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

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

14 December 2016 (*)

(EU trade mark — Revocation proceedings — EU figurative mark PAL — Partial revocation — Genuine use of the mark — Article 15(1)(a) and Article 51(1)(a) of Regulation (EC) No 207/2009 — Form differing from the registered mark — Rule 22(3) and (4) of Regulation (EC) No 2868/95)

In Case T‑397/15,

PAL-Bullermann GmbH, established in Friesoythe-Markhausen (Germany), represented by J. Eberhardt, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Walicka, acting as Agent,

defendant,

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

Symaga, SA, established in Villarta de San Juan (Spain), represented by A. Tarí Lázaro, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 7 May 2015 (Case R 1626/2014-1) relating to revocation proceedings between PAL-Bullermann and Symaga,

THE GENERAL COURT (Sixth Chamber),

composed, at the time of deliberation, of S. Frimodt Nielsen, President, A.M. Collins (Rapporteur) and V. Valančius, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 17 July 2015,

having regard to the response of EUIPO lodged at the Court Registry on 22 October 2015,

having regard to the response of the intervener lodged at the Court Registry on 7 October 2015,

further to the hearing on 5 October 2016,

gives the following

Judgment

 Background to the dispute

1        On 17 November 1997, Produits Avicoles Lillois — PAL, the former proprietor of the EU trade mark at issue, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 European Union trade mark (OJ 2009 L 78, p. 1)).

2        Registration as a mark was sought for the following figurative sign (‘the contested mark’):

3        The goods in respect of which registration was sought are in, inter alia, Classes 7 and 21 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 7: ‘Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs’;

–        Class 21: ‘Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool, unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes’.

4        The contested mark was registered on 25 May 1999 under number 690750 for the goods mentioned in paragraph 3 above.

5        On 4 July 2013, the transfer of the contested mark to the intervener, Symaga, SA, was recorded in EUIPO’s register.

6        On 15 August 2013, the applicant, PAL-Bullermann GmbH, filed an application for revocation of the contested mark pursuant to Article 51(1)(a) of Regulation No 207/2009 for all the goods for which it had been registered. In that application, it claimed that the mark had not been put to genuine use in the European Union during the relevant five-year period.

7        In response to that application, on 26 November 2013, the intervener stated that because the contested mark had been assigned to it by order of the Tribunal de commerce de Dunkerque (Dunkirk Commercial Court, France) in July 2013, it was difficult to obtain evidence of use covering the period prior to the assignment. It submitted the following evidence:

–        invoices for the years 2010 to 2012;

–        2012 price list;

–        2012 PAL product catalogue.

8        By decision of 28 April 2014, the Cancellation Division dismissed the application for revocation for the following goods: ‘Machines for poultry breeding; motors and engines (except for land vehicles)’. It allowed the application for the other goods covered by the contested mark.

9        On 27 June 2014, the applicant filed a notice of appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009, seeking the annulment of the Cancellation Division’s decision in so far as it dismissed the application for revocation.

10      On 5 August 2014, the applicant filed the statement setting out the grounds of appeal.

11      On 22 September 2014, the intervener submitted its observations on that statement, which included an ancillary appeal according to which there was sufficient evidence to show that the contested mark had been used in respect of various goods in Classes 7 and 21.

12      By decision of 7 May 2015 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the applicant’s appeal and upheld in part the ancillary appeal filed by the intervener. In essence, it held that the evidence the intervener produced showed that the contested mark had been put to genuine use in the European Union during the relevant period not only for ‘machines for poultry breeding; motors and engines (except for land vehicles)’ but also for ‘agricultural implements for use in poultry breeding’ in Class 7.

13      In the contested decision, after recalling the applicable principles, the Board of Appeal stated, first, that the relevant period for assessment of genuine use of the contested mark extended from 15 August 2008 to 14 August 2013 inclusive (‘the relevant period’) (paragraphs 24 to 31 of the contested decision). That finding is not disputed by the parties.

