JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

9 July 2010 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark GRAIN MILLERS – Earlier national business name Grain Millers and its figurative representation – Partial refusal to register – Relative ground for refusal – Likelihood of confusion – Article 8(4) of Regulation (EC) No 40/94 (now Article 8(4) of Regulation (EC) No 207/2009))

In Case T‑430/08,

Grain Millers, Inc., established in Eden Prairie, Minnesota (United States), represented by L.‑E. Ström, lawyer,

applicant,

v

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

defendant,

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

Grain Millers GmbH & Co. KG, established in Bremen (Germany), represented by R. Böckenholt, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 23 July 2008 (Case R 478/2007‑2), concerning opposition proceedings between Grain Millers GmbH & Co. KG and Grain Millers, Inc.,

THE GENERAL COURT (Seventh Chamber),

composed of N.J. Forwood, President, E. Moavero Milanesi and J. Schwarcz (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 30 September 2008,

having regard to the response of OHIM lodged at the Registry of the Court on 19 February 2009,

having regard to the response of the intervener lodged at the Registry of the Court on 16 January 2009,

having regard to the letter from the applicant, lodged at the Registry of the Court on 19 May 2009, indicating that, following the withdrawal of its Community trade mark application No 3638657, it was withdrawing its action in the present case,

having regard to the observations of OHIM lodged at the Registry of the Court on 3 June 2009,

having regard to the observations of the intervener lodged at the Registry of the Court on 4 June 2009, indicating, in particular, that it understood the applicant’s letter of 19 May 2009 as expressing the applicant’s wish to withdraw its action in Case T‑429/08, since it was that case and not the present one which concerned the opposition proceedings with regard to Community trade mark application No 3638657,

having regard to the letter from the applicant lodged at the Registry of the Court on 30 June 2009 indicating that it was withdrawing its withdrawal of the action in the present case,

having regard to the request for information of 26 October 2009 sent by the Court to the applicant requesting clarification of its letter of 19 May 2009,

having regard to the observations of the intervener on the request for information, lodged at the Registry of the Court on 29 October 2009,

having regard to the applicant’s response to the request for information, lodged at the Registry of the Court on 4 November 2009, clarifying that it did not wish to withdraw the present action, but in fact that in Case T‑429/08,

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 General Court,

gives the following

Judgment

1        On 5 February 2004, the applicant, Grain Millers, Inc., filed a Community trade mark application at 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 mark in respect of which registration was sought is the word sign GRAIN MILLERS.

3        The goods in respect of which registration was sought are in Classes 29, 30 and 31 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:

–        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’;

–        Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’;

–        Class 31: ‘Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 52/2004 of 27 December 2004.

5        On 18 March 2005, the intervener, Grain Millers GmbH & Co. KG, filed, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), a notice of opposition to registration of the trade mark applied for in respect of the goods listed in paragraph 3 above.

6        The opposition was based on the business name Grain Millers, and on its figurative representation on the intervener’s letter heads, reproduced below:

7        The product on which the opposition was based was flour, in particular wheat flour and rye flour.

8        The ground relied on in support of the opposition was that in Article 8(4) of Regulation No 40/94 (now Article 8(4) of Regulation No 207/2009).

9        On 29 January 2007, the Opposition Division partly upheld the opposition by rejecting the Community trade mark application for flour and preparations made from cereals, bread, pastry and confectionery, in Class 30, and for agricultural, horticultural and forestry products and grains not included in other classes, in Class 31.

10      On 29 March 2007, the applicant brought an appeal before OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Opposition Division.

11      By decision of 23 July 2008 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the decision of the Opposition Division inasmuch as it had rejected the Community trade mark application for preparations made from cereals, bread, pastry and confectionery in Class 30 and for forestry products in Class 31. It dismissed the remainder of the appeal, upholding the decision of the Opposition Division inasmuch as it had allowed the opposition brought against the Community trade mark application for flour in Class 30 and agricultural and horticultural products and grains not included in other classes, in Class 31.

