JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

5 June 2014 (*)

(Community trade mark — Opposition proceedings — Application for Community figurative marks Dracula Bite and DRACULA BITE — Earlier national figurative mark Dracula — Absence of genuine use of the earlier mark — Article 42(2) and (3) of Regulation (EC) No 207/2009)

In Cases T‑495/12 to T‑497/12,

European Drinks SA, established in Ştei (Romania), represented by V. von Bomhard, lawyer,

applicant,

v

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

defendant,

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

SC Alexandrion Grup Romania Srl, established in Pleasa (Romania), represented by I. Niculeasa, G. Trantea and B. Mǎrculeƫ, lawyers,

THREE ACTIONS brought against three decisions of the Fourth Board of Appeal of OHIM of 6 September 2012 (Cases R 680/2011-4, R 682/2011-4 and R 679/2011-4), concerning three opposition proceedings between European Drinks SA and SC Alexandrion Grup Romania Srl,

THE GENERAL COURT (Ninth Chamber),

composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the applications lodged at the Registry of the Court on 16 November 2012,

having regard to the statements in response of OHIM lodged at the Registry on 21 February 2013,

having regard to the statements in response of the intervener lodged at the Registry on 6 March 2013,

having regard to the order of 7 January 2014 joining Cases T‑495/12, T‑496/12 and T‑497/12 for the purposes of the oral procedure,

further to the hearing on 5 March 2014,

gives the following

Judgment

 Background to the dispute

1        On 9 February 2009, the intervener, SC Alexandrion Grup Romania Srl, filed three applications for registration of Community trade marks with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to 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 marks in respect of which registration was sought are the figurative signs reproduced below:

3        The goods and services in respect of which registration are sought were in Classes 33, 35 and 39 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

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

–        Class 35: ‘Advertising; business management; business administration; administrative services; collection, for others, of alcoholic beverages (except beers) (except transport thereof) enabling consumers to view and purchase these goods conveniently’;

–        Class 39: ‘Transport; packaging and storage of goods; tour operating and organizing’.

4        The three Community trade mark applications were published in Community Trade Marks Bulletin No 45/2009 of 23 November 2009.

5        On 17 February 2010 the applicant, European Drinks SA, filed notices of opposition under Article 41 of Regulation No 207/2009 to registration of the marks applied for in respect of the goods and services referred to in paragraph 3 above.

6        The oppositions were based on the following earlier national figurative mark:

7        That mark was registered on 31 August 1995 in Romania and was duly renewed under number 34847, in particular for the goods and services in Classes 33 and 35 corresponding, for each of those classes, to the following description: ‘Alcoholic beverages (except beers)’ and ‘Advertising; business management; business administration; office functions’.

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

9        At the time when the notices of opposition were filed, the applicant presented evidence to demonstrate genuine use of the earlier national mark in Romania, that is to say, six invoices from the period from 2 February to 24 April 2009, a photograph and a copy of a promotional text.

10      The applicant did not submit any additional evidence following a request for proof of genuine use made by the intervener within the time-limit laid down in Article 42(2) and (3) of Regulation No 207/2009.

11      By three decisions of 31 January 2011, the Opposition Division rejected the oppositions in their entirety.

12      On 25 March 2011, the applicant filed three appeals with OHIM under Articles 58 to 64 of Regulation No 207/2009 against those decisions.

13      By three decisions of 6 September 2012 (‘the contested decisions’), the Fourth Board of Appeal of OHIM dismissed the actions, holding that the documents filed by the applicant did not demonstrate genuine use of the earlier mark within the meaning of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended. It found that it was incumbent on the applicant to adduce, to the requisite legal standard, proof of the place, time, nature and extent of use. According to the Board of Appeal, the six invoices presented, the only documents which are dated, covering a period of only two and a half months and each indicating a sale of 432 units of the products in question bearing the name of the earlier mark, did not demonstrate genuine use during the reference period and did not reflect the sale and distribution of the products on the market to the end consumer. In that regard, the Board of Appeal found that no information had been supplied as to the identity of the companies mentioned in the invoices, or on the link established between them and the applicant. Furthermore, it found that the photograph of a bottle and the promotional text showed a use of the earlier mark in a form which significantly altered the distinctive character of the sign and that the verbal element ‘dracula’ set out on the invoices and on the promotional text did not make it possible to determine whether it referred to the sign as used or as registered. Finally, the Board of Appeal found that the applicant had not submitted sufficient information on the frequency, regularity, territorial scope and volume of the sales.

