W.B. Studio v EUIPO - E.Land Italy (BF BELFE) (EU trade mark - Judgment) [2024] EUECJ T-54/23 (17 July 2024)

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(EU trade mark – Revocation proceedings – EU figurative mark BF BELFE – Genuine use of the mark – Partial revocation – Article 18(1), second subparagraph, point (b), and Article 58(1)(a) of Regulation (EU) 2017/1001 – Affixing of the trade mark to goods or to the packaging thereof in the European Union solely for export purposes – Proof of genuine use – No purely internal use – Article 19 of Delegated Regulation (EU) 2018/625)

W.B. Studio Sas di Wivian Bodini & C., established in Milan (Italy), represented by V. Piccarreta, G. Romanelli and A. Mocchi, lawyers,

European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,

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

E.Land Italy Srl, established in Milan (Italy), represented by M. Francetti and M. Cristofori, lawyers,

composed of F. Schalin, President, P. Škvařilová‑Pelzl and G. Steinfatt (Rapporteur), Judges,

1 By its action under Article 263 TFEU, the applicant, W.B. Studio Sas di Wivian Bodini & C., seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 November 2022 (Case R 870/2021-1) (‘the contested decision’).

2 The intervener, E.Land Italy Srl, is the proprietor of EU trade mark No 139840, registered on 16 November 1998 and duly renewed, following an application filed on 29 March 1996, by Belfe SA, the predecessor in law to the intervener, 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), itself 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)), in respect of the following figurative sign:

3 The goods covered by the contested mark are in Classes 18, 25 and 28 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 18: ‘Skins, hides, goods of leather and imitation leather, purses, travelling sets, briefcases, travelling bags, valises, haversacks, handbags, cases, card cases, pocket wallets, purses, briefcases, key-cases; umbrellas’;

– Class 25: ‘Clothing for gentlemen, ladies and children, including outer and under garments, woven and knitted; shirts, jackets (small), skirts, trousers, jeans, jackets, waistcoats, aprons and children’s pinafores, waterproof clothing, overcoats; sportswear, silk scarves, neckties, headscarves, gloves, sashes for wear, berets; stockings, footwear’;

– Class 28: ‘Equipment for physical exercises and gymnastics; skis and ski-bindings, fencing weapons, exercise cycles, billiards, fishing tackle, rods for fishing, golf clubs, rackets, table tennis, archery implements, bows for archery, decorations for Christmas trees, balls for games and play balloons, dolls’ feeding bottles, toy masks, marionettes; dolls, games and playthings; draughts, chess games, chessboards; scale model vehicles; roller skates and ice skates’.

4 On 28 March 2018, the applicant filed an application for revocation of the contested mark, on the basis of Article 58(1)(a) of Regulation 2017/1001, in respect of all the goods for which that mark had been registered, on the ground that that mark had not been put to genuine use within a continuous period of five years.

5 By decision of 15 March 2021, the Cancellation Division of EUIPO partially upheld the application for revocation. It revoked the contested mark in respect of the goods referred to in paragraph 3 above, with the exception of ‘clothing for ladies including outer garments, woven and knitted; shirts, jackets (small), skirts, jackets, waterproof clothing; all the aforementioned for women’ in Class 25.

6 On 14 May 2021, 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 5 above.

7 By the contested decision, the Board of Appeal dismissed the appeal and found, like the Cancellation Division, that the evidence submitted by the intervener was sufficient to prove genuine use of the contested mark in connection with the goods referred to in paragraph 5 above. It found, first, that most of the evidence dated within the relevant period was from 2013 and that some evidence bore a date from one of the years between 2014 and 2016, secondly, that the evidence referred to the affixing of the contested mark in Italy for export purposes and, thirdly, that the invoices, catalogues, price tags and photos submitted showed, as a whole, that the mark had been used on goods as an indication of their commercial origin and that the extent of that use was sufficient to conclude that there had been genuine use.

– partially annul the contested decision, to the extent that it upheld the Cancellation Division’s decision and rejected the application for revocation of the contested mark in respect of the following goods in Class 25: ‘Clothing for ladies including outer garments, woven and knitted; shirts, jackets (small), skirts, trousers, jackets, waterproof clothing, scarves; all the aforementioned for women’ and, consequently, revoke the contested mark on the ground of its non-use in connection with those goods;

– order EUIPO to pay the costs, including the costs incurred in the proceedings before the Cancellation Division and the Board of Appeal.

