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

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

23 September 2020 (*)

(EU trade mark – Opposition proceedings – Application for an EU three-dimensional mark – Shape of a blade of grass in a bottle – Earlier three-dimensional national mark – Genuine use of the earlier mark – Article 15(1) and Article 43(2) and (3) of Regulation (EC) No 40/94 (now Article 18(1) and Article 47(2) and (3) of Regulation (EU) 2017/1001) – Nature of use – Alteration of distinctive character – Use in conjunction with other marks – Scope of the protection – Requirement for clarity and precision – Requirement for the description and the representation to align with one another – Decision taken following annulment of an earlier decision by the General Court – Reference to the grounds of an earlier annulled decision – Obligation to state reasons)

In Case T‑796/16,

CEDC International sp. z o.o., established in Oborniki Wielkopolskie (Poland), represented by M. Siciarek, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Walicka and V. Ruzek, acting as Agents,

defendant,

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

Underberg AG, established in Dietlikon (Switzerland), represented by A. Renck, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 August 2016 (Case R 1248/2015‑4) relating to opposition proceedings between CEDC International  and Underberg,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira, President, D. Gratsias and M. Kancheva (Rapporteur), Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 11 November 2016,

having regard to the response of EUIPO lodged at the Court Registry on 24 February 2017,

having regard to the response of the intervener lodged at the Court Registry on 8 March 2017,

having regard to the decision of 29 May 2017 to suspend the proceedings,

having regard to the decision of 12 August 2019 to resume the proceedings,

having regard to the measures of organisation of procedure of 10 December 2019 and the parties’ responses lodged at the Court Registry on 23 December 2019 and on 9 January 2020,

further to the hearing on 6 February 2020,

gives the following

Judgment (1)

 Background to the dispute

1        On 1 April 1996, the intervener, Underberg AG, 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 following three-dimensional sign:

3        That representation of the mark applied for is accompanied by the following description: ‘the object of the trade mark is a greeny-brown blade of grass in a bottle; the length of the blade of grass is approximately three-quarters the height of the bottle’.

4        The goods in respect of which registration was sought are in Class 33 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 description: ‘Spirits and liqueurs’.

5        The trade mark application No 33266 was published in Community Trade Marks Bulletin No 51/2003 of 23 June 2003.

6        On 15 September 2003, Przedsiębiorstwo Polmos Białystok (Spółka Akcyjna), which was replaced by the applicant, CEDC International sp. z o.o., following a merger by acquisition on 27 July 2011, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (subsequently Article 41 of Regulation No 207/2009, now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of the goods referred to in paragraph 4 above.

7        The opposition was based inter alia on the earlier three-dimensional French mark, filed on 18 September 1995, registered on 18 April 1997 under No 95588457, renewed on 9 June 2005 and 13 July 2015 (after being sent to the applicant on 28 October 2011) for ‘alcoholic beverages’ in Class 33 of the Nice Agreement, represented as follows:

8        That representation of the earlier three-dimensional French mark is accompanied by the following description: ‘the mark consists of a bottle such as is pictured above, inside which a blade of grass is placed in the body of the bottle in an almost diagonally inclined position’.

…

10      The grounds relied on in support of the opposition were those referred to, first, in Article 8(1)(a) and (b) of Regulation No 40/94 (which became Article 8(1)(a) and (b) of Regulation No 207/2009, and subsequently Article 8(1)(a) and (b) of Regulation 2017/1001) on the basis of the earlier three-dimensional French mark No 95588457 reproduced in paragraph 7 above, second, in Article 8(3) of Regulation No 40/94 (subsequently Article 8(3) of Regulation No 207/2009, now Article 8(3) of Regulation 2017/1001) on the basis of that same trade mark and the registered marks referred to in paragraph 9 above and, third, in Article 8(4) of Regulation No 40/94 (which became Article 8(4) of Regulation No 207/2009, and subsequently Article 8(4) of Regulation 2017/1001) on the basis of the unregistered signs referred to in paragraph 9 above.

…

21      By judgment of 11 December 2014, CEDC International v OHIM – Underberg (Shape of a blade of grass in a bottle) (T‑235/12, EU:T:2014:1058; ‘the judgment ordering annulment’), the Court annulled the initial decision.

22      As a preliminary point, the Court noted that the applicant was challenging EUIPO’s findings and assessments concerning all the grounds for opposition, that is to say, those laid down in Article 8(1)(a), Article 8(3) and Article 8(4) of Regulation No 207/2009, but that, however, the applicant stated that it was restricting its arguments solely to the Board of Appeal’s findings on the assessment of the evidence of use adduced, as those findings also concerned all the grounds put forward in support of the opposition (paragraph 29 of the judgment ordering annulment).

…

32      By decision of 29 August 2016 (‘the contested decision’) in Case R 1248/2015‑4, the Fourth Board of Appeal of EUIPO dismissed the appeal.

33      In particular, the Board of Appeal found that, even if it were to exercise its discretion to take into account the evidence submitted out of time in favour of the applicant, that evidence did not change its previous decision that the applicant had failed to prove the nature of use and, consequently, genuine use of the earlier French three-dimensional mark, in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) (paragraph 35 of the contested decision).

34      As a starting point, the Board of Appeal noted that the graphical representation of the trade mark as filed defined the scope of its protection and not the description of the trade mark as had been provided by the applicant. It added that a mark description was to define what can be seen in the mark representation and that the scope of protection was not broadened by a possible interpretation of what the applicant meant by that representation or what it had in mind. In the present case, the Board of Appeal observed that (i) the graphical representation of the earlier three-dimensional French mark showed a commonly shaped bottle with a line on the body of it which ran diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base, (ii) the line, shown as a fixed part of the body of the bottle, was a straight diagonal line and nothing else and (iii) that fact was not altered by the description provided by the applicant because the scope of protection of the trade mark was not defined by what the applicant had in mind when filing the mark (paragraphs 38 and 39 of the contested decision).

