I Castellani v OHMI - Chomarat (Representation d'un cercle) (Judgment) [2015] EUECJ T-137/14 (23 October 2015)

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(Community trade mark — Revocation procedure — Figurative mark representing a circle — Genuine use of a mark — Extent of use — Article 15(1)(a) and Article 51(1)(a) of Regulation (EC) No 207/2009 — Shape which differs by elements which do not alter the distinctive character of the mark — Rights of the defence — Article 75 of Regulation No 207/2009)

I Castellani Srl, established in Meldola (Italy), represented by M. Caramelli, F. Boscariol de Roberto, I. Gatto and D. Martucci, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by M. Rajh and A. Folliard-Monguiral, acting as Agents,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 13 December 2013 (Case R 1001/2012-2), relating to revocation proceedings between Compagnie Chomarat and I Castellani Srl,

composed of M. Prek, President, I. Labucka (Rapporteur) and V. Kreuschitz, Judges,

having regard to the application lodged at the Court Registry on 25 February 2014,

having regard to the decision of 7 August 2014 refusing to allow a reply to be lodged,

1 On 11 September 2002 the applicant, I Castellani Srl (formerly Cerdomus Ceramiche SpA), filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) in accordance with Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

3 The goods in respect of which registration was applied for are in Class 19 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: ‘building materials (non-metallic); non-metal building tiles, natural and artificial stones, plaster, lime, mortar, cement and sand’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 69/2003 of 25 August 2003 and the mark was registered on 25 March 2004 (‘the contested mark’).

5 On 27 July 2010 Compagnie Chomarat, the other party to the proceedings before OHIM, applied for revocation of the contested mark pursuant to Article 51(1)(a) of Regulation No 207/2009. That application concerned all the goods covered by the contested mark.

6 By decision of 19 January 2012, the Cancellation Division revoked the contested mark for all the goods that it covered. The Cancellation Division held that the applicant had not demonstrated genuine use of the contested mark in the European Union in relation to the goods for which it had been registered. In particular, it held that, because of the addition of word elements, the contested mark had not been used in its registered form and that, therefore, the applicant had not met the requirements relating to the nature of the use derived from Article 15(1) of Regulation No 207/2009.

7 On 24 May 2012 the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

8 By decision of 13 December 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It concluded, in essence, that the evidence submitted by the applicant was insufficient to demonstrate genuine use of the contested mark (see paragraph 22 of the contested decision). In particular, it observed that the contested mark appeared six times in the catalogue submitted by the applicant and ten times on the packaging (see paragraph 24 of the contested decision), whereas neither the invoices submitted nor the extracts from the applicant’s website included the contested mark (see paragraphs 22 and 23 of the contested decision).

9 However, with regard to the conclusion of the Cancellation Division that because of the addition of the word element ‘cerdomus’, the contested sign, as found on the exhibits, was significantly different from the mark as registered (see paragraph 19 of the contested decision), the Board of Appeal observed that there was no precept in the Community trade mark system obliging the proprietor of a mark to prove use of the mark in isolation, independently of any other mark (see paragraph 20 of the contested decision).

10 The element ‘cerdomus’ corresponds to the sign of Community mark No 2421576 which designates goods in Class 19 of which the applicant is the proprietor.

13 In the annex to the application, the applicant produced invoices relating to the goods apparently marketed under the contested mark. At the hearing, it claimed that that evidence was not new but confirmed the documents it had already presented.

14 OHIM challenged the admissibility of that evidence in that it was submitted late.

15 In that regard, it must be observed that it is settled case-law that the purpose of bringing an action before the Court is to secure review of the legality of the decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009. It follows from that provision that facts not submitted by the parties before the adjudicatory bodies of OHIM may not be submitted at the stage of the action before the Court and that the Court may not re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision (judgments of 18 July 2006 in Rossi v OHIM, C‑214/05 P, ECR, EU:C:2006:494, paragraphs 50 to 52; of 18 December 2008 in Les Éditions Albert René v OHIM, C‑16/06 P, ECR, EU:C:2008:739, paragraphs 136 to 138 and of 25 October 2013 in Biotronik SE v OHIM — Cardios Sistemas (CARDIO MANAGER), T‑416/11, EU:T:2013:559, paragraph 19).

