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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

23 October 2024 (*)

( EU trade mark - Invalidity proceedings - EU word mark E-Plus - Absolute ground for invalidity - No bad faith - Article 59(1)(b) of Regulation (EU) 2017/1001 )

In Case T-462/23,

ePlus Inc., established in Herndon, Virginia (United States), represented by A. Mottet, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

defendant,

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

Telefónica Germany GmbH & Co. OHG, established in Munich (Germany), represented by P. Neuwald, lawyer,

THE GENERAL COURT (Second Chamber),

composed of A. Marcoulli, President, V. Tomljenović and L. Spangsberg Grønfeldt (Rapporteur), Judges,

Registrar: G. Mitrev, Administrator,

having regard to the written part of the procedure,

further to the hearing on 12 June 2024,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, ePlus Inc., seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 June 2023 (Case R 1463/2022-1) (‘the contested decision’).

 Background to the dispute

2        On 16 January 2018, the intervener, Telefónica Germany GmbH & Co. OHG, filed an application for registration of an EU trade mark with EUIPO pursuant to 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).

3        Registration as a mark was sought for the word sign E-Plus.

4        The goods in respect of which registration was sought are in Class 9 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. The complete list of those goods is reproduced on five pages in the contested decision.

5        The application for registration was published on 12 December 2018 and the contested mark was registered on 13 June 2019.

6        On 22 December 2020, the applicant filed an application for a declaration of invalidity of the contested mark, in accordance with the provisions of Article 59(1)(b) of Regulation 2017/1001, in respect of all the goods covered by that mark. It stated that the intervener was acting in bad faith when it filed the application for registration of the contested mark.

7        By decision of 9 June 2022, the Cancellation Division of EUIPO dismissed the application for a declaration of invalidity in its entirety, on the ground that bad faith on the part of the intervener when it filed the application for registration of the contested mark had not been established.

8        On 5 August 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division. In that appeal, the applicant expressly stated that it sought the annulment in part of that decision, namely in so far as it ruled on all the goods covered by the contested mark, except for ‘SIM cards’ in Class 9 (taking into account that restriction, ‘the goods covered’).

9        By the contested decision, the Board of Appeal dismissed the applicant’s appeal on the ground that it had failed to establish that the contested mark had been filed in bad faith.

10      In essence, first of all, the Board of Appeal noted that the appeal concerned all the goods covered by the contested mark, except for ‘SIM cards’ in Class 9, in respect of which the applicant acknowledged that the contested mark was used by the intervener.

11      Next, the Board of Appeal examined the applicant’s arguments concerning the use of the contested mark, the cessation of its use and the broad list of goods covered.

12      In the first place, the Board of Appeal found that a number of items of evidence submitted by the intervener showed that the contested mark was used in Germany for some goods from 1998 until, at least, 2020. The Board of Appeal also stated that the mere fact that the contested mark may not have been used for all the goods covered is, in principle, unable to establish bad faith.

13      In the second place, it observed that the overall assessment of the items of evidence submitted by the applicant as regards the alleged cessation of use of the contested mark could not establish such a cessation but rather showed a gradual transfer of commercial activities carried out under that mark to another mark.

14      In the third place, the Board of Appeal noted that the fact that the contested mark is registered for a broad list of goods is, in principle, unable to establish the existence of bad faith. Furthermore, the Board of Appeal stated that the fact that some of the goods covered did not correspond to the intervener’s commercial activity was irrelevant.

15      In conclusion, following a cumulative assessment of the circumstances relied on by the applicant, the Board of Appeal found that there were no sufficient consistent indicia to establish the existence of dishonest intention on the part of the intervener which would depart from common business practices at the time of filing the contested mark.

 Forms of order sought

16      The applicant claims that the Court should:

-        annul the contested decision;

-        order EUIPO to bear its own costs and to pay those incurred by the applicant, including those incurred for the purposes of the proceedings before the Cancellation Division and the Board of Appeal;

-        order any interveners to bear their own costs.

