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

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

6 November 2024 (*)

( EU trade mark - Invalidity proceedings - EU figurative mark Vintae - Earlier national word mark VITAE - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 40/94 - Evidence submitted for the first time before the Board of Appeal - Article 27(4) of Delegated Regulation (EU) 2018/625 - No limitation in consequence of acquiescence - Article 53(2) of Regulation No 40/94 )

In Case T‑136/23,

Vintae Luxury Wine Specialists SLU, established in Logroño (Spain), represented by L.M. Broschat García and L.M. Polo Flores, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent,

defendant,

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

Grande Vitae GmbH, established in Delmenhorst (Germany), represented by C. Saettel, lawyer,

THE GENERAL COURT (Sixth Chamber),

composed of M.J. Costeira, President, U. Öberg (Rapporteur) and P. Zilgalvis, Judges,

Registrar: V. Di Bucci,

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, Vintae Luxury Wine Specialists SLU, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 January 2023 (Case R 2238/2021-1) (‘the contested decision’).

 Background to the dispute

2        On 27 July 2020, the intervener, Grande Vitae GmbH, filed an application with EUIPO for a declaration of invalidity of the EU trade mark that had been registered following an application filed by the applicant on 23 April 2007 for the following figurative sign:

3        The goods and services covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 33 and 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:

–        Class 33: ‘Alcoholic beverages (except beers)’;

–        Class 35: ‘Commercial retailing and wholesaling of alcoholic beverages’.

4        The application for a declaration of invalidity was based on the earlier German word mark VITAE registered on 23 March 2000 and the earlier EU word mark VITAE registered on 12 November 2001, both covering goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’.

5        The ground relied on in support of the application for a declaration of invalidity was that set out in Article 8(1)(b) of 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). In its observations on that application, the applicant submitted that the intervener had acquiesced in the use of the contested mark in accordance with Article 61(1) of Regulation 2017/1001 and was therefore time-barred from relying on the invalidity of the mark applied for.

6        On 26 October 2021, the Cancellation Division granted the application for a declaration of invalidity.

7        On 30 December 2021, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision, followed, on 28 February 2022, by a statement of grounds of appeal, to which it attached Exhibits 1B to 16B (‘Exhibits 1B to 16B’).

8        By the contested decision, the Board of Appeal dismissed the appeal.

9        First, the Board of Appeal found that the evidence adduced by the applicant in support of the claim of acquiescence for the purposes of Article 61 of Regulation 2017/1001 was not sufficient to establish that the intervener had actually been aware of the use of the contested mark for five successive years before the filing of the application for a declaration of invalidity, in the present case five years prior to 27 July 2020. Consequently, the condition that the intervener acquiesced in use for a period of five successive years was not satisfied.

10      Second, the Board of Appeal found that there was a likelihood of confusion between the contested mark and the earlier mark for German consumers, within the meaning of Article 8(1)(b) of 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), itself replaced by Regulation 2017/1001). That finding was based on the high degree of visual and phonetic similarity of the conflicting signs, the partial identity and partial similarity of the goods and services at issue, and the average degree of inherent distinctiveness of the earlier mark.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to declare the contested mark valid for the goods and services in Classes 33 and 35;

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

12      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.

13      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs of the proceedings before the Court and EUIPO.

 Law

14      Given the date on which the application for registration at issue was filed, namely 23 April 2007, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraph 49 and the case-law cited).

15      Consequently, as regards the substantive rules, the references made by the Board of Appeal in the contested decision, by the applicant in the arguments put forward by it, and by the intervener and EUIPO in their written pleadings to Article 8(1)(b), Article 60(1)(a) and Article 61(1) and (2) of Regulation 2017/1001 must be understood as referring respectively to Article 8(1)(b), Article 52(1)(a) and Article 53(1) and (2) of Regulation No 40/94, the wording of which is identical.

16      Moreover, in so far as procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001 and by the provisions 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).

17      In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 8(1)(b) of Regulation No 40/94 and, second, infringement of Article 53(1) and (2) of Regulation No 40/94.

 Admissibility of the evidence submitted for the first time before the Board of Appeal

18      In paragraph 46 of the contested decision, the Board of Appeal found that it was irrelevant whether the evidence submitted for the first time before it, namely Exhibits 1B to 16B, could be taken into consideration in accordance with Article 95(2) of Regulation 2017/1001 and Article 27(4) of Delegated Regulation 2018/625. In any event, even taking that evidence into account, the finding that there was insufficient evidence to show that the intervener had actually been aware of the use of the contested mark would remain unchanged.

