Grupo Textil Brownie v EUIPO - The Guide Association (BROWNIE) (EU trade mark - Judgment) [2020] EUECJ T-598/18 (30 January 2020)

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(EU trade mark — Opposition proceedings — Application for EU word mark BROWNIE — Earlier national word marks BROWNIES, BROWNIE, Brownies and Brownie — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Genuine use of the earlier mark — Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001))

Grupo Textil Brownie, SL, established in Barcelona (Spain), represented by D. Pellisé Urquiza and J.C. Quero Navarro, lawyers,

European Union Intellectual Property Office (EUIPO), represented by M. Capostagno, A. Folliard-Monguiral and H. O’Neill, acting as Agents,

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

The Guide Association, established in London (United Kingdom), represented by T. St Quintin, Barrister, and M. Jhittay, Solicitor,

ACTION brought against the decision of the Second Board of Appeal of the EUIPO of 4 July 2018 (Case R 2680/2017-2) relating to opposition proceedings between The Guide Association and Grupo Textil Brownie,

composed of S. Frimodt Nielsen, President, V. Kreuschitz (Rapporteur) and N. Półtorak, Judges,

having regard to the application lodged at the Registry of the Court on 4 October 2018,

having regard to the response of EUIPO lodged at the Court Registry on 17 January 2019,

having regard to the response of the intervener lodged at the Court Registry on 7 January 2019,

1 On 30 April 2015, Mr Juan Morera Morral filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods and services in respect of which registration was sought are in Classes 18, 25 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 correspond, for each of those classes, to the following description:

– Class 18: ‘Trunks and travelling bags; travelling trunks; trunks; wallets; bags for campers; sport bags; bags for climbers; beach bags; net bags for shopping; wheeled shopping bags; holdalls; shopping bags; envelopes, of leather, for packaging; handbags; cases, of leather or leatherboard; pouch baby carriers; satchels; cases, of leather or leatherboard; travel cases; vanity cases, not fitted; keycases; slings for carrying infants; haversacks; valises; suitcases; attache cases; backpacks; sling bags for carrying infants; purses; chain mesh purses; briefbags; music cases; garment bags for travel’;

– Class 25: ‘Clothing, footwear, headgear; coats; layettes; bathrobes; espadrilles; sleep masks; motorists’ clothing; bibs, not of paper; swimming costumes; bandanas [neckerchiefs]; sashes for wear; headbands [clothing]; bath slippers; bath sandals; smocks; robes; boas [necklets]; teddies [undergarments]; berets; footmuffs, not electrically heated; lace boots; boots; ski boots; football boots; booties; knickers [undergarments]; babies’ pants; socks; leg warmers; footwear; athletics shoes; beach shoes; pants; shirts; short-sleeve shirts; singlets; tee-shirts; bodices; hoods [clothing]; chasubles; waistcoats; shawls; goloshes; jackets; fishing vests; heavy jackets; rainproof clothing; cyclists’ clothing; belts (money -) [clothing]; belts [clothing]; caps; slips [undergarments]; ready-made clothing; combinations [clothing]; neckties; corselets; corsets; camisoles; collars; detachable collars; aprons [clothing]; sports shoes; masquerade costumes; petticoats; fur stoles; girdles [undergarments]; skirts; skorts; scarves; topcoats; gabardines [clothing]; gymnastic shoes; swimming caps; shower caps; ski gloves; gloves [clothing]; jumpers; leggings [trousers]; underwear; liveries; sock suspenders; stocking suspenders; muffs [clothing]; maniples; mantillas; stockings; stockings (sweat-absorbent -); hosiery; mittens; miters [clothing]; ear muffs [clothing]; trousers; tights; pocket squares [clothing]; neckerchiefs; parkas; slippers; shirt fronts; pelerines; pelisses; pinafore dresses; furs [clothing]; pyjamas; beachwear; gaiters; ponchos; knitwear [clothing]; neck scarfs; pullovers; cuffs [clothing]; leather clothing; clothing of imitations of leather; clothing for gymnastics; paper clothing; outerclothing; sweat-absorbent underwear; sandals; saris; sarongs; bathing drawers; briefs; skull caps; headgear for wear; hats; top hats; hats (paper -) [clothing]; brassieres; sweaters; stocking suspenders; wimples [clothing]; togas; trouser straps; costumes; wetsuits for water-skiing; turbans; uniforms; veils [clothing]; gowns; clothing; visors [headwear]; footwear; wooden shoes; clothing and ready-made clothing’;

– Class 35: ‘Retailing and wholesaling in shops and selling via the Internet of women’s clothing and articles and accessories for wear’.

