( EU trade mark - Revocation proceedings - EU word mark Piekarnia i Kawiarnia Lajkonik - Lack of genuine use of the mark - Article 58(1)(a) of Regulation (EU) 2017/1001 )
In Case T‑469/24,
Lorenz Switzerland AG, successor in law to Leithart AG Schweiz, established in Appenzell (Switzerland), represented by T. Wittwer, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
intervener before the General Court, formerly Wawelskie Alkohole Łukasz Bylica, the other party to the proceedings before the Board of Appeal of EUIPO, being
Lajkonik Alkohole Łukasz Bylica, established in Wieliczka (Poland), represented by P. Dykas, lawyer,
THE GENERAL COURT (First Chamber),
composed of R. Mastroianni, President, T. Tóth (Rapporteur) and S.L. Kalėda, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the 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,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Lorenz Switzerland AG, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 July 2024 (Case R 1916/2023-2) ('the contested decision').
Background to the dispute
2 On 15 July 2022, the intervener, Wawelskie Alkohole Łukasz Bylica, filed an application with EUIPO for revocation of the EU trade mark that had been registered following an application filed by the applicant on 7 May 2012 for the word sign Piekarnia i Kawiarnia Lajkonik.
3 The goods and services covered by the contested mark in respect of which revocation was sought were in Classes 32 and 35 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 corresponded, for each of those classes, to the following description:
– Class 32: 'Beers; mineral water and gaseous water and other non-alcoholic beverages; fruit drinks and fruit juices; syrups and other [ingredients] for the preparation of beverages';
– Class 35: 'Services of a retailer with regard to beers, mineral water and gaseous water and other non-alcoholic beverages, fruit drinks and fruit juices, syrups and other ingredients for the preparation of beverages'.
4 The ground relied on in support of the application for revocation was that set out in Article 58(1)(a) of 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).
5 On 15 August 2023, the Cancellation Division upheld the application, revoking the contested mark in respect of all of the goods and services referred to in paragraph 3 above. More specifically, it found that the evidence adduced by the applicant did not prove the extent or nature of use of the contested mark.
6 On 8 September 2023, Leithart AG Schweiz filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7 By the contested decision, the Board of Appeal dismissed the appeal. It found, in essence, that the evidence provided by the applicant did not prove the extent of use of the contested mark in respect of all the goods and services referred to in paragraph 3 above or, a fortiori, the nature of use of that mark.
– order the applicant to pay the costs incurred before the Court and in the proceedings before EUIPO.
Law
Admissibility of the documents submitted for the first time before the Court
11 EUIPO submits that the documents in Annexes A.16 and A.17 to the application are inadmissible on the grounds that they were not adduced in the course of the proceedings before it.
12 It should be noted that, according to settled case-law, it follows from Article 72 of Regulation 2017/1001 that the Court is called upon to assess the legality of decisions of the Boards of Appeal of EUIPO by reviewing their application of EU law, having regard, in particular, to the facts which were submitted to them. It also follows from Article 95(2) of that regulation that it is for the parties to produce before EUIPO in due time the matters of fact upon which they intend to rely. Thus, facts not relied on by the parties before the adjudicating bodies of EUIPO cannot be submitted at the stage of the action brought before the Court, and the latter cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it, except facts which should have been examined of their own motion by EUIPO's bodies, in accordance with Article 95(1) of that regulation (see, to that effect, judgments of 10 November 2011, LG Electronics v OHIM, C‑88/11 P, not published, EU:C:2011:727, paragraphs 23 to 26; of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19; and of 29 September 2010, Interflon v OHIM – Illinois Tool Works (FOODLUBE), T‑200/08, not published, EU:T:2010:414, paragraph 11).
13 In the first place, as regards the admissibility of Annex A.16, consisting of an affidavit of 5 September 2024, it should be noted that that affidavit was indeed adduced for the first time before the Court and cannot fall within the exception referred to in Article 95(1) of Regulation 2017/1001.
