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

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

10 December 2015 (*)

(Community trade mark — Revocation proceedings — Community figurative mark Vieta — Genuine use of the mark — Nature of use — Article 15(1) and Article 51(2) of Regulation (EC) No 207/2009 — Form differing in elements which do not alter the distinctive character of the mark — Proof of use for the registered goods)

In Case T‑690/14,

Sony Computer Entertainment Europe Limited, established in London (United Kingdom), represented by S. Malynicz, Barrister,

applicant,

v

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

defendant,

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

Marpefa, SL, established in Barcelona (Spain), represented by I. Barroso Sánchez-Lafuente, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 2 July 2014 (Case R 2100/2013-2), relating to revocation proceedings between Sony Computer Entertainment Europe Limited and Marpefa, SL,

THE GENERAL COURT (Sixth Chamber),

composed of S. Frimodt Nielsen, President, F. Dehousse and A.M. Collins (Rapporteur), Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 19 September 2014,

having regard to the response of OHIM lodged at the Court Registry on 27 February 2015,

having regard to the response of the intervener lodged at the Court Registry on 5 February 2015,

further to the hearing on 16 September 2015, in which the intervener did not participate,

gives the following

Judgment

 Background to the dispute

1        On 3 August 2000 Gedelson, SA filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) in accordance with 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 mark in respect of which registration is sought is the following figurative sign (the ‘contested mark’):

3        The goods in respect of which registration was sought are in Class 9 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 to the following description: ‘Recording discs, cleaning devices for recording discs, loudspeakers, loudspeaker systems, sound amplifiers, video tapes, magnetic tapes, cabinets for loudspeakers, video cameras, exposed cinematographic films, compact discs, transparencies, photographic apparatus, computers, video screens, apparatus for the reproduction of sound and images, television sets, record players’.

4        The contested mark was registered on 13 September 2001 under number 1790674 for the goods referred to in paragraph 3 above.

5        On 12 December 2002 the transfer of the contested mark to the intervener Marpefa, SL, was entered on the register of OHIM.

6        On 25 July 2010 the registration of the contested mark was renewed until 3 August 2020.

7        On 14 November 2011 the applicant, Sony Computer Entertainment Europe Ltd, filed an application pursuant to Article 51(1)(a) of Regulation No 207/2009 for the revocation of the contested mark for all the goods in respect of which it had been registered. In that request, the applicant claimed that that mark had not been put to genuine use in the European Union for the relevant period of five years and there were no proper reasons for non-use.

8        In reply to that application, on 21 March 2012, the intervener asserted that the contested mark had been put to genuine use, at least in Spain between 14 November 2006 and 13 November 2011, for all the goods referred to in paragraph 3 above and submitted the following evidence:

–        a study dated 29 July 2011, relating to the year 2010, of consumer electronics undertaken by the company GFK Emer, in which the market shares of different trade marks in Spain were shown, including a mark identified by the term ‘vieta’;

–        a catalogue of electronic goods (including car radios, personal navigation aids, portable DVD players, amplifiers, hi-fi speakers, projectors, docking stations for personal music players and smart phones) for the years 2008 and 2009, for the following figurative mark (‘the VIETA figurative mark’):

–        that catalogue also contained references to the term ‘vieta’;

–        a catalogue of electronic products for 2011 (including headphones, amplifiers, receivers, hi-fi speakers, DVD players, projectors, docking stations for personal music players, smart phones and car radios) on which the VIETA figurative mark (also represented in the colour grey) appeared;

–        an extract dated 20 July 2011, from the internet site of the Spanish daily newspaper El Mundo, containing an advertisement for a television with integrated DVD player bearing the VIETA figurative mark;

–        that extract also mentioned the term ‘vieta’;

–        an extract dated 20 July 2011, from the internet site ‘Google’, containing an advertisement published in El Mundo for a docking station for personal music players and smartphones bearing the VIETA figurative mark;

–        that advertisement also contained references to the term ‘vieta’;

