Tertianum v EUIPO - DPF (TERTIANUM) (EU trade mark - Judgment) [2024] EUECJ T-73/23 (04 September 2024)

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( EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark TERTIANUM – International registration of the earlier figurative mark Tertianum WOHNEN UND LEBEN IM DRITTEN ALTER – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – No 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) – Nature of use – Proof of genuine use )

Tertianum AG, established in Dübendorf (Switzerland), represented by S. Fröhlich and M. Hartmann, lawyers,

European Union Intellectual Property Office (EUIPO), represented by A. Söder, J. Ivanauskas and V. Ruzek, acting as Agents,

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

DPF AG, established in Berlin (Germany), represented by A. Nordemann, lawyer,

composed of D. Spielmann, President, M. Brkan and I. Gâlea (Rapporteur), Judges,

1 By its action under Article 263 TFEU, the applicant, Tertianum AG, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 November 2022 (Case R 1706/2021-4) (‘the contested decision’).

2 On 11 August 2016, the intervener, DPF AG, claiming priority of German mark No 302015053585 filed on 21 September 2015, submitted an application for international registration designating the European Union in respect of the following figurative mark:

3 The services in respect of which registration was sought are in Classes 35, 36, 41, 43 and 44 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 35: ‘Business management, business consulting and administration, personnel consultancy, advertising and marketing’;

– Class 36: ‘Real estate services, real estate and property management, rental of real estate, rental of accommodation [apartments], building management and rental services’;

– Class 41: ‘Services regarding recreational activities; education and lessons, organisation and conducting of training courses, congresses, seminars, series of lectures and advance trainings’;

– Class 43: ‘Services of retirement homes; accommodation and catering for guests; catering for guests in restaurants; hotel services including rental of rooms for conventions, events and conferences’;

– Class 44: ‘Medical nursing services; outpatient and inpatient nursing services; services of nursing home; medical nursing; medical care; services of a paramedic; nutrition counselling; health and beauty care services; consultation of medical health care regarding body and beauty care; health care associated with relaxation therapy; services of salons for beauty care; services of applying means for personal hygiene and beauty care on the face and body; services of a medical health resort’.

4 On 13 December 2016, the applicant filed a notice of opposition against the mark applied for in respect of all of the services referred to in paragraph 3 above.

5 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), now Article 8(1)(b) 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).

6 The opposition was based on international registration No 646578 designating Germany, filed and registered on 10 November 1995 and renewed until 11 November 2025 by the applicant’s predecessor in title, for the figurative mark reproduced below:

7 The earlier mark covers services in Classes 35 and 42 and corresponds, for each of those classes, to the following description:

– Class 35: ‘Business and commercial management of establishments, namely management of institutions in the health and care sectors, in particular for retirement homes’;

– Class 42: ‘Consultations, promotion and planning of establishments, namely institutions in the health and care sectors, in particular for retirement homes’.

8 Following a request made by the intervener, EUIPO invited the applicant to provide proof that the earlier mark relied on in support of the opposition had been put to genuine use. The applicant replied to that request within the prescribed period.

9 On 28 September 2021, the Opposition Division rejected the opposition on the ground that the applicant had not provided sufficient evidence to prove genuine use of the earlier mark, in the absence, in particular, of proof of use for the services in respect of which the earlier mark had been registered. The Opposition Division took the view that the evidence submitted showed that the mark had been used, essentially, for the operation of retirement home services ‘in general terms’, but that those services did not fall within any of the categories for which the earlier mark had been registered.

10 On 4 October 2021, the applicant filed a notice of appeal against the decision of the Opposition Division.

11 By the contested decision, the Board of Appeal dismissed the appeal. It considered that the essential question was whether or not the use of the earlier mark in respect of services revolving around retirement homes and provided to the residents of those establishments, as registered by the applicant’s predecessor in title, constitutes use of that mark in respect of the Class 35 services covered by it, that is, ‘business and commercial management of establishments, namely management of institutions in the health and care sectors, in particular for retirement homes’. The Board of Appeal stated that the list of services was to be interpreted in particular on the basis of the literal meaning the terms have under Article 33(2) and (5) of Regulation 2017/1001. It found that none of the documents filed by the applicant provided any information, let alone proof, regarding the nature of use of the earlier mark for the services in Classes 35 and 42, but rather in respect of services which are not covered by the specification of the earlier mark.