– order the applicant to pay the costs in the event that a hearing is convened.

– order the applicant to pay the costs, including the costs incurred in the proceedings before the Cancellation Division and the Board of Appeal.

11 In support of its action, the applicant puts forward two pleas in law, alleging, first, infringement of Article 58(1)(a) of Regulation 2017/1001, read in conjunction with Article 18 of that regulation, and, secondly, infringement of Article 19 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).

12 Given the date on which the application for revocation was filed, namely 28 March 2018, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation 2017/1001 (see, by analogy, judgment of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraphs 3 and 25).

The first plea, alleging infringement of Article 58(1)(a) of Regulation 2017/1001, read in conjunction with Article 18 of that regulation

13 The applicant criticises the Board of Appeal for finding, in essence, that there had been genuine use of the contested mark, although the evidence submitted by the intervener does not prove that to the requisite legal standard. It submits that the Board of Appeal did not correctly evaluate or carefully assess the time, place, nature and extent of use of the contested mark on the basis of the documents submitted by the intervener.

14 It is apparent from paragraphs 5 and 6 of the contested decision that, in order to prove genuine use of the contested mark, the intervener provided the following evidence, on 11 April 2018 as regards items of evidence Nos 1 to 9 and on 13 July 2020 as regards items of evidence Nos 10 to 23:

– invoices, dated 2013, issued by Belfe Italia Srl and sent to Pellbass Snc, together with, in some cases, the relevant customs documents, packing lists and a copy of Belfe Italia’s bank statement referring to clients’ payments, and invoices issued by Pellbass to E.Land International Fashion (Shanghai) Co. Ltd. (item of evidence No 1);

– invoices, dated 2014, relating to men’s clothing and fabrics (item of evidence No 2);

– three invoices relating to investigation reports and sales invoices, dated 2015, issued by Belfe Italia to E.Land International Fashion (Shanghai), E-Land Wish Design Ltd. and E-Land World Building, regarding samples of woven garments and fabrics, together with, in some cases, the relevant customs documents, the packing lists and a copy of Belfe Italia’s bank statement referring to clients’ payments (item of evidence No 3);

– sales invoices, dated 2016, issued by Belfe Italia to Eland Retail Ltd. and E-Land China Fashion Design Co. Ltd., regarding, inter alia, clothing, together with, in some cases, the relevant customs documents (item of evidence No 4);

– an accounting document from Belfe Italia dated 2017 (item of evidence No 5);

– undated photographs of jackets, the labels and tags of which bear the sign BELFE (item of evidence No 7);

– packing lists, dated with, inter alia, one of the years from 2013 to 2018 (item of evidence No 8);

– a company registration report relating to Belfe Italia from the Milan Chamber of Commerce, showing that it was 100% controlled by the intervener (item of evidence No 9);

– an extract relating to the intervener from the register of the Milan Chamber of Commerce (item of evidence No 10);

– an extract from the consolidated financial statements of Eland World Limited and its subsidiaries, dated 31 December 2016 and 31 December 2017 (item of evidence No 11);

– a printout of the article from the online encyclopaedia Wikipedia regarding E-Land Group, a company originating from South Korea (item of evidence No 12);

– an extract, printed on 9 July 2020, from the website ‘www.elandfashionchina.com’ (item of evidence No 13);

– documents, dated 11 April 2018, relating to the transfer of the contested mark from Belfe to the intervener (item of evidence No 14);

– a certificate of merger consisting of the absorption of Belfe Italia by the intervener in November 2017 (item of evidence No 15);

– a licence agreement, dated 1 June 2012, between Belfe (namely the licensor) and Belfe Italia (namely the licensee) in respect of clothing, bags and/or accessories (item of evidence No 16);

– photographs of clothing tags and labels bearing the contested mark and, as regards some of those tags and labels, product codes, as well as invoices, customs documents and packing lists (items of evidence Nos 17 to 20);

– an extract from the website ‘www.uibm.gov.it’ regarding the applicant’s Italian trade mark application No 302018000000911 BELFE (item of evidence No 22);

– an affidavit, dated February 2020, signed by the former Chief Executive Officer (CEO) of Belfe Italia, stating that invoices Nos 5, 7, 8, 12, 15, 17, 18, 20 and 21 refer to the shipment of goods bearing, inter alia, the contested mark which were manufactured in Italy and exported to China in 2013 (item of evidence No 23).