35      The Board of Appeal found that none of the evidence submitted at first instance showed the trade mark in the form registered, that is to say, as graphically represented in the register. Indeed, none of the bottles bore an uninterrupted diagonal line, let alone the same line as that forming part of the earlier mark, that line was not affixed on the outside surface of any of the bottles shown and did not appear on or across the label itself, and it was impossible to see what could be in the bottle behind the label because the non-transparent label covered almost the entire surface of the bottle. The Board of Appeal added that the applicant had submitted before it additional evidence in which bottles were depicted, some of them with illegible labels and others with labels stating ‘żubrówka bison vodka’, but that all the bottles, like those submitted at first instance, had a non-transparent label, preventing what was behind it from being seen, and did not show the diagonal line forming part of the earlier mark on the outside surface of the bottle or across the label itself. With regard to the evidence submitted out of time, and more specifically the photographs (appended to Mr K.’s statement) of the bottle with the ‘żubrówka bison vodka’ label and depicted on that occasion not only from the front view but also from the back and with two side views, the Board of Appeal observed that, from the side views in each photograph, an uninterrupted elongated line could be perceived and that, although they are somewhat different on the two photographs, those lines were by no means the same as the straight diagonal line which formed part of the earlier mark: for example, their positions were different, they were much longer, they had a different starting point at the bottom of the bottle and they were not completely straight (paragraphs 40 to 42 of the contested decision).

36      The Board of Appeal found that such use, as demonstrated by the applicant, was not use of the trade mark as it was registered, and nor was it use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered within the meaning of Article 15(1)(a) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001). In that respect, it took into account the fact that the distinctive character of the earlier French mark as such was rather weak as it consisted of a commonly shaped bottle with a simple straight line placed in a specific position and of a specific length and that, actually, in the overall impression, it was that line and its specific positioning and length which rendered the trade mark a little distinctive. Accordingly, the scope of protection of the earlier mark as defined by its graphic representation was very weak and, therefore, a form differing in the manner set out in the evidence submitted in no way constituted use of the earlier mark. The Board of Appeal further pointed out that the applicant’s explanation that what was inside the bottles shown in the evidence submitted was a blade of grass, which was an important feature of its ŻUBRÓWKA brand vodka, did not improve its case and was not relevant because the earlier French mark did not protect the concept of a blade of grass in a bottle (paragraphs 43 to 45 of the contested decision).

37      The Board of Appeal concluded that, even taking into account the evidence submitted for the first time before it, the applicant had failed to prove the nature of use of the earlier three-dimensional French mark, which was a necessary requirement for proving genuine use of that earlier mark pursuant to Article 42(2) and (3) of Regulation No 207/2009. From that, it inferred that, for that reason alone, there was no need to examine further the evidence submitted out of time or to examine whether or not account ought to be taken of that evidence as a whole. In its view, the fact remained that the opposition based on the earlier three-dimensional French mark and the grounds laid down in Article 8(1)(a) and (b) of Regulation No 207/2009 failed. As regards the other grounds of the opposition and the other earlier rights relied upon, the Board of Appeal ‘explicitly refer[red] to the reasoning in its decision of 26 March 2012, case R 2506/2010‑4’. It concluded that the opposition failed on all grounds and all earlier rights on which the opposition was based (paragraphs 46 to 49 of the contested decision).

 Procedure and forms of order sought

…

48      The applicant claims that the Court should:

–        annul the contested decision in its entirety;

–        order EUIPO and the intervener to pay the costs incurred in the proceedings before the Court and before the Board of Appeal.

49      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

50      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs, including all costs incurred by the intervener.

 Law

51      In support of its action, the applicant puts forward three pleas in law. The first plea alleges infringement of Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001). The second plea alleges infringement of Article 15(1) of Regulation No 207/2009 and of Rule 22(3) of Regulation No 2868/95 (now Article 10(3) of Delegated Regulation 2018/625) as well as Article 8(1)(a) and (b) and Article 42(2) and (3) of Regulation No 207/2009. The third plea alleges infringement of Articles 75 and 76(1) and (2) of Regulation No 207/2009.

 Preliminary observations

 On the applicable law ratione temporis

52      It is apparent from the file that the Board of Appeal applied Regulation No 207/2009 (see paragraph 3 of the contested decision), that the applicant based its pleas on that regulation (see paragraph 4 of the application), that the intervener based its response on that regulation and that EUIPO, in its response, relied on a version of the ‘EUTMR’ with numbered provisions corresponding to those of that regulation.

53      However, in response to a question from the Court at the hearing, EUIPO stated that, since the date on which the trade mark application was filed was decisive, the applicable law in the present case, at least as regards the substance, was Regulation No 40/94.

54      In view of the filing date of the application for registration of the mark applied for, in the present case 1 April 1996, and that date being decisive for the purposes of identifying the applicable substantive law (see, to that effect, order of 26 October 2015, Popp and Zech v OHIM, C‑17/15 P, not published, EU:C:2015:728, paragraph 2; judgment of 12 December 2019, EUIPO v Wajos, C‑783/18 P, not published, EU:C:2019:1073, paragraph 2) and in view of the date on which the contested decision was adopted, in the present case 29 August 2016, which is decisive for the purposes of identifying the applicable procedural law, it must be held that the present dispute is governed, on the one hand, by the substantive provisions of Regulation No 40/94 and, on the other hand, by the procedural provisions of Regulation No 207/2009. The substantive provisions of those two relevant regulations are, in essence, identical for the purposes of the present proceedings.

55      As regards the second plea, which alleges infringement of various provisions of substantive law, having regard to the fact that the relevant provisions of Regulations No 40/94 and No 207/2009 are, in essence, identical, the Court will apply the substantive provisions of Regulation No 40/94. However, it must be stated that the fact that the Board of Appeal applied identical provisions of Regulation No 207/2009, which was, after all, not disputed by the applicant, cannot cause the contested decision to be set aside. Indeed, the application of either of those regulations ratione temporis does not lead to a different result and any challenge to that decision on that basis would be ineffective.

56      As regards the first and third pleas, alleging infringement of a number of procedural provisions, since the contested decision was adopted on 29 August 2016, the provisions of Regulation No 207/2009, where appropriate as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Regulation No 2868/95, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), apply to them (see, to that effect, judgment of 31 October 2019, Repower v EUIPO, C‑281/18 P, EU:C:2019:916, paragraphs 2 and 3). More specifically, Article 4 of Regulation 2015/2424 provides that that regulation enters into force on 23 March 2016, but that certain provisions of Regulation No 207/2009, including Article 75, are to apply only from 1 October 2017. In the present case, in view of the date on which the decision in question was adopted, Article 75 of Regulation No 207/2009 in its original version continues to apply to that decision. However, in the absence of transitional provisions, Articles 65(6) and 76(1) of Regulation No 207/2009 apply to that decision as amended by Regulation 2015/2424. In short, applying the original or amended versions of the procedural provisions of Regulation No 207/2009 ratione temporis does not lead to a different result as regards the examination of the first and third pleas.

