JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

23 October 2013 (*)

(Community trade mark – Invalidity proceedings – Figurative Community trade mark Baby Bambolina – Earlier unregistered national trade mark Bambolina – Relative ground for refusal – No use in trade of a sign of more than mere local significance – Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009)

In Case T‑581/11,

Dimian AG, established in Nuremberg (Germany), represented by P. Pozzi and G. Ghisletti, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,

defendant,

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

Bayer Design Fritz Bayer GmbH & Co. KG, established in Michelau (Germany), represented by J. Pröll, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 3 August 2011 (Case R 1822/2010-2), relating to invalidity proceedings between Dimian AG and Bayer Design Fritz Bayer GmbH & Co. KG,

THE GENERAL COURT (Seventh Chamber),

composed, at the time of deliberation, of A. Dittrich (Rapporteur), President, I. Wiszniewska-Białecka and M. Prek, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 9 November 2011,

having regard to the response of OHIM lodged at the Registry of the Court on 14 February 2012,

having regard to the response of the intervener lodged at the Registry of the Court on 14 February 2012,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,

gives the following

Judgment

 Background to the dispute

1        On 29 October 2007, the intervener, Bayer Design Fritz Bayer GmbH & Co. KG, applied to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for registration as a Community trade mark of the following figurative sign:

2        That mark was registered by OHIM on 8 September 2008 in relation to goods within Class 28 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, corresponding to the following description: ‘games, playthings, gymnastic and sporting articles; puppets, dolls, dolls beds, dolls houses, dolls clothing, soft toys; electronic games other than those adapted for use with television receivers only; playing balls, toys for pets, toy vehicles; dolls prams, dolls pushchairs; dolls buggies’.

3        On 9 July 2009, the applicant, Dimian AG, submitted an application to OHIM for a declaration of invalidity of that figurative Community trade mark (‘the mark at issue’) in relation to all the goods which it covered, pursuant to Article 53(1)(c) read in conjunction with Article 8(4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) and to Article 53(1)(a) read in conjunction with Article 8(1)(b) and Article 8(2)(c) of that regulation.

4        The applicant’s application for a declaration of invalidity was based on the following earlier rights:

–        non-registered word mark Bambolina used in the course of trade in the Czech Republic, Denmark, Germany, Estonia, Greece, Spain, France, Ireland, Italy, Latvia, Hungary, the Netherlands, Austria, Poland, Slovenia, Slovakia, Finland, Sweden and the United Kingdom, for ‘Dolls and accessories for dolls such as doll prams and doll buggies’ in Class 28 (‘the earlier mark’);

–        non-registered word mark Bambolina, well known in the above countries within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (‘the Paris Convention’) for ‘Dolls and accessories for dolls such as doll prams and doll buggies’ in Class 28.

5        On 30 July 2010, the Cancellation Division of OHIM rejected the application for a declaration of invalidity. It found that the applicant had not proved that the earlier mark was still in use in the course of trade when the application for a declaration of invalidity was filed. It further found that the applicant had not proved that the mark was well known in any of the relevant countries.

6        On 20 September 2010, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Cancellation Division’s decision.

7        By decision of 3 August 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the applicant’s appeal.

8        The Board of Appeal essentially found that the evidence submitted by the applicant did not prove to the requisite legal standard the use in the course of trade of a sign of more than mere local significance.

9        More specifically, the Board of Appeal confirmed the finding of the Cancellation Division according to which it was for the party seeking a declaration of invalidity on the basis of an earlier sign, within the meaning of Article 8(4) of Regulation No 207/2009, to prove that the sign in question was used in the course of trade not only until the date of application for registration of the Community trade mark at issue, but also during the subsequent period up to the date on which an application for a declaration of invalidity was filed.

10      The Board of Appeal found that, whilst an affidavit, a supply contract and invoices had been produced for the period from the launch of the earlier mark in 2004 until the application for registration of the mark at issue on 29 October 2007, the evidence relating to the period from 29 October 2007 until 9 July 2009, on which date the application for a declaration of invalidity was submitted, was much more limited. The fact that the evidence in relation to that period was limited could not be offset by the evidence relating to the period from 2004 until 2007, because the use of the earlier mark between 2004 and 2007 was in itself quite limited.

11      The Board of Appeal held that use of a mark in the framework of Article 8(4) of Regulation No 207/2009 could not be proved by means of probabilities or suppositions but must be demonstrated by solid and objective evidence.