17      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.

18      The intervener contends that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs.

 Law

19      In support of the action, the applicant puts forward, in essence, two pleas in law, alleging, first, infringement of Article 59(1)(b) of Regulation 2017/1001 on the ground of an incorrect assessment of bad faith and, secondly, infringement of Article 94(1) of that regulation on account of an inadequate statement of reasons.

 The first plea, alleging infringement of Article 59(1)(b) of Regulation 2017/1001

20      In essence, the applicant submits that the Board of Appeal erred in finding that the intervener was not acting in bad faith when it filed the application for registration of the contested mark. According to the applicant, the lack of genuine use, except for a very narrow range of goods, the public announcement that use of the sign E-Plus would be phased out, and the impractical amount of goods covered by the contested mark constitute objective, relevant and consistent indicia making it possible to establish that, at the time of filing the application, the intervener had no intention of using the contested mark for its essential function concerning the goods covered.

21      EUIPO and the intervener dispute the applicant’s arguments.

22      Article 59(1)(b) of Regulation 2017/1001 provides that an EU trade mark is to be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he or she filed the application for the trade mark.

23      In that regard, it should be noted that the concept of ‘bad faith’ set out in Article 59(1)(b) of Regulation 2017/1001 is not defined by that regulation. The meaning and scope of that concept must therefore be determined by considering its usual meaning in everyday language, whilst also taking into account the context in which it occurs and the objectives pursued by that regulation (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C-104/18 P, EU:C:2019:724, paragraph 43 and the case-law cited).

24      Therefore, although, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must also be understood in the context of trade mark law, which is that of the course of trade. In that respect, it must be noted that the rules on the EU trade mark, defined by Regulation 2017/1001, are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C-104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).

25      Consequently, the absolute ground for invalidity referred to in Article 59(1)(b) of Regulation 2017/1001 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin recalled in paragraph 21 above (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C-104/18 P, EU:C:2019:724, paragraph 46).

26      The intention of an applicant for a trade mark, which must, in accordance with the provisions of Article 59(1)(b) of Regulation 2017/1001, be assessed at the time of the application for the mark, is a subjective factor which must, however, be determined objectively by the competent administrative or judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C-104/18 P, EU:C:2019:724, paragraph 47 and the case-law cited).

27      In the context of the overall analysis undertaken pursuant to Article 59(1)(b) of Regulation 2017/1001, account may, in particular, be taken of the origin of the contested sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing (see judgment of 21 April 2021, Hasbro v EUIPO - Kreativni Dogadaji (MONOPOLY), T-663/19, EU:T:2021:211, paragraph 38 and the case-law cited).

28      In addition, it is for the applicant for a declaration of invalidity who intends to rely on Article 59(1)(b) of Regulation 2017/1001 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark applicant being presumed until proven otherwise (see judgment of 21 April 2021, MONOPOLY, T-663/19, EU:T:2021:211, paragraph 42 and the case-law cited).

29      Where EUIPO finds that the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic pursued by the application for registration of that mark (judgment of 21 April 2021, MONOPOLY, T-663/19, EU:T:2021:211, paragraph 43).

30      It is in the light of those considerations that the first plea must be examined.

31      In the present case, the Board of Appeal’s assessment concerning bad faith on the part of the intervener on the date of filing the application for registration of the contested mark, namely 16 January 2018, is based, in essence, on the analysis of three main arguments put forward by the applicant in support of its action against the decision of the Cancellation Division. Those arguments concerned, first, the use of the contested mark, secondly, the cessation of the use of that mark, and, thirdly, the broad list of goods.

32      As EUIPO and the intervener correctly observe, the arguments put forward by the applicant in respect of the present plea are, to a large extent, the same as those which it submitted before the Board of Appeal and to which the Board of Appeal replied in the contested decision. Those arguments, as set out by the applicant in the present case, and the answer given by the Board of Appeal will be examined below.

