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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

13 December 2016 (*)

(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark FONTOLIVA — Earlier national word mark FUENOLIVA — Relative ground for refusal — Validity of the registration of the earlier mark — Submission of new facts and evidence before the General Court — Genuine use of the earlier mark — Power to alter — Article 8(1)(b), Article 42(2) and (3) and Articles 65 and 76 of Regulation (EC) No 207/2009)

In Case T‑24/16,

Sovena Portugal — Consumer Goods, SA, established in Algés (Portugal), represented by D. Martins Pereira, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO having been

Mueloliva, SL, established in Córdoba (Spain),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 4 November 2015 (Case R 1813/2014-2), relating to opposition proceedings between Mueloliva and Sovena Portugal — Consumer Goods,

THE GENERAL COURT (Second Chamber),

composed, at the time of deliberation, of S. Gervasoni, acting as President, L. Madise (Rapporteur) and Z. Csehi, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 21 January 2016,

having regard to the response lodged at the Court Registry on 14 April 2016,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        The applicant, Sovena Portugal — Consumer Goods, SA, filed with the European Union Intellectual Property Office (EUIPO) an international registration designating the European Union based on the international registration No 1107792 of 19 January 2012 for the word mark FONTOLIVIA pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2        The goods in respect of which registration was sought are in Class 29 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Edible oils and fats; olive oils’.

3        The international registration was published in Community Trade Marks Bulletin No 49/2012 of 9 March 2012.

4        On 26 November 2012, Mueloliva, SL, the holder of an exclusive trade mark licence, filed a notice of opposition pursuant to Articles 41 and 156(1) of Regulation No 207/2009, to registration of the mark applied for.

5        The opposition was based on the earlier Spanish word mark FUENOLIVA, filed on 15 February 1975 and registered on 16 December 1977, designating ‘virgin olive oil’ in Class 29.

6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

7        On 14 May 2014, the Opposition Division upheld the opposition finding that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.

8        On 14 July 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

9        By decision of 4 November 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In the first place, it found that Mueloliva had provided, following the request to that effect made by the applicant, evidence of genuine use of the earlier Spanish trade mark FUENOLIVA for ‘virgin olive oil’ in Spain over the five-year period from 9 September 2007 to 8 September 2012 (‘the relevant period’). It referred, in that regard, to invoices, logistic data sheets, labels, two comparative studies and press articles produced by Mueloliva, and carried out an overall assessment of those items of evidence, whilst acknowledging that some of those items were not dated or did not date from the relevant period (paragraphs 14 to 32 of the contested decision). The Board of Appeal then held, in the assessment of the likelihood of confusion between the two marks at issue, that the relevant public was the general public in Spain, which displays an average degree of attention when buying oils and fats for human consumption (paragraphs 37 to 40 of the contested decision). The Board of Appeal noted that it was common ground between the parties that the goods covered by the word marks at issue were identical or highly similar (paragraphs 41 and 42 of the contested decision). In the comparison of the signs at issue, it observed that they both consist of a nine-letter word and have the term ‘oliva’ in common, that word in itself having a weak distinctive character in so far as it refers to goods derived from olives or containing olive oil. The impact of that word on the assessment of the likelihood of confusion between the marks at issue was, therefore, limited (paragraphs 46 to 48 of the contested decision). The Board of Appeal also added that, visually, the mere difference of two letters out of the nine comprising the word elements of the marks at issue was insufficient, having regard to the common term ‘oliva’, to avoid an overall impression of similarity. Phonetically, the word elements were similar and, conceptually, while the common term ‘oliva’ referred to olives or olive oil, the elements ‘fuen’ and ‘font’ both refer to the Spanish word ‘fuente’, meaning a fountain or spring, which would, at the very least, result in a similarity, if not an identity, between the marks at issue (paragraphs 49 to 51 of the contested decision). Having regard to all of the foregoing considerations, the Board of Appeal therefore held that, in the circumstances of the present case, there was a likelihood of confusion between the marks at issue (paragraphs 52 to 57 of the contested decision).