19      The intervener submits that Exhibits 1B to 16B are inadmissible since they were submitted for the first time before the Board of Appeal and that, by taking them into consideration, the Board of Appeal infringed Article 54 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’).

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

21      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 periods to which such submission is subject under the provisions of Regulation 2017/1001. EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 77).

22      By stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, Article 95(2) of Regulation 2017/1001 grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see, to that effect, judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 49 and the case-law cited).

23      In addition, Article 16(1) of Delegated Regulation 2018/625 provides that the applicant may present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of invalidity proceedings. The rationale of that provision is to leave more flexibility, as opposed to opposition proceedings, to supplement the facts, evidence and arguments in support of the application, in response in particular to the arguments of the proprietor of the contested mark, given that invalidity proceedings are the last action enabling the validity of an EU trade mark to be challenged (see, by analogy, judgment of 8 September 2021, Qx World v EUIPO – Mandelay (EDUCTOR), T‑85/20, not published, EU:T:2021:556, paragraph 67).

24      Moreover, Article 27(4) of Delegated Regulation 2018/625 circumscribes the exercise of the discretion which is provided for in Article 95(2) of Regulation 2017/1001 as regards facts and evidence submitted for the first time before the Board of Appeal. That provision states that:

‘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.’

25      In addition, under Article 54(1) of the Rules of Procedure of the Boards of Appeal:

‘Facts or evidence submitted for the first time before the Boards of Appeal shall be disregarded by the Board of Appeal, unless these 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.’

26      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, to that effect, judgment of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraph 58 and the case-law cited).

27      In that regard, the Court has already stated that new evidence is characterised by the absence of a link with another previously submitted document and by its late submission whereas additional or supplementary evidence is, on the other hand, evidence which supplements other evidence which has previously been submitted in due time (see judgments of 14 May 2019, Guiral Broto v EUIPO – Gastro & Soul (Café del Sol and CAFE DEL SOL), T‑89/18 and T‑90/18, not published, EU:T:2019:331, paragraph 42, and of 9 September 2020, Kludi v EUIPO – Adlon Brand (ADLON), T‑144/19, not published, EU:T:2020:404, paragraph 56 and the case-law cited).

28      It is therefore for the Court to assess whether the Board of Appeal in fact exercised the broad discretion conferred on it for the purpose of deciding, in a reasoned manner and taking due account of all the relevant circumstances, whether it was necessary to take account of the facts or evidence produced for the first time before it in order to deliver its decision (see, to that effect, judgment of 30 November 2022, ADS L. Kowalik, B. Włodarczyk v EUIPO – ESSAtech (Accessory for wireless remote controls), T‑611/21, EU:T:2022:739, paragraph 36).

29      In the present case, in support of its observations filed on 7 June 2021 before the Cancellation Division, the applicant submitted, inter alia, Exhibits 11 and 12. Those documents contain extracts from the website of a publisher specialising in publications in the wine and drinks sector. It is apparent from Exhibit 12 that both the applicant and the intervener won awards in the February 2016, February 2018 and February 2019 editions of the ‘Mundus Vini’ competition. It is apparent from Exhibit 11 that the February edition of that competition coincides with the ProWein trade fair and that the award-winning wines in that competition are presented for tasting at that trade fair.

30      The evidence submitted for the first time before the Board of Appeal, namely Exhibits 1B to 16B, relates in particular to the following: the awards won by the applicant in the 2015 and 2017 editions of the ‘Berliner Wine Trophy’ competition (Exhibit 1B) and those won by the intervener in the 2015, 2018, 2019, 2020 and 2021 editions of the ‘Berliner Wine Trophy’ (Exhibit 2B); the applicant’s participation in the 2011 to 2019 editions of the ProWein trade fair (Exhibits 3B, 4B, 5B, 6B, 7B, 8B, 13B, 14B, 15B and 16B); the attentiveness of the intervener, who succeeded in having a third party relinquish the Vitaeum trade mark shortly before the 2011 edition of that trade fair (Exhibits 9B); the awards won by the intervener in the 2012 and 2015 to 2020 editions of the ‘Mundus Vini’ competition (Exhibits 10B, 11B and 12B) and those won by the applicant in the 2016 to 2021 editions of that competition (Exhibits 12B).