16 In the present case, it is apparent from the analysis of Annex A.6 to the application that certain documents were already included in OHIM’s administrative file (p. 39, 43, 53, 83, 84 of the annexes to the application), so that, those documents were not presented for the first time in front of the Court and are admissible.

17 On the other hand, the documents which have been presented for the first time before the Court, namely those at pages 36 to 38, 40 to 42, 44 to 52, 54 to 81 and 85 to 87 of Annex A.6, must be rejected as inadmissible.

18 In support of its action the applicant relies on two pleas in law, the first alleging infringement of Article 75 of Regulation No 207/2009, and the second alleging infringement of Article 15(1) and of Article 51(1)(a) of the same regulation.

The first plea in law, alleging infringement of Article 75 of Regulation No 207/2009

19 The applicant complains that the Board of Appeal ruled on matters outside the subject-matter of the action. In its opinion the Board of Appeal should have ruled only within the limits of the action before it concerning Article 15 of Regulation No 207/2009 and not also on Article 51 of that regulation. In doing so, the Board of Appeal ruled on pleas that had not been advanced, and did not respect the applicant’s rights of defence.

21 In that regard, it should be pointed out that, pursuant to the second sentence of Article 75 of Regulation No 207/2009, decisions of OHIM may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision affirms, in Community trade mark law, the general principle of protection of the rights of the defence. In accordance with that general principle, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known. The right to be heard extends to all the factual and legal material which forms the basis for the decision, but not to the final position which the authority intends to adopt (see judgment of 7 February 2007 in Kustom Musical Amplification v OHIM (shape of a guitar), T‑317/05, ECR, EU:T:2007:39, paragraphs 24, 26 and 27 and the case-law cited).

22 In the present case, the Board of Appeal was asked to rule on the action brought by the applicant against the Cancellation Division’s decision and it is apparent from the file that, in the revocation proceedings before the Cancellation Division, the applicant had the opportunity to present its observations relating to all aspects of the application for revocation including, in particular, the extent of use.

23 In that regard, it is apparent from Article 64(1) of Regulation No 207/2009, and also from settled case-law, that there is continuity in terms of their functions between the different units of OHIM, namely, the examiner, the Opposition Division, the division responsible for the administration of trade marks and legal issues and the Cancellation Divisions, on the one hand, and the Boards of Appeal, on the other. It follows from that continuity in terms of functions between the various departments of OHIM that, when the Boards of Appeal conduct the review of decisions taken by the departments of OHIM at first instance, they must base their decision on all the matters of fact and of law which the parties concerned introduced either in the proceedings before the department which heard the application at first instance or in the appeal (see judgment of 23 September 2003 in Henkel v OHMI - LHS (UK) (KLEENCARE), T‑308/01, ECR, EU:T:2003:241, paragraphs 25 and 32 and the case-law cited; judgment of 1 February 2005 in SPAG v OHIM — Dann et Backer (HOOLIGAN), T‑57/03, ECR, EU:T:2005:29, paragraph 18; see also judgments of 9 November 2005 in Focus Magazin Verlag v OHMI - ECI Telecom (Hi-FOCuS), T‑275/03, ECR, EU:T:2005:385, paragraph 37 and the case-law cited and of 26 September 2014 in Koscher + Würtz v OHMI - Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, ECR, EU:T:2014:829, paragraph 28 and the case-law cited).

24 The extent of the examination which the Board of Appeal must conduct in relation to the contested decision before it is not, in principle, determined solely by the grounds relied on by the party, or parties, to the proceedings before it (judgment in KLEENCARE, paragraph 23 above, EU:T:2003:241, paragraphs 29 and 32).