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision in its entirety;

–        ‘rectify the contested decision based on the grounds in this Action’ and ‘declare the granting of protection’ in the European Union to the international mark FONTOLIVA;

–        order EUIPO to pay the costs, including those incurred in the proceedings before EUIPO;

–        order Mueloliva to pay the costs incurred in the proceedings before EUIPO.

11      EUIPO contends that the Court should:

–        dismiss the action in its entirety;

–        order the applicant to pay the costs.

 Law

 Admissibility of the second head of claim

12      The applicant’s second head of claim must be understood as asking, first, that the Court reject the opposition brought by Mueloliva and, secondly, that it grant the application for protection in the European Union. In reality it asks the General Court to alter the contested decision, within the meaning of Article 65(3) of Regulation No 207/2009, by adopting the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation No 207/2009. However, as EUIPO notes, in accordance with Article 64(1) of the same regulation, the Board of Appeal may only exercise the powers that are within the competence of the department which was responsible for the decision under appeal or remit the case back to that department for further prosecution. In the present case, however, the decision which is contested before the Board of Appeal comes from an Opposition Division which has power to decide on opposition proceedings only and, where appropriate, if the objection is justified, to reject an application for protection in the European Union in respect of an international registration or registration of an EU trade mark, but which does not have power to grant that application. Furthermore, it must be recalled that having regard, first, to the registration procedure as laid down in the provisions of Title IV of Regulation No 207/2009, which first of all involves an initial control by an examiner, inter alia, in the light of the absolute grounds of refusal, then, if the result of that control is favourable, publication of the registration application with a view to allowing any potential opposition under the relative grounds for refusal and, secondly, to the provisions of Article 59 of that regulation concerning the persons entitled to appeal, according to which ‘any party to proceedings adversely affected by a decision may appeal’, a Board of Appeal would never be in a position to carry out a registration. Its decision can occur only in the context of an appeal brought against a decision taken following an initial unfavourable examination by an examiner, in which case, if it finds in favour of the appellant, the proceedings must continue by publication of the application for registration or in the context of proceedings against a decision of an Opposition Division, in which case, as has already been stated, it will not itself be able to grant the application for registration. Therefore, it is similarly not for the Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect (see, to that effect, judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 13).

13      Therefore, the applicant’s second head of claim must be rejected as inadmissible in so far as it asks that the Court grant the application for protection in the European Union. By contrast, it is admissible in so far as that head of claim seeks the rejection of the opposition filed by Mueloliva (see, to that effect, judgment of 26 September 2014, Koscher + Würtz v OHIM — Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, EU:T:2014:829, paragraphs 15, 18 and 40).

 Substance

14      In support of its application, the applicant puts forward, in essence, two pleas in law. The first alleges infringement of Article 42(2) and (3) of Regulation No 207/2009, read in conjunction with Article 15(1) and (2) of that regulation, and is directed at the inadequacy of the evidence of genuine use of the earlier national trade mark FUENOLIVA. The second plea in law alleges infringement of Article 8(1)(b) of Regulation No 207/2009 and comprises two parts. First, the applicant maintains that, when the Board of Appeal confirmed that the opposition was well founded, the registration of the earlier national mark FUENOLIVA, on which the opposition was based, had not been the subject of a renewal. Secondly, the applicant argues that there is no likelihood of confusion between the marks at issue. For those reasons, the applicant submits that the opposition to registration of its mark is unjustified.

15      First, it is necessary to examine the first part of the second plea in law.

 The first part of the second plea in law

16      The applicant states that it realised after the contested decision had been adopted that the proprietor of the earlier Spanish trade mark FUENOLIVA had not renewed the registration of that mark before the Board of Appeal adopted the contested decision. According to the applicant, the initial registration was applied for on 15 February 1975 and, since Spanish law provides that registrations are valid for 10 years from the date on which they are applied for, the registration ought to have been renewed on 15 February 2015. The update, on 2 December 2015, of the entry concerning the trade mark at issue, edited by the Oficina Española de Patentes y Marcas (Spanish Patent and Trade Mark Office), indicates that the expiry of its registration was recorded on 26 November 2015.