12      In arriving at that conclusion, the Board of Appeal, first, found that Paragraph 5(2) and Paragraph 15(2) of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz, German Law on the protection of trade marks and other signs) of 25 October 1994 (BGBl. 1994 I, p. 3082, and BGBl. 1995 I, p. 156) protected ‘business designations’ and that it was consequently necessary to consider such rights as within the scope of Article 8(4) of Regulation No 40/94.

13      After assessing the evidence submitted to it, including, in particular, a press release from the intervener, an article in the German newspaper Thüringer Allgemeine Zeitung, exchanges of letters between the intervener and its business partners and an invoice, the Board of Appeal found that the intervener had demonstrated, first, that its non-registered sign had been, despite the short period of its use prior to the date of filing of the applicant’s Community trade mark application, the subject of genuine and sufficient use in the course of trade for wheat flour and rye flour and, second, that the use was of more than mere local significance. The fact that the intervener used the abbreviation ‘GmbH & Co. KG’ prior to the registration of its company had no effect on the probative value of the documents which were submitted. According to the Board of Appeal, German company law does not prohibit an entity from using its future designation even prior to the date of its registration.

14      Next, since Paragraph 15(2) of the Markengesetz prohibits the use of a business designation or a similar sign such as a Community trade mark which would be capable of leading to a likelihood of confusion with the protected designation, the Board of Appeal examined the likelihood of confusion between the earlier business name and the Community trade mark applied for. In that regard, it held that they were essentially identical, since consumers would disregard the abbreviation ‘GmbH & Co. KG’, which only indicates the intervener’s legal form.

15      Lastly, certain of the applicant’s goods are identical or similar to the intervener’s goods, namely flour in Class 30 and agricultural and horticultural products together with grains in Class 31. That is however not the case for the applicant’s goods in sectors other than cereals.

 Forms of order sought

16      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

17      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

18      In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(4) of Regulation No 40/94.

19      In connection with that plea, the applicant puts forward, first, arguments concerning ‘the requisite standard of proof’ and the circumstances that must be established to demonstrate the use of a non-registered trade mark or another sign in the course of trade for the purposes of Article 8(4) of Regulation No 40/94 and, second, arguments calling into question the Board of Appeal’s assessment of certain pieces of evidence submitted by the intervener.

 The ‘requisite standard of proof’ and the circumstances which must be established to demonstrate the use of a non-registered trade mark or another sign in the course of trade for the purposes of Article 8(4) of Regulation No 40/94

 Arguments of the parties

20      The applicant claims that the ‘requisite standard of proof’ to demonstrate use in the course of trade for the purposes of Article 8(4) of Regulation No 40/94 is identical to that required in accordance with Article 43(2) of that regulation (now Article 42(2) of Regulation No 207/2009). It was therefore necessary for the intervener to prove ‘genuine use’ of its non-registered sign in the course of trade in Germany. The applicant claims that the intervener has not satisfied that requirement. In that regard, the fact that the intervener’s seat is in Germany cannot, in itself, constitute proof of ‘genuine use’ of the sign in that Member State.

21      OHIM shares the applicant’s view that the ‘requisite standard of proof’ in connection with the application of Article 8(4) of Regulation No 40/94 is the same as that required in Article 43(2) of that regulation. None the less, it observes that the Board of Appeal stated in the contested decision that the use of the earlier business name had constituted ‘genuine use’.

 Findings of the Court

22      Under Article 8(4) of Regulation No 40/94, the existence of an earlier non-registered trade mark or a sign other than a trade mark gives good grounds for opposition if the sign satisfies the following conditions: it must be used in the course of trade; it must be of more than mere local significance; its proprietor must have acquired the right to prohibit the use of a subsequent trade mark; and rights to the sign in question must have been acquired, 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 opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) of Regulation No 40/94 cannot succeed (Case T‑435/05 Danjaq v OHIM – Mission Productions (Dr. No) [2009] ECR II‑2097, paragraph 35).