31      As regards the condition laid down in Article 27(4)(a) of Delegated Regulation 2018/625, relating to the relevance of the evidence for the outcome of the case, that evidence appears, prima facie, to be relevant for the purpose of answering the question whether the intervener was aware of the use of the contested mark to satisfy the requirements of Article 53 of Regulation No 40/94 and that it is therefore relevant for the outcome of the dispute (see, to that effect and by analogy, judgment of 10 January 2024, Fantasia BAHIA PRINCIPE HOTELS & RESORTS, T‑504/22, not published, EU:T:2024:2, paragraph 33).

32      As regards the condition set out in Article 27(4)(b) of Delegated Regulation 2018/625, relating to the existence of valid reasons for the failure to submit evidence in due time, the evidence submitted for the first time before the Board of Appeal must contain information relating to the use of the mark and the intervener’s awareness of such use, as well as the evidence initially submitted before the Cancellation Division. It follows that they support the other evidence of use already submitted within the time limit set before the Cancellation Division and that they supplement that initial evidence. Furthermore, since the Cancellation Division criticised the evidence submitted before it, in particular on the ground that it was insufficient, the applicant was entitled to submit supplementary evidence relating to that initial evidence before the Board of Appeal in order to respond to that criticism (see, to that effect and by analogy, judgment of 9 July 2015, CMT v OHIM – Camomilla (CAMOMILLA), T‑100/13, not published, EU:T:2015:481, paragraphs 77 and 80).

33      As regards the condition laid down in Article 54(1) of the Rules of Procedure of the Boards of Appeal relating to the relevance of the evidence for the outcome of the case, it must be stated that Exhibits 1B to 16B appear, prima facie, to be relevant for the purpose of assessing whether the intervener was actually aware of the use of the contested mark for the purposes of Article 53(2) of Regulation No 40/94.

34      As regards the condition laid down in Article 54(1)(a) to (d) of the Rules of Procedure of the Boards of Appeal, relating to the existence of valid reasons for not submitting evidence in due time, it should also be noted that Exhibits 1B to 16B, submitted for the first time before the Board of Appeal, relate, like Exhibits 11 and 12, submitted before the Cancellation Division, to the joint participation of the applicant and the intervener in certain competitions and in the ProWein trade fair. It follows that Exhibits 1B to 16B support the evidence of joint participation, which had already been submitted before the Cancellation Division, and that they supplement that initial evidence.

35      Having regard to the foregoing considerations, the Board of Appeal did not, in any event, infringe Article 54(1) of the Rules of Procedure of the Boards of Appeal by taking into account the evidence submitted for the first time before it.

 Admissibility of the first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94 relating to the likelihood of confusion

36      By its first plea, the applicant claims that the contested decision infringes Article 8(1)(b) of Regulation No 40/94, relating to the existence of a likelihood of confusion between the signs at issue.

37      EUIPO contends that the first plea in law is inadmissible, since the applicant has not put forward any argument in support of it and has claimed that the contested decision should be annulled only in so far as the Board of Appeal ‘found [the] claim of acquiescence [to be] unfounded’. Moreover, the first plea in law is, in any event, unfounded.

38      The intervener submits that the applicant has not put forward any argument in support of the first plea. It infers from this, primarily, that the applicant is deemed to have withdrawn that plea or, in the alternative, that the applicant has acknowledged the existence of a likelihood of confusion and that, in the absence of arguments in support of that plea, the Court does not have ‘jurisdiction’ to assess its merits. The intervener submits that that plea is unfounded.

39      In that regard, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to the procedure before the General Court pursuant to the first paragraph of Article 53 of that same statute, and Article 177(1)(d) of the Rules of Procedure of the General Court, the application must, inter alia, contain a statement summarising the pleas relied on. It must, accordingly, specify the grounds on which the action is based, with the result that a mere abstract statement of the grounds is not sufficient to satisfy the requirements of the Statute of the Court of Justice of the European Union and the Rules of Procedure. Moreover, that summary – albeit concise – must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any further information. In order to ensure legal certainty and the sound administration of justice, it is necessary – if an action or, more specifically, a plea in law, is to be admissible – that the basic legal and factual particulars relied on be indicated coherently and intelligibly in the application itself (judgment of 4 October 2018, Blackmore v EUIPO – Paice (DEEP PURPLE), T‑344/16, not published, EU:T:2018:648, paragraph 59).

