JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

16 July 2014 (*)

(Community trade mark — Invalidity proceedings — Application for the Community figurative mark ‘la nana’ — Earlier national word mark NANA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — No genuine use of the earlier mark — Article 57(2) and (3) of Regulation No 207/2009)

In Case T‑196/13,

Nanu-Nana Joachim Hoepp GmbH & Co. KG, established in Bremen (Germany), represented by T. Boddien, lawyer,

applicant,

v

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

defendant,

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

Lina M. Stal-Florez Botero, established in Maarssen (Netherlands),

ACTION brought against the decision of the First Board of Appeal of OHIM of 29 January 2013 (Case R 300/2012-1) relating to invalidity proceedings between Nanu-Nana Joachim Hoepp GmbH & Co. KG and Lina M. Stal-Florez Botero,

THE GENERAL COURT (Fifth Chamber),

composed of A. Dittrich, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 5 April 2013,

having regard to the response lodged at the Court Registry on 17 July 2013,

further to the hearing on 2 April 2014,

gives the following

Judgment

 Background to the dispute

1        On 18 July 2006, the other party to the proceedings before the Board of Appeal, Lina M. Stal-Florez Botero, filed an application for registration of a Community trade mark 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        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought are in Classes 16, 20 and 24 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 16: ‘Paper, cardboard and goods made from these materials, not included in other classes’;

–        Class 20: ‘Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’;

–        Class 24: ‘Textiles and textile goods, not included in other classes; bed and table covers’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 8/2007 of 26 February 2007 and the mark was registered on 26 May 2010.

5        On 14 December 2010, the applicant, Nanu-Nana Joachim Hoepp GmbH & Co. KG, filed an application for a declaration of invalidity directed against the mark at issue in its entirety, on the basis of Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 53(1)(a) of that regulation.

6        The application for a declaration of invalidity was based on the earlier German word mark NANA, which was filed on 28 January 1998, registered on 5 June 1998 under the number 39804075 and covers goods in Classes 4, 6, 8, 11, 14, 16, 18, 20, 21, 24, 26, 28, 30 and 34. The application for a declaration of invalidity referred to the following goods:

–        Class 16: ‘Paper and goods made of paper, cardboard and goods made of cardboard (as far as contained in class 16); stationery, post cards, hinged cards, papier-mâché, posters, calendars, pamphlets, newspapers; artists’ materials, namely paint boxes, paint brushes, crayons; pictures; playing cards’;

–        Class 20: ‘Goods (as far as included in class 20) of cork, reed, cane, wicker, other plant braiding, horn, bone, ivory, shell, amber, mother-of-pearl, meerschaum, reed, namely furniture made of reed, goods made of wicker, namely paper baskets, linen bins, bread baskets, shelves, furniture, animal transport baskets, dolls’ furniture, baskets for decoration, decorative articles, small furniture and shelves made of wood, wooden flowers, wooden boxes, mirrors, pictures frames, newspaper racks’;

–        Class 24: ‘Bed and table covers, textile goods, namely textile material sold by the metre, pillows’.

7        On 30 March 2011, the proprietor of the Community trade mark requested that the applicant prove the use of the earlier mark.

8        On 13 December 2011, the Cancellation Division rejected the application for a declaration of invalidity in its entirety on the ground that genuine use of the earlier mark, for the purposes of Article 57(2) and (3) of Regulation No 207/2009, had not been proved.

9        On 9 February 2012, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

10      By decision of 29 January 2013 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. In particular, it considered the appeal to be unfounded, inasmuch as the proof of use of the earlier mark which had been submitted, namely affidavits and photos, was insufficient to prove genuine use of the earlier mark with respect to the specific categories of goods covered by that mark. It took the view that the affidavits and photos submitted by the applicant could not prove the time and extent of use of the mark in respect of the goods depicted. Furthermore, it found that the affidavits did not constitute conclusive evidence as they did not allow the Board of Appeal to draw, with certainty, any conclusions as to the duration and extent of use of the earlier mark in relation to the specific categories of goods within the classes concerned.