–        an advertisement appearing in the 13 December 2009 edition of the Spanish daily newspaper ABC for a docking station for personal music players and smartphones bearing the VIETA figurative mark;

–        that advertisement also contained references to the term ‘vieta’;

–        a joint publication of 19 May 2010, from the Spanish daily newspaper La Crónica de León and the chain of shops Media Markt in Spain, for a docking station for personal music players and smartphones bearing the VIETA figurative sign;

–        advertisements appearing in brochures for 2009, 2010 and 2011 from the chain of shops Media Markt in Spain for electronic goods (including portable DVD players, hi-fi speakers and docking stations for personal music players and smartphones) bearing the VIETA figurative mark;

–        undated photographs from advertisements placed outside Media Markt shops in Spain for hi-fi systems and docking stations for personal music players and smartphones bearing the VIETA figurative mark;

–        advertisements appearing in brochures for the years 2010 and 2011 for the Saturn chain of shops in Spain for electronic goods (including hi-fi systems, portable DVD players, hi-fi speakers, car radios and docking stations for personal music players and smartphones) bearing the VIETA figurative mark;

–        advertisements appearing in brochures for the years 2009 and 2010 for the Racing chain of shops in Spain for car radios, portable DVD players and speakers for vehicles bearing the VIETA figurative mark;

–        advertisements appearing in brochures for the years 2008, 2009 and 2011 for the Norauto chain of shops in Spain for car radios and portable DVD players bearing the VIETA figurative mark;

–        those advertisements also contain references to the term ‘vieta’;

–        a book celebrating 50 years of the Vieta group of companies, in which the contested mark and the following signs appeared several times;

–        extracts dated 6 February 2012 from the home page of the internet site of the Vieta group of companies, detailing the four product ranges marketed by it, and mentioning the VIETA figurative mark;

–        extracts dated 6 February 2012 from the internet site of the Vieta group of companies, containing a history of that group, and presenting the figurative signs that it had used in the course of recent decades, namely:

–        invoices covering the period from 16 November 2006 to 30 September 2011, sent by Vieta Audio, SA to various clients established in Spain, Lithuania, the Netherlands and Portugal, relating to various electronic and audiovisual goods and each bearing at the top left, the VIETA figurative mark.

9        By decision of 23 August 2013 the Cancellation Division dismissed the application for revocation in relation to the following goods: ‘loudspeakers, loudspeaker systems, sound amplifiers’ and ‘computers, video screens, apparatus for the reproduction of sound and images, television sets and record players’. It allowed it in respect of the other goods covered by the contested mark.

10      On 28 October 2013 the applicant filed an appeal with OHIM seeking the annulment of the decision of the Cancellation Division to the extent that it dismissed the application for revocation.

11      On 2 January 2014 the applicant lodged its statement setting out the grounds of appeal.

12      On 24 March 2014 the intervener submitted its observations on that statement.

13      By decision of 2 July 2014 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. In essence, it found that the evidence adduced by the intervener demonstrated that the contested mark had been put to genuine use during the relevant period in relation to ‘loudspeakers, loudspeaker systems, sound amplifiers’ and ‘computers, video screens, apparatus for the reproduction of sound and images, television sets and record players’ falling within Class 9.

14      In the contested decision, in the first place, the Board of Appeal, after having noted the principles to be applied, indicated that the relevant period for assessing the genuine use of the contested mark extended from 14 November 2006 up to and including 13 November 2011 (paragraphs 17 to 24 of the contested decision).

15      In the second place, the Board of Appeal held that the requirements relating to the place of use were fulfilled in the present case. It took the view that there was no dispute that most of the evidence provided by the intervener demonstrated use of the contested mark in Spain, before indicating that it was clear from the judgment of 19 December 2012 in Leno Merken (C‑149/11, ECR, EU:C:2012:816), that use in a single Member State did not prevent the establishment of genuine use in the European Union, provided that the other conditions required are fulfilled. In particular, it added that some of the invoices submitted by the intervener were addressed to clients or buyers established in Lithuania, Portugal and the Netherlands (paragraphs 25 to 30 of the contested decision).

