it is true that those invoices do not, for reasons of confidentiality, state the price of the goods in question or the income generated by the sale of those goods, that in no way, contrary to what the applicant seems to submit, constitutes an obstacle for the purposes of assessing the extent of use of the contested mark, since it is a matter of common knowledge that those goods are generally very expensive. Lastly, it is apparent from items of evidence Nos 5, 6, 6.1 and 8 that a certain amount of material connected with the use or promotion of the goods at issue, in which the contested mark was used, was printed during the relevant period. The invoices in those items of evidence show that 50 brochures relating to vacuum lifts, 10 user manuals relating to pipe bending machines, 2 user manuals relating to padding machines, 376 labels bearing the contested mark and 410 institutional brochures relating to pipeline equipment were printed between 2014 and 2017. In those circumstances, the Board of Appeal was right in finding in essence, in paragraphs 60 and 61 of the contested decision, that the contested mark had been used in a serious attempt to create and maintain an outlet for the relevant goods, with the result that the use of that mark could be regarded as sufficiently extensive. It therefore follows from all of the foregoing considerations that the Board of Appeal did not err in finding, in paragraphs 76 and 77 of the contested decision, that, taking into account the characteristics of the market concerned, the nature of the relevant goods, the territorial extent and the extent of use as well as its regularity and length, there had been genuine use of the contested mark in connection with the relevant goods. The second part of the single plea must therefore be rejected as unfounded. The first part of the single plea, alleging that use of the contested mark in a single Member State is not sufficient First, the applicant submits, relying on the judgments of 19 December 2012, Leno Merken (C‑149/11, EU:C:2012:816 ), and of 6 October 2017, Falegnameria Universo dei F.lli Priarollo v EUIPO – Zanini Porte (silente PORTE & PORTE) (T‑386/16, not published, EU:T:2017:706 , paragraphs 46 to 53), that use of an EU trade mark in a single Member State is not, in principle, sufficient to be regarded as genuine use in the European Union as a whole and that the only exception to that principle is where the market for the relevant goods or services is restricted to the territory of a single Member State. The applicant argues that that is not, however, the case. It contends that the Board of Appeal therefore erred in finding that use in that single Member State could be sufficient to be regarded as genuine use. Secondly, if its interpretation of the judgment of 19 December 2012, Leno Merken (C‑149/11, EU:C:2012:816 ), were not upheld, the applicant considers that, according to the judgment of 11 May 2006, Sunrider v OHIM (C‑416/04 P, EU:C:2006:310 , paragraph 76), the territorial scope of the use is only one of several factors to be taken into account in the determination of whether it is genuine or not. It submits that the Board of Appeal also erred in assuming that use of an EU trade mark in a single Member State would be sufficient to show genuine use in the European Union, without taking into consideration the other relevant factors in the present case. In that regard, the applicant points out that the intervener has used the contested mark only in a limited geographical area in Italy and that that use has not been shown to be quantitatively large, which does not make it possible to conclude that there has been genuine use of the contested mark in the European Union. EUIPO and the intervener dispute the applicant’s arguments. According to the case-law, the territorial scope of the use is not a separate condition for genuine use but one of the factors determining genuine use, which must be included in the overall analysis and examined at the same time as other such factors (see, to that effect, judgments of 11 May 2006, Sunrider v OHIM , C‑416/04 P, EU:C:2006:310 , paragraph 76; of 19 December 2012, Leno Merken , C‑149/11, EU:C:2012:816 , paragraph 36; and of 7 November 2019, INTAS , T‑380/18, EU:T:2019:782 , paragraph 74). Furthermore, the territorial borders of the Member States must be disregarded in assessing whether there is ‘genuine use in [the Union]’ (see, to that effect, judgment of 19 December 2012, Leno Merken , C‑149/11, EU:C:2012:816 , paragraph 44). The Court of Justice thus expressly rejected, first, the submission before it that the territorial scope of the use of an EU trade mark cannot under any circumstances be limited to the territory of a single Member State (see, to that effect, judgments of 19 December 2012, Leno Merken , C‑149/11, EU:C:2012:816 , paragraph 49, and of 7 November 2019, INTAS , T‑380/18, EU:T:2019:782 , paragraph 76) and, secondly, the