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

Provisional text

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

2 February 2017 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark Cremcaffé by Julius Meinl — Earlier EU figurative mark café crem — Relative ground for refusal — Lack of genuine use of the earlier mark — Article 42(2) of Regulation (EC) No 207/2009)

In Case T‑687/15,

Marcas Costa Brava, SL, established in Sils (Spain), represented by E. Manresa Medina and J. Manresa Medina, lawyers,

applicant,

v

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

defendant,

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

Excellent Brands JMI Ltd, established in Baar (Switzerland), represented by D. Majer, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 29 September 2015 (Case R 2757/2014-5), relating to opposition proceedings between Marcas Costa Brava and Excellent Brands JMI,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, R. da Silva Passos and K. Kowalik-Bańczyk (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 29 November 2015,

having regard to the response of EUIPO lodged at the Court Registry on 21 March 2016,

having regard to the response of the intervener lodged at the Court Registry on 15 March 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 7 December 2012 the intervener, Excellent Brands JMI Ltd, filed an application for registration of a European Union trade mark with the European Union Intellectual Property Office (EUIPO) 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        Registration as a mark was sought for the following figurative sign:

3        The goods and services for which registration was sought are in Classes 21, 30 and 35 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 21: ‘Mugs; Containers for beverages (household and kitchen); Enamel tins for household purposes; Boxes of bone china; Boxes of ceramics; Boxes of earthenware; Containers for household or kitchen use; Dinnerware; Boxes of glass; Glasses [drinking vessels]; Glassware (painted); Utensils for household purposes; Coffee services of ceramic; Jugs; Decanters; Cups of paper or plastic; Porcelain ware; Porcelain articles for decorative purposes; Crockery; Tableware, other than knives, forks and spoons; Dinner services; Cups, not of precious metal; Drinking vessels; Drinking glasses; Sugar bowls’;

–        Class 30: ‘Coffee; Flavoured coffee; Ice beverages with a coffee base; Decaffeinated coffee; Extracts of coffee for use as flavours in beverages; Coffee based fillings; Freeze-dried coffee; Ground coffee beans; Ground coffee; Roasted coffee beans; Beverages made of coffee; Coffee-based beverages; Coffee essences; Coffee, roasted, powdered, granulated, or in drinks; Coffee in whole-bean form; Coffee in brewed form; Coffee in ground form; Coffee flavorings [flavourings]; Coffee beans; Coffee mixtures; Aerated beverages with coffee base; Artificial coffee; Instant coffee; Coffee-based beverage containing milk; Chocolate coffee; Beverages consisting principally of coffee; Prepared coffee and coffee-based beverages; Sugar’;

–        Class 35: ‘Advertising; Business management; Business administration’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 38/2013 of 22 February 2013.

5        On 22 May 2013 the applicant, Marcas Costa Brava, SL, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods in Class 30 referred to in paragraph 3 above.

6        The opposition was based on the following EU figurative mark, registered on 4 June 2003 under number 2423705 and covering goods in Class 30 ‘Coffee, sugar and infusions’:

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

8        At the request of the intervener, the applicant submitted, as an annex to its observations lodged with EUIPO on 4 February 2014, documents designed to prove genuine use, within the meaning of Article 42(2) of Regulation No 207/2009, in respect of the goods for which the earlier mark was registered.

9        By decision of 12 September 2014, the Opposition Division of EUIPO upheld the opposition for all of the contested goods.

10      On 28 October 2014 the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

11      By decision of 29 September 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the appeal, annulling the decision of the Opposition Division and rejecting the opposition in its entirety, on the ground that the evidence submitted by the applicant was not sufficient to prove genuine use of the earlier trade mark.

 Forms of order sought by the parties

12      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

13      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

14      The applicant raises two pleas in law, alleging infringement of point (a) of the second subparagraph of Article 15(1) and of Article 8(1)(b) of Regulation No 207/2009, respectively.