14      Secondly, with regard to the nature of the use, the Board of Appeal held that the contested mark had not been used in a form that altered its distinctive character in the form in which it had been registered. In that regard, first of all, it found that the signs used in the evidence differed from the contested mark in that the figurative element was absent. Next, it held that that figurative element conveyed no specific concept and enjoyed no intrinsic distinctive character, even though it was a striking feature of the contested mark. Lastly, it noted that the forms of the mark used in the evidence included the word ‘pal’ and that even the addition of the words ‘industries the centre of evolution’, together with the orange and red circular element, did not alter the distinctive character of the contested mark (paragraphs 33 to 37 of the contested decision).

15      Thirdly, the Board of Appeal held that the requirements relating to the place of use were met in the present case. It found that the evidence as a whole, including numerous invoices, indicated that the contested mark had been used in a substantial part of the European Union, namely in Belgium, Germany and in various parts of France, including the island of Réunion, as well as Poland and the United Kingdom (paragraph 47 of the contested decision).

16      Fourthly, with regard to the goods for which the marks had been used, the Board of Appeal held that an assessment of the evidence submitted by the intervener showed that the contested mark had not been used for the goods in Class 21 and for certain goods in Class 7, namely ‘incubators for eggs; machine coupling and transmission components (except for land vehicles)’. It held that for other goods in that latter class, namely ‘machines and machine tools; motors and engines (except for land vehicles); agricultural implements; all for use other than for poultry breeding’, no evidence of use had been submitted. On the other hand, the evidence showed genuine use of the contested mark for ‘machines and machine tools; motors and engines (except for land vehicles); agricultural implements; all for use in poultry breeding’ (‘the relevant goods’) in so far as poultry breeding was sufficiently distinct to constitute a coherent category or subcategory in accordance with the case-law deriving from the judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288 (paragraphs 49 and 50 of the contested decision).

 Procedure and forms of order sought

17      The applicant claims that the Court should:

–        vary the contested decision so that the application for revocation is upheld in its entirety;

–        order EUIPO and the intervener to pay the costs.

18      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

19      In support of its action, the applicant raises two pleas in law. The first plea in law alleges the infringement of Article 15(1)(a) of Regulation No 207/2009 in so far as the Board of Appeal erroneously concluded that the intervener had submitted evidence of use of the contested mark in a form differing in elements which do not alter the distinctive character of the mark in its registered form. The second plea in law concerns the infringement of Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) in so far as the Board of Appeal disregarded the requirements relating to proof of the place, time, nature and extent of use of the contested mark.

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

20      The applicant argues that the Board of Appeal of EUIPO incorrectly held that the documents the intervener put in evidence proved that the contested mark had been put to genuine use in respect of the relevant goods. The Board of Appeal disregarded the important figurative element in its analysis and wrongly held that the word element ‘pal’ dominated the contested mark. In so doing, the Board of Appeal treated the contested mark as a word mark and thereby disregarded its nature as a composite mark. In addition, it is apparent from the file that none of the signs used reproduced the contested mark and that all the representations in the evidence produced had the effect of altering the distinctive character of that mark.

21      EUIPO and the intervener dispute the applicant’s arguments.

22      Under Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark 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.

23      The purpose of Article 15(1)(a) of Regulation No 207/2009 is to avoid imposing strict conformity between the used form of the trade mark and the form in which the mark was registered and to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, 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 such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgment of 23 February 2006, Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 50).

24      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 of 12 March 2014, Borrajo Canelo v Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 30; see also judgment of 10 June 2010, Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 31 and case-law cited).

25      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 (see judgment of 10 December 2015, Sony Computer Entertainment Europe v OHIM — Marpefa (Vieta), T‑690/14, not published, EU:T:2015:950, paragraph 34 and the case-law cited).

26      It must be examined, in the light of the rules set out in paragraphs 23 to 25 above, whether, in the present case, the differences between the sign in its registered form and the sign in its forms used on the market are such as to alter the distinctive character of the contested mark in the form in which it was registered.

27      In the first place, it is to be noted that the contested mark, as registered, is a composite mark composed of a word element and a figurative element. The word element ‘pal’ is in white capital letters, slightly inclined to the right, against a black background and at the centre of a slightly flattened parallelogram. The figurative element is composed of that black parallelogram and a second parallelogram, also slightly flattened, with a white background and resting on top of the first parallelogram.

28      In the second place, it is not disputed that, for the relevant period, only the use of other signs was established during the procedure before EUIPO. In order to prove that the contested mark had been put to genuine use, the intervener produced several documents in the context of that procedure.

