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

JUDGMENT OF THE GENERAL COURT (Third Chamber)

28 May 2020 (*)

(EU trade mark — Opposition proceedings — Application for an EU figurative mark representing a curved and angled line — Earlier EU figurative mark representing the capital letter D and earlier international figurative mark (D) representing an angled line — Relative ground for refusal — Genuine use of the earlier mark — Article 42(2) of Regulation (EC) No 207/2009 (now Article 47(2) of Regulation (EU) 2017/1001)

In Case T‑615/18,

Diesel SpA, established in Breganze (Italy), represented by A. Parassina and A. Giovannardi, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,

defendant,

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

Sprinter megacentros del deporte, SL, established in Elche (Spain), represented by S. Malynicz QC, and T. Austen, Barrister,

ACTION brought against the decision of the Fifth Board of EUIPO of 3 August 2018 (Case R 2657/2017-5), relating to opposition proceedings between Diesel and Sprinter megacentros del deporte,

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins President, Z. Csehi (Judge Rapporteur) and G. De Baere, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Registry of the General Court on 8 October 2018,

having regard to the response of EUIPO lodged at the Court Registry on 22 March 2019,

having regard to the response of the intervener lodged at the Court Registry on 25 March 2019,

having regard to the changes to the composition of the chambers of the Court and the reassignment of the case to the Third Chamber,

further to the hearing on 11 December 2019,

gives the following

Judgment

 Background to the dispute

1        On 6 December 2012, the intervener, Sprinter megacentros del deporte, SL, filed an application for registration of an EU 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), as amended (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 following figurative sign:

3        The goods in respect of which registration was sought are in Classes 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following descriptions:

–        Class 18 — ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; vanity cases; holdalls, back packs and rucksacks; wallets, key cases, purses and pouches; credit card cases, tote bags, bottle bags, record bags, book bags; handbags; sports bags; sports holdalls; shopping bags; luggage and suitcases; weekend bags; jewellery rolls; attaché cases and briefcases; parts and fittings for all the aforesaid goods’;

–        Class 25 — ‘Clothing; football boots; rugby boots; training shoes; running shoes; tennis shoes; indoor sports shoes; headgear; belts.’

4        The EU trade mark application was published in Community Trade Marks Bulletin No 5/2013 of 8 January 2013.

5        On 5 April 2013, the applicant, Diesel SpA, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the following earlier rights

–        the earlier EU figurative mark reproduced below, filed on 10 July 1997 and registered on 19 February 1999 under No 583708 (‘earlier mark No 583708’):

–        the international registration designating the European Union for the following figurative mark, filed and registered on 25 October 2005 under No 881767 (‘earlier mark No 881767’):

7        The goods covered by the earlier marks, on which the opposition was based, were in Classes 18 and 25 and corresponded, for each of those classes, to the following description:

–        Class 18 — ‘Leather and imitation of leather, and goods made of these materials not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;

–        Class 25 — ‘Clothing, footwear, headgear’.

8        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

9        In its observations of 6 January 2014, the intervener requested that the applicant adduce proof of use of the earlier marks for the purposes of Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001).

10      In its observations of 10 June 2014, the applicant provided evidence of use of the earlier marks, in annexes numbered 1 to 6 (‘the annexes’).

11      On 31 October 2014, the Opposition Division rejected the opposition.

12      On 29 December 2014, 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 decision of the Opposition Division.

13      By decision of 18 June 2015, the Second Board of Appeal of EUIPO excluded the existence of any likelihood of confusion based on the differences between the earlier mark No 583708 and the mark applied for, and dismissed the appeal.

14      The applicant brought an action before the General Court against that decision.

15      By judgment of 20 July 2017, Diesel v EUIPO — Sprinter megacentros del deporte (Representation of a curved and angled line) (T‑521/15, not published, EU:T:2017:536), the General Court annulled the decision of the Second Board of Appeal of 18 June 2015 on the ground that, contrary to the findings of the Board of Appeal, the earlier mark No 583708 and the mark applied for presented visual similarities and were phonetically and conceptually identical. The Court observed that the Board of Appeal had failed to carry out a comparison of the goods or an assessment of the evidence of genuine use produced, and observed that the Board of Appeal was to assess those matters.

16      Following the judgment of 20 July 2017, Representation of a curved and angled line (T‑521/15, not published, EU:T:2017:536), the case was referred back to EUIPO and allocated a new reference number, R 2657/2017-5. The case was assigned to the Fifth Board of Appeal of EUIPO.

17      On 13 June 2018, in the examination of the evidence of use of the earlier marks, the Fifth Board of Appeal’s rapporteur requested that the applicant submit, within one month, better-quality reproductions of all or part of the annexes numbered 1 and 2. A copy of that request was sent to the intervener. The evidence requested was received by EUIPO on 9 July 2018.

