Corte di giustizia UE n. 207/2015

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 14 January 2015 ( * ) (Appeal — Community trade mark — [OSCURATO:PERSONA] (EC) No 207/2009 — Articles 15(1) and 51(1)(a) — Word mark [OSCURATO:PERSONA] — Application for revocation — Partial refusal by the [OSCURATO:PERSONA] of Appeal of OHIM) [OSCURATO:PERSONA] C‑57/14 P, APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 31 January 2014, [OSCURATO:PERSONA] GmbH , formerly [OSCURATO:PERSONA]GmbH, established in Stuttgart (Germany), represented by J. Weiser, Rechtsanwalt, applicant, the other party to the proceedings being: Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) (OHIM), defendant at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of J.-C. Bonichot, President of the [OSCURATO:PERSONA], A. Arabadjiev and J.L. da [OSCURATO:PERSONA] (Rapporteur), [OSCURATO:PERSONA], [OSCURATO:PERSONA]: E. Sharpston, Registrar: A. [OSCURATO:PERSONA], having decided, after hearing the [OSCURATO:PERSONA], to give a ruling by reasoned order, pursuant to [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, makes the following [OSCURATO:PERSONA] 1 By its appeal, [OSCURATO:PERSONA] GmbH (‘[OSCURATO:PERSONA]’), formerly [OSCURATO:PERSONA]GmbH, asks the [OSCURATO:PERSONA] to set aside the judgment in [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) (T‑524/12, EU:T:2013:604; ‘the judgment under appeal’) by which the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] dismissed its action for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) (OHIM) of 6 September 2012 ([OSCURATO:PERSONA] R 1761/2011-1; ‘the contested decision’), made following revocation proceedings between [OSCURATO:PERSONA] and [OSCURATO:PERSONA] SL (‘[OSCURATO:PERSONA]’), a company established in Spain. Legal context 2 [OSCURATO:PERSONA] (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). 3 [OSCURATO:PERSONA] 15(1) of [OSCURATO:PERSONA] 207/2009 provides: ‘If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this [OSCURATO:PERSONA], unless there are proper reasons for non-use. ...’ 4 [OSCURATO:PERSONA] 51(1)(a) of that regulation states: ‘The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings: (a)      if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use ...’ Background to the dispute 5 On 25 June 1999, [OSCURATO:PERSONA] obtained from OHIM the registration, under No 73 434, of the word mark [OSCURATO:PERSONA] (‘the contested trade mark’) on the basis of [OSCURATO:PERSONA] 40/94. 6 The goods covered by that registration are in Classes 10 and 25 of the [OSCURATO:PERSONA] concerning the [OSCURATO:PERSONA] of Goods and Services for the Purposes of the Registration of [OSCURATO:PERSONA] of 15 June 1957, as revised and amended (‘the [OSCURATO:PERSONA]’), and correspond, for each of those classes, to the following description: –        Class 10: ‘Orthopaedic footwear’; –        Class 25: ‘Footwear (except orthopaedic)’. 7 On 16 September 2009, [OSCURATO:PERSONA] submitted an application pursuant to [OSCURATO:PERSONA] 51(1)(a) of [OSCURATO:PERSONA] 207/2009 for revocation of [OSCURATO:PERSONA]’s rights in the contested trade mark, on the ground that the mark in question had not been put to genuine use. 8 By decision of 29 June 2011, the [OSCURATO:PERSONA] of OHIM found that the mark in question had not been put to genuine use and revoked all of [OSCURATO:PERSONA]’s rights in that trade mark. 9 On 25 August 2011, [OSCURATO:PERSONA] lodged an appeal with OHIM against that decision pursuant to Articles 58 to 64 of [OSCURATO:PERSONA] 207/2009, asserting that it had put the contested trade mark to genuine use and providing additional evidence. 10 By the contested decision, the [OSCURATO:PERSONA] of Appeal of OHIM (‘the [OSCURATO:PERSONA] of Appeal’) partially upheld [OSCURATO:PERSONA]’s appeal, restoring its rights in the contested trade mark in respect of the ‘footwear (except orthopaedic)’ in Class 25 of the [OSCURATO:PERSONA], but dismissing the appeal with regard to the ‘orthopaedic footwear’ in Class 10 of that agreement. 