12      It noted that the evidence concerning the period from 29 October 2007 until 9 July 2009 consisted solely of catalogues or loose pages from catalogues.

13      In relation to the applicant’s own catalogue, the Board of Appeal noted that it did not constitute independent evidence and that producing it as evidence did not make it possible to determine whether it had in fact been distributed, where, and in what quantities.

14      In relation to the other catalogues submitted by the applicant, the Board of Appeal found that they did not prove that any sales were made. Furthermore, a substantial part of the evidence was found to be flawed by legitimate doubts as to whether loose, unnumbered and undated pages featuring the products actually corresponded to the particular cover page of the catalogue they followed. Finally, no evidence was adduced for the period after January 2009.

 Forms of order sought by the parties

15      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

16      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

17      In support of its action the applicant relies on a single plea in law, alleging infringement of Article 53(1)(c) of Regulation No 207/2009 read in conjunction with Article 8(4) thereof.

18      The applicant essentially argues that, in contrast to the Board of Appeal’s findings, the catalogues it submitted in relation to 2008 and 2009 were sufficient to prove use in the course of trade of a sign of more than mere local significance.

19      OHIM and the intervener contest the applicant’s arguments.

20      As a preliminary point, it should be noted that the applicant does not dispute the dismissal of the application for a declaration of invalidity in so far as it was based on Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) and (2)(c) of that regulation. The present action is not based on the non-registered word mark Bambolina, well known within the meaning of Article 6bis of the Paris Convention referred to at the second indent of paragraph 4 above. As correctly noted by OHIM, it is for the purpose of stating that the sign relied on was used in the course of trade, and not in order to show the well-known character of the Bambolina mark within the meaning of Article 6bis of the Paris Convention, that the applicant submits at paragraph 23 of the application that that mark was widely known among the relevant public, at least in Germany, Italy and Spain.

21      According to Article 53(1)(c) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier right as referred to in Article 8(4) of that regulation and the conditions set out in Article 8(4) are fulfilled.

22      It should be noted that, in accordance with those provisions, the proprietor of a non-registered trade mark or of another sign used in the course of trade may apply for a declaration that a Community trade mark is invalid where the non-registered trade mark or other sign satisfies the following conditions: use in the course of trade; more than mere local significance; acquisition by the proprietor of the right to prohibit the use of a subsequent trade mark, and acquisition of the right to the sign in question, pursuant to the law of the Member State in which the sign was used, prior to the date of application for registration of the Community trade mark. Those conditions are cumulative. Thus, where a sign does not satisfy one of those conditions, the application for a declaration of invalidity based on the existence of a non-registered trade mark or other sign used in the course of trade within the meaning of Article 8(4) of Regulation No 207/2009 will not be successful (see judgment of 14 September 2011 in Case T‑279/10 K-Mail Order v OHIM – IVKO (MEN’Z), not published in the ECR, paragraph 17 and the case-law cited).

23      The conditions relating to use in the course of trade and to the significance of the sign relied on must be interpreted in the light of the uniform standards of EU law which are consistent with the principles underlying the system established by Regulation No 207/2009 (MEN’Z, paragraph 22 above, paragraph 20).

24      In relation to the requirement that the significance of the sign relied on must be more than local, its consideration requires that account be taken, first, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a literal interpretation of Article 8(4) of Regulation No 207/2009. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in the light of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or suppliers, or of the exposure given to the sign, for example, through advertising or on the internet. In order to ascertain the actual significance of the sign relied on in the relevant territory, the Court must not therefore confine itself to a purely formal assessment, but must examine the impact of that sign in the territory in question after it has been used as a distinctive element (MEN’Z, paragraph 22 above, paragraph 21 and the case-law cited).

25      The Court has thus made clear that the significance of a sign cannot be a function of the mere geographical extent of its protection, since, if that were the case, a sign whose protection is not merely local could, by virtue of that fact alone, prevent registration of a Community trade mark – and could do so even though the sign is used only to a very limited extent in the course of trade. It follows that, in order to be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local (Case C‑96/09 P Anheuser-Busch v Budějovický Budvar [2011] ECR I‑2131, paragraphs 158 and 159).

26      It should further be noted that the earlier right relied on in support of an opposition must still exist at the time that notice of opposition is filed. Indeed, Rule 19(2)(d) 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) expressly provides that, in the event that an opposition is based on Article 8(4) of Regulation No 207/2009, the opposing party must provide evidence not only of the acquisition and of the scope of protection of that earlier right, but also of the continued existence of that right. By analogy, the earlier right relied on in support of an application for a declaration of invalidity must still exist at the time that application is made.