…

 The second plea in law: infringement of Article 15(1) of Regulation No 207/2009 and of Rule 22(3) of Regulation No 2868/95, as well as of Article 8(1)(a) and (b) and of Article 42(2) and (3) of Regulation No 207/2009

83      By the second plea, the applicant criticises, in essence, the Board of Appeal for having taken the view that the evidence adduced (before the Opposition Division and before the Board of Appeal) did not prove genuine use of the earlier three-dimensional French mark during the relevant period. It puts forward four complaints in that regard.

…

93      It must be stated that, in essence, the present plea concerns whether the earlier mark was used in the form in which it was registered (or in a form which does not alter it, or with minor variations) and consequently, the precise subject of the protection conferred by that mark.

…

97      Those considerations are to govern the applicant’s four complaints forming the second plea and whether the Board of Appeal was correct in finding, in paragraph 46 of the contested decision, that even when account was taken of the evidence submitted for the first time before it, the applicant had not demonstrated the nature of use of the earlier three-dimensional French mark, which was a necessary requirement for proving genuine use of that mark in accordance with Article 42(2) and (3) of Regulation No 207/2009.

98      As a preliminary point, as regards the applicable substantive law, it must be recalled that, in accordance with the case-law, where the proprietor of an EU trade mark requests proof of genuine use to be furnished, that use constitutes a condition which must be met, under Regulation No 40/94, not only by EU trade marks but also by earlier national marks relied on in support of an application for a declaration of invalidity of that EU trade mark. Therefore, the application of Article 43(2) of Regulation No 40/94 to earlier national marks under paragraph 3 of that article means that genuine use is to be defined according to Article 15 of that regulation and not in accordance with national law (see, by analogy, in relation to invalidity proceedings, judgment of 12 July 2019, mobile.de v EUIPO – Droujestvo S Ogranichena Otgovornost “Rezon” (mobile.ro), T‑412/18, not published, EU:T:2019:516, paragraph 23). The Board of Appeal therefore did not err in law, in the present dispute, in assessing whether the earlier national mark had been put to genuine use within the meaning of that provision of EU law and not under French law.

…

101    To establish whether that evidence proves the nature of use of the earlier mark, the scope of the protection conferred by that mark must first be identified correctly.

…

 The first complaint: incorrect identification of the earlier mark

103    By the first complaint, the applicant claims that the Board of Appeal failed correctly to identify the earlier mark even though it concerned a bottle containing a blade of grass.

–       Legislation and case-law

104    It is appropriate to recall the legislative and case-law context concerning (i) the scope of the protection conferred by a three-dimensional mark, such as the earlier mark, (ii) the requirement of clarity and precision in its representation and (iii) the requirement that that representation and any description of such a mark align with one another.

105    In accordance with the settled case-law of the Court concerning the law on EU trade marks, a sign may be registered as a mark only if the applicant for the mark provides a graphic representation in accordance with the requirement in Article 4 of Regulation No 40/94 (which became Article 4 of Regulation No 207/2009, and subsequently of Regulation 2017/1001), to the effect that the subject matter and scope of the protection sought are clearly and precisely determined (see, to that effect, judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 36; see also, to that effect and by analogy, judgment of 27 March 2019, Hartwall, C‑578/17, EU:C:2019:261, paragraph 38 and the case-law cited).

106    Where a verbal description of the sign accompanies the application, that description must serve to clarify the subject matter and scope of the protection sought under trade mark law and such a description cannot be inconsistent with the graphic representation of a trade mark or give rise to doubts as to the subject matter and scope of that graphic representation (see, to that effect, judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 37; see also, to that effect and by analogy, judgment of 27 March 2019, Hartwall, C‑578/17, EU:C:2019:261, paragraphs 39 and 40).

107    The graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified. First, the function of the requirement for a graphic representation is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. Next, in order to fulfil that function vis-à-vis the competent authorities and the public, in particular economic operators, the graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (see, to that effect, judgment of 21 June 2017, M/S. Indeutsch International v EUIPO – Crafts Americana Group (Representation of chevrons between two parallel lines), T‑20/16, EU:T:2017:410, paragraphs 33 and 34 and the case-law cited; see also, to that effect and by analogy, judgments of 12 December 2002, Sieckmann, C‑273/00, EU:C:2002:748, paragraphs 46 and 48 to 55, and of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraphs 25 and 27 to 32). In particular, the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Therefore, the means of graphic representation must be unequivocal and objective (see, to that effect and by analogy, judgment of 12 December 2002, Sieckmann, C‑273/00, EU:C:2002:748, paragraph 54).

108    A graphic representation which lacks precision and clarity does not make it possible to determine the scope of the protection sought (see, to that effect and by analogy, judgment of 27 November 2003, Shield Mark, C‑283/01, EU:C:2003:641, paragraph 59). The determining factor in the light of the scope of protection of the mark is the way in which it will be perceived on the sole basis of the sign as registered (see, to that effect, judgment of 17 January 2018, Deichmann v EUIPO – Munich (Representation of a cross on the side of a sports shoe), T‑68/16, EU:T:2018:7, paragraph 44). The requirement for a graphic representation is intended, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. Therefore, it is for the trade mark applicant to file a graphic representation of the mark corresponding precisely to the subject matter of the protection he or she wishes to secure. Once the trade mark is registered, its proprietor is not entitled to a broader protection than that afforded by that graphic representation or which does not correspond to it (see, to that effect, judgments of 30 November 2017, Red Bull v EUIPO – Optimum Mark (Combination of the colours blue and silver), T‑101/15 and T‑102/15, EU:T:2017:852, paragraph 71, and of 19 June 2019, adidas v EUIPO – Shoe Branding Europe (Representation of three parallel stripes), T‑307/17, EU:T:2019:427, paragraph 30 and the case-law cited).