16      In the third place, in relation to the duration of use, the Board of Appeal held, in essence, that taken as a whole the evidence presented by the intervener showed the ‘frequency’ and ‘regularity’ of use of the contested mark in the European Union, in particular between 2008 and 2011 (paragraphs 31 to 33 of the contested decision).

17      In the fourth place, as regards the nature of use, the Board of Appeal held that the contested mark had not been used in a form which altered its distinctive character compared with the form in which it had been registered. In that regard, it first of all held that the evidence supplied contained the representation of the word mark ‘vieta’, and various stylisations of the term ‘vieta’ for different electronic product groups. Next, it observed that both the contested mark and the forms in which it was used in the evidence consisted of the word element ‘vieta’, and that in all the figurative marks at issue that word element was clearly dominant. It found that neither the typography nor the colour (black or grey) of the different representations of the term ‘vieta’, were sufficiently original or unusual to affect the distinctive character of the contested mark, which lies in that term. It also stated that it was perfectly normal for distributors in the trade sector not to reproduce figurative marks on their invoices for purely practical reasons. Furthermore, the contested mark appeared in some of the evidence in the form in which it had been registered. Lastly, it held that the fact that the VIETA figurative mark had itself been registered as a Community trade mark was irrelevant for the assessment of genuine use of the contested mark (paragraphs 34 to 40 of the contested decision).

18      In the fifth place, as regards the goods for which the marks had been used, the Board of Appeal considered that an overall assessment of the evidence presented by the intervener showed that the contested mark had been used to designate the goods referred to in paragraphs 13 above (paragraph 41 of the contested decision). It held in particular that those goods were ‘electronic, audio and vision systems, goods and products that either [included] or [formed] part of “apparatus for the reproduction of sounds and images”’, that ‘they all have the same or similar nature and purpose and are not only complementary but intrinsically connected’, and that ‘they belong to the “natural extension field”’. The Board added that the term ‘apparatus for the reproduction of sounds and images’ was defined sufficiently precisely and narrowly to denote the goods for which use had been shown and that there was no valid reason to make any significant sub-divisions within that category (paragraph 46 of the contested decision).

 Forms of order sought

19      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM and the intervener to pay the costs.

20      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

21      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

22      In support of its action, the applicant puts forward three pleas in law. The first plea in law alleges infringement of the first subparagraph of Article 15(1) of Regulation No 207/2009, in that the Board of Appeal wrongly held that the intervener had proved use of the contested mark in the form in which it had been registered. The second plea in law alleges infringement of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, in that the Board of Appeal wrongly held that the intervener had proved use of the contested mark in a form which differs from that mark in elements which do not alter the distinctive character of the mark in the form in which it has been registered. The third plea in law alleges infringement of the principle of partial use set out in Article 51(2) of Regulation No 207/2009.

23      It is appropriate to begin by considering the second plea.

 The second plea in law, alleging infringement of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009

24      The applicant claims that, according to the case-law of the Courts of the European Union, the interpretation of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 requires a rigorous approach, taking into account the graphic elements of the mark concerned. According to the applicant, that provision covers the situation in which that mark is used in trade in a ‘slightly different’ form from that in which it has been registered.

25      The applicant also submits that it is clear from the case-law of the General Court that the graphic elements of a mark must be taken into account in order to assess if it has been subject to use in accordance with point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009. However, in the present case the Board of Appeal confined itself to taking into consideration the fact that the signs appearing in the evidence, and the contested mark, all contained the term ‘vieta’.

26      According to the applicant, the Board of Appeal did not apply the appropriate legal test. First, it did not compare the distinctive character of the mark as registered and that as used, asking itself whether the distinctive character of the mark as registered was altered. Second, the Board of Appeal did not take account of the principle that any alteration of the distinctive character must be ‘slight’; instead, it applied a test of ‘overall impression’.