40      In the present case, only the second paragraph of the application, which sets out in three lines the pleas put forward against the contested decision, mentions infringement of Article 8(1)(b) of Regulation No 40/94. Apart from a short paragraph summarising the proceedings before EUIPO, that provision is not mentioned again in the application, nor is the concept of ‘likelihood of confusion’. No line of argument has therefore been put forward in support of the first plea in law. In particular, the application does not indicate which factors demonstrating the existence of a likelihood of confusion are in dispute.

41      The first plea in law must therefore be rejected as inadmissible.

 The second plea in law, alleging infringement of Article 53(1) and (2) of Regulation No 40/94, relating to limitation in consequence of acquiescence

42      The applicant claims that, by finding that it had not shown that the intervener was actually aware of the use of the contested mark in Germany for five successive years, even though the intervener was aware of that use for the goods in Class 33 and the services in Class 35, the Board of Appeal infringed Article 53(1) and (2) of Regulation No 40/94 relating to limitation in consequence of acquiescence. In particular, the applicant disputes, first, the Board of Appeal’s interpretation of the requirements of proof of ‘actual’ awareness of the use of the contested mark, equating it with real or ‘subjective’ awareness. It submits that the rule of limitation in consequence of acquiescence laid down in Article 53 of Regulation No 40/94 is intended to preserve legal certainty. Consequently, the applicant submits that the requirement of mere proof of the awareness which the proprietor of the earlier mark could or should have had of that use on the basis of the exercise of ordinary diligence is sufficient. That awareness could be presumed on the basis, inter alia, of general knowledge of that use in the economic sector concerned or of the duration of the use. Second, the applicant disputes the Board of Appeal’s assessment of the various items of evidence submitted in order to establish that the intervener was actually aware of the use of the contested mark.

43      EUIPO and the intervener dispute the applicant’s line of argument.

44      As a preliminary point, the Court recalls that Article 53(1) of Regulation No 40/94 concerns the limitation of the proprietor of an earlier EU trade mark, whereas Article 53(2) concerns the limitation of the proprietor of an earlier national trade mark.

45      It is apparent in that regard from paragraphs 59 and 64 of the contested decision that the earlier German mark is a word mark. Although the application for a declaration of invalidity was based not only on the German word mark VITAE, but also on the EU word mark VITAE, that EU word mark is the subject of an application for annulment in other proceedings, as is apparent from paragraphs 20 and 33 of the contested decision. In the light of those proceedings affecting the earlier EU trade mark and the identity of the signs and goods covered by the two earlier marks, the Board of Appeal decided to analyse the likelihood of confusion only with regard to the German mark, as is apparent from paragraphs 33 and 59 of the contested decision. Therefore, the only provision applicable in the present case is Article 53(2) of Regulation No 40/94.

46      Under Article 53(2) of Regulation No 40/94, where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) of that regulation has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he, she or it shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.

47      In accordance with settled case-law, four conditions must be satisfied before the period of limitation in consequence of acquiescence starts running if there is use of a later trade mark identical to the earlier trade mark or confusingly similar. First, the later trade mark must be registered; second, the application must have been made in good faith by its proprietor; third, the later trade mark must be used in the Member State where the earlier trade mark is protected; fourth, the proprietor of the earlier trade mark must be aware of the use of that trade mark after its registration (see judgment of 20 April 2016, Tronios Group International v EUIPO – Sky (SkyTec), T‑77/15, EU:T:2016:226, paragraph 30 and the case-law cited).

48      It is also apparent from that case-law that the purpose of Article 53(2) of Regulation No 40/94 is to penalise the proprietors of earlier marks who have acquiesced in the use of a later EU trade mark registered for a period of five successive years, while being aware of such a use, by excluding them from seeking a declaration of invalidity or from bringing opposition proceedings in respect of that trade mark. That provision is intended to strike a balance between the interests of the proprietor of a mark in safeguarding its essential function and the interests of other economic operators in having signs capable of denoting their goods and services. That objective implies that, in order to safeguard that essential function, the proprietor of an earlier trade mark must be in a position to oppose the use of a later mark identical or similar to his own. Indeed, it is only once the proprietor of the earlier trade mark becomes aware of the use of the later EU trade mark that it has the option of not acquiescing in its use and, therefore, opposing it or seeking a declaration of invalidity of the later trade mark and that, consequently, the period of limitation in consequence of acquiescence starts running (see judgment of 20 April 2016, SkyTec, T‑77/15, EU:T:2016:226, paragraph 31 and the case-law cited).

49      Therefore, it is from the time when the proprietor of the earlier trade mark became aware of the use of the later EU trade mark after its registration that the period of limitation in consequence of acquiescence begins to run (see judgment of 20 April 2016, SkyTec, T‑77/15, EU:T:2016:226, paragraph 32 and the case-law cited).

