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

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

1 February 2023 (*)

(EU trade mark – Revocation proceedings – EU figurative mark efbet – Genuine use of a mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Proof of genuine use – Article 95 of Regulation 2017/1001 – Article 27(4) of Delegated Regulation (EU) 2018/625)

In Case T‑772/21,

Brobet ltd., established in Ta’Xbiex (Malta), represented by F. Bojinova, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by N. Lamsters and D. Hanf, acting as Agents,

defendant,

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

Efbet Partners OOD, established in Sofia (Bulgaria),

THE GENERAL COURT (Eighth Chamber),

composed of A. Kornezov, President, G. De Baere (Rapporteur) and D. Petrlík, Judges,

Registrar: E. Coulon,

having regard to the written part of the procedure,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Brobet ltd., seeks the annulment in part of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 September 2021 (Case R 624/2021-2) (‘the contested decision’).

 Background to the dispute

2        On 5 December 2012, the applicant, 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)), obtained from EUIPO, under No 10818748, registration of the following EU figurative mark:

3        An application for that registration had been filed on 18 April 2012. The goods and services in respect of which that mark was registered are in Classes 9, 16, 28, 35, 38 and 41 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.

4        On 9 December 2019, Efbet Partners OOD filed an application with EUIPO for revocation of the contested mark in respect of all the goods and services for which it was registered, on the basis of Article 58(1)(a) of Regulation 2017/1001, on the ground that the mark in question had not been put to genuine use in the European Union within a continuous period of five years.

5        By decision of 8 February 2021, the Cancellation Division revoked the contested mark in part, that being in respect of all the goods and services for which it had been registered, except for the services in Class 41 corresponding to the following description: ‘Entertainment, namely gambling; organisation of on-line betting; information services in the field of gambling; organisation of on-line games in the global computer network; gaming, namely gambling.’

6        On 6 April 2021, the applicant filed an appeal with EUIPO against the decision of the Cancellation Division in so far as it had revoked the contested mark in respect of the goods and services in Classes 9, 16, 28, 35 and 38 and in respect of the services in Class 41, with the exception of those referred to in paragraph 5 above.

7        By the contested decision, the Board of Appeal annulled the decision of the Cancellation Division in part, to the extent that it had revoked the contested mark in respect of ‘arcade game services’ in Class 41, and rejected the application for revocation in respect of those services. It dismissed the appeal as to the remainder.

 Forms of order sought

8        The applicant claims that the Court should:

–        annul the contested decision to the extent that it dismissed its appeal concerning the revocation of the contested mark in respect of the following goods and services:

–        ‘Computer interfaces; Recorded computer software, which can be transferred to another carrier; Electronic game equipment’, in Class 9;

–        ‘Entertainment (except gambling); Information services in the field of entertainment (except gambling); Gaming (except gambling)’ in Class 41.

–        order EUIPO to pay the costs.

9        EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

10      In support of its action, the applicant raises three pleas in law, alleging, first, infringement of Article 95(1) of Regulation 2017/1001, second, infringement of Article 95(2) of that regulation and, third, infringement of Article 58(1)(a) of that regulation.

 The first plea: infringement of Article 95(1) of Regulation 2017/1001

11      The applicant disputes the Board of Appeal’s assessment that it submitted belated claims. The Board of Appeal was wrong to find that the applicant had argued for the first time before it that the contested mark had been put to genuine use in respect of the goods and services in Classes 9, 16, 28, 35 and 38 and in respect of certain services in Class 41. It submits that the Board of Appeal failed to take account of the fact that it had provided facts and evidence to the Cancellation Division in due time regarding use of the contested mark for ‘Computer interfaces; Recorded computer software, which can be transferred to another carrier; Electronic game equipment’, in Class 9 (‘the goods at issue’).

12      It submits that Article 95(1) of Regulation 2017/1001, on the examination of the facts by EUIPO of its own motion, is applicable in all proceedings before EUIPO, including revocation proceedings. According to the applicant, EUIPO is not required, pursuant to that provision, to limit its examination to the grounds and arguments submitted by the parties.