18      By decision of 3 August 2018 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal.

19      The Board of Appeal found that there was no evidence of use of the earlier marks in respect of the goods ‘leather and imitations of leather; animal skins, hides; trunks; umbrellas, parasols and walking sticks; whips, harness and saddlery’ in Class 18, and that use had not been established in respect of ‘footwear’ in Class 25 and ‘travelling bags; goods made of leather and imitation of leather’ in Class 18. As regards clothing in Class 25 — apart from men and women’s denim jeans — and headgear also in Class 25, the Board of Appeal found that, while invoices mentioned those goods, there was, however, no reproduction of those goods proving that they had been marketed under one or other of the earlier marks. The Board of Appeal also found that men and women’s denim jeans constituted a subcategory of goods in Class 25 in respect of which various types of evidence had been submitted, and examined the evidence of use in respect of that subcategory. It noted, in essence, that most of the jeans presented in Annex 1 appeared on the invoices but that, on account of the poor quality of the reproductions contained in Annex 1 — including those newly submitted at the request of the rapporteur — it was not possible to determine whether the earlier marks had indeed been affixed to those denim jeans. The Board of Appeal thereby concluded that, although the applicant had had the opportunity to amend its evidence, it had failed to satisfy the requirement as to the evidence of use of the earlier marks by submitting material of a sufficient probative standard. It therefore considered the opposition to be unfounded and dismissed the appeal in its entirety.

 Forms of order sought

20      The applicant claims that the Court should:

–        annul the contested decision;

–        declare that the opposition is well founded;

–        order EUIPO to pay the costs.

21      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

22      In support of the action, the applicant relies on two pleas in law, alleging (i) infringement of 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) (now Article 10(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), and of Article 42(2) of Regulation No 207/2009, in that the Board of Appeal wrongly assessed the evidence of use; and (ii) infringement of Article 72(6) of Regulation 2017/1001, in that it incorrectly implemented the judgment of 20 July 2017, Representation of a curved and angled line (T‑521/15, not published, EU:T:2017:536), by failing to compare the goods at issue.

 The first plea in law: infringement of Rule 22(3) of Regulation No 2868/95 and Article 42(2) of Regulation No 207/2009

23      By its first plea, the applicant claims, in essence, that the Board of Appeal wrongly found that the evidence submitted was not such as to demonstrate genuine use of the earlier marks in respect of certain goods on which the opposition was based.

24      EUIPO and the intervener dispute those arguments.

25      In reply to a question put by the Court, the applicant confirmed that although, formally, its first plea relates to an infringement of Article 47(2) of Regulation 2017/1001, it was appropriate to understand that plea as being based on an infringement of Article 42(2) of Regulation No 207/2009.

26      The provision applicable to the facts of the case is Article 42(2) of Regulation No 207/2009, prior to its amendment by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation (EC) No 207/2009 (OJ 2015 L 341, p. 21). As the Board of Appeal observes in paragraph 18 of the contested decision, since the opposition was brought prior to the entry into force of Regulation 2015/2424 amending Regulation No 207/2009 — that is, before 23 March 2016 — the relevant five years to be taken into consideration in respect of proof of use are those preceding the publication of the mark applied for, on the basis of Article 42(2) of Regulation No 207/2009.

27      In the present case, since the application for registration was published on 8 January 2013, the five-year period referred to in Article 42(2) of Regulation No 207/2009 therefore runs from 8 January 2008 to 7 January 2013 (‘the relevant period’). Given that the earlier marks are EU trade marks, the relevant territory is the European Union.

28      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.

29      It is apparent from Article 42(2) and (3) of Regulation No 207/2009 (the latter paragraph now being Article 47(3) of Regulation 2017/1001), read in the light of recital 10 of Regulation No 207/2009 (now recital 24 of Regulation 2017/1001) and Rule 22(3) of Regulation No 2868/95 that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is sound commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market (see judgment of 20 June 2017, Industrie Aeronautiche Reggiane v EUIPO — Audi (NSU), T‑541/15, not published, EU:T:2017:406, paragraph 26 and the case-law cited).

30      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 (judgment of 26 September 2013, Centrotherm Systemtechnik v centrotherm Clean Solutions, C‑609/11 P, EU:C:2013:592, paragraph 72).

31      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, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

32      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 exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40). 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 (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).

33      It must be pointed out that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule, which would not allow EUIPO or, on appeal, the Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (see judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72).

34      Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).

35      According to Rule 22(3) of Regulation No 2868/95, proof of use must consist of indications concerning the place, time, extent and nature of use of the earlier trade mark for the goods and services in respect of which it is registered and on which the opposition is based. Those requirements in matters of proof of use of the earlier mark are cumulative (judgment of 5 October 2010, Strategi Group v OHIM — RBI (STRATEGI), T‑92/09, not published, EU:T:2010:424, paragraph 43).