23      In addition, it is clear from the wording of Article 43(2) and (3) of Regulation No 40/94 (Article 43(3) now being Article 42(3) of Regulation No 207/2009) that, where it is required, proof of genuine use during a certain period constitutes a condition precedent to the examination of whether opposition based either on a Community trade mark, or on an earlier national mark for the purposes of Article 8(2) of Regulation No 40/94, is well founded (Case T‑86/05 K & L Ruppert Stiftung v OHIM – Lopes de Almeida Cunha and Others (CORPO livre) [2007] ECR II‑4923, paragraph 49). That requirement is linked to the fact that, according to Article 50(1)(a) of that regulation (now Article 51 of Regulation No 207/2009) and Article 12(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), the absence of genuine use of a Community or national trade mark within a continuous period of five years, where genuine use has not been started or resumed, may result in the revocation of its proprietor’s rights, with the result that such a trade mark can no longer serve as the basis for opposition to registration of a sign as a Community trade mark.

24      With regard to the application of those Community provisions, it should be stated at the outset that the notion of ‘requisite standard of proof’ relates to the amount and the quality of the evidence which must be submitted to the court or administrative authority to enable them to find that a factual situation has been proved to the requisite legal standard. Thus, contrary to the applicant’s assertions, the issue of ‘requisite standard of proof’ is distinct from that of which factual elements must be proved in order for a legal consequence to be derived from them.

25      Consequently, assuming that the ‘requisite standard of proof’ for use in the course of trade within the meaning of Article 8(4) of Regulation No 40/94 is the same as that for genuine use within the meaning of Article 43(2) of that regulation, that does not necessarily imply that the ‘use in the course of trade’ in connection with the first of those provisions has the same meaning as ‘genuine use’ in connection with the second.

26      None the less, in so far as the applicant claims that the intervener should have proved ‘genuine use’ of its earlier sign before the Board of Appeal, it should be pointed out that the aims and conditions connected with proof of genuine use of the Community or national trade mark are different from those relating to proof of use, in the course of trade, of the sign referred to in Article 8(4) of Regulation No 40/94.

27      First, unlike Article 43(2) of Regulation No 40/94, Article 8(4) of that regulation does not require proof of ‘genuine use’ of the sign relied on in support of the opposition.

28      Next, it should be noted that a sign is used in the course of trade where that use occurs in the context of commercial activity with a view to economic advantage and not as a private matter (see, to that effect and by analogy, Case C‑206/01 Arsenal Football Club [2002] ECR I‑10273, paragraph 40, and Case C‑48/05 Adam Opel [2007] ECR I‑1017, paragraph 18).

29      Although Article 43(2) and (3) of Regulation No 40/94 may be applied in opposition proceedings under Article 8(1)(b) of that regulation, in opposition proceedings under Article 8(4) of Regulation No 40/94, the opposing party must show that the sign on which he relies gives him the right, according to the legislation of the Member State concerned, to prohibit the use of a subsequent trade mark. Moreover, unlike the provisions of European Union law in respect of a Community trade mark, European Union law did not provide for any consequences in the event of absence of use without due cause of a business name during a certain period, that question thus being governed by the national law applicable.

30      Lastly, although Article 43(2) and (3) of Regulation No 40/94 provides that genuine use of the earlier mark must be proved in the territory of the Member Sate of which the law is invoked, it is not apparent from the wording of Article 8(4) of the regulation that the sign at issue must also be put to use in the Member State of which the law is invoked. The signs covered by that provision may be the subject of protection in a specific territory, even though they were not put to use in that territory but only in another territory.

31      Against that background, it is necessary to reject the applicant’s arguments concerning the notion of use in the course of trade and the extent of that use for the purposes of Article 8(4) of Regulation No 40/94.