29      Document No 1 includes over 200 invoices issued from 2010 to 2012 all of which contain the following figurative sign:

30      Document No 2, which comprises 13 pages, is PAL Industries’ 2012 price list specifying the code for that company’s products, the description and prices in euros, entitled ‘Liste de références de produit PAL — PAL Product Referents [sic] List’. The first page of that document contains the following figurative sign:

31      Document No 3, the first page of which contains the same figurative sign as that in document No 2, is PAL Industries’ 2012 product catalogue, which is in French and English. In that catalogue, there are 40 pages of images and reference numbers for the goods set out, each one under the simple word element ‘pal’.

32      In the third place, it is to be noted that, as the Board of Appeal essentially found in paragraph 36 of the contested decision, the contested mark derives its distinctive character from its word element which indeed dominates the mark. It must be held, as the Board of Appeal found, that the figurative element of that mark acts essentially as a frame, in particular the black background, in order to highlight the presence of the word element ‘pal’. Consequently, the figurative element occupies a secondary position in the overall impression produced by the mark and will be perceived by the relevant public as a purely decorative element. It will not, therefore, by perceived by that public as having the function of distinguishing the goods concerned from those of other undertakings. It follows that the relevant public will not engage in an in-depth analysis of the figurative element, which has no intrinsic semantic content of its own. Contrary to the applicant’s claims, the relevant consumers in the present case will not arrive at a semantic association between the figurative element and the concepts of ‘the way forward’, an ‘arrow’ or ‘sloping roof’, since those concepts have no meaning in relation to goods marketed in the sector for poultry breeding. The specialist nature of the relevant public, which is apparent from the documents in the case, and is indeed acknowledged by the parties, does not alter that conclusion.

33      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 of the relevant public will more easily refer to the goods in question by citing the word elements rather than describing the figurative elements of the mark (see judgment of 12 March 2014, PALMA MULATA, T‑381/12, not published, EU:T:2014:119, paragraph 38 and the case-law cited). In the present case, as the Board of Appeal correctly observed, phonetically, the consumer will, through the use of the word ‘pal’, be referred back to the contested mark.

34      The Board of Appeal did not, therefore, err in finding that the figurative element of the contested mark ‘convey[ed] no specific concept and enjoy[ed] no intrinsic distinctive character even though it [wa]s a striking feature’ and that that mark consisted principally of the word ‘pal’. Contrary to the applicant’s claims, such a conclusion as to the contested mark’s distinctive character cannot be placed on the same footing as treating that composite mark as merely a word mark.

35      In the fourth place, as regards the signs as they are used, in the first form of use in the catalogue (document No 3, paragraph 31 above), the word ‘pal’ appears in capital letters and is used alone for each product listed, as the Board of Appeal notes in paragraph 33 of the contested decision. In addition, the price list (document No 2, paragraph 30 above), refers to the ‘pal’ goods and that word is also in capitals. It must, therefore, be held that, in the form in which the contested mark was used on the market, the presentation and configuration of the word element remain almost identical to those of the contested mark as registered. As is apparent from paragraph 34 above, the figurative element of the contested mark was insufficiently distinctive, in the present case, to be taken into account. Consequently, the omission of that figurative element of the contested mark, as registered, cannot be considered to have altered that mark’s distinctive character. It must be concluded from this that, by means of documents Nos 2 and 3, the intervener proved the use of the contested mark in respect of the relevant goods, without prejudice to the examination of the second plea in law, which essentially relates to the extent of that use.

36      It follows that, contrary to the applicant’s claims, the Board of Appeal applied the case-law according to which it is only if the element of the earlier mark as registered, which is omitted in the signs as used, is in a secondary position and not distinctive that its omission does not alter the distinctive character of the trade mark (see judgment of 18 November 2015, Menelaus v OHIM — Garcia Mahiques (VIGOR), T‑361/13, EU:T:2015:859, paragraph 75 and the case-law cited).