109    In addition, Rule 3(3) of Regulation No 2868/95 provides that the application for registration ‘may contain a description of the mark’, which is optional. Therefore, where a description is included in the application for registration, that description must be examined in combination with the graphic representation. Indeed, it follows from the judgment of 6 May 2003, Libertel (C‑104/01, EU:C:2003:244), that a description of a sign may be required in order to fulfil the requirements of Article 4 of Regulation No 207/2009 (see, to that effect, judgments of 30 November 2017, Combination of the colours blue and silver, T‑101/15 and T‑102/15, EU:T:2017:852, paragraphs 79 and 80, and of 19 June 2019, Representation of three parallel stripes, T‑307/17, EU:T:2019:427, paragraph 31). However, examining the description in combination cannot broaden the precise subject of the protection which is defined by the representation (see paragraph 108 above), but can only contribute to clarifying it and making it more precise.

110    As regards three-dimensional trade marks, Rule 3(4) of Regulation No 2868/95 (now Article 3(3)(c) of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for the implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37)), which does not require a description for such marks, provides as follows:

‘Where registration of a three-dimensional mark is applied for, the application shall contain an indication to that effect. The representation shall consist of a photographic reproduction or a graphic representation of the mark. The representation may contain up to six different perspectives of the mark.’

111    It follows from the above that, as regards the interpretation and application of EU trade mark law, the representation of the trade mark, which must be clear and precise, defines the scope of the protection conferred by the registration. In addition, any description which accompanies the representation must align with the representation as registered and cannot extend the scope of the mark thereby defined. That requirement that any description align with the representation is therefore a corollary of the requirement that the representation which defines the scope of the protection be clear and precise.

112    In the light of those principles, the Board of Appeal was correct in observing, in paragraph 38 of the contested decision, that the (at that time graphic) representation of the mark as filed defines its scope of protection, and not the description of the mark as provided by the applicant, before adding that a mark description must define what can be seen in the mark representation and that the scope of protection is not broadened by a possible interpretation of what the applicant meant by that representation or what it had in mind.

–       Application in the present case to defining the precise subject of the protection conferred by the earlier mark and to whether its description aligns with its representation

113    In the present case, it is clear from the certificate of registration of the earlier three-dimensional French mark, issued by the Institut national de la propriété industrielle (INPI, France), that that mark contains a representation (reproduced in paragraph 7 above), with a description that ‘the mark consists of a bottle such as is pictured above, inside which a blade of grass is placed in the body of the bottle in an almost diagonally inclined position’.

114    As regards that certificate of registration, it should be pointed out, at the outset, that the description of the earlier mark does not align with its representation. Indeed, it is clear that the representation involves a line, and not a blade of grass as described. In addition, in the representation, the line appears rather to be located on the body of the bottle and it is not clear that it is found inside the bottle. Furthermore, the description of that mark, since it does not align with its representation, cannot serve to clarify it or make it more precise.

115    Therefore, it must be stated that the Board of Appeal was correct in observing, in paragraph 39 of the contested decision that (i) the graphical representation of the earlier mark showed ‘a commonly shaped bottle with a line on the body of it which r[an] diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’, (ii) the line, shown as a fixed part of the body of the bottle, was a straight diagonal line and nothing else and (iii) that fact was not altered by the description provided by the applicant because the scope of protection of the mark was not defined by what the applicant had in mind when filing the mark.

116    As the intervener observes, that assessment by the Board of Appeal is in line with the considerations relevant for the correct identification of a three-dimensional mark, according to which it is the representation which is decisive in defining the scope of protection of such a mark and the description cannot alter or interpret the representation of that mark.

117    That finding is not called into question by the applicant’s arguments that the perception of the earlier three-dimensional French mark as involving a blade of grass inside the bottle corresponds, first, to the Court’s findings in the judgment ordering annulment, second, to the representation, type and description of that mark set out in its certificate of registration and, third, to the evidence submitted.

118    First, in the judgment ordering annulment, the Court in no way made a finding on the substance of the precise subject of the protection conferred by the earlier three-dimensional French mark. It confined itself to upholding the third plea in the first action, which was based on a failure to state reasons and a failure to exercise discretion in relation to the evidence of use submitted for the first time before the Board of Appeal, that is to say, a plea regarding procedure relating to the failure to take account of the evidence of use, and not relating to how the scope of protection was defined (see also findings in respect of the first plea in paragraphs 70 to 82 above).

119    Second, the Board of Appeal’s assessment that that mark protects ‘a commonly shaped bottle with a [straight] line on the body of it which runs diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’ is based precisely on the representation of the earlier three-dimensional French mark in its certificate of registration. On the other hand, the alleged presence of a blade of grass is not apparent from the representation, but only from the description.

120    In fact, as the intervener submits, that description contains a misinterpretation of the representation because it interprets the graphic element of the line beyond what is visible by stating that that element is a blade of grass. Indeed, in the black and white representation (and therefore not limited to a particular colour such as green-brown, but rather covering all colours), the graphic element is a very straight black line, with no bends or irregularities, whereas a blade of grass is normally not straight, but has bends and irregularities. Moreover, in that representation, it is not clear that the line is inside the bottle, but rather it appears to be situated on the body of the bottle. Consequently, any interpretation or alteration of the representation by the description would fail to have regard to the principles recalled in paragraphs 104 to 112 above.

121    The intervener adds that if the applicant had wanted to protect a blade of grass in a bottle, it should have filed a completely true to life picture of a blade of grass, as done for other trade marks registered by the applicant.

122    In that regard, it should be noted that the Court has already ruled on the precise subject of the protection conferred by the applicant’s three-dimensional Polish mark No 189866, reproduced below:

123    The Court accordingly held, in paragraphs 94, 95, 97 and 98 of the judgment of 12 November 2015, CEDC International v OHIM – Fabryka Wódek Polmos Łańcut (WISENT) (T‑449/13, not published, EU:T:2015:839) and in paragraphs 96, 97, 99 and 100 of the judgment of 12 November 2015, CEDC International v OHIM – Fabryka Wódek Polmos Łańcut (WISENT VODKA) (T‑450/13, not published, EU:T:2015:841), that the earlier conflicting mark contained a figurative element consisting of a thin line which traverses the bottle and that that line was straight, inclining slightly to the left, green in colour and interrupted by the label. According to the Court, such schematic representations of what might constitute a blade of grass cannot, however, be perceived as an actual blade of grass. The feature present in the marks at issue, as represented and registered, will be perceived as what it is, that is to say, a simple line, and not as a blade of grass. Only a more realistic representation of a blade of grass, or a true image of a blade of grass placed inside a bottle, could refer to the image of a blade of grass, which, furthermore, could be confirmed by the description of it. However, the Court ruled that that was not so in the present case. Consequently, in its view, the Board of Appeal was – on the basis of the perception of that figurative element as a simple straight line, slightly inclined or on the diagonal, traversing a bottle – correct in finding that, as other figurative elements were present, that element was less distinctive and played a secondary role in the assessment of the similarity of the marks at issue. The Court ruled that that finding cannot be called into question by the applicant’s argument that the blade of grass is a particularly striking or original element. In that regard, according to the Court, it should be recalled that the figurative element in the marks at issue, as represented and registered, is a straight line, slightly inclined or diagonal, which will be perceived as a line traversing the bottle and not as a blade of grass. As a straightforward shape, that line does not appear to be particularly original or striking. In addition, in the case of both the mark applied for and the earlier mark, that line is subordinate due to the presence of other word and figurative elements in those marks. Consequently, it becomes less visible and, accordingly, its capacity to have an impact on the mind of the consumer is diminished.

