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

JUDGMENT OF THE GENERAL COURT (Third Chamber)

14 July 2021 (*)

(EU trade mark – Revocation proceedings – EU figurative mark RICH JOHN RICHMOND – Absence of genuine use of a trade mark – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) – Use in a form differing in elements which alter the distinctive character of the mark – Point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001)

In Case T‑297/20,

Fashioneast Sàrl, established in Luxembourg (Luxembourg),

AM.VI. Srl, established in Naples (Italy),

represented by A. Camusso and M. Baghetti, lawyers,

applicants,

v

European Union Intellectual Property Office (EUIPO), represented by R. Cottrell, J. Crespo Carrillo and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Moschillo Srl, established in Avellino (Italy),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 16 March 2020 (Case R 1381/2019‑2) relating to revocation proceedings between Moschillo, on the one hand, and Fashioneast and AM.VI., on the other.

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins, President, V. Kreuschitz (Rapporteur) and Z. Csehi, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 22 May 2020,

having regard to the response lodged at the Court Registry on 27 August 2020,

having regard to the letter, lodged at the Court Registry on 6 April 2021, by which the applicants informed the Court that they would not be present at the hearing, and the letter, lodged at the Court Registry on 14 April 2021 in response to a question from the Court, by which EUIPO stated that it did not raise any objections to the close of the oral part of the procedure without a hearing, and having decided, pursuant to Article 108(2) of the Rules of Procedure of the General Court, to close the oral part of the procedure,

gives the following

Judgment

 Background to the dispute

1        On 27 February 2011, the predecessor in law of the applicants, Fashioneast Sàrl and AM.VI. Srl, obtained from 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)), registration of the following figurative sign as an EU trade mark:

2        The goods in respect of which the mark was registered are in Classes 3, 9, 14, 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.

3        On 9 December 2016, the other party to the proceedings before EUIPO, Moschillo Srl, filed an application for revocation of the contested mark in respect of all the goods referred to in paragraph 2 above.

4        The ground relied on in support of the application for revocation was that set out in Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001).

5        On 18 July 2017, Fashioneast submitted a number of documents as proof of genuine use of the contested mark.

6        On 29 April 2019, the Cancellation Division revoked the contested mark in its entirety as from the date of the application for revocation.

7        On 25 June 2019, the applicants filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.

8        By decision of 16 March 2020 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it found that the evidence submitted by Fashioneast before EUIPO concerned use of the contested mark in a form differing in elements which altered the distinctive character of that mark in the form in which it had been registered (paragraphs 19 to 34 of the contested decision) and that it was therefore not necessary to examine the place, time and extent of that use (paragraph 35 of the contested decision).

 Forms of order sought

9        The applicants claim that the Court should:

–        annul the contested decision and declare that the contested mark shall remain registered for all classes of goods for which genuine use has been demonstrated;

–        in the alternative, annul the contested decision and remit the case to the Board of Appeal for a decision on the time, place and extent of use of the contested mark;

–        ‘declare [the applicants] discharged from the payment of all the fees and costs of the appeal and cancellation proceedings determined by the Second Board of Appeal in the amount of EUR 1 360’;

–        order EUIPO to pay the costs.

10      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicants to pay the costs incurred by EUIPO.

 Law

 Preliminary observations

11      As a preliminary point, it must be borne in mind that, in the present case, the application for revocation was filed with EUIPO on 9 December 2016 (see paragraph 3 above), thus before the date of entry into force of Regulation 2017/1001 on 1 October 2017 (see the second paragraph of Article 212 of Regulation 2017/1001), but after the date of entry into force of Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, 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), on 23 March 2016 (see the first paragraph of Article 4 of Regulation 2015/2424). Consequently, the present dispute is governed by the substantive provisions of Regulation No 207/2009, as amended by Regulation 2015/2424 (see, to that effect, judgment of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3).

12      Therefore, in the present case, as regards the substantive rules, the references to the provisions of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the applicants and EUIPO in their pleadings should be understood as relating to the identical provisions of Regulation No 207/2009 (see, to that effect, judgment of 24 March 2021, Novomatic v EUIPO – adp Gauselmann (Power Stars), T‑588/19, not published, EU:T:2021:157, paragraph 21).

13      It should also be borne in mind that, under Article 80 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), 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) continues to apply to ongoing proceedings where Regulation 2018/625 does not apply in accordance with Article 82 thereof, until such proceedings are concluded.

