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Cite as: [2010] EUECJ T-92/9, [2010] EUECJ T-92/09

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JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

5 October 2010 (*)

(Community trade mark – Opposition proceedings – Application for the Community word mark STRATEGI – Earlier national word mark Stratégies – Relative ground for refusal – Proof of use of the earlier trade mark – Article 43(2) of Regulation (EC) No 40/94 (now Article 42(2) of Regulation (EC) No 207/2009) and Rule 22 of Regulation (EC) No 2868/95)

In Case T-92/09,

Strategi Group Ltd, established in Manchester (United Kingdom), represented by N. Saunders, Barrister,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,

defendant,

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

Reed Business Information (RBI), established in Issy-les-Moulineaux (France), represented by A. Messas, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 18 December 2008 (Case R 1581/2007-2), relating to opposition proceedings between Reed Business Information (RBI) and Strategi Group Ltd,

THE GENERAL COURT (Fourth Chamber),

composed of O. Czúcz, President, I. Labucka (Rapporteur) and K. O’Higgins, Judges,

Registrar: K. Pocheć, Administrator,

having regard to the application lodged at the Registry of the Court on 2 March 2009,

having regard to the response of OHIM lodged at the Registry of the Court on 14 July 2009,

having regard to the response of the intervener lodged at the Registry of the Court on 4 July 2009,

further to the hearing on 28 April 2010,

gives the following

Judgment

Background to the dispute

1 On 18 June 2004, the applicant, Strategi Group Ltd, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The trade mark in respect of which registration was sought is the word sign STRATEGI.

3 The services in respect of which registration is sought are in Class 35 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Personnel recruitment services; information, advisory and consultancy services relating to the aforesaid’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 17/2005 of 25 April 2005.

5 On 22 July 2005, the intervener, Reed Business Information (RBI), filed a notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the Community trade mark sought for the services set out in paragraph 3 above.

6 The opposition was based on the French word mark Stratégies, filed and registered on 6 June 1983 under number 1240001, for goods and services in Classes 9, 16, 28, 35, 41 and 42. The opposition was based on a number of the services designated by the earlier mark, namely ‘assistance to industrial or commercial undertakings in the running of their business’, ‘business consultancy, information or enquiries’ and ‘organisation of exhibitions and other events’ in classes 35 and 41.

7 The ground relied on in support of the opposition was that in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8 On 3 March 2006, the applicant requested proof of use of the earlier mark upon which the opposition was based. On 18 April 2006, the intervener submitted various documents in order to prove genuine use of the earlier mark in France, namely: extracts from 23 issues of the ‘Stratégies’ magazine, dating from February 1998 to January 2006; extracts from the ‘Stratégies’ website; the programme for a conference on 13 and 14 December 2005 entitled ‘Les journées du management’ (Management Days); copies of two catalogues of ‘Communication and Marketing’ training courses organised from September 2005 to September 2006 and from June 2004 to July 2005; the Minutes of the Association for auditing media circulation for the years 1999 to 2005; and the poster ‘30 ans de communication’ (30 years of communication), reproducing ‘Stratégies’ magazine covers from 1971 to 2001.

9 On 7 August 2007, the Opposition Division rejected the opposition on the ground that the evidence produced by the intervener did not prove genuine use of the earlier mark.

10 On 4 October 2007, the intervener lodged an appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.

11 By decision of 18 December 2008 (‘the contested decision’), the Second Board of Appeal annulled the Opposition Division’s decision and remitted the case back to it for further examination. It found that the assessment of the evidence by the Opposition Division was vitiated by errors of law and procedural irregularities, which justified the annulment of the Opposition Division’s decision. In essence, the Board of Appeal found, contrary to the Opposition Division, that the evidence submitted by the intervener, namely, extracts from the ‘Stratégies’ magazine, extracts from the ‘Stratégies’ website and the poster ‘30 ans de communication’, reproducing ‘Stratégies’ magazine covers from 1971 to 2001, was in fact dated. It also stated that, in principle, there was nothing to prevent the title of a magazine from also being protected as a trade mark for services offered through that publication, if its contents indeed showed genuine use of the sign for the services concerned. Lastly, concerning the organisation of exhibitions and other events, in Class 41, the Board of Appeal considered that the Opposition Division should not have excluded the catalogues submitted by the intervener from its assessment of the extent and nature of the sign’s use.