27      Lastly, the applicant compares the contested mark with the signs for which use during the relevant period has, according to it, been shown by the intervener and claims that the alteration of the distinctive character of the contested mark cannot be regarded as ‘slight’. Accordingly, first, the applicant submits that the contested mark and the VIETA figurative mark are radically different. Second, in relation to the contested mark and the sign constituted by the term ‘vieta’, the applicant observes that that sign completely lacks the ‘considerable stylisation’ which characterises that mark. According to it, the stylisation and the graphic elements of the contested mark contribute to its distinctive character.

28      OHIM and the intervener reject the applicant’s arguments. They place particular emphasis on the fact that the distinctive character of the contested mark lies in its word element ‘vieta’.

29      Under Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of the community trademark are to be declared to be revoked, on application to the OHIM, if within a continuous period of five years the trademark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

30      Article 15(1) of Regulation No 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 [European Union] 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 Regulation, unless there are proper reasons for non-use.

The following shall also constitute use within the meaning of the first subparagraph:

(a)      use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;

...’

31      The purpose of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, which avoids imposing strict conformity between the form of the trade mark used and the form in which the mark was registered, is to allow its proprietor in the commercial exploitation of the sign to make variations 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 accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, such that the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgment of 12 March 2014 in Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, EU:T:2014:119, paragraph 26 and the case-law cited).

32      A finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the added elements based on the intrinsic qualities of each of those elements and the relative position of the different elements within the arrangement of the trade mark (judgment in PALMA MULATA, cited in paragraph 31 above, EU:T:2014:119, paragraph 30).

33      In addition, Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, applicable mutatis mutandis in invalidity proceedings pursuant to Rule 40(5) of that regulation, provides that proof of use must relate to the place, time, nature and extent of use that was made of the mark.

34      In order to examine, in a particular case, 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. (judgments of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, ECR, EU:T:2004:225, paragraph 42, and MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, ECR, EU:T:2004:223, paragraph 36).

35      The question whether the Board of Appeal was entitled to find that the intervener had provided proof of genuine use of the mark at issue should therefore be examined in the light of the foregoing considerations.

36      In the present case, in the first place, it should be noted that the applicant does not challenge the contested decision as regards the Board of Appeal’s finding that the documents produced by the intervener in the course of the administrative proceedings provided sufficient proof of the place, duration and extent of the use of the contested mark. On the other hand, it considers that the documents do not establish the nature of the use made of the contested mark. According to the applicant, the forms in which the mark was used involved altering it from the form in which it was registered.

37      In the second place, it must be held that the contested mark, as it was registered, is a composite mark consisting of a word element and figurative elements. The word element ‘vieta’ is written in lower case letters in a grey, squared typeface, of different sizes (the letters ‘v’ and ‘a’ are identical in size but larger than the letters ‘i’ and ‘t’, which are themselves identical in size but larger than the letter ‘e’) and separated from each other by a small grey rectangle. That word element is placed within a rectangular border of which the right and left sides are thick, dark grey and both contain, in the middle, a small white rectangle.

38      It is clear from the evidence presented by the intervener in the course of the administrative proceedings that, during the relevant period, namely from 14 November 2006 until 13 November 2011 inclusive, the contested mark was used in the form of the VIETA figurative mark (also represented in grey) and in the form of the term ‘vieta’. Furthermore, the applicant expressly agrees with that finding.

39      It is true that, as the Board of Appeal held in paragraph 35 of the contested decision, the contested mark, as registered, and the signs referred to in the 18th indent of paragraph 8 above, are also represented in two of the pieces of evidence produced, namely the book celebrating 50 years of the Vieta group of companies and the extract from the internet site of that group of companies containing a history of that group (see paragraph 8 above).

40      However, neither of those pieces of evidence can be accepted as proof. First, as regards the abovementioned book, it must be observed that it is undated and, in any event, is outside the relevant period, having clearly been published around 2004 whilst the Vieta company was created in 1954. Second, as regards the extract from the internet site of the Vieta group of companies, that extract is dated 6 February 2012, which is thus also outside the relevant period.