 Forms of order sought

14      The applicant claims that the Court should:

–        annul the contested decisions;

–        order OHIM to pay the costs.

15      OHIM and the intervener contend that the Court should:

–        dismiss the applications;

–        order the applicant to pay the costs.

 Law

16      After hearing the views of the parties in that regard at the hearing, it is appropriate that these cases be joined for the purposes of judgment, in accordance with Article 50 of the Rules of Procedure of the Court.

17      In each of these cases, the applicant relies on a single ground, alleging an infringement of Article 42(2) and (3) of Regulation No 207/2009, in that the Board of Appeal wrongly found that the evidence on the file was insufficient to demonstrate genuine use of the earlier mark.

18      First, it claims in essence that the Board of Appeal did not follow the relevant case-law: it did not take account of the evidence as a whole, applied overly strict criteria, and did not carry out an overall assessment. Thus, the information contained in the six invoices adduced in evidence was sufficient to demonstrate genuine use, that evidence being submitted by way of example and illustrating more extensive use; furthermore, it was not incumbent on the applicant to clarify the substance of its relationship with the companies whose names appeared on those invoices.

19      Next, the applicant claims that it has demonstrated that the form in which the earlier mark had been used had not altered its distinctive character, since the photograph and the promotional text which it produced demonstrated the use of the word ‘dracula’ as a word mark and as a figurative mark, the sign having merely been modernised.

20      OHIM and the intervener contest those arguments.

21      It is apparent from recital 10 in the preamble to Regulation No 207/2009 that the legislature considered that there is no justification for protecting an earlier trade mark, except where it is actually used. In keeping with that recital, Article 42(2) and (3) of that regulation 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 trade mark application against which notice of opposition has been given.

22      Under Rule 22(3) of No 2868/95, evidence of use must concern the place, time, extent and nature of use of the earlier trade mark.

23      According to settled case law, it is clear from the above provisions, also taking into account recital 10 in the preamble to Regulation No 207/2009, 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 the case-law cited, 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 and the case-law cited).

24      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). 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).

25      In the assessment of 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 in order 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 (see VITAFRUIT, paragraph 40, and judgment of 13 June 2012 in Case T‑312/11 Süd-Chemie v OHIM — Byk-Cera (CERATIX), not published in the ECR, paragraph 20).

26      As to the extent of the use of the earlier trade mark, 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).

27      In order to examine whether use of an earlier trade mark is genuine, an overall assessment must be carried out which takes account of all the relevant factors in the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be offset by a high intensity or a certain constancy over time in the use of that trade mark or vice versa. In addition, the turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (HIPOVITON, paragraph 36, and judgment of 18 January 2011 in Case T‑382/08 Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), not published in the ECR, paragraph 30; see also, by analogy, Ansul, paragraph 39).

28      However, the more limited the volume of sales of items bearing the mark, the more necessary will it be for the party opposing new registration to produce additional evidence to dispel possible doubts as to the genuineness of the use of the mark in question (HIPOVITON, paragraph 37, and VOGUE, paragraph 31).

29      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).

30      Lastly, it must be noted that, under point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 in conjunction with Article 42(2) and (3) of that regulation, proof of genuine use of an earlier national or Community trade mark which forms the basis of an opposition against a Community trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered (see Case T‑29/04 Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 30 and the case-law cited).

31      The question whether the Board of Appeal was right to find that the applicant had not proved to the requisite legal standard genuine use of the earlier mark should therefore be examined in the light of those considerations.

32      Since the Community trade mark applications filed by the intervener were published on 23 November 2009, the five year period referred to in Article 42(2) and (3) of Regulation No 207/2009, as the Board of Appeal rightly stated in paragraph 20 of each of the contested decisions, runs from 23 November 2004 to 22 November 2009 (‘the relevant period’); this is not contested by the applicant.