50      According to the case-law, the proprietor of the later mark must submit evidence of an actual awareness of the use of that mark by the proprietor of the earlier mark, failing which the latter would not be able to oppose the use of the later mark (judgment of 20 April 2016, SkyTec, T‑77/15, EU:T:2016:226, paragraph 33; see also, to that effect, judgment of 22 September 2011, Budějovický Budvar, C‑482/09, EU:C:2011:605, paragraphs 46 and 47, and Opinion of Advocate General Trstenjak in Budějovický Budvar, C‑482/09, EU:C:2011:46, point 82).

51      In that regard, in order to interpret Article 53(2) of Regulation No 40/94, it is necessary to take into account the similar rule on limitation in consequence of acquiescence contained in Article 9(1) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1), a rule in relation to which recital 29 of that directive states that the claim of limitation in consequence of acquiescence is applicable where the proprietor of the earlier trade mark ‘has knowingly tolerated the use for a substantial length of time’, in other words ‘intentionally’ or ‘in full knowledge of the facts’. That interpretation applies mutatis mutandis to Article 53(2) of Regulation No 40/94, the wording of which corresponds to that of Article 9(1) of Directive 2015/2436 (see, by analogy, judgment of 20 April 2016, SkyTec, T‑77/15, EU:T:2016:226, paragraph 33).

52      Therefore, the proprietor of a trade mark which is contested by way of an application for a declaration of invalidity cannot merely prove the potential awareness of the use of his, her or its trade mark by the proprietor of an earlier trade mark or establish consistent evidence giving rise to the presumption of the existence of such awareness (see, to that effect and by analogy, judgment of 20 April 2016, SkyTec, T‑77/15, EU:T:2016:226, paragraph 34, and of 4 October 2018, Asolo v EUIPO – Red Bull (FLÜGEL), T‑150/17, EU:T:2018:641, paragraph 35), or even prove that the proprietor of the earlier mark could or should have been aware of the later mark.

53      In the present case, the Board of Appeal found that the evidence submitted by the applicant was not sufficient to establish that the intervener had actually been aware of the use of the contested mark for five successive years prior to 27 July 2020, the date on which the application for a declaration of invalidity was filed.

54      The Board of Appeal found, inter alia, that all the evidence relating to participation in the post-2015 editions of the ProWein trade fair or in other wine competitions was irrelevant, on the ground that the relevant period was that prior to 27 July 2015.

55      It also stated that, even if the applicant’s participation in the 2011 to 2015 editions of the ProWein trade fair was established, the intervener’s participation in those editions of the trade fair was not. According to the Board of Appeal, the fact that the intervener won awards during the ‘Mundus Vini’ competition in 2012 and 2015 did not establish that it also participated in the ProWein trade fair in those same years, since only a selection of award-winning wines from that competition was then presented for tasting at that trade fair and only some of the awards were given to the successful candidates at the ceremony held at that trade fair. In any event, according to the Board of Appeal, it could not be presumed that an exhibitor saw all of its competitors’ stands at a trade fair, a fortiori at a large international trade fair such as the ProWein trade fair.

56      The Board of Appeal also found that the intervener’s participation in the same editions of the ‘Mundus Vini’ competition as the applicant was not sufficient to establish actual awareness of the use of the contested mark, on account, first, of the large number of award-winning wines, second, of the use of the sign ‘vintae’ as a company name and not as a trade mark in the list of award-winning wines and, third, of the fact that it had not been proved that the intervener had seen the applicant’s wine bottles bearing the label ‘inspired by vintae’ prior to 27 July 2015.

57      First, as regards the applicant’s argument that it is sufficient to establish that the proprietor of the earlier national mark could or should have been aware of the use of the later EU trade mark, it must be stated that, according to the case-law cited in paragraphs 50 and 52 above, the proprietor of the contested mark must submit evidence of an actual awareness of the use of that mark by the proprietor of the earlier mark and it cannot merely prove potential awareness of such use or submit evidence from which it may be concluded that there was such presumed awareness.

58      It should also be noted that the applicant cannot usefully rely on paragraph 29 of the judgment of 29 September 2021, Univers Agro v EUIPO – Shandong Hengfeng Rubber & Plastic (AGATE) (T‑592/20, not published, EU:T:2021:633), according to which a presumption of knowledge of the use of a sign may arise, inter alia, from general knowledge in the economic sector concerned of such use, and that knowledge can be inferred, inter alia, from the duration of such use. That case-law concerns the interpretation of the concept of ‘bad faith’ within the meaning of Article 51(1)(b) of Regulation No 40/94, and not the interpretation of the concept of ‘awareness’ for the purposes of Article 53 of that regulation.