14 It must therefore be excluded, without it being necessary to examine its evidential value.
15 In the second place, as regards Annex A.17, it must be pointed out that it consists of a table which merely compiles and restructures evidence already adduced both before the Cancellation Division and before the Board of Appeal. Accordingly, such a table cannot be regarded as an inadmissible document adduced for the first time before the Court.
Substance
16 In support of its action, the applicant raises two pleas in law, the first alleging infringement of Article 58(1)(a) of Regulation 2017/1001 and the second alleging infringement of Article 19(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, set out in Annex 1C to the Agreement Establishing the World Trade Organization (WTO), signed in Marrakesh on 15 April 1994 and approved by Council Decision of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1) ('the TRIPS Agreement').
The first plea in law, alleging infringement of Article 58(1)(a) of Regulation 2017/1001
17 By this plea, which is divided into two parts, the applicant disputes the Board of Appeal's assessment of the evidence which led it to conclude that the contested mark had not been put to genuine use in respect of the goods and services at issue.
18 EUIPO and the intervener dispute the applicant's arguments.
19 It should be noted that, pursuant to the first subparagraph of Article 18(1) and to Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of an EU 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 EU in connection with the goods or services in respect of which it is registered, and there are no proper reasons for its non-use (judgment of 15 March 2023, Zelmotor v EUIPO – B&B Trends (zelmotor), T‑194/22, not published, EU:T:2023:130, paragraph 14).
20 The ratio legis for the requirement that a mark must have been put to genuine use in order to be protected under EU law is that the EUIPO Register cannot be regarded as a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, that register should faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 15 March 2023, zelmotor, T‑194/22, not published, EU:T:2023:130, paragraph 17 and the case-law cited).
21 According to settled case-law, there is genuine use of a trade mark, within the meaning 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. In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 15 March 2023, zelmotor, T‑194/22, not published, EU:T:2023:130, paragraph 18 and the case-law cited).
22 As regards the criteria for assessing genuine use, under Article 10(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018, supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), which is applicable to revocation proceedings in accordance with Article 19(1) of that regulation, proof of use must relate to the place, time, extent and nature of use of the contested mark (judgment of 15 March 2023, zelmotor, T‑194/22, not published, EU:T:2023:130, paragraph 19).
23 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 in the course of trade is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40 and the case-law cited).
24 Furthermore, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must 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, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).
25 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use. Such an assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods or services marketed under the trade mark may be compensated for by a high intensity of use or a period of regular use of that mark or vice versa (see judgment of 7 September 2022, Peace United v EUIPO – 1906 Collins (bâoli), T‑754/21, not published, EU:T:2022:529, paragraph 33 and the case-law cited).
26 It must be added that, in proceedings for revocation of a trade mark, it is, in principle, for the proprietor of the mark to prove genuine use of that mark (see judgment of 23 January 2019, Klement v EUIPO, C‑698/17 P, not published, EU:C:2019:48, paragraph 57 and the case-law cited).
27 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was correct in finding that the evidence submitted by the applicant did not prove genuine use of the contested mark as regards the goods and services at issue.
28 In the present case, in view of the date of the application for revocation, the Cancellation Division found that the period between 15 July 2017 and 14 July 2022 was the five-year period for which the applicant was required to prove genuine use of the contested mark, which the parties do not dispute.
29 It must be added that the applicant does not dispute the Board of Appeal's conclusions concerning the use of the contested mark, on the one hand, for 'beers, mineral water and gaseous water, syrups and other ingredients for the preparation of beverages' in Class 32 and, on the other hand, for 'services of a retailer with regard to beers, fruit drinks and fruit juices, syrups and other ingredients for the preparation of beverages' in Class 35. The application for annulment is thus limited to 'non-alcoholic beverages, fruit drinks and fruit juices' in Class 32 and to 'services of a retailer with regard to mineral water and gaseous water and other non-alcoholic beverages' in Class 35.