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

15 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 47(2) and (3) of Regulation 2017/1001, read in conjunction with Article 8(2)(a)(iii) thereof.

16 As a preliminary point, it should be noted that reference is made in the contested decision and in the written pleadings of the applicant and of the intervener to the provisions of Regulation 2017/1001. However, given the date on which the application for registration at issue was filed, namely 11 August 2016, 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 No 207/2009 (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). In so far as Article 47(2) and (3) of Regulation 2017/1001 corresponds to Article 42(2) and (3) of Regulation No 207/2009, the references made by the parties and the contested decision to the former article must be construed as referring to the latter article.

17 According to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited). Under Article 82(2)(d) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430, Article 10 of that regulation, relating to proof of use, is not to apply to requests for proof of use made before 1 October 2017. In the present case, since the request for proof of use was made on 24 March 2020, Article 10 of Delegated Regulation 2018/625 is applicable to it.

The single plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009, read in conjunction with Article 8(2)(a)(iii) thereof

18 The applicant submits, in essence, that the Board of Appeal erred in concluding that it had failed to provide sufficient proof regarding the nature of use of the earlier mark. That determination is flawed since it is based on the finding that the services for which the applicant had provided proof of use were not covered by the earlier mark.

20 Article 42(2) and (3) of Regulation No 207/2009 provides that, if the applicant so requests, the proprietor of an earlier national trade mark who has given notice of opposition is to furnish proof that, during the five-year period preceding the date of filing of the EU trade mark application, the earlier trade mark has been put to genuine use in the Member State where it is protected in connection with the goods or services in respect of which it is registered and on which the opposition is based, or that there are proper reasons for non-use, provided the earlier trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition is to be rejected.

21 For the purpose of interpreting the notion of ‘genuine use’, account must be taken of the fact 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 good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of that provision is not to assess commercial success or to review the economic strategy of an undertaking, 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 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 38 and the case-law cited).

22 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or 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 in the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, 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).

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 use of the mark 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, 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).

24 It is apparent from Article 10(3) of Delegated Regulation 2018/625 that evidence of use must establish the place, time, extent and nature of use of the earlier mark for the goods or services in respect of which it is registered and on which the opposition is based.

25 In order to examine whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case (see judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42 and the case-law cited).

26 It is in the light of those considerations that the applicant’s single plea in law must be examined.

27 As a preliminary point, it should be noted that it is common ground between the parties, in the first place, that the proof of use submitted by the applicant for the relevant period, namely between 21 September 2010 and 20 September 2015, refers to the services provided to end users, namely clients of retirement homes.

28 In the second place, as the Board of Appeal pointed out, it is also common ground between the parties that the proof of use submitted by the applicant does not relate to ‘consultations, promotion and planning of establishments, namely institutions in the health and care sectors, in particular for retirement homes’ in Class 42.

29 In the third place, the parties also agree that the essential question to be addressed is whether or not the use of the earlier mark in respect of services revolving around retirement homes and provided to the residents of those establishments corresponds to use in respect of the Class 35 services covered by that mark, that is, ‘business and commercial management of establishments, namely management of institutions in the health and care sectors, in particular for retirement homes’. In addition, it should be noted that the place, time and extent of that use are not disputed by the applicant.

30 Accordingly, it is necessary to determine whether the use of the earlier mark, consisting of the actual operation of retirement homes for the benefit of end users, namely the clients of those homes, amounts to genuine use of that mark for the services in respect of which it is registered and on which the opposition is based.

31 The applicant’s single plea in law is divided, in essence, into two parts. The first part alleges that only the English translation of the specifications of the earlier mark was taken into account, while the second part alleges misinterpretation of the terms used in the list of services covered by the earlier mark.