11      Furthermore, it pointed out that, as regards the nature of use, although the photos submitted showed that the term ‘NANA’ featured on product labels and stickers attached to the products, it was not certain that that could constitute an affixing of the sign to the goods for the purpose of proving use ‘in relation to goods’ within the meaning of the case-law. More specifically, the Board of Appeal found that it was not totally certain that the relevant public confronted with the product labels and stickers in a Nanu-Nana shop would actually perceive them as a trade mark designating a specific product, rather than as a company or shop name.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

13      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

14      The applicant puts forward a single plea in law, alleging infringement of Article 57(2) and (3) of Regulation No 207/2009.

15      In that regard, it must be stated first of all that the applicant confirmed, at the hearing, that, contrary to what might be suggested by its written pleadings, its action was not based on pleas alleging infringement of Article 53(1)(a), Article 8(1)(b) or Article 78(1)(f) of Regulation No 207/2009.

16      The applicant submits, first, with regard to the evidence relating to the time, place, nature and extent of use of the earlier mark, that the affidavits constitute sufficient evidence for the purposes of Article 78(1)(f) of Regulation No 207/2009. In taking the view that the turnover figures listed in the affidavits did not allow conclusions to be drawn as to the time and extent of use of the earlier mark in relation to the goods at issue, the Board of Appeal made ‘too high demands’ as regards the requirements in respect of the proof of such use. In any event, the photos which it provided support the affidavits with regard to the nature of use of the earlier mark. Moreover, the applicant was not able to provide other evidence such as invoices, which did not exist due to its distribution system. In such circumstances, requiring the proprietor of a mark to submit documents that it is not obliged to use would be tantamount to laying down rules on the use of trade marks that go beyond the provisions of Regulation No 207/2009, and would also be contrary to the case-law deriving from the judgment of 16 December 2008 in Case T‑86/07 Deichmann-Schuhe v OHIM — Design for Woman (DEITECH), not published in the ECR, paragraphs 61 and 62.

17      The applicant submits, secondly, as regards the use of the mark ‘in relation to goods’, that the Board of Appeal erred in finding that the average consumer will perceive the earlier mark as a company name or a shop name, because, first, the mark is not identical to the applicant’s company or shop name, namely ‘Nanu-Nana’, but only to the second part of that name. Secondly, the earlier mark is always affixed to the goods, which would be sufficient to prove use ‘in relation to goods’, in accordance with the case-law. Thirdly, and lastly, the mark is generally followed by the symbol ‘®’, which further emphasises the fact that the sign NANA is a registered trade mark.

18      As is apparent from recital 10 in the preamble to Regulation No 207/2009, the legislature considered that there was no justification for protecting an earlier trade mark except where that mark had actually been used. In keeping with that recital, Article 57(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 period of five years preceding the date of the application for a declaration of invalidity and the period of five years preceding the date of publication of the Community trade mark application.

19      Under Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), evidence of use must concern the place, time, extent and nature of use of the earlier trade mark (Case T‑203/02 Sunrider v OHIM — Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraph 37).

20      According to settled case-law, it is apparent from Article 57(2) and (3) of Regulation No 207/2009, read in the light of recital 10 in the preamble to that regulation, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use 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 (see to that effect and by analogy, Case T‑174/01 Goulbourn v OHIM — Redcats (Silk Cocoon) [2003] ECR II‑789, paragraph 38). 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 (see to that effect and by analogy, VITAFRUIT, paragraph 19 above, paragraph 38).

21      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).

22      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (VITAFRUIT, paragraph 19 above, paragraph 40; see also, by analogy, Ansul, paragraph 21 above, paragraph 43).

23      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (VITAFRUIT, paragraph 19 above, paragraph 41, and Case T‑334/01 MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 35).

24      To examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case (VITAFRUIT, paragraph 19 above, paragraph 42, and HIPOVITON, paragraph 23 above, paragraph 36).

25      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‑39/01 Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT) [2002] ECR II‑5233, paragraph 47, and Case T‑356/02 Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 28).