15 Article 58(1)(a) of Regulation 2017/1001 provides that the rights of the proprietor of an 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.

16 In the present case, both the Cancellation Division and the Board of Appeal found that the period from 28 March 2013 to 27 March 2018 was the five-year period in respect of which the applicant was required to prove genuine use of the contested mark, findings which the parties do not dispute.

17 In interpreting the concept of ‘genuine use’, account should be taken of the fact that the ratio legis of the requirement that the contested 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 intended 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).

18 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).

19 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).

20 Lastly, genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned. 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).

21 In that regard, it must be stated that, under Article 10(3) and (4) of Delegated Regulation 2018/625, which is applicable mutatis mutandis 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 to be limited 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.

22 It is not necessary for each item of evidence to give information about all four elements to which the proof of genuine use must relate, namely the place, time, nature and extent 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).

23 The Board of Appeal found that the intervener had provided proof of use during the relevant period from 28 March 2013 to 27 March 2018, since most of the evidence dated from 2013 and some of that evidence bore a date from one of the years between 2014 and 2016.

24 According to the applicant, only a few documents submitted by the intervener and taken into consideration by the Board of Appeal are dated, whereas the majority of the documents cannot be associated with the relevant period.

26 In that regard, it must be stated that the Board of Appeal was right in finding, in paragraph 33 of the contested decision, that all the invoices in the bundle of invoices submitted as item of evidence No 1 and the catalogue submitted as item of evidence No 21 were from 2013 and that the invoices submitted as items of evidence Nos 2 to 4 and the packing lists from item of evidence No 8 bore a date from one of the years between 2014 and 2016, with the result that all that evidence clearly fell within the relevant period.

27 In so far as the applicant calls into question the date of publication of the catalogue submitted as item of evidence No 21, it is sufficient to note that the dates in that catalogue to which the applicant refers, namely 1920, 1930, 1940, 1960, 1970, 1980 and 1990, mark the decades of the mark’s development and appear in the catalogue’s introductory summary dealing with the history of the contested mark. Those dates can be distinguished clearly from the date of the collection presented in the catalogue, namely the 2013 autumn–winter collection, as the indication of that date alone is followed by a presentation of the various items offered. Thus, 2013 is the only date which is relevant with regard to the assessment of the use of the mark in the present case. Furthermore, the BELFE catalogue, which was submitted as item of evidence No 21, shows, as EUIPO correctly submits, product codes corresponding to those mentioned on the invoices issued during the relevant period and it is that link between items of evidence Nos 1 and 21 which confirms their respective evidential value with regard to the date of use.

28 Consequently, the Board of Appeal was right in finding, in paragraph 35 of the contested decision, that the evidence provided sufficient indications regarding the time of use.

29 That finding cannot be called into question by the applicant’s arguments. According to the applicant, the majority of the documents cannot be associated with the relevant period, since they do not contain a date or a reliable date.

30 First, it must be stated, as regards the undated BELFE catalogue showing women’s clothing (item of evidence No 6), the undated photos of goods (item of evidence No 7), the company registration report in respect of Belfe Italia (item of evidence No 9), the company registration report in respect of E.Land Italy (item of evidence No 10), the extract from the consolidated financial statements of Eland World Limited in respect of the years 2016 and 2017 (item of evidence No 11), the article devoted to E-Land Group from the online encyclopaedia Wikipedia (item of evidence No 12), the printout of an extract from the website ‘www.elandfashionchina.com’ of 9 July 2020 (item of evidence No 13), the document regarding the transfer of the contested mark from Belfe to the intervener (item of evidence No 14) and the certificate of merger consisting of the absorption of Belfe Italia by the intervener in November 2017 (item of evidence No 15), that the Board of Appeal did not in any way rely on that evidence in its assessment of the duration of the intervener’s use of the contested mark. It is apparent from paragraphs 33 and 34 of the contested decision that the Board of Appeal found that it was sufficient to rely on the dated items of evidence, regarding the years 2013 to 2016 (items of evidence Nos 1 to 4, 8 and 21, see paragraph 26 above), since it was not necessary for the contested mark to have been put to use throughout the five-year period, but rather within that period, because continuous use was not required (see, to that effect, judgment of 16 December 2008, Deichmann-Schuhe v OHIM – Design for Woman (DEITECH), T‑86/07, not published, EU:T:2008:577, paragraph 52, which dealt with Article 15(1) of Regulation No 40/94, now Article 18(1) of Regulation 2017/1001).