submission that, even if the borders of the Member States within the internal market are disregarded, the condition of genuine use of an EU trade mark requires that the trade mark should be used in a substantial part of the European Union, which may correspond to the territory of a Member State (see, to that effect, judgments of 19 December 2012, Leno Merken , C‑149/11, EU:C:2012:816 , paragraphs 52 and 53, and of 7 November 2019, INTAS , T‑380/18, EU:T:2019:782 , paragraph 76). In that regard, the Court of Justice stated that, whilst it is reasonable to expect that an EU trade mark should be put to use in a larger area than the territory of a single Member State in order for that use to be capable of being deemed to be ‘genuine use’, it is not necessary that the mark should be used in an extensive geographic area for the use to be deemed genuine, since such a qualification will depend on the characteristics of the product or service concerned on the corresponding market (judgments of 19 December 2012, Leno Merken , C‑149/11, EU:C:2012:816 , paragraph 54, and of 7 November 2019, INTAS , T‑380/18, EU:T:2019:782 , paragraph 77). Since the assessment of whether the use of the trade mark is genuine is carried out by reference to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark serves to create or maintain market shares for the goods or services for which it was registered, it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule, which would not allow the EU judicature to appraise all the circumstances of the dispute before it, cannot therefore be laid down (judgment of 19 December 2012, Leno Merken , C‑149/11, EU:C:2012:816 , paragraph 55). Accordingly, for use of an EU trade mark to be deemed genuine, it is not required that that mark be used in a substantial part of the European Union. Furthermore, the possibility that the mark in question may have been used in the territory of a single Member State must not be ruled out, since the borders of the Member States must be disregarded and the characteristics of the goods or services concerned must be taken into account (judgment of 7 November 2019, INTAS , T‑380/18, EU:T:2019:782 , paragraph 80). Contrary to what the applicant submits, when the Court of Justice, in paragraph 50 of the judgment of 19 December 2012, Leno Merken (C‑149/11, EU:C:2012:816 ), pointed out that it cannot be ruled out that, ‘in certain circumstances’, the market for the goods or services for which an EU trade mark has been registered is in fact restricted to the territory of a single Member State and that, in such a case, use of the EU trade mark in that territory might satisfy the conditions both for genuine use of an EU trade mark and for genuine use of a national trade mark, it was not, however, seeking to establish that acknowledging that the use of an EU trade mark that had been used in a single Member State was genuine constituted an exception to a general principle. Indeed, the Court of Justice referred rather to the conditions laid down by settled case-law for assessing whether the use of a mark is genuine, namely all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark serves to create or maintain market shares for the goods or services for which it was registered (see, to that effect, judgment of 7 November 2019, INTAS , T‑380/18, EU:T:2019:782 , paragraph 79 and the case-law cited). Accordingly, first, use of an EU trade mark in a single Member State can be regarded as sufficient to constitute genuine use and, secondly, a finding that there has been genuine use of such a mark in a single Member State cannot be limited to cases in which the market for the goods or services for which a contested mark has been registered is restricted to the territory of that single Member State. The qualification of the use of the mark as genuine will depend on the characteristics of the goods or services concerned on the corresponding market and, more generally, on all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark serves to create or maintain market shares for the goods or services for which it was registered (see, to that effect, judgment of 19 December 2012, Leno Merken , C‑149/11, EU:C:2012:816 , paragraph 55). As EUIPO correctly points out, there is, in the case-law of the General Court, a whole series of decisions which confirms that it is necessary to assess all the facts and circumstances relevant to establishing whether the commercial use of the contested mark is real and that the very limited geographic scope of that use does not preclude the use of the mark from being genuine, even if there are no circumstances which have the effect that the relevant market is, by its nature, restricted to a single Member State (see, to that effect, by way of example, judgments of 30 January 2015, Now Wireless v OHIM – Starbucks (HK) (now) , T‑278/13, not published, EU:T:2015:57 , paragraphs 52 and 53; of 15 July 