59      Second, the Board of Appeal did not err in law in finding that the various items of evidence submitted by the applicant were not sufficient to demonstrate actual awareness, on the part of the intervener, of the use of the contested mark.

60      As the Board of Appeal correctly pointed out in paragraphs 44 and 48 of the contested decision, the evidence subsequent to 27 July 2015, (Exhibits 1, 1(a), 3, 3(a), 4, 5, 6, 9, 10, 12B, 13B, 14B, 15B and 16B) does not make it possible to prove actual awareness of the use of the contested mark on a date prior to 27 July 2015, when such prior awareness is required in order to establish actual awareness for a period of five successive years preceding the filing of the application for a declaration of invalidity. The Board of Appeal’s findings regarding that evidence and the applicant’s complaints concerning the probative value of that evidence are therefore superfluous and, consequently, ineffective.

61      As regards the evidence prior to 27 July 2015, in the first place, concerning the ‘Berliner Wine Trophy’, the applicant, relying on Exhibits 1B and 2B, complains that the Board of Appeal failed to take into account, first, the awards won by the intervener and by the applicant during the 2015 edition of that competition and, second, the considerable media coverage accompanying the obtaining of those awards. According to the applicant, both the participation of the intervener and itself in the same competition, the same year, and that media coverage demonstrate that the intervener was actually aware of the use of the contested mark prior to 27 July 2015. The applicant submits, in that regard, that the contested mark appears on the label of all its wines.

62      In that connection, the Court finds that, according to Exhibit 1B, which is an extract from the website ‘wine-trophy.com’, three of the applicant’s wines (Hacienda López de Haro, Matsu El Recio and El Pacto) won awards in the 2015 edition of the ‘Berliner Wine Trophy’. Similarly, it is also apparent from Exhibit 2B, which is an extract from that website, that one of the intervener’s wines (Südtiroler Lagrein Grieser DOC Grande Vitae) also won an award in the 2015 edition of the ‘Berliner Wine Trophy’.

63      It is true that the contested decision refers to the ‘Berliner Wine Trophy’ only once, in paragraph 49, and that that single reference is part of a summary of the applicant’s arguments.

64      However, first, even if it were established that the ‘Berliner Wine Trophy’ has, as the applicant claims, considerable media coverage, it cannot be considered that such coverage can, in itself, establish actual awareness of the use of the mark appearing on the award-winner’s products by professionals in the wine sector, or even by the other participants in the competition in question. That would amount to presuming such actual awareness on the basis of evidence relating to general knowledge in the ‘Berliner Wine Trophy’ wine sector, which would be contrary to the case-law cited in paragraph 52 above.

65      Second, the fact that the applicant and the intervener both participated in the 2015 edition of the ‘Berliner Wine Trophy’ and that they won awards in that edition is also not sufficient to establish that the intervener was actually aware of the use of the contested mark. The applicant merely states that ‘at the end ceremony, the medals are awarded’, without specifying whether the intervener and the applicant were present at the time of the 2015 award ceremony.

66      Consequently, Exhibits 1B and 2B are not sufficient to establish that the intervener was actually aware of the use of the contested mark prior to 27 July 2015.

67      In the second place, as regards the ProWein wine trade fair, which takes place every year in Germany, the applicant criticises the Board of Appeal for finding that the intervener’s participation in the 2011 to 2015 editions of that trade fair had not been established, even though such participation was apparent from Exhibit 9B.

68      In that regard, the Court finds, as the Board of Appeal correctly states in paragraph 51 of the contested decision, that although Exhibits 3B to 7B do indeed establish that the applicant participated in the 2011 to 2015 editions of the ProWein trade fair, those exhibits and Exhibit 9B do not, however, establish the intervener’s participation in those editions of that trade fair. Since actual awareness of the use of the contested mark cannot be presumed on the basis of general knowledge, in the wine sector, of the ProWein trade fair, it must be held that those exhibits do not establish such actual awareness.

69      It is true that the intervener’s participation in the 2015 edition of the ProWein trade fair is established by the fact, documented in Exhibit 11B, that, during the 2015 edition of the ‘Mundus Vini’ competition organised within that trade fair, ‘more than 40 special awards were handed out’ and that ‘on the first day of the trade fair, special awards will be handed out personally to the winners in the tasting area’. The intervener’s wine referred to in paragraph 87 below received a ‘special award’.