 The assessment of the Board of Appeal of the evidence submitted by the intervener

 Arguments of the parties

32      First, the applicant claims that the intervener was not entitled, in support of its opposition, to rely on its business name followed by the abbreviation ‘GmbH & Co. KG’, because the company was registered only on 19 February 2004. Use of the abbreviation ‘GmbH & Co. KG’ prior to that date was thus unlawful under Paragraph 11 of the Gesetz betreffend die Gesellschaften mit beschränkter Haftung (GmbHG) (German Law on limited liability companies, RGBl 1892, p. 477, as amended, ‘the GmbHG’) and the German Civil Code, and misleading to creditors. According to the applicant, no party should benefit from his own wrongdoing. The Board of Appeal was not therefore entitled to take into account the evidence of alleged ‘genuine use’ in the course of trade of the intervener’s business designation featuring the abbreviation ‘GmbH & Co. KG’. That evidence consisted of documents submitted by the intervener in an annex to its statement filed before the Board of Appeal.

33      Next, with regard to the exchange of letters between the intervener and one of its business partners concerning a contract for the import of wheat from Romania, also submitted in an annex to the intervener’s statement before the Board of Appeal, the applicant considers that the fact of importing wheat from that country does not constitute ‘genuine use’ of the intervener’s alleged earlier right in Germany nor does it make possible an assessment of whether that use is of merely local significance.

34      Lastly, the applicant challenges, in essence, the probative value – in connection with the assessment of the use of the business name in the course of trade and of the significance of that use, which is claimed not to be merely local – of the information in a press release, inasmuch as the intervener is itself the author of that document. The same is true of the newspaper articles, since they are based on the press release.

35      OHIM and the intervener challenge the applicant’s arguments.

 Findings of the Court

36      With regard to the documents mentioning the abbreviation ‘GmbH & Co. KG’, suffice it to state, as OHIM contends, that the applicant has not indicated how the use of that abbreviation, even if it were accepted that it is in fact unlawful under German law, would have prevented the intervener from using the business name Grain Millers or altered the assessment effected pursuant to Article 8(4) of Regulation No 40/94, since, according to the case-law of the German courts, the right to a business name exists pursuant to Paragraph 5(2) of the Markengesetz from the first use in the course of trade, without the obligation to register (see, to that effect, judgments of the Bundesgerichtshof (Federal High Court of Justice) of 9 June 1953 in ‘DUN’ GRUR 1954, 271; 29 October 1992 in ‘Colombus’ GRUR 1993, 404; and 5 June 1997 in ‘L’orange’ GRUR 1997, 749).

37      In any event, first, Paragraph 11 of the GmbHG is confined to laying down that a limited liability company does not exist as such prior to its entry in the commercial register and that its members are personally and jointly and severally liable for documents drawn up in the name of that company prior to its registration. However, contrary to the applicant’s assertions, it is not apparent from that provision that it prohibits members of a non-registered limited liability company from drawing up documents in the name of that company or that it renders such documents unlawful.

38      Second, as to the alleged infringement of the German Civil Code, the application must state, pursuant to Article 44(1)(c) and (d) of the Rules of Procedure of the General Court, inter alia the subject-matter of the proceedings, the form of order sought and a summary of the pleas in law on which the application is based. Those matters must be sufficiently clear and precise to enable the defendant to prepare its defence and for the Court to rule on the action, if necessary without having to request further information. In order to ensure legal certainty and the sound administration of justice, it is necessary, for an action to be admissible, that the essential matters of fact and law on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (Case C‑214/05 P Rossi v OHIM [2006] ECR I‑7057, paragraph 37, and Case T‑352/94 Mo och Domsjö v Commission [1998] ECR II‑1989, paragraphs 333 and 426). Similar requirements apply where a claim or an argument is relied on in support of a plea in law. The applicant’s argument – which specifies neither the provision of the German Civil Code which the intervener infringed by its use of the abbreviation ‘GmbH & Co. KG’ prior to its registration, nor the consequences which German law would attach to such an infringement – does not satisfy those minimum requirements, since it does not enable OHIM and the intervener to prepare usefully their observations in that regard. In addition, like OHIM, the Court is also unable to identify, on the basis of the argument put forward by the applicant, which provision of the German Civil Code the intervener would have infringed and the consequences of that infringement under the Code. Consequently, that argument is not admissible.