4 The trade mark application was published in Community Trade Marks Bulletin No 106/2015 of 10 June 2015.

5 On 2 September 2015, the intervener, The Guide Association, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for, in particular in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based on the series of earlier United Kingdom word marks BROWNIES, BROWNIE, Brownies and Brownie (taken together, ‘the earlier mark’), covering, inter alia, the goods and services in Classes 6, 18, 25, 26 and 41 and corresponding, for each of those classes, to the following description:

– Class 26: ‘Badges; emblems; ribbons; embroidery; patrol names, shoulder patches, all in the nature of embroidery; woggles’;

– Class 41: ‘Organisation of group activities in the education, cultural, training and entertainment fields; provision of courses of instruction and training in camping, sports, homemaking, wood-craft’.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of Regulation No 207/2009 (now Article 8(1)(a) and (b) of Regulation 2017/1001) and Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).

8 On 19 February 2016, Mr Morera Morral applied to register the transfer of his EU trade mark application to the applicant, Grupo Textil Brownie, SL in the European Union Trade Mark Register.

9 On 26 August 2016, the applicant requested, pursuant to Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), that the intervener furnish proof that the earlier trade mark had been put to genuine use.

10 On 18 January 2017, the intervener produced several documents, consisting of an affirmed statement by its Corporate Resources Director (‘the affirmed statement’) and five annexes, as proof of genuine use of the earlier mark (‘the second series of documents’).

11 On 23 October 2017, the Opposition Division partially upheld the opposition in respect of the goods and services referred to in paragraph 3 above and rejected it as to the remainder. In particular, it considered that the intervener had furnished proof of genuine use of the earlier trade mark for the goods and services referred to in paragraph 6 above. In that regard, it relied not only on the documents produced by the intervener on 18 January 2017, expressly as proof of genuine use of the earlier mark (see paragraph 10 above), but also on documents, consisting of six annexes, which the intervener had already produced before EUIPO on 14 April 2016, together with the facts, evidence and observations in support of its opposition (‘the first series of documents’). In addition, it found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the marks at issue with regard to the goods and services referred to in paragraph 3 above which were identical or similar to those in respect of which the intervener had furnished proof of genuine use of the earlier mark. However, where there was no similarity between those goods and services covered by the earlier mark and those in respect of which the applicant had sought to register the trade mark applied for, there was no link between the marks at issue with regard to the latter goods and services, and the ground of opposition laid down in Article 8(5) of Regulation No 207/2009 therefore had to be rejected.

12 On 18 December 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

13 By decision of 4 July 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, first, it found that the intervener had furnished proof of genuine use of the earlier trade mark in respect of the goods and services referred to in paragraph 6 above (paragraphs 16 to 52 of the contested decision). Secondly, it adopted the grounds stated in the Opposition Division’s decision to the effect that the opposition had to be upheld in respect of the goods and services referred to in paragraph 3 above (paragraph 53 of the contested decision).

17 As a preliminary remark, it should be noted that, in the present case, the EU trade mark application was filed with EUIPO on 30 April 2015 (see paragraph 1 above). It was therefore filed, first, before the date of entry into force of Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), namely 23 March 2016 (see the first paragraph of Article 4 of Regulation 2015/2424) and, secondly, before the date of applicability of Regulation 2017/1001, namely 1 October 2017 (see second paragraph of Article 212 of Regulation 2017/1001).

18 In those circumstances, it is clear that this dispute continues to be governed by Regulation No 207/2009 in the version applicable prior to its amendment by Regulation 2015/2424, at least as regards provisions that are not strictly procedural (see, by analogy, orders of 30 May 2013, Shah and Shah v Three‑N‑Products, C‑14/12 P, not published, EU:C:2013:349, paragraph 2; of 13 June 2013, DMK Deutsches Milchkontor v OHIM, C‑346/12 P, not published, EU:C:2013:397, paragraph 2 and the case-law cited; and judgment of 2 March 2017, Panrico v EUIPO, C‑655/15 P, not published, EU:C:2017:155, paragraph 2).

19 Furthermore, it has previously been held that, in order to assess whether there exists a genuine relative ground for opposition, it is appropriate to look at the time of filing of the application for an EU trade mark against which a notice of opposition has been filed on the basis of an earlier trade mark. It is therefore necessary to examine the various aspects of the earlier mark as they were at the time of filing of the application for an EU trade mark which is opposed by the earlier mark (judgment of 17 October 2018, Golden Balls v EUIPO — Les Éditions P. Amaury (GOLDEN BALLS), T‑8/17, not published, EU:T:2018:692, paragraph 76). The fact that the earlier trade mark could lose the status of a trade mark registered in a Member State, as referred to in Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001) and Article 42(3) of that regulation, at a time after the filing of the application for registration of the EU trade mark against which a notice of opposition has been filed on the basis of that earlier mark, in particular following the possible withdrawal of the Member State concerned from the European Union in accordance with Article 50 TEU without specific provision having been made in that respect in any agreement concluded under Article 50(2) TEU, is therefore, in principle, irrelevant to the outcome of the opposition. Moreover, the existence of an interest in bringing proceedings before the General Court against a decision of the Boards of Appeal of EUIPO allowing such an opposition based on such an earlier national mark — or upholding a decision of the Opposition Division in that sense — is not, in principle, affected (see, by analogy, judgment of 8 October 2014, Fuchs v OHIM — Les Complices (Star within a circle), T‑342/12, EU:T:2014:858, paragraphs 23 to 29).

