Savant Systems v EUIPO - Savant Group (SAVANT) (EU trade mark - Revocation proceedings : Judgment) [2017] EUECJ T-110/16 (18 July 2017)

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(EU trade mark — Revocation proceedings — EU word mark SAVANT — Genuine use of the mark — Article 51(1)(a) of Regulation (EC) No 207/2009 — Duty to state reasons — Article 75 of Regulation No 207/2009)

Savant Systems LLC, established in Osterville, Massachusetts (United States), represented by O. Nilgen and A. Kockläuner, lawyers,

European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė, acting as Agent,

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

Savant Group Ltd, established in Burton in Kendal (United Kingdom), represented by G. Hollingworth, Barrister, K. Gilbert and G. Lodge, Solicitors,

ACTION against the decision of the Fourth Board of Appeal of EUIPO of 18 January 2016 (Case R 33/2015-4), relating to revocation proceedings between Savant Systems and Savant Group,

composed of I. Pelikánová, President, V. Valančius and U. Öberg (Rapporteur), Judges,

having regard to the response of EUIPO lodged at the Court Registry on 27 June 2016,

having regard to the response of the intervener lodged at the Court Registry on 5 July 2016,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 25 May 1998, the intervener, Savant Group Ltd, obtained the registration, under the number 32318, of the EU word mark SAVANT from the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

2 The goods and services in respect of which that mark was registered are in Classes 9, 16, 41 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 July 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 9: ‘Computers and computing apparatus and instruments; data processing equipment, communications equipment and apparatus; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, magnetic tapes, cards and discs; cartridges and cassettes adapted for use with the aforesaid tapes, cards and discs; computer software; parts and fittings for all the aforesaid goods’;

– Class 16: ‘Printed publications; books, journals, periodicals, magazines and manuals, instructional and teaching materials; paper and paper products relating to computers’;

– Class 41: ‘Educational, instructional, training and teaching services relating to databases, data processing, computers, information apparatus and instruments; information and advisory services relating to the aforesaid services’;

– Class 42: ‘Computer software services; computer programming services; analytical and research services including technical analysis relating to communication and communication services and to information services, computers, data processing, databases, communication apparatus and instruments; consultancy, information and advisory services relating to the aforesaid including computer software, data processing and databases’.

3 On 9 September 2013, the applicant, Savant Systems LLC, filed an application for revocation of the mark at issue in its entirety pursuant to Article 51(1)(a) of Regulation No 207/2009, on the ground that that mark had not been put to genuine use during the five years preceding the filing of the application for revocation, that is to say, between 9 September 2008 and 8 September 2013 (‘the relevant period’).

4 By decision of 3 November 2014, the Cancellation Division partially upheld the application for revocation. It revoked the mark at issue for the goods and services referred to in paragraph 2 above, with the exception of ‘computer software services; computer programming services, consultancy services relating to computer software’ in class 42, for which the application for revocation was rejected.

5 On 2 January 2015, the intervener filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division in order to have the application for revocation dismissed in respect of all the goods and services referred to in paragraph 2 above, other than those referred to in paragraph 4 above.

6 On 3 March 2015, the intervener filed a statement setting out the grounds of the appeal.

7 By decision of 18 January 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the appeal in part. It concluded that the intervener had proved genuine use of the mark at issue, not only in respect of ‘computer software services; computer programming services, consultancy services relating to computer software’ in class 42, which were not covered by the appeal, but also in respect of the other services, referred to in paragraph 2 above, included in classes 41 and 42, and in respect of the ‘computer software’ in class 9.

– annul the contested decision, in so far as it dismissed the application for revocation of the mark at issue in respect of the ‘computer software’ in class 9 and all the services referred to in paragraph 2 above in classes 41 and 42.

11 By its first plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009, read in conjunction with Article 15 of that regulation, the applicant claims that the Board of Appeal was incorrect to hold that the owner of the mark in question had provided proof of genuine use of that mark for the ‘computer software’ in class 9 and all the services referred to in paragraph 2 above in classes 41 and 42.

12 The second plea in law alleges infringement by the Board of Appeal of its duty to state reasons in that it did not take into consideration the report on the use of the mark at issue annexed to the application for revocation.

