JUDGMENT OF THE GENERAL COURT (First Chamber)

18 January 2011 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark VOGUE – Earlier national word mark VOGUE Portugal – Absence of genuine use of the earlier mark – Article 43(2) and (3) of Regulation (EC) No 40/94 (now Article 42(2) and (3) of Regulation (EC) No 207/2009))

In Case T‑382/08,

Advance Magazine Publishers, Inc., established in New York (United States), represented by Esteve Sanz, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

J. Capela & Irmãos, Lda, established in Porto (Portugal),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 30 June 2008 (Case R 328/2003-2) relating to opposition proceedings between J. Capela & Irmãos, Lda and Advance Magazine Publishers, Inc.,

THE GENERAL COURT (First Chamber),

composed of I. Wiszniewska-Białecka, President, F. Dehousse and H. Kanninen (Rapporteur), Judges,

Registrar: C. Kristensen, Administrator,

having regard to the application lodged at the Registry of the Court on 10 September 2008,

having regard to the response of OHIM lodged at the Registry on 16 December 2008,

further to the hearing on 18 May 2010,

gives the following

Judgment

 Background to the dispute

1        On 1 April 1996, the applicant, Advance Magazine Publishers, Inc., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 Community trade mark (OJ 2009 L 78, p. 1)).

2        The mark for which registration was sought is the word sign VOGUE.

3        The goods and services for which registration was sought are in Classes 9, 14, 16, 25 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, and correspond, in respect of each of those classes, to the following description:

–        Class 9: ‘Software; CD-ROMs; audio and videocassettes; electronic, optical and digital publications; optical apparatus and products including eyewear – eyeglasses and sunglasses’;

–        Class 14: ‘Jewellery, horological instruments’;

–        Class 16: ‘Printed matter (magazines, newsletters, and books; computer programs); paper products (posters, paper patterns)’;

–        Class 25: ‘Clothing’;

–        Class 41: ‘Electronic information and entertainment services accessible via global or non-global computer network’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 72/1999 of 13 September 1999.

5        On 10 December 1999, the opponent, J. Capela & Irmãos, Lda., filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for in respect of products in Class 25 of the Nice Agreement.

6        The opposition was based on:

–        the national word mark VOGUE Portugal, registered in Portugal under No 143183, designating goods in Class 25 of the Nice Agreement and corresponding to the following description: ‘Footwear’;

–        the business name VOGUE – SAPATARIA, registered in Portugal under No 32046.

7        The grounds invoked in support of the opposition were those referred to in Article 8(1)(b) and Article 8(4) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(4) of Regulation No 207/2009, respectively).

8        On 27 November 2000, the applicant requested, in accordance with Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009), that the opponent furnish proof that the earlier trade mark had been put to genuine use.

9        On 31 January 2003, the Opposition Division upheld the opposition and, consequently, rejected the application for the trade mark sought. It held that the evidence adduced by the opponent as proof of genuine use of the earlier mark was sufficient. It observed that the word ‘Portugal’ had been included in the earlier mark by virtue of an old rule of Portuguese law which was no longer in force and that the marks could now be used without that indication. It therefore concluded that the marks at issue were identical. It also held that the goods were similar since they were intended for wear both as protection and as articles of fashion. There was consequently, according to the Opposition Division, a likelihood of confusion between the marks at issue on the part of the relevant public in Portugal.

10      On 31 March 2003, the applicant filed a notice of appeal before OHIM under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Opposition Division’s decision.

11      On 2 June 2003, the applicant filed a written statement setting out the grounds of its appeal, under Article 59 of Regulation No 40/94 (now Article 60 of Regulation No 207/2009). It submitted in that statement, inter alia, that it was the proprietor of International Registration No 158005 for the word mark VOGUE, which has effect in Portugal, and that that trade mark had been registered on 3 December 1951, inter alia, for ‘ready-made clothing of all kinds; underclothing’, in Class 25 of the Nice Agreement, and that that mark was therefore prior to the opponent’s allegedly earlier mark.