37      As regards the second form of use, reproduced in paragraph 29 above, it must be found that that sign does not substantially alter the distinctive character of the contested mark. Admittedly, that sign does not appear against a black background and includes orange and red circular elements and also the words ‘Industries The Centre Of Evolution’. However, those elements and words will be understood as secondary additions. In particular, the figurative elements will be perceived as decorative elements that are weakly distinctive and negligible. On the other hand, it must be found that the word element ‘pal’, in capital letters and placed conspicuously at the centre, dominates that sign. As the Board of Appeal correctly held at paragraph 37 of the contested decision, the additional words are appreciably smaller than the word ‘pal’ and their position is thus clearly secondary. In addition, the Board of Appeal’s conclusion that those words are general in meaning and have a certain descriptive character because they designate the characteristics of the undertaking must be endorsed. It must be concluded from this that the word element ‘pal’ is the distinctive, dominant element of that sign, as is also true of the contested mark.

38      Similar considerations apply to the third form of use, reproduced in paragraph 30 above, which is dominated by the word ‘pal’ in capitals, accompanied by the word element ‘industries’, which is secondary and designates the undertaking. That sign must, therefore, also be considered equivalent to the contested mark.

39      In the fifth place, it must be found that the other arguments put forward by the applicant cannot call those assessments into question

40      First, the argument that the sign used in the invoices (reproduced in paragraph 29 above) shows only the use of the EU mark No 8818809 must be rejected. As the EU Courts have already held, the condition of genuine use of a trade mark, within the meaning of Article 15(1) of Regulation No 207/2009, may be satisfied where the trade mark is used only through another composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark, provided that the trade mark continues to be perceived as indicative of the origin of the product at issue (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 26 and the case-law cited). It is apparent from the analysis in paragraph 37 above that the differences between the form in which the contested mark is used in the invoices and that in which it was registered do not alter the distinctive character of that mark as registered. Consequently, the fact that the form used in the invoices constitutes itself another EU mark is irrelevant in the present case.

41      Secondly, the applicant’s arguments put forward at the hearing, based on the judgment of 15 December 2015, LTJ Diffusion v OHIM — Arthur et Aston (ARTHUR & ASTON) (T‑83/14, EU:T:2015:974), delivered during the course of the present proceedings, must be rejected. In that judgment, the Court held that although the word element constituted the dominant element of the mark in its registered form, its distinctiveness came not only from that word element but also from its visual presentation, which, although secondary, was neither negligible nor banal. That is not the case here, where the signs used and the contested mark may be regarded as broadly equivalent within the meaning of the case-law cited in paragraph 23 above. As is apparent from the considerations in paragraphs 32 to 34 above, the figurative element of the contested mark is devoid of any distinctive character.

42      Thirdly, as regards the argument by which the applicant challenges the Board of Appeal’s assessment of the relevance of the price list and catalogue as evidence, it must be found that that argument is essentially encompassed by the second plea in law and will therefore be examined below.

43      It follows from all of the foregoing that the first plea in law must be rejected.

 Second plea in law, alleging infringement of Rule 22(3) and (4) of Regulation No 2868/95

44      The applicant submits that the Board of Appeal infringed Rule 22 of Regulation No 2868/95 in so far as the evidence the intervener produced did not meet the minimum standards for providing sufficient proof on the time and extent of use of the contested mark. First of all, the documents do not show the extent of the circulation and distribution of the goods or if those goods were really directed to customers. In particular, the invoices for 2010 and 2011 cannot be based on the 2012 catalogue. Next, there is no evidence that the word ‘pal’ was used in the catalogues from 2010 or 2011. Lastly, the Board of Appeal cannot legitimately find, on the basis of reference numbers for goods in the 2012 price list and catalogue, that those goods were marketed under the word ‘pal’. The contested decision is, therefore, based on probabilities and suppositions.

45      EUIPO and the intervener dispute the applicant’s arguments.

46      Under Rule 22(3) of Regulation No 2868/95 — which applies mutatis mutandis in revocation proceedings in accordance with Rule 40(5) of that regulation — the proof of use must relate to the place, time, extent and nature of use of the mark. Under Rule 22(4), the evidence must, in principle, 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 78(1)(f) of Regulation No 207/2009.

47      According to settled case-law, it is apparent from Article 57(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of that regulation, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of 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 the case where large-scale commercial use has been made of the marks. There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 18 November 2015, VIGOR, T‑361/13, EU:T:2015:859, paragraphs 84 and 85 and the case-law cited).