17      Referring to the judgment of 13 September 2006, MIP Metro v OHIM — Tesco Stores (METRO) (T‑191/04, EU:T:2006:254) and noting that the Court stated in that judgment that the Boards of Appeal exercise any power within the competence of the department which was responsible for the decision under appeal, except where the case is remitted to that department, and that they may not themselves adopt a decision that is unlawful at the time when they make a decision, the applicant submits that the Board of Appeal could not have upheld the opposition as being well founded.

18      The applicant adds that, at the beginning of January 2016, a new application for registration of a Spanish trade mark was filed in respect of the mark FUENOLIVA, designating olive oil, in the name of Fuentes Lopez, SL, without it being known whether that applicant has links with Mueloliva.

19      EUIPO, for its part, states that the contested decision was notified on 5 November 2015, and thus before the publication, on 2 December 2015, of the expiry of the earlier Spanish mark FUENOLIVA by the Spanish Patent and Trade Mark Office, and that, on the basis of the evidence adduced before the Opposition Division and the Board of Appeal, there was nothing to suggest that the registration of that mark would not be renewed, unlike the facts of the case which gave rise to the judgment of 13 September 2006, METRO (T‑191/04, EU:T:2006:254), in which the opponent had failed to adduce evidence of the renewal of the registration of its mark, even though the Opposition Division had requested it to adduce such evidence. According to EUIPO, the registration of the earlier Spanish mark FUENOLIVA was still valid when the Board of Appeal gave its decision.

20      It should be noted that the parties interpret differently the national law concerning the duration of validity of the registration of a mark. EUIPO appears to take the view that a trade mark registration with the Spanish Patent and Trade Mark Office remains valid as long as its expiry has not been published (in this case, on 2 December 2015), while the applicant takes the view that the registration of a Spanish trade mark ceases to be valid, in the absence of renewal, on the expiry of its 10-year validity period (in this case, on 15 February 2015). However, that difference in interpretation is irrelevant in the present case.

21      It is clear from settled case-law that the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted (judgments of 7 February 1979, France v Commission, 15/76 and 16/76, EU:C:1979:29, paragraphs 7 and 8; of 17 October 1989, Dow Benelux v Commission, 85/87, EU:C:1989:379, paragraph 49; order of 7 February 2013, Majtczak v Feng Shen Technology and OHIM, C‑266/12 P, not published, EU:C:2013:73, paragraph 45; and judgment of 21 January 2016, Laboratorios Ern v OHIM — michelle menard (Lenah.C), T‑802/14, not published, EU:T:2016:25, paragraph 15).

22      Thus, even if the registration of the earlier national mark FUENOLIVA had still been valid when the contested decision was adopted, even if only for a few weeks, regardless of the question of the burden of proof in respect of that situation, the Board of Appeal could rely on that premiss only to adopt the contested decision without the Court now being able to take account of the subsequent situation of expiry of the registration of the earlier national mark FUENOLIVA or, moreover, to rely on that situation to hold that there is no need to adjudicate (see, to that effect and by analogy, order of 8 May 2013, Cadila Healthcare v OHIM, C‑268/12 P, not published, EU:C:2013:296, paragraphs 32 and 33; judgments of 4 November 2008, Group Lottuss v OHIM — Ugly (COYOTE UGLY), T‑161/07, not published, EU:T:2008:473, paragraphs 49 and 50, and of 8 October 2014, Fuchs v OHIM — Les Complices (Star within a circle), T‑342/12, EU:T:2014:858, paragraph 24).