41      First, a comparison must be made between the mark in the form in which it was registered, and the intervener’s VIETA figurative mark (also represented in grey), used in a number of the pieces of evidence produced by the latter during the administrative proceedings.

42      In that regard, it must be held, as the applicant correctly submits, that the registered form, on the one hand, and the form used, on the other hand, present certain figurative differences (see the description of the contested mark, in the form in which it was registered, in paragraph 37 above). On the other hand, both forms of the mark have the word element ‘vieta’ in common.

43      It is necessary therefore to examine whether, as the applicant submits, the figurative differences between the contested mark in the form thus used and the form in which it was registered are capable of altering the distinctive character of that mark.

44      In order to determine whether there is an alteration in the distinctive character of the mark, it is necessary to assess the distinctiveness and dominance of the elements omitted in the form of the earlier mark used on the basis of the intrinsic qualities of each of those elements and the relative position of the different elements in the arrangement of the mark in the form that it was registered (see judgment of 10 June 2010 in Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, EU:T:2010:229, paragraph 31 and the case-law cited, and judgment of 5 December 2013 in Olive Line International v OHIM — Carapelli Firenze (Maestro de Oliva), T‑4/12, EU:T:2013:628, paragraph 24).

45      According to the case law, where a mark is constituted or composed of a number of elements and one or more of them is not distinctive, the alteration of those elements or their omission is not capable of altering the distinctive character of that trade mark as a whole (judgment of 29 September 2011 in New Yorker SHK Jeans v OHIM — Vallis K.-Vallis A. (FISHBONE), T‑415/09, EU:T:2011:550, paragraph 61; see also, to that effect, judgment of 24 November 2005 in GfK v OHIM — BUS (Online Bus), T‑135/04, ECR, EU:T:2005:419, paragraphs 35 to 41).

46      Therefore, it must be determined whether the figurative elements of the contested mark, as it was registered, constitute a distinctive element thereof.

47      In that regard, it must be held that, in fact, as the Cancellation Division and the Board of Appeal correctly found, the distinctive character of the contested mark is essentially derived, not from its figurative elements, but from its word element ‘vieta’ (see paragraphs 36 and 37 of the contested decision).

48      That word element has a high level of distinctive character and occupies an important position in the overall impression created by the contested mark, as registered, whilst the figurative elements have only weak distinctive character and occupy merely an ancillary position in that overall impression. Those figurative elements, including the typeface used, have a relatively marginal visual impact. The rectangular border does not present any originality in relation to usual commercial use. As regards the figurative elements made up of, on the one hand, grey rectangles separating the letters of the word ‘vieta’ and, on the other hand, white rectangles appearing in the middle of the sides of the rectangular border, they are very small in size, are not striking and do not present any originality.

49      Furthermore, it must be recalled that when a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see judgment of 2 February 2011 in Oyster Cosmetics v OHIM — Kadabell (Oyster cosmetics), T‑437/09, EU:T:2011:23, paragraph 36 and the case-law cited).

50      In addition, the assessment by the Board of Appeal that the font and the colour (black or grey) of the representations of the term ‘vieta’ in the form of the contested mark used, namely in the form of the VIETA figurative mark, are not so original or unusual that they alter the distinctive character that the mark derives from that term (see paragraph 37 of the contested decision). The form used does not contain any figurative element that is dominant to the same extent as the term ‘vieta’ and has no inherent distinctive character whatsoever that would prevent the visual recognition of the contested mark, as registered. It is necessary to add, as OHIM correctly stated in its written submissions, that there is a ‘panoramic effect’ created both by the registered form and by the form in question used, even if that effect is more harmonious and more pronounced in the case of the form used.

51      Second, as regards the comparison of the contested mark, in the form registered, and the term ‘vieta’, which is reproduced in several of the pieces of evidence produced by the intervener during the administrative proceedings, it must be held, for the same reasons as those set out in paragraphs 46 to 49 above in relation to the VIETA figurative mark, that the use of that term constitutes an acceptable variation of the contested mark, for the purposes of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009.