– The first part of the first plea in law, alleging lack of genuine use in respect of 'non-alcoholic beverages, fruit drinks and fruit juices' in Class 32
30 The applicant submits that the evidence adduced in the course of the administrative proceedings before EUIPO was sufficient to prove genuine use of the contested mark in connection with 'non-alcoholic beverages, fruit drinks and fruit juices'. In particular, it claims that the data in the affidavit of 22 November 2022 from the general manager of Lajkonik House of Bakery Sp. zo.o. ('the affidavit of 22 November 2022') were substantiated by the other evidence produced.
31 EUIPO and the intervener dispute the applicant's arguments.
32 In order to prove genuine use of the contested mark, the applicant, in the course of the administrative proceedings before EUIPO, produced, inter alia, the affidavit of 22 November 2022 (Annex 7 to EUIPO's file), invoices (Annexes 9 and 9a to EUIPO's file), cash register receipts (Annex 8 to EUIPO's file), photographs and recipes (Annexes 2, 5 and 6 to EUIPO's file), screenshots/captures from inter alia the websites of the proprietor's licensee and from the proprietor's licensee's Facebook/Instagram pages (Annexes 1, 3, 4, 10, 10a, 11 and 11a to EUIPO's file), a selection of promotional/advertising material (Annexes 12 and 12a to EUIPO's file) and printouts from a Wikipedia page (Annexes 13a, 13b and 13c to EUIPO's file).
33 At the outset, it must be noted that almost all of that evidence refers to goods under a figurative mark of which the applicant is also the proprietor and not under the contested mark which is the subject of the revocation proceedings. However, as the intervener correctly notes, irrespective of whether the applicant could produce such documents in order to prove genuine use of the contested mark, it must be held that, in any event, those documents are insufficient to prove genuine use.
34 In paragraphs 39 to 58 of the contested decision, the Board of Appeal found that those items of evidence, taken together, did not prove that there had been use of the contested mark in respect of 'non-alcoholic beverages, fruit drinks and fruit juices'. In essence, it found, first, that the figures contained in the affidavit of 22 November 2022 were not broken down by category of goods, which therefore did not make it possible to determine the extent of use of the contested mark and, second, that the other evidence produced did not sufficiently substantiate that affidavit.
35 The Court considers that the Board of Appeal's assessment is correct.
36 First, as regards the affidavit of 22 November 2022, it should be noted that, while it is true that it contains sales and turnover figures for the years 2012 to 2022 for 'tea, cocoa, coffee, iced tea, cocktails, lemonades and freshly squeezed juices' (Sections III.1 and III.2) and 'cold beverages' (Section IV.4), it does not contain any precise information about the sales figures achieved by the contested mark for 'non-alcoholic beverages, fruit drinks and fruit juices'. Since those are raw data, not broken down according to the goods at issue which, moreover, relate in part to goods not in Class 32, it must be held that the Board of Appeal was correct in finding, in paragraphs 41 and 54 of the contested decision, that it was impossible to determine the sales and turnover figures generated for 'non-alcoholic beverages, fruit drinks and fruit juices' taken in isolation.
37 Second, it must be emphasised, as the Board of Appeal did, that affidavits from a person who has close links with the party concerned are of less evidential value than those of third parties and cannot therefore, on their own, constitute sufficient proof of use of the contested mark (see, to that effect, judgment of 16 July 2014, Nanu-Nana Joachim Hoepp v OHIM – Stal-Florez Botero (la nana), T‑196/13, not published, EU:T:2014:674, paragraph 32). It should be added, in that regard, that the particulars in an affidavit by a person linked, in any manner whatsoever, as in the present case, to the company relying on it must, in any event, be supported by other evidence (see, to that effect, judgment of 11 December 2014, Nanu-Nana Joachim Hoepp v OHIM – Vincci Hoteles (NAMMU), T‑498/13, not published, EU:T:2014:1065, paragraph 38 and the case-law cited).