23      Assuming that, as the applicant maintains, the validity of the registration of the earlier Spanish mark FUENOLIVA had expired before the adoption of the contested decision, it must indeed be admitted, as was held in the judgment of 13 September 2006, METRO (T‑191/04, EU:T:2006:254, paragraph 32), that the function of an earlier mark as a means of identifying its origin cannot be undermined by another mark which is registered only after the term of protection of the earlier mark has expired and that, in the absence of any period during which the two marks coexist, no conflict can arise. However, it must be borne in mind, as was held in the judgment of 12 December 2002, eCopy v OHIM (ECOPY) (T‑247/01, EU:T:2002:319, paragraph 46) and in the judgment of 13 September 2010, KUKA Roboter v OHIM (Shade of orange) (T‑97/08, EU:T:2010:396, paragraph 11), that the legality of a decision of the Board of Appeal cannot be called into question by pleading new facts before the Court unless it is proved that the Board of Appeal ought to have taken those facts into account of its own motion during the administrative procedure before adopting its decision.

24      Therefore, in so far as neither the applicant nor Mueloliva has addressed the question of the expiry of the validity of the registration of the earlier national mark FUENOLIVA or provided evidence in that regard during the proceedings before the Board of Appeal, it is necessary to examine whether the Board should have raised that question of its own motion.

25      In the first place, it should be recalled that Article 41(3) of Regulation No 207/2009 and Rule 19(1) and (2)(a)(ii) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) provide, inter alia, that, within a period specified by EUIPO, the opposing party must provide proof of the existence, validity and scope of protection of its earlier mark and in particular, as regards an earlier mark other than an EU trade mark which has already been registered, a copy of the corresponding registration certificate and, as the case may be, of the latest renewal certificate showing that the term of protection of the trade mark extends beyond the time limit determined by EUIPO and any extension of that time limit, or equivalent documents emanating from the administration by which the trade mark was registered. Having regard to the title and the place of the abovementioned regulatory provisions within all the procedural provisions applicable to the EU trade mark (in title IV, ‘Registration Procedure’, Section 4, ‘Observations by third parties and opposition’, of Regulation No 207/2009 and, in Title II, ‘Procedure for opposition and proof of use’, of Regulation No 2868/95), and also having regard to Article 132(1) of Regulation No 207/2009, according to which an Opposition Division is to be responsible for taking decisions on an opposition to an application for registration of an EU trade mark, where the regulatory provisions at issue refer to ‘a period determined by EUIPO’, it must be held that this is the period determined by the Opposition Division after the opposition proceedings commence.

26      In the second place, even if the Boards of Appeal hearing appeals against decisions of the Opposition Divisions exercise the powers of those divisions as to the substance, the procedural framework which is applicable before the Boards of Appeal is not the same as that which applies before the Opposition Divisions. Thus, whereas before the Opposition Division the opposing party is required, in accordance with Rule 19(2)(a)(ii) of Regulation No 2868/95, to produce, within the period fixed by the Opposition Division for the provision of evidence necessary to support its opposition, evidence that the validity of the registration of the earlier mark exceeds that period, it must be found that the procedural rules that apply before the Boards of Appeal do not contain comparable provisions.

27      Among the procedural provisions concerning the adversarial principle and the pleas in law, arguments and facts to be set out which apply before the Boards of Appeal, Article 76 of Regulation No 207/2009, which is part, under Title IX of that regulation, entitled ‘Procedure’, of Section 1, concerning general procedural provisions applicable to the different adjudicating bodies of EUIPO and which concerns EUIPO’s examination of the facts of its own motion, provides:

‘1.      In proceedings before it [EUIPO] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought ...

2.      [EUIPO] may disregard facts or evidence which are not submitted in due time by the parties concerned.’

28      Furthermore, the first subparagraph of paragraph 1 of Rule 50 of Regulation No 2868/95, which features in Title X ‘Appeals’, indeed provides that, ‘unless otherwise provided, the provisions relating to proceedings before the department which has made the decision against which the appeal is brought shall be applicable to appeal proceedings mutatis mutandis’. However, the third subparagraph of the same paragraph sets out the following provision to the contrary:

‘Where the appeal is directed against a decision of an Opposition Division, the Board shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division in accordance with the Regulation and these Rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article [76(2) of Regulation No 207/2009].’

