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

Provisional text

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

4 October 2017 (*)

(EU trade mark — Revocation proceedings — EU word mark INTESA — Article 51(1)(a) and (2) of Regulation (EC) No 207/2009 (now Article 58(1)(a) and (2) of Regulation (EU) 2017/1001 — No genuine use of the trade mark)

In Case T‑143/16,

Intesa Sanpaolo SpA, established in Turin (Italy), represented by P. Pozzi and G. Ghisletti, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

defendant,

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

Intesia Group Holding GmbH, established in Böblingen (Germany), represented by D. Jochim and R. Egerer, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 21 January 2016 (Case R 632/2015-1), relating to revocation proceedings between Intesia Group Holding and Intesa Sanpaolo,

THE GENERAL COURT (Sixth Chamber),

composed of G. Berardis, President, S. Papasavvas and O. Spineanu-Matei (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 4 April 2016,

having regard to the response of EUIPO lodged at the Court Registry on 20 June 2016,

having regard to the response of the intervener lodged at the Court Registry on 20 June 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        On 21 March 2003, the applicant, Intesa Sanpaolo SpA, 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), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

2        Registration as a mark was sought for the word sign INTESA.

3        The goods and services in respect of which registration was sought are in Classes 16, 35, 36, 38, 41 and 42 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 16: ‘Bookbinding material; photographs; artists’ materials; paint brushes; plastic materials for packaging (not included in other classes)’;

–        Class 35: ‘Advertising; business management; business administration; office functions’;

–        Class 36: ‘Insurance; financial affairs; monetary affairs; real-estate affairs’;

–        Class 38: ‘Telecommunications; electronic transmission of documents’;

–        Class 41: ‘Providing of education; providing of training; amusements; sporting and recreational activities’;

–        Class 42: ‘Scientific and technological services and research and design relating thereto; analysis and research services; design and development of computer hardware and computer software; legal services’.

4        The mark was registered on 13 February 2009 under the number 3105277.

5        On 17 February 2014, the intervener, Intesia Group Holding GmbH, filed an application for revocation of the mark at issue, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), claiming that that trade mark had not been put to genuine use within a continuous period of five years.

6        On 24 February 2015, the Cancellation Division partially upheld the application for revocation.

7        In essence, in the first place, the Cancellation Division revoked the EU trade mark in its entirety in respect of Classes 16, 38 and 41 and partially revoked that mark in respect of the following services:

–        ‘advertising; office functions’ in Class 35;

–        ‘real-estate affairs’ in Class 36;

–        ‘scientific and technological services and research and design relating thereto; design and development of computer hardware and computer software; legal services’ in Class 42.

8        In the second place, it rejected the application for revocation in respect of the following services:

–        ‘business management; business administration’ in Class 35;

–        ‘insurance; financial affairs; monetary affairs’ in Class 36;

–        ‘analysis and research services’ in Class 42.

9        On 26 March 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the part of the Cancellation Division’s decision which had revoked the EU trade mark in respect of the services in Classes 35, 36, 38, 41 and 42 referred to in paragraph 7 above.

10      By decision of 21 January 2016 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.

11      In essence, the Board of Appeal found that, as regards the services in each of the classes referred to in paragraph 7 above, genuine use had not been proved. Consequently, it upheld the revocation of the mark at issue as regards those services.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs before the Cancellation Division, the Board of Appeal and the Court.

13      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

14      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs incurred before the Cancellation Division, the Board of Appeal and the Court.

 Law

15      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 51(1)(a) and (2) of Regulation No 207/2009.

 Preliminary observations

16      It must be borne in mind that, pursuant to the first subparagraph of Article 15(1) of Regulation No 207/2009 (now the first subparagraph of Article 18(1) of Regulation 2017/1001) and to Article 51(1)(a) of that regulation, the rights of the proprietor of an 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 its non-use.