The first part of the single plea in law, alleging, in essence, that only the English translation of the specifications of the earlier mark was taken into account

32 The applicant complains that the Board of Appeal based its assessment solely on the English translation of the services covered by the earlier mark. It argues that, in order to identify the services that are actually covered by an international registration, reference must be made to the underlying basic registration. Consequently, the terms used in the list of services of a basic registration should be taken into consideration. According to the applicant, the Board of Appeal failed to take into account the description of the services covered by the earlier mark, as specified by the Swiss basic registration, No 419579, in German.

33 In that regard, the applicant submits that both the French-language description of the earlier mark (‘gestion des affaires et direction de l’exploitation’) and the German-language specification of the underlying Swiss basic registration (‘Geschäftsresp, Betriebsführung’) refer to operations management and the operation of a business.

35 In the present case, in the first place, it should be noted that in paragraph 29 of the contested decision, the Board of Appeal reproduced the description of the services covered by the earlier mark, in English, as the language of the case, according to the information provided by the applicant. In addition, it took account of the definitions of ‘management’ and ‘business and commercial management’ provided by the Collins Dictionary and the Oxford English Dictionary.

36 It should also be noted that, in paragraph 56 of the contested decision, the Board of Appeal found that, in so far as the applicant relied on interpretations based on the different language versions of the lists of goods and services, in the absence of evidence to the contrary, there was nothing to indicate that the German version of ‘Betriebsführung von Einrichtungen für das Wohnen im dritten Alter’ did not correspond to its equivalents in English (‘business management of establishments for the third age’) or in French (‘gestion des affaires et direction de l’exploitation d’établissements pour seniors’). It supported that conclusion by reference to a German-to-English dictionary search according to which the German word ‘Betriebsführung’ corresponded to the English word ‘management’ and, therefore, to the French word ‘gestion’, rather than to the word ‘operating’.

37 Accordingly, the applicant cannot complain that the Board of Appeal relied solely on the English translation of the specification of the services covered by the earlier mark. It is clear from paragraph 36 above that it took the different language versions of the specifications of the earlier mark into consideration.

38 In the second place, the applicant submits that the German word ‘Betriebsführung’ is broader in scope than the English expressions which might be used to translate it, such as ‘operation management’, ‘operational management’ or ‘operations management’. It states that the word ‘Betriebsführung’ derives from ‘einen Betrieb führen’, the ordinary meaning of which is not restricted to the operation of third parties’ businesses, but also means ‘to run’, ‘to operate’ or ‘to manage’ a business.

39 However, it should be noted that the fact that the meaning of that word is not restricted to the operation of third parties’ businesses is immaterial, since all of the terms which might be used to translate it connote, both in French and in English, the ‘management’ of a business.

40 Furthermore, whether the interpretation of the specifications of the services covered by the earlier mark also includes the actual operation, in addition to the ‘management’, of a business is a matter that concerns the interpretation of those specifications, which will be examined in the context of the second part of the single plea in law.

41 Accordingly, the applicant’s arguments cannot call into question the Board of Appeal’s finding that there is nothing to suggest that the German- and French-language versions of the services covered by the earlier mark do not correspond to the English-language version.

The second part of the single plea in law, alleging misinterpretation of the terms used in the description of the services covered by the earlier mark

43 The applicant submits, in essence, that the Board of Appeal interpreted the terms defining the services covered by the earlier mark too narrowly. According to the applicant, the Board of Appeal simply concluded that it followed from the natural and usual meaning of the description of those services that they were aimed at assisting business undertakings. However, if the Board of Appeal had considered other possible meanings of those terms, it would have had to carry out a comprehensive interpretation in order to assess whether they also designated the operation of one’s own homes for the elderly.

45 According to the case-law developed in the context of the interpretation of the terms that make up the headings of the classes of goods and services, the scope of the application for registration must be assessed as at the date on which it was filed (see, to that effect, judgments of 7 December 2018, Edison v EUIPO (EDISON), T‑471/17, not published, EU:T:2018:887, paragraph 34, and of 17 October 2019, Alliance Pharmaceuticals v EUIPO – AxiCorp (AXICORP ALLIANCE), T‑279/18, EU:T:2019:752, paragraph 26).