 Preliminary observations on the facts of the case

33      First, it must be recalled that, before replying to the applicant’s arguments, the Board of Appeal set out, under the heading ‘The facts of the case’ in the contested decision, a number of contextual elements capable of being taken into account in the overall analysis carried out pursuant to Article 59(1)(b) of Regulation 2017/1001. Those facts, which are not disputed in the present case, are in fact relevant in assessing the existence of bad faith.

34      For a sound understanding of the case, the Board of Appeal was correct to recall at the outset that E-Plus was a mobile telecommunications operator in Germany which had used the sign E-Plus since at least 1997. That entity, which has been owned by the telecommunications operator KPN since 2002, was sold to the intervener, Telefónica Germany GmbH & Co. OHG, in 2014, which then announced, in an article published on its website on 3 February 2016, its intention to ‘transfer BASE and E-Plus tariffs to the O2 brand world’.

35      Likewise, it should be observed, as the Board of Appeal did, that, on the date of filing the application for a declaration of invalidity, namely 22 December 2020, the contested mark, in respect of which the date of filing the application for registration was 16 January 2018, was not subject to the proof of use requirement.

36      In respect of the contextual elements, the Board of Appeal also referred to the decision of the Cancellation Division of 4 July 2022, cited by the applicant in its statement setting out the grounds of the appeal, which ruled on the application for revocation for lack of genuine use of 12 April 2021, submitted by the applicant pursuant to Article 58(1)(a) of Regulation 2017/1001. That application referred to another mark than the contested mark, namely the EU figurative mark E-Plus No 1132299, filed by the intervener on 8 April 1999 and registered on 15 April 2002 in respect of various goods and services in Classes 9, 35, 37, 38, 39 and 42.

37      According to the decision of the Cancellation Division, which was then appealed by the applicant and the intervener, genuine use of that figurative mark had been established only in respect of ‘SIM cards (Subscriber Identification Module)’ in Class 9 and some telecommunications services in Class 38.

 Use of the contested mark

38      The applicant claims that the Board of Appeal’s finding concerning the absence of bad faith is based on an incorrect assessment of genuine use of the contested mark. It criticises the Board of Appeal for not having correctly assessed the items of evidence submitted in the course of the proceedings or in other proceedings between the same parties before EUIPO, which show that the use of the contested mark is in fact limited to goods and services providing top‐up credit for mobile phones in Germany. The applicant also criticises the Board of Appeal for having relied on genuine use as evidence of good faith or for having taken into consideration anecdotal evidence of use without taking account of the length and the broad terms of the list of services covered by the contested mark.

39      In the present case, it must first of all be noted, as the Board of Appeal correctly observed, that the application for a declaration of invalidity submitted by the applicant is not based on the absence of genuine use in accordance with Article 58(1)(a) of Regulation 2017/1001, but on the fact that the intervener was acting in bad faith when it filed the application for the mark within the meaning of Article 59(1)(b) of that regulation. Therefore, it cannot be contended, as the applicant claims, that the assessment of bad faith required an analysis of genuine use of the contested mark.

40      It is also in that context that the role likely to be played in the present proceedings by the findings made by the Cancellation Division in its decision of 4 July 2022 (see paragraph 36 above) which are relied on by the applicant must be put into perspective. If such a decision may be relied on in support of the applicant’s argument, as the applicant has done before the Board of Appeal, its role and its scope require the taking into account of the difference which exists between the assessment of whether there was bad faith on the part of the intervener at the time of filing the contested mark and the assessment of the absence of genuine use of another of the intervener’s marks within a continuous period of five years. In such a context, to the extent, in particular, that the decision of the Cancellation Division of 4 July 2022 concerns a separate parallel procedure as regards the applicable rules and the mark at issue, the Board of Appeal did not err in not drawing any conclusions in the present case as regards the proceedings relating to the application for a declaration of invalidity.