124    As regards the earlier three-dimensional French mark at issue in the present case, it must be stated all the more that only a more realistic representation of the blade of grass, or a true image of a blade of grass placed inside a bottle, could have clearly and precisely established the presence of a blade of grass in that mark, which, furthermore, could have been confirmed by the description of that mark, which would then have been in alignment with the representation. That is not, however, so in the present case.

125    Third, in general, evidence of use which is submitted cannot influence the definition of the precise subject of the protection afforded by a mark. Indeed, that subject is defined by the representation of the mark set out in the certificate of registration, possibly clarified and made more precise by the description where the description aligns with the representation, but cannot be modified in any way by the actual use of the mark on the market. Moreover, Article 44(2) of Regulation No 40/94 (which became Article 43(2) of Regulation No 207/2009, and subsequently Article 49(2) of Regulation 2017/1001) does not allow a subsequent amendment to the application substantially to change the mark.

126    After all, in the present case, the lack of precision and clarity of the representation, together with its description, rather tends to be confirmed by the fact that the applicant has provided evidence which reproduced the earlier mark differently in comparison to the nature, length and position of the line in the representation set out in the certificate of registration (see, to that effect, judgments of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 45, and of 30 November 2017, Combination of the colours blue and silver, T‑101/15 and T‑102/15, EU:T:2017:852, paragraph 65).

127    Finally, in paragraph 45 of the contested decision, the Board of Appeal correctly stated that the earlier mark cannot protect the concept of a blade of grass in a bottle.

128    In that regard, the Court held that an abstract representation of a concept in any conceivable form will not exhibit the qualities of precision and uniformity required by Article 4 of Regulation No 40/94. Indeed, such a representation would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling it to make further purchases with certainty, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark (see, to that effect, judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 38; see also, to that effect and by analogy, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraphs 33 to 35).

129    Furthermore, the Court ruled that the subject matter of an application for registration of a trade mark which relates to every conceivable form of a product or part of a product does not constitute a ‘sign’ within the meaning of Article 4 of Regulation No 40/94 and, therefore, is not capable of constituting a trade mark within the meaning of that provision (see, by analogy, judgment of 25 January 2007, Dyson, C‑321/03, EU:C:2007:51, paragraph 40).

130    It follows that trade mark law does not permit protection of a concept or of an idea, but only protection of a concrete expression of a concept or of an idea, such as that incorporated in the sign and defined by the representation of that sign.

131    The applicant itself acknowledges that it does not intend to appropriate to itself any representation of a blade of grass in a bottle, but rather claims exclusivity over a specific representation, which forms part of its mark, of a combination of those two elements.

132    It is therefore the concrete representation of the earlier mark that determines the precise subject of the protection conferred by that mark for the purpose of examining the nature of use of that mark.

133    Clearly, it is apparent from the representation of the earlier mark, as correctly identified by the Board of Appeal, that the precise subject of the protection conferred by that mark relates solely to ‘a commonly shaped bottle with a line on the body of it which runs diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’ and not, as the applicant claims, a blade of grass.

134    The first complaint must therefore be rejected as being unfounded.

 The second, third and fourth complaints, alleging, respectively, that (i) an erroneous and inadequate criterion of genuine use of the earlier mark was applied, (ii) account was not taken of the possibility of the joint use of several trade marks and (iii) there was no alteration of the distinctive character of the earlier mark at the time of its use

135    By the second complaint, the applicant claims that the Board of Appeal ‘once again’ applied an improper and inadequate test of genuine use of the earlier three-dimensional French mark on account of its ‘simplistic, two-dimensional’ approach, did not take a dynamic approach in relation to the views from various sides, and in doing no more than assessing the items of evidence independently of each other, failed to analyse them jointly. By the third complaint, the applicant claims that the Board of Appeal disregarded the possibility of the joint use of several trade marks of various types by incorrectly stating that the use of the label changes the distinctive character of the mark at issue. By the fourth complaint, it submits that the Board of Appeal incorrectly assessed genuine use of that mark within the meaning of Article 15(1)(a) of Regulation No 207/2009, by erroneously restricting genuine use only to cases where the form is ‘the same’ or ‘identical’ to that registered and by failing to acknowledge that minor differences in the length and position of the blade of grass in the bottle used on the French market had not altered the distinctive character of that mark as registered.

–       Legislation and case-law

136    Pursuant to the provisions of Article 15(2)(a) of Regulation No 40/94 (which became point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 and subsequently point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001), proof of genuine use of an earlier national or EU trade mark also includes evidence of the use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered.

137    It follows directly from the wording of Article 15(2)(a) of Regulation No 40/94 that the use of the trade mark in a form which is different from the form in which it was registered is regarded as use for the purposes of Article 15(1), to the extent that the distinctive character of the trade mark in the form in which it was registered is not changed (see, to that effect, judgments of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 21; of 28 February 2017, Labeyrie v EUIPO – Delpeyrat (Representation of a sowing of light coloured fish on a dark background), T‑767/15, not published, EU:T:2017:122, paragraph 18; and of 28 June 2017, Tayto Group v EUIPO – MIP Metro (real), T‑287/15, not published, EU:T:2017:443, paragraph 22). The rule whereby the use of a mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered is also regarded as use of that mark may be referred to, for the sake of brevity, as the ‘law of permissible variations’ (see, to that effect, judgment of 19 June 2019, Representation of three parallel stripes, T‑307/17, EU:T:2019:427, paragraph 48).