26      It is in the light of those considerations that it must be assessed whether the Board of Appeal was right to find that proof of genuine use of the earlier mark had not been furnished in the present case.

27      It should be noted at the outset that the application for a declaration of invalidity was filed on 14 December 2010 and that, at that time, the earlier mark had been registered for more than five years, namely since 5 June 1998. Furthermore, as at the date on which the Community trade mark application was published, namely 26 February 2007, the earlier mark had also been registered for more than five years. Consequently, pursuant to Article 57(2) of Regulation No 207/2009, the applicant was required to furnish proof of genuine use in respect of the five-year period preceding the filing date of the application for a declaration of invalidity, which runs from 14 December 2005 to 13 December 2010, and in respect of the five-year period preceding the date on which the application for registration was published, which runs from 26 February 2002 to 25 February 2007.

28      For the purpose of proving genuine use of the earlier mark, the applicant provided an affidavit signed on 6 June 2011 by the Head of the Import Department and Quality Manager at Nanu-Nana Einkaufs- und Verwaltungs GmbH. That company belonged to the same group as the applicant and used the earlier mark under licence. Before the First Board of Appeal, the applicant provided a second affidavit, signed on 11 April 2012, the contents of which were identical to that of 6 June 2011, but which also indicated the turnover for 2005 and 2006, some details as regards the turnover and the reasons why the applicant was not able to provide invoices to supplement the information contained in the affidavits regarding the use of the earlier mark.

29      The applicant also provided photos, including one of a Nanu-Nana shop front, and others, undated, of various goods such as folded paper boxes, albums, calendars, stickers, blocks, artists’ materials, cards and other paper products, napkins, recipe books, furniture and home décor articles. The goods depicted all bear labels and stickers with the earlier mark on their packaging.

30      As regards the affidavits, the Court points out that Rule 22 of Regulation No 2868/95, relating to the supporting documents and items which may be provided for the purpose of proving use of a mark, refers inter alia to statements in writing sworn or affirmed as referred to in Article 78(1)(f) of Regulation No 207/2009. Furthermore, according to the case-law, sworn statements which have evidential value under national legislation constitute, in principle, evidence which is admissible in opposition proceedings (Case T‑303/03 Lidl Stiftung v OHIM — REWE-Zentral (Salvita) [2005] ECR II‑1917, paragraphs 40 and 41; see also, to that effect, judgment of 14 December 2006 in Case T‑392/04 Gagliardi v OHIM — Norma Lebensmittelfilialbetrieb (MANŪ MANU MANU), not published in the ECR, paragraph 88). The admissibility of those affidavits as evidence has not, moreover, been disputed by OHIM in the present case.

31      In order to assess the evidential value of sworn statements, it is necessary, as is the case for every document, first of all, to verify the credibility and veracity of the information it contains. In that regard account must be taken, inter alia, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it is addressed, and whether, on its face, the document appears sound and reliable (see Salvita, paragraph 30 above, paragraph 42, and Case T‑262/04 BIC v OHIM (Shape of a lighter) [2005] ECR II‑5959, paragraph 78 and the case-law cited).

32      In the present case, first, it must be pointed out that the affidavits were drawn up by an employee of a company belonging to the same group as the applicant. It must observed that, in general, affidavits from a person who has close links with the party concerned are of less evidential value than those of third parties and cannot therefore, on their own, constitute sufficient proof of use of the mark (see, to that effect, Shape of a lighter, paragraph 31 above, paragraph 79; judgment of 18 January 2011 in Case T‑382/08 Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), not published in the ECR, paragraph 44; and judgment of 25 October 2013 in Case T‑416/11 Biotronik SE v OHIM — Cardios Sistemas (CARDIO MANAGER), not published in the ECR, paragraph 41).

33      Secondly, the applicant did not at any time in the proceedings before OHIM furnish other evidence to supplement, in particular, the turnover figures given in the affidavits. The only additional evidence provided by the applicant was the undated photographs of some of the goods concerned. Even if those photographs proved the ‘nature’ and possibly the ‘place’ of use of the earlier mark, they would not in any event furnish any evidence to supplement the information contained in the affidavits as regards the time and extent of that use.