20 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1) of Regulation No 207/2009. In that regard, it limits itself to arguing that it was not necessary to address the question of the existence of a likelihood of confusion between the marks at issue, since genuine use of the earlier mark has not been proved by the intervener. As EUIPO and, in essence, the intervener, rightly point out, the applicant therefore does not put forward any specific arguments which are capable of supporting a plea alleging infringement of Article 8(1) of Regulation No 207/2009.

21 However, as EUIPO and, in essence, the intervener also acknowledge, it is clear from the application as a whole that the applicant criticises the Board of Appeal’s assessment that the intervener had indeed demonstrated that it had made genuine use of the earlier mark in respect of the goods and services referred to in paragraph 6 above. The fact that EUIPO and the intervener defended the contested decision in that regard in particular demonstrates, in addition, that, in the light of the application, they were in a position to understand that the applicant was claiming that the Board of Appeal erred in its assessment of the genuine use of the earlier mark. In those circumstances, it would be excessive to require, as proposed by the intervener, that the applicant expressly cite the specific provisions that are likely to be infringed by such an error.

22 In the light of the foregoing considerations, the applicant must be regarded as raising a single plea in law in support of its action, alleging, in essence, infringement of Article 42(2) and (3) of Regulation No 207/2009, by which it claims that the Board of Appeal wrongly acknowledged that the intervener had proved genuine use of the earlier mark in respect of the goods and services referred to in paragraph 6 above. At the hearing, the applicant confirmed that the application should be understood to that effect.

23 In support of its single plea in law, the applicant submits that the evidence of use submitted by the intervener to EUIPO was insufficient to establish genuine use of the earlier mark. In that regard, it puts forward, in essence, five arguments.

24 In the first place, most of the evidence produced by the intervener does not fall within the relevant period.

25 In the second place, it has not been demonstrated that the catalogues produced by the intervener were actually distributed to the relevant public in sufficient number. Moreover, it has not been demonstrated that the catalogue pages produced actually correspond to the covers of those catalogues, since the latter were not produced in full. Nor does the file contain any independent evidence capable of confirming that the dates indicated on the catalogues produced are authentic.

26 In the third place, some of the evidence relates to a sign that differs from the earlier mark to such an extent as to alter its distinctive character. In addition, its use is for decorative purposes, not trade mark purposes.

27 In the fourth place, the affirmed statement is neither objective nor supported by corroborating evidence. In particular, the only invoice produced in support of the affirmed statement is addressed to The Guide Association Scotland, which is a member of the intervener. Thus, that invoice relates to an internal use of the earlier mark and not an outward public use. Moreover, the product codes on that invoice are not the same as those given in the catalogues produced by the intervener. It is therefore not possible to ascertain whether they are the same products.

28 In the fifth place, since the evidence adduced by the intervener is not capable of proving genuine use of the earlier mark during the relevant period, there is no need to make an overall assessment of that evidence in this case.

29 EUIPO and the intervener contest the applicant’s arguments and consider that the Board of Appeal was entitled to conclude, after an overall assessment of the evidence submitted by the intervener, that that evidence demonstrated that the intervener had made genuine use of the earlier mark during the relevant period.

30 According to settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of that regulation (now recital 24 of Regulation 2017/1001) and of Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now 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)), that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a sound economic reason for the lack of genuine use of the earlier mark resulting from an actual function of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM — Wedi & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).

31 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee that the goods or services for which it is registered have the same origin, 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 (see, 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 on the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39; see also, to that effect and by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).

32 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly 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 (judgment of 8 July 2004, 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).

33 Concerning the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).

34 In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).

35 It is in the light of those principles that the five specific arguments put forward by the applicant must be analysed (see paragraphs 24 to 28 above).

36 The applicant submits, in the first place, that most of the evidence produced by the intervener does not fall within the relevant period.

37 According to Article 42(2) and (3) of Regulation No 207/2009, in the version applicable ratione temporis in the present case, namely prior to the amendments made by Regulation 2015/2424 (see paragraph 18 above), the relevant period in respect of which the proprietor of an earlier national trade mark who has given notice of opposition to registration of an EU trade mark must furnish proof that the earlier national mark has been put to genuine use in the Member State where it is protected is five years preceding the date of publication of the EU trade mark application. As the EU trade mark application was published, in the present case, on 10 June 2015 (see paragraph 4 above), the relevant period is from 10 June 2010 to 9 June 2015, as the Board of Appeal correctly stated in paragraph 29 of the contested decision.

38 In so far as the applicant claims that some of the evidence does not fall within the relevant period, it should be noted that it clearly follows from Article 42(2) and (3) of Regulation No 207/2009 that it is only genuine use that must occur during the relevant period. Provided that evidence relied on to demonstrate genuine use relates to use made during the relevant period, it cannot be required that that evidence was itself established during that relevant period. Consequently, the applicant’s argument that some of the evidence does not fall within the relevant period solely because it was established outside that period is not, as such, capable of repudiating its probative value in the light of Article 42(2) and (3) of Regulation No 207/2009.