12      By decision of 27 September 2004 (‘the decision of 2004’), the Second Board of Appeal of OHIM dismissed the applicant’s appeal. It held that the argument relating to the international registration of the trade mark VOGUE concerning Portugal was inadmissible on the ground that it was not raised before the Opposition Division and that the existence of that trade mark had not even been referred to before that body. Furthermore, it held that since the trade marks at issue were identical and the goods similar there was a likelihood of confusion in Portugal so far as the marks at issue are concerned.

13      On 10 December 2004, the applicant brought an action before the Court against the decision of 2004, registered under number T‑481/04. In support of its action, the applicant essentially put forward four pleas in law, alleging, respectively, infringement by the Board of Appeal of its obligation to examine the issues presented for the first time before it, infringement by the Board of Appeal of its obligation to re-examine the entirety of the matter, insufficient proof of use, and finally infringement of Article 8(1)(b) of Regulation No 40/94.

14      By judgment of 4 October 2007 in Case T‑481/04 Advance Magazine Publishers v OHIM – Capela and Irmãos (VOGUE), not published in the ECR, the Court upheld the first plea and annulled the decision of 2004, without ruling on the other pleas in the action. In substance, the Court held that the Board of Appeal had, by the decision of 2004, misconstrued Article 74(2) of Regulation No 40/94 (now Article 76(2) of Regulation No 207/2009), by wrongly considering itself to have no discretion as to whether to take account of facts or evidence which are submitted late when making the decision which it was called upon to give.

15      By decision of 30 April 2008, the Presidium of the Boards of Appeal of OHIM re‑allocated the case to the Second Board of Appeal.

16      By decision of 30 June 2008 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the applicant’s appeal. Essentially, the Second Board of Appeal held, first, that the documents produced by the applicant for the first time at the stage of the appeal before the Board of Appeal were unlikely to be relevant to the outcome of the opposition and that the stage of the procedure at which those documents were submitted and the circumstances surrounding that submission argued against those documents being taken into account. It held, secondly, that the proof of genuine use of the earlier mark had been examined in detail by the Opposition Division, which had considered that proof to be sufficient. The Board of Appeal, lastly, confirmed the finding of the Opposition Division that, taking account of the identical nature of the trade marks and the similarity of the goods, there was a likelihood of confusion in Portugal so far as the marks at issue were concerned.

 Forms of order sought by the parties

17      The applicant claims that the Court should:

–        alter the contested decision so that the appeal brought by the applicant is allowed, the opposition is rejected and the registration of the trade mark applied for is granted;

–        in the alternative, annul the contested decision;

–        order OHIM and, as the case may be, the opponent, to pay the costs of these proceedings and of the appeal procedure before OHIM.

18      OHIM contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

19      The applicant puts forward three pleas in law in support of its action, alleging, in the first place, infringement of Article 43(2) and (3) of Regulation No 40/94 and of Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), in the second place, infringement of Article 8(1)(b) of Regulation No 40/94 and, in the third place, infringement of Article 61(1) and Article 62(1) of Regulation No 40/94 (now Article 63(1) and Article 64(1) of Regulation No 207/2009, respectively).

20      With regard to the first plea, the applicant claims that the evidence submitted to OHIM by the opponent does not prove genuine use of the earlier mark VOGUE for the purposes of Article 43(2) and (3) of Regulation No 40/94 and Rule 22 of Regulation No 2868/95.

21      The opponent did not furnish any evidence to prove that the earlier mark was used on the market, publicly and outwardly, or that the footwear designated by that mark was put at consumers’ or end users’ disposal. Nor did the opponent furnish proof of the extent and place of the use of the earlier mark.

22      The insufficiency of the evidence of the use of the earlier mark furnished by the opponent furthermore led the Opposition Division and the Board of Appeal to base their decision on probabilities or suppositions. However, the applicant submits that the Court has consistently held that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.

23      OHIM disputes the applicant’s arguments.

24      As is clear from the ninth recital in the preamble to Regulation No 40/94 (now recital 10 in the preamble to Regulation No 207/2009), the legislature considered there to be no justification for protecting an earlier mark except where the mark has actually been used. In keeping with that recital, Article 43(2) and (3) of Regulation No 40/94 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the five years preceding the date of publication of the Community trade mark application against which an opposition has been filed (Case T‑39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II‑5233, paragraph 34, and judgment of 27 September 2007 in Case T‑418/03 La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), not published in the ECR, paragraph 51).