34      Thirdly, the content of the affidavits was not sufficiently specific for conclusions to be drawn as regards the time and extent of use of the earlier mark in relation to the goods covered by that mark. In fact, the affidavits in question stated simply that the earlier mark has been used since 1997 for thousands of goods, including ‘for goods of Classes 16, 20 and 24’ and, in respect of 2005 to 2010, stated the approximate quantity of types of goods per class, the approximate quantity of products sold per class and the approximate annual turnover per class, in respect of Classes 16, 20 and 24. For example, in 2007, it is stated in the affidavits, in respect of Class 16, that the applicant sold 287 types of goods and around 9 million products, with a total turnover of approximately EUR 17 million. Apart from quantitative indications, the affidavits did not contain any additional details as regards the goods or types of goods sold.

35      As the Board of Appeal rightly stated, in order to assess the similarity of the goods and the likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009, it is fundamental to establish the specific categories of goods for which the earlier mark has in fact been put to genuine use.

36      It is apparent from Article 57(2) and (3) of Regulation No 207/2009 that, if the earlier trade mark has been used in relation to only part of the goods or services for which it is registered, it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect only of that part of the goods or services. Consequently, where a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (see, to that effect Case T‑126/03 Reckitt Benckiser (España) v OHIM — Aladin (ALADIN) [2005] ECR II‑2861, paragraph 45, and Case T‑256/04 Mundipharma v OHIM — Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 23).

37      It follows that the statements in the affidavits relating to the turnover in respect of Classes 16, 20 and 24 did not make it possible to determine for which goods or which part of the goods in those classes the earlier mark had been used. This was particularly important because the categories of goods for which the earlier mark had been registered were very broad: Class 16 includes ‘paper and goods made of paper’, Class 20 includes, inter alia, ‘goods of cork, reed, cane, wicker, other plant braiding, horn, bone, ivory, shell, amber, mother-of-pearl, meerschaum, reed, namely furniture made of reed, goods made of wicker, namely decorative articles, small furniture and shelves made of wood’ and Class 24 includes ‘bed and table covers, textile goods, namely textile material sold by the metre, pillows’ (see paragraph 6 above).

38      Furthermore, the photos that were provided depicting certain goods in the three classes in question do not allow any conclusions to be drawn as to the extent and duration of use in relation to the goods depicted in those photos. In that regard, the photos are not dated and, in response to a question posed at the hearing, the applicant’s representative was not able to give the date on which the photos in question had been taken. Consequently, even if the goods depicted in the photos were marketed, there is nothing which makes it possible to establish, from those photos, the date on which or the period for which those goods were marketed.

39      Fourthly and lastly, the additional evidence which would have made it possible to supplement the statements contained in the affidavits, for example, invoices, catalogues or newspaper advertisements, is not of a kind which it would have been difficult for the applicant to obtain. Such documents, referring to the category of goods, could have proved the types of goods marketed and the extent and duration of marketing of those goods.

40      In view of the foregoing, it must be held that the Board of Appeal was right to find that proof of use of the earlier mark had not been furnished in the present case.

41      The arguments put forward by the applicant cannot cast doubt on that finding.

42      First of all, the argument that Article 78(1)(f) of Regulation No 207/2009 states that affidavits constitute sufficient evidence to prove genuine use of an earlier mark is unfounded. That article only lists the means of giving or obtaining evidence which are to be included in proceedings before OHIM. By contrast, Rule 22 of Regulation No 2868/95 provides simply that sworn statements in writing constitute admissible evidence (see paragraph 30 above).