13      The applicant states that the facts and evidence which it submitted to the Cancellation Division in its observations in reply to the application for revocation established genuine use of the contested mark in respect of the goods at issue. It claims that it did not belatedly submit new facts or evidence concerning the goods at issue at the stage of its appeal before the Board of Appeal. It argues that the Cancellation Division was required to examine the facts and evidence related to the use of the contested mark for the goods at issue and that the Board of Appeal should have annulled the Cancellation Division’s decision in that it revoked the contested mark in respect of those goods.

14      In the contested decision, the Board of Appeal observed that the applicant had submitted, within the set time limit, various items of evidence in order to demonstrate genuine use of the contested mark. It found that the applicant had claimed before the Cancellation Division that it had used the contested mark solely for the following services in Class 41: ‘Entertainment; Conducting lotteries; Organisation of television lotteries; Organisation of on-line betting; Information services in the field of entertainment and gambling; Organisation of television games and on-line games in the global computer network; Assuring equipment for gambling in casinos; Arcade game services; Gaming.’

15      The Board of Appeal considered that the applicant had claimed for the first time before it that the contested mark had been put to genuine use for the other goods and services covered by that mark. It held that that was a new claim which could not be taken into consideration since it did not comply with Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1) and Article 54(1) of Decision No 2020-1 of 27 February 2020 of the Presidium of the Boards of Appeal on the Rules of Procedure before the Boards of Appeal (‘the Rules of Procedure of the Boards of Appeal’). Consequently, the Board of Appeal found that the scope of the appeal was limited to the following services in Class 41: ‘Entertainment (except gambling); Conducting lotteries; Organisation of television lotteries; Information services in the field of entertainment (except gambling); Organisation of television games; Assuring equipment for gambling in casinos; Arcade game services; Gaming (except gambling).’

16      It should be observed that Article 95(1) of Regulation 2017/1001 provides:

‘In proceedings before it the [EUIPO] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. In invalidity proceedings pursuant to Article 59, the [EUIPO] shall limit its examination to the grounds and arguments submitted by the parties.’

17      The Court has already held that it may be inferred from a combined reading of Article 18, Article 47(2), Article 58(1) and Article 64(2) of Regulation 2017/1001 that, in proceedings for the revocation of a mark, it is for the proprietor of the mark, and not EUIPO of its own motion, as a rule, to establish genuine use of that mark (judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 63, and of 12 December 2017, Hochmann Marketing v EUIPO – BitTorrent (bittorrent), T‑771/15, not published, EU:T:2017:887, paragraph 28).

18      It is common ground that the proprietor is the best placed – and in some cases the only party able – to furnish specific proof in support of the assertion that he or she has made genuine use of his or her mark or to set out the proper reasons for non-use of the mark (judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 62, and of 12 December 2017, bittorrent, T‑771/15, not published, EU:T:2017:887, paragraph 29).

19      Similarly, the Court of Justice has held that since Article 19(1) of Delegated Regulation 2018/625 provided that proof of genuine use was to be made out by the proprietor of the mark, that article merely specified a principle relating to the burden of proof which, far from disregarding Regulation 2017/1001, on the contrary derived from the provisions and scheme of that regulation (see, by analogy, judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 64, and of 12 December 2017, bittorrent, T‑771/15, not published, EU:T:2017:887, paragraph 30).

20      In those circumstances, the Court must find that the rule that EUIPO is to examine the facts of its own motion, as laid down in Article 95(1) of Regulation 2017/1001, does not apply to the question of proof of genuine use of the mark in revocation proceedings brought before EUIPO (judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 65, and of 12 December 2017, bittorrent, T‑771/15, not published, EU:T:2017:887, paragraph 31).

21      EUIPO is therefore right to argue that Article 95(1) of Regulation 2017/1001 was not applicable to these revocation proceedings. The applicant cannot therefore plead an infringement of that provision by the Board of Appeal.

22      In any event, it is apparent from EUIPO’s file that, in its observations in response to the application for revocation submitted on 29 April 2020 to the Cancellation Division, the applicant merely submitted that the evidence put forward established that the contested mark had been used for the services in Class 41 referred to in paragraph 14 above.