25 In the present case, in which the subject-matter of the proceedings concerns revocation, both the Cancellation Division and the Board of Appeal had to apply Article 15(1) and Article 51(1)(a) of Regulation No 207/2009 in conjunction, which they did. Therefore, the applicant’s argument that the Board of Appeal ruled on pleas which had not been relied on before it, and on which the applicant had not taken a position, cannot succeed.

The second plea in law, alleging infringement of Article 15(1) and of Article 51(1)(a) of Regulation No 207/2009

27 The applicant notes that the only ground for revocation of the contested mark was the finding by the Cancellation Division that the mark appearing on the evidence presented did not correspond with the mark as it had been registered, because of the addition of the word element ‘cerdomus ceramiche spa’ under the figurative element. According to the applicant, to impose an absolute obligation to use the mark in the form in which it had been registered would be to ignore the reality of the market and the need of the proprietors of the mark to adapt its use to new commercial situations in relation to the marketing of the goods. Moreover, the figurative element remained unchanged and dominant in the overall impression produced by the contested mark despite the addition of the word element.

28 Furthermore, according to the applicant, a mere representation of the contested mark on packaging, in catalogues, in advertising material or on invoices relating to the goods would be sufficient to establish the extent of its use. It, therefore, argues that the Board of Appeal made an arbitrary and discriminatory distinction between the various items of evidence presented.

30 At the outset it is necessary to note the procedure for and the objective of the revocation decision and the principles governing the adducing of evidence in revocation proceedings.

31 It is clear from the first subparagraph of Article 15(1) and from Article 51(1)(a) of Regulation No 207/2009 that the rights of a proprietor of a Community trade mark are to be declared to be revoked, on application to OHIM if, within a continuous period of five years, the 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 its non-use.

32 Under Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), which applies mutatis mutandis to revocation proceedings in accordance with Rule 40(5) of the regulation, the evidence of use of a mark must concern, as cumulative requirements, the place, [length of] time, extent and nature of the use made of the trade mark (see, to that effect the judgments of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, ECR, EU:T:2004:225, paragraph 37; of 27 September 2007 in La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, EU:T:2007:299, paragraph 52 and of 21 November 2013 in Recaro v OHIM — Certino Mode (RECARO), T‑524/12, EU:T:2013:604, paragraph 18).

33 However, that rule does not state that each item of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely, the place, [length of] time, nature and extent of use (see judgment of 16 September 2013 in Avery Dennison v OHIM — Dennison-Hesperia (AVERY DENNISON), T‑200/10, EU:T:2013:467, paragraph 85 and case-law cited).

34 There is genuine use of a mark where it 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 (judgments of 11 March 2003 in Ansul, C‑40/01, ECR, EU:C:2003:145, paragraph 43; of 19 December 2012 in Leno Merken, C‑149/11, ECR, EU:C:2012:816, paragraph 29, and in RECARO, paragraph 32 above, EU:T:2013:604, paragraph 19). Moreover, 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 in VITAFRUIT, paragraph 32 above, EU:T:2004:225, paragraph 39; see also, to that effect and by analogy, judgment in Ansul, EU:C:2003:145, paragraph 37).

35 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 the use regarded as warranted in the economic sector concerned as a means of maintaining or creating a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark. As to the extent of the use to which the contested 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 in VITAFRUIT, paragraph 32 above, EU:T:2004:225, paragraphs 40 and 41, and of 8 July 2004 in MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, ECR, EU:T:2004:223, paragraphs 35 and 36; see also, by analogy, judgment in Ansul, paragraph 34 above, EU:C:2003:145, paragraph 43).

36 In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of that case. That assessment implies a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (see, by analogy, judgments in VITAFRUIT, paragraph 32 above, EU:T:2004:225, paragraph 42; HIPOVITON, paragraph 35 above, EU:T:2004:223, paragraph 36, and RECARO, paragraph 32 above, EU:T:2013:604, paragraph 20). Moreover, it is possible that 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 (judgments of 17 April 2008 in Ferrero Deutschland v OHIM, C‑108/07 P, EU:C:2008:234, paragraph 36, and of 24 May 2012 in TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, EU:T:2012:263, paragraph 34).