33      It is clear from the analysis of the documents in each of the three OHIM files forwarded to the Court that, with a view to establishing genuine use of the earlier mark, the applicant submitted the following evidence:

–        copies of six invoices, written in Romanian, issued by a company, Scandic Distilleries SA, and addressed to the same wholesaler established in Romania, SC TGIE, for the period from 2 February to 24 April 2009, each relating, inter alia, to 432 products for which no description is provided but which are associated with the wording ‘V. DRACULA’;

–        a copy of the photograph of part of the bottle on which the following sign was visible:

–        a copy of a promotional text written in Romanian and in English, with no mention as to its medium, relating to ‘vodka DRACULA’ and bearing the verbal element ‘dracula’ in characters identical to those used in the above representation.

34      In that regard, it must first be noted, as the Board of Appeal did in paragraph 22 of each of the contested decisions, that only the six invoices are dated. Those invoices, the issue dates of which are very close together, show that the marketing period for the products referred to in those invoices was particularly short, less than three months. Furthermore, apart from the first one, dated 2 February 2009, the six invoices come within the period from the date the Community mark applications were lodged, 9 February 2009, to the date they were published, 23 November 2009. In those circumstances, although those invoices may be taken into account, the duration and the frequency of the use adduced does not support the conclusion that the products bearing the name of the earlier mark were marketed continuously over the relevant period (see, by analogy, VITAFRUIT, paragraph 48, and judgment of 16 September 2013 Case T‑200/10 Avery Dennison v OHIM — Dennison-Hesperia (AVERY DENNISON), not published in the ECR, paragraph 50). Therefore the Board of Appeal rightly found in paragraph 24 of each of the contested decisions that the period of use that had been established barely represented genuine use.

35      Concerning the applicant’s claim that the Board of Appeal misconstrued the criterion of duration of use, it must be stated that this is based on a misreading of the contested decisions. Indeed, the Board of Appeal explicitly mentioned in paragraph 24 of each of the contested decisions that it was not a matter of examining whether the earlier mark had been put to continuous use over the course of the relevant period, but one of ensuring that the mark had been put to genuine use during that period, and more particularly of assessing whether the scale and frequency of the use of that mark was such as to demonstrate its presence on the market in an actual and consistent manner over time, with the sign’s configuration remaining stable, which was not the case here.

36      Next, it must be stated that the six invoices all show successive sales between the same companies, Scandic Distilleries and SC TGIE, about which it was stated in paragraph 28 of each decision of the Board of Appeal that no information had been provided as to their respective identities, and that no mention had been made of their mutual relationship, nor of any relationship between Scandic Distilleries — which, according to the promotional material mentioned in paragraph 33 above, appears as the producer of the vodka in question — and the applicant. In the absence of any information in that regard, the Board of Appeal rightly found in paragraph 30 of each decision that the nature of the relationship between Scandic Distilleries and the applicant had not been clarified.

37      Moreover, it must also be stated first that, contrary to what the applicant claims, nothing in the file supported the conclusion that Scandic Distilleries’ use of the earlier mark should be regarded as having been made with the consent, tacit or otherwise, of the applicant, and therefore as use by the applicant in accordance with Article 15(2) of Regulation No 207/2009. Secondly, the applicant has not even established that the earlier mark had been used publicly and outwardly (see, to that effect, VITAFRUIT, paragraph 50).

38      Finally, it must be observed that only the six invoices contain information on the extent of the use of the earlier mark, that is to say, an overall sales volume of 2 592 units of the products concerned bearing the name of the earlier mark and, taking into account the reported duration of use, a sales frequency of 900 units per month.

39      However, having regard to the relevant market, that use is small in terms of quantity. First, considering the geographical and substantive scope of the market in question, it must be observed, as the Board of Appeal found in paragraph 24 of each of the contested decisions, that those sales figures are not sufficient to establish effectively the presence of the earlier mark on the Romanian market given the nature of the products concerned. Secondly, the sales volume is marginal bearing in mind the average monthly consumption of vodka on the Romanian market, estimated by the intervener on the basis of statistical data provided in its pleadings and at the hearing and which were not contested by the applicant.

