Out of the blue v OHMI - Dubois and autre (FUNNY BANDS) (Judgment) [2014] EUECJ T-344/13 (19 November 2014)

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(Community trade mark — Opposition proceedings — Application for the Community word mark FUNNY BANDS — Earlier national trade name FUNNY BANDS — Earlier national Internet domain name ‘www.funny-bands.com’ — Relative ground for refusal — Article 8(4) of Regulation (EC) No 207/2009 — Use of a sign in the course of trade of more than mere local significance — Article 76(2) of Regulation No 207/2009 — Rejection of the opposition)

Out of the blue KG, established in Lilienthal (Germany), represented by G. Hasselblatt and D. Kipping, lawyers,

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

ACTION brought against the decision of the Second Board of Appeal of OHIM of 4 April 2013 (Case R 542/2012-2), relating to opposition proceedings between Out of the blue KG and Mr Frédéric Dubois and Another,

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

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 rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,

1 On 2 September 2010, Frédéric Dubois and Another 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 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods and services in respect of which registration was sought are in Classes 14, 17 and 35 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, for each of those classes, inter alia, to the following description:

– Class 17: ‘Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; cords of rubber; cords of rubber; plastic fibres not for textile use; threads of rubber or of silicone, not for use in textiles; elastic threads, not for textile purposes; threads of plastic materials, not for textile use; semi-processed plastic substances’;

– Class 35: ‘Import-export agencies; procurement for others (purchasing of goods and services for other businesses); demonstration of goods; distribution of samples’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 204/2010 of 29 October 2010.

5 On 21 January 2011, the applicant filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, against registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above. The opposition was based on the German non-registered trade name FUNNY BANDS and the Internet domain name ‘www.funny-bands.com’ (‘the earlier rights’), which cover, inter alia and in essence, the same goods and services as those set out in paragraph 3 above.

6 The ground relied on in support of the opposition was that set out in Article 8(4) of Regulation No 207/2009.

7 On 10 February 2011, OHIM requested that the applicant furnish evidence that the conditions set out in Article 8(4) of Regulation No 207/2009, namely, inter alia, the use of the earlier rights in the course of trade of more than mere local significance, were satisfied.

8 On 14 June 2011, the applicant provided OHIM with detailed explanations as to the protection granted to the alleged earlier rights relied on and sent a certain number of documents, namely, first, an extract from a database relating to Internet domain names, which contains information relating to the Internet domain name ‘funny-bands.com’, and, secondly, six screen shots from that website.

9 On 17 August 2011, Mr Dubois and Another sent OHIM observations in response, which were notified to the applicant on 7 September 2011. A deadline of 8 November 2001 was set for submitting observations in reply. On 8 November 2011 the applicant requested that OHIM extend that deadline until 8 January 2012 and OHIM granted that extension by letter of 29 November 2011.

10 On 9 January 2012, that is to say, one day after the expiry of the period set, the applicant sent OHIM its observations in reply, to which a number of further screen shots from the website ‘www.funny-bands.com’ were attached as an annex.

11 On 23 February 2012, the Opposition Division rejected the opposition on the ground that the evidence furnished by the applicant was not sufficient to prove that the signs relied on had been put to genuine use in the course of trade in the relevant territory.

12 On 19 March 2012, the applicant filed a notice of appeal against the decision of the Opposition Division. The statement of grounds, to which copies of 11 invoices dated 8 and 14 June and 20 July 2010 were attached as an annex, was filed on 25 June 2012.

13 By decision of 4 April 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal, which it regarded as admissible in so far as the applicant had invoked the earlier rights as a trade name and Internet domain name. However, to the extent that the applicant had relied on the product name FUNNY BANDS, the Board of Appeal, by contrast, found that the appeal was inadmissible, on the ground that, in its initial opposition, the applicant had not relied on that product name, which was invoked for the first time on 14 June 2011 and thus after the expiry of the opposition period.

14 As regards the substance, the Board of Appeal found, inter alia, that, although the Opposition Division had erred in interpreting the condition of ‘used in the course of trade’ in a way similar to the concept of ‘genuine use’, within the meaning of Article 42(2) and (3) of Regulation No 207/2009, the appeal was, however, unfounded since the applicant had not sufficiently proved that the use which it had made of the sign relied on was of more than mere local significance. In essence, the Board of Appeal was of the opinion that the criterion of ‘use of more than mere local significance’ laid down in Article 8(4) of Regulation No 207/2009 had to be interpreted as meaning that that wording did not have a solely geographical dimension, but also an economic dimension, and that the applicant had proved only the creation of an Internet domain name and the mere presence on the Internet of some sites. In the absence of any evidence relating to the actual business activities carried on by the applicant under the trade name FUNNY BANDS or via the website ‘www.funny-bands.com’, the Board of Appeal found that it was not possible to deduce an economic dimension to the use from the mere fact of the presence of the rights relied on on the Internet without it being shown that the website concerned had actually been visited by third parties. According to the Board of Appeal, the same reasoning applied to the evidence submitted belatedly by the applicant on 9 January 2012. As regards the invoices which were submitted as evidence for the first time when the statement of grounds for the appeal was sent, the Board of Appeal regarded them as inadmissible because they were submitted after the expiry of the time-limit. However, and for the sake of completeness, the Board of Appeal stated that those invoices are not capable of showing the use of the rights relied on because they do not in any way refer to those rights, but refer only to the website ‘www.ootb.de’ and the applicant’s company name, namely Out of the Blue KG.

17 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(4) of Regulation No 207/2009. In the context of that plea it submits, inter alia, that the Board of Appeal’s interpretation of the requirement of ‘use of more than mere local significance’, for the purposes of Article 8(4) of Regulation No 207/2009, is incorrect. Moreover, it complains that the Board of Appeal infringed Article 76(2) of that regulation inasmuch as the evidence provided by the applicant should not have been regarded as belated and should, in any event, have been accepted in view of the discretion which that provision grants to the Board of Appeal.

18 In order to show that the Board of Appeal interpreted the requirement of ‘use of more than mere local significance’, for the purposes of Article 8(4) of Regulation No 207/2009, in an exaggerated manner, the applicant submits that all the evidence which it provided, inter alia, the invoices, is a clear indication of the kind of business activities which it carries on under the trade name FUNNY BANDS and via the Internet site ‘www.funny-bands.com’. According to the applicant, the rights relied on have a ‘real presence’ on the market, which is characterised, inter alia, by its past and present use of them in trade, in advertising and in its communications with customers in a prominent, omnipresent way. The applicant maintains that that presence has been proved to the requisite legal standard and is, in accordance with the case-law of the Court of Justice, sufficient for the condition of ‘use of more than mere local significance’, for the purposes of Article 8(4) of Regulation No 207/2009, to be regarded as satisfied (judgment of 29 March 2011 in Anheuser-Busch