46 Under Article 42(2) of Regulation No 207/2009, ‘if the applicant so requests, the proprietor of an earlier [EU] trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the [EU] trade mark application, the earlier [EU] trade mark has been put to genuine use in the [European Union] in connection with the goods or services in respect of which it is registered and which he [or she] cites as justification for his [or her] opposition, or that there are proper reasons for non-use, provided the earlier [EU] trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier [EU] trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services’. Article 43(3) of that regulation provides that ‘paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the [European Union]’.

47 The objective pursued by the requirement that the earlier mark must have been put to genuine use is not so much to determine precisely the extent of the protection afforded to the earlier trade mark by reference to the actual goods or services using the mark at a given time as to ensure more generally that the earlier mark was actually used for the goods or services in respect of which it was registered (see, to that effect and by analogy, judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 43).

48 With that in mind, when applying the last sentence of Article 42(2) of Regulation No 207/2009, and Article 42(3) thereof, which applies the provisions of Article 42(2) to earlier trade marks, within the meaning of Article 8(2)(a) of that regulation, it is necessary to take account of the breadth of the categories of goods or services for which the earlier mark was registered, in particular the extent to which the categories concerned are described in general terms for registration purposes, and to do this in the light of the goods or services in respect of which genuine use has, of necessity, actually been established (see, to that effect and by analogy, judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 44).

49 According to the case-law, while the provisions of EU law require the goods in respect of which protection is sought to be identified by the applicant with sufficient clarity and precision, that is in order to enable EUIPO and economic operators, on that basis alone, to determine the extent of the protection sought (see, to that effect and by analogy, judgment of 17 October 2019, AXICORP ALLIANCE, T‑279/18, EU:T:2019:752, paragraph 30; see also, by analogy, judgment of 19 June 2012, Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraph 49).

50 In order to interpret the terms used in the list of goods and services for which a mark is registered, it is therefore necessary to examine the scope of each of those terms individually, taking into account their customary and ordinary meaning (see, by analogy, judgment of 7 December 2018, EDISON, T‑471/17, not published, EU:T:2018:887, paragraph 38). In addition, the use of general terms, including the general indications of the class headings of the Nice Classification, must be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term (see, to that effect, judgments of 11 October 2017, EUIPO v Cactus, C‑501/15 P, EU:C:2017:750, paragraph 42, and of 24 February 2021, Bezos Family Foundation v EUIPO – SNCF Mobilités (VROOM), T‑56/20, not published, EU:T:2021:103, paragraph 21).

– The literal meaning of the expression ‘business and commercial management of establishments’

51 The applicant submits, in essence, that if the description of the services covered by the earlier mark could be interpreted in several ways, it should be interpreted comprehensively. To that end, based on the description and on the customary and ordinary understanding of that description, a number of circumstances should be taken into account, including the intention of the applicant for registration and the overall context in which the application for registration was filed. According to the applicant, the expression ‘operations management’ could also refer to the operation of its own establishment.

52 In addition, the applicant argues that the Board of Appeal did not sufficiently consider the relevance of the expression ‘gestion des affaires et direction de l’exploitation d’établissements’. The applicant’s predecessor in title chose that description for services covered by the earlier mark instead of the specific examples given in the list of Class 35 services, as those examples would have expressly referred to the provision of services to other undertakings. Thus, the term ‘Betriebsführung’ chosen by the applicant’s predecessor in title refers both to the operation of one’s own business and to the operation of a third party’s business.

53 In paragraphs 39 to 41 of the contested decision, the Board of Appeal – by carrying out a literal interpretation of the terms used in the list of services covered by the earlier mark – established that it follows from the natural and usual meaning of the expression ‘business and commercial management of establishments’ that the services covered by that mark are aimed at assisting business undertakings in running their business.

54 In the first place, it is necessary to examine the literal interpretation of the terms defining the services covered by the earlier mark.