70      However, the intervener’s participation in the same edition of the ProWein trade fair as the applicant is not sufficient, in itself, to prove that the intervener was actually aware of the use of the contested mark, since, as regards an international trade fair which, according to the applicant, is ‘the most important wine fair in the world’, it is very difficult for a participant to see or visit all the stands of the other exhibitors and see the trade marks appearing on those stands.

71      In addition, it should be noted that Exhibit 9B is an extract, dated April 2022, from the magazine Weinwirtschaft, published by Meininger Verlag. According to that extract, ‘shortly before ProWein 2011, the association of wine-growers Franken eG, Kitzingen, avoided litigation with Grande Vitae concerning trade mark law and immediately abandoned its new concept of the “Vitaeum” brand, which it had announced, in favour of the new name “Invinum”’.

72      Consequently, Exhibit 9B establishes that the intervener apparently was actually aware of the use, at least of the ‘announced’ use, of the trade mark ‘Vitaeum’ in 2011 and opposed it, but not that it was actually aware of the use of the contested mark during that trade fair.

73      Therefore, Annexes 3B to 7B and 9B are not sufficient to establish that the intervener was actually aware of the use of the contested mark prior to 27 July 2015.

74      In the third place, as regards the ‘Best of Spain Top 100’ competition, the applicant complains that the Board of Appeal failed to take account of the attention generated among wine professionals by the awards won by the applicant during the ‘Best of Spain Top 100’ competition which, according to Exhibit 8B, took place in the 2015 edition of the ProWein trade fair.

75      It is true that, in the contested decision, no mention is made of the ‘Best of Spain Top 100’ competition.

76      However, first, the Court notes that Exhibit 8B is a leaflet relating to the competition ‘Best of Spain Top 100’, which was held during the 2015 edition of the ProWein trade fair. That leaflet contains the list of wines participating in the competition, including several of the applicant’s wines, namely 2012 Matsu ‘El Recio’ DO Toro and 2009 Garnacho Viejo de La Familia Acha DOCA Rioja. According to the leaflet, ‘wines have been awarded a score ranging from one to three “Toros” according to their quality inside the different price ranges’ and ‘the more “Toros”, the higher the quality is’. The applicant’s two wines were assigned three ‘Toros’ each.

77      However, it is not apparent from Exhibit 8B that the intervener’s wines participated in that competition in 2015. Therefore, it has not been established that the intervener actually became aware of the contested mark during that competition.

78      Furthermore, although two of the applicant’s wines were awarded three ‘Toros’, the same is true for 35 of the 100 wines forming part of the ‘Best of Spain Top 100’ selection in 2015.

79      In any event, the fact that the applicant obtained three ‘Toros’ during the competition in question is not sufficient to establish that the intervener was actually aware of the use of the contested mark. Such awareness cannot be presumed on the basis of general knowledge, in the wine sector, of that competition and its list of award-winners.

80      Consequently, Exhibit 8B produced before the Board of Appeal is not sufficient to establish that the intervener was actually aware of the use of the contested mark prior to 27 July 2015.

81      In the fourth place, as regards the ‘Mundus Vini’ competition, the applicant complains that the Board of Appeal failed to take account of the fact that both the intervener and the applicant participated in the award ceremony for awards received during the 2015 edition of that competition; a ceremony held at the ProWein trade fair in March 2015. The applicant also claims that the intervener’s participation in the ‘Mundus Vini’ competition, followed in particular by awards received during the 2012 and 2015 editions of that competition, implies proof that the intervener was present at the ProWein trade fairs hosting those editions of that competition, contrary to the Board of Appeal’s finding.

82      It is true that the Board of Appeal found, in paragraphs 52 and 53 of the contested decision, that the fact that the intervener had won the ‘Mundus Vini’ competition in 2012 and 2015 did not establish either that the intervener subsequently participated in the ProWein trade fair in the same years, or that the applicant participated in that trade fair in those years. The Board of Appeal also pointed out, in paragraph 55 of the contested decision, that the participation of the applicant and the intervener in that competition in the same years was not sufficient to establish actual awareness, on the part of the intervener, of the use of the contested mark.