52      In the third place, it must be held that it follows from the considerations set out in paragraphs 47, 48 and 50 above that the allegation made by the applicant that the Board of Appeal did not compare the distinctive character of the contested mark as it was registered and that of the mark as it was used, asking itself whether the distinctive character of the first mark was altered, is entirely unfounded on the facts.

53      In the fourth place, it must be held that the applicant cannot complain that the Board of Appeal applied in this case, in paragraph 37 of the contested decision, a criterion of ‘overall impression’. According to the case-law, it is relevant to examine whether the differences between the mark used and the mark as registered are capable or not of changing the overall impression created by that mark (see, to that effect, judgments of 10 June 2010 in Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, EU:T:2010:229, paragraph 42 and of 24 May 2012 in TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, EU:T:2012:263, paragraph 41).

54      It follows from all the foregoing considerations that the Board of Appeal was fully entitled to hold that the contested mark had been used in a form that did not alter its distinctive character. Consequently, the second plea in law must be rejected as unfounded.

55      In those circumstances, the first plea in law is ineffective since it raises the question whether the Board of Appeal also based its decision on the finding that the intervener had also demonstrated genuine use of the contested mark in the form in which it had been registered.

 The third plea, alleging infringement of Article 51(2) of Regulation No 207/2009

56      In the alternative, the applicant calls into question the findings made by the Board of Appeal in paragraph 46 of the contested decision, which it alleges are wrong both in fact and in law. It argues that ‘apparatus for reproduction of sound and images’ includes a very wide and diverse array of equipment, ranging from the professional to the domestic. According to it, it is clearly incompatible with the principle of partial use that the intervener should be allowed to keep a registration designating such a broad category of goods, within which it is possible to identify a number of sub-categories capable of being viewed independently. According to the applicant, the reasoning adopted by the Board of Appeal, in the abovementioned paragraph of the contested decision, would have the effect of allowing the trade mark proprietor, in every case where it shows an example of use within a broader category, to keep that designation. On that basis, the applicant concludes that the contested decision must be annulled in so far as it held that the intervener may retain the registration of the contested mark for ‘apparatus for reproduction of sound and images’. In response to questions on that matter at the hearing, the applicant made clear that it should be understood from its arguments that it intended to allege, in particular in that context, a breach of the principle of legal certainty, to the effect that it considered that the category of ‘apparatus for reproduction of sound and images’ was not defined with sufficient clarity and precision.

57      OHIM rejects those allegations. It explains that, in order to overcome certain problems in the classification of goods and services, it has developed, in collaboration with the EU national offices, the Benelux Office for Intellectual Property (BOIP) and the World Intellectual Property Organisation (WIPO), a taxonomy, that is to say a ‘hierarchical structure’ of goods and services based on the Nice Classification and going from the most general terms to the most specific. That structure was integrated inter alia into the ‘TMclass’ database for the classification of goods and services in the field of trade marks. OHIM claims that when the research terms ‘apparatus for reproduction of sound’ and ‘apparatus for reproduction of images’ are entered in that database those two terms appear at the lowest level of the tree structure for Class 9. There is therefore, according to OHIM, no subcategory under those terms and the category of ‘apparatus for reproduction of sound and images’ is not as wide as the applicant submits. For the remainder, OHIM refers to paragraphs 41 to 46 of the contested decision.

58      The intervener considers that genuine use of the contested mark has been validly shown for ‘apparatus for the reproduction of sound and images’.

59      In the context of the third plea, the applicant disputes the validity of the findings made by the Board of Appeal in paragraph 46, which reads as follows:

‘It is immediately clear that all the above listed goods [in paragraph 41 of the contested decision, namely receivers, amplifiers, loudspeakers, headphones, projectors, portable DVD players, TVs, HiFi equipment, radios, antenna, infrared headphones, portable TVs] as shown in the evidence filed, are types of electronic, audio and vision systems, goods and products that either include or form part of “apparatus for the reproduction of sound and images”. They all have the same or similar nature and purpose and are not only complementary but intrinsically connected. They belong to the “natural extension field”, as defined by the Court in the [judgment of 14 July 2005 in Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, ECR, EU:T:2005:288]. Furthermore, the term “apparatus for the reproduction of sounds and images” is defined sufficiently “precisely and narrowly” to denote the goods for which use had been shown and that there was no valid reason to make any significant sub-divisions within that category. ...’.