13 The EUIPO and the intervener argue that the present appeal is inadmissible in so far as it covers ‘computer software services; computer programming services; consultancy services relating to computer software’ in class 42, since these were not the subject of the proceedings before the Board of Appeal.

14 Under Article 65(1) of Regulation No 207/2009, actions may be brought before the European Union judicature only against decisions of the Boards of Appeal. Therefore, it is only pleas directed against the decision of the Board of Appeal itself which are admissible in such an action (judgments of 7 June 2005, Lidl Stiftung v OHIM — REWE-Zentral (Salvita), T‑303/03, EU:T:2005:200, paragraph 59, and of 2 February 2016, Benelli Q. J. v OHIM — Demharter (MOTOBI B PESARO), T‑171/13, EU:T:2016:54, paragraph 23).

15 The services for which the application for revocation was rejected by the Cancellation Division, that is to say, ‘computer software services; computer programming services; consultancy services relating to computer software’ in class 42, were not the subject of the action brought before the Board of Appeal against the decision of the Cancellation Division.

16 Accordingly, the Court, first, dismisses as inadmissible the applicant’s claim in respect of those services, and secondly, allows the applicant’s claim in respect of all the other goods and services covered by the present action (‘the goods and services concerned’).

The first plea, alleging that there had been no genuine use of the mark at issue in respect of the goods and services concerned

17 By its first plea, the applicant claims, in essence, that the evidence produced by the intervener does not demonstrate genuine use of the mark at issue in respect of all the goods and services concerned. It argues, in particular, that that evidence demonstrates use of the intervener’s company name and not the mark at issue. Furthermore, it claims that that evidence does not establish a link between the mark at issue and the goods and services offered by the intervener under the different marks.

19 In the present case, the application for revocation was lodged on 9 September 2013. Accordingly, it is necessary to establish whether the intervener provided proof that, between 9 September 2008 and 8 September 2013, the mark at issue was put to genuine use in the European Union in respect of the goods and services concerned for which the application for revocation was declared to be admissible.

The first complaint, alleging that the evidence demonstrates use of the intervener’s company name rather than use of the mark at issue

21 In that regard, the applicant claims, in particular, that, in the documents produced by the intervener, the presence of the figurative form of the word sign SAVANT, together with the contact details of the company at the top and bottom of those documents, is solely a reference to the owner of the mark at issue and that it does not refer in any way to the goods or services covered by the mark at issue. In the light of those considerations, it must be concluded that the company name was being used, rather than the mark at issue.

23 It is apparent from recital 10 of Regulation No 207/2009 that the legislature considered that there is no justification for protecting an earlier trade mark except where it is actually used. In keeping with that recital, Article 51(1)(a) of Regulation No 207/2009 provides that the rights of a proprietor of a European Union trade mark are to be declared to be revoked, on application to EUIPO, 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 and services in respect of which it is registered and there are no proper reasons for non-use.

24 According to settled case-law, 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 those services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. 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 (see judgment of 16 June 2015, Polytetra v OHIM — EI du Pont de Nemours (POLYTETRAFLON), T‑660/11, EU:T:2015:387, paragraph 45 and the case-law cited).

25 On the other hand, the purpose of a company, trade or shop name is not, of itself, to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being run, such use cannot be considered as being ‘in relation to goods or services’, for the purposes of Article 4 of Regulation No 207/2009 (see by analogy, judgments of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraph 21 and the case-law cited, and of 13 May 2009, Schuhpark Fascies v OHIM — Leder & Schuh (jello SCHUHPARK), T‑183/08, not published, EU:T:2009:156, paragraph 21).

26 However, the fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods (see judgment of 30 November 2009, Esber v OHIM — Coloris Global Coloring Concept (COLORIS), T‑353/07, not published, EU:T:2009:475, paragraph 38 and the case-law cited).

27 Therefore, the fact that the sign SAVANT is the trade name of the intervener’s company does not, as such, rule out the possibility that that sign may also be used as a mark.

28 In order to demonstrate genuine use of the mark at issue, the intervener produced, in accordance with Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), documents consisting of brochures and product and service guides, invoices, a turnover table, advertisements, articles and promotional materials, materials illustrating the proprietor’s attendance at trade exhibitions and press releases.