38 At no point during the administrative proceedings before EUIPO, however, did the applicant provide any other evidence to supplement the sales and turnover figures put forward in the affidavit of 22 November 2022. The additional evidence that it adduced, and on which it relies in the first part of the first plea in law, were, inter alia, cash register receipts (Annex 8 to EUIPO's file), photographs and drinks recipes (Annexes 2, 5 and 6 to EUIPO's file), screenshots/captures from inter alia the websites of the proprietor's licensee and from the proprietor's licensee's Facebook/Instagram pages (Annexes 1, 3, 4, 10, 10a, 11 and 11a to EUIPO's file) and a selection of promotional/advertising material (Annexes 12 and 12a to EUIPO's file). It is true that most of that evidence, produced by the applicant and taken into account by the Board of Appeal, does indeed show goods represented under a mark of which the applicant is the proprietor. However, even if those items of evidence could be regarded as containing indications as to the 'nature' and possibly to the 'place' of use of the contested mark, those items of evidence did not, in any event, provide any information to supplement or support the imprecise information contained in the affidavit of 22 November 2022 as to the extent of that use.
39 Contrary to what the applicant claims, in essence, the mere fact that prices for lemonades and cocktails appear on four cash register receipts and on a few photographs or screenshots is in no way sufficient to prove genuine use of the contested mark for 'non-alcoholic beverages, fruit drinks and fruit juices'. Furthermore, the evidence produced does not make up for the fact that the affidavit of 22 November 2022 does not contain any breakdown for those goods, which thus prevents the sales and turnover figures generated for each of them from being determined.
40 It follows from the foregoing that the evidence produced by the applicant, taken as a whole, is not sufficient to prove genuine use of the contested mark in the course of the relevant period as regards the 'non-alcoholic beverages, fruit drinks and fruit juices' in Class 32.
41 That conclusion cannot be called into question by the applicant's arguments.
42 First, the applicant claims that the affidavit of 5 September 2024, attached to the application as Annex A.16, again shows that the figures submitted in the affidavit of 22 November 2022 relate to 'non-alcoholic beverages, fruit drinks and fruit juices'. In that regard, however, it is sufficient to note that that affidavit cannot support the applicant's line of argument since it is inadmissible (see paragraph 14 above).
43 Second, the applicant claims, in essence, that the Board of Appeal excessively extrapolated the meaning of the judgment of 5 June 2024, Supermac's v EUIPO – McDonald's International Property (BIG MAC) (T‑58/23, not published, EU:T:2024:360), by rejecting certain items of evidence, such as screenshots, photographs or even a selection of advertising material, on the basis of their nature, without even examining their content.
44 Such an argument, however, stems from a misreading of the contested decision and can only be rejected. It is true that the Board of Appeal referred to the judgment of 5 June 2024, BIG MAC (T‑58/23, not published, EU:T:2024:360), in order to reject the abovementioned evidence and that it did not conduct in the contested decision an analysis of each of those items of evidence. However, it is apparent from a combined reading of paragraphs 44 and 45 of the contested decision that the Board of Appeal did not reject that evidence on principle and on account of its nature. It only found that it had characteristics and weaknesses comparable to those of the evidence produced in the case which gave rise to the abovementioned judgment, that is to say that it contained no details as to the extent of use of the contested mark to supplement the lack of precision of the affidavit of 22 November 2022. In other words, the Board of Appeal found that, having regard to the content of the screenshots, photographs and selections of advertising material produced by the applicant, the approach adopted in the judgment of 5 June 2024, BIG MAC (T‑58/23, not published, EU:T:2024:360), was transposable to the present case. It should be noted that that conclusion, which is consistent with that of the Cancellation Division, is correct, as is apparent from paragraph 38 above.