Forms of order sought

12 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM and the intervener to pay the costs.

13 OHIM contends that the Court should:

– dismiss the application;

– order the applicant to pay the costs incurred by OHIM.

14 The intervener contends that the Court should:

– confirm the contested decision;

– order the applicant to pay the costs.

Law

15 First, it must be pointed out that, in the contested decision, the Board of Appeal annulled the decision of the Opposition Division on the ground that the Opposition Division had decided on the basis of a partial and erroneous examination of the evidence that the intervener had not furnished proof of genuine use of the earlier trade mark.

16 Under Article 62(1) and (2) of Regulation No 40/94 (now Article 64(1) and (2) of Regulation No 207/2009), the Board of Appeal may, when it decides on an appeal, either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department is to be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.

17 It must be borne in mind that in the present case the Board of Appeal did not seek to establish use of the earlier mark or to fix a binding framework for assessment in that respect. Following the decision of the Board of Appeal, it will be for the Opposition Division to examine the relevance of the proof submitted by the intervener.

18 In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 43(2) of Regulation No 40/94 (now Article 42(2) of Regulation No 207/2009) and, second, infringement of Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1).

The first plea in law alleging infringement of Article 43(2) of Regulation No 40/94

Arguments of the parties

19 The applicant claims, first, that the Board of Appeal committed an error at law in finding, in the circumstances of this case, that use of a trade mark as the title of a magazine could constitute use of that trade mark for the services offered in that publication. That finding is contrary to the judgment in Case C-17/06 Céline [2007] ECR I-7041, paragraph 21. In reliance on the judgment in Case C-495/07 Silberquelle [2009] ECR I-137, paragraph 22, it also denies that affixing a mark to items given away free of charge can constitute genuine use of a trade mark. According to the applicant, the Board of Appeal also failed to set out the proper evidential requirements for establishing genuine use of the earlier trade mark in such circumstances and failed to give consideration to the evidence filed on the basis of the correct principles. At the hearing, the applicant, in essence, complained that the Board of Appeal had given specific instructions to the Opposition Division concerning the assessment of evidence without having examined that evidence in detail. It claims, second, that the Board of Appeal erred in finding that the catalogue of the ‘Communication and Marketing’ training courses organised from June 2004 to July 2005 was sufficient to establish use of the earlier trade mark as regards the services ‘Organisation of exhibitions and other events’.

20 OHIM and the intervener contest the applicant’s assertions.

Findings of the Court

21 It is apparent from the ninth recital in the preamble to Regulation No 40/94 (now recital 10 in the preamble to Regulation No 207/2009) that the legislature considered that the protection of an earlier trade mark was justified only where the mark was actually used. Consistently with that recital, Article 43(2) and (3) of Regulation No 40/94 (Article 43(3) having become Article 42(3) of Regulation No 207/2009) provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory in which it is protected during the period of five years preceding the date of publication of the Community trade mark application against which an opposition has been filed (Case T-39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II-5233, paragraph 34; see also the judgment of 27 September 2007 in Case T-418/03 La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), not published in the ECR, paragraph 51 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 (Case C-40/01 Ansul [2003] ECR I-2439, paragraph 43). Moreover, the condition of genuine use of the mark requires that that mark, as protected on the relevant territory, be used publicly and outwardly (see LA MER, paragraph 54 and the case-law cited; see also, by analogy, Ansul, paragraph 37).

23 In that regard, the Court of Justice has stated, with regard to Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989, L 40, p. 1), that the purpose of a company, trade or shop name is not, of itself, to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being ‘in relation to goods or services’ (Céline, paragraph 21).