37 According to the case-law, if the use of the mark need not always be quantitatively significant in order to be deemed genuine (see, by analogy, judgment in Ansul, paragraph 34 above, EU:C:2003:145, paragraph 39), the fact remains that genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment in Ansul, paragraph 34 above, EU:C:2003:145, paragraph 43).

38 Moreover, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002 in Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, ECR, EU:T:2002:316, paragraph 47 and of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 28).

39 It is in the light of those considerations that it must be determined whether the Board of Appeal was right to consider that the evidence adduced by the applicant did not show genuine use of the contested mark for the goods mentioned at paragraph three above.

40 In the first place, in relation to the nature of the genuine use of the contested mark, it should be held that the Board of Appeal itself found, at paragraph 20 of the contested decision, that according to the case-law (judgment of 8 December 2005 in Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, ECR, EU:T:2005:438, paragraphs 33 and 34), there is no precept in the Community trade mark system that obliges the proprietor of the Community trade mark to prove the use of its mark on its own, independently of any other mark.

41 It follows from paragraph 20 and, in particular, from paragraphs 24, 26 and 27 of the contested decision that the Board of Appeal has, in essence, amended the finding of the Cancellation Division concerning the evidence of the nature of the use of the contested mark. In order to examine the extent of the use, the Board of Appeal took into account, inter alia, the photographs of the packaging of the goods and the catalogues which included the contested mark and its word element. In addition, during the hearing, OHIM took the view that the contested mark’s use, with the word elements ‘cerdomus’ and ‘cerdomus ceramiche’, did not change its distinctive character with regard to its registration.

42 Therefore, the applicant’s argument concerning the nature of the use of the mark is ineffective.

43 In the second place, in relation to the extent of genuine use of the contested mark, the applicant presented before OHIM certain documentary evidence, namely, invoices with photographs of the packaging of the goods to which they related, extracts from its website and extracts from catalogues. It should be noted that some of those documents contain the contested mark with the word elements ‘cerdomus’ and ‘cerdomus ceramiche’, others only those word elements.

44 First, in relation to the invoices, the applicant maintains that, contrary to the Board of Appeal’s assessment, they were not the most important evidence in relation to genuine use and that the photographs of packaging associated with those invoices allowed the contested mark to be linked with the goods concerned. Secondly, with regard to the website, the applicant also challenges the Board of Appeal’s position that, because the contested mark was not on the website, that site did not prove it use. Thirdly, with regard to the catalogues, the applicant argues that the contested mark appears on the packaging and in the catalogues presented, which is explained by the nature of the goods concerned, catalogues, in particular, being the main means through which those kinds of goods are shown and offered.

46 In the present case, in relation to the website, it must be held that the presence or absence of a mark on its proprietor’s website is a choice for that proprietor in line with its business strategy.

47 However, if that proprietor wishes to establish the genuine use of its mark, using extracts from its website for that purpose, it must establish that those extracts show its mark or, at least, that it is possible to establish a connection between the website and the other evidence in order to establish a genuine use. In the extract from the website produced by the applicant both the word ‘cerdomus’ and the references to the Kyrah and Durango lines are visible, therefore, on the basis of a global assessment and taking account of all the factors relevant to the case in point, as is required by the case-law cited at paragraph 35 above, a connection can be established between those references, the invoices and photographs of the packaging of the associated goods. It follows that the assessment of the Board of Appeal concerning the extract from the website cannot be confirmed, given that the assessment of the evidence as a whole establishes a connection between the website references, the invoices and the photographs of the packaging of the goods associated with those invoices.

48 Moreover, as regards the relationship between the photographs of the packaging of the goods and the invoices, it must be pointed out that it has previously been held that the invoices cannot be considered to be irrelevant on the basis that they do not contain the contested mark beside the name of each of the goods. The purpose of the invoices is to itemise the goods sold, so that the name of the item concerned must appear on the invoice, possibly together with a reference (judgment in AVERY DENNISON, paragraph 33 above, EU:T:2013:467, paragraph 43). In the present case the contested mark, together with the word elements ‘cerdomus’ and ‘cerdomus ceramiche’, can be seen on the packaging as the references to the product lines mentioned in those invoices. It is, therefore, possible to establish a connection between those invoices and the photographs and from that to conclude that there has been some use of the contested mark, moreover, as OHIM rightly admitted at paragraph 26 of the contested decision and in the course of the hearing.

