JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

15 December 2016 (*)

(EU trade mark — Opposition proceedings — Application for the EU word mark ALDIANO — Earlier EU word mark ALDI – Genuine use of the earlier mark — Article 42(2) of Regulation (EC) No 207/2009 — Rule 22(3) of Regulation (EC) No 2868/95)

In Case T‑391/15,

Aldi GmbH & Co. KG, established in Mülheim an der Ruhr (Germany), represented by N. Lützenrath, U. Rademacher, C. Fürsen and N. Bertram, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

defendant,

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

Cantina Tollo SCA, established in Tollo (Italy), represented by F. Celluprica and F. Fischetti, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 13 May 2015 (Case R 1612/2014-4), concerning opposition proceedings between Aldi and Cantina Tollo,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, I. Labucka (Rapporteur) and I. Ulloa Rubio, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 17 July 2015,

having regard to the response of EUIPO lodged at the Court Registry on 15 December 2015,

having regard to the response of the intervener lodged at the Court Registry on 11 December 2015,

having regard to the change in the composition of the Chambers of the General Court,

having regard to the fact that no request for a hearing was submitted by the main 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

 Background to the dispute

1        On 6 June 2012, the applicant, Cantina Tollo SCA, lodged an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2        Registration as a mark was sought for the word mark ALDIANO.

3        The goods in respect of which registration was sought are in Class 33 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 to the following description: ‘alcoholic beverages (except beers)’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 129/2012 of 10 July 2012.

5        On 8 October 2012, the applicant, Aldi GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the EU word mark ALDI, registered under number 2071728 on 14 April 2005 for goods and services in Classes 3, 4, 7, 9, 16, 24, 25, 29 to 34 and 36, including ‘alcoholic beverages (except beers)’ covered in Class 33.

7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8        At the request of the intervener, the Opposition Division asked the applicant to furnish evidence of the use of the earlier mark in accordance with Article 42(2) of Regulation No 207/2009.

9        On 16 August 2013, the applicant submitted the following evidence:

–        an affidavit of an employee of Aldi Supermercados SL;

–        three copies of advertisements for several products, in particular for the wines ‘Espiral Vinho Verde’, ‘ROSSO TOSCANO’ and ‘BONUS Vino Blanco’;

–        two copies of (draft) prints of labels for the wines ‘BONUS Vino Blanco’ and ‘Espiral Vinho Verde’ on the back of which appears a reference to Aldi;

–        three photographs of bottles and a box for the wines ‘Espiral Vinho Verde’, ‘ROSSO TOSCANO’ and ‘BONUS Vino Blanco’;

–        11 copies of invoices from suppliers to the applicant’s sales companies located in Spain.

10      By decision of 12 June 2014, the Opposition Division rejected the opposition in its entirety. It considered that the evidence submitted was insufficient to prove the genuine use of the earlier mark for the goods and services for which it was registered.

11      On 26 June 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

12      By decision of 13 May 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In essence, it considered that the evidence submitted by the applicant did not demonstrate genuine use of the earlier mark for the goods for which it had been registered. The Board of Appeal stated that the evidence submitted, except for an affidavit uncorroborated by other documentary evidence, did not demonstrate that the goods had actually been sold on the market and were marketed under the mark ALDI. Thus, neither the extent nor the nature of the use of the earlier mark had been proved for the goods and services covered by the earlier mark.

 Forms of order sought

13      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

14      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

15      In support of its action, the applicant relies on a single plea in law, based on infringement of Article 42(2) of Regulation No 207/2009 and Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1).

16      The applicant considers that the Board of Appeal erred in law by holding that the evidence submitted was not such as to prove the extent and nature of the use of the earlier mark for wines in Class 33. It claims that, taken as a whole, the documents submitted provided evidence of the nature, time, place and extent of the mark’s use.

17      The applicant claims that the affidavit, in conjunction with the other documents submitted, constitutes proof of the right-preserving use of the earlier mark and complains, in that regard, that the Board of Appeal assessed each document in isolation.