55 It should be noted, as the Board of Appeal did, that the customary and ordinary meaning of the expression ‘business and commercial management of establishments’ refers to services provided to undertakings in order to help them run their business.

56 Thus, the terms ‘gestion’ and ‘direction’ in the French description of the international registration, and the term ‘management’ in the English-language version, mean the coordination and control of an activity, which is, in principle, different from the activity of operation.

57 Accordingly, the Court must reject the applicant’s arguments that ‘operations management’ could also refer to the operation of its own undertaking. The clear and ordinary meaning of the term ‘management’ is different from that of ‘operation’. Even if the German term ‘Betriebsführung’ used in the basic registration, being the substantive form of the expression ‘einen Betrieb führen’, is taken into account, as the applicant claims it should, the ordinary meaning of the words remains the same. Indeed, the verb ‘führen’ (‘diriger’ in French and ‘to manage’ in English) means that the service at issue relates to the activity of managing an undertaking.

58 The applicant complains that the Board of Appeal based its assessment almost exclusively on the ‘systematics’ of the sixth edition of the Nice Classification, which was in force at the time of the application for registration of the earlier mark, despite noting that that classification serves purely administrative purposes. Moreover, the wording of the sixth edition of the Nice Classification and the explanatory notes thereto permit an interpretation whereby Class 35 services may also be construed as being provided to end consumers, and not only to other undertakings.

59 According to the applicant, a restrictive interpretation such as that adopted by the Board of Appeal could only be envisaged if it were expressly stated that the Class 35 services covered by the earlier mark were provided ‘for third parties’ or ‘for others’. Such clarification was not included in the specification of the earlier mark, although the addition of ‘for others’ to clarify that the services are provided for other undertakings had already been recognised in the sixth edition of the Nice Classification. Consequently, it would be contradictory to reject the applicant’s argument on the basis of the administrative nature of the Nice Classification.

60 In addition, the applicant maintains that the classes in which the services were listed in the Nice Classification cannot be a decisive factor for defining the nature of the services claimed by the earlier mark. That was the case for the Class 42 services for which the earlier mark was registered (‘consultancy of facilities …’), which should have been properly listed in Class 35.

61 In paragraphs 42 to 44 of the contested decision, the Board of Appeal found that the literal interpretation of ‘business and commercial management of establishments’, according to which the services covered by that mark are aimed at assisting business undertakings in running their business, is supported by the explanatory notes to the sixth edition of the Nice Classification and by the fact that the operation of one’s own retirement homes does not fall within the concept of a remunerated service provided to other undertakings.

62 Thus, it is necessary to determine whether the interpretation of the services covered by the earlier mark should take account of the Nice Classification.

63 It must be observed that, according to the case-law, the registration of a trade mark must be understood in the light of the Nice Classification in the version in force at the time when the application for registration of that mark was filed, in this case the sixth edition thereof (see, to that effect, judgments of 24 March 2021, Novomatic v EUIPO – adp Gauselmann (Power Stars), T‑588/19, not published, EU:T:2021:157, paragraph 41, and of 26 April 2023, Wenz Kunststoff v EUIPO – Mouldpro (MOULDPRO), T‑794/21, not published, EU:T:2023:211, paragraph 22).

64 While it is true that the Nice Classification is purely administrative (see, to that effect, judgment of 19 June 2018, Erwin Müller v EUIPO – Novus Tablet Technology Finland (NOVUS), T‑89/17, not published, EU:T:2018:353, paragraph 32), reference should, however, be made to it in order to determine, where necessary, the range or the meaning of the services in respect of which a mark has been registered (see, to that effect, judgment of 10 September 2014, DTM Ricambi v OHIM – STAR (STAR), T‑199/13, not published, EU:T:2014:761, paragraph 35).