24 Conversely, there is use ‘in relation to goods’ where a third party affixes the sign constituting his company name, trade name or shop name to the goods which he markets. In addition, even where the sign is not affixed, there is use ‘in relation to goods or services’ within the meaning of that provision where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party (see Céline, paragraphs 22 and 23).

25 When assessing whether use of the trade mark is genuine, regard must be had to all the facts 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 (Case T-203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II-2811, paragraph 40; see also, by analogy, Ansul, paragraph 43).

26 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (VITAFRUIT, paragraph 41, and Case T-334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II-2787, paragraph 35).

27 To examine whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case (judgment of 10 September 2008 in Case T-325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 32). Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (Case T-356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II-3445, paragraph 28, and LA MER, paragraph 59).

28 The turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, the Court has stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (see VITAFRUIT, paragraph 42, and HIPOVITON, paragraph 36). Even minimal use of the trade mark may therefore be sufficient to qualify as genuine, provided that it is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark. Thus it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule, which would not allow OHIM or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (C-416/04 P Sunrider v OHIM [2006] ECR I-4237, paragraph 72).

29 It is in the light of all the above considerations that the present action must be examined.

30 In the first place, the applicant claims, in essence, that the title of a magazine cannot constitute use of an earlier mark.

31 Concerning, first, the applicant’s argument based on the judgment in Céline, above, as OHIM and the intervener point out, the applicant has not established that it could rely on the application of that case-law. The case examined by the Court of Justice differs from the present case, first, because a title of a magazine cannot, in general, be treated in the same way as a sign or a company name and, second, unlike the case which gave rise to the judgment in Céline, above, the present case does not concern solely a use as the title of a magazine (use ‘of itself’ within the meaning of Céline, paragraph 21), but a use designed to distinguish the contents thereof.

32 The assessment of the Board of Appeal in paragraph 33 of the contested decision – according to which the affixing of a trade mark on a magazine, periodical, review, journal or catalogue is in principle capable of constituting ‘valid use of the sign’ as a trade mark for the goods and services designated by that mark, if the contents of those publications confirms the use of the sign for goods and services covered by the earlier trade mark – complies with the conditions laid down by the case-law cited in paragraph 22 above. The Board of Appeal thereby correctly took into account the fact that, in order to assess whether use of the mark is genuine, regard must be had to all the facts relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the services.

33 Therefore, the Board of Appeal was correct in considering that it could not be ruled out that services such as those covered by the earlier trade mark could be provided through publications in a magazine or a periodical in the absence of a ‘direct bilateral link’ between the proprietor of the trade mark and the recipient of the services. However, it certainly did not indicate that that was the situation in the present case.

34 It is for the Opposition Division to examine whether the services on which the opposition was based are in fact provided through the medium of a magazine.

35 Concerning, second, the applicant’s argument, derived from the judgment in Silberquelle, paragraph 22, that use of the earlier trade mark is not proved where it is affixed to items given away free of charge, suffice it to state that the magazine, which, according to the intervener, is a support for the supply of services, is not distributed free of charge. The Board of Appeal moreover pointed out, in paragraph 36 of the contested decision, that the payment of the price of the magazine could constitute remuneration for the service provided.

36 Concerning, third, the applicant’s assertion that the Board of Appeal dispensed with the requirement for the intervener to prove actual use of the earlier trade mark, it must be stated that that assertion is unfounded. Having noted that the use of a trade mark could be proven by the affixing of a trade mark on a magazine if the contents of the latter confirmed the use of the sign for goods and services covered thereby, the Board of Appeal simply indicated that that could, in particular, be the case for services such as those covered by the earlier trade mark.