11 [OSCURATO:PERSONA] of Appeal held, in particular, that the orders received from two purchasers and the orders sent to a footwear manufacturer clearly demonstrated significant use of the contested trade mark in connection with the footwear in Class 25 of the [OSCURATO:PERSONA] throughout the relevant period. In addition, other evidence, such as [OSCURATO:PERSONA]’s presence at trade fairs and an article published online concerning that company’s products, were found by the [OSCURATO:PERSONA] to establish use of the contested trade mark. However, the [OSCURATO:PERSONA] of Appeal found, in common with the [OSCURATO:PERSONA], that no evidence had been produced demonstrating use of the contested trade mark in connection with the ‘orthopaedic footwear’ in Class 10 of the [OSCURATO:PERSONA]. Procedure before the [OSCURATO:PERSONA] and the judgment under appeal 12 By application lodged at the Registry of the [OSCURATO:PERSONA] on 3 December 2012, [OSCURATO:PERSONA] brought an action for annulment of the contested decision. In support of its action, [OSCURATO:PERSONA] raised three pleas in law, alleging respectively: (i) infringement of [OSCURATO:PERSONA] 51(1)(a) of [OSCURATO:PERSONA] 207/2009, read in conjunction with [OSCURATO:PERSONA] 15 of that regulation, in that the [OSCURATO:PERSONA] of Appeal should not have found that there was genuine use of the contested trade mark in connection with the ‘footwear’ in Class 25 of the [OSCURATO:PERSONA]; (ii) infringement of [OSCURATO:PERSONA] 76(2) of [OSCURATO:PERSONA] 207/2009, read in conjunction with Rule 50(1) of [OSCURATO:PERSONA] (EC) No 2868/95 of 13 December 1995 implementing [OSCURATO:PERSONA] 40/94 (OJ 1995 L 303, p. 1); and (iii) infringement of [OSCURATO:PERSONA] 75 of [OSCURATO:PERSONA] 207/2009, submitting that, in failing to give a ruling on the relevance of evidence submitted out of time, the [OSCURATO:PERSONA] had failed to fulfil its duty to state reasons. 13 [OSCURATO:PERSONA] held that all those pleas in law were unfounded and, accordingly, dismissed the action in its entirety. Forms of order sought by the appellant before the [OSCURATO:PERSONA] of Justice 14 [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] should: –        set aside the judgment under appeal and give a definitive ruling on the dispute, amending the contested decision to revoke all of [OSCURATO:PERSONA]’s rights in the contested trade mark or, in the alternative, refer the case back to the [OSCURATO:PERSONA]; –        order OHIM — and, if appropriate, [OSCURATO:PERSONA] — to pay the costs. The appeal 15 [OSCURATO:PERSONA] 181 of its Rules of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the [OSCURATO:PERSONA] may, at any time, acting on a proposal from the Judge-Rapporteur and after hearing the [OSCURATO:PERSONA], decide by reasoned order to dismiss that appeal in whole or in part. 16 It is appropriate to apply that provision in the present case. [OSCURATO:PERSONA]’s arguments 17 [OSCURATO:PERSONA] relies on a single ground of appeal, alleging infringement of [OSCURATO:PERSONA] 51(1)(a) of [OSCURATO:PERSONA] 207/2009, read in conjunction with [OSCURATO:PERSONA] 15 of that regulation. That ground is divided into three parts. 18 By the first part of its single ground of appeal, [OSCURATO:PERSONA] submits that, for the purposes of assessing whether the contested trade mark had been put to genuine use, the [OSCURATO:PERSONA] referred to certain pictures which were undated or which predated the period from 16 September 2004 to 15 September 2009 (‘the relevant period’) even though, according to the case-law of the [OSCURATO:PERSONA] of Justice, only evidence pertaining to the relevant period may be taken into account (order in [OSCURATO:PERSONA] , C‑259/02, EU:C:2004:50, paragraph 30, and judgment in [OSCURATO:PERSONA] , C‑12/12, EU:C:2013:253, paragraph 31). 