31 Secondly, the applicant submits that item of evidence No 16, consisting of a licence agreement between Belfe and Belfe Italia, is dated 2012 and therefore falls outside the relevant period. However, the relevance of that item of evidence does not directly concern the time of use, but the reason why the dated invoices in the bundle of documents in item of evidence No 1 were issued by Belfe Italia. So far as concerns that explanation, it is sufficient that the licence agreement dates from 2012, that is to say, prior to the relevant period with regard to the genuine use at issue, during which those invoices, which form part of item of evidence No 1, were issued.

32 Thirdly, as regards the undated photos of clothing tags and labels bearing the mark BELFE (items of evidence Nos 17 and 18), EUIPO rightly points out that those photos are relevant in so far as they show product codes corresponding to the codes mentioned on the invoices dated within the relevant period.

33 Since it is not necessary for each item of evidence to give information about all four elements to which the proof of genuine use must relate, namely the place, time, nature and extent 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, T‑263/18, not published, EU:T:2019:134, paragraph 84 and the case-law cited).

34 The Board of Appeal did not therefore err in taking into account items of evidence which did not fall within the relevant period or were undated and which it regarded as contributing, in the present case, together with dated documents, towards substantiating the use of the contested mark.

35 As regards the place of use, the Board of Appeal found, in paragraphs 38 to 42 of the contested decision, that the evidence referred to the affixing of the contested mark in Italy for export purposes, which was sufficient according to point (b) of the second subparagraph of Article 18(1) of Regulation 2017/1001, without it being necessary to show that the goods were resold to end consumers in China.

36 The applicant submits that most of the evidence submitted by the intervener does not mention the place of use. It argues that the documents do not sufficiently show that Belfe Italia had engaged in commercial activities connected with the contested mark with actual consumers in the European Union. It contends that all the invoices submitted were issued and addressed to Chinese companies forming part of the same commercial group, E-Land Group, sometimes through the intermediary of an Italian transport company, Pellbass, for the mere transit of the goods.

38 Point (b) of the second subparagraph of Article 18(1) of Regulation 2017/1001 provides that the affixing of the EU trade mark to goods or to the packaging thereof in the European Union solely for export purposes also constitutes use in the European Union.

39 In that regard, it must be stated that the invoices from 2013 which form part of item of evidence No 1 and were issued by the licensee Belfe Italia show that the goods mentioned were manufactured in Italy and exported to China, sometimes via the Italian company Pellbass. The address of the recipient, which is mentioned on the right-hand side in the header of invoices Nos 9, 15, 17, 18, 20 and 21, is that of the company E.Land International Fashion (Shanghai).

40 Furthermore, the photographs of ladies’ clothing (items of evidence Nos 17 and 18) show that the mark was mentioned on the tags attached to the goods and that there were also labels and tags bearing the mark BELFE sewn onto the items themselves.

41 It follows that the conditions of point (b) of the second subparagraph of Article 18(1) of Regulation 2017/1001 are satisfied.

43 As regards the applicant’s argument that it is difficult to assess whether the mark has actually been used with regard to actual or potential consumers of the goods on which it appears, it must be borne in mind that, according to point (b) of the second subparagraph of Article 18(1) of Regulation 2017/1001, the affixing of the EU trade mark to goods or to the packaging thereof in the European Union solely for export purposes constitutes use within the meaning of that provision. Proof that those goods were marketed in the country of destination is not therefore required.

44 Furthermore, EUIPO is right in stating that some of the goods bearing the contested mark were sold to the Italian company Pellbass, which then exported them to the Chinese company E.Land International Fashion (Shanghai). Those transactions also constitute use of the contested mark in the European Union.