65 In particular, where the description of the services for which a mark is registered is so general that it may cover very different services, it is possible to take into account, for the purposes of interpretation or as a precise indication of the designation of the services, the classes in the classification that the trade mark applicant has chosen (see, to that effect, judgments of 6 October 2021, Allergan Holdings France v EUIPO – Dermavita Company (JUVEDERM), T‑397/20, not published, EU:T:2021:653, paragraph 35, and of 26 April 2023, MOULDPRO, T‑794/21, not published, EU:T:2023:211, paragraph 23 and the case-law cited).

66 In that regard, it must be borne in mind that Article 1(2) of the Nice Agreement provides that ‘the [Nice] Classification consists of[, first,] a list of classes, together with, as the case may be, explanatory notes [and, secondly,] an alphabetical list of goods and services … with an indication of the class into which each of the goods or services falls’. It must be pointed out that each class is designated by one or more general descriptions, which, according to the Guidance for the User of the Nice Classification, are called ‘class headings’ and indicate in a general manner the fields to which the goods and services in the class concerned in principle belong (judgment of 26 April 2023, MOULDPRO, T‑794/21, not published, EU:T:2023:211, paragraph 24).

67 It thus follows from the case-law that the goods and services covered by a mark must be interpreted from a systematic point of view, having regard to the logic and the system inherent in the Nice Classification, while taking into account the descriptions and explanatory notes, which are relevant for determining the nature and purpose of the goods and services in question (see, to that effect, judgments of 10 September 2014, STAR, T‑199/13, not published, EU:T:2014:761, paragraph 36, and of 6 October 2021, JUVEDERM, T‑397/20, not published, EU:T:2021:653, paragraph 35 and the case-law cited).

68 Therefore, in order to determine the range and meaning of the services at issue, that analysis must not be confined to the literal meaning of the wording used in the terms of the specification of the earlier mark, but must also take account of the classification of the services.

69 Thus, it should be noted that the heading of Class 35, in the sixth edition of the Nice Classification, is worded as follows: ‘advertising; business management; business administration; office functions’.

70 In addition, the explanatory note to Class 35 of the sixth edition of the Nice Classification stated that that class ‘includes mainly services rendered by persons or organisations principally with the object of: (1) help in the working or management of a commercial undertaking, or (2) help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services’.

71 Therefore, far from relying almost exclusively on the ‘systematics’ of the Nice Classification, as the applicant claims, the Board of Appeal rightly found that that classification and the explanatory note concerning Class 35 support the literal interpretation of the terms of the specification of the service at issue covered by the earlier mark, according to which the services covered by the earlier mark in Class 35, as ‘management services’, are not directed at end consumers, but at undertakings operating retirement homes.

72 Contrary to the applicant’s arguments, it is clear from the case-law cited in paragraph 67 above that the descriptions in, and the explanatory notes to, the Nice Classification in force at the time of the application for registration are relevant for determining the nature and purpose of the goods at issue.

73 It is true that it follows from the explanatory notes to the sixth edition of the Nice Classification that, on the date on which the application for registration of the earlier mark was filed, ‘professional consultations’ fell within Class 42, which included, at the time, ‘all services which could not be placed in other classes’.

74 However, according to the explanatory note to Class 42, ‘professional services giving direct aid in the operations or functions of a commercial undertaking’ do not fall within that class, but within Class 35.

75 Accordingly, the applicant’s argument that the explanatory note concerning Class 35 of the sixth edition of the Nice Classification contained the words ‘mainly’ and ‘principally’ and, therefore, was not limited to the provision of services to other undertakings cannot be accepted.

76 First, the explanatory notes concerning Classes 35 and 42 clarified the nature and purpose of the Class 35 services, which are professional services intended for another undertaking in order to provide assistance in the management and operation of that undertaking.

77 Secondly, the explanatory note concerning Class 35 simply confirmed the customary and ordinary meaning of the words ‘business and commercial management of establishments’.

78 The applicant’s argument that some of the Class 35 services are directed at end consumers must be rejected for the same reasons.

79 Thus, the fact that Class 35 includes ‘document reproduction’ or ‘typing’ is not capable of affecting the nature of the management services in that class, which are aimed at helping third-party companies operate their business.