36      Furthermore, although Rule 22 of Regulation No 2868/95 refers to indications concerning the place, time, extent and nature of use, and gives examples of acceptable evidence, such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing, that rule does not state that each item of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use (judgment of 19 April 2013, Luna v OHIM — Asteris (Al bustan), T‑454/11, not published, EU:T:2013:206, paragraph 35). Moreover, it is settled case-law that it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 19 April 2013, Al bustan, T‑454/11, not published, EU:T:2013:206, paragraph 36 and the case-law cited).

37      It is in the light of those considerations that the contested decision must be examined.

38      It is apparent from the contested decisions as well as from documents in the EUIPO file sent to the Court that, following the invitation made to it, the applicant produced a certain number of documents in order to establish genuine use of the earlier marks during the relevant period.

39      Those documents, which were annexed to the applicant’s observations of 10 June 2014, comprise:

–        Annex 1 (documents and DVD): undated images of male and female adult mannequins wearing denim jeans;

–        Annex 2: excerpts from magazines dating back to the relevant period (Maxi Germany, GQ Style Germany, Glamour Italy, FHM Germany, Glamour Germany, L’Uomo Vogue Italy, Loaded United Kingdom, Glamour Italy, etc.), containing images of denim jeans and footwear;

–        Annex 3: excerpts from magazines dating back to the relevant period (Vogue Greece, GQ Germany, Vogue Italy, Harpers Bazaar United Kingdom, etc.) containing images of bags, footwear, and denim jeans:

–        Annex 4 (document and DVD): invoices dated between 2011 to 2013 relating to various goods in France, Germany, Italy, the Benelux countries, Spain and the United Kingdom;

–        Annex 5: excerpts from various of the applicant’s catalogues dating back to the relevant period and containing images of bags;

–        Annex 6: affidavit of 14 April 2014 from the head of the applicant’s legal department.

40      The applicant puts forward, first, a general line of argument and, second, a line of argument specific to the goods in respect of which it disputes the lack of genuine use of the earlier marks.  

 General arguments

41      First, the applicant argues that the quantity and diversity of the evidence submitted are sufficient to establish genuine use.

42      It must be observed that that argument is irrelevant and must be rejected. The Board of Appeal did not find that there was either a lack of diversity or a paucity of evidence; instead it found that the evidence lacked probative value.

43      In the present case, the Board of Appeal found that there was no link between the various items of evidence to establish all of the relevant indications within the meaning of Rule 22(3) of Regulation No 2868/95, namely, the nature, place, time and extent of the use of the earlier marks, in respect of each class of goods forming the basis of the opposition. According to the Board of Appeal, the lack of evidence of use of the earlier marks lies in the fact that, where a sign capable of designating the earlier marks appears on items that are relevant for the purposes of the opposition, the corresponding items do not appear in the invoices, thereby highlighting a lack of evidence relating to the extent of that use; and, conversely, where relevant items do appear on an invoice, the reproduction of the signs at issue in connection with those goods either is not visible or is not clear, thereby highlighting a lack of evidence or insufficient evidence of the nature of that use.

44      The applicant relies, inter alia, on the judgment of 8 July 2010, Engelhorn v OHIM — The Outdoor Group (peerstorm), (T‑30/09, EU:T:2010:298), in which, it is argued, an affidavit and two catalogues were found to be sufficient to demonstrate the extent of the genuine use of a mark.

45      Admittedly, as the applicant observes, the Court has already held that two catalogues could, in themselves and in certain circumstances, constitute conclusive proof of the extent of use, although they did not provide direct information as to the quantity of goods actually sold under the earlier mark (see, to that effect, judgment of 8 July 2010, peerstorm, T‑30/09, EU:T:2010:298, paragraph 43). In that judgment, the Court had taken into account the fact that it was clear from those catalogues that a large number of items covered by the mark at issue were available in over 240 shops in the United Kingdom during a significant part of the relevant period. Those catalogues, which were intended for end consumers, also contained specific information concerning the goods offered for sale under that trade mark, their prices and the way in which they were marketed in the United Kingdom. Telephone and fax numbers, postal and internet addresses given for mail order purchasing and specific information relating to a very large number of shops offering the goods at issue allowed the Court to ascertain that items of clothing had been offered for sale under the mark at issue to end consumers. Thus, it concluded that the catalogues alone provided sufficient information as to the place, time, nature and extent of the use of the earlier mark at issue at issue (see, to that effect, judgment of 8 July 2010, peerstorm, T‑30/09, EU:T:2010:298, paragraphs 42 to 44).

46      However, as EUIPO points out, that case is different to that at hand. First, the catalogues intended for end consumers were submitted in their entirety, as opposed to the few pages, submitted in Annex 5, which are drawn from catalogues not intended for end consumers. Secondly those catalogues contained a greater amount of specific information, in particular regarding the way in which the goods were offered for sale under the mark at issue in the European Union, which is not so in the present case. Lastly, while the applicant argues that, in the aforementioned case, 240 shops had been found to be sufficient — whereas it claims to have 5 000 points of sale in 80 countries, of which 300 are monobrand stores — it is clear that the latter information, contained in the affidavit from the head of the applicant’s legal department, is not sufficiently specific in relation to the goods sold and does not even indicate how many shops in the European Union sell the goods marketed under the earlier marks. Moreover, the applicant does not rely on any evidence of such a nature as to corroborate that assertion.