39 As regards the first series of documents, the Board of Appeal noted, in paragraph 33 of the contested decision, that Annex 2 contains a printout of a page from the intervener’s website on 11 April 2016 referring to a campaign that ran between January and August 2014 called ‘The Big Brownie Birthday’ and Annex 5 contains two articles, ‘South East Brownies celebrate 100th birthday’, dated 18 January 2014, and ‘North West Brownies bid for sleepover world record’, dated 28 September 2014. As the Board of Appeal rightly found, in essence, those documents in fact relate to events that took place during the relevant period, which the applicant also acknowledges. With regard to those two annexes, in the light of what has been stated in paragraph 38 above, the applicant’s arguments therefore have no factual basis.

40 As regards Annex 4 to the first series of documents, the Board of Appeal noted, in paragraph 38 of the contested decision, that it contains, inter alia, a printout made on 13 April 2016 of a page from an online shop entitled ‘Guides, Brownies & Rainbows’ on which various articles of clothing forming part of the ‘Brownies’ official uniform are listed. The Board of Appeal also noted that that annex contains other similar printouts from several online shops, made on 13 April 2016 and 14 April 2016, showing bags, mugs and articles of clothing forming part of the ‘Brownies’ uniform.

41 In that regard, the Board of Appeal, in essence, was entitled to point out, in paragraph 39 of the contested decision, that evidence relating to use made before or after the relevant period is not, in principle, devoid of relevance. Indeed, it is clear from the case-law that the consideration of such evidence relating to use made before or after the relevant period is possible, in so far as it makes it possible to confirm or better assess the extent to which the earlier mark was used and the actual intentions of the proprietor during that period. However, such evidence can be taken into consideration only if other evidence relating to the relevant period has been produced (see, to that effect, judgments of 27 September 2012, El Corte Inglés v OHIM — Pucci International (PUCCI), T‑39/10, not published, EU:T:2012:502, paragraphs 25 and 26; of 16 June 2015, Polytetra v OHIM — EI du Pont de Nemours (POLYTETRAFLON), T‑660/11, EU:T:2015:387, paragraph 54; and of 8 April 2016, Frinsa del Noroeste v EUIPO — Frisa Frigorífico Rio Doce (FRISA), T‑638/14, not published, EU:T:2016:199, paragraphs 38 and 39).

42 Consequently, the Board of Appeal was fully entitled to consider, in paragraph 40 of the contested decision, that, although those printouts of pages from online shops in Annex 4 to the first series of documents are dated after the relevant period, they present additional supporting information regarding use of the earlier mark during the relevant period because the use they refer to is close in time to that period and they provide evidence of continuity of use over time. The applicant has not put forward any specific argument capable of calling into question the taking into account of those printouts of webpages as evidence by which the extent to which the earlier mark was used and the actual intentions of the proprietor during that period may be confirmed or better assessed. The applicant merely argues that the printouts of those webpages do not demonstrate that the goods at issue were actually offered for sale in online shops during the relevant period, which the Board of Appeal did not, in any event, claim.

43 Furthermore, the Board of Appeal rightly noted, in paragraph 40 of the contested decision, that the printout of a page from an online shop showing a t-shirt with the word element ‘brownies’ printed on it in a stylised font expressly states that the product had been sold there since 4 March 2015 and, therefore, since a date within the relevant period. To that extent, the applicant is therefore incorrect to claim in general that those webpage printouts do not prove that the public were able to purchase the products in question during the relevant period.

44 As regards, finally, the other documents forming part of the first series of documents, it is sufficient to note that the Board of Appeal did not rely on them, so that the applicant’s criticisms concerning the alleged taking into account of those documents are, in any event, ineffective.

45 As regards the second series of documents, it is apparent from paragraphs 34 to 37 of the contested decision that the Board of Appeal took into account the main document, namely the affirmed statement, in the form of a ‘witness statement’ of 12 January 2017, as well as Annexes 1 and 2 to that statement, namely, first, copies of the cover pages and certain pages of the contents of the Guiding Essentials catalogues for the years 2010/11, 2011/12, 2012/13, 2013/14 and 2014/15 (Annex 1) and, secondly, an invoice dated 6 October 2014 issued by Guide Association Trading Services Ltd and addressed to The Guide Association Scotland (Annex 2).

46 As the applicant itself accepts, the affirmed statement refers to facts that occurred during the relevant period. In the light of the findings in paragraph 38 above, it cannot be ruled out that that document has probative value because of its date and it should therefore be taken into account. As regards Annexes 1 and 2 to the affirmed statement, it must be noted that they concern use made during the relevant period, which the applicant does not dispute moreover.

47 As regards the other documents forming part of the second series of documents, it is sufficient to note again that the Board of Appeal did not rely on those documents, so that any criticism by the applicant concerning the fact that they were taken into account is, in any event, ineffective.

48 The applicant’s argument that the Board of Appeal took into account evidence that does not fall within the relevant period must therefore be rejected.