39      The Board of Appeal was thus entitled to take into consideration the documents submitted by the intervener on which the business name at issue appears, followed by the abbreviation ‘GmbH & Co. KG’, with the result that the applicant’s argument in that respect must be rejected.

40      With regard to the probative force of the supporting documents of the transaction concluded by the intervener concerning the import of wheat from Romania to Germany, first, it should be borne in mind that it has already been held in paragraph 28 above that the condition relating to use of the sign relied on in order for Article 8(4) of Regulation No 40/94 to apply means that it is necessary to verify whether that use occurred in the context of a commercial activity with a view to economic advantage and not as a private matter. In that regard, clearly the use of the business name upon the importation of goods from another State is indeed use in the context of a commercial activity with a view to economic advantage. Such use is thus more than just a private matter.

41      Moreover, as is apparent from paragraph 30 above, Article 8(4) of Regulation No 40/94 does not require that the use in the course of trade of the sign upon which the opposition is based must be proved in the territory of the Member State of which the law is invoked. Consequently, as OHIM and the intervener contend, use of the sign in connection with a cross-border commercial transaction, such as that relied on in this case, fulfils the requirements laid down by that provision. In any event, since import-export constitutes a normal, everyday activity of an undertaking, necessarily involving at least two States, it cannot be validly maintained that the use of the intervener’s business name when importing wheat into Germany could not be taken into account to assess whether the business name had indeed been used in the territory of that Member State in the context of a commercial activity with a view to economic advantage and in more than just a private matter.

42      Consequently, the documents referred to in paragraph 33 above could indeed be used to assess the requirement of use of the contested sign in the course of trade.

43      Second, without it being necessary to rule on whether the terms employed in Article 8(4) of Regulation No 40/94 cover the use of the sign or the extent of its protection, it must be held, first, that the documents at issue attest that the significance of the use of the sign at issue is not merely local, since they concern a commercial transaction between Germany and Romania, and, second, that the protection afforded to the sign by the Markengesetz extends throughout German territory.

44      Consequently, the documents at issue were relevant for the purpose of assessing the condition relating to the use of the sign of which the significance is not merely local, with the result that the applicant’s argument in that respect must be rejected.

45      As to the probative value of the intervener’s press release and the newspaper article, the condition relating to use of the sign in the course of trade means that it is necessary to verify that the use occurred in the context of a commercial activity with a view to economic advantage and not as a private matter (see paragraph 28 above). Since the main purpose of a press release issued by an undertaking is to transmit information on that undertaking to its customers and/or potential customers, it constitutes a means of advertising. The fact that the earlier sign at issue appears on advertising material, such as the press release concerned, clearly constitutes, contrary to OHIM’s contentions, use of the sign in the context of a commercial activity with a view to economic advantage and not as a private matter.

46      The documents referred to in paragraph 34 above could thus indeed be used to assess the requirement of use of the sign at issue in the course of trade.

47      As to the condition relating to the use of the sign of which the significance is not merely local, it must be stated, first, that, taken together, those documents confirm that the significance of the use of the sign at issue is not merely local, since a press release is intended, as advertising material, for the greatest possible number of persons. The newspaper article constitutes, in that regard, one of the echoes of that advertising. Second, as already stated in paragraph 43 above, the earlier right relied on for the purposes of the opposition has a significance which is not merely local, since the protection afforded to it by the Markengesetz extends throughout German territory.

48      The Board of Appeal was thus entitled to rely on the press release and the newspaper article in question to assess the condition relating to the use of the sign of which the significance is not merely local, with the result that the applicant’s argument in that respect must be rejected.

49      All the arguments upon which the applicant relies in support of its single plea in law having been rejected, it is necessary to dismiss the action as a whole.

 Costs

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

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Grain Millers, Inc. to pay the costs.

Forwood

Moavero Milanesi

Schwarcz

Delivered in open court in Luxembourg on 9 July 2010.

[Signatures]