…

140    For the purposes of that finding, account must be taken of the inherent qualities and, in particular, the greater or lesser degree of distinctive character of the registered mark where it is used solely as part of a complex trade mark or jointly with another mark. The weaker the distinctive character, the easier it will be to alter it by adding a component that is itself distinctive, and the more the mark in question will lose its ability to be perceived as indicative of the origin of the product. The reverse is also true (judgments of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 33; of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 29; and of 28 February 2017, Representation of a sowing of light coloured fish on a dark background, T‑767/15, not published, EU:T:2017:122, paragraph 22).

…

142    Accordingly, the condition of genuine use of a trade mark may only be satisfied where a trade mark is used in conjunction with another mark, provided that the mark continues to be perceived as indicative of the origin of the product concerned (judgments of 28 February 2017, Representation of a sowing of light coloured fish on a dark background, T‑767/15, not published, EU:T:2017:122, paragraph 48; of 10 October 2017, Klement v EUIPO – Bullerjan (Form of an oven), T‑211/14 RENV, not published, EU:T:2017:715, paragraph 47; and of 28 February 2019, PEPERO original, T‑459/18, not published, EU:T:2019:119, paragraph 97).

…

147    As regards a three-dimensional mark consisting of the shape of the product itself, to reach the conclusion that the earlier mark was actually used in accordance with its essential function, the proof of use must take the form of elements which enable an unequivocal conclusion to be drawn that the consumer is in a position to associate the shape protected by the earlier mark with a particular undertaking (see, to that effect, judgments of 27 September 2018, M J Quinlan & Associates v EUIPO – Intersnack Group (Shape of a kangaroo), T‑219/17, not published, EU:T:2018:610, paragraph 33, and of 28 February 2019, PEPERO original, T‑459/18, not published, EU:T:2019:119, paragraph 72).

148    Finally, it must be held that, where a trade mark is extremely simple, even minor alterations to that mark are capable of constituting significant variations, so that the amended form may not be regarded as broadly equivalent to the registered form of that mark. Indeed, the simpler the mark, the less likely it is to have a distinctive character and the more likely it is for an alteration to that mark to affect one of its essential characteristics and thereby perception of that mark by the relevant public (see, to that effect, judgments of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraphs 33 and 52 and the case-law cited, and of 19 June 2019, Representation of three parallel stripes, T‑307/17, EU:T:2019:427, paragraph 72).

–       Application to the present case

149    In the present case, as regards the fourth complaint, in the first place, it is clear that the earlier mark, as represented, which protects ‘a commonly shaped bottle with a [straight] line on the body of it which runs diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’ and not a blade of grass (see paragraphs 115 and 133 above), has not been used as such, in an identical shape by the applicant in the evidence provided.

150    As regards the evidence submitted before the Opposition Division (see paragraph 15 above) which included bottles, none of those bottles bore an uninterrupted diagonal line and even less so a straight line identical to that found in the earlier mark. In addition, that line is not affixed on the outside surface of any of the bottles and did not appear on or across the label itself. Furthermore, all the bottles have a non-transparent label (illegible or bearing the words ‘żubrówka bison vodka’), which is capable of affecting the visibility and perception of what is behind it.

151    As regards the evidence submitted out of time before the Board of Appeal (see paragraph 25 above) and, more specifically the photographs, together with Mr K.’s statement, of the bottle with the ‘żubrówka bison vodka’ label and depicted that time not only with a view from the front but also from the back and with two side views, it must be stated that, from the side views, a long uninterrupted line can indeed be observed.

152    However, those lines appearing in the two side views in that item of evidence, although slightly different from one another, are very different from the straight diagonal line in the earlier mark. They differ in their nature, not being completely straight but rather slightly curved, in their being longer and in their position, since they start and end at different points on the edge and in the bottom part of the bottle, which also results in a different angle.

153    Therefore, the Board of Appeal correctly concluded in paragraphs 40 to 42 of the contested decision that none of the evidence submitted before the Opposition Division (see paragraph 15 above) or before it (see paragraph 25 above) showed the mark in its registered form, that is to say, as it is graphically represented in the certificate of registration.

154    In the second place, it must be observed that nor has the applicant used the earlier mark, as it was represented, which protects ‘a commonly shaped bottle with a [straight] line on the body of it which runs diagonally from the left side of the bottle, starting just below the neck, to the bottom edge of the base’ and not a blade of grass (see paragraphs 115 and 133 above), in a form differing in elements which do not alter the distinctive character of the mark in the form in which it had been registered or by negligible variations.

155    In that regard, account must be taken, as the Board of Appeal did in paragraph 44 of the contested decision, of the fact that the distinctive character of the earlier mark as such is weak. Indeed, that mark consists of a commonly shaped bottle with a simple straight line of a precise length, placed in a specific position resulting in a particular angle. In the overall impression, it is that simple straight line, and its precise length and specific position, that renders the trade mark a little distinctive.

156    Accordingly, the scope of protection of the earlier mark as defined by its graphic representation proves to be narrow and its distinctive character is easily altered (see paragraph 140 above), all the more so because it is a three-dimensional mark (see paragraphs 143 and 147 above).

157    The forms set out in the evidence submitted differ from the form protected by the earlier mark by significant variations in nature, length and position (see paragraph 152 above) and cannot be regarded as ‘significant’ or ‘broadly equivalent’ to the mark as registered within the meaning of the case-law (see paragraph 148 above).

158    Therefore, the Board of Appeal was correct in finding in paragraphs 43 to 45 of the contested decision that that use, as demonstrated by the evidence submitted for the first time before it, not only was not use of the earlier mark as registered, but was also not use in a form which differed in elements which did not alter the distinctive character of the mark in the form in which it had been registered as provided for in point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009.

159    Thus, clearly the earlier mark as used, as may be seen from the evidence submitted, does not align with that mark as represented and registered, and the differences between them constitute an alteration of the distinctive character of the mark as represented and registered which goes beyond negligible variations under the ‘law of permissible variations’.

160    The fourth complaint must therefore be rejected as unfounded.

…

166    As regards the third complaint, concerning the possibility of the joint use of several trade marks of various types, it is true that it must be borne in mind that, in accordance with established case-law, the use of a mark may also encompass both its independent use and its use as part of another mark or in conjunction with that other mark (judgment of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraph 32; see also, to that effect, judgments of 18 July 2013, Specsavers International Healthcare Ltd and Others, C‑252/12, EU:C:2013:497, paragraphs 23, 24 and 26, and of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 29).