27      This presupposes normally that the sign in question must still be in use at the time of the filing of the notice of opposition or of the application for a declaration of invalidity. Indeed, it is precisely the use of the sign in the course of trade which is the basis of the existence of the rights to that sign.

28      In the present case, there is no need for the Court to rule on whether, and in what circumstances, the protection of a non-registered trade mark may continue after the end of the period of actual use of that mark. Indeed, the applicant has not put forward any argument to support the finding that, in the present case, the protection of the earlier mark was capable of continuing after the possible end of the period of actual use of that non-registered trade mark.

29      Secondly, it should be noted that in order to be capable of preventing registration of a new sign, the sign relied on in support of an application for a declaration of invalidity must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local (Anheuser-Busch v Budějovický Budvar, paragraph 25 above, paragraph 159). It is therefore for the party seeking a declaration of invalidity to provide evidence of actual and sufficiently significant use, and not only to prove that the use in the course of trade of a sign of more than mere local significance is likely. In those circumstances, the Board of Appeal correctly held that the use of an earlier mark could not 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 (see, to that effect, as regards the need to adduce solid and objective evidence, MEN’Z, paragraph 22 above, paragraph 29).

30      Finally, it is appropriate to note that the condition relating to use in the course of trade of a sign must be assessed separately for each of the territories in which the right relied on in support of the application for a declaration of invalidity is protected. The significance of the sign cannot therefore be inferred from a cumulative assessment of the use of the sign in several relevant territories (see, to that effect, Anheuser-Busch v Budějovický Budvar, paragraph 25 above, paragraph 163).

31      In the application, the applicant drew attention to the fact that it had provided, during the proceedings before OHIM, the following evidence in relation to the period between 2008 and 2009:

–        Grosse Spielwelt Winter catalogue of 2007/2008 (Germany);

–        Spielwelt catalogue of 31 August 2008 (Germany);

–        Auchan catalogue of 2008 (Italy);

–        El Duende de los juguetes Navidad catalogue of 2008 (Spain);

–        Don Dino Navidad catalogue of 2008 (Spain);

–        Juguetes Siutin catalogue of 2008 (Spain);

–        Nadal Reis catalogue of 2008/2009 (Spain).

32      The evidence relied on by the applicant therefore relates to Germany, Italy and Spain.

33      It is therefore appropriate to examine, in relation to each of those territories, whether the evidence provided by the applicant is sufficient to show use in the course of trade of a sign of more than mere local significance until the date on which an application for a declaration of invalidity was filed, which is 9 July 2009.

34      First, in relation to Germany, the applicant submitted several pages of two catalogues as proof of use of the earlier mark in the course of trade in 2008 and 2009, between the date of the application for registration of the mark at issue and the date on which an application for a declaration of invalidity was filed.

35      As noted by the Board of Appeal, the applicant did not provide any information about the number of orders placed as a result of those catalogues.

36      The applicant states that it is apparent from the affidavit of the Chairman of the board of Dimian AG (the ‘affidavit’), adduced during the proceedings before OHIM, that in 2007 it sold approximately 30 000 items under the earlier mark in Germany. The applicant submits that, whilst it is true that catalogues do not per se prove that the products displayed therein have actually been sold, considering the number of items sold under the earlier mark in 2007, the sale of such products in subsequent years is more than a mere assumption.

37      In that regard, it should be noted that it is not sufficient merely for the earlier mark to have been used in some way. On the contrary, it must actually have been used in a sufficiently significant manner (see paragraph 25 above).

38      Even supposing that the catalogue pages provided by the applicant are sufficient to show that some sales were made during the period those catalogues were valid, in no way are they sufficient per se to show that during 2008 and 2009 sales of the same order of magnitude as in 2007 were made.

39      In addition, it should be noted that, in order to assess the sufficiently significant nature of the use of the earlier mark, the volume of sales made is indeed a relevant factor, but so is the relationship between the volume of sales in general of the product at issue in the country concerned and the volume of sales made of that product in that country under the earlier mark (see, to that effect, Joined Cases T‑225/06 RENV, T‑255/06 RENV, T‑257/06 RENV and T‑309/06 RENV Budějovický Budvar v OHIM – Anheuser-Busch (BUD) [2013] ECR II‑0000, paragraph 59).