2015, TVR Automotive v OHIM – TVR Italia (TVR ITALIA) , T‑398/13, EU:T:2015:503 , paragraph 57; and of 15 November 2018, DRH Licensing & Managing v EUIPO – Merck (Flexagil) , T‑831/17, not published, EU:T:2018:791 , paragraph 67). As has been stated in the context of the examination of the second part of the single plea, in view, first, of the regularity and length of use and, secondly, of the characteristics of the market and of the goods in respect of which that use has been proved, namely that they are very expensive, highly specialised goods for the pipeline industry which are part of a niche market, it must be held, in the light of the case-law referred to in paragraphs 70 to 74 above, that the Board of Appeal did not make any error of assessment when it found in essence, in paragraphs 54, 55, 77 and 80 of the contested decision, in the context of an overall assessment of the evidence and of the relevant factors, that the intervener had proved that the contested mark had been used in Italy and that that use was sufficient to be deemed to be genuine use in the European Union. That finding cannot be called into question by the applicant’s arguments. First, as regards the judgment of 6 October 2017, silente PORTE & PORTE (T‑386/16, not published, EU:T:2017:706 ), on which the applicant relies, it must be stated that, although it is true that the Court found that the criterion of territoriality of use was not satisfied in that case since, on the one hand, the documentation provided showed use of the contested mark only with regard to Italian territory and, on the other hand, the goods at issue did not have any specific territorial nature which justified their use being limited solely to Italian territory, that case, however, concerned basic items which were used and sold in all the places in which there were buildings with rooms to be closed and which were capable of being used by all the consumers in the European Union (see judgment of 6 October 2017, silente PORTE & PORTE , T‑386/16, not published, EU:T:2017:706 , paragraphs 48 to 53). However, that is not the case here. The relevant goods are not basic items, such as doors, but are highly specialised goods aimed at a specialist professional public and are part of a small market segment. Consequently, the assessment of the criterion of territoriality of use carried out by the Court in the judgment of 6 October 2017, silente PORTE & PORTE (T‑386/16, not published, EU:T:2017:706 ), cannot be applied in the present case. Secondly, as regards the applicant’s argument that the Board of Appeal erred in assuming that use of an EU trade mark in a single Member State would be sufficient to show genuine use in the European Union, without taking into consideration the other relevant factors in the present case, in accordance with the judgment of 11 May 2006, Sunrider v OHIM (C‑416/04 P, EU:C:2006:310 , paragraph 76), it must first of all be pointed out that the applicant’s reasoning is contradictory since, on the one hand, it correctly states that the territorial scope of the use is one of several factors to be taken into consideration in determining whether use of an EU trade constitutes genuine use in the European Union and, on the other hand, it claims that the Board of Appeal erred inasmuch as it did not rule out the possibility that the use of the contested mark could, in the present case, be genuine on the ground that it was limited to the territory of a single Member State. Next, it must be stated that, contrary to what the applicant submits, the Board of Appeal did not base its assessment on the assumption that use in a single Member State would be sufficient. On the contrary, it is apparent from paragraphs 44 to 74 of the contested decision that the Board of Appeal assessed all of the relevant factors in the present case, namely the time, place, extent and nature of use. Although it is true that the overall assessment, which it subsequently carried out, is succinct, it is, however, apparent from paragraph 76 of the contested decision that the Board of Appeal assessed all of those factors as a whole before concluding, in paragraph 77 of that decision, that the intervener had proved genuine use of the contested mark in connection with the relevant goods. Thirdly, in so far as the applicant reiterates its argument that the contested mark was not put to genuine use because the use of that mark was not quantitatively significant and was limited to a small area of Italy, it is sufficient to refer to the examination which has been carried out above in the context of the second part of the single plea. That argument must therefore be rejected. In the light of all of the foregoing considerations, the first part of the single plea must be rejected as unfounded. The third part of the single plea, alleging that the Board of Appeal erred in finding that there was a proper reason for the use of the contested mark in a