29      It does not follow from the abovementioned provisions, or from the other applicable procedural provisions, that a Board of Appeal hearing an appeal against a decision of an Opposition Division which has ruled on a relative ground for refusal of registration would itself be required to raise of its own motion the question of the expiry of the validity of the registration of the earlier mark after the expiry of the period set by the Opposition Division for the opposing party to produce evidence of that validity.

30      Furthermore, none of those provisions can be interpreted as requiring the opposing party to provide, on its own initiative, evidence that the registration of the earlier mark is valid until the time at which the Board of Appeal gives its ruling (see, by analogy, judgment of 29 July 2010, Anheuser-Busch v OHIM, C‑214/09 P, EU:C:2010:456, paragraphs 56 to 69).

31      The findings made in paragraphs 29 and 30 above are, however, without prejudice to the possibility for the applicant for the trade mark which has been the subject of the opposition proceedings to argue before the Board of Appeal that the evidence that the validity of the registration of the earlier mark has been maintained for a reasonable period, having regard to the proceedings before the Board of Appeal, was not adduced by the opponent, to encourage the latter to reply in that regard and the Board of Appeal to take that situation into account, in particular in the light of the procedural provisions referred to in paragraphs 27 and 28 above.

32      However, as already mentioned, it is apparent from the documents before the Court that the applicant did not raise the question of the maintenance of the validity of the registration of the earlier national mark FUENOLIVA before the Board of Appeal, although the year 2015, during which that registration would expire and would, if necessary, have to be renewed, was close, and indeed had already begun, even though the Registry of the Boards of Appeal had sent to the applicant, by letter of 4 February 2015, Mueloliva’s observations in response, stating that the Board hearing the case considered that it could deal with the case on the basis of the material in the file and, consequently, that a reply was not required. The applicant could still have raised the question of validity at that point by relying on the provisions of Article 76(2) of Regulation No 207/2009, which provide that ‘[EUIPO] may disregard facts or evidence which are not submitted in due time by the parties concerned’.

33      Those provisions have been interpreted as meaning that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties before EUIPO remains possible after the expiry of the periods to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of such facts and evidence which are invoked or produced out of time, as the case may be for the first time before the Board of Appeal (judgment of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 30; see also judgment of 11 December 2014, CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 44 and the case-law cited). Admittedly, as was stated in paragraph 28 above, Rule 50(1) of Regulation No 2868/95 lays down a specific scheme where an appeal is brought against a decision of an Opposition Division. Although the first subparagraph of Rule 50(1) establishes the principle that the provisions concerning proceedings before the department which has made the decision against which the appeal is brought are to be applicable to the appeal proceedings mutatis mutandis, the third subparagraph of Rule 50(1) departs from that principle in respect of appeals directed against a decision of an Opposition Division, providing that the Board of Appeal is to limit its examination of the appeal to facts and evidence presented within the time limits set or specified by the Opposition Division unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 76(2) of Regulation No 207/2009. In that context, the Board of Appeal would therefore have been able, if it had been raised before it, to take the view that it was necessary to take into consideration the question of the validity of the registration of the earlier national mark FUENOLIVA because of its possibly imminent expiry (see, to that effect, judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 32).

34      Therefore, in the light of the findings made in paragraphs 29 and 30 above, the Board of Appeal cannot be criticised for not having taken into account the possible non-renewal of the registration of the earlier national mark FUENOLIVA, on which the opposition was based, when it adopted the contested decision, irrespective of the definitive expiry date of that registration under Spanish law.