167    However, it is important to make clear that a registered trade mark which is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term ‘genuine use’ within the meaning of Article 15(1) of Regulation No 40/94 (judgments of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraph 35, and of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 30).

168    In the present case, in the first place, it should be noted that, while the Board of Appeal referred to the presence of the label (illegible or bearing the words ‘żubrówka bison vodka’), that was primarily because it took the view that the presence of that label affected the visibility and perception of the earlier three-dimensional French mark on the evidence of use, and not only because the presence of a mark of another type, whether verbal or figurative, altered the distinctive character of that mark. Indeed, in the photographs reproduced in paragraph 15 above, depending on the photograph in question, either no line is visible, or nothing is visible in the bottom part of the bottle under the label, or indeed a number of (two or three) lines are visible under the label.

169    Therefore, as EUIPO maintains, it is not the sole fact that several marks were used on the same product that led the Board of Appeal to the conclusion that the use of the earlier mark was not proven, but primarily the fact that it was difficult to detect what was behind the label, especially since the photographs were contradictory as to the absence or existence of a line or blade of grass.

170    It follows that the Board of Appeal in no way called into question the case-law on the possibility of joint use of several marks of different types cited in paragraphs 166 and 167 above, in accordance with which the condition of genuine use of a mark may be fulfilled when a mark is used in conjunction with another mark, provided that the mark continues to be perceived as indicative of the origin of the product at issue.

171    In the second place and in any event, it must be held, a view shared by the intervener, that the conditions for such joint use of a three-dimensional mark in conjunction with other marks are not fulfilled in the present case. While the combined use of two marks may, admittedly, in general, constitute use of one of those marks, that is, however, the case only if the distinctive character of that mark is not altered, that condition being fulfilled only if the relevant public perceives that mark individually and independently of the other mark as indicative of origin.

172    In the present case, not only is the earlier mark used in conjunction with another mark, affixed on a non-transparent label, which impedes visibility and affects the perception of the distinctive part of that earlier mark, but, in any event, the applicant has failed to demonstrate, in the evidence of use submitted, the individual and independent perception of that mark as indicative of origin by the relevant public, for example by producing a market survey.

173    In that regard, the Court has already ruled, in relation to a drawing comparable to photographs, that (i) the line was subordinate due to the presence of other word and figurative elements in the marks used jointly, (ii) it thereby became less visible and (iii) accordingly, its capacity to have an impact on the mind of the consumer was diminished (see, to that effect, judgments of 12 November 2015, WISENT, T‑449/13, not published, EU:T:2015:839, paragraph 98, and of 12 November 2015, WISENT VODKA, T‑450/13, not published, EU:T:2015:841, paragraph 100).

174    That is also so in the present case. It has not been demonstrated that the earlier trade mark, when used together with the word mark ŻUBRÓWKA BISON VODKA or with the graphic elements concerning the bison on the label, continues to be perceived as indicative of origin by the relevant public. That is even less the case because the inherent distinctive character of the earlier mark is weak (see paragraph 155 above), clearly weaker than that of that word mark and, consequently, substantially altered by it (see paragraph 156 above).

175    Moreover, it must be recalled that the distinctive character of the earlier mark is primarily altered by the fact that the lines present in the evidence of use, even though submitted out of time, differ substantially from that shown in the representation of the earlier mark by their nature, being not 100% straight but slightly curved, by their being longer and their position being different, their not starting at the same point in the bottom part of the bottle, resulting in a different angle (see paragraph 151 above). In the overall impression, it is that straight line, with its specific position and length, which makes the earlier mark a little distinctive, since it consists of a commonly shaped bottle with such a line.

…

177    Since the distinctive character of the earlier mark, which is inherently weak, is substantially altered in the evidence of use by the other marks or elements found on the label, the requirements for joint use are not fulfilled.

178    The third complaint must be rejected as having no factual basis and, in any event, as being unfounded.

179    It is therefore necessary to uphold the assessment of the Board of Appeal that the use of the earlier three-dimensional French mark, as represented and registered, has not been proven.

180    In the light of all of the foregoing, the second plea must be rejected.

 The third plea in law: infringement of Article 75 and Article 76(1) of Regulation No 207/2009

181    By the third plea, the applicant claims that the Board of Appeal infringed Article 75 of Regulation No 207/2009 (failure to state reasons) and Article 76(1) of Regulation No 207/2009 (failure to examine the facts correctly). In that regard, it relies on four complaints, the first three of which must be examined together, concerning the ground for opposition set out in Article 8(1) of Regulation No 207/2009, and the last of which must be examined separately, concerning the grounds for opposition set out in Article 8(3) and (4) of that regulation.

…

 The fourth complaint, concerning the reference by the Board of Appeal to the reasoning of an earlier decision annulled by the Court

194    By the fourth complaint, the applicant maintains that the Board of Appeal failed to address the remaining grounds of appeal and of opposition, based on Article 8(3) and (4) of Regulation No 207/2009. In paragraph 48 of the contested decision, it merely referred to the reasoning stated for its initial decision in Case R 2506/2010‑4. The applicant argues that the Board of Appeal seems to have ‘overlooked’ the fact that the earlier decision had been annulled in its entirety by the judgment ordering annulment. Accordingly, it maintains that in the contested decision, the Board of Appeal should have ruled on all the grounds relied on by the applicant in its appeal and could not refer to a decision which no longer existed.

195    EUIPO disputes those arguments. It points out that, as stated in paragraph 29 of the judgment ordering annulment, it was the applicant itself which restricted its arguments solely to the Board of Appeal’s findings on the assessment of the evidence of use adduced in the initial decision and it was the applicant which submitted that those findings also concerned all the grounds put forward in support of the opposition.