49 In the second place, the applicant submits that it has not been demonstrated that the catalogues were in fact distributed in sufficient number by the intervener to the relevant public. Moreover, according to the applicant, it has not been demonstrated that the pages produced actually correspond to the covers of those catalogues, since the catalogues were not produced in full. Nor does the file contain any independent evidence capable of confirming that the dates indicated on the catalogues are authentic.

50 In that regard, it is true that it has previously been held that it is, in principle, necessary to demonstrate that the advertising material referring to the earlier mark, in respect of which genuine use must be proved, has been distributed to a sufficient degree to the relevant public in order to establish the genuine nature of the use of the trade mark at issue (see, to that effect, judgments of 8 March 2012, Arrieta D. Gross v OHIM — International Biocentric Foundation and Others (BIODANZA), T‑298/10, not published, EU:T:2012:113, paragraph 68; of 2 February 2017, Marcas Costa Brava v EUIPO — Excellent Brands JMI (Cremcaffé by Julius Meinl), T‑686/15, not published, EU:T:2017:53, paragraph 61; and of 7 June 2018, Sipral World v EUIPO — La Dolfina (DOLFINA), T‑882/16, not published, EU:T:2018:336, paragraph 60).

51 However, it is also apparent from the case-law referred to in paragraphs 32 and 34 above that, in the assessment of the evidence of genuine use of a mark, each piece of evidence is not to be analysed separately, but together, in order to determine the most likely and coherent significance. Thus, even if the probative value of an item of evidence is limited to the extent that, individually, it does not show with certainty whether, and how, the goods concerned were placed on the market, and that item of evidence is therefore not in itself decisive, it may nevertheless be taken into account in the overall assessment as to whether the use of that mark is genuine. That is the case, for example, when that item of evidence is accompanied by other evidence (judgments of 9 December 2014, Inter-Union Technohandel v OHIM — Gumersport Mediterranea de Distribuciones (PROFLEX), T‑278/12, EU:T:2014:1045, paragraphs 64 to 69, and of 7 September 2016, Victor International v EUIPO — Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 74).

52 In the present case, as is clear in particular from paragraphs 39, 40, 43 and 45 above, the catalogues were one of several items of evidence presented by the intervener in order to prove genuine use. Consequently, they could, in the present case, be legitimately taken into account by the Board of Appeal in the overall assessment of the evidence of genuine use of the earlier mark produced by the intervener.

53 As regards the applicant’s other criticisms of the catalogues, it should be noted that it is clear from the case-law that, in order to assess the probative value of a document, it is necessary to check whether the information it contains is plausible and accurate. Account must be taken, inter alia, of the origin of the document, the circumstances in which it was prepared, the addressee and whether it seems from the content to be sound and reliable (judgments of 7 June 2005, Lidl Stiftung v OHIM — REWE-Zentral (Salvita), T‑303/03, EU:T:2005:200, paragraph 42; of 23 September 2009, Cohausz v OHIM — Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 49; and of 13 January 2011, Park v OHIM — Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 64).

54 In that regard, the Board of Appeal was right to consider, in paragraph 37 of the contested decision, that the overall style of the catalogue pages produced by the intervener coincides with the overall style of the catalogue covers produced by the intervener. It is therefore, a priori, plausible that the catalogue pages produced are in fact extracts from the content of the catalogues from which the cover page has been produced. In those circumstances, it is, in principle, the applicant’s responsibility to put forward substantiated arguments that could undermine that conclusion as regards plausibility. However, in the present case, the applicant merely, in essence, makes assumptions without any specific evidence to support its argument.

55 First, the applicant submits that there is no proof that the covers match the pages produced since the catalogues are incomplete and there is no evidence that the pages correspond to the years indicated on the covers. By that vague argument, however, the applicant does not succeed in making it implausible that the catalogue pages produced are actually extracts from the content of the catalogues for the years indicated on the cover pages produced.

56 Secondly, the applicant submits that the extracts from the catalogues indicate that the products mentioned therein can be purchased only in three different ways: on the intervener’s website, in its shops or by telephone. The fact, put forward by the applicant, that the products in question were also sold by online shops other than that of the intervener (see paragraphs 40 to 43 above) therefore contradicts the claim that the catalogues are authentic or, conversely, the catalogues contradict the claim that the products in question were also sold by online shops other than that of the intervener. However, in the light of the extracts from the catalogues produced by the intervener, it is clear that there is no indication that the sales channels referred to by the applicant are the only sources from which it is possible to obtain articles bearing the earlier mark. The wording in the catalogues produced does not preclude retailers other than the intervener from also selling such products. As EUIPO rightly observes, it is not unusual for such other retailers not to be mentioned in the intervener’s catalogues. When questioned in that regard at the hearing, the applicant was unable to identify precise wording in the catalogues which would indicate unequivocally that the sales channels referred to in the catalogues were the only sources from which items bearing the earlier mark could be obtained. The applicant’s argument therefore has no factual basis, with the result that it cannot provide support for the contention that it is implausible that the catalogue pages produced are actually extracts from the content of the catalogues from which the cover page was produced.