35      It follows from the foregoing that the first part of the second plea in law must be rejected.

 The first plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009, read in conjunction with Article 15(1) and (2) of that regulation

36      The applicant submits that the Opposition Division and the Board of Appeal made an incorrect analysis of the evidence adduced by Mueloliva to demonstrate genuine use of the earlier Spanish mark FUENOLIVA in Spain over the five-year period before the publication of the international registration designating the European Union in respect of the mark FONTOLIVA. After referring to a number of principles laid down in the case-law of the Courts of the European Union for the purpose of examining the existence of genuine use of an EU trade mark, and referring in particular to the judgment of 11 March 2003, Ansul (C‑40/01, EU:C:2003:145), the applicant submits that the evidence adduced by Mueloliva consisted of ten invoices, two logistic data sheets, three kinds of label, two extracts from comparative studies and press articles. The applicant points out in particular that one of the press articles dates from 2004 and is not within the relevant period, that the labels are not dated, although they could have been since they are intended for a food product, that the extract from one of the comparative studies cannot be dated, that, moreover, it is drafted in Spanish and has not been translated in its entirety (as were other documents) into the language of the case, namely, English, although it had been amended by hand to include partial translations and that, therefore, it was impossible to understand either its context or precise content, that the ten invoices from 2010 and 2011 are not consecutive and that there is nothing to prove that the other invoices sent in between those ten invoices covered sales under the earlier Spanish mark FUENOLIVA, that three of the ten invoices, moreover, bear the reference ‘FUE’ and not that of the earlier Spanish mark FUENOLIVA, whilst in addition other invoices also refer to the mark FUENSOL, that the logistic data sheets indicate neither dates nor recipients, that the other comparative study, dated 2007, does, admittedly, refer to the earlier Spanish mark FUENOLIVA but provides no objective indication as to the actual marketing of olive oil under that mark and in addition mentions the price of EUR 2.55 per litre, which differs from those referred to in the invoices from 2010 and 2011, which vary from EUR 1.74 to EUR 1.94 per litre. The applicant concludes from this that the only relevant items of evidence, namely seven invoices, were insufficient to demonstrate that, by contrast to what had been found by the Opposition Division and the Board of Appeal, ‘although the quantities are not excessive ... this is counterbalanced by the fact that the use has been relatively constant’. On the contrary, according to the applicant, the documentation supplied shows merely a token use of the earlier national mark FUENOLIVA for a few months in 2010 and for a single month in 2011, even though olive oil is an everyday food product, low in cost and generally sold in large quantities. The situation identified in the case-law, in which the interdependence between the factors to be taken into account in order to decide on the genuine use of an earlier mark can find such a use if a low volume of goods marketed under that mark is offset by the fact that use of the mark was extensive or very regular, is therefore in no way made out in the present case.

37      EUIPO, for its part, takes the view that the invoices produced by Mueloliva establish the sale of 3 500 units of olive oil in Spain, under the earlier Spanish mark FUENOLIVA, between 22 March 2010 and 31 October 2011, which is, in its view, sufficient to establish genuine use of that mark during the relevant period, particularly because other invoices must have been issued in between those invoices. The items of evidence which are undated, or which fall outside the reference period, reinforce that conclusion. Thus, the labels, which are usually not dated, confirm the use of the earlier Spanish mark FUENOLIVA and the evidence dated outside the relevant period makes possible a better understanding of the situation. EUIPO adds that the criticisms concerning the items of evidence which were not translated into the language of the case are not, in so far as they concern the lack of translation of those items, admissible before the Court because they have been advanced for the first time before it and because, in any event, Rule 22(6) of Regulation No 2868/95 gives EUIPO the discretion whether or not to ask the opponent for the translation into the language of the opposition proceedings of the evidence of genuine use of the earlier mark which has been set out in other languages. In the present case, the documents at issue are clearly comprehensible for the purpose of assessing the genuine use of the earlier Spanish mark FUENOLIVA. 

38      It should be recalled that it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of Regulation No 207/2009, and from Rule 22(3) of Regulation No 2868/95, 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 sound 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 those provisions 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 cases where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM — Wedi & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).

39      There is genuine use of a mark where it 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 was registered, in order to create or preserve an outlet for those goods or services; however, 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 earlier mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39; see also, to that effect and by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).