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

19      Pursuant to Article 42(2) of Regulation No 207/2009, at the request of the applicant, the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services for which it is registered and upon which the opposition is based. In the absence of such proof, the opposition is rejected.

20      Rule 22(3) of Regulation No 2868/95 states that the evidence for the furnishing of proof of use of a mark is to consist of indications concerning the place, time, extent and nature of use of the earlier trade mark for the goods and services in respect of which it is registered and on which the opposition is based. Under Rule 22(4), the evidence of those indications is to be confined, in principle, to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and sworn or affirmed declarations.

21      Furthermore, it is apparent from settled case-law that 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. 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 in the course of trade 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 (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 70; of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 29; and of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 29). However, the analysis of whether use of an earlier trade mark is genuine cannot be confined merely to establishing that that mark has been used in the course of trade, since the use must also be genuine, in accordance with the wording of Article 42(2) of Regulation No 207/2009. Moreover, whether a mark is deemed to have been put to ‘genuine use’ will depend on the characteristics of the goods or service concerned on the corresponding market. Not all proven commercial exploitation can therefore automatically be deemed genuine use of the mark in question (see, to that effect, judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 32).

22      The case-law has further established that it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of that regulation and Rule 22(3) of Regulation No 2868/95, 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 an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (judgment of 8 July 2014, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), EU:T:2004:225, paragraph 38 and the case-law cited).

23      As regards the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use, on the one hand, and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other. Furthermore, in examining whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors specific to the particular case. That assessment implies a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. 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 (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraphs 35 and 36, and VITAFRUIT, T‑203/02, EU:T:2004:225, paragraphs 41 and 42).

24      The question whether the Board of Appeal was right in considering that the evidence submitted by the applicant did not demonstrate genuine use of the earlier mark for the goods in respect for which it was registered must be assessed in the light of the above considerations.

25      Since the application to register the mark was published on 10 July 2012, the five year period referred to in Article 42(2) of Regulation No 207/2009 covers, as the Board of Appeal noted in paragraph 15 of the contested decision, the period from 10 July 2007 to 9 July 2012.

26      Concerning, in the first place, the nature of the use, the Board of Appeal held, in essence, that the evidence submitted, as a whole, did not make it possible to demonstrate that the goods were marketed under the ALDI mark and that the documents submitted were not adequate evidence of the nature of the use. In its opinion, those documents demonstrated that the applicant offered different kinds of wine (BONUS Vino Blanco, Espiral or ROSSO TOSCANO) in its supermarkets. Nevertheless, the Board of Appeal held that the mark ALDI, present on the advertisements, was never, except for once, affixed to the goods and it was not used to distinguish them, but that it was used as the company name of the retailer.

27      In particular, it considered that, of all the photographs and advertisements showing packaging items for the wines ‘ROSSO TOSCANO’, ‘Espiral Vinho Verde’ and ‘BONUS Vino Blanco’, only the packaging for the wine ‘ROSSO TOSCANO’ depicts the ‘ALDI’ mark. However, it is written in very small and hardly legible print.

28      The applicant disputes those findings of the Board of Appeal and claims, in essence, that it is apparent from the documents submitted as a whole that the mark ALDI was used for all three wines referred to by the Board of Appeal. Specifically, it complains that the Board of Appeal assessed each document in isolation. Furthermore, the applicant states that the use of another mark on the wine packaging alongside the ALDI mark did not call into question the genuine use of the latter and that, in that sector of activity, the public is accustomed to the use of secondary marks.

29      In that respect, it must be noted that, contrary to the findings of the Board of Appeal, the mark ALDI was placed on both the packaging of the wine ‘ROSSO TOSCANO’ and on those of the wines ‘Espiral Vinho Verde’ and ‘BONUS Vino Blanco’. While it is true that, as the Board of Appeal stated in paragraph 24 of the contested decision, the advertisements relating to the wines ‘Espiral Vinho Verde’ and ‘BONUS Vino Blanco’ do not show that the corresponding products bear the ALDI mark, the fact nevertheless remains that, in view of the labels of those products submitted by the applicant and whose authenticity was not called into question by the Board of Appeal, it can be stated that the mark ALDI was affixed to the goods which were the subject of the advertisement. As is apparent from the case-law cited in paragraph 21 above, the evidence aimed at demonstrating genuine use and, in particular, the nature of that use must be assessed as a whole.