19 In particular, [OSCURATO:PERSONA] argues that the [OSCURATO:PERSONA] based its assessment on pictures dating from 1998 or 1999 (that is, predating the relevant period), both in the context of demonstrating use of the contested trade mark in connection with the goods covered by that trade mark registration (paragraph 37 of the judgment under appeal) and in the context of assessing the use of that mark as registered (paragraph 43 of that judgment). Regarding the undated pictures, [OSCURATO:PERSONA] asserts that they may not be taken into account even to corroborate other evidence which is dated, since there is no connection between them and that evidence. 20 Thus, according to [OSCURATO:PERSONA], the judgment under appeal is vitiated by an error of law, in so far as the [OSCURATO:PERSONA] used those pictures as the basis for its assessment as to whether there was genuine use, and should therefore be set aside. [OSCURATO:PERSONA] relies in that regard on paragraph 75 of the judgment in [OSCURATO:PERSONA] v OHIM (C‑234/06 P, EU:C:2007:514), arguing that, although the assessment of evidence for the purposes of ascertaining whether there is genuine use is a question of fact which is not open to review by the [OSCURATO:PERSONA] of Justice on appeal, the question of which evidence may be used in that assessment is a question of law and as such is open to review by the [OSCURATO:PERSONA]. 21 By the second part of its single ground of appeal, [OSCURATO:PERSONA] alleges distortion of the facts by the [OSCURATO:PERSONA]. Thus, first, by using the expression ‘some of the pictures are not dated or predate [the relevant period]’ in paragraph 37 of the judgment under appeal, that court implied that there were other pictures which were dated and which pertained to the relevant period, which is not consistent with the actual evidence in the case-file. Second, in paragraph 36 of that judgment, the [OSCURATO:PERSONA] distorted the meaning of the statement provided by [OSCURATO:PERSONA]’s sales director, since that person at no time stated that the highest-selling type of rubber-soled sandal was marketed under the contested trade mark. 22 By the third part of its single ground of appeal, [OSCURATO:PERSONA] argues that the [OSCURATO:PERSONA] disregarded the rules regarding the burden of proof. [OSCURATO:PERSONA], as regards demonstrating use of the contested trade mark in connection with the goods in respect of which it was registered and in the form in which it was registered, the [OSCURATO:PERSONA] disregarded, in paragraphs 32 and 43 of the judgment under appeal, the rule that it is for [OSCURATO:PERSONA] to prove genuine use of the contested trade mark, rather than for [OSCURATO:PERSONA] to prove that the mark in question has been used for other products or in a form other than the form registered. Second, in paragraph 33 of the judgment under appeal, the [OSCURATO:PERSONA] merely stated that some evidence ‘point[ed] to’ the use of the contested trade mark in connection with the ‘footwear’ in Class 25 of the [OSCURATO:PERSONA], instead of basing its findings on specific evidence produced by [OSCURATO:PERSONA] demonstrating genuine use of that trade mark. Findings of the [OSCURATO:PERSONA] 23 As regards the first part of the single ground of appeal, [OSCURATO:PERSONA] submits in essence that the [OSCURATO:PERSONA] erred in law in basing its assessment of whether there was genuine use of the contested trade mark on pictures which were undated or which predated the relevant period. 24 In that regard, it should be noted that, in paragraphs 34 to 37 of the judgment under appeal, the [OSCURATO:PERSONA] assessed the use of the contested trade mark in connection with the goods in respect of which it was registered, using as its basis, not — as [OSCURATO:PERSONA] alleges — evidence which was undated or which predated the relevant period, but a body of evidence. 25 [OSCURATO:PERSONA], the [OSCURATO:PERSONA] found that the purchase orders considered could be regarded as relating to the marketing of footwear under the contested trade mark. Secondly, it took into account the licensing contract concluded between [OSCURATO:PERSONA] and a footwear manufacturer. Thirdly, that court analysed a statement provided by [OSCURATO:PERSONA]’s sales director, according to which that company has commercial relations with partners concerning the sale of footwear under the contested trade mark. [OSCURATO:PERSONA] does not dispute that evidence, with the exception of the sales director’s remarks regarding the highest-selling type of footwear, which [OSCURATO:PERSONA] argues were distorted. 