40      When assessing whether use of the earlier mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of that mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

41      As to the extent of the use to which the earlier 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 (judgments of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41, and of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35).

42      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. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. The turnover and the volume of sales of the goods under the earlier 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, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (judgments of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42, and of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36). Even minimal use may therefore be sufficient to be deemed genuine, provided that it is viewed as warranted, in the economic sector concerned, in order to maintain or create a market share for the goods or services protected by the mark (see, to that effect, judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraphs 70 and 72).

43      Nevertheless, 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 (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).

44      In the present case, the direct evidence of marketing of olive oil under the earlier Spanish mark FUENOLIVA during the relevant period adduced by Mueloliva is confined to seven invoices bearing the complete reference to the mark. The other three invoices produced bear the reference ‘Oliva intenso 15 x 1 PET CUAD FUE’, which does not support the conclusion that that reference, any more than the associated product code, refers to olive oil under the mark FUENOLIVA. In chronological order, the seven invoices bearing the complete reference to the earlier Spanish mark FUENOLIVA are dated 22 March, 6, 8 and 12 April, 11 June and 1 September 2010 and 6 February 2011. With the exception of the last invoice, they are all addressed to the same wholesaler. The first six invoices relate to a volume of 28 050 litres of oil FUENOLIVA SABOR INTENSO and the seventh relates to a volume of 14 040 litres of the same oil but in different packaging. Consequently, the direct evidence relates to invoices for a period of less than one year for a volume in the region of 42 000 litres. Those sales are in themselves insufficient to establish genuine use of the earlier Spanish mark FUENOLIVA. They are grouped over a relatively short period and the quantity concerned is low for an olive oil producer such as Mueloliva, which, according to one of the press articles that it produced in support of its opposition, controls 1.5% of the national market and 6% of the regional market (in Andalucia). Mueloliva has, moreover, described the invoices which it produced as ‘a brief example’ in its response to the applicant’s observations before the Opposition Division, and the Opposition Division accepted that ‘the sales figures contained in the invoices [were] not abundant’. It must be observed in this regard, as the applicant has noted, that olive oil is a widely-consumed food product, always available for purchase, and that, in that context, having regard to the scale of Mueloliva, such a use of the earlier Spanish mark FUENOLIVA cannot be regarded as a genuine use for the purpose of maintaining or creating a share in the market. The argument put forward by EUIPO that the invoices produced could be supplemented by other invoices cannot cast doubt on that assessment. Under Article 42(2) of Regulation No 207/2009 it is for the opposing party, if the applicant for registration of a new mark so requests, to furnish proof of genuine use of the earlier mark justifying the opposition to that registration. However, in the present case, Mueloliva has produced no invoice other than those on the file, notwithstanding the applicant’s criticism of their inadequacy in its observations of 20 January 2014 before the Opposition Division and in its additional written statement of 15 September 2015 before the Board of Appeal.

45      The other evidence adduced by Mueloliva to show genuine use of the earlier Spanish mark FUENOLIVA during the relevant period is itself, taken as a whole, tenuous. The logistic data sheets and the labels produced do not provide serious evidence of public and outward use of the earlier mark, in contrast, for example, to photographs of bottles with the same labels appearing in catalogues or prospectuses. One of the comparative studies referring to olive oil under the mark FUENOLIVA, namely, an environmental test, bears only the date 5 April 2001 in respect of the reference to that agricultural production, in other words, a date far removed from the relevant period. The other comparative study mentioning olive oil under the mark FUENOLIVA, namely a comparison of prices made by a consumers’ association, is dated 5 November 2007. That study may be considered to be evidence of the genuine use of the earlier Spanish mark FUENOLIVA at the start of the relevant period. The article on the website of that consumers’ association which comments on that study does not provide any additional evidence. The article on the website of a professional association dated January 2008 is itself a commentary on the preceding study and therefore also does not provide any additional material. The press article dated 15 April 2004, which deals with a change of ownership at Mueloliva, does, it is true, refer to the mark FUENOLIVA in the portfolio of marks of the opposing party; that article, however, on the one hand, predates significantly the relevant period and, on the other, provides no indication as to the actual use of the earlier Spanish mark FUENOLIVA. Lastly, the extract from the Singapore Government website on healthy eating, the date of creation of which is hard to determine even though there is a commentary there from April 2012 and another from February 2013, indeed mentions, amongst a large number of oils and fats, the oil fuenoliva Pomace Olive Oil ‑1L, but, at the very least, provides no indication as to the use of the earlier Spanish mark FUENOLIVA for virgin olive oil in Spain, these being respectively the product and the territory in relation to which genuine use of that mark had to be proved.