48      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 18 November 2015, VIGOR, T‑361/13, EU:T:2015:859, paragraph 86 and the case-law cited).

49      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. In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case. Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 18 November 2015, VIGOR, T‑361/13, EU:T:2015:859, paragraphs 87 to 89 and the case-law cited).

50      Whether the Board of Appeal rightly found, in paragraph 50 of the contested decision, that the proof of genuine use of the contested mark had been provided in respect of the relevant goods during the relevant period must be assessed in the light of those considerations.

51      In the first place, as regards the circulation and distribution of the relevant goods, the Board of Appeal held that the evidence considered as a whole showed that that mark had been put to genuine use in respect of the relevant goods. It must be found that, as is apparent from document No 1, the invoices were addressed to various companies in Belgium, Germany, various French départments and Poland and that the applicant was the main customer in Germany for the years 2010 and 2011. The invoices generally concerned a small number of regular customers in each of those countries, with the exception of two specific invoices issued to customers in Réunion and Guadeloupe. Since the quantity of each of those invoices is not determinative according to the case-law cited in paragraph 47 above, the Board of Appeal’s conclusion that the relevant goods had actually been marketed in the European Union must be endorsed. In addition, the applicant’s argument in that regard, in paragraph 43 of the application, consists in a simple assertion, which cannot call that assessment into question.

52      In the second place, the applicant essentially challenges the link the Board of Appeal established between the goods designated by the sign ‘pal’ in the catalogue and price list for 2012, on the one hand, and the 2010 and 2011 invoices, on the other. It adds that the intervener has failed to provide the additional evidence required on the use and extent of the circulation of the 2012 catalogue. It must be found that by that line of argument the applicant does not call into question the relevance of the approximately 100 invoices relating to 2012 issued to various customers in France.

53      It is to be noted that, according to the case-law, the fact that the contested mark is not referred to on invoices cannot prove that the latter are irrelevant for the purposes of proving genuine use of that mark (see, to that effect, judgment of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 65). The invoices are designed to reproduce the list of goods sold, so that they must include the number or name of the item concerned, possibly accompanied by the contested mark (see, to that effect, judgment of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 59).

54      In addition, it must be noted that, according to the case-law, a link between the contested mark and the goods concerned may be established without its being necessary for the mark to be affixed on the goods (judgments of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraphs 21 to 23, and 6 March 2014, Anapurna v OHIM — Annapurna (ANNAPURNA), T‑71/13, not published, EU:T:2014:105, paragraph 44).

55      In the present case, it must be held that, as the Board of Appeal correctly notes, each of the invoices in document No 1 relates to significant amounts and quantities and the items invoiced are identified by a product reference code and an abbreviated description. It did not err in holding, in paragraph 40 of the contested decision, that the codes entered on those invoices corresponded to the references contained in the price list and the catalogue for 2012 and that they refer to the various relevant products distributed under the name pal. Contrary to the applicant’s claims, the contested mark appears under that name on the first page of that price list and the catalogue, and also beside each product listed in the catalogue, which is sufficient, pursuant to the case-law cited in paragraph 53 above, to establish a link between those products and the contested mark. In addition, it must be found that all of the invoices produced for the three years contain the contested mark as included in the EU mark No 8818809, and the address of the internet site and the contact email in which the contested mark also appears.

56      Consequently, contrary to the applicant’s claims, the Board of Appeal was entitled to rely upon such evidence for the purposes of establishing that the contested mark had been put to genuine use, at least for the year 2012. In that regard, all the facts and circumstances are sufficient to establish the true position of the commercial exploitation of the contested mark in France, a territory sufficient for the purposes of assessing genuine use within the European Union during the relevant period. According to the case-law, there is no de minimis rule laid down in that domain (see judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 55 and the case-law cited). The applicant has indeed not put forward a single argument to call into question the reliability of that year’s invoices.

57      Consequently, the Board of Appeal was fully entitled to hold that the intervener had provided proof of the contested mark’s genuine use.

58      The applicant’s second plea in law must, therefore, be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

59      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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders PAL-Bullermann GmbH to pay the costs.

Frimodt NielsenCollinsValančius

Delivered in open court in Luxembourg on 14 December 2016.

E. CoulonS. Frimodt Nielsen

* Language of the case: English.

© European Union
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