26 It was solely in order to corroborate the other evidence in the case-file before it that the [OSCURATO:PERSONA], acting in accordance with paragraphs 57 and 58 of its judgment in [OSCURATO:PERSONA] and Lehning entreprise v OHIM — Lehning entreprise and [OSCURATO:PERSONA] (L112) (T‑77/10 and T‑78/10, EU:T:2012:95), took into consideration evidence which was undated or which predated the relevant period. 27 The same is true of paragraph 43 of the judgment under appeal concerning the use of the contested trade mark as registered. In that regard, the [OSCURATO:PERSONA], having observed in paragraph 42 of that judgment that the specific representation of a word mark is not generally of such a nature as to alter the distinctive character of that mark as registered, found in essence that the evidence before it confirmed that the contested trade mark was being used in a form which did not alter its distinctive character. In that context, the [OSCURATO:PERSONA] made reference to the pictures which were undated or which predated the relevant period only as ‘additional evidence supporting the other evidence’. 28 In the light of the foregoing, the first part of the single ground of appeal must be rejected as manifestly unfounded. 29 As regards the second part of the single ground of appeal, it should be noted that the supposed distortion of facts invoked by [OSCURATO:PERSONA] is based on a clear misreading of the judgment under appeal and, in any event, is not obvious from the documents in the case-file (see, to that effect, order in [OSCURATO:PERSONA] v OHIM , C‑676/13 P, EU:C:2014:2080, paragraph 22). 30 Indeed, in paragraph 37 of the judgment under appeal, the [OSCURATO:PERSONA] merely states that some of the pictures referred to in the contested decision were undated or predated the relevant period. It cannot be inferred from that statement that the [OSCURATO:PERSONA] meant to imply that there are other pictures which are dated or which pertain to the relevant period. Moreover, as that court rightly observed, it is common ground that [OSCURATO:PERSONA]’s sales director confirmed, by his statements, that [OSCURATO:PERSONA]’s commercial relations with its partners concerned footwear sold under the contested trade mark. Consequently, the supposed distortion invoked by [OSCURATO:PERSONA] of that director’s remarks regarding the highest-selling product would not be of such a nature as to undermine the [OSCURATO:PERSONA] assessment regarding the genuine nature of the use of the contested trade mark. 31 In those circumstances, the second part of the single ground of appeal must be rejected as manifestly unfounded. 32 As regards the third part of the single ground of appeal, it should be observed that, as can be seen from paragraphs 32 and 43 of the judgment under appeal, the [OSCURATO:PERSONA] is merely stating that there is no evidence to support the arguments put forward by [OSCURATO:PERSONA] to challenge the lawfulness of the contested decision and that, consequently, the [OSCURATO:PERSONA] is in no way reversing the burden of proof. 33 Therefore, that third part must be rejected as manifestly unfounded. 34 In the light of the foregoing, the present appeal must be dismissed in its entirety as manifestly unfounded. Costs 35 [OSCURATO:PERSONA] 137 of the Rules of Procedure, applicable to appeal proceedings by virtue of [OSCURATO:PERSONA] 184(1) of those Rules, a decision as to costs is to be given in the order which closes the proceedings. In the present case, [OSCURATO:PERSONA] is to be ordered to bear its own costs. On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby: 1. Dismisses the appeal; 2. [OSCURATO:PERSONA] GmbH to bear its own costs. [Signatures] * Language of the case: English.