45 As regards the applicant’s argument that items of evidence Nos 5 to 18, 21 and 22 do not contain any reference to the place of use of the contested mark, it must be borne in mind that it is not necessary for each item of evidence to give information about all four elements to which the proof of genuine use must relate, namely the place, time, nature and extent of use, but that, according to the case-law cited in paragraphs 22 and 33 above, 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, T‑263/18, not published, EU:T:2019:134, paragraph 84 and the case-law cited).

46 It is also necessary to reject the applicant’s claim that the Board of Appeal disregarded the fact that what was involved concerned purely internal use of the contested mark on the ground that all the invoices submitted were issued and addressed to Chinese companies forming part of the E-Land Group, sometimes through the intermediary of the Italian transport company Pellbass for the mere transit of the goods to Chinese companies in the group. In order to substantiate its claim, the applicant refers, in particular, to the headers of invoices Nos 9, 13, 16 and 27 in the bundle of invoices relating to 2013 (item of evidence No 1).

47 However, invoices Nos 5, 7 to 9 and 12, which form part of item of evidence No 1, show that Belfe Italia sold the goods bearing the contested mark to the Italian company Pellbass, which then exported them to the Chinese company E.Land International Fashion (Shanghai). It must be noted, as stated by EUIPO, that there is no evidence to support the conclusion that Pellbass belongs to the intervener’s group of undertakings. Consequently, it cannot be validly claimed that the invoices were issued between companies in the same group of undertakings.

48 Likewise, the applicant’s argument that Pellbass is a transport company and that what was involved concerned the mere transit of the goods to Chinese companies in the group is not convincing, since Pellbass is clearly mentioned as being the purchaser of the merchandise on invoices Nos 8 to 10, 12, 15, 17, 18, 20 and 21 (item of evidence No 1). Furthermore, it is also apparent from the evidence that, although the merchandise was subsequently sent to E.Land International Fashion (Shanghai), what was involved was, however, an actual sale by Pellbass itself, as is shown, by way of example, by invoices No 20 of 6 May 2013 (item of evidence No 1), No 33 of 8 August 2013 (item of evidence No 21), No 10 of 18 March 2013 and No 12 of 28 March 2013 (the latter two invoices forming part of items of evidence Nos 17 to 20).

49 The invoices relied on by the applicant in order to show that the sales made through Pellbass in actual fact concerned purely internal use, namely invoices Nos 9, 13, 16 and 27, which appear in the bundle of invoices from 2013 (item of evidence No 1), also do not call into question the reality of the transactions with Pellbass. They merely show that Belfe Italia made sales both to Pellbass and to the companies belonging to its own group, namely E.Land International Fashion (Shanghai), which appears as the purchaser on invoice No 16, and E.Land China Fashion Design Ltd., which appears as the purchaser on invoice No 27 of item of evidence No 1, and to other purchasers, like Suzhou Marconi Garments Factory Co. Ltd, which appears on invoice No 13.

50 Consequently, the Board of Appeal was right in finding, in paragraph 43 of the contested decision, that, in accordance with Article 18(1) of Regulation 2017/1001, the place of use was established as being Italy.

51 In paragraphs 51 and 52 of the contested decision, the Board of Appeal found that the evidence, including a certain number of invoices, catalogues, price tags and photos, contained sufficient examples of use of the contested mark for it to be concluded that the mark was used on goods as an indication of their commercial origin.

52 The applicant submits that the evidence submitted by the intervener does not establish the required nature of use of the contested mark. It argues that the fact that the contested mark appears in the header of the invoices does not indicate that the goods to which the invoices refer bear that mark. It contends that the use of the contested mark in the header of the invoices could at most demonstrate its use in connection with wholesale or retail services. It claims that the affidavit submitted as item of evidence No 23 is merely an internal document which was tailor-made by the former CEO of Belfe Italia. Furthermore, it argues that it refers only to nine invoices from 2013 and therefore to a limited period of time and to a small number of items. The applicant maintains that the photos of the goods cannot prove that those goods were actually marketed. Furthermore, it submits that the tags do not necessarily appear to be attached to the clothing and that the photos are undated. As regards the catalogue, the applicant contends that its date is not certain, since it is possible to print it specifically in order to submit it before the Court with the most appropriate marks and dates. It submits that the other documents submitted by the intervener are irrelevant and do not prove genuine use of the contested mark. It argues that there is no evidence to establish that the contested mark was used to designate ladies’ clothing.