57 Thirdly, the applicant claims that the product codes in the catalogues do not correspond to those given in the invoice produced as Annex 1 to the affirmed statement produced in the second series of documents. In that regard, it is clear that at least some of the product codes included in that invoice correspond to those in the 2014/2015 catalogue, such as product codes 3141 to 3146 for short sleeve t‑shirts, product codes 3148 to 3150 for long sleeve t-shirts, product codes 3156 to 3158 for hooded zip jackets, product code 3169 for trousers, product code 2183 for hairbands and product code 2187 for a purse. When questioned on that point at the hearing, the applicant was also unable to identify the specific product codes in the catalogues produced by the intervener that do not correspond to those referred to in the abovementioned invoice. There is therefore no factual basis for the applicant’s argument nor does it deprive of any plausibility the claim that the catalogue pages produced are actually extracts from the content of the catalogues from which the cover page was produced.

59 In the third place, according to the applicant, some of the evidence concerns a sign that differs from the earlier mark to such an extent as to alter its distinctive character. In addition, its use is for decorative purposes and not as a trade mark.

60 In that regard, first, it should be noted that, although point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 in the version applicable ratione temporis in the present case, namely prior to the amendments made by Regulation 2015/2424 (see paragraph 18 above) (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001), refers only to the use of an EU trade mark, it must apply by analogy to the use of a national mark, as Article 42(3) of that regulation provides that paragraph 2 of that article is to apply to earlier national trade marks referred to in Article 8(2)(a) of that regulation, ‘by substituting use in the Member State in which the earlier national trade mark is protected for use in the [Union]’ (judgment of 14 July 2014, Vila Vita Hotel und Touristik v OHIM — Viavita (VIAVITA), T‑204/12, not published, EU:T:2014:646, paragraph 24).

61 Secondly, as regards the scope of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 and of Article 42(2) and (3) of that regulation, it must be noted that, under the combined application of those provisions, proof of genuine use of an earlier national or EU trade mark which forms the basis of a notice of opposition to an EU trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (see judgment of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited; see also, to that effect, judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 21).

62 The purpose of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 is to avoid imposing strict conformity between the form of the trade mark used and the form in which the mark was registered, and to allow its proprietor, in the commercial exploitation of the sign, to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible respects, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgment of 23 February 2006, Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 50).

63 In order to find that the distinctive character of the trade mark as registered has altered, it is necessary to carry out an assessment of the distinctive and dominant character of the elements added, on the basis of the intrinsic qualities of each of those elements, as well as the relative position of the different elements within the arrangement of the mark (see judgment of 10 June 2010, Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 31 and the case-law cited).

64 It is therefore necessary to examine whether, in the present case, the differences between the sign in its registered form and the sign in its forms used on the market are such as to alter the distinctive character of the earlier mark in the form in which it was registered.

65 In that regard, it should be noted (see paragraph 6 above) that the earlier mark, as registered, is a series of word marks including the word sign Brownies. It is apparent from paragraph 48 of the contested decision and from the file in the proceedings before EUIPO, sent to the Court, that part of the evidence of genuine use of the earlier mark provided by the intervener concerns the use of that mark in the following form, sometimes represented in an uneven border:

66 As the Board of Appeal correctly found in paragraph 48 of the contested decision, the word ‘brownies’ is clearly legible in the form in which that earlier mark was used. In paragraph 48, the Board of Appeal was also fully entitled to note that it is apparent from the case-law that, where a mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer would more easily refer to the goods in question by quoting the name of the mark than by describing the figurative element (see judgment of 22 May 2008, NewSoft Technology v OHIM — Soft (Presto ! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited). Similarly, the Board of Appeal cannot be criticised for taking the view, in paragraph 49 of the contested decision, that the figurative elements of the mark reproduced in paragraph 65 above do not play any significant role in the overall impression conveyed by the sign and have no inherent semantic content of their own which would lend the mark distinctive character or designate the goods concerned. Those figurative elements are limited to the presentation of the word ‘brownies’ in a yellow stylised font and the dot on the letter ‘i’ in the form of a flower and, sometimes, an uneven border.

67 Consequently, the Board of Appeal was correct to find, in essence, in paragraph 50 of the contested decision, that the differences between the mark used in the form referred to in paragraph 65 above and the earlier mark in the form in which it was registered are not capable of altering the distinctive character of the latter. Under Article 15(1)(a) of Regulation No 207/2009, the use of the mark in that first form must therefore be considered as use of the earlier mark.

68 In that context, it is irrelevant that some of the products contained in the catalogues produced by the intervener contain words represented in a stylised form which is essentially identical to that referred to in paragraph 65 above. That does not change the fact that the word ‘brownies’ remains the distinctive element in the sign thus stylised and that, consequently, the use of the mark in that form is to be considered use of the earlier mark as registered.