29 As regards the invoices produced by the intervener, the figurative form of the mark at issue followed by the company name and contact details of the intervener is affixed to each of these as follows:

30 As regards the brochures and guides, advertisements, articles and press releases, the figurative form of the mark at issue is affixed to the top or bottom of the page, along with the contact details or an indication of the name of one of its sub-brands, notably Pulse, Hematos and Mataco, in particular as follows:

31 It must be recalled that, according to the case-law, the use of the trade name in invoices may be such as to establish genuine use of the registered mark (see, to that effect, judgment of 6 November 2014, Popp and Zech v OHIM — Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraphs 36 to 47).

32 In addition, the representation of the mark at issue alongside the intervener’s sub-brands, as represented above in particular, does not correspond to the situation in which the mark at issue is used in a form that differs from the form in which it was registered, but rather to the situation where a number of signs are used simultaneously without changing the distinctive character of the registered sign. Thus, two or more marks may be used jointly and autonomously (see, to that effect, judgments of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraphs 33 and 34, and of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 100).

33 It follows therefore that the presence of a sub-brand of the intervener alongside the mark at issue or with the intervener’s contact details is not sufficient to call into question the genuine use of the mark at issue.

34 Moreover, as EUIPO rightly pointed out, a mark may not, as a rule, be affixed to services. The mark at issue was registered both for goods and for services in the relevant classes. Therefore, the relationship between the mark at issue and the goods and services concerned must be established through other indirect means. Even where a mark is not affixed, there is nevertheless use in relation to the services provided where the mark is used in such a way that a link is established between the sign which constitutes the company, trade or shop name of the intervener and the goods marketed or the services provided by the intervener (see, by analogy, judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraph 23).

35 In the present case, that link can be established in that the mark at issue appears at the top of each invoice produced by the intervener, and in brochures and product and service guides offered by the intervener, advertisements and articles in newspapers. They inform the customer of the origin of the goods or services, such as the computer software covered by the sub-brands Pulse, Hematos and Mataco. On the basis of the documents presented, the average consumer of the categories of goods or services covered may easily understand that the mark at issue indicates the origin of the goods marketed or the services provided or indeed the goods and services invoiced.

36 Therefore, there is no reason to call into question the use of the mark at issue on the ground that it was used only as the intervener’s company name. Such a conclusion is not affected by the fact that the mark at issue is used in conjunction with a sub-brand or the intervener’s contact details.

The second complaint, alleging that the evidence is not sufficient to demonstrate genuine use of the mark at issue

38 The applicant claims that the evidence produced by the intervener is not sufficient to demonstrate genuine use of the mark at issue, inasmuch as there is a lack of certain information concerning the place, time, extent and nature of the use. Similarly, it casts doubt on the probative value of certain documents produced by the intervener, in that they do not always relate to the relevant period.

40 The applicant supports its arguments by examining individually the evidence produced by the intervener.

41 As a preliminary point, it must be recalled that, in accordance with Rule 22(3) of Regulation No 2868/95, proof of use of the mark must include evidence concerning the place, time, extent and nature of the use of the mark for the goods and services in respect of which it was registered and on which the application for revocation is based. By virtue of Rule 22(4) of that regulation, the proof of use is preferably confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing.

42 Furthermore, Rule 22 of Regulation No 2868/95, contrary to the approach adopted by the applicant, 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, time, nature and extent of use (judgment of 16 November 2011, Buffalo Milke Automotive Polishing Products v OHIM — Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, EU:T:2011:675, paragraph 61).

43 On the contrary, when assessing whether there has been genuine use of the mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real (see judgment of 16 November 2011, BUFFALO MILKE Automotive Polishing Products, T‑308/06, EU:T:2011:675, paragraph 60 and the case-law cited).

44 Moreover, the evidence produced in order to prove genuine use of a mark may relate to some parts of the relevant period (see, to that effect, judgments of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraphs 45, 46 and 54, and of 8 July 2010, Engelhorn v OHIM — The Outdoor Group (peerstorm), T‑30/09, EU:T:2010:298, paragraphs 42 to 45).

45 In the present case, the brochures and the product and service guides produced by the intervener are prima facie evidence that the intervener aims to provide computing solutions in the field of health by developing, inter alia, computer software, databases and maintenance and support services.