47      Secondly, the applicant claims that the Board of Appeal misinterpreted the case-law, cited in paragraph 33 above, according to which there is no ‘de minimis’  rule for determining whether use of a mark is genuine. In that context, the applicant points out that, as regards luxury goods, the quantities sold are naturally lower than they are for everyday consumer goods.

48      That argument must also be rejected. It is clear from paragraph 43 above that it is irrelevant, in so far as the evidence of use of the earlier marks was found to be insufficient for reasons unrelated to an unduly low volume of sales.

49      Thirdly, as regards the claim that the Board of Appeal examined the various items of evidence separately, without making the connection between them, under the terms of an overall assessment required by the case-law, the General Court will examine that claim in the context of the arguments specific to each of the goods.

 The arguments specific to the goods covered by the earlier marks

50      As a preliminary point, it should be noted that the applicant does not dispute the Board of Appeal’s finding as to the lack of evidence of genuine use of the earlier marks as regards ‘trunks; umbrellas, parasols and walking sticks; whips, harness and saddlery; goods [made of leather or imitation of leather] not included in other classes’ in Class 18.

51      The applicant disputes the lack of evidence of genuine use of the earlier marks as regards the goods ‘leather and imitation of leather; animal skins, hides’ and ‘travelling bags’ in Class 18, as well as ‘footwear’, ‘headgear’, ‘clothing’ and men and women’s denim jeans in Class 25.

–       The goods ‘leather and imitation of leather; animal skins, hides’ in Class 18

52      As regards the goods ‘leather and imitation of leather; animal skins, hides’ in Class 18, the applicant does not dispute paragraph 28 of the contested decision, according to which no photograph or invoice corresponding to those goods appears in the evidence submitted. The applicant claims only that the images of bags contained in Annexes 3 and 5, in which the earlier marks are legible, establish genuine use of the earlier marks to the requisite legal standard, at least in respect of the goods ‘leather and imitation of leather, animal skins, hides’.

53      However, the goods ‘leather and imitation of leather; animal skins, hides’ designate raw or semi-finished goods. It follows that the photographs of bags, which are finished goods, cannot constitute evidence of use in that regard.  

54      It follows from the foregoing that the first plea in law must be rejected in respect of the goods ‘leather and imitation of leather; animal skins, hides’ in Class 18.

–       Travelling bags in Class 18

55      As regards travelling bags in Class 18, the applicant claims, in essence, that the images of travelling bags taken from catalogues and magazines that it produced were sufficient to prove genuine use of the earlier marks in respect of those goods. The applicant also refers to the affidavit from the head of the legal department, in Annex 6.

56      Concerning the bags, the Board of Appeal pointed out, in paragraph 30 of the contested decision, that the applicant had supplied only photographs of those goods on which the ‘D motifs’ were affixed and that there was no sales evidence relating to those goods, which did not appear on the invoices. The Board added that there was no other material to corroborate actual sales of travelling bags, since the figures set out in the affidavit were not broken down into individual classes of item. It found, in essence, that there was no evidence as to the extent of genuine use in so far as concerns travelling bags.

57      In the first place, as regards the catalogue excerpts in Annex 5, it should be observed that these establish neither that those catalogues were distributed to potential customers, nor the extent of any distribution, nor the number of sales made of goods protected by the earlier marks. The applicant has provided no indication supported by evidence to allow any useful conclusions to be drawn in that regard. The mere existence of the catalogues could, at most, make it probable or credible that goods protected by the earlier marks were sold or, at least, offered for sale within the relevant territory, but it cannot prove that fact (see, to that effect, judgment of 6 October 2004, VITAKRAFT, T‑356/02, EU:T:2004:292, paragraphs 33 and 34). Furthermore, as has been recalled in paragraph 46 above, the Court’s reasoning in the judgment of 8 July 2010, peerstorm (T‑30/09, EU:T:2010:298), cannot be transposed to the facts of the case at hand.

58      In the second place, as regards the applicant’s images of bags, contained in the magazines produced in Annexes 2 and 3, it should be observed that the Board of Appeal noted the presence of the sign that constitutes the earlier mark No 881767 on various types of bag which, it should be observed, are not travelling bags.

59      It must be found that the images of bags in the magazines at issue are not travelling bags.

60      At the hearing, the applicant made more specific reference, as regards proof of use of the earlier mark No 881767, to advertisements published in the magazines Amica and Harpers Bazaar, on pages 132 and 133 of the EUIPO case file. However, it must be observed that the bag which appears in the magazine Amica is a handbag, not a travelling bag. As to the bag in the advertisement published in the magazine Harpers Bazaar, it should be noted that the sign affixed thereto is, in any event, illegible.