17      Furthermore, it follows from Article 51(1)(a) of Regulation No 207/2009 read in conjunction with Article 51(2) thereof that evidence of genuine use must in principle cover all of the goods or services for which a contested mark is registered. If the evidence of genuine use is furnished only in relation to part of the goods or services in respect of which a contested mark is registered and if the other conditions laid down by Article 51(1)(a) of Regulation No 207/2009 are met, the rights of the proprietor of that mark may be declared to be revoked in respect of the goods or services for which it has not furnished evidence of genuine use or has even furnished no evidence of use at all (judgment of 18 October 2016, August Storck v EUIPO — Chiquita Brands (Fruitfuls), T‑367/14, not published, EU:T:2016:615, paragraph 21).

18      However, 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 subcategories 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 subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong (judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45, and of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23).

19      According to the case-law, 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. In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgment of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 54 and the case-law cited). In that regard, the fact that the use must be public means that it must be external and obvious to actual or potential customers of the goods or services. Private use or use which is purely internal use to an undertaking or a group of undertakings does not constitute genuine use (see, to that effect, judgments of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37, and of 9 December 2008, Verein Radetzky-Orden, C‑442/07, EU:C:2008:696, paragraph 22).

20      It must be pointed out that genuine use implies real use of the mark on the market concerned for the purpose of identifying goods or services. Genuine use is therefore to be regarded as excluding use which is minimal and insufficient for the purpose of determining whether a mark is being put to real, effective use on a given market. In that regard, even if it is the proprietor’s intention to make real use of his trade mark, if the trade mark is not objectively present on the market in a manner that is effective, consistent over time and stable in terms of the configuration of the sign, with the result that it cannot be perceived by consumers as an indication of the origin of the goods or services in question, then there is no genuine use of the trade mark (see judgment of 23 February 2006, Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 32 and the case-law cited).

21      More specifically, to assess whether a particular trade mark has been put to genuine use in a particular case, an overall assessment of the documents in the file must be carried out, taking account of all the relevant factors in the case. In such an assessment, 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 15 September 2011, centrotherm Clean Solutions v OHIM — Centrotherm Systemtechnik (CENTROTHERM), T‑427/09, EU:T:2011:480, paragraph 27 and the case-law cited).

22      As to the extent of the use to which the trade mark at issue 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. That assessment entails a degree of interdependence of the factors taken into account. Thus, the low volume of goods or services marketed under that mark may be offset by a high intensity of use or a period of regular use of that mark and vice versa (see judgment of 15 September 2011, CENTROTHERM, T‑427/09, EU:T:2011:480, paragraph 28 and the case-law cited).

23      Furthermore, 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 9 September 2015, Inditex v OHIM — Ansell (ZARA), T‑584/14, not published, EU:T:2015:604, paragraph 19 and the case-law cited).

24      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding, in the contested decision, that the documents provided by the applicant before the Cancellation Division in the revocation proceedings were not capable, as regards the services in question, of proving that there had been genuine use of the contested mark that was capable of ensuring that the rights were maintained during the relevant period.

25      In that regard, it must be pointed out that the last day of the relevant five-year period, in respect of which proof of genuine use of the contested mark had to be furnished, ended on the day before the application for revocation referred to in paragraph 5 above was filed, and not, as the applicant has stated in its written pleadings, on the day on which that application was filed. Consequently, the relevant period in respect of which it had to prove that the contested mark had been put to genuine use ran from 17 February 2009 to 16 February 2014.

26      The applicant complains in essence that the Board of Appeal did not take all the circumstances of the specific case into account, incorrectly assessed the value and the strength of the evidence filed and superficially examined the documents submitted one by one, without ever carrying out an overall analysis of those documents.

 Whether there has been genuine use relating to the services in question in Class 35

27      The applicant submits that, as regards the services in question in Class 35, namely ‘advertising; office functions’, the Board of Appeal made findings which are incorrect and are not properly reasoned. First, as regards the advertising services, the applicant maintains that the publication and distribution of brochures and similar items constitutes an advertising activity, particularly because it took care of the editing, printing and distribution of those brochures and items itself. Secondly, as regards the office functions services, the applicant submits that, although it also offers them separately, they are complementary to the other services that it offers.

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

29      In the first place, as regards the advertising, it must be borne in mind that, as has been stated in paragraph 19 above, use which is private or purely internal to an undertaking does not show that there has been genuine use of the contested mark.