25      By virtue of Rule 22(3) of Regulation No 2868/95, as amended, proof of use must concern the place, time, extent and nature of use of the earlier trade mark.

26      According to settled case law, it is clear from Article 43(2) and (3) of Regulation No 40/94, read in the light of the ninth recital in the preamble to that regulation, and from Rule 22(3) of Regulation No 2868/95, as amended, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, where there is no good commercial justification deriving from active functioning of the mark on the market (see, to that effect, Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraphs 36 to 38, and judgment of 30 November 2009 in Case T‑353/07 Esber v OHIM – Coloris Global Coloring Concept (COLORIS), not published in the ECR, paragraph 20).

27      There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, Case C‑40/01 Ansul [2003] ECR I‑2439, paragraph 43; see also COLORIS, paragraph 21). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (VITAFRUIT, paragraph 39, and COLORIS, paragraph 21).

28      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (VITAFRUIT, paragraph 40, and COLORIS, paragraph 22).

29      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (VITAFRUIT, paragraph 41, and Case T‑334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 35).

30      In order to examine whether use of an earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by a high intensity or a certain constancy in time of the use of that trade mark or vice versa. Moreover, the turnover achieved and quantity of product sales under the earlier mark cannot be assessed in absolute terms but must be assessed in relation to other relevant factors, such as the volume of commercial activity, the production or marketing capacities or the degree of diversification of the undertaking exploiting the mark, and the characteristics of the products or services on the market in question. For that reason, use of the earlier mark need not always be quantitatively significant for it to be deemed genuine (HIPOVITON, paragraph 36; see also to that effect and by analogy, Ansul, paragraph 39).

31      However, the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the party opposing new registration to produce additional evidence to dispel possible doubts as to its genuineness (HIPOVITON, paragraph 37).

32      In addition, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 28, and COLORIS, paragraph 24).

33      The question whether the Board of Appeal was correct in finding that the opponent had furnished proof of genuine use of the earlier mark must be examined in the light of the above considerations.

34      As a preliminary point, it should be observed that the applicant does not dispute, in the action, use by the opponent of the earlier mark in a form (VOGUE) which differs from that in which it was registered (VOGUE Portugal).

35      It should be noted also that the opponent was requested to show use of the earlier trade mark, during the period from 13 September 1994 to 12 September 1999 (‘the relevant period’) – the application for a Community trade mark having been published on 13 September 1999 – in Portugal for ‘footwear’ in Class 25 of the Nice Agreement.

36      It is apparent also from the list of the documents contained in OHIM’s file forwarded to the Court that the evidence furnished by the opponent as proof of genuine use of the earlier mark are:

–        declarations from 15 footwear manufacturers;

–        a declaration from the opponent’s managing partner dated 12 September 2001;

–        copies of approximately 670 invoices issued to the opponent by footwear manufacturers;

–        35 photographs of VOGUE footwear models;

–        12 VOGUE insoles;

–        photographs of stores with the business name VOGUE;

–        copies of telephone directories for the period 1999-2000 mentioning two stores in Porto (Portugal) with the words ‘sapataria vogue’.

37      In its decision of 31 January 2003, the Opposition Division concluded, on the basis of the following considerations, that the opponent had made genuine use of the earlier mark:

‘Although the invoices provided do not feature the trade mark VOGUE and do not show that the opponent was actually selling the footwear with its trade mark, the declarations of the footwear producers and the amount of invoices issued by them to the opponent for the produced footwear, make it highly unlikely that the opponent would not have sold footwear. It is unreasonable to think that over the years the opponent would have stocked this amount of footwear without actually providing it to the public. Moreover, the opponent provided pictures of its shoe shops VOGUE, where presumably its VOGUE footwear are sold directly to the final consumers without middlemen, which probably explains the absence of invoices. The pictures of 35 different models of shoes and samples of 12 different insoles also make it reasonable to assume that the trade mark VOGUE is genuinely used as it is unlikely that someone would make so many different models of footwear for mere token use.’