80 Next, regarding the applicant’s argument that its predecessor in title did not include in the specification the words ‘for others’, which appeared in the Nice Classification in connection with some other services, it is true that the Board of Appeal, in rejecting that argument, stated that the Nice Classification serves purely administrative purposes and may serve as a tool to identify the common characteristics of certain services.

81 However, the Board of Appeal was fully entitled to state that the Nice Classification is relevant for assessing the nature of use and to find that there was nothing in the wording of that classification or in the explanatory notes thereto to suggest that the services registered in Class 35 also include one’s own activities or activities performed by one’s own establishments.

82 Furthermore, it should be pointed out, as EUIPO did, first, that the addition of the words ‘for others’ in the specification of the business and commercial management services in Class 35 would have been superfluous, and, secondly, that the requirement that the business and commercial management services in Class 35 be provided ‘for others’ in order to prove genuine use of the earlier mark also arises from the requirement, stemming from the case-law cited in paragraph 22 above, that that mark be used outwardly. Thus, running one’s own retirement home is a management service provided to oneself. Such use must be regarded as use of an internal nature, which is not designed to obtain or preserve market shares, and which, according to the case-law cited in paragraph 22 above, cannot be taken into account to prove genuine use of the earlier mark.

– The taking into account of the intention of the applicant for registration

83 The applicant submits that the Board of Appeal wrongly considered the intention of the applicant for registration at the time of the application to be irrelevant. The Board of Appeal also disregarded the fact that, at the time of filing of the earlier mark and the underlying basic registration in 1995, the main activity of the applicant’s predecessor in title was the operation of its own homes for the elderly. According to the applicant, the Board of Appeal’s interpretation led to an implausible result, in that the earlier mark enjoys protection for services which were not intended to be provided.

84 The applicant also states that the Board of Appeal failed to take account of the fact that the intervener had been able to understand that the description of the services covered by the earlier mark designated services provided to residents of retirement homes.

85 In addition, the applicant claims that, for more than 20 years, the applicant and its predecessor in title believed in good faith that the earlier mark protected the services provided to residents of their own homes for the elderly. Thus, where several interpretations are possible, the specification of the earlier mark must be interpreted in such a way as to avoid an absurd result.

86 The Board of Appeal found that the intention of the applicant or of its predecessor in title is not necessarily intrinsic to an application for registration and, therefore, relevant to proof of genuine use, since the services covered by the earlier mark must be interpreted objectively. It also considered that, even if it were accepted that the terms designating the services covered by the earlier mark were not clear and precise and that alternative interpretations were possible, the unclear and imprecise terms could not be interpreted in favour of the trade mark proprietor.

87 Although the literal interpretation of the terms designating the services covered by a mark is that which is to be preferred, that principle is not of much use in a case in which two literal interpretations are equally possible. In that situation, it is the interpretation which, among a number of possible interpretations of EU legal instruments, is the one which does not lead to an absurd result that must be preferred. It is true that the interpretation of EU law provisions is based first and foremost on the text, since that approach reflects the core principles of predictability and legal certainty. However, if the text is ambiguous or the literal meaning would lead to a nonsensical result, that meaning may be reappraised after being placed in its context and interpreted in the light of the provision of EU law as a whole, regard being had to the objectives thereof and to its state of evolution at the date on which the provision in question is to be applied (judgment 17 October 2019, AXICORP ALLIANCE, T‑279/18, EU:T:2019:752, paragraphs 46 and 47).

88 In any event, even if ‘commercial management of establishments’ could include, in a broad sense, the operation of those establishments, in addition to their ‘management’ in the strict sense, the interpretation that that expression designates only management services and not the activity of operating an undertaking is supported by the context of which the specification of the services covered by the earlier mark forms part. In that regard, that interpretation is supported, first, as is clear from paragraphs 77 to 82 above, by the sixth edition of the Nice Classification and the explanatory note concerning Class 35 thereof, and, secondly, as is clear from the case-law cited in paragraph 22 above, by the requirement that proof of genuine use relate to ‘outward’ use of the services for which the earlier mark was registered.