30      In the present case, the evidence provided by the applicant before the Cancellation Division (in particular Exhibits 17 to 54) includes promotional brochures relating to offers of mortgages, loans, investment funds and other financial services. As the Board of Appeal correctly pointed out, although those brochures show that there has been use of the mark in connection with the financial services in Class 36, which those brochures advertise, they cannot, by contrast, be in any way regarded as in themselves constituting an offer of advertising services in Class 35 to third parties. The abovementioned promotional brochures do not show that the applicant carried on independent activities in the field of advertising to which third parties might have recourse.

31      Consequently, in the circumstances set out in paragraph 30 above, since the applicant has in no way shown how the advertising services were independently offered to third parties, the purely internal use of the contested mark cannot be held to be genuine use of that mark (see, to that effect and by analogy, judgment of 9 December 2008, Verein Radetzky-Orden, C‑442/07, EU:C:2008:696, paragraph 22).

32      In the second place, as regards the office functions, it is important to point out that, first, the applicant admits that the office activities are provided in support of its business management and administration activities.

33      Secondly, as the Board of Appeal correctly pointed out, the applicant does not in any way substantiate how the documents provided show use of the contested mark for ‘office functions’. The promotional brochures and the website printouts filed as evidence, in particular Exhibits 49 to 54, relate to various financial services offered by the applicant. In that regard, the mere fact that the applicant uses office functions in order to support its business activities does not, contrary to what it submits, mean that it also offers them separately as services to third parties. As has been stated in paragraph 19 above, use which is purely internal to an undertaking does not show genuine use of the contested mark.

34      Furthermore, the applicant has not provided any information relating to the turnover generated by the various services in question in Class 35.

35      It follows from the foregoing considerations that the applicant has failed to prove genuine use of the contested mark in connection with the services in question in Class 35.

 Whether there has been genuine use relating to the services in question in Class 36

36      The applicant submits that it does not understand the reasons why the Board of Appeal stated that genuine use in connection with ‘real-estate affairs’ had not been shown by the evidence that it had submitted before the Cancellation Division.

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

38      It must be pointed out, as observed by EUIPO, that the evidence, considered as a whole, does not show that real estate services were actually provided or indicate the time when, or place where, they were provided. That evidence consists mainly of brochures and computer presentations relating to the efficient use of renewable energy in buildings. Furthermore, the applicant has not supplied any information to show the commercial significance of the use of the trade mark in connection with real estate affairs during the relevant period and has likewise not provided any turnover figures or invoices in that regard.

39      That finding is not invalidated by an individual analysis of the evidence provided, which has been referred to in paragraph 36 above.

40      First of all, it must be pointed out, as observed by the Board of Appeal, that Enclosures 2 to 4 concern blank standard agreements which parties may use to sell and buy property or exercise a purchase option. In that regard, in addition to the fact that those enclosures do not include the mark at issue, they do not, for the purposes of the case-law referred to in paragraph 21 above, provide any information as regards the duration, place and extent of use of that mark. The applicant has also not provided any documents showing the number of times those standard agreements were used, or even the commercial transactions carried out by means of those standard agreements, with the result that it cannot be proved that the applicant has attempted to maintain a commercial position on the market for real estate affairs.

41      Secondly, the applicant relies on Exhibit 21, which is a brochure in Italian which refers to real estate property management services aimed at managing agents of buildings, and Exhibit 56, which consists of Italian-language printouts from the applicant’s website, which is a real estate online platform.

42      First, the applicant merely points out that it is possible for clients to consult directly the real estate offers which it provides, but does not, however, show that those consultations have actually taken place, since it does not, for example, provide a ‘log’ file showing the number of visits made to its website. Secondly, contrary to what the case-law referred to in paragraph 21 above provides, Exhibits 21 and 56, which have been referred to in paragraph 41 above, do not contain any information regarding the market share held by the mark; how intensive, geographically widespread and long-standing the use of that mark has been; the amount invested by the undertaking in promoting the mark, and the proportion of the relevant section of the public which, because of the mark, identifies the services as originating from a particular undertaking (see, to that effect, judgment of 3 June 2015, Giovanni Cosmetics v OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraph 108). Furthermore, as regards Exhibit 56, the mere fact that the contested mark appears on the printouts from the applicant’s website is insufficient to prove genuine use of that mark.