single Member State The applicant submits that the Board of Appeal erred in stating that a contractual restriction which had been accepted by the intervener to sell the relevant goods only in Italy could be considered to be a ‘justification’ for non-use of the contested mark, for the purposes of Article 58 of Regulation 2017/1001. It argues that it follows, in particular, from the judgment of 14 June 2007, Häupl (C‑246/05, EU:C:2007:340, paragraphs 54 and 55), that justifications for non-use can relate only to circumstances arising independently of the will of the proprietor of the trade mark which constitute an obstacle to the use of the mark. It contends that, given that the ‘genuine use restricted to one single Member State’ arose from the will of the intervener, since it accepted the contractual clause, that cannot be regarded as a justification. Furthermore, it submits that that restriction was in force only during part of the relevant period. EUIPO and the intervener dispute the applicant’s arguments. However, it must be stated that the applicant’s arguments are the result of a misreading of the contested decision. As is apparent from paragraph 77 of the contested decision, the Board of Appeal found that there had been genuine use of the contested mark in connection with the goods for which it was registered. It did not in the least therefore refer to any proper reason for non-use, for the purposes of Article 58(1)(a) of Regulation 2017/1001. In the light of the foregoing, the third part of the applicant’s single plea must be rejected as ineffective and consequently the action must be dismissed in its entirety, without it being necessary to rule on whether the second part of the applicant’s first head of claim and its second head of claim are admissible, which EUIPO disputes. As regards the intervener’s heads of claims, it must be pointed out that, since the Board of Appeal upheld the Cancellation Division’s decision, the first part of the intervener’s second head of claim requesting that the Court uphold the Cancellation Division’s decision must be understood as being included in its first head of claim requesting that the Court dismiss the action brought against the Board of Appeal’s decision (see, to that effect, judgment of 23 February 2010, Özdemir v OHIM – Aktieselskabet af 21. november 2001 (James Jones) , T‑11/09, not published, EU:T:2010:47, paragraph 14). Likewise, since the Board of Appeal’s decision upheld the Cancellation Division’s decision rejecting the application for revocation of the contested mark with regard to the goods referred to in paragraph 6 above, the second part of the intervener’s second head of claim seeking the rejection of the application for revocation in respect of those goods must also be regarded as seeking the dismissal of the action (see, to that effect, judgment of 13 July 2018, Star Television Productions v EUIPO – Marc Dorcel (STAR) , T‑797/17, not published, EU:T:2018:469 , paragraph 75). 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. In the present case, EUIPO has claimed that the applicant should be ordered to pay the costs. The intervener has claimed that the applicant should be ordered to pay the costs relating to ‘all the phases of the proceedings’. Accordingly, in so far as the intervener’s head of claim must be understood as meaning that it is requesting that the applicant be ordered to pay the costs incurred before the Cancellation Division, the Board of Appeal and the Court, first, it must be pointed out that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows that the costs incurred for the purposes of the proceedings before the Cancellation Division cannot be regarded as recoverable costs (see judgment of 25 April 2013, Bell & Ross v OHIM – KIN (Wristwatch case) , T‑80/10, not published, EU:T:2013:214, paragraph 164 and the case-law cited). Consequently, the intervener’s head of claim that the applicant should be ordered to pay the costs incurred before the Cancellation Division must be rejected. Secondly, as regards the intervener’s claim that the applicant should be ordered to pay the costs of the proceedings before the Board of Appeal, it is sufficient to state that, since the present judgment is dismissing the action brought against the contested decision, those costs continue to be governed by that decision (see, to that effect, judgment of 4 October 2017, Intesa Sanpaolo v EUIPO – Intesia Group Holding (INTESA) , T‑143/16, not published, EU:T:2017:687 , paragraph 74). Accordingly, since the applicant has been unsuccessful in the present proceedings, it must be ordered to pay the corresponding costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Dismisses the action; 2. Orders Worldwide Machinery Ltd to pay the costs. De Baere Kreuschitz Steinfatt Delivered in open court in Luxembourg on 1 June 2022. E. Coulon G. De Baere 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