23      It should be observed that the Cancellation Division had found that the evidence adduced by the applicant showed no indications that the contested mark was used in relation, inter alia, to the goods at issue and that that was not disputed by the applicant, which merely argued that the mark had been used for the services in Class 41 referred to in paragraph 14 above.

24      In its appeal before the Board of Appeal, the applicant did not dispute that assessment made by the Cancellation Division.

25      In the contested decision, the Board of Appeal found that the applicant had specifically claimed before the Cancellation Division that it had used the contested mark for certain services in Class 41, but that it had not claimed that that mark had been used for the goods at issue and had not raised any argument in that regard.

26      The applicant does not put forward any argument to challenge that finding by the Board of Appeal.

27      It follows from this that the applicant, in order to prove genuine use of the contested mark, presented a large amount of evidence to the Cancellation Division, without, however, submitting that that evidence was aimed at establishing that the contested mark had been used for the goods at issue.

28      However, in accordance with the case-law cited in paragraph 17 above, it was for the applicant and not the Cancellation Division, acting of its own motion, to establish genuine use of the contested mark for the goods at issue. As EUIPO submits, since the applicant has the burden of proof, it was therefore for it to clearly indicate, in response to the application for revocation, for which goods and services it had provided evidence to show genuine use of the contested mark.

29      Since the applicant did not indicate that the evidence submitted was intended to establish genuine use of the contested mark for the goods at issue and not solely for the services in Class 41 referred to in paragraph 14 above, it was not the task of the Cancellation Division to examine of its own motion, within all the evidence produced before it, whether that evidence could establish genuine use in respect of goods or services other than those claimed by the applicant.

30      The applicant therefore cannot criticise the Board of Appeal for failing to annul the Cancellation Division’s decision in that the latter did not of its own motion examine the evidence produced before it in order to establish genuine use of the goods at issue.

31      Consequently, the first plea in law must be rejected.

 The second plea: infringement of Article 95(2) of Regulation 2017/1001

32      The applicant argues, in the alternative, that, if the Court finds that the facts and evidence concerning genuine use of the contested mark for the goods at issue were submitted for the first time before the Board of Appeal, the latter did not correctly apply the rules governing the exercise of the power conferred on it by Article 95(2) of Regulation 2017/1001.

33      The Board of Appeal did not take account of the fact that the claims and arguments submitted to it in the appeal against the Cancellation Division’s decision were relevant for the assessment of genuine use of the contested mark for the goods at issue. The Board of Appeal erroneously found that the claims and arguments concerning genuine use of the contested mark for the goods at issue did not merely support, strengthen or clarify the facts submitted to the Cancellation Division. The applicant did not submit any new facts or evidence to the Board of Appeal, but merely raised claims and arguments which supplemented the facts and evidence filed in due time before the Cancellation Division. Furthermore, the Board of Appeal should have taken account of the claims and arguments submitted to it given the serious consequences arising from revocation of the contested mark and the fact that no challenge was raised by the revocation applicant.

34      In the contested decision, the Board of Appeal observed that the applicant had not claimed before the Cancellation Division that it had used the contested mark for the goods at issue and that it had not provided any argument in that regard. It stated that the claims and arguments submitted for the first time before it were not merely facts that supported, strengthened or clarified the facts as filed before the Cancellation Division, but that they were completely new claims.

35      In addition, the Board of Appeal considered that those claims had not been filed to contest findings made or examined of its own motion by the Cancellation Division in the decision under appeal, given that the cancellation applicant had from the beginning argued that the contested mark had not been used for any of the goods and services covered by it. It observed that those claims likewise did not concern facts that were not available before or at the time the Cancellation Division adopted its decision. Lastly, the Board of Appeal found that the applicant had not provided any arguments capable of constituting a valid reason for accepting the new claims submitted to it. It added of its own motion that the mere fact that the case concerned revocation of a registered mark did not on its own constitute such a valid reason.