40      The catalogue pages provided by the applicant in relation to 2008 and 2009 do not make it possible to assess the volume of sales made under the earlier mark during those years, let alone the relationship between that volume of sales and the volume of sales in general of the products at issue in Germany.

41      Furthermore, in relation to the period of validity of the catalogues of which certain pages have been provided, it is appropriate to note the following.

42      Concerning first the ‘Grosse Spielwelt’ Winter 2007/2008 catalogue, the Board of Appeal noted correctly at paragraph 22 of the contested decision that the last page which was provided by the applicant stated that that catalogue was valid until the end of January 2008.

43      In relation, secondly, to the ‘Spielwelt’ catalogue relied on by the applicant, the Board of Appeal noted at paragraph 21 of the contested decision that the cover page of that catalogue stated that that catalogue was valid until 31 August 2008.

44      In that regard the applicant submits that catalogues usually circulate in the market until the release of the following year’s catalogue. According to the applicant, it is clear that the ‘Spielwelt’ catalogue of 31 August 2008 was available in the market until the first months of 2009.

45      However, that statement is contradicted by the content of that catalogue. It is apparent from the evidence provided by the applicant that the cover page of that catalogue states ‘valid until 31 August 2008’. 31 August 2008 is not therefore the date of publication or the date from which the catalogue was valid, but the date on which it ceased to be valid.

46      It follows that none of the catalogues relied on by the applicant as evidence pertaining to the German market relate to the period after 31 August 2008. There is therefore a period of more than 10 months between the date of expiry of the last catalogue of which certain pages were provided by the applicant and the date of filing of the application for a declaration of invalidity.

47      It is further appropriate to note that the affidavit provides no indication as to the volume of sales made after 2007.

48      Concerning the applicant’s own catalogue for 2008, the Board of Appeal correctly stated, without being contradicted by the applicant, that it lacked independence as an item of evidence and that producing it as evidence did not make it possible to know whether it was in fact distributed, where it may have been distributed or the quantities of such distribution.

49      The applicant in addition submits that, taking account of the evidence provided in relation to the period from 2004 to 2007, the evidence provided in relation to 2008 and 2009 must be deemed sufficient to show use in the course of trade of the earlier mark of more than local significance.

50      In that regard, it should be noted that apart from the sales figures of 2007, the applicant does not rely in its application on any specific factors included in the evidence which it provided in relation to the period from 2004 to 2007 which would make it possible to draw conclusions as to the use of the trade mark during 2008 and 2009. It has already been noted at paragraph 38 above that the catalogue pages provided by the applicant concerning 2008 and 2009 did not make it possible to conclude that, during those years, sales of the same order of magnitude as in 2007 had been achieved. The applicant does not therefore rely on any element which could make it possible to consider that the weakness of the evidence provided in relation to 2008 and 2009 is offset by the evidence relating to the previous years.

51      It follows from the foregoing that the evidence provided by the applicant relating to Germany, taken together, cannot be considered sufficient to show sufficiently significant use of the earlier mark in 2008 and 2009 up to the date of filing of an application for a declaration of invalidity.

52      That outcome is not affected by the applicant’s argument based on the decision of the Second Board of Appeal of OHIM of 14 December 2004 in Case R 519/2003-2, in which the Second Board of Appeal held, in paragraph 22, that catalogues could on their own suffice to demonstrate genuine use of a registered trade mark and that all depended on the circumstances of the case.

53      In that regard, it should be noted that the facts underlying the decision of the Second Board of Appeal in Case R 519/2003-2 are different from those underlying the present case. Aside from the fact that Case R 519/2003-2 concerned proof of the genuine use of a registered trade mark and not proof of use in the course of trade of a non-registered trade mark of more than mere local significance, the catalogues submitted in that case included a reference to the position on the market of the owner of the trade mark and indicated that, according to an independent source, its market share was 27.6%.

54      In contrast, in the present case, the catalogue pages submitted by the applicant for 2008 and 2009 did not include any reference to the applicant’s position on the market or in particular to its market share.

55      Concerning the applicant’s argument according to which the Board of Appeal absolutely and incorrectly excluded in the contested decision the possibility that catalogues might be sufficient to prove use of a mark, it should be noted that it is not necessary to rule on the abstract question of whether the submission of catalogues can under no circumstances constitute proof of a sufficiently significant use of an earlier sign in the context of the application of Article 8(4) of Regulation No 207/2009. It is sufficient to state that in the present case the evidence provided by the applicant is not sufficient to show a sufficiently significant use of the earlier trade mark during 2008 and 2009, as is apparent from the considerations referred to at paragraphs 38 to 51 above.