43      Lastly, as regards EUIPO’s decision-making practice, although the applicant maintains that the Cancellation Division has already found that there has been genuine use of a trade mark including the contested mark in connection with real estate affairs, it must be borne in mind that the Boards of Appeal are not bound by the decisions of lower adjudicating bodies of EUIPO (judgment of 22 May 2014, NIIT Insurance Technologies v OHIM (EXACT), T‑228/13, not published, EU:T:2014:272, paragraph 48). In any event, it must be stated that, at the close of the written part of the procedure in the present case, the decision of the Cancellation Division of EUIPO relied on by the applicant was still the subject of two appeals, brought on 19 and 23 February, and that whether it was final was therefore still uncertain.

44      Furthermore, as regards the judgment of the Tribunale di Firenze (District Court of Florence, Italy) of 12 April 2010 which the applicant relies on and which it alleges the Board of Appeal did not mention in the contested decision, it must be pointed out that the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see, to that effect and by analogy, judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraphs 65 and 66).

45      In any event, it is true that the judgment referred to in paragraph 44 above may be taken into consideration as evidence and may show genuine use during part of the relevant period, namely from 17 February 2009 to 12 April 2010, which may in itself be sufficient. Only trade marks the genuine use of which has been suspended during an uninterrupted period of five year are caught by the sanctions provided by Article 15(1) of Regulation No 207/2009 (see, to that effect, judgment of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 40).

46      However, first, it must be pointed out that only one paragraph of that judgment was translated into English by the applicant. That extract merely states that the contested mark was regarded as having a reputation in Italy and that the applicant was active in the field of real estate affairs. Secondly, it must be pointed out that neither Article 51(1)(a) of Regulation No 207/2009 nor Rule 22(2) to (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), which is applicable mutatis mutandis to revocation proceedings, pursuant to Rule 40(5) of that regulation, provides that the burden of proving use, which rests on the proprietor of the EU trade mark on which the application for revocation is based, may be discharged or alleviated on the ground that it has been established that that mark has a reputation or is well known in the European Union (see, to that effect and by analogy, judgment of 8 April 2016, Frinsa del Noroeste v EUIPO — Frisa Frigorífico Rio Doce (FRISA), T‑638/14, not published, EU:T:2016:199, paragraph 35). According to the case-law, the provisions relating to the requirement for genuine use of an EU trade mark, such as the first subparagraph of Article 15(1) of Regulation No 207/2009 and Article 51(1)(a) of that regulation, pursue a different objective from that pursued by the provisions relating to the extended protection conferred on trade marks that have a reputation in the European Union, such as Article 8(5) of that regulation (now Article 8(5) of Regulation 2017/1001). While the latter provision concerns the conditions governing protection that also extends beyond the categories of goods and services in respect of which an EU trade mark has been registered, the notion of genuine use expresses the minimum condition of use that all marks must satisfy in order to be protected. It follows that the provisions concerning the requirement of genuine use of the EU trade mark and, in particular, the criteria laid down by the case-law for the purposes of proving genuine use, are to be distinguished from the provisions and criteria relating to the reputation of such a mark (see, to that effect and by analogy, judgment of 3 September 2015, Iron & Smith, C‑125/14, EU:C:2015:539, paragraphs 21 and 23). Those two types of provisions must therefore be interpreted independently (judgment of 8 April 2016, FRISA, T‑638/14, not published, EU:T:2016:199, paragraph 34). Consequently, the reputation of the contested mark does not, in itself, show that there has been genuine use of that mark in connection with the services in question. Thirdly, it must be pointed out that the judgment of the Tribunale di Firenze (District Court of Florence) relied on by the applicant does not include any reasoning relating to the genuine use of the contested mark in connection with the services in question in Class 36 and does not, moreover, refer to the evidence on which the Tribunale di Firenze (District Court of Florence) based its finding.

47      In view of the foregoing considerations, the evidence provided by the applicant cannot constitute sufficient proof of genuine use of the contested mark in connection with the services in question in Class 36.

 Whether there has been genuine use relating to the services in question in Class 38

48      The applicant submits that, contrary to what the Board of Appeal stated in the contested decision, the documents submitted prove that it provided telecommunication and electronic transmission of documents services in Class 38 to third parties during the relevant period.