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

15      By its first plea, which is divided into three parts, the applicant claims, in essence, that the Board of Appeal erred in concluding that it had not provided evidence that the earlier mark had been put to genuine use. In support of that plea, it argues (i) that the Board of Appeal incorrectly assessed the territorial scope of the use of the earlier mark, (ii) that the form of that use differs only minimally from the form under which the mark was registered, and (iii) that the evidence which it submitted is capable of proving the reality of that use.

16      It follows from the application that, although, by the second part of the plea, the applicant alleges infringement of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, it also criticises the Board of Appeal, by the first and third parts of the plea, for having infringed Article 42(2) of Regulation No 207/2009.

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

 Preliminary observations

18      It is necessary to recall that, by virtue of Article 42(2) of Regulation No 207/2009, an applicant for an EU trade mark, against which opposition has been filed, may require proof that the earlier mark, relied on in support of that opposition, has been put to genuine use in the European Union, in connection with the goods or services in respect of which it is registered and on which the opposition is based, during the five years preceding publication of the application.

19      In addition, according to Rule 22(3) 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), proof of use must consist of indications concerning the place, time, extent and nature of use of the earlier trade mark.

20      According to settled case-law, it follows from the abovementioned provisions, read also in the light of recital 10 of Regulation No 207/2009, that the ratio legis for the requirement 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 where there is no sound economic reason resulting from an active 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 are they intended to restrict trade-mark protection to the case 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).

21      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 is registered, in order to create or preserve an outlet for those goods or services; genuine use does not, however, 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).

22      When assessing whether use of the trade mark is genuine, regard must be had to all of the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create market shares for the goods or services protected by the mark (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (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 38).

23      In order to ascertain whether use is significant enough to maintain or create market shares for those goods or services, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case (judgments of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42, and of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 36).

24      In that regard, the characteristics of the goods or services protected by the mark, the frequency or regularity of the use of that mark, whether that mark is used for the purpose of marketing all of the identical goods or services of the proprietor or merely some of them, in addition to the territorial scope of the use, are among the factors which may be taken into account (see, by analogy, order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 22, and judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 76, and of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 30).

25      Therefore, the turnover and the volume of sales of the product under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of commercial activity, production or marketing capacities or the degree of diversification of the undertaking using the trade mark, and the characteristics of the goods or services on the market in question. 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 HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36). Even minimal use can therefore be sufficient to be deemed genuine, provided that it is viewed as warranted in the economic sector concerned to maintain or create market shares for the goods or services protected by the mark (judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72).

26      Similarly, it is not necessary that the mark should be used in an extensive geographic area for the use to be deemed genuine. It cannot be ruled out that, in certain circumstances, the market for the goods or services for which an EU trade mark has been registered is in fact restricted to the territory of a single Member State. In such a case, use of the EU trade mark in that territory might satisfy the condition for genuine use of an EU trade mark (see, to that effect, judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraphs 50 and 54).

27      Consequently, it is not possible to determine a priori, and in the abstract, what quantitative threshold or what territorial scope should be chosen in order to determine whether use is genuine. A de minimis rule, which would not allow EUIPO or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (see, by analogy, judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72, and of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 55).

28      Moreover, as regards the duration of use of the earlier mark, it is apparent from the first subparagraph of Article 15(1) of Regulation No 207/2009 that only trade marks genuine use of which has been suspended during an uninterrupted period of five years are subject to the sanctions provided for by the regulation. Accordingly, it is sufficient that a trade mark has been put to genuine use during a part of the relevant period in order for it not to be subject to those sanctions (judgments of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 45, and HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 40).

29      However, 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 actual 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).

30      Last, it must be noted that, under the combined provisions of point (a) of the second subparagraph of Article 15(1) and Article 42(2) of Regulation No 207/2009, proof of genuine use of an earlier EU trade mark which forms the basis of an opposition against an EU trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (see judgment of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited).

31      It is in the light of the foregoing considerations that the first plea of the application must be examined, starting with the second part, by which the applicant disputes an alleged ground of the contested decision, and followed by the first and third parts, by which the applicant contests the assessment of the genuine nature of use of the earlier mark.