41      Therefore, the Board of Appeal was not required to establish whether use of the contested mark was genuine, since, in principle, any use is relevant for the purpose of assessing the existence of bad faith. It follows from the case-law cited in paragraph 27 above, which is referred to in the contested decision, that, in the context of the overall assessment carried out pursuant to Article 59(1) of Regulation 2017/1001, account may, in particular, be taken of the use of the contested sign since its creation. It was therefore relevant, in order to assess the existence of bad faith, to take account, as the Board of Appeal did, of the various items of evidence submitted in the course of the proceedings which made it possible to establish use of the contested sign in Germany from 1998 until the period following the date on which the contested mark was filed, since that use continued, according to the information provided by the Board of Appeal, until 2020 for some goods and services.

42      In that regard, the applicant is not convincing when it disputes the relevance of the items of evidence referred to in the contested decision on the ground that they constitute ‘anecdotal evidence of use’. In the present case, the examination of those items of evidence, which concern the publicity, the sales and the claims made in sworn statements, in fact makes it possible to establish what was inferred in the contested decision, namely that the word sign at issue here has been used since at least 1998 and until 2020 for some goods and services. Such uses make it possible to support the notion that the intervener intended to use the contested mark with the aim of engaging fairly in competition.

43      Likewise, in response to the complaint that the items of evidence of use referred to in the contested decision concern only a part of the services covered by the contested mark, which is also established by other items of evidence submitted in the course of the proceedings relied on by the applicant or in other proceedings between the same parties before EUIPO, it must be observed that neither Regulation 2017/1001 nor the case-law provide a basis making it possible to find bad faith solely in the light of the size of the list of goods and services in the application for registration (see, to that effect, judgment of 7 June 2011, Psytech International v OHIM - Institute for Personality & Ability Testing (16PF), T-507/08, not published, EU:T:2011:253, paragraph 88).

44      It should also be borne in mind that the fact that a company applied for registration of a mark for a large number of goods and services is not an indication of bad faith (see judgment of 5 July 2016, Bundesverband Souvenir - Geschenke - Ehrenpreise v EUIPO - Freistaat Bayern (NEUSCHWANSTEIN), T-167/15, not published, EU:T:2016:391, paragraph 55 and the case-law cited). As a rule, it is legitimate for an undertaking to seek registration of a mark, not only for the categories of goods and services which it markets at the time of filing the application, but also for other categories of goods and services which it intends to market in the future (judgment of 14 February 2012, Peeters Landbouwmachines v OHIM - Fors MW (BIGAB), T-33/11, EU:T:2012:77, paragraph 25). It should also be noted that, on the date on which his or her application for registration of a mark is filed, the applicant for a trade mark is not required to indicate or even to know precisely the use he or she will make of the mark applied for and he or she has a period of five years for beginning actual use consistent with the essential function of that trade mark (see, to that effect, judgments of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas?), C-541/18, EU:C:2019:725, paragraph 22, and of 29 January 2020, Sky and Others, C-371/18, EU:C:2020:45, paragraph 76).

45      In the absence, in the present case, of relevant and consistent indicia tending to show that, on the date on which the application for registration of the trade mark was filed, the intervener had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, its bad faith cannot, therefore, be presumed on the basis of the mere finding that, on that date or within a period of five years, the intervener had no economic activity corresponding to all the goods referred to in that application (see, to that effect, judgment of 29 January 2020, Sky and Others, C-371/18, EU:C:2020:45, paragraphs 77 and 78).

46      Accordingly, it follows from the foregoing that, in the present case, the Board of Appeal was fully entitled to find, first, that the fact that the contested mark was used before and after the date of filing of the application for registration constituted relevant objective evidence for the assessment of the existence of bad faith, and, secondly, that the fact that the contested mark was used for a narrower range than the goods covered cannot, in itself, prove bad faith.