49      EUIPO and the intervener dispute the applicant’s argument.

50      In the first place, as regards Exhibits 49 to 55, which were submitted before the Cancellation Division, it must be pointed out, as observed by the Board of Appeal, that those exhibits are screenshots of the applicant’s website, presenting the financial, monetary and insurance activities offered by the applicant.

51      In that regard, as was correctly pointed out in the contested decision, the exhibits referred to in paragraph 50 above are limited exclusively to describing the activities offered by the applicant and none of those activities concerns telecommunications. Furthermore, the word ‘telecommunications’ and the expression ‘electronic transmission of documents’ do not appear in the description of the abovementioned exhibits that was attached as an annex to the letter which the applicant sent to EUIPO on 17 July 2014.

52      In the second place, as regards Exhibit 44, it must be pointed out that that exhibit describes the use of a technical device which incorporates GPS (Global Positioning System) technology and immediately transmits a vehicle’s technical data to an operational centre. However, such a device is merely a tool which is additional to the automobile insurance offered by the applicant and not a device which is sold independently to third parties.

53      Furthermore, the context to which the website extracts provided by the applicant belong is solely that of the provision of information services, that is to say the promotion of the applicant’s financial products, and not that of the provision of technical services, with the result that those extracts do not concern telecommunications or electronic transmission of documents services in Class 38.

54      It follows from the foregoing considerations that the applicant has failed to prove genuine use of the mark in question in connection with the services in question in Class 38.

 Whether there has been genuine use relating to the services in question in Class 41

55      The applicant submits that the various items of evidence produced clearly demonstrate that it has provided the services of providing of education; providing of training; amusements; and sporting and recreational activities in Class 41 to third parties.

56      EUIPO and the intervener dispute the applicant’s line of argument.

57      In the first place, it must be pointed out, as observed by the Board of Appeal, that Exhibits 1 to 9, which the applicant submitted before the Cancellation Division, are photocopies of contracts relating to assistance provided to undertakings which apply for funding from the European Union. Those contracts illustrate the fact that the applicant offers two services to third parties, namely, first, a search of funding opportunities made available in the European Union and, secondly, lobbying and networking on behalf of third parties in order to obtain funding. However, those various contracts do not satisfactorily prove use of the mark at issue in connection with the services in question. The contracts were not concluded by the applicant, but by another company, with regard to which the applicant has not stated how it and that company were linked. In any event the training activity is secondary in relation to the real purpose of the contracts, namely the raising of funds, and the mere submission of eight standard contracts does not show that the mark at issue has been used to create commercial outlets for the services in question.

58      In the second place, Exhibits 38 and 39 refer to a card enabling customers to benefit from special offers at cultural and entertainment events. The fact that the applicant bestows such cards cannot be perceived as relating automatically to the amusements services or the sporting and recreational activities which the applicant claims it offers. It must be pointed out, as observed by EUIPO, that the abovementioned cards seem more to be part of a business promotion plan of the applicant’s consisting of rewarding customers for their fidelity and encouraging them to remain customers. Furthermore, none of the evidence submitted by the applicant shows that the applicant has itself organised amusements services and sporting and recreational activities for third parties or even offered such services to third parties.

59      In the third place, as regards Exhibits 47 and 48, it must be stated that they are brochures aimed at helping customers to select the appropriate investment product. In that context, the learning activity takes place exclusively in support of the activity of purchasing financial products and is not offered independently by the applicant. Consequently, the brochures can prove use of the mark in question only in connection with the financial services offered by the applicant, the purchasing of which they promote, and not in connection with the services of providing education in Class 41. That finding is borne out by the fact that most of the evidence does not even mention the words ‘education’ and ‘training’.

60      In any event, the Board of Appeal correctly pointed out that the applicant had not supplied any information relating to the turnover generated by the various services in question in Class 41.

61      It follows from the foregoing considerations that the applicant has not proved genuine use of the mark at issue in connection with the services in question in Class 41.