60      The applicant submits, in essence, that the protection afforded by the contested mark for ‘apparatus for the reproduction of sound and images’ applies to a category of goods that is far too broad and should be divided into subcategories.

61      It must be recalled that, according to the case-law, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (judgments of 14 July 2005 in Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, ECR, EU:T:2005:288, paragraph 45, and of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 23).

62      However, while the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. It must be observed in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories (judgment in ALADIN, cited in paragraph 61 above, EU:T:2005:288, paragraph 46).

63      In the present case, it must be held that, contrary to the finding by the Board of Appeal in paragraph 46 of the contested decision, the expression ‘apparatus for the reproduction of sound and images’ cannot be considered to be defined sufficiently ‘precisely and narrowly’. That is further demonstrated by the fact that, when requested at the hearing to state what that expression covers, OHIM was not able to give any conclusive answer at all.

64      The arguments that OHIM bases on the taxonomy cannot succeed.

65      First of all, as OHIM itself observes and as is apparent from Communication No 1/13 of the President of OHIM of 25 November 2013, that taxonomy, as integrated into the ‘TMclass’ database, is a purely administrative tool that does not constitute an alternative to the Nice classification and has no legal effect.

66      Next, as was expressly stated in the communication referred to in paragraph 65 above, the scope of protection of a Community trade mark is always defined by the natural and usual meaning of the terms chosen, not by their position in the hierarchical structure. As the applicant correctly submits, the expression ‘apparatus for the reproduction of sound and images’, understood in its natural and usual sense, is capable of including a wide array of audio-visual and electronic equipment, including equipment for which the Cancellation division found, in this case, that proof of genuine use had not been provided, such as video cameras or photographic apparatus.

67      Furthermore, as also noted by OHIM in its written submissions, the taxonomy had not yet been implemented when the Cancellation Division handed down its decision.

68      Finally, it must be held that OHIM itself admits that the category of ‘apparatus for the reproduction of sound and images’ can, at the very least, be subdivided into two sub-categories when it observes that, in the ‘TMclass’ database, the heading ‘Audio-visual and information technology equipment’ within Class 9 shows, ‘at the lowest level of the tree structure’ for that class, on the one hand, ‘apparatus for the reproduction of sound’ and, on the other hand, ‘apparatus for the reproduction of images’.

69      Having regard to the foregoing, the third plea in law must be upheld and, consequently, the contested decision must be annulled in so far as it found that genuine use of the contested mark had been proven for ‘apparatus for the reproduction of sound and images’ and, accordingly, that it dismissed the appeal against the decision of the Cancellation Division to reject the application for revocation of the contested mark for such apparatus.

70      The appeal must be dismissed in the remainder.

 Costs

71      Under Article 134(3) of the Rules of Procedure of the General Court, the parties are to bear their own costs where each party succeeds on some and fails on other heads.

72      In the present case the applicant, OHIM and the intervener have, respectively, partially failed in so far as the contested decision has been annulled in part. Consequently, each party must be ordered to bear its own costs.

On those grounds, 

THE GENERAL COURT (Sixth Chamber),

hereby:

1.      Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 2 July 2014 (Case R 2100/2013-2) in so far as it dismissed the appeal against the decision of the Cancellation Division to reject the application for the revocation of the Community figurative mark Vieta for ‘apparatus for the reproduction of sound and images’;

2.      Dismisses the action as to the remainder;

3.      Orders each party to bear its own costs.

Delivered in open court in Luxembourg on 10 December 2015.

[Signatures]

* *Language of the case: English.

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