69 Finally, in so far as the applicant submits that the use of the earlier sign in the stylised form referred to in paragraph 65 above appears to be for decorative purposes and not as a trade mark, it should be recalled that the essential function of a trade mark is to guarantee that the goods or services for which it was registered have the same origin (see paragraph 31 above). Since at least the word element ‘brownie’ in the stylised mark in the form referred to in paragraph 65 above has a certain distinctive character, it is clear that the earlier mark, as stylised, is in principle capable of fulfilling that essential function. The fact that, in view of its particular stylisation, a figurative mark, while having a certain distinctive character, may also be used to decorate the product bearing it does not affect the ability of such a figurative mark to fulfil the essential function of a mark. That is especially true of the clothing sector, in the broad sense, in which it is not unusual for the products concerned to bear a stylised form of a mark. Consequently, even if, in the present case, the affixing of the mark, as stylised, may also be used to decorate the goods concerned, in the light of its distinctive character, it nevertheless at the same time fulfils the essential function of a trade mark.

71 In the fourth place, the applicant submits that the affirmed statement is neither objective nor supported by corroborative evidence. In particular, the only invoice produced in support of the affirmed statement is addressed to The Guide Association Scotland, which is a member of the intervener. Thus, that invoice relates to an internal use of the earlier mark and not an outward public use. Moreover, the product codes on that invoice are not the same as those given in the catalogues produced by the intervener. It is therefore not be possible to know whether they are the same products.

72 As regards the affirmed statement, it should be noted that it follows from Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001) that statements in writing, sworn or affirmed or having a similar effect under the law of the State in which they are drawn up, form part of the investigative measures that EUIPO may undertake.

73 In the present case, the affirmed statement was made in the form of a ‘witness statement’. Consequently, it is in the form described by Rule 32.4 (1) of the Civil Procedure Rules, applicable in England and Wales, according to which ‘a witness statement is a written statement signed by a person which contains the evidence which that person would be allowed to give orally’.

74 It is also appropriate to recall the case-law according to which, in order to assess the probative value of a document, it is necessary to check whether the information it contains is plausible and accurate. Account must be taken, inter alia, of the origin of the document, the circumstances in which it was prepared, the addressee and whether it seems from the content to be sound and reliable (see paragraph 53 above).

75 In so far as the applicant invokes EUIPO’s examination guidelines, first, it must be noted that they are not binding legal acts for the purpose of interpreting provisions of EU law (see judgment of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 49 and the case-law cited). Secondly, it must be noted that, in paragraph 35 of the contested decision, the Board of Appeal stated that the probative value of the statements made by the interested parties themselves or their employees are generally given less weight than independent evidence, which corresponds to the passage of EUIPO’s examination guidelines cited by the applicant. That specific argument of the applicant is therefore, in any event, ineffective.

76 As the Board of Appeal, in paragraph 35 of the contested decision, and the applicant were fully entitled to note, in essence, it follows from the case-law that, where, as in the present case, a statement has been produced for the purposes of Article 78(1)(f) of Regulation No 207/2009 by one of the staff members responsible for the party’s management functions to demonstrate genuine use of the earlier trade mark, probative value can be attributed to that statement only if it is supported by other evidence (see judgment of 9 December 2014, PROFLEX, T‑278/12, EU:T:2014:1045, paragraph 51 and the case-law cited).

77 In the present case, the Board of Appeal noted, in paragraph 36 of the contested decision, that the affirmed statement relates to the annual turnover for clothing, bags, badges, stationery, mugs and keyrings sold on the United Kingdom market under the earlier mark between 2009 and 2016. The Board of Appeal observed that, according to the affirmed statement, the quantities sold were relatively large. It is further apparent from the broad logic of the contested decision that the Board of Appeal considered that the evidence it had subsequently assessed, namely, first, the catalogues produced as Annex 1 to the affirmed statement (paragraph 37 of the contested decision; see also paragraphs 50 to 57 above), secondly, the printouts of pages of several online shops in Annex 4 to the first series of documents (paragraphs 38 to 40 of the contested decision; see also paragraphs 40 to 43 above) and, thirdly, the invoice produced as Annex 2 to the affirmed statement (paragraphs 41 to 43 of the contested decision), support the information contained in the affirmed statement.

78 As regards that invoice in particular, the applicant submits that it cannot be taken into account since it concerns an internal use of the earlier mark and not an outward public use.

79 In that respect, EUIPO and the intervener rightly note that, in its observations of 29 June 2017 submitted in the proceedings before the Opposition Division, the intervener submitted evidence from which it is apparent that the recipient of the invoice in question, The Guide Association Scotland (also known as Girlguiding Scotland), is an independent Scottish charity with its own statutes and board of trustees.

80 It is true that the applicant is entitled to claim that the addressee of the invoice belongs to the global Girlguiding UK network, which, moreover, EUIPO and the intervener do not deny. However, the applicant’s argument that the addressee of the invoice in question is a member association of the intervener on the ground that the latter is a broader association and that it is one and the same entity is contradicted by the evidence referred to in paragraph 79 above, submitted by the intervener during the proceedings before EUIPO. The fact that two charities which are legally independent of each other collaborate in a network to which they belong does not mean that they are in fact one and the same legal entity, as the applicant claims.