40      Concerning the applicant’s argument that the marketing of a total quantity of 2 592 bottles of vodka over a period of less than three months was not low having regard to the characteristics of the product concerned and the case-law, it must be stated that this argument cannot succeed. Whilst it is true that in the case which gave rise to the judgment in VITAFRUIT the Court found that the delivery of 3 516 bottles of concentrated fruit juice was enough to prove genuine use of the earlier mark in question, that assessment of the criterion of extent of use was carried out by looking at the established low commercial volume in the light of the duration, over 11 months, and the frequency, relatively continuous, of the marketing of the products involved. In that regard, the Court observed, inter alia, that the duration of the use was neither particularly short nor particularly close to the publication of the application for the contested mark, which is not the case here, bearing in mind the considerations set out in paragraph 34 above.

41      Moreover, contrary to what the applicant claims, the use demonstrated in this case cannot serve as an example, again taking into account the considerations relating to duration of use set out in paragraph 34 (see, to that effect, judgment of the General Court of 27 September 2007, Case T‑418/03 La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), not published in the ECR, paragraph 87). Moreover, if, as the applicant claims, the six invoices were to be regarded as samples, it would nevertheless be the case that their quantity, the fact that they were issued on dates that were close together and the fact that they relate to a period that is particularly short and particularly close to the publication of the applicant’s Community mark applications could not entirely exclude the possibility of a purely token use of the earlier mark.

42      Therefore the applicant should have demonstrated that the sales – although they are very limited in time, despite the fact that the applicant had registered its mark in 1995, and they concern quantities which are not large – constitute use which was objectively such as to create or preserve an outlet for the goods concerned and entailed a volume of sales which, in relation to the period and frequency of use, was not so low that it could be concluded that the use was merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (see, to that effect, LA MER, paragraph 90); the applicant did not do so in the present case. In addition, as OHIM rightly states, the additional evidence which could have supported the information contained in the six invoices on the extent of the use of the earlier mark, such as those listed on an indicative basis in Rule 22(3) of Regulation No 2868/95, would not have been difficult for the opponent to obtain and there is nothing in the documents before the Court to show that the applicant claimed it was impossible to supply other evidence, in particular concerning the extent of the use of the earlier mark (see VOGUE, paragraph 51 and the case-law cited).

43      Admittedly, the applicant did produce other documents, such as the copies of a photograph of part of a bottle and a promotional text (see paragraph 33 above), which could provide an indication of the nature of the use of the earlier mark concerning alcoholic beverages, except beers, and of the form in which it was used. However, that evidence does not substantiate the place, time or still less extent of the use (see, to that effect, Case T‑39/01 Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT) [2002] ECR II‑5233, paragraph 41, and VITAKRAFT, paragraph 34).

44      It follows that the Board of Appeal was correct to find, in paragraphs 34 of the contested decisions, that the applicant had not sufficiently demonstrated the extent of the use of the earlier mark.

45      In accordance with the case-law mentioned in paragraphs 24 to 29 above, the evidence submitted by the applicant must be assessed overall. In that regard, the Court finds that that evidence, considered as a whole, does not provide sufficient indications of the place, time, extent and nature of use of the earlier mark.

46      Thus, it must be concluded that the documents which the applicant submitted to OHIM are not sufficient to demonstrate the genuine nature of the use of the earlier mark. Accordingly, the Board of Appeal was correct to find in each of the contested decisions, following an overall assessment of the evidence, that genuine use of the earlier mark during the relevant period in Romania had not been established.

47      In the light of all the foregoing considerations, the single plea in law must be dismissed, together with the action as a whole, and it is not necessary to rule on the question whether the differences in the form in which the earlier mark was used and the form in which it was registered altered the distinctive character of that mark as it was registered.

 Costs

48      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

49      Since the applicant has been unsuccessful in Cases T‑495/12, T‑496/12 and T‑497/12, it must be ordered to bear all the costs in each of those three cases, in accordance with the form of order sought by OHIM and the intervener.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Joins Cases T‑495/12, T‑496/12 and T‑497/12 for the purposes of the judgment;

2.      Dismisses the actions;

3.      Orders European Drinks SA to pay the costs.

Berardis

Czúcz

Popescu

Delivered in open court in Luxembourg on 5 June 2014.

[Signatures]