61      In the third place, the affidavit from the head of the applicant’s legal department, while not sufficient in itself as an item of evidence, may be corroborated by other probative evidence (see, to that effect, judgment of 21 September 2017, Repsol YPF v EUIPO — Basic (BASIC), T‑609/15, EU:T:2017:640, paragraph 64 and the case-law cited).

62      In the present case, the affidavit attests that the invoices appended in Annex 4, for the period 2008-2013, relate to bags bearing the mark ‘D logo’ sold in EU Member States. However, as the Board of Appeal observed, and further to verification of Annex 4, the bags do not appear on the invoices submitted to EUIPO.

63      As regards travelling bags, there is no other evidence to corroborate the affidavit, within the meaning of the case-law cited in paragraph 61 above.

64      Consequently, the Court finds, as the Board of Appeal did, that it is not possible to establish the actual commercial exploitation of the earlier marks, which includes the extent of the use thereof, with regard to travelling bags. As is clear from the case-law cited in paragraph 34 above, 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.

65      The first plea in law must therefore be rejected in respect of travelling bags in Class 18.

–       Footwear in Class 25

66      As regards footwear in Class 25, the applicant disputes the Board of Appeal’s finding, in paragraph 30 of the contested decision, that no sales evidence had been submitted. In that connection, the applicant claims, inter alia, that the Board of Appeal failed to have sufficient regard to the fact that the items of evidence of genuine use lodged before EUIPO include advertisements that the applicant had placed, during the relevant period, in various well-known and widely distributed magazines in the United Kingdom, Italy, Germany, Spain and France, appended in Annex 2.  Lastly, the applicant takes the general view that the Board of Appeal ought to have made the connection between the various items of evidence.

67      In the present case, it must be noted that the Board of Appeal mentioned, in paragraphs 23 and 25 of the contested decision, two pairs of ankle or casual boots ‘where the can be made out’, one in the magazine FHM published in Germany on 1 April 2009, the other in the magazine Be published in France on 5 August 2011. It also mentioned two pairs of ‘sneakers’ which ‘[showed] the symbol’, one in the magazine Glamour published in Italy on 1 September 2010 and the other in the magazine Down Town published in Spain on 1 November 2011. The Board of Appeal also stated that the ‘ symbol appear[ed] in Annex 3 on one example of casual shoes’ in an advertisement published in the German magazine GQ on 1 April 2008.

68      Furthermore, the photographs of footwear contained in the German magazines GQ Style of 1 September 2009 and Cosmopolitan of 1 April 2011, as well as those contained in the Italian magazine XL of 1 March 2011, on which the sign can be seen, should be added to that list.

69      However, it is apparent from the contested decision that the Board of Appeal found, in essence, that merely producing copies of advertisements published in magazines was not sufficient to prove the extent of the use of the earlier marks in respect of footwear.

70      As regards the earlier mark No 881767, the reasoning of the Board of Appeal must be upheld, given that the mark appears in one advertisement only.

71      As regards the earlier mark No 583708, it should be borne in mind that, according to the case-law, the condition relating to genuine use of the mark requires that the latter, as protected in the relevant territory, be used publicly and externally (see, to that effect and by analogy, judgments of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 39).

72      The reproduction of the mark at issue, on goods covered by that mark, in advertisements intended for consumers who make up the relevant public constitutes public and external use of that mark, within the meaning of the case-law cited in paragraph 71 above. In an assessment carried out in accordance with the case-law cited in paragraphs 30 to 36 above, such use can demonstrate genuine use of that mark, required by Article 42(2) of Regulation No 207/2009. The fact remains that such use of the mark concerned cannot be proved by the simple production of copies of advertising material mentioning that mark in relation to the goods or services covered. It must also be demonstrated that this material, regardless of its nature, has been sufficiently distributed to the relevant public to establish the genuine nature of the use of the trade mark at issue (judgments 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, and of 9 December 2014, Inter-Union Technohandel v OHIM — Gumersport Mediterranea de Distribuciones (PROFLEX), T‑278/12, EU:T:2014:1045, paragraph 70).

73      Where advertising has appeared in the printed press, that entails adducing evidence of the distribution of the newspaper or of the magazine concerned to the relevant public. It cannot be otherwise unless the advertising has appeared in newspapers or magazines that are very well known, the circulation of which is a well-known fact that EUIPO can take into consideration even if it is not apparent from the evidence submitted to it by the parties (see judgment of 8 March 2012, BIODANZA, T‑298/10, not published, EU:T:2012:113, paragraph 69 and the case-law cited).

74      In the present case, as the applicant observes, the advertisements submitted before the Board of Appeal were published in very well-known magazines, and, consequently, the circulation of these magazines in the Member States concerned must be deemed to be a well-known fact. Furthermore, it should be pointed out that, in some of those magazines, the price of the applicant’s footwear is indicated, which confirms that the goods were present on the market.

75      Moreover, in the overall assessment required by the case-law cited in paragraph 32 above, regard must also be had to the affidavit which, while not sufficient in itself, can be corroborated by other probative evidence, in accordance with the case-law cited in paragraph 61 above.