196    The intervener disputes those arguments. It takes the view that the Board of Appeal’s reference to the initial decision of 26 March 2012 in Case R 2506/2010‑4 to demonstrate that the requirements of Article 8(3) and (4) of Regulation No 207/2009 were not met likewise does not constitute an infringement of Articles 75 and 76 of that regulation. It is of the opinion that, following the proceedings before the Court, Article 8(3) and (4) of that regulation no longer formed part of the subject matter of the dispute before the Board of Appeal because the subject matter of the judgment ordering annulment was the infringement of Articles 75 and 76 of that regulation with regard to Article 8(1)(a) of that regulation, and concerned solely the evidence of use. It observes that the subject matter of the proceedings was limited – by the applicant itself – to the infringement of those provisions because the applicant had stated in paragraph 5.2 of its previous application that it ‘restrict[ed] its arguments solely to the Board of Appeal’s findings on the assessment of the evidence of use adduced, as those findings also concern[ed] all the grounds put forward in support of the opposition’. However, the intervener takes the view that the evidence regarding use does not concern all the grounds of opposition referred to in Article 8(3) and (4) of Regulation No 207/2009 because, in accordance with the case-law arising from the judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar (C‑96/09 P, EU:C:2011:189, paragraph 143), it has no right to request proof of use of those rights. On the contrary, it states that a use request may only be requested for earlier rights in the sense of Article 8(1) of that regulation. It is for that reason that the intervener is of the view that Article 8(3) and (4) of that regulation was no longer at issue in the former proceedings before the Court and nor are those provisions the subject matter of the present proceedings concerning the contested decision.

197    In addition, the intervener submits that, in paragraphs 20 to 34 of the initial decision of 26 March 2012, the Board of Appeal provided detailed reasoning why those provisions did not apply. However, the applicant did not provide any argument or reasoning why that part of the decision was flawed, but only referred, incorrectly, to the question of genuine use being a prerequisite for the assessment of those grounds. According to the intervener, that is not in line with Article 76(d) of the Rules of Procedure, which requires the applicant to provide in detail the arguments why EUIPO has infringed the law. Therefore, in its view, even if the applicant had wanted to appeal against the initial decision in relation to Article 8(3) and (4) of Regulation No 207/2009, that plea was inadmissible and the decision could not be annulled on the basis of those provisions. The intervener contends that, when the Court annulled the decision in its entirety, it could only annul it as far as it was contested. However, the applicant did not contest the rejection of the grounds of opposition set out in Article 8(3) and (4) of Regulation No 207/2009. In addition, the limitation to the ground of opposition set out in Article 8(1) of that regulation is also apparent from the applicant’s reasoning, which claimed infringement of that ground only.

198    It should be noted that the Board of Appeal, in paragraph 48 of the contested decision, ‘as regards the other grounds of the opposition and the other earlier rights invoked, … explicitly refer[red] to the reasoning in its decision of 26 March 2012, Case R 2506/2010‑4’.

199    Clearly, that initial decision had been annulled in its entirety by the Court in the judgment ordering annulment, which was not appealed against and has become res judicata.

200    Since a judgment annulling a measure takes effect ex tunc and thus has the effect of retrospectively eliminating the annulled measure from the legal system (see paragraph 72 above), that initial decision does not exist in the EU legal order and can therefore have no effect.

201    Consequently, that initial decision does not form part of the legal context in the light of which the statement of reasons of the contested decision must be assessed.

202    Moreover, an opposition based on more than one ground can be rejected only if all the grounds on which it relies are examined and rejected.

203    It follows that the Board of Appeal, when providing the basis for the operative part of the contested decision rejecting all the grounds of opposition relied on, was not permitted to refer, for certain of those grounds, to the reasoning of an initial decision which had been annulled in its entirety by the Court, without examining and rejecting each of the grounds of opposition.

204    It must therefore be concluded that, by doing no more than ‘referring explicitly’, in respect of the grounds of opposition laid down in Article 8(3) and (4) Regulation No 207/2009, to the reasoning contained in the initial decision, which was annulled in its entirety by the Court, and by basing the operative part of the rejection of the appeal before it in part on such a reference, the Board of Appeal failed to provide reasons for the contested decision to the requisite legal standard, which infringed Article 75 of Regulation No 207/2009.

205    That conclusion is not weakened by the fact that the Court, in paragraph 29 of the judgment ordering annulment, observed as follows:

‘… the applicant challenges [EUIPO]’s findings and assessments of all the grounds put forward in support of the opposition, that is to say, those listed in Article 8(1)(a), Article 8(3) and Article 8(4) of Regulation No 207/2009. However, the applicant states that it was restricting its arguments solely to the Board of Appeal’s findings on the assessment of the evidence of use adduced, as those findings also concern all the grounds put forward in support of the opposition.’

206    In that regard, without it being necessary to establish whether or not the assessment of the evidence of use submitted concerned all the grounds of opposition in the same way, it is sufficient to find that the fact that the Court upheld, in the judgment ordering annulment, the third plea, claiming infringement of Article 75 and of Article 76(1) of Regulation No 207/2009 and regarding the Board of Appeal’s failure to take into account, without stating reasons, certain evidence of use, was liable to call into question, at the very least, the examination of the ground of opposition set out in Article 8(1)(a) and (b) of that regulation and, consequently, the entire operative part of the initial decision, dismissing the appeal against the Opposition Division’s decision rejecting the opposition.

207    Indeed, where, on an appeal against a decision of the Board of Appeal such as the initial decision, the Court finds that the Board of Appeal’s assessment is invalid, even if as regards only one of the grounds of opposition relied on, it must annul that decision in its entirety, as it did in the judgment ordering annulment.

208    The fourth complaint of the third plea raised in support of the present action must therefore be upheld.

209    In light of all the foregoing, the contested decision must be annulled solely with regard to the grounds of opposition set out in Article 8(3) and (4) of Regulation No 207/2009, as referred to by the fourth complaint of the third plea, and the action must be dismissed as to the remainder, that is to say, in respect of all the grounds of opposition set out in Article 8(1)(a) and (b) of that regulation.

 Costs

210    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Moreover, under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.

211    In the present case, the applicant has been unsuccessful in part, since the finding on the substance of the fourth complaint of the third plea leads to the annulment of the contested decision solely as regards the grounds of opposition set out in Article 8(3) and (4) of Regulation No 207/2009 and the action is dismissed as to the remainder. For their part, EUIPO and the intervener have been unsuccessful solely in relation to that complaint, whereas the action is dismissed in respect of all the grounds of opposition set out in Article 8(1)(a) and (b) of that regulation.

212    Consequently, it is held that each party is to bear its own costs.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2016 (Case R 1248/2015‑4) in respect of the grounds of opposition set out in Article 8(3) and (4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark;

2.      Dismisses the action as to the remainder;

3.      Orders CEDC International sp. z o.o., EUIPO and Underberg AG to bear their own costs.

Delivered in open court in Luxembourg on 23 September 2020.

[Signatures]

*      Language of the case: English.

1      Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.

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