37 In the second place, concerning the applicant’s argument that the Board of Appeal erroneously considered that a single piece of evidence, namely, the catalogue of the ‘Communication and Marketing’ training courses organised from June 2004 to July 2005, was sufficient to establish use of the earlier trade mark as regards the services of ‘Organisation of exhibitions and other events’, it must be pointed out that the Board of Appeal drew no such conclusion. It stated that, contrary to the findings of the Opposition Division, the catalogue contained specific information concerning the frequency, nature and content of conferences and training events organised by the intervener. It did not, however, express a view as to the probative value of that catalogue.

38 It follows that the Board of Appeal correctly applied Article 43(2) of Regulation No 40/94, and the case-law with regard to proof of use of the earlier trade mark. Consequently, the first plea in law must be rejected as unfounded.

The second plea in law, alleging infringement of Rule 22 of Regulation No 2868/95

Arguments of the parties

39 In the alternative, the applicant claims that the assessment of the Board of Appeal resulting from paragraphs 33 to 39 of the contested decision – that it is possible to ‘imply’ use of the earlier mark for the services on which the opposition was based – is erroneous and infringes Rule 22 of Regulation No 2868/95. Likewise, the intervener was required to prove use of the earlier trade mark across the entire range of those services.

40 OHIM and the intervener contest the applicant’s assertions.

Findings of the Court

41 Pursuant to Rule 22(2) of Regulation No 2868/95, proof of use is to consist of indications concerning the place, time, extent and nature of use of the earlier trade mark (see LA MER, paragraph 52).

42 According to Rule 22(3) of Regulation No 2868/95, the evidence is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 76(1)(f) of Regulation No 40/94 (now Article 78(1)(f) of Regulation No 207/2009) (judgment of 13 May 2009 in Case T-183/08 Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK) not published in the ECR, paragraph 25).

43 In this respect, proof of use of the earlier mark must fulfil all the conditions imposed by Rule 22(2) of Regulation No 2868/95. By contrast, concerning the nature of that evidence, Rule 22(3) of Regulation No 2868/95 contains only a list of examples of supporting documents and items, which does not therefore constitute an exhaustive list. It does not mean that all the types of supporting documents and items are required in order to prove the use of the earlier mark or that the types of supporting documents and items are confined to those set out in Rule 22(3) Regulation No 2868/95.

44 Contrary to the applicant’s assertions, the Board of Appeal did not consider, in paragraph 36 of the contested decision, that the intervener should be given the ‘benefit of the doubt’ in relation to a very broad range of services, and did not release the intervener from its obligation to furnish proof of use of the earlier mark. The Board of Appeal merely found that the services upon which the opposition was based were described in a very general and abstract manner and did not necessarily require the existence of a ‘direct bilateral link’ between the provider and the customer.

45 With regard to the applicant’s argument that the intervener ought to have shown use of the earlier trade mark for the whole range of services upon which the opposition was based, it is clear from the case-law that it is necessary to interpret the last sentence of Article 43(2) of Regulation No 40/94 and Article 43(3), which applies Article 43(2) to earlier national marks, as seeking to prevent a trade mark that has been used in relation to part of the goods or services for which it is registered being afforded extensive protection merely because it has been registered for a wide range of goods or services. Thus, when those provisions are applied, 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 (Case T-126/03 Reckitt Benckiser (España) v OHIM – Aladin (ALADIN) [2005] ECR II-2861, paragraph 44).

46 Thus, although the intervener is indeed under an obligation to show use of the earlier trade mark for each of the services upon which it based its opposition, it will be for the Opposition Division to ascertain that that was the case in this instance. It must however be pointed out that the Board of Appeal did not misapply Rule 22 of Regulation No 2868/95 and the second plea in law must therefore be rejected as unfounded.

47 It follows from all the foregoing that the action must be dismissed.

Costs

48 Under Article 87(2) of the Rules of Procedure, 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 OHIM and the intervener.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1. Dismisses the action;

2. Orders Strategi Group Ltd to pay the costs.

Czúcz

Labucka

O’Higgins

Delivered in open court in Luxembourg on 5 October 2010.

[Signatures]

* Language of the case: English.