89 Consequently, contrary to the applicant’s arguments, the present case can be distinguished from the case which gave rise to the judgment of 17 October 2019, AXICORP ALLIANCE (T‑279/18, EU:T:2019:752, paragraphs 47 and 50), in which the Court held that it is for the competent EU authorities to interpret the wording of the list of goods and services covered in the most coherent manner, in the light, if there is a risk of an absurd result, inter alia, of the actual intention of the mark’s proprietor as regards its scope. Although the method of interpretation is no different, the present case does not pose any risk of leading to an absurd result.

90 The present case also differs from the case which gave rise to the judgment of 30 September 2014, Scooters India v OHIM – Brandconcern (LAMBRETTA) (T‑51/12, not published, EU:T:2014:844, paragraphs 22 and 24), relied on by the applicant. In that case, it was necessary to determine whether an application for registration of a trade mark covering all the general indications of a given class of the Nice Classification conferred protection on all the goods and services included in that class, as well as those appearing in the corresponding alphabetical list, or whether the protection was limited only to the goods and services specifically mentioned in the application.

91 In the present case, the applicant for registration did not use the general indications of the class heading for Class 35 or the specific examples given in the list of services in that class, but instead opted for a specific wording which it chose itself.

92 Furthermore, the applicant merely states that the Board of Appeal’s interpretation led to an absurd result, without substantiating that claim. The assertion that the applicant and its predecessor in title believed in good faith that the earlier mark protected the services provided to end consumers is, as EUIPO submits in its pleadings, at odds with the fact that, in 2004, the applicant filed an application for registration of the Swiss trade mark ‘Tertianum’ for ‘services provided by homes for the elderly and senior citizens’. Moreover, it is apparent from the documents before the Court that, in 2005, the applicant also applied to have the protection of that mark extended by means of an international registration designating several Member States of the European Union.

93 Therefore, the applicant’s argument that, when the application for registration of the earlier mark was filed, its main activity was the operation of its own homes for the elderly, cannot succeed. First, it is clear from the preceding paragraph that the applicant had been aware, since at least 2004, that the earlier mark did not cover the services provided by retirement homes to its own residents. Secondly, it must be pointed out, as the Board of Appeal did, that the applicant or its predecessor in title was responsible for the appropriate choice of the services for which trade mark protection was sought, in order to reflect the scope of the services subject to that protection.

94 Furthermore, as regards the applicant’s argument that the intervener was able to understand that the specification of the earlier mark designated services provided to residents of retirement homes, which the applicant claims is apparent from the intervener’s observations on the opposition filed by the applicant on 24 March 2020, it follows from those observations that the intervener indeed referred to the degree of similarity between the goods and services covered by the marks at issue, a matter that was not examined by the Board of Appeal. Even if the intervener understood that the applicant’s services were intended for end consumers, that has no bearing on the meaning of the specification, which, as the Board of Appeal correctly pointed out, is an objective concept and, therefore, is not such as to call into question the Board of Appeal’s assessments relating to the relevance of the applicant’s intention.

95 In the light of the considerations set out in paragraphs 83 to 94 above, it must be held that the Board of Appeal did not err in law in finding that the intention of the applicant or of its predecessor in title was not relevant for the purposes of interpreting the specification of the services covered by the earlier mark.

96 Accordingly, the Board of Appeal was fully entitled to conclude that the interpretation of the terms designating the services covered by the earlier mark, that is, ‘business and commercial management of establishments, namely management of institutions in the health and care sectors, in particular for retirement homes’, must cover only management services provided to other undertakings and not the services provided by retirement homes to their residents.

98 Having regard to all of the foregoing, the applicant’s single plea in law must be rejected and, in consequence, the action must be dismissed in its entirety.

99 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.

100 Since the applicant has been unsuccessful and a hearing has taken place, 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) >> Tertianum v EUIPO - DPF (TERTIANUM) (EU trade mark - Judgment) [2024] EUECJ T-73/23 (04 September 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T7323.html Cite as: [2024] EUECJ T-73/23, ECLI:EU:T:2024:578, EU:T:2024:578

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