14      According to Article 82(2)(f) and (i) of Regulation 2018/625, Articles 12 to 15 are not to apply to applications for revocation entered before 1 October 2017 and Article 19 of that regulation is not to apply to requests for proof of use made before 1 October 2017.

15      In support of their action, the applicants raise a single plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009 and of Article 15 of that regulation (now Article 18 of Regulation 2017/1001). They accept that the evidence which they filed before EUIPO does not demonstrate the use of the contested mark in exactly the form in which it was registered, but submit that the dominant elements of that mark, as it was registered, are used in a way that does not alter the distinctive character of the contested mark.

16      EUIPO disputes the applicants’ arguments and submits that the Board of Appeal was entitled to find that the applicants had not shown that they had made genuine use of the contested mark. It considers, in essence, that none of the evidence submitted by the applicants in the present case shows the word elements ‘rich’ and ‘john richmond’ combined, and that that evidence demonstrates, by contrast, that they are two autonomous and independent signs.

17      Under Article 51(1)(a) of Regulation No 207/2009, the rights of the proprietor of the EU trademark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trademark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

18      It should be borne in mind that, in accordance with Rule 22(3) of Regulation No 2868/95, which applies mutatis mutandis to revocation proceedings in accordance with Rule 40(5) of that regulation, proof of genuine use of a trade mark must concern, as cumulative requirements, the place, time, extent and nature of the use made of it (see judgment of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 62 and the case-law cited).

 The nature of the use

19      As EUIPO rightly submits, in essence, as regards the nature of the use, it must be shown that the contested mark was 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, and that that use concerns the contested mark in the form in which it was registered.

20      As regards the second condition, under point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 in the version applicable to the present dispute (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001), use of an EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered also constitutes use of that mark within the meaning of the first subparagraph of Article 15(1) of Regulation No 207/2009 (now the first subparagraph of Article 18(1) of Regulation 2017/1001).

21      For a trade mark to possess distinctive character for the purposes of Regulation No 207/2009, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgment of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 26 and the case-law cited).

22      It must be noted that point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 relates to a situation where a national or EU registered trade mark is used in trade in a form slightly different from the form in which registration was effected. The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 27 and the case-law cited).

23      In order to find that the distinctive character of the trade mark as registered has altered, it is necessary to carry out an assessment of the distinctive and dominant character of the elements added, on the basis of the intrinsic qualities of each of those elements, as well as the relative position of the different elements within the arrangement of the mark (see judgment of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 63 and the case-law cited).

24      In addition, according to the case-law, where a mark is constituted or composed of a number of elements and one or more of them is not distinctive, the alteration of those elements or their omission is not such as to alter the distinctive character of that trade mark as a whole (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 30 and the case-law cited).

25      In the present case, it is common ground that none of the evidence produced by the applicants before EUIPO relates to the contested mark in the form in which it was registered. It is therefore in the light of the foregoing considerations that it is necessary to examine whether the Board of Appeal was right to find, in essence, that the applicants also failed to demonstrate genuine use of the contested mark in a form which constituted an admissible difference, in accordance with point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009.

26      According to the applicants, the evidence that they submitted to EUIPO demonstrates consistent use, on the goods, of the distinctive elements of the contested mark, namely, first, the word element ‘rich’, which distinguishes the sub-brand RICH JOHN RICHMOND from the other sub-brands of the fashion house, and, second, the house mark RICHMOND.

27      In support of that claim, the applicants put forward, in essence, five complaints.

 The first complaint

28      By the first complaint, the applicants claim, in essence, that the Board of Appeal did not take sufficient account of a statement made by Mr Z. and of photos of certain products (shoes produced by Mr Z.’s company for the RICH JOHN RICHMOND line in 2011, 2012, 2013 and 2015) which were attached to that declaration or submitted separately by the applicants before EUIPO.

29      EUIPO disputes the applicants’ arguments.

30      First of all, it should be noted that the applicants do not claim that the photographs they submitted as evidence relate to use of the contested mark in the form in which it was registered. They maintain, in essence, that those photographs show consistent use on the goods in question of two elements of the contested mark, namely, first, the element ‘rich’ in one place on the product and, second, the element ‘richmond’ in another place on the product. However, they do not claim that those two elements are used in the same place as part of an overall sign, or that the photographs show use of the element ‘john’ on the goods in question.

31      Consequently, it must be held that, even on the basis of the applicants’ assertions, Mr Z’s statement that his company applied the mark RICH JOHN RICHMOND to certain models of shoes produced by his company is not in fact corroborated by the evidence submitted by the applicants in support of that statement, as the Board of Appeal found in paragraph 26 of the contested decision.