32      In the present case, the applicant was required to show that the earlier mark had been put to genuine use during the five years preceding the publication of the application for registration of the later mark, that is to say, during the period between 22 February 2008 and 21 February 2013. Moreover, that use had to relate to the goods for which the earlier mark was registered and on which the opposition was based, namely the goods in Class 30, referred to in paragraph 6 above.

33      In order to justify its conclusion that genuine use of the earlier mark had not been proved, the Board of Appeal found, first, that the use restricted to the territory of Spain did not suffice to satisfy the condition of genuine use of an EU trade mark and, second, that the evidence dealing with the extent of use of the earlier mark was inconsistent and was insufficient to establish that that mark had been put to genuine use.

 The second part of the first plea, alleging that the earlier mark was used in a different form from that under which it was registered, but which did not alter its distinctive character, in accordance with point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009

34      By this part of the plea, the applicant argues that, although it used the earlier mark in a form which differed from that under which that mark had been registered, the differences were minimal and did not alter the distinctive character of the mark, with the result that that use should be regarded as genuine use within the meaning of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009.

35      In this regard, it is appropriate to note that, although the Board of Appeal found, in paragraph 28 of the contested decision, that the sign used differed from that registered, it nevertheless expressly left open the question of whether that variant could be taken into account for the purpose of proving genuine use. It follows that the rejection of the opposition is not based on the form of the mark used.

36      In those circumstances, the argument put forward by the applicant in the context of the second part of the first plea is ineffective.

 The first part of the first plea, alleging that the Board of Appeal incorrectly assessed the territorial scope of the use of the earlier mark under Article 42(2) of Regulation No 207/2009

37      By the first part of the plea, the applicant disputes the assessment made by the Board of Appeal as to the territorial scope of the use of the earlier mark. The Board of Appeal stated that that use was established only in two of the four provinces of Catalonia (Spain), namely in the provinces of Tarragona and Barcelona. The applicant argues that the use of the earlier mark is established also in the provinces of Girona and Lleida and, therefore, in all of Catalonia.

38      More specifically, the applicant argues, first, that it is established in the province of Girona and, second, that one of the distributors of goods bearing the earlier mark is a company from the province of Lleida.

39      However, as regards its establishment in the province of Girona, the applicant merely produces a copy of the extract from the central trade register of Spain which concerns it. Further, as regards the location of its distributor in the province of Lleida, the applicant merely produces a screenshot of the website ‘www.guiasamarillas.es’, access to which requires a password. In addition, that screenshot refers only to a postal address and telephone number, and does not even mention the earlier mark.

40      Furthermore, it must be pointed out, as EUIPO correctly notes, that merely citing the place of establishment of a company — and, a fortiori, merely citing a location corresponding to a postal address — is not sufficient to prove use of a mark within a given territory.

41      Consequently, in the absence of other material capable of proving that the earlier mark was indeed used in the provinces of Girona and Lleida, the Board of Appeal did not commit an error of assessment in finding that the earlier mark had been used only in the provinces of Tarragona and Barcelona.

 The third part of the first plea, alleging that the Board of Appeal erred in concluding that the material produced did not prove that the earlier mark had been put to genuine use in accordance with Article 42(2) of Regulation No 207/2009

42      By the third part of the plea, which is subdivided into four heads, the applicant argues that the Board of Appeal erred in concluding that the evidence which it had provided, namely 18 invoices, 7 affidavits and promotional and advertising material, did not prove genuine use in connection with the goods for which the earlier mark was registered.

–       The invoices

43      In the first place, the applicant criticises the Board of Appeal for not having taken into account the fact that the earlier mark appeared under the mention ‘café crem’ on all of the invoices produced, but also, on several occasions, under the acronym CC.

44      In that regard, it must be noted that the invoices corresponding to the documents designated under numbers 18, 19, 24 and 25 in the observations submitted by the applicant before EUIPO on 4 February 2014 do not refer to the mark café crem, and that it is, consequently, incorrect to state, as the applicant does, that that mark appears on each of the invoices produced.