76      It should be observed that, in that affidavit, the head of the applicant’s legal department states that the applicant sells footwear. Net turnover figures in the hundreds of millions of euros and figures relating to advertising investment in the tens of millions of euros, for the years 2009 to 2013, are also mentioned. According to that affidavit, the advertising investment figures relate to the marks DIESEL and the ‘D logo’, and the net turnover figures relate to goods on which the ‘D logo[s]’ are visible.

77      Admittedly, as EUIPO observes, those figures are not broken down either by category of goods or by geographical area, and the figures relating to the advertising budget relate to the promotion of the ‘D logos’ marks — an expression that lacks clarity as to the marks that it designates — and other marks such as DIESEL. However, the existence of photographs of footwear in advertisements in very well-known magazines published in various Member States, showing a sign that may represent the earlier mark No 583708, corroborates the information that the applicant sells goods in the European Union — namely footwear, in the present case — under that sign. Those advertisements also corroborate the information that advertising budgets were devoted by the applicant to that sign, in so far as concerns footwear, in the European Union, during the relevant period.

78      The Board of Appeal therefore wrongly held that proof of genuine use of the earlier mark No 583708 had not been adduced as regards footwear in Class 25.

79      It follows from the foregoing that the first plea in law must be upheld as regards the earlier mark No 583708 in respect of footwear in Class 25.

–       Headgear in Class 25

80      As regards headgear in Class 25, the applicant claims that, in order to demonstrate genuine use of the earlier marks, there is no requirement to show the goods concerned in a specific document, and that the mere fact that hats or caps appear in only one type of evidence — namely, invoices — does not, in the applicant’s view, justify that evidence being disregarded.  

81      In the present case, the Board of Appeal found that, although there was evidence of sales of hats and caps in the invoices, there were no images of those goods to prove that they had been marketed under the earlier marks. In the absence of any connection between the sale of those hats or caps and the earlier marks, the Board of Appeal found that there was no evidence of genuine use of the earlier marks in respect of headgear in Class 25.

82      It is settled case-law that it is not necessary that the earlier mark be affixed to the goods in order that there be genuine use in relation to those goods (see judgment of 15 July 2015, Cactus v OHIM — Del Rio Rodríguez (CACTUS OF PEACE CACTUS DE LA PAZ), T‑24/13, not published, EU:T:2015:494, paragraph 65 and the case-law cited). It suffices that the use of the earlier mark establishes a connection between the mark and the sale of its goods (see, to that effect, judgment of 6 March 2014, Anapurna v OHIM — Annapurna (ANNAPURNA), T‑71/13, not published, EU:T:2014:105, paragraph 60; see also, by analogy, judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraph 23). The presence of the mark at issue on the invoices, articles and advertisements relating to the goods concerned establishes that connection (see, to that effect, judgment of 6 March 2014, ANNAPURNA, T‑71/13, not published, EU:T:2014:105, paragraph 60).

83      It should be stated that, on the invoices indicating, inter alia, sales of hats or caps, neither of the earlier marks are mentioned. Those invoices are not, in the present case, sufficient in themselves to establish a connection between the sale of those goods and the earlier marks, and do not allow the nature of the use made of the earlier marks in respect of hats or caps to be ascertained. The finding that no other evidence establishing that hats or caps were sold under the earlier marks had been provided must therefore be upheld.  

84      Consequently, the Board of Appeal also cannot be criticised for conducting a separate examination of the items of evidence in so far as, in the present case, there were no other types of evidence regarding hats or caps.  

85      The Board of Appeal therefore rightly found that proof of genuine use of the earlier marks in respect of headgear goods had not been adduced.

86      The first plea in law must therefore be rejected in respect of headgear in Class 25.

–       Clothing in Class 25

87      In the first place, the applicant disputes the Board of Appeal’s reasoning that, in essence, what proof of use there was related only to the subcategory of men and women’s denim jeans in Class 25 and not to the broader categories of clothing or even trousers in that class.  

88      In accordance with the case-law, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the subcategory or sub-categories to which the goods or services for which the trade mark has actually been used belong (judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45).

89      In the present case, as regards various items of clothing such as sweaters, t-shirts, dresses and tops, the Board of Appeal explained that, although those goods were mentioned on the invoices, the applicant had failed to provide any example of those goods in connection with the earlier marks, which led the Board of Appeal to find that genuine use of those marks had not been established in respect of clothing in Class 25.

90      In the light of the case-law cited in paragraph 88 above, in so far as men and women’s denim jeans were the only items of clothing in Class 25 in respect of which there was, in addition to the invoices, evidence of use showing the goods on which the signs at issue were affixed, and in so far as those goods constitute a consistent and homogenous subcategory, the Board of Appeal rightly carried out its examination for that specific subcategory and not for clothing, trousers or even jeans per se. The applicant’s first argument must therefore be rejected.