38      In the contested decision, the Board of Appeal makes no specific reference to the documents on which it based its finding that there had been genuine use of the earlier trade mark during the relevant period. After stating that ‘[t]he evidence of use and the parties’ arguments in that respect, were thoroughly examined by the Opposition Division’, the Board of Appeal merely endorses the reasoning and findings of the Opposition Division. The evidence of genuine use should therefore be analysed on the basis of the findings in the decision of the Opposition Division (see, to that effect, judgment of 30 April 2008 in Case T‑131/06 Rykiel création et diffusion de modèles v OHIM – Cuadrado (SONIA SONIA RYKIEL), not published in the ECR, paragraph 45).

39      In that regard, it should be noted that, in so far as it is based on the considerations set out in paragraph 37 above, the Opposition Division’s reasoning, endorsed by the Board of Appeal, is based on presumptions and suppositions, as evidenced by the expressions ‘make it highly unlikely’, ‘[i]t is unreasonable to think’, ‘presumably’, ‘probably’, ‘make it reasonable to assume’ or ‘unlikely’, used in the Opposition Division’s decision.

40      As was mentioned in paragraph 32 above, it is not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given (see, to that effect, VITAKRAFT, paragraph 33).

41      In order to prove genuine use of the earlier mark, the opponent submitted to OHIM declarations made by 15 different footwear manufacturers located in Portugal, stating that footwear had been produced for the opponent under the trade mark VOGUE over a number of years, covering, for the majority of producers, all of the relevant period. Moreover, according to the declaration by the opponent’s managing partner, the goods marketed in the VOGUE footwear shops are exclusively Portuguese products with the trade mark VOGUE.

42      Thus, the declarations of the footwear manufacturers and of the opponent’s managing partner contain evidence of use of the earlier mark, concerning the time (relevant period), the place (Portugal) and the nature of the goods designated by the earlier mark (footwear).

43      However, assuming that the declarations of the footwear manufacturers and of the opponent’s managing partner are regarded as constituting evidence as envisaged by Article 76(1)(f) of Regulation No 40/94 (now Article 78(1)(f) of Regulation No 207/2009), as submitted by OHIM at the hearing, a matter which neither the Opposition Division nor the Board of Appeal examined, it is settled case-law that, even to assess the evidential value of ‘statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up’ it is necessary to verify the credibility and veracity of the account they contain, taking into account inter alia the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (see, to that effect, judgments of 16 December 2008 in Case T‑86/07 Deichmann‑Schuhe v OHIM – Design for Woman (DEITECH), not published in the ECR, paragraph 47, and of 13 May 2009 in Case T‑183/08 Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK), not published in the ECR, paragraph 38).

44      In that regard, it should be noted that, even though they maintain business relations with the opponent, footwear manufacturers are external companies, whilst the managing partner is a member of the opponent’s management. It must therefore be held that, in view of the link between the managing partner and the opponent, the evidential value of that partner’s declaration is less than that of the declarations of the manufacturers.

45      In any event, it should be noted that neither the declarations of the 15 footwear manufacturers nor that of the managing partner provide evidence concerning the extent of use. In those circumstances, those declarations alone do not constitute sufficient proof of genuine use of the earlier mark.

46      The additional evidence filed by the opponent comprised inter alia photographs of footwear models bearing the mark VOGUE and insoles bearing the mark VOGUE. Even though that evidence may substantiate the ‘nature’ (footwear) of the use of the earlier mark, it does not provide any evidence to substantiate the place, time or extent of the use, as required by Rule 22(3) of Regulation No 2868/95.

47      As regards the photographs of shoe shops with the name VOGUE and copies of telephone directories for the period 1999-2000 which refer to two shops in Porto with the name ‘sapataria vogue’, that evidence does not substantiate the nature, the time, the extent, or even the place of use of the mark. It is not apparent from any of that evidence adduced by the opponent in order to prove genuine use of the earlier mark that those shops marketed footwear bearing the earlier mark. The photographs of shops with the name VOGUE demonstrate only that the footwear displayed in the window is footwear bearing the earlier mark. Nor is it apparent from those photographs that there was a house brand for footwear, thus substantiating the opponent’s managing partner’s declaration (see, to that effect, jello SCHUHPARK, paragraph 31). It should be added in that regard that, in the present case, use of the word ‘vogue’ as a company name cannot be considered to constitute use of that word as  a trade mark for the purpose of identifying the goods covered by the Portuguese registration (see, to that effect, HIWATT, paragraph 44).