36      It concluded that the claim that the contested mark had been used, inter alia, for the goods at issue, submitted for the first time before it, did not comply with Article 27(4) of Delegated Regulation 2018/625 and Article 54(1) of the Rules of Procedure of the Boards of Appeal and thus could not be taken into account.

37      Article 95(2) of Regulation 2017/1001 provides that EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’.

38      It follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation 2017/1001 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 77 and the case-law cited, and of 2 June 2021, Franz Schröder v EUIPO – RDS Design (MONTANA), T‑854/19, EU:T:2021:309, paragraph 24 and the case-law cited).

39      However, it is equally apparent from that wording that a party has no unconditional right to have facts and evidence which were invoked or submitted out of time taken into account by EUIPO. In stating that EUIPO ‘may’ decide to disregard such evidence, that provision grants the latter a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take it into account (see judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 78 and the case-law cited, and of 2 June 2021, MONTANA, T‑854/19, EU:T:2021:309, paragraph 25 and the case-law cited).

40      Consequently, the taking into account of that additional evidence is in no way a ‘favour’ granted to one party or the other, but rather must result from an objective, reasoned exercise of the discretion conferred on EUIPO by Article 95(2) of Regulation 2017/1001 (see judgment of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraph 58 and the case-law cited).

41      However, the exercise of EUIPO’s discretionary power provided for in Article 95(2) of Regulation 2017/1001 is circumscribed by Article 27(4) of Delegated Regulation 2018/625, which states:

‘In accordance with Article 95(2) of Regulation [2017/1001], the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:

(a)      they are, on the face of it, likely to be relevant for the outcome of the case; and

(b)      they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’

42      In addition, Article 54(1) of the Rules of Procedure of the Boards of Appeal provides as follows:

‘Facts or evidence submitted for the first time before the Boards of Appeal shall be disregarded by the Board, unless such facts or evidence are prima facie likely to be relevant for the outcome of the case and:

(a)      are merely supplementing relevant facts or evidence which had already been submitted in due time; or

(b)      are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal; or

(c)      were not available before or at the time the contested decision was taken; or

(d)      are justified by any other valid reason.’

43      In addition, it must be observed that it is for the party submitting facts and evidence for the first time before the Board of Appeal to explain before it to what extent that submission satisfies the conditions laid down in Article 27(4) of Delegated Regulation 2018/625 (judgment of 6 October 2021, Kondyterska korporatsiia ‘Roshen’ v EUIPO – Krasnyj Octyabr (Representation of a lobster), T‑254/20, not published, EU:T:2021:650, paragraph 57).

44      In the present case, it should be borne in mind, first, that the applicant did not submit any new evidence to the Board of Appeal that had not been submitted before the Cancellation Division. Second, although the application for revocation related to all the goods and services covered by the contested mark, the applicant had specifically argued before the Cancellation Division that the evidence produced was intended to establish genuine use of the contested mark for the services in Class 41 referred to in paragraph 14 above.

45      The applicant does not dispute the fact that it merely claimed before the Cancellation Division that the contested mark had been used for the services in Class 41 referred to in paragraph 14 above. Accordingly, it raised arguments for the first time before the Board of Appeal to establish that the evidence submitted to the Cancellation Division showed genuine use of the contested mark for the goods at issue. The applicant is therefore wrong to claim that those arguments merely supplemented facts and evidence submitted in due time before the Cancellation Division, for the purpose of Article 27(4) of Delegated Regulation 2018/625.

46      It follows that the Board of Appeal was entitled to find that the applicant’s arguments submitted before it concerning the goods at issue amounted to new claims.

47      In addition, it must be stated that the applicant does not raise any argument that calls into question the Board of Appeal’s assessment that those arguments were not intended to challenge findings made or examined by the Cancellation Division of its own motion.

48      Furthermore, as EUIPO observes, the applicant did not put forward any argument before the Board of Appeal capable of explaining why it had not argued in due time before the Cancellation Division that the evidence produced sought to establish genuine use of the contested mark for the goods at issue.

49      In that regard, as the Board of Appeal rightly noted, the fact that not taking those new arguments into account could lead to the revocation of the contested mark for the goods at issue did not on its own constitute a valid reason for their belated submission.