45      Furthermore, it must be pointed out that, in the application, the applicant provides a contradictory definition of the acronym CC. Thus, in paragraph 26 of the application, the applicant quotes the description of the Opposition Division according to which the acronym CC means ‘cafés cafeteria’, ‘cafés classic natural’ or ‘cafés descafeinado’, whereas, in paragraph 27 of the application, it explains that it is an acronym of ‘café crem’. In addition, those definitions do not match the one given by the applicant during the opposition proceedings, according to which it was the plural form of the word ‘coffee’.

46      In those circumstances, and in the absence of explanations and additional evidence, it has not been established that the acronym CC that appears on the invoices refers to the earlier mark.

47      The Board of Appeal therefore did not commit an error of assessment in not taking into account the goods designated in the invoices by the acronym CC.

48      Furthermore, it is appropriate to point out that it has not been shown that all of the goods sold under the mark café crem correspond to those for which the earlier mark is registered, and that, in any event, as the Board of Appeal found in paragraph 31 of the contested decision, the invoices indicate relatively low volumes of sales of goods bearing the mark café crem.

–       The affidavits

49      In the second place, the applicant criticises the Board of Appeal for not having sufficiently explained why the affidavits produced before it were not valid for the purpose of proving that the earlier mark had been put to genuine use and for having based itself on mere assumptions, stemming from the fact that the affidavits were all in an identical format, for the purpose of disregarding them.

50      In that regard, it is necessary, first, to recall, as regards the affidavits, that Rule 22 of Regulation No 2868/95, cited in paragraph 19 above, relating to the supporting documents and items which may be provided for the purpose of proving use of a mark, refers to, inter alia, statements in writing sworn or affirmed as referred to in Article 78(1)(f) of Regulation No 207/2009. Moreover, according to the case-law, sworn statements which have evidential value under national legislation constitute, in principle, evidence which is admissible in opposition proceedings (see judgment of 16 July 2014, Nanu-Nana Joachim Hoepp v OHIM — Stal-Florez Botero (la nana), T‑196/13, not published, EU:T:2014:674, paragraph 30 and the case-law cited).

51      Nevertheless, in order to assess the evidential value of sworn statements, it is necessary, as is the case for every document, first of all, to verify the credibility and veracity of the information which they contain. In that regard, account must be taken of, inter alia, the person from whom the document originates, the circumstances in which it came into being, the person to whom it is addressed, and whether, on its face, the document appears sound and reliable (see judgment of 16 July 2014, lanana, T‑196/13, not published, EU:T:2014:674, paragraph 31 and the case-law cited).

52      In the present case, it should be noted that, even if it is assumed that the sums indicated on the affidavits are correct and correspond only to the goods sold under the earlier mark, it cannot be ruled out that they refer, at least in part, to the sale of goods other than those for which the earlier mark was registered.

53      In addition, the Board of Appeal did not merely note, in paragraphs 27 and 32, that the affidavits were in the same format, but it also found that they contained only global sums that were not broken down into products or product categories and that those sums were not corroborated by other documents, such as statistical tables, annual reports or similar documents, such as accounting and balance sheet items.

54      The Board of Appeal was thus right to indicate that, given the diversity of the marks mentioned in the invoices and in the promotional and advertising material produced, it could not be ruled out that the sums indicated related to goods other than those sold under the earlier mark.

55      In those conditions, the Board of Appeal, first, explained adequately why it had found the affidavits to be of little evidential value, and, second, rightly held that those affidavits did not make it possible to determine the extent of use of the earlier mark with regard to thegoods for which that mark was registered.

–       The promotional and advertising material

56      In the third place, the applicant criticises the Board of Appeal for not explaining why it had not taken into consideration the promotional and advertising material produced for the purpose of determining whether the earlier mark had been put to genuine use.

57      It is important, first of all, to note that, contrary to what the applicant claims, the Board of Appeal did take that material into account in its assessment.