30      As regards the finding of the Board of Appeal, disputed by the applicant, that the goods were not marketed under the mark ALDI but under the marks ROSSO TOSCANO, Espiral and BONUS and that the earlier mark was not used to differentiate those goods but as the company name of the retailer of those goods, it must be stated that the Court of Justice has held, in relation to Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), that there was use ‘in relation to goods’ within the meaning of the directive where a third party affixed the sign constituting its company name, trade name or shop name to the goods which it marketed (judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraph 22).

31      As has been observed in paragraph 29 above, the mark ALDI, which is also the applicant’s company name, was affixed to the packaging of the goods at issue. It follows that the Board of Appeal was wrong to consider that the earlier mark was not used to distinguish the goods for which genuine use had been claimed. In that regard, it is not relevant that the mark affixed is small or is not affixed to the front of the packaging.

32      Similarly, the applicant disputes the Board of Appeal’s assertions according to which the advertisement published in August 2012, that is to say after the relevant period, should not be taken into account. In that regard, it relies on the case-law allowing, for the purpose of the assessment of genuine use, account to be taken of any subsequent circumstances and submits that such circumstances may make it possible to confirm or better assess the extent of the use of the mark during the relevant period.

33      Although it is true, as is apparent from the case-law, that evidence of use of the mark established after the relevant period may be taken into account, it may nevertheless be taken into account only if it enables conclusions to be drawn on the use of the mark such as it was during the relevant period (see, to that effect, judgments of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50 paragraph 31, and of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraph 41).

34      In the present case, the applicant has not explained how the advertisement at issue, dated August 2012, enabled conclusions to be drawn as to the use of the earlier mark during the relevant period. Accordingly, that argument by the applicant must be rejected. The advertisement relating to BONUS Vino Blanco can therefore not be taken into account in the present case. Therefore, as regards the wine BONUS Vino Blanco, the only evidence which may be taken into account is the affidavit and the example of packaging. Since they do not demonstrate the actual marketing of the wine BONUS Vino Blanco, those two items of evidence are nevertheless insufficient to prove the nature of the use of the earlier mark for that kind of wine.

35      By contrast, contrary to the Board of Appeal’s finding, the evidence relating to the wines ROSSO TOSCANO and Espiral Vinho Verde, that is to say the affidavit, advertisements, labels and photos, taken as a whole, provide sufficient information on the nature of the use of the earlier mark. It must therefore be stated that the applicant has provided sufficient evidence of the nature of the use of the earlier mark for the wines ROSSO TOSCANO and Espiral Vinho Verde. It must, therefore, be assessed whether the applicant has demonstrated the extent of the use of the earlier mark for those kind of wines.

36      As regards, in the second place, the extent of the use of the earlier mark, the Board of Appeal noted, in paragraph 21 of the contested decision, that, of the evidence submitted by the applicant, only the affidavit and 11 invoices showing the purchase of wine by the applicant from suppliers were relevant. It added, in paragraph 22 of the contested decision, that the other evidence submitted by the applicant did not provide any information on the extent of the use of the earlier mark.

37      In the affidavit, Mr C. L., the applicant’s employee, stated that the mark ALDI had been used for three main types of wine during the period from 10 July 2007 to 10 July 2012, that the mark had been the subject of three advertisements published in Spanish daily newspapers in 2011 and 2012, and that the sales and distribution of the goods were carried out in part by the applicant and in part by other sales companies of the applicant. Similarly, that affidavit includes a table of wine sales figures for the years 2007 to 2013.

38      As regards the affidavit, the Board of Appeal considered, in paragraph 21 of the contested decision, that, since the affidavit came from an employee of the applicant, no evidential value could be given to it unless it was supported by additional documentary evidence.