81 That is all the more true as regards the invoice in question, since it does not come from the intervener itself, but from its commercial branch, namely the separate company Guide Association Trading Services.

82 In that context, it should be noted that, where the proprietor of a trade mark maintains that the use of that mark by a third party constitutes genuine use, he is claiming, by implication, that that use was made with his consent, in accordance with Article 15(2) of Regulation No 207/2009 (see judgment of 13 January 2011, PINE TREE, T‑28/09, not published, EU:T:2011:7, paragraph 62 and the case-law cited).

83 It follows that, contrary to what the applicant claims, the use of the earlier mark supported by the invoice in question cannot be regarded as having originated from the undertaking which owns the earlier mark or in a distribution network owned or controlled by it.

84 Thus, the Board of Appeal made no errors of assessment when it stated, in essence, in paragraphs 41 and 42 of the contested decision, that the invoice concerns a public and outward use of the earlier mark and that it was therefore necessary to take it into account when assessing whether the intervener had actually demonstrated that it had made genuine use of the earlier mark.

85 Finally, with regard to the applicant’s argument that the product codes on the invoice in question are not the same as those given in the catalogues produced by the intervener, reference should be made to the considerations set out in paragraph 57 above, from which it follows that that argument is unfounded.

86 In the light of the foregoing, it must be concluded that the Board of Appeal was fully entitled to consider that the catalogues produced as Annex 1 to the affirmed statement, the printouts of pages from several online shops contained in Annex 4 to the first series of documents and the invoice produced as Annex 2 to the affirmed statement constitute evidence supporting the affirmed statement and that it was therefore necessary for that statement to be given probative value.

88 In the fifth place, according to the applicant, since the evidence produced by the intervener is not capable of proving genuine use of the earlier mark during the relevant period, there is no need to make an overall assessment of that evidence in the present case.

89 In view of the Court’s considerations set out in paragraphs 36 to 87 above with regard to the applicant’s first to fourth arguments, it is clear that, contrary to what the applicant claims, the intervener did indeed submit evidence relevant to the genuine use of the earlier mark during the relevant period and that the Board of Appeal was justified in taking it into account for the purposes of its overall assessment. It follows that the applicant’s fifth argument must be rejected.

90 In any event, the Board of Appeal’s overall assessment of the evidence in paragraphs 51 and 52 of the contested decision is not vitiated by any error of assessment. The Board of Appeal considered, in essence, that the affirmed statement was supported by various catalogues, an invoice, pages from online shops, articles and publications, and that that evidence established that the intervener had made genuine use of the earlier mark for the goods and services referred to in paragraph 6 above. As EUIPO rightly points out, the intervener’s products bearing the earlier trade mark are intended primarily for a specific niche audience, namely girls aged 7 to 10, members of Girlguiding UK, who number approximately 200 000 according to the data provided in the affirmed statement. In those circumstances, the turnover as evidenced by the affirmed statement must be regarded as relatively high for the sector concerned. In view also of the fact that those turnover figures are essentially consistent throughout the relevant period, the Board of Appeal was fully entitled to conclude that, overall, the intervener had demonstrated that it had made genuine use of the earlier trade mark.

91 None of the arguments put forward in the application in support of the applicant’s single plea in law are therefore well founded.

92 In so far as the applicant also argued at the hearing that the contested decision was not in accordance with the decision-making practice of the Boards of Appeal of EUIPO, it should be noted that the applicant did not present such an argument in the application, which it acknowledged at the hearing.

93 That said, it is clear from the case-law that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of ‘good administration’. In the light of those two principles, EUIPO must, when assessing evidence seeking to demonstrate genuine use of an earlier mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. The way in which the principles of equal treatment and ‘good administration’ are applied must be consistent with respect for legality. Consequently, a person who argues that there has been no genuine use of an earlier trade mark in support of an opposition cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see, by analogy, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76 and the case-law cited).

94 In the present case, it has been found that, contrary to what may have been the case in respect of certain evidence produced before EUIPO in other proceedings in order to demonstrate genuine use of an earlier trade mark, the Board of Appeal was justified in considering that the evidence produced by the intervener was sufficient to establish that it had made genuine use of the earlier mark.

95 In those circumstances, the applicant cannot, in any event, properly rely on previous EUIPO decisions to overturn that conclusion and it is therefore not necessary to rule on the admissibility of that argument, which was presented for the first time at the hearing.

96 Consequently, the single plea in law raised by the applicant and its claims, both for annulment and for alteration, must be dismissed, as must the action in its entirety.

97 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) >> Grupo Textil Brownie v EUIPO - The Guide Association (BROWNIE) (EU trade mark - Judgment) [2020] EUECJ T-598/18 (30 January 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T59818.html Cite as: [2020] EUECJ T-598/18, EU:T:2020:22, ECLI:EU:T:2020:22, [2020] ETMR 25

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