46 In one of the product studies carried out by the company HP in January 2010, Savant’s computer software system, Pulse, is described as being one of the three computer software systems used by the National Health Service (NHS) of the United Kingdom of Great Britain and Northern Ireland, dealing with 2.5 million donations to the NHS Blood and Transplant Service. That information is supported by an article provided by the intervener, which identifies Savant as being the company which created Pulse, the computer software system that enables the functioning of the blood transfusion and transplant service of the NHS in the United Kingdom.

47 It is also clear from the turnover table produced by the intervener that, between 2009 and 2013, the intervener had an annual turnover of more than 3 million pounds sterling (GBP) in the United Kingdom in the field of computing.

48 In addition to those considerations relating to the intervener’s general activity during the relevant period, it is necessary to analyse the evidence produced in order to establish genuine use for each of the categories of goods and services designated by the mark at issue.

– Use of the mark at issue in respect of the ‘computer software’ in class 9

49 The Board of Appeal found that the intervener had proved genuine use of the mark at issue in respect of the ‘computer software’ in class 9.

50 As regards that computer software, it is apparent from the brochures and the product and service guides provided by the intervener, assessed in conjunction with the invoices produced before the Board of Appeal, that the intervener developed computer software, such as Pulse, Hematos, Mobile Ranger and Desktop Ranger, for a number of customers, including health companies and establishments in the United Kingdom, during the period from 2008 to 2012.

51 In addition, it is clear from the turnover table produced by the intervener that the development of the computer software represented, during that same period, its second largest source of revenue, after services relating to databases. It is also clear from that table that the development of the computer software represented an annual turnover of more than GBP 1 million in the United Kingdom in the period from 2009 to 2013.

52 In addition, the articles and advertisements produced contain information about the ‘computer software’ in class 9 produced by the intervener during the relevant period. The same applies for the promotional materials and press releases. Although some of those documents are not dated or do not concern the relevant period, it is nevertheless possible to take them into consideration in the global assessment of the documents with other pieces of evidence dated from the same period (see, to that effect, judgment of 17 February 2011, J & F Participações v OHIM — Plusfood Wrexham (Friboi), T‑324/09, not published, EU:T:2011:47, paragraph 33).

53 In the present case, in view of all the circumstances and relevant facts, the evidence provided by the intervener contains sufficient information on the place, time, nature and extent of the use. That information makes it possible to rule out token use for the sole purpose of preserving the rights conferred by the mark at issue.

54 Accordingly, the Court finds that the intervener has proven, to the requisite legal standard, through the invoices and other documents produced, genuine use of the mark at issue in respect of the ‘computer software’ in class 9 during the relevant period.

55 There is therefore no reason to call into question the finding of the Board of Appeal that the intervener has proved genuine use of the ‘computer software’ in class 9.

56 As regards the services in class 41, the Board of Appeal found that the mark at issue was put to genuine use in respect of all the services in that class.

57 The intervener stated that, as regards the development of computer software and databases, it also organised training courses and provided advice and information to customers in order to ensure that the goal sought is achieved, and so that they are able to operate them proficiently.

58 As EUIPO acknowledged, the services provided by the intervener appear on a number of invoices under generic descriptions. The term ‘training’ is used, in particular, with an indication of the name of one of its sub-brands for computer software, such as Pulse, Mobile Ranger, Desktop Ranger and Mataco, and appears on invoices drawn up between 2009 and 2013 for various customers, including health companies and establishments in the United Kingdom. In addition, it can be seen from the turnover table provided by the intervener that the training provided during that period represents a turnover of GBP 41 000.

59 Furthermore, the articles and promotional material contain information on the training organised by the intervener. Although some of those documents are not dated or do not concern the relevant period, it is nevertheless possible to take them into consideration in the global assessment of the documents produced, in accordance with the case-law cited in paragraph 52 above.

60 The global assessment of the invoices, the turnover table and the other documents demonstrates that the evidence provided by the intervener contains sufficient information on the place, time, nature and extent of the use of the mark at issue. That information makes it possible to rule out token use for the sole purpose of preserving the rights conferred by the mark at issue.

61 Accordingly, the Court finds that the intervener has proven, to the requisite legal standard, genuine use of the mark at issue during the relevant period in respect of the services in class 41.