49 However, in relation to the total sales figure for the goods concerned that could be considered to be supported by the above-mentioned invoices, that is to say, about EUR 4 000 over four years, the Court finds, as did the Board of Appeal, that that value is very low, taking account of the fact that the goods concerned are construction materials and that the prices of the materials used for any project in that sector are generally high. In that regard, it must be observed that the quantities of goods mentioned on the invoices presented makes reference to square metres (sqm) and that that quantity is very modest. Taking into account the relationship between the, generally high, unit price for the goods concerned and the square metres mentioned in the invoices, leads to the conclusion that the volume of marketed goods, supported by those invoices, is in fact very low.

50 At the hearing, the applicant observed that the Board of Appeal had not taken into account an invoice addressed to a client in the United States in the sum of USD 14 000 and presented during the administrative procedure. Concerning that invoice, OHIM noted that amongst all the references that appear on it, the applicant drew attention to only one and that, therefore, that reference which amounted to USD 144 must be the only one taken into account, which was not contested by the applicant.

51 Without it being necessary to rule on the argument raised by OHIM, it must be noted that even taking into account, pursuant to Article 15(1) (b) of Regulation No 207/2009, that invoice and all the others sent to the United States that were presented by the applicant, the volume of goods that were marketed under the contested mark might reach around EUR 6 500. In all the invoices sent to the United States, the applicant pointed out specific references to certain goods, presenting photographs of the packaging of those goods. Therefore, only those references, whose total value amounts to EUR 2 500, are to be taken into account. However, that figure of about EUR 6 500 cannot affect the finding, set out at paragraph 49 above, that having regard to the market price of the goods concerned, such a value must be held to demonstrate a very low volume of goods marketed under the contested mark.

52 In that regard, it follows from the case-law that the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use (judgment of 18 January 2011 in Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, EU:T:2011:9, paragraph 31).

53 However, in the present case, all the other documents presented by the applicant do not compensate for the low sales volume of the goods concerned and, therefore, do not establish the genuine use of the contested mark. In particular, the contested mark does not appear on the extracts from the applicant’s website. As to the catalogues, they do not allow the conclusion to be drawn that the goods appearing in them were in fact marketed under the contested mark during the relevant period.

54 Therefore, the Court holds that the global assessment of the evidence presented by the applicant, namely, invoices, photographs of the packaging of the goods, the extract from its website and the catalogues are not sufficient to demonstrate the genuine nature of the use of the contested mark during the relevant period.

55 Lastly, in relation to references made by the applicant to certain previous decisions of OHIM in which it reached an opposite conclusion, it should be recalled that OHIM is required to judge each case on its own merits and that it is not bound by previous decisions in other cases. The legality of the decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice of those boards (judgments of 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 48; of 28 June 2012 in XXXLutz Marken v OHIM, C‑306/11 P, EU:C:2012:401, paragraph 91, and the order of 3 October 2012 in Cooperativa Vitivinícola Arousana v OHIM, C‑649/11 P, EU:C:2012:603, paragraph 59).

56 In any event, in its review of legality, the Court is not bound by the decision-making practice of OHIM (judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 65, and of 22 April 2008 in Casa Editorial el Tiempo v OHIM — Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, EU:T:2008:121, paragraph 48).

59 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay OHIM’s costs, in accordance with the form of order sought by OHIM.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> I Castellani v OHMI - Chomarat (Representation d'un cercle) (Judgment) [2015] EUECJ T-137/14 (23 October 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T13714.html Cite as: ECLI:EU:T:2015:798, EU:T:2015:798, [2015] EUECJ T-137/14

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