32      Furthermore, as EUIPO correctly submits, it is apparent from the case-law that 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 effective and sufficient use of the trade mark on the market concerned (see judgment of 4 April 2019, Hesse and Wedl & Hofmann v EUIPO – (TESTA ROSSA), T‑910/16 and T‑911/16, EU:T:2019:221, paragraph 31 and the case-law cited).

33      Given the number of product photographs in which the element ‘richmond’ clearly appears, it can be accepted that in the product photographs in which that element is only partially visible (see paragraph 26 of the contested decision) the whole of the term ‘richmond’ is reproduced. Those photographs are in fact solid and objective evidence which proves that that element was used in full on those photographed products, without any need to make assumptions.

34      However, that cannot be the case where there is no apparent trace of the element ‘richmond’, even in part, in a specific photograph of a product. As the applicants submit, to accept that it is apparent from all the evidence that that element is present on all the goods photographed, even if it is not visible at all in a specific photograph, would amount to establishing proof of use of that element on probabilities or presumptions.

35      It follows that the Board of Appeal cannot be criticised for not having taken Mr Z’s statement into account as evidence of use of the contested mark. However, the Board of Appeal should have recognised the element ‘richmond’ in the product photographs in which at least part of that element was clearly perceptible. Consequently, it must be concluded that the applicants have proved that a number of shoes were manufactured on which there appeared, in various forms, both the element ‘rich’ in one place and the element ‘richmond’ in another place.

 The second complaint

36      Under the second complaint, the applicants take the view, in essence, that the Board of Appeal should have recognised that the combined use of the word elements ‘rich’ and ‘richmond’ constituted genuine use of the contested mark which did not alter its distinctive character.

37      EUIPO contests the applicants’ arguments.

38      As the Board of Appeal already stated, in essence, in paragraph 26 of the contested decision, the elements ‘rich’ and ‘richmond’ never appear together, as they do in the contested mark. EUIPO correctly submits that those elements are always placed separately on different parts of the goods concerned – a point which the applicants do not dispute (see paragraph 30 above). Given the distance between the two elements on the goods in question, EUIPO is also correct in arguing that they accordingly constitute two autonomous signs which are not used as a single mark.

39      That finding is supported by the applicants’ assertion that the element ‘richmond’ corresponds to the ‘house’ mark, whereas the element ‘rich’ designates a sub-brand of that mark. As EUIPO correctly observes, it is apparent from the case-law that two or more marks may be used together in an autonomous way with or without the name of the manufacturer’s company (see judgment of 6 November 2014, Popp and Zech v OHIM – Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 43 and the case-law cited). In addition, such a practice of designating goods both by a house mark and by a sub-brand identifying a specific line of goods is not in fact unknown in the fashion sector, in the broad sense which is at issue here.

40      However, while it must be accepted that the element ‘richmond’ designates the ‘house’ mark, it cannot be maintained that it is also an element of the sub-brand which, according to the reasoning put forward by the applicants themselves, merely corresponds to the element ‘rich’. As a result, while it must be accepted that those elements may be used together in an autonomous way, it is not possible to take one of those elements into account in order to assess the genuine use of the other or of a mark of which it forms part, as is the case with the contested mark.

41      It follows that the evidence does not relate to the use of a single trade mark consisting of the elements ‘rich’ and ‘richmond’, but to the use together in an autonomous way of those two elements as separate trade marks. As EUIPO correctly points out, those elements are therefore not all combined in a single mark as in the contested mark, or stylised as in that mark.

42      Furthermore, EUIPO is right to refer, in essence, to the case-law according to which, where a trade mark is constituted or composed of a number of elements and one or more of them is not distinctive, the omission of those elements is not capable of altering the distinctive character of that mark as a whole (see paragraph 24 above).

43      In the present case, given that, for the purposes of assessing the use of the element ‘rich’ or the element ‘richmond’ on the products which are the subject of the evidence, it is not possible to take account of the other element appearing elsewhere on those products (see paragraph 40 above), the use of one of those elements alone would have to constitute use of the figurative mark RICH JOHN RICHMOND and all the other word elements and all the visual aspects of that mark would have to be not distinctive.