62 As regards the services in class 42, the Board of Appeal found that the mark at issue was put to genuine use in respect of all the services in class 42.

63 In accordance with the conclusions on the admissibility of the action, the application for revocation must be dismissed as inadmissible in respect of the ‘computer software services; computer programming services; consultancy services relating to computer software’ in the present action.

64 The services provided by the intervener in class 42 are mentioned in a number of invoices under generic descriptions. The terms ‘databases’, ‘consultancy services’ and ‘computer software services’ are mentioned in the invoices drawn up between 2009 and 2012 for various customers, including health companies and establishments in the United Kingdom. Furthermore, it is apparent from the turnover table produced by the intervener that the development of computer software, support services relating to databases and consultancy services represented an annual turnover of more than GBP 3 million between 2009 and 2013.

65 In addition, the brochures and product and service guides, advertisements, articles and press releases produced by the intervener contain information about the various services relating to computer software and databases, and about the consultancy services offered by the intervener during the relevant period. Although some of those documents are not dated or do not concern the relevant period, it is nevertheless possible to take them into consideration in the global assessment of the documents, in accordance with the case-law cited in paragraph 52 above. That information makes it possible to rule out token use for the sole purpose of preserving the rights conferred by the mark at issue.

66 Furthermore, as the intervener rightly pointed out, those computer services are closely related to the other services in the same class. In view of the link established between the sub-categories of services, and the global assessment of the evidence provided, it must be concluded that the intervener has proven, to the requisite legal standard, genuine use of the mark at issue during the relevant period in respect of the services in class 42.

67 It must therefore be concluded that genuine use has been proved in relation to the ‘computer software’ in class 9, the services in class 41 and the services relevant to the present action in class 42.

68 It follows from all of the foregoing that the second complaint must be dismissed, and consequently so must the first plea in law.

69 In relation to the second plea, the applicant alleges that the Board of Appeal breached its duty to state reasons in that it did not take into consideration the report on the use of the mark at issue annexed to the application for revocation.

71 According to settled case-law, the duty to state reasons laid down in Article 75 of Regulation No 207/2009, which has the same scope as that under the second paragraph of Article 296 TFEU, imposes a requirement to disclose, clearly and unequivocally, the reasoning of the author of the measure, in such a way as to enable, on the one hand, interested parties to ascertain the reasons for the measure adopted in order to enable them to protect their rights, and, on the other hand, the Court to exercise its power to review the legality of the decision (see judgments of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65 and the case-law cited, and of 18 June 2014, Cantina Broglie 1 v OHIM — Camera di Commercio, Industria, Artigianato e Agricoltura di Verona (RIPASSA), T‑595/10, not published, EU:T:2014:554, paragraph 18).

72 In the present case, the Board of Appeal provided, in paragraphs 10 to 31 of the contested decision, a complete and precise set of reasons in its global assessment of the evidence adduced of the use of the mark at issue in respect of the goods and services concerned.

73 The fact that the Board of Appeal did not comment on the report produced by the applicant does not, however, mean that it did not fulfil its duty to state reasons. EUIPO’s duty to state reasons does not amount to an obligation to respond to every argument and every piece of evidence submitted to it for evaluation (see judgment of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 55 and the case-law cited). It is sufficient if EUIPO sets out the facts and the legal considerations having decisive importance in the context of its decision (see, to that effect, judgments of 11 January 2007, Technische Glaswerke Ilmenau v Commission, C‑404/04 P, not published, EU:C:2007:6, paragraph 30, and of 9 December 2010, Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 46).

74 In the light of the foregoing, the Court finds that the Board of Appeal fully satisfied its duty to state reasons in carrying out a global assessment of the evidence when it evaluated the facts and legal considerations having decisive importance in the present case.

75 The second plea must therefore be rejected, and consequently the action must be dismissed in its entirety.

76 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 the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Savant Systems v EUIPO - Savant Group (SAVANT) (EU trade mark - Revocation proceedings : Judgment) [2017] EUECJ T-110/16 (18 July 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T11016.html Cite as: EU:T:2017:521, [2017] EUECJ T-110/16, ECLI:EU:T:2017:521

Court of Justice of the European Communities (including Court of First Instance Decisions)