50      In addition, the applicant does not explain to what extent the lack of argument by the revocation applicant before the Board of Appeal may constitute such a reason.

51      It follows from the foregoing that the applicant has not established that the Board of Appeal erred in finding that the second condition laid down in Article 27(4)(b) of Delegated Regulation 2018/625 was not complied with.

52      Since the conditions laid down in Article 27(4) of Delegated Regulation 2018/625 are cumulative, it was not necessary for the Board of Appeal to assess the relevance of the facts submitted for the first time before it, as provided for in Article 27(4)(a) of that delegated regulation.

53      It follows that the applicant has not shown that the Board of Appeal erred in the application of Article 95(2) of Regulation 2017/1001 and the second plea must therefore be rejected.

 Third plea: infringement of Article 58(1)(a) of Regulation 2017/1001

54      The applicant argues that the Board of Appeal erred in finding that it had not established genuine use of the contested mark for the general indications corresponding to ‘Entertainment (except gambling); Information services in the field of entertainment (except gambling); Gaming (except gambling)’, in Class 41 (‘the services at issue’).

55      The applicant submits that the fact that it succeeded in establishing genuine use for several kinds of service that can be classified under a general indication covered by the contested mark justifies the conclusion that use has been duly established for that general indication. The Board of Appeal merely asserted that the category ‘Entertainment, information services in the field of entertainment and gaming’ was sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently. However, it is not possible to establish that the subcategory ‘Gambling’ could be identified as an independent subcategory within each of the services of entertainment, information services in the field of entertainment and gaming since the Board of Appeal did not define any other subcategory therein.

56      The applicant submits that it proved genuine use of the contested mark for casino games, sports betting, arcade game services, the organisation of online games in the global computer network and information for those services. Those services may be classified in Class 41 under the general indications ‘Entertainment; Information services in the field of entertainment; Gaming’, which are sufficiently specific and precise and for which an artificial subdivision is not appropriate.

57      In the contested decision, the Board of Appeal upheld the decision of the Cancellation Division inasmuch as it had found that the services for which the contested mark had been used could be considered as forming a coherent and independent subcategory, that of ‘gambling’, within the categories of ‘Entertainment’ and ‘Gaming’ and that the category of ‘Information services in the field of entertainment and gambling’ could be limited to a subcategory of ‘Information services in the field of gambling’. Consequently, it rejected the applicant’s claim that the contested mark had been put to genuine use for the general terms ‘Entertainment (except gambling); Information services in the field of entertainment (except gambling); Gaming (except gambling)’ in Class 41.

58      It should be observed that under Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

59      According to settled case-law, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category (judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45; see, also, judgment of 16 June 2015, Polytetra v OHIM – EI du Pont de Nemours (POLYTETRAFLON), T‑660/11, EU:T:2015:387, paragraph 24 and the case-law cited).

60      The breadth of the categories of goods or services for which the contested mark was registered is a key element of the balance between, on the one hand, the maintenance and preservation of the exclusive rights conferred on the proprietor of the contested mark and, on the other hand, the limitation of those rights in order to prevent a trade mark which has been used in relation to part of the goods or services being afforded extensive protection merely because it has been registered for a wide range of goods or services (judgments of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 39, and of 2 March 2022, Apologistics v EUIPO – Kerckhoff (apo-discounter.de), T‑140/21, not published, EU:T:2022:110, paragraph 22).

61      With regard to the relevant criterion or criteria to apply for the purposes of identifying a coherent subcategory of goods or services capable of being viewed independently, it follows from the case-law that the criterion of the purpose and intended use of the goods or services at issue is an essential criterion for defining an independent subcategory of goods or services (see judgments of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 44 and the case-law cited, and of 7 November 2019, Intas Pharmaceuticals v EUIPO – Laboratorios Indas (INTAS), T‑380/18, EU:T:2019:782, paragraph 94 (not published) and the case-law cited).