91      In the second place, the applicant disputes the finding that it had failed to give examples of various items of clothing on which the earlier marks were affixed, and claims that, in paragraph 37 of the contested decision, the Board of Appeal itself affirmed the existence of images of ‘clothing’, produced in Annex 1. The applicant adds that the clothing referenced in Annex 1, taken from its catalogues, can indeed be found on the invoices.

92      In that connection, it is sufficient to observe, first, that the photographs referenced in Annex 1 correspond essentially to men and women’s denim jeans. The other clothing items on the mannequins present no sign capable of representing the earlier marks. Secondly, paragraph 37 of the contested decision, read in context, aimed specifically to affirm that, although they were designated as images of ‘clothing’, the images in Annex 1 were capable of demonstrating use of the earlier marks only in respect of men and women’s denim jeans. Lastly, it is clear from the foregoing that the assertion contained in the affidavit that the ‘enclosed pictures (Annex 1)… representing images of Diesel’s clothing … in which the mark ‘D logo’ is reproduced …’ must also be invalidated.

93      In the third place, the Board of Appeal cannot be criticised for failing to carry out an overall examination of the evidence as a whole, as no other evidence of such a nature as to show various items of clothing in connection with the earlier marks was submitted.

94      Consequently, the Board of Appeal rightly found that the evidence submitted was not sufficient for the purposes of demonstrating use of the earlier marks in respect of the general category of clothing.

95      Accordingly, the first plea in law must be rejected in respect of clothing in Class 25.

–       The subcategory of men and women’s denim jeans in Class 25

96      The applicant also disputes, in essence, the finding that the evidence of genuine use of the earlier marks in respect of men and women’s denim jeans in Class 25 was not sufficient. The applicant recalls that it submitted evidence taken from invoices, advertising documents from magazines, and from catalogues, all seeking to establish that the earlier marks were always used in the same version and position, that is, on the front right-hand pocket, as in the sole image in Annex 1 considered legible by the Board of Appeal. The applicant also relies on the affidavit. It argues, moreover, that the Board of Appeal focused unduly on an examination of each item of evidence separately instead of carrying out an overall assessment, as required by the case-law.

97      In the present case, the Board of Appeal found, in essence, that the denim jeans, images of which are contained in Annex 1 under the references BOOTZEE, KOOLTER, TIMMEN, FAYZA, were also on the invoices under the same references. However, the Board of Appeal found that it was not in a position to determine whether the earlier marks appeared in those images of denim jeans in Annex 1 on account of the poor quality of the reproductions. It explained that it was impossible to establish the nature of the signs that appeared on those denim jeans, even on the original reproductions provided by the opponent.

98      The Board of Appeal took into account the single photograph in Annex 1 in which the signs were legible, that is, the photograph corresponding to a close-up of the front right-hand pocket in denim bearing the phrase ‘diesel industry’, followed by a legible sign capable of designating the earlier mark No 583708, in a red and white version, together with a legible sign designating the earlier mark No 881767, which can be made out on the rivet placed on a corner of the pocket. However, the Board of Appeal noted, in essence, that it could not assume that the same signs, in the same position, appeared in the other illegible photographs of denim jeans in Annex 1, and that the applicant’s argument that the earlier marks appeared in the same position and in the same place in the other photographs in Annex 1 remained a supposition that the Board was not able to determine with any certainty on account of the very poor quality of the images. The Board of Appeal also found, in essence, that no mention of any mark INDUSTRY had been made in the invoices, and added that, had it been established that INDUSTRY was a sub-brand under which other sub-sub-brands of men and women’s denim jeans sold by the applicant had been marketed, that would have been sufficient to complete the chain between the various items of evidence for the purposes of demonstrating that the applicant had indeed sold its men and women’s denim jeans under the earlier marks.

99      The Board of Appeal pointed out that, by his letter of 13 June 2008, the Rapporteur had given the applicant the opportunity to improve the quality of the items of evidence submitted, but that the applicant, although alerted to the shortcomings of its evidence, had submitted further items that were just as illegible and unsatisfactory as the previous items. In conclusion, the Board of Appeal considered that, by failing to submit items of evidence on which the earlier marks clearly appeared, the applicant had left the Board of Appeal in the position of having to make assumptions and engage in suppositions, which is contrary to the case-law.

100    In accordance with the case-law cited in paragraph 32 above, the question whether genuine use has been made of a mark must be the subject of an overall assessment, taking into account all the relevant factors.

101    It should be noted that the Board of Appeal mistakenly focused only on the invoices and images of denim jeans in Annex 1, thus failing to examine the other evidence, in particular the advertisements taken from magazines published during the relevant period.

102    It should be observed that images of men and women’s denim jeans, taken from advertisements published in magazines in circulation in various Member States during the relevant period, were also provided to EUIPO, in Annexes 2 and 3.