58      The Board of Appeal took note, in paragraphs 17 and 30 of the contested decision, of the fact that the documents produced were undated, with the exception of one advertising leaflet mentioning an offer valid until 30 April 2013. It also highlighted the fact that one of the two photographs produced, which mentioned prices in Spanish pesetas (ESP), predated the relevant period by several years. Last, it found, in paragraph 34 of the contested decision, that there was a lack of material showing that the Spanish public is or was familiar with the goods sold by the applicant under the earlier mark.

59      Next, it is important to note that, although undated documents may, in certain cases, be used to establish use of the earlier mark (see, to that effect, judgment of 13 February 2015, Husky CZ v OHIM — Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 68), such evidence can, however, be relevant for proving such use during the reference period only to the extent to which it serves to confirm facts inferred from other items of evidence.

60      In the present case, however, as has been found above, both the invoices and the affidavits are of limited evidential value, which is not such as to substantiate adequately the extent of use. Consequently, the production of undated advertising material is not sufficient to justify the genuine nature of the use, in accordance with the case-law cited in paragraph 29 above.

61      Last, the use of the earlier mark on promotional and advertising material cannot be proved simply by producing copies of that material. It is also necessary to demonstrate that that material, regardless of its nature, has been sufficiently distributed to the relevant public in order to establish the genuine nature of the use of the mark at issue (judgment of 8 March 2012, Arrieta D. Gross v OHIM — International Biocentric Foundation and Others(BIODANZA), T‑298/10, not published, EU:T:2012:113, paragraph 68).

62      In the present case, however, as EUIPO notes, the applicant provides nothing with regard to the distribution of the promotional and advertising material which it cites. In addition, it should be noted that, with regard in particular to the advertising leaflet mentioning an offer valid until 30 April 2013, there is nothing to indicate that its distribution predated the end of the period in which genuine use must be proved, namely 21 February 2013.

63      It follows that the Board of Appeal provided sufficient reasons to justify its conclusion, on the basis of the promotional and advertising material and of the other evidence produced by the applicant, that the earlier mark had not been put to genuine use.

–       The evidence relating to tea and sugar

64      In the fourth and last place, the applicant criticises the Board of Appeal for having taken the view, wrongly, that no evidence had been submitted with regard to tea and sugar.

65      It is, however, appropriate to note that the contested decision mentions use for tea and sugar on several occasions and makes it clear, inter alia in paragraph 33, that ‘the use of the earlier [mark] … is also … even more modest and also uncertain as regards sugar [as compared with its use for coffee] and practically non-existent as regards tea and infusion products’.

66      Thus, contrary to what the applicant claims, the Board of Appeal did examine the evidence submitted by the applicant with regard to tea and sugar.

67      Having regard to all of the foregoing considerations and to the material produced by the applicant before EUIPO, taken as a whole, it must be concluded that the Board of Appeal did not err in finding that the applicant had not proved that the earlier mark had, during the relevant period and regardless of the goods for which it was registered, been effectively and sufficiently used, in quantitative and geographic terms, in order to establish that it had been put to genuine use within the meaning of Article 42(2) of Regulation No 207/2009.

68      It follows that the first plea is unfounded.

 The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

69      By its second plea, the applicant argues that, given the similarities between the marks at issue and the similarities between the goods, there is a likelihood of confusion with regard to the origin of the goods.

70      That plea must be rejected as ineffective. As has been noted in paragraph 11 above, the Board of Appeal rejected the opposition of the applicant on the ground that it had failed to show that it had put the earlier mark to genuine use, and not on the ground that there was no likelihood of confusion.

71      Furthermore, since the issue of the existence of a likelihood of confusion was not examined by the Board of Appeal, it is not for the Court to examine it, for the first time, in its review of the lawfulness of the contested decision (see, to that effect, judgment of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 63 and the case-law cited).

72      Consequently, the action must be dismissed.

 Costs

73      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 incurred by EUIPO and by the intervener, in accordance with the forms of order sought by those parties.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Marcas Costa Brava, SL, to pay the costs.

Delivered in open court in Luxembourg on 2 February 2017.

* Language of the case: English.

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