44      As the applicants themselves submit, the element ‘richmond’, designating the ‘house mark’, is highly distinctive. In addition, EUIPO correctly submits, first, that the element ‘rich’ plays an essential role in the contested mark because of its stylisation, size and position in that mark and, second, that the element ‘john’ has a certain distinctive character and cannot, therefore, be regarded as negligible. Ultimately, as EUIPO rightly observes, the word element ‘john richmond’ is a distinctive element identifying the designer of the goods which cannot be regarded as negligible in view of its stylisation, position and length which make it clearly perceivable. Consequently, since each of the three elements has at least a certain degree of distinctiveness, the omission of one of them is capable of altering the distinctive character of the contested mark as a whole.

45      It follows that, even if it were to be accepted that it was possible to take into account not only the element ‘rich’ but also the element ‘richmond’ elsewhere on the goods and vice versa, one distinctive element of the contested mark would still be missing, namely the element ‘john’. Furthermore, as regards the visual aspects of the contested mark, EUIPO correctly notes that that mark is a figurative mark in which the word element ‘rich’ is written in black bold capital letters and placed above the second word element ‘john richmond’, written in smaller and thinner black capital letters. That particular stylisation and the close proximity between all those elements actually define the contested mark. Consequently, the fact that the elements ‘rich’ and ‘richmond’ are placed apart on the goods in question and that the distinctive element ‘john’ is missing are sufficient, in any event, to alter the distinctive character of the contested mark.

46      That finding is not called into question by the applicants’ reference to the judgment of 10 December 2015, Sony Computer Entertainment Europe v OHIM – Marpefa (Vieta) (T‑690/14, not published, EU:T:2015:950). In that judgment, the Court did, indeed, apply the case-law cited in paragraph 24 above and examine whether the figurative elements of the contested mark in the context of that case, as they had been registered, constituted a distinctive element of that mark. In that regard, the Court held, inter alia, that the distinctive character of the contested mark originated, in essence, not from its figurative elements but from its word element, since that word element enjoyed enhanced distinctiveness and occupied an important position in the overall impression created by the contested mark, as registered, while the figurative elements had merely weak distinctive character and occupied merely an ancillary position in that overall impression. The Court corroborated that factual finding with a reference to the case-law from which it follows that, where a mark is composed of word elements and figurative elements, the former are, in principle, more distinctive than the latter (see, to that effect, judgment of 10 December 2015, Vieta, T‑690/14, not published, EU:T:2015:950, paragraphs 45 to 49).

47      However, in the present case, it cannot be held that the combination of the elements ‘rich’ and ‘richmond’ in a single mark constitutes a figurative aspect of the contested mark which is negligible. The placing apart of those two elements is sufficient in itself to alter the distinctive character of the contested mark (see paragraph 45 above). Furthermore, in a composite mark such as the contested mark, the element ‘john’ cannot be disregarded. Its complete omission also alters the distinctive character of the contested mark (see paragraph 44 above). Thus, the situation in the present case is clearly distinguishable from that at issue in the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950).

48      Given that the use of the elements ‘rich’ and ‘richmond’ together but on different parts of the goods in question cannot constitute genuine use of the contested mark which does not alter its distinctive character, the second complaint must also be rejected.

 The third complaint

49      Under the third complaint, the applicants refer to the RICHMOND catalogues which they submitted as proof of use before EUIPO and which, they claim, present bags and accessories from the RICH JOHN RICHMOND line. The products presented in that catalogue contain the word element ‘rich’ clearly incorporated in the design of the product. Some product images also show the word element ‘richmond’ alongside the element ‘rich’. However, according to the applicants, even if the element ‘rich’ is the only element visible in the product photographs contained in those catalogues, the fact remains that such products are presented to the public in a RICHMOND catalogue or in a RICHMOND store, with the result that there is no real likelihood of confusion for the consumer as to the origin of those goods.

50      EUIPO disputes the applicants’ arguments.

51      In the light of the considerations set out in the context of the second complaint, use of the element ‘rich’, without that element forming an integral part of a single overall sign in which both the element ‘richmond’ and the element ‘john’ also appear, constitutes use which alters the distinctive character of the contested mark.

52      In particular, contrary to the applicants’ assertions, the presentation of a product bearing the element ‘rich’ in the rather broad context of a RICHMOND catalogue or in a RICHMOND store does not permit the inference that the trade mark used on such a product consists not only of the element ‘rich’, but also of the element ‘richmond’.