103    In the present case, the Board of Appeal mentioned, in paragraph 25 of the contested decision, the magazine L’Úomo Vogue of 1 March 2011, published in Italy, which shows an example of the sign on the pocket of a pair of jeans; the magazine Vanity Fair of 30 March 2011, also published in Italy, showing a pair of jeans with the label Diesel Industry and the sign on the front right-hand pocket of the jeans; and the magazine Cosmopolitan published in the United Kingdom in March 2012, showing a pair of jeans with the label Diesel Industry and the sign visible. It should be noted that the latter advertisements corroborate the applicant’s assertion that the sign in red and white, which is capable of being that of the earlier mark No 583708, is used following the mention ‘Diesel Industry’ on the front right-hand pocket of the applicant’s jeans, as in the only legible image in Annex 1.

104    The Board of Appeal had also mentioned an article concerning denim treatment effects entitled ‘Special Denim Trends’, which featured in the magazine In Style published in Germany on 1 March 2010, in which the sign was visible. In that connection, it should be observed that the Board of Appeal wrongly stated that no product brand name was mentioned, in so far as the sign capable of designating the earlier mark No 583708 is clearly legible therein.

105    It is clear from paragraphs 71 to 74 above that the reproduction of a sign capable of representing the earlier mark No 583708, on goods covered by that mark, in advertisements to consumers who make up the relevant public, constitutes public and external use of that mark which, in the context of an assessment carried out in accordance with the case-law cited in paragraphs 30 to 36 above, is capable of establishing genuine use of that mark, which is required by Article 42(2) of Regulation No 207/2009. It should be observed that those magazines are very well known and that, consequently, the circulation thereof must also be deemed to be a well-known fact.

106    Accordingly, those advertisements for men and women’s denim jeans on which a sign capable of designating the earlier mark No 583708 is legible are sufficient to demonstrate that the applicant did indeed sell men and women’s denim jeans under that sign, contrary to the findings of the Board of Appeal.

107    Moreover, it should be observed that the affidavit from the head of the applicant’s legal department is corroborated, within the meaning of the case-law cited in paragraph 61 above, by the aforementioned advertisements. The latter in fact corroborate the information contained, in essence, in that affidavit, that denim jeans for young adults are sold by the applicant in the European Union under a sign capable of representing the earlier mark No 583708. The advertisements also corroborate the information that advertising budgets were devoted by the applicant to that sign, in so far as concerns men and women’s denim jeans, in the European Union during the relevant period.

108    Accordingly, the first plea in law must be upheld in so far as concerns proof of genuine use of the earlier mark n^o 583708 in respect of men and women’s denim jeans in Class 25.

 The second plea in law: infringement of Article 72(6) of Regulation 2017/1001

109    By its second plea, the applicant claims that the Board of Appeal failed to take the measures entailed by the implementation of the judgment of 20 July 2017, Representation of a curved and angled line (T‑521/15, EU:T:2017:536), in breach of Article 72(6) of Regulation 2017/1001. It argues that the Court, in that judgment, ordered the Board of Appeal to carry out a comparison of the goods at issue in Classes 18 and 25.

110    EUIPO and the intervener dispute those arguments.

111    In the present case, the Board of Appeal began by assessing the evidence of genuine use of the earlier marks. As it found that that evidence was not sufficient, it could dismiss the opposition, which was based on those earlier marks, without going further in its assessment on the basis of Article 8(1)(b) of Regulation 2017/1001.

112    Consequently, it must be found that no infringement of Article 72(6) of Regulation 2017/1001 was committed.

113    Accordingly, the second plea in law must be rejected.

 The second head of claim

114    As regards the second head of claim, the applicant is asking the Court, in essence, to adopt the decision that, in its view, EUIPO ought to have given, namely a decision upholding its opposition. The applicant is therefore requesting that the contested decision be altered, as provided for in Article 72(3) of Regulation 2017/1001.

115    It is appropriate to examine that request for an amendment solely with regard to the goods in respect of which the first plea in law has been upheld, that is, footwear and men and women’s denim jeans in Class 25.

116    It should be noted that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).

117    In the present case, the conditions for the exercise of the General Court’s power to alter decisions, as set out in the judgment of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452), are not satisfied.

118    The Board of Appeal did not carry out, in particular, a comparison of the goods and signs at issue.

119    Accordingly, the second head of claim must be rejected.

 Costs

120    Under Article 134(2) of the Rules of Procedure of the General Court, where there are several unsuccessful parties, the Court is to decide how the costs are to be shared. As the applicant, EUIPO and the intervener have each been partially unsuccessful in this case, they must be ordered each to bear their own costs.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 August 2018 (Case R 2657/2017-5) in so far as it concerns the earlier mark No 583708 with regard to ‘men and women’s denim jeans’ and ‘footwear’ in Class 25;

2.      Dismisses the action as to the remainder;

3.      Orders Diesel SpA, EUIPO and Sprinter megacentros del deporte, SL each to bear their own costs.

Delivered in open court in Luxembourg on 28 May 2019.

*      Language of the case: English.

© European Union
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