54 In the first place, the applicant’s argument alleging that there is no link between the header of the invoices and the goods covered by the contested mark must be rejected.

55 It is true that the header of the invoices which the intervener submitted as evidence contains, as the applicant correctly points out, the company name of the licensee of the contested mark, namely Belfe Italia Srl.

56 However, the Board of Appeal did not, in order to assess whether there had been genuine use of the contested mark, rely on the reference to the figurative mark in the header of the invoices. It did not even rely solely on the invoices in themselves, which do not contain any indication of the contested mark associated with the goods listed. Rather, the Board of Appeal based its assessment of the nature of use on a combination of a number of items of evidence which it assessed together by establishing a link between them with the aid of the names of the categories of clothing and the product codes shown on those items of evidence.

57 The Board of Appeal based its assessment on invoices, in particular those submitted as item of evidence No 1, in connection with photos of ladies’ clothing with tags and labels bearing the contested mark (items of evidence Nos 17 and 18). A number of tags also bear a product code. Since, on the invoices, there is a product code next to each reference to a product, the coincidences between the codes on the tags, on the one hand, and those on the lists of goods on the invoices, on the other hand, make it possible to establish the link required in order to prove genuine use of the contested mark by taking all that evidence into account.

58 Likewise, the catalogue submitted as item of evidence No 21 reproduces the fashion items together with product codes.

59 That identification by the Board of Appeal of sales of goods bearing the contested mark is not called into question by the applicant’s argument that Belfe Italia did not sell only goods bearing the contested mark, but also goods bearing other Italian trade marks, as is shown by the invoices from 2016 which were submitted as item of evidence No 4. The Board of Appeal did not find that all the goods on the invoices issued by Belfe Italia were goods bearing the contested mark. The Board of Appeal’s method for identifying the goods covered by that mark consisted rather of being guided by the product codes mentioned on the invoices, which could be interpreted with the aid of the photos and the catalogue showing goods covered by the mark BELFE which had the same codes.

60 As regards, lastly, the applicant’s claim that none of the evidence submitted by the intervener makes it possible for the information on the invoices to be cross-checked, it is sufficient to refer to paragraph 6 of the contested decision, according to which the Cancellation Division identified, in the context of its analysis, the codes on the photos of tags and labels for BELFE clothing (items of evidence Nos 17 to 20) in order to then match them with the invoices submitted. By way of example, the product codes BFJJ326102 (corresponding to a jacket), BFOW324103, BFOW324105, BFOW324107, BFOW324108 and BFOW325101 (corresponding to dresses), BFTC324101 (corresponding to trousers) and BFJJ323104 (corresponding to a waistcoat) appear on invoices Nos 5 and 7 to 9 of the bundle of invoices from 2013 (item of evidence No 1) and in the bundle of documents submitted as items of evidence Nos 17 to 20, a bundle of documents in which the product codes appear highlighted on invoices Nos 7 and 8.

61 The Board of Appeal did not err in so far as it established a link between the reproductions of the goods in the photos and in the catalogue, on the one hand, and the invoices in respect of the same goods, on the other hand, by relying on their respective indications of the product codes, which proved to be identical. Such a diligent comparison of the product codes does not, as the applicant claims, amount to a mere estimation of a probability or to a mere supposition. On the contrary, what is involved is a rational and logical process of deduction to which the Board of Appeal was entitled to have recourse in its assessment of whether there had been genuine use of the contested mark.

62 The applicant’s arguments relating to invoices Nos 7 and 10, arguments which were put forward for the first time at the hearing and are supported by the written pleading lodged at the Registry of the General Court on 23 February 2024 are not, in any event, capable of calling into question the evidential value of the evidence which was submitted by the intervener and has been referred to in paragraph 60 above.