62      In the present case, the Board of Appeal found in the contested decision that the Cancellation Division had correctly applied the case-law cited in paragraphs 59 and 61 above by finding that the categories of ‘Entertainment’ and ‘Gaming’ were sufficiently broad for several subcategories to be identified within them. It noted that the services for which the contested mark had been used, namely online casino games and sports betting, could be considered as forming a coherent and independent subcategory, namely ‘gambling’, which fell within the categories of ‘Entertainment’ and ‘Gaming’. Consequently, the Board of Appeal found that the Cancellation Division had correctly held that the contested mark had been used for services of ‘entertainment, namely gambling, and gaming, namely gambling’ and that the same was true of the category of ‘information services in the field of entertainment and gambling’ which could be limited to a subcategory of ‘Information services in the field of gambling’.

63      It must be held that the Board of Appeal’s assessment is not called into question by the applicant’s arguments.

64      In the first place, the applicant does not put forward any argument such as to call into question the fact that the subcategory of ‘Gambling’ constitutes a coherent subcategory of services which is capable of being viewed independently within the broader indications of ‘Entertainment’ and ‘Gaming’.

65      First, the applicant cannot claim that the general indications ‘Entertainment, information services in the field of entertainment and gaming’ are sufficiently specific and precise.

66      It is sufficient to note, as observed by EUIPO, that the categories of ‘Entertainment’ and ‘Gaming’ are capable of comprising a wide range of services with a different purpose and intended use. Within those categories, the Board of Appeal distinguished the subcategory of ‘Gambling’, the purpose of which, specifically, is to bet a certain amount of money in the hope of being lucky and making a gain.

67      Second, the applicant merely submits that the subcategory ‘Gambling’ could not be identified as an independent subcategory inasmuch as the Board of Appeal did not specify any other subcategory within the general indications of the services of entertainment, information services in the field of entertainment and gaming.

68      In that regard, it is sufficient to state that the Board of Appeal was not required to define, within those general indications, other subcategories to which the services in respect of which genuine use of the contested mark was proved did not belong. It was enough for it to distinguish, within those general indications, a coherent subcategory of services that all relate to the same purpose and to which the services at issue did belong.

69      In any event, it must be stated that the applicant does not submit that the general indications ‘Entertainment and gaming’ are restricted to covering gambling. In that regard, it suffices to observe that the category of ‘Entertainment’ is very broad and does not solely include games and that the category ‘Gaming’ includes games that serve purposes other than gambling, which the applicant does not dispute.

70      In the second place, it should be observed that the applicant does not argue that the services in respect of which it has provided proof of genuine use of the contested mark, such as casino games and sports betting, do not correspond to the subcategory of ‘Gambling’. Nor does it submit that it provided proof of genuine use of the contested mark for other entertainment or gaming services which do not constitute gambling.

71      In that regard, it must be noted that the applicant does not dispute the finding in the contested decision that it had argued before the Cancellation Division that the contested mark had acquired considerable ‘goodwill’ as a result of intensive use for services related to games of chance and that it had explained that that mark had been used for online gambling on its website.

72      It follows from the foregoing that use of the contested mark has been shown solely for the services at issue which relate to the purpose of gambling and that the latter activity constitutes an independent subcategory within the more general categories of ‘Entertainment’ and ‘Gaming’.

73      Consequently, in accordance with the case-law cited in paragraph 59 above, as regards the services at issue, the Board of Appeal was right to find that proof of genuine use of the contested mark afforded protection only for the subcategory of ‘Gambling’, which includes the services for which the mark has actually been used.

74      The applicant cannot therefore argue that the fact that it succeeded in establishing genuine use for several services included in a general indication covered by the contested mark would justify the conclusion that use has been duly established for that general indication. Such an argument would in fact render redundant the determination of a subcategory of goods or services for which the contested mark was actually used and would result in that partially used mark enjoying protection that is too extensive, in breach of the case-law cited in paragraph 60 above.

75      It follows from the foregoing that the third plea must be rejected and, consequently, that the action must be dismissed in its entirety.

 Costs

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

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Brobet ltd. to pay the costs.

Delivered in open court in Luxembourg on 1 February 2023.

*      Language of the case: English.

© European Union
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