 Whether there has been genuine use relating to the services in question in Class 42

62      The applicant submits that it has proved genuine use of the mark at issue in connection with scientific and technological services and research and design relating thereto, design and development of computer hardware and computer software, and legal services in Class 42.

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

64      In that regard, as the Board of Appeal correctly pointed out, the documents which the applicant submitted before the Cancellation Division show that it offers technical and legal assistance relating to the securing of EU funds in the field of renewable energy and that it designs or manages computer software for third parties.

65      The various documents referred to in paragraph 64 above are not without any evidential value, a point which EUIPO moreover accepts and which is not disputed by the intervener, but they are not sufficient to prove genuine use of the contested mark.

66      Exhibits 1 to 8 concern photocopies of contracts relating to services performed in the period from 27 July 2010 to 2 May 2012, contracts which were not concluded by the applicant, but by another company with regard to which the applicant has not stated how it and that company were linked. In any event, given that only eight contracts were provided and there were no additional documents, such as a list of all the contracts signed in respect of the services in question or a document relating to the turnover generated, those contracts do not show genuine use of the contested mark. Exhibits 13 and 14, which are promotional brochures, show that the applicant is involved in projects relating to energy, but do not refer to the duration of, or commercial volume relating to, those projects. Exhibits 15 and 16 each consist of a newsletter from the undertaking, the first dated 11 December 2012 and the second dated 3 January 2011. In that regard it must be stated that a reference to only two newsletters does not show the extent of use of the contested mark. Exhibit 55 is a printout from a website promoting computer outsourcing services, which are not, however, performed by the applicant, but by a separate company, with regard to which the applicant has not explained what could have linked it to that company. Lastly, Exhibit 57 contains general conditions and a standard maintenance contract relating to a piece of computer software, but does not, for example, refer to the commercial volume or the list of customers who have made use of the applicant’s services in that regard.

67      As has been stated in paragraph 23 above, genuine use of a trade mark cannot be proved by means of probabilities or presumptions. Only solid and objective evidence, which is lacking in the present case, would have proved effective and sufficient use of the contested mark in connection with the services in question. An overall assessment of the evidence referred to in paragraph 64 above would not, moreover, have proved genuine use of the contested mark, since that evidence does not make it possible to establish whether the commercial use of the mark is real for the purposes of the case-law referred to in paragraph 21 above.

68      Lastly, as regards the applicant’s reference to a decision of the Cancellation Division in support of its argument, it must be borne in mind that, for reasons identical to those set out in paragraph 43 above, the Boards of Appeal are not bound by the decisions of lower adjudicating bodies of EUIPO. 

69      Consequently, it has not been established that there was genuine use of the contested mark in connection with the services in question in Class 42.

70      It follows from all of the foregoing considerations that the action must be dismissed as unfounded.

 Costs

71      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.

72      It must be pointed out that, although EUIPO and the intervener have both applied for the applicant to be ordered to pay the costs incurred in the present proceedings, the intervener has also applied for the applicant to be ordered to pay the costs incurred before the Cancellation Division and the Board of Appeal.

73      First, as regards the intervener’s head of claim relating to the costs incurred before the Cancellation Division, it must be pointed out that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows that the costs incurred for the purposes of the proceedings before the Cancellation Division cannot be regarded as recoverable costs (see judgment of 25 April 2013, Bell & Ross v OHIM — KIN (Wristwatch case), T‑80/10, not published, EU:T:2013:214, paragraph 164 and the case-law cited). Consequently, the intervener’s head of claim that the applicant should be ordered to pay the costs incurred before the Cancellation Division must be rejected.

74      Secondly, as regards the intervener’s claim that the applicant should be ordered to pay the costs of the proceedings before the Board of Appeal, it is sufficient to point out that, since the present judgment is dismissing the action brought against the contested decision, it is point 2 of the operative part in the contested decision which continues to determine the costs in question.

75      Thirdly, since the applicant has been unsuccessful in the present proceedings, it must be ordered to pay the costs incurred in these proceedings, 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 Intesa Sanpaolo SpA to bear its own costs and to pay those incurred in the present proceedings by the European Union Intellectual Property Office (EUIPO) and by Intesia Group Holding GmbH.

Delivered in open court in Luxembourg on 4 October 2017.

*      Language of the case: English.

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