46      It follows from the foregoing that the tangible evidence of use of the earlier Spanish mark FUENOLIVA during the relevant period, capable of justifying the opposition to the international registration designating the European Union for the mark FONTOLIVA, shows only that the earlier Spanish mark FUENOLIVA was used at the end of 2007, with no indication of the sales volume, and from March 2010 to February 2011 for low sales volumes. Taken as a whole, the evidence adduced by Mueloliva cannot, therefore, contrary to what was found by the Opposition Division and confirmed by the Board of Appeal, establish a relatively constant use of the earlier mark capable of offsetting the low product sales under that mark.

47      It follows that genuine use of the earlier Spanish mark FUENOLIVA in Spain for virgin olive oil during the relevant period has not been established by Mueloliva in regard to the criteria referred to in paragraphs 38 to 43 above, in particular having regard to the low volumes which were proved to have been marketed under that mark and the irregular nature of the sales in question during the relevant period in relation to the opposing party’s olive-oil-production capacity and the characteristics of that mass-consumption food product. The applicant’s first plea in law is therefore well founded.

48      Accordingly, the contested decision must be annulled, without it being necessary to examine the second part of the second plea put forward by the applicant.

49      Furthermore, with regard to the applicant’s request that the Court alter the contested decision, while the power of the Court to alter decisions under Article 65(3) of Regulation No 207/2009 does not have the effect of conferring on the Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position, the Court can exercise its power to alter decisions in situations in which, after reviewing an assessment made by the Board of Appeal, it is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).

50      In the present case, as Mueloliva has already had ample opportunity to submit, in 2013 and 2014, evidence to the Opposition Division and to the Board of Appeal of genuine use of the earlier Spanish mark FUENOLIVA during the relevant period, and as the Board of Appeal has given a ruling in that regard and the absence of demonstration of such use allows the opposition to be rejected, the Court decides, pursuant to Article 65(3) of Regulation No 207/2009, to alter the contested decision and to reject the opposition.

 Costs

51      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has essentially been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

52      Furthermore, the applicant has applied for an order that EUIPO and MUELOLIVA pay the costs which were incurred by the applicant in the proceedings before EUIPO.

53      In this regard, it must be borne in mind that, pursuant to Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case in respect of the costs incurred for the purposes of proceedings before the Opposition Division.

54      Accordingly, in so far as the applicant’s claim concerns the costs relating to the proceedings before the Opposition Division, it cannot be allowed. By contrast, in respect of the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal, EUIPO and Mueloliva must each be ordered to pay half of those costs.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 November 2015 (Case R 1813/2014-2);

2.      Rejects the opposition filed by Mueloliva, SL to the international registration designating the European Union in respect of the word mark FONTOLIVA applied for by Sovena Portugal — Consumer Goods, SA;

3.      Dismisses the action as to the remainder;

4.      Orders EUIPO to bear its own costs and to pay those incurred by Sovena Portugal — Consumer Goods for the purposes of the proceedings before the Court;

5.      Orders EUIPO and Mueloliva each to pay half of the costs necessarily incurred by Sovena Portugal — Consumer Goods for the purposes of the proceedings before the Board of Appeal of EUIPO. 

Delivered in open court in Luxembourg on 13 December 2016.

* Language of the case: English.

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