53      It follows that the third complaint must also be rejected.

 The fourth complaint

54      By the fourth complaint, the applicants claim that the two design agreements concluded on 20 January 2009 between their predecessor in law and company F. establish use of the contested mark through licencing. It is apparent from the definition given in recital B of the agreements that the term ‘trade mark’ also includes the contested mark. According to the applicants, the two agreements concern goods covered by the contested mark and applied from 2009 to 2020, thus during the whole of the relevant period. Those licence agreements should be read together with the invoices issued by company F. to clients in Italy, dating from 2013 and 2014, concerning handbags and other goods identified by the abbreviation ‘RICH’. Those documents, together, reveal a clear chain of use of the contested mark to designate, at the very least, goods in Classes 18 and 25.

55      EUIPO disputes the applicants’ arguments.

56      First of all, it should be noted that the agreements do not expressly mention the contested mark. Recital B of the agreements states that the term ‘trade mark’ refers to the mark John Richmond as well as any trade mark or sign derived from it, and/or in any case containing the name or sign ‘Richmond’. Although it therefore seems possible that the agreement might also cover the contested mark, which includes the word element ‘rich john richmond’, it must be observed that the agreements were concluded on 20 January 2009 and therefore before the contested mark was registered (see paragraph 1 above).

57      In any event, in the absence of any express reference to the contested mark in the agreements, it cannot be maintained, in the absence of other evidence concerning those agreements, that they demonstrate use of the contested mark.

58      In so far as the applicants refer, in that regard, to two invoices allegedly issued by company F. to clients in Italy, dating from 2013 and 2014 and concerning handbags and other goods identified by the abbreviation ‘RICH’, it should be noted that those invoices concern, in fact, 73 and 167 leather bags, respectively.

59      First, the lists of goods covered by the two agreements do not include bags of any kind. Since they relate to different goods, the agreements, on the one hand, and the invoices, on the other, cannot therefore constitute, as the applicants claim, an obvious chain of use of the contested mark.

60      Second, it appears that those invoices were not issued by company F., but rather that they were addressed to it by company M.

61      Third, as is the case with the agreements, the invoices do not expressly mention the contested mark, or indeed all of its word elements. As EUIPO correctly submits, the invoices refer only to the word ‘RICH’, which cannot constitute use of the contested mark in a form differing in elements which do not alter the distinctive character of the contested mark in the form in which it was registered.

62      Accordingly, the fourth complaint must be rejected.

 The fifth complaint

63      Under the fifth complaint the applicants refer to certain documents which they submitted in the course of the proceedings before EUIPO relating to the use of the word elements ‘john richmond’. They claim that in the event that the Court finds that the combined use of the word elements ‘rich’ and ‘richmond’ is insufficient to prove genuine use of the contested mark, it follows that the use of the other elements ‘john richmond’ should be sufficient to establish genuine use of the contested mark.

64      In the light of the considerations set out in the context of the second complaint, use of the element ‘john richmond’, without that element forming an integral part of a single overall sign in which the element ‘rich’ also appears, constitutes use which alters the distinctive character of the contested mark. The fifth complaint must therefore be rejected.

 Conclusion

65      Since none of the complaints is well founded, it must be concluded that the applicants have not shown that they made use of the contested 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.

 Place, time and extent of use

66      In paragraphs 35 and 36 of the contested decision, the Board of Appeal correctly found that, irrespective of whether or not the information contained in the evidence produced by the applicants before EUIPO was sufficient as regards the place, time and extent of use, the applicants had not demonstrated genuine use of the contested mark in the form in which it was registered. Consequently, it correctly concluded that that evidence was not sufficient to prove that the contested mark had been put to genuine use in the European Union during the relevant period for the goods in respect of which it had been registered.

67      It follows that the single plea in law must be rejected.

 Conclusion

68      Since the single plea in law is unfounded, the action must be dismissed in its entirety, without it being necessary to examine the admissibility, which EUIPO disputes, first, of the applicants’ first head of claim, seeking a declaration that the contested mark shall remain registered, and, second, of their third head of claim regarding, in essence, reimbursement of the fees and costs incurred by the applicants in the proceedings before the Cancellation Division and before the Board of Appeal.

 Costs

69      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicants have been unsuccessful, they must be ordered to pay the costs, in accordance, in essence, with the form of order sought by EUIPO.

70      Consequently, it is also necessary to reject, in any event, the applicants’ third head of claim, by which they request the Court to ‘declare [them] discharged from the payment of all the fees and costs of the appeal and cancellation proceedings determined by the Second Board of Appeal in the amount of EUR 1 360’.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Fashioneast Sàrl and AM.VI. Srl to pay the costs.

Delivered in open court in Luxembourg on 14 July 2021.

*      Language of the case: English.

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