45 It follows from the foregoing that the first part of the first plea in law must be rejected.
– The second part of the first plea in law, alleging lack of genuine use in respect of 'services of a retailer with regard to mineral water and gaseous water and other non-alcoholic beverages' in Class 35
46 The applicant submits that the evidence produced in the course of the administrative proceedings before EUIPO, as referred to in paragraph 32 above, was sufficient to prove genuine use of the contested mark in respect of 'services of a retailer with regard to mineral water and gaseous water and other non-alcoholic beverages'. As in the first part of the first plea in law, the applicant refers to the affidavits of 22 November 2022 and 5 September 2024, the first of which is substantiated by the other evidence produced.
47 EUIPO and the intervener dispute the applicant's arguments.
48 In that regard, for the same reasons as those set out in paragraphs 33 to 40 above, which apply mutatis mutandis to the second part of the first plea in law, the applicant's line of argument cannot succeed.
49 First, it should be noted that the affidavit of 22 November 2022 does not contain any precise information as to the sales figures achieved by the contested mark in respect of 'services of a retailer with regard to mineral water and gaseous water and other non-alcoholic beverages' in Class 35, such that it is impossible to determine the sales and turnover figures generated for each of those services.
50 Second, the alleged breakdown for those various services contained in the affidavit of 5 September 2024 cannot be taken into account. It must be borne in mind that that affidavit cannot support the applicant's line of argument since it is inadmissible (see paragraphs 14 and 42 above).
51 Third, it must be pointed out, as EUIPO did, that at no point during the administrative proceedings before EUIPO did the applicant provide any other evidence to supplement the sales and turnover figures put forward in the affidavit of 22 November 2022. Even if the items of evidence could be regarded as containing indications as to the 'nature' and possibly to the 'place' of use of the contested mark in respect of the goods and services at issue, those items of evidence did not, in any event, provide any information to supplement or corroborate the imprecise information contained in the affidavit of 22 November 2022 as to the extent of that use. In that regard, it must be emphasised that the mere fact that a cash register receipt refers to the sale of a bottle of Sprite and that photographs show three cafés belonging to the applicant with refrigerators containing beverages of third parties is not sufficient to prove genuine use of the contested mark in respect of 'services of a retailer with regard to mineral water and gaseous water and other non-alcoholic beverages'. Furthermore, that does not make up for the fact that the affidavit of 22 November 2022 does not contain any breakdown for those goods and services, thereby preventing the sales and turnover figures generated for each of them from being determined.
52 It must be added that the applicant cannot validly claim that it is obvious that third-party non-alcoholic beverages were generally sold in its cafés, or indeed that the option to purchase bottled beverages to 'takeout' in cafés is so obvious that it does not need to be advertised and is taken for granted.
53 In accordance with the case-law referred to in paragraph 24 above, it is sufficient to recall that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.
54 It follows from the foregoing that the second part and, accordingly, the first plea in law in its entirety must be rejected.
The second plea in law, alleging infringement of Article 19(1) of the TRIPS Agreement
55 In support of this plea, the applicant merely claims that genuine use was proved both before the Cancellation Division and before the Board of Appeal of EUIPO. Similarly, there is sufficient evidence to prove genuine use for at least a period of three years starting on 15 July 2019, which has already been put forward and substantiated in the first plea in law. Consequently, the Cancellation Division's decision to grant the application for revocation and the Board of Appeal's decision confirming that decision infringe Article 19(1) of the TRIPS Agreement and cannot be subject to examination by the Court.
56 It must however be pointed out, as EUIPO did, that the applicant merely refers to Article 19(1) of the TRIPS Agreement without putting forward any specific argument to show how the assessment of the evidence produced could be called into question by that provision.
57 Consequently, the second plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
58 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.
59 Since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, it must be ordered, in the absence of a hearing, to bear its own costs.
60 Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the intervener, in accordance with the form of order sought by the intervener.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Lorenz Switzerland AG to bear its own costs and to pay those incurred by Lajkonik Alkohole Łukasz Bylica;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Mastroianni
Tóth
Kalėda
Delivered in open court in Luxembourg on 9 April 2025.