63 As regards invoice No 7, the applicant submits that it refers, under the code BFJJ326102, to a ‘ladies’ coat’ and states ‘EXT: 99% poliammide [polyamide], 1% poliurethane [polyurethane]; DET: 100% viscose’, whereas the indication on the label is ‘external: 100% polyamide; details: 99.2% viscose, 0.8% elastane’. As the intervener rightly submits, the discrepancies between the information on the invoice and that on the label are minimal (at most 1%). Those inaccuracies as regards the materials do not make it possible to conclude, contrary to what the applicant claims, that what is involved are not the same goods, even though they are designated by the same product code both on the invoice and on the label. Consequently, they cannot negate the evidential value of that item of evidence, which the Board of Appeal assessed together with the other invoices, the catalogues and the other photos not only of price tags, but of whole items of clothing which bore a label with the mark on its own or on which the mark was sewn. The applicant’s argument referring to invoice No 7 must therefore be rejected.

64 As regards the applicant’s criticism relating to invoice No 10 in the bundle of documents submitted as items of evidence Nos 17 to 20, on which the codes BFOW324107, BFOW324108, BFTC324101 and BFJJ323104 appear, it must be stated that that invoice was not issued by Belfe Italia, but by Pellbass. Any difference between the description given by Pellbass on its invoices as regards the materials and Belfe Italia’s labelling does not make it possible for any conclusions to be drawn as regards the identity of the goods.

65 Furthermore, as regards the code BFJJ323104, the information ‘EXT: 72% poliammide [polyamide], 28% elastane; DET: 80% poliammide [polyamide], 20% elastane’ on the invoice corresponds to the information ‘External: 71.7% nylon, 28.3% elastane; Details: 81.6% nylon, 18.4% elastane’ on the label, since the information on the label is simply more precise than that on the invoice. That applies not only to the percentages, but also to the materials since ‘nylon’ is the trade name of a subcategory of polyamide.

66 In the second place, as regards the affidavit of the former CEO of Belfe Italia, it is sufficient to state that the Board of Appeal did not base its assessment on that affidavit, with the result that the applicant’s criticism relating thereto is ineffective.

67 Consequently, the Board of Appeal did not make any error of assessment as regards the nature of use of the contested mark.

68 As regards the extent of the use of the contested mark, the Board of Appeal found, in paragraphs 48 and 49 of the contested decision, that the evidence, which contained a number of invoices, catalogues, price tags and photos, showed that significant quantities of clothing had been sold, with the result that, taken as a whole, it proved a sufficient extent of use to establish that there had been genuine use of the contested mark. It stated that several invoices from 2013 showed quantities of between 86 and 1 925 items of clothing, corresponding to not insignificant amounts.

69 The applicant maintains that there is no evidence that the goods bearing the contested mark were actually marketed. It submits that, since it is unknown whether the mark has been used in the context of continuous commercial activities and whether it has been used externally and publicly, the extent of its use has not been proved.

71 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).

72 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).

73 In the present case, the intervener submitted a number of invoices showing that significant quantities of clothing had been sold for not insignificant amounts.

74 The 10 sales invoices issued in 2013 which are included in item of evidence No 1 concern, as a whole, a significant number of ladies’ fashion items, namely, as regards invoice No 5 of 7 March 2013, 1 925 items, as regards invoice No 7 of 18 March 2013, 1 292 items, as regards invoice No 8 of 28 March 2013, 294 items, as regards invoice No 9 of 9 April 2013, 1 245 items, as regards invoice No 12 of 6 May 2013, 86 items, as regards invoice No 15 of 25 June 2013, 328 items, as regards invoice No 17 of 5 July 2013, 208 items, as regards invoice No 18 of 19 July 2013, 255 items, as regards invoice No 20 of 8 August 2013, 208 items, and, as regards invoice No 21 of 28 August 2013, 395 items.

75 Thus, EUIPO is right in stating that the invoices showed significant quantities of ladies’ clothing sold, with the result that they showed that the extent of use had been sufficiently substantial to amount to a real and genuine commercial effort.

76 As regards the applicant’s argument that there is nothing to prove that the goods bearing the contested mark were actually marketed, first, it must be borne in mind that the invoices submitted by the intervener are supported by packing documents and customs documents and by some bank statements serving as proof of payment. Secondly, the combined assessment of the invoices, on the one hand, and of the catalogue and photos showing goods with the same product codes bearing the contested mark, on the other hand, serves to prove that the goods marketed did indeed bear the contested mark.