83      First, it is apparent from Exhibit 10B, which is an extract from the website ‘yumpu.com/de’, that one of the intervener’s wines, 2009 Lorciano Sangiovese/Merlot DOCG Chianti, appears on the list of award-winning wines in the 2012 edition of the ‘Mundus Vini’ competition.

84      However, first, it is not apparent from the documents before the Court that the applicant received an award in the 2012 edition of that competition. Moreover, the applicant does not claim to have taken part in the 2012 edition of the competition in question. Consequently, it has not been proved that the intervener became aware of the contested mark in the 2012 edition of the ‘Mundus Vini’ competition.

85      In that regard, it should also be noted that the article from the publisher’s website presented in Exhibit 11B states that ‘a selection of the award-winning wines [from the ‘Mundus Vini’ competition] will be offered to trade visitors in a 700 m² tasting area at the world’s largest wine fair, ProWein, in Düsseldorf’. However, that article concerns the 2015 edition of the ProWein trade fair and not the 2012 edition. Even if a ‘selection’ of the award-winning wines from the 2012 edition of the ‘Mundus Vini’ competition was also offered for tasting at the ProWein trade fair in the same year, it is not apparent from the documents before the Court that the intervener’s wine, which received an award in the 2012 edition of the competition, was part of that selection.

86      Second, it is apparent from Exhibit 11B that one of the intervener’s wines, 2010 Lorciano Chianti Riserva DOCG, received a gold medal and a ‘special award’ (‘Best of Show Chianti’) in the 2015 edition of the ‘Mundus Vini’ competition.

87      However, first, it is not apparent from the documents before the Court that the applicant received an award in the 2015 edition of the ‘Mundus Vini’ competition. Moreover, the applicant does not claim to have participated in that edition of the competition as a competitor even though it participated in the award ceremony of that competition. Furthermore, as the intervener states, there is no evidence to show that the intervener participated in the 2015 ProWein trade fair during which that competition took place. The intervener was therefore unable to become aware of the contested mark in the context of its participation in the competition in 2015.

88      Second, the fact, documented in Exhibit 11B, that the award-winning wines in the 2015 edition of the ‘Mundus Vini’ competition were then offered for tasting at the ProWein trade fair in the same year does not demonstrate the intervener’s participation in the 2015 edition of that trade fair. Only a ‘selection’ of award-winning wines from the competition was then offered at the trade fair and it has not been established that the intervener’s wine referred to in paragraph 87 above was part of that selection.

89      In addition, it should be noted that, according to Exhibit 11B, which is an extract from the publisher’s website specialising in publications in the wine and drinks sector, during the 2015 edition of the ‘Mundus Vini’ competition, 38 ‘Grand Gold’ medals, 731 gold medals and 946 silver medals were issued. There is nothing in the file to indicate that a significantly lower number of medals were awarded in subsequent editions of the competition. Therefore, having regard to the large number of medals awarded during that competition, it cannot in any event be held that the actual participation of the applicant and the intervener in the same editions of the competition and in the same award lists is sufficient to establish actual awareness, on the part of the intervener, of the use of the contested mark.

90      Accordingly, Exhibit 11B is not sufficient to establish to the requisite legal standard that the intervener was actually aware of the use of the contested mark prior to 27 July 2015.

91      Consequently, the Board of Appeal did not make an error of assessment in finding, in paragraphs 45 and 58 of the contested decision, that the evidence submitted by the applicant was not sufficient to demonstrate such actual awareness.

92      Therefore, since the conditions for the application of the limitation period laid down in Article 53 of Regulation No 40/94 are cumulative, it is not necessary to examine whether, as the intervener claimed before the Board of Appeal, the registration of the contested mark was made in bad faith.

93      The second plea must therefore be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the Court’s jurisdiction to hear and determine the applicant’s second head of claim.

 Costs

94      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.

95      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener before the Court, in accordance with the form of order sought by the latter. However, the intervener has also claimed that the applicant should be ordered to pay the costs incurred before EUIPO.

96      In that regard, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, paragraphs 79 and 80 of the operative part of that decision continue to govern the costs incurred in the invalidity proceedings and in the appeal proceedings before EUIPO (see judgment of 14 July 2021, Cole Haan v EUIPO – Samsøe & Samsøe Holding (Ø), T‑399/20, EU:T:2021:442, paragraph 64 and the case-law cited).

97      By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, bear its own costs.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Vintae Luxury Wine Specialists SLU to bear its own costs and to pay those incurred by Grande Vitae GmbH;

3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.

Delivered in open court in Luxembourg on 6 November 2024.

*      Language of the case: English.

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