 Cessation of use of the contested mark

47      The applicant claims that the Board of Appeal disregarded or incorrectly interpreted the various items of evidence submitted in the course of the proceedings which made it possible, according to the applicant, to establish the intervener’s intention to phase out use of the contested mark from 2014 and to cease use before 2016. That evidence establishes that the intervener was acting in bad faith when it filed the application for the trade mark.

48      In the present case, the evidence relied on here, which is set out in paragraph 66 of the contested decision was, in particular, the following:

-        an ‘E-Plus’ Wikipedia entry dating from 27 November 2020, in which it is stated that a merger between the intervener and the E-Plus company was approved in July 2014;

-        an article from the intervener’s website dating from 3 February 2016, announcing that the E-Plus and BASE tariffs will gradually be transferred to the mark O2;

-        screenshots of archived pages from the intervener’s website dating from June and August 2016, which make it possible to establish that the contested mark has disappeared from that site;

-        screenshots of pages from a website belonging to the intervener, dating from October 2017, redirecting E-Plus customers to other services;

-        screenshots of pages from the intervener’s website on which the marks of which the intervener is the proprietor appear, and, in particular, O2;

-        screenshots of archived pages from the intervener’s website dating from June 2017, October 2017 and January 2020, which make it possible to establish that the contested mark has disappeared from that site.

49      However, as has been correctly set out by the Board of Appeal, the overall assessment of the items of evidence submitted concerning that issue did not make it possible to find that use of the contested mark had ceased at the time of filing the application for registration, as the applicant claims.

50      It is already clear from the file that a number of items of evidence relied on in the contested decision made it possible to establish that the sign at issue here had been used from 1998 until at least 2020 for some goods and services.

51      Moreover, the Board of Appeal was correct in finding that the evidence submitted did not make it possible to establish that the alleged use by the applicant had ceased, but rather made it possible to establish the gradual transfer desired by the intervener of the mark E-Plus to the mark O2. In particular, the applicant does not call into question in that regard the assessment made by the Board of Appeal in paragraph 68 of the contested decision according to which, in the light of, inter alia, the observations submitted by the intervener, it could reasonably be considered that, even if it had decided to standardise its tariffs and to integrate the former E-Plus customers under the common O2 umbrella, this did not, however, mean that the intervener had ceased to provide its goods under the contested mark, but merely showed its intention to combine a number of marks within a common network.

52      Likewise, in view of the items of evidence referred to in paragraph 68 of the contested decision, the Board of Appeal was also able to conclude that, even though the E-Plus company had disappeared - which had entailed the disappearance of its website - and the intervener had announced its decision to standardise its tariffs and to integrate its former E-Plus customers under the common O2 umbrella, the mark E-Plus was not only maintained but also still used during the gradual transfer period to the mark O2. In that connection, the existence of a commercial strategy, aimed at using the contested mark, even if only to a reduced extent, during a transfer period to another mark does not show any dishonest intention on the part of the intervener but rather forms part of a conduct consistent with honest practices in the course of trade.

53      As a result and for the reasons set out by the Board of Appeal in the contested decision, which are not disputed as such by the applicant in its appeal, the Board of Appeal was fully entitled to find that the intervener had continued to use the contested mark until at least 2020.

54      In any event, it may also be noted, as EUIPO did before the General Court, that it cannot be ruled out that the intervener may have had plans to revive the use of the contested mark or to expand its use to Member States other than Germany and that there is no evidence in the file making it possible to establish that the intervener could have given rise to the slightest legitimate expectation on the part of a third party as to its intention to cease using the contested mark. The intervener cannot therefore be criticised for having undermined the interests of any third party in a manner inconsistent with honest practices in the course of trade.

 Broad list of goods

55      The applicant submits that the broad list of goods covered makes it possible to establish that the only purpose of the contested mark was to be a defensive registration, designed to distort competition. Accordingly, it is clear that the intervener had no intention to use the contested mark for all those goods. According to the applicant, the mere intention to use the contested mark for goods could refer, at best, only to SIM cards in Class 9.