77 Furthermore, the applicant’s argument that it is not certain that the contested mark has been put to external and public use has been rejected in paragraph 46 et seq. above.

78 It thus follows from all of the foregoing considerations that the Board of Appeal did not err in finding, in paragraph 49 of the contested decision, that the extent of use was sufficient to be considered to be genuine.

The second plea, alleging infringement of Article 19 of Delegated Regulation 2018/625

79 The applicant submits that the Board of Appeal should have rejected items of evidence Nos 10 to 23, which the intervener submitted after the expiry of the time limit set by the Cancellation Division. According to the applicant, that evidence does not constitute supplementary evidence for the purposes of Article 19 of Delegated Regulation 2018/625, since it does not clarify a legally relevant fact which has already been proved. It argues that, on the contrary, the documents submitted within the time limit specified refer only to the sale of clothing, and not to the use of the mark, whereas the documents submitted on 13 July 2020 are intended to prove use of the mark. It contends that it follows that that evidence is intended to prove a new fact and therefore constitutes new evidence.

81 Under Article 19(1) of Delegated Regulation 2018/625, the proprietor of the contested mark is required to submit proof of use within a period specified by EUIPO.

82 However, in accordance with Article 10(7) of Delegated Regulation 2018/625, which is applicable mutatis mutandis to revocation proceedings pursuant to Article 19(1) of that regulation, where, after the expiry of the time limit specified by EUIPO, indications or evidence that supplement relevant indications or evidence already submitted before the expiry of that time limit are submitted, EUIPO may take into account the evidence submitted out of time because of the discretion conferred on it by Article 95(2) of Regulation 2017/1001. In exercising its discretion, EUIPO is to take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence. The fact that the applicant for revocation disputed the evidence initially submitted by the proprietor of the EU trade mark and, in particular, the use of the sign in connection with the contested goods in respect of which it was registered justifies the submission of additional evidence in response to the objection (judgments of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 36, and of 29 September 2011, New Yorker SHK Jeans v OHIM – Vallis K.-Vallis A. (FISHBONE), T‑415/09, not published, EU:T:2011:550, paragraphs 30 and 33).

84 The applicant makes an artificial distinction when it contends that the documents submitted within the time limit specified only refer to the sale of clothing, and not to the use of the contested mark, whereas the documents submitted on 13 July 2020 are intended to prove use of the mark.

85 The evidence initially submitted, namely on 11 April 2018 concerned proof of use of the contested mark, as do the documents submitted on 13 July 2020. The latter were aimed at dispelling the doubts regarding the use of the contested mark which had been raised by the applicant. In that regard, the intervener provided, as supplementary evidence, catalogues and tags and labels bearing the same product codes as those mentioned on the invoices initially submitted, in order better to establish the link between the relevant goods and the invoices which had previously been submitted, and also documents relating to the commercial group to which it belonged, in order to take account of the applicant’s claim of a purely internal situation. A catalogue and photos of clothing bearing the contested mark had, moreover, already been submitted as items of evidence Nos 6 and 7 before the expiry of the time limit set by the Cancellation Division.

86 Thus, the Board of Appeal did not err in confirming the Cancellation Division’s decision to allow the supplementary evidence which the intervener had submitted on 13 July 2020.

87 Consequently, the second plea must be rejected and, as a result, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the second part of the applicant’s first head of claim, seeking the revocation of the contested mark.

88 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.

89 In the present case, EUIPO has contended that the applicant should be ordered to pay the costs in the event that a hearing is convened.

90 The intervener has contended that the applicant should be ordered to pay the costs of the present proceedings, including the costs incurred in the proceedings before the Cancellation Division and the Board of Appeal.

91 However, 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 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 claim that the applicant should be ordered to pay the costs incurred before the Cancellation Division must be rejected.

92 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).

93 Consequently, since the applicant has been unsuccessful and a hearing has taken place, it must be ordered to pay the costs relating to the present proceedings, 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) >> W.B. Studio v EUIPO - E.Land Italy (BF BELFE) (EU trade mark - Judgment) [2024] EUECJ T-54/23 (17 July 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T5423.html Cite as: [2024] EUECJ T-54/23

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