39      As regards the invoices submitted by the applicant, the Board of Appeal considered that suppliers had addressed them to the applicant and they did not prove the actual sale of wine bearing the earlier mark, let alone the date and extent of that sale, and, as a result, they were not capable of corroborating the information in the affidavit.

40      The applicant claims that the Board of Appeal’s finding that the invoices do not prove the subsequent sale of the wines but merely their delivery is incorrect. As regards the assessment of the extent of the use of the earlier mark, it complains that the Board of Appeal only took into account the quantities mentioned in the invoices and failed to take the affidavit into account.

41      In that respect, it follows from the case-law that, first, even when an affidavit has been established for the purposes of Article 78(1)(f) of Regulation No 207/2009 by a manager of the applicant, evidential value may be given to that affidavit only if it is supported by other evidence. Second, the fact that such an affidavit comes from an employee of the applicant does not, in itself, deprive it of all value (see judgment of 13 June 2012, Süd-Chemie v OHIM — Byk-Cera (CERATIX), T‑312/11, not published, EU:T:2012:296, paragraph 30 and the case-law cited).

42      Therefore, evidential value must be given to the information in the affidavit submitted by the applicant provided that it is supported by other evidence.

43      In that regard, it must be observed that, as regards the advertisements relating to the Espiral Vinho Verde and ROSSO TOSCANO goods, the applicant claims that they were published in three Spanish daily newspapers from 6 to 9 June 2011 and from 6 to 12 May 2012, respectively. Nevertheless, it must be noted that the file contains no information relating to the names of the newspapers at issue or their circulation. Similarly, as regards their frequency, the advertisements submitted by the applicant do not make it possible to confirm that they were published more than once, as the applicant argues, since they do not include any date relating to their publication. It follows that no information relating to the extent of the use of the earlier mark may be drawn from those advertisements.

44      The same is true of the prints of labels and photographs of packaging submitted by the applicant, since they do not contain any information relating to the extent of the use of the earlier mark.

45      As for the 11 invoices from suppliers to the applicant, clearly, as the Board of Appeal rightly found, they related to the purchase of the wines ROSSO TOSCANO, Espiral Vinho Verde and BONUS Vino Blanco by the applicant but were not evidence of the actual sale of those wines. In that regard, it should be noted that, in accordance with the case-law cited in paragraph 23 above, genuine use of a mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence which demonstrate actual and sufficient use of the trade mark on the market concerned.

46      Furthermore, it must be stated that the applicant has not substantiated its claims regarding the erroneous nature of the Board of Appeal’s finding relating to the nature of the invoices submitted. As noted in paragraph 43 above, those invoices only prove the sale and delivery of wine to the applicant and its distribution companies in Spain, but not the marketing, by the applicant or its distribution companies, of that wine.

47      The applicant also alleges that it is impossible to provide till receipts for each bottle of wine sold under the mark ALDI because of the potentially high number of such receipts and difficulties related to personal data protection.

48      That argument of the applicant cannot be accepted. Even if it were materially impossible for it to submit all the till receipts relating to the sale of wine bearing the earlier mark, such impossibility does not remove the applicant’s obligation to prove actual use of its mark. Furthermore, it must be observed that the additional evidence which could have made it possible to support the information on the extent of the use of the earlier mark contained in affidavits, such as copies of till receipts, sales invoices or accounting documents referring to the wines bearing the mark ALDI during the relevant period on the Union’s territory, is not of a kind which it would have been difficult for the applicant to obtain (see, to that effect, judgment of 18 January 2011, Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, not published, EU:T:2011:9, paragraph 51 and the case-law cited).

49      It follows that the applicant has not proved, to the requisite legal standard, the extent of the use of the earlier mark.

50      Consequently, the Board of Appeal was right to hold that genuine use of the earlier mark had not been proven. Consequently, the single plea in law must be rejected and the action dismissed in its entirety.

 Costs

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

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Aldi GmbH & Co. KG to pay the costs.

Gratsias

Labucka

Ulloa Rubio

Delivered in open court in Luxembourg on 15 December 2016.

E. Coulon

       D. Gratsias

Registrar

      President