43      Secondly, it is not possible to accept the argument that (i) the Board of Appeal was too demanding as regards the requirements concerning proof of use in taking the view that the turnover figures contained in the affidavits did not allow conclusions to be drawn as to the time and extent of use of the earlier mark in relation to the goods at issue, and that (ii) questioning the evidential value of an affidavit was unjustified in the absence of any indication casting doubt upon it. The Board of Appeal carried out an analysis of the evidential value of the affidavits and of the extent to which they were supplemented by the other items of evidence. It concluded that the affidavits were not conclusive either in themselves or in combination with the other items of evidence (see paragraph 10 above). In so doing, the Board of Appeal merely applied the settled case-law, cited in paragraph 31 above, according to which it is necessary to assess the evidential value of documents and to verify the credibility and veracity of the information they contain. That was a fortiori justified in the present case in the light of the close links between the author of the affidavits and the applicant (see paragraph 32 above).

44      Furthermore, the argument put forward by the applicant at the hearing, that the lack of more specific details in the affidavits as to the goods marketed is explained by the fact that the range of goods it sold varied constantly, cannot exempt it from the obligation to provide proof of use of the earlier mark in respect of the goods or part of the goods for which it was registered, under Article 57(2) and (3) of Regulation No 207/2009 (see paragraph 36 above).

45      Furthermore, in so far as the argument put forward by the applicant in paragraphs 31 and 32 of the application is to be understood as meaning that the Court laid down in DEITECH, paragraph 16 above, the principle that affidavits are per se sufficient to prove genuine use of an earlier mark, that argument cannot be accepted. On the contrary, in paragraph 47 of DEITECH, paragraph 16 above, the Court referred to the case-law cited in paragraph 31 above according to which it is necessary to assess the evidential value of documents, and, in paragraph 50 of that judgment, the Court held that the affidavits constituted indicia which had to be supported by other evidence. First, it must be stated that the affidavits in question were not comparable to those in the present case because the goods for which the mark had been used, namely footwear, were mentioned specifically in the affidavits, as pointed out by the Court in paragraph 49 of DEITECH, paragraph 16 above.

46      Secondly, it is apparent from paragraph 54 of DEITECH, paragraph 16 above, that the brochures provided confirmed the affidavits as regards the place, time and nature of use in respect of the goods concerned, and, in paragraph 61, the Court held that, in the particular circumstances of that case, the affidavits were sufficient only to prove the extent of use of the earlier marks. Consequently, the circumstances of the present case are not comparable in so far as the affidavits are not supported by other items of evidence as to the time and extent of use of the mark.

47      Furthermore, as regards the argument that the nature of use of the mark was shown by the photos provided, the Board of Appeal expressed doubts as to whether the nature of use, as depicted in the photos, constituted use of the mark ‘in relation to goods’ for the purposes of the case-law. In any event, that argument must be rejected as irrelevant because it is imperative that evidence of use must concern the place, time, extent and nature of use (see paragraph 19 above). Consequently, mere proof of the nature of use of the mark cannot remedy the lack of evidence of the time and extent of use of the earlier mark (see paragraphs 28 to 39 above).

48      Lastly, as regards the alleged inability on the part of the applicant to provide other evidence, the fact that the sales slips provided to consumers and delivery notes issued by the manufacturers and suppliers of the goods did not refer to the earlier mark did not preclude the applicant from, for example, providing such documents in order to show, at the very least, the types of goods marketed and also the extent and duration of marketing of the goods. In this respect, it must also be pointed out that, contrary to what the applicant claims, the circumstances of the present case are not comparable to those in question in the case which gave rise to the judgment in DEITECH, paragraph 16 above. In the case which gave rise to the judgment in DEITECH, paragraph 16 above, the applicant claimed that it was impossible for it to provide invoices and delivery notes to retailers because it was both the manufacturer and the retailer of its footwear, which it distributed by means of its own subsidiaries (DEITECH, paragraph 16 above, paragraph 59), hence the impossibility of providing delivery notes. That is not the case here.

49      Since the single plea in law put forward by the applicant is unfounded, the action must be dismissed in its entirety.

 Costs

50      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 incurred by OHIM, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Nanu-Nana Joachim Hoepp GmbH & Co. KG to pay the costs.

Dittrich

Schwarcz

Tomljenović

Delivered in open court in Luxembourg on 16 July 2014.

[Signatures]