56      In the present case, it must be recalled, as has already been stated in paragraphs 43 and 44 above, taking into consideration the case-law relied on in the contested decision, the fact that a company applied for registration of a mark in respect of a large number of goods and services cannot suffice for a finding of bad faith.

57      Furthermore, it may be noted, as the Board of Appeal correctly observed, that the mere registration of a large variety of goods and services as such is a rather common practice of companies trying to obtain an EU trade mark registration. This does not, however, involve conduct that departs from accepted principles of ethical behaviour or honest commercial and business practices (see, to that effect, judgment of 13 December 2012, pelicantravel.com v OHIM - Pelikan (Pelikan), T-136/11, not published, EU:T:2012:689, paragraph 54).

58      In the light of the foregoing, and, in particular, the circumstances taken into consideration pursuant to its overall analysis, the Board of Appeal did not err in disregarding the applicant’s argument, according to which the broad list of goods covered by the contested mark made it possible to establish that the only purpose of the contested mark was to be a defensive registration intended to distort competition.

59      Accordingly, the first plea must be rejected as unfounded.

 The second plea, alleging infringement of Article 94(1) of Regulation 2017/1001

60      In essence, the applicant submits that the Board of Appeal failed to give adequate reasons for its conclusion that the intervener was not acting in bad faith based on alleged proof of use. In the present case, the applicant does not understand how proof of use for SIM cards makes it possible to establish the intention to use the contested mark in respect of ‘asbestos clothing for protection against fire’, ‘breathing apparatus for underwater swimming’, ‘capillary tubes’, ‘crash test dummies’, ‘divers’ masks’, ‘dog dummies’, ‘food analysis apparatus’, ‘jackets [bullet proof]’ or other goods covered.

61      EUIPO disputes the applicant’s arguments.

62      In accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C-564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).

63      In the present case, as follows from the assessment carried out in respect of the first plea, it appears that the statement of reasons for the contested decision is set out in a readily understandable manner making it possible to dispute each of the three arguments submitted by the applicant in the course of the proceedings before the Board of Appeal.

64      As regards, more specifically, the statement in paragraph 74 of the contested decision according to which the applicant argued that ‘it [was] unclear how proof of use of the trade mark for SIM cards [could] be evidence of intention to use the mark in relation to, inter alia, asbestos clothing for protection against fire; breathing apparatus for underwater swimming; capillary tubes; crash test dummies; divers’ masks; dog dummies; food analysis apparatus; jackets [bullet proof], which do not correspond to the [intervener’s] commercial activity’, the Board of Appeal replied in paragraphs 75 and 76 by referring to the case-law and to EUIPO’s decisional practice justifying the answer given by the Board of Appeal in paragraph 77 of the contested decision.

65      Such a statement of reasons cannot be treated as insufficient and enables both the applicant and the General Court to understand its scope.

66      In that regard, it must be borne in mind that the duty to state reasons in decisions is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 12 July 2012, Guccio Gucci v OHIM - Chang Qing Qing (GUDDY), T-389/11, not published, EU:T:2012:378, paragraph 17 and the case-law cited).

67      Since the Board of Appeal gave adequate reasons for the contested decision for the purposes of Article 94(1) of Regulation 2017/1001, the present plea must be rejected, whereas the applicant’s arguments concerning the merits of that reasoning have already been examined and rejected in the context of the first plea.

68      In the light of all the foregoing considerations, since neither of the pleas relied on by the applicant in support of the form of order sought by it is to be upheld, the action must be dismissed in its entirety.

 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.

70      Since the applicant has been unsuccessful, that provision precludes EUIPO from being ordered to pay the costs, without it being necessary to rule on the plea of inadmissibility raised by EUIPO concerning the claim for costs incurred before the Cancellation Division.

71      Since a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders ePlus Inc. to pay the costs.

Delivered in open court in Luxembourg on 23 October 2024.

*      Language of the case: English.

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