56      Secondly, in relation to Italy, the applicant has submitted several pages of an Auchan catalogue to prove use in the course of trade of the earlier mark between the date of the application for registration of the mark at issue and the date on which an application for a declaration of invalidity was filed.

57      According to the affidavit, approximately 19 000 items were sold under the earlier mark in Italy in 2007. That affidavit does not however mention the sales figures for 2008 and 2009.

58      Even supposing that the catalogue pages provided by the applicant are capable of showing that some sales were made while that catalogue was valid, in no event are they sufficient to show that during 2008 and 2009 sales of the same order of magnitude as in 2007 were made.

59      The catalogue pages provided by the applicant do not make it possible to determine the volume of sales made under the earlier mark during 2008 and 2009, let alone the relationship between that volume of sales and the volume of sales in general of the products concerned in Italy.

60      In relation to the expiry date of the catalogue at issue, the Board of Appeal correctly noted at paragraph 23 of the contested decision that the last page produced referred to prices, products and finance options which were valid until 14 December 2008.

61      The applicant’s statement according to which it is clear that that catalogue was available on the market until the first months of 2009 is in no way substantiated and is contradicted by the content of that catalogue, which mentions its expiry date.

62      It follows that there is a period of nearly seven months between the expiry date of the only catalogue of which some pages were provided by the applicant in relation to Italy and the date on which an application for a declaration of invalidity was filed.

63      It follows from the above that the evidence provided by the applicant does not prove to the requisite legal standard that the earlier mark was used in a sufficiently significant manner in Italy up to the date of filing of an application for a declaration of invalidity.

64      Thirdly, in relation to Spain, the applicant submitted several pages from four catalogues to prove use in the course of trade of the earlier mark between the date of application for registration of the mark at issue and the date on which an application for a declaration of invalidity was filed.

65      According to the affidavit, the applicant sold approximately 18 000 items under the earlier mark in Spain in 2007.

66      However, that statement does not mention the sales figures for 2008 and 2009, and the submission of pages from four catalogues alone does not make it possible per se to conclude with certainty that during 2008 and 2009 sales of the same order of magnitude as in 2007 were made. Those documents do not make it possible to establish the volume of sales made under the earlier mark during 2008 and 2009, let alone the relationship between that volume of sales and the volume of sales in general of the products concerned in Spain.

67      With respect to the period of validity of those catalogues, it is appropriate to note the following.

68      In relation to the Juguetes Situin catalogue, the Board of Appeal correctly noted at paragraph 24 of the contested decision that the last page of that catalogue stated that prices were valid until 6 January 2008. The applicant’s claim that that catalogue was valid until the first months of 2009 therefore has no factual basis.

69      In relation to the Don Dino Navidad 2008 and Nadal Reis 2008/2009 catalogues, the Board of Appeal correctly noted at paragraph 25 of the contested decision that those catalogues related to Christmas and Epiphany and that therefore they are clearly not intended to promote sales beyond January 2009. The applicant’s mere statement that those catalogues were valid respectively until winter 2009 and winter 2010 does not prove that those catalogues were valid after January 2009.

70      Finally, in relation to the El Duende de los juguetes Navidad 2008 catalogue, it is appropriate to note that the first page of that catalogue mentions that it was valid from 14 November to 14 December 2008.

71      It follows that the applicant has not submitted any evidence pertaining to the use of the earlier mark on Spanish territory in relation to the period after January 2009. There is a period of more than five months between the expiry date of the last catalogue pertaining to the Spanish market of which certain pages were provided by the applicant and the date of filing of an application for a declaration of invalidity.

72      In those circumstances, the evidence relating to the Spanish market cannot be considered sufficient to prove sufficiently significant use of the earlier mark in 2008 and 2009 up to the date of filing of an application for a declaration of invalidity.

73      It follows from all of the foregoing that, in relation to all the relevant territories, the Board of Appeal correctly found that the applicant had not proved use in the course of trade of a sign of more than mere local significance up to the date of filing of an application for a declaration of invalidity.

74      It follows that the single plea in law put forward by the applicant must be dismissed and, in consequence, the action must be dismissed in its entirety.

 Costs

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

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Dimian AG to pay the costs.

Dittrich

Wiszniewska-Białecka

Prek

Delivered in open court in Luxembourg on 23 October 2013.

[Signatures]