48      As for the copies of approximately 670 invoices issued to the opponent by footwear manufacturers and covering all of the relevant period, it must be held, as the Opposition Division observed, that none of them mentions footwear bearing the trade mark VOGUE, and that they are therefore incapable of proving that the opponent was actually selling footwear bearing the earlier mark. Where the word ‘vogue’ appears on those invoices it is generally attached to the opponent’s name to designate the business name VOGUE-SAPATARIA. Hence, the only fact proved by those invoices is that footwear was manufactured for the opponent, not that the footwear models referred to on those invoices bore the trade mark VOGUE.

49      That finding is not undermined by OHIM’s argument that the fact that the earlier mark is not referred to on those invoices does not prove that the latter are irrelevant for the purposes of proving genuine use of the earlier mark. In the case cited by OHIM, LA MER, although the invoices did not refer to the earlier mark LABORATOIRE DE LA MER, the goods listed on those invoices were clearly identifiable, and the packaging which was supplied by the opponent and which was sold on the dates substantiated by those invoices proved that the goods bore either the reference ‘le laboratoire de la mer’ or the name ‘laboratoire de la mer’, so that it was additional information which indicated that they were goods bearing the earlier mark. That is not so in the present case, however.

50      As regards the extent of the use, it must be held that none of the evidence supplied by the opponent before OHIM demonstrates the volume of footwear sales or the turnover in respect of such sales. In particular, even if the copies of approximately 670 invoices issued to the opponent by the footwear manufacturers relate to footwear with the trade mark VOGUE, it must be stated that those invoices concern the sale of footwear to the opponent, not the sale of footwear with the trade mark VOGUE to end consumers.

51      In addition, it must be observed that additional evidence which could not only have supported the information contained in the declarations of the 15 footwear manufacturers and of the opponent’s managing partner, but also have provided proof of the extent of the use of the earlier mark, such as, for example, copies of till receipts, invoices or accounts, brochures, catalogues or advertisements referring to footwear with the trade mark VOGUE offered or issued to consumers during the relevant period on Portuguese territory, is not evidence which it would have been difficult for the opponent to obtain (see, to that effect, Case T‑303/03 Lidl Stiftung v OHIM – REWE‑Zentral (Salvita) [2005] ECR II‑1917, paragraph 45). Moreover, there is nothing in the documents before the Court to show that the opponent claimed it was impossible to supply other evidence, in particular concerning the extent of the use of the earlier mark (see, to that effect, judgment of 23 September 2009 in Case T‑409/07 Cohausz v OHIM – Izquierdo Faces (acopat), not published in the ECR, paragraph 75).

52      It is clear from all the foregoing that the evidence the opponent adduced before OHIM, even when assessed overall, does not establish to the requisite legal standard the genuine use of the earlier trade mark in Portugal during the relevant period.

53      It follows that the Board of Appeal erred in finding that evidence of genuine use of the earlier trade mark had been adduced by the opponent in the present case.

54      Accordingly, the first plea must be accepted and the contested decision must be annulled, and there is no need to examine the other pleas put forward by the applicant.

55      Lastly, with regard to the first head of claim, it must be held that the applicant’s interests are, in the circumstances of this case, adequately protected by annulment of the contested decision, and there is no need for this judgment to alter the contested decision.

 Costs

56      Under Article 87(2) 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.

57      Since OHIM has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 30 June 2008 (Case R 328/2003-2);

2.      Dismisses the action as to the remainder;

3.      Orders OHIM to bear its own costs and those incurred by Advance Magazine Publishers, Inc.

Wiszniewska-Białecka

Dehousse

Kanninen

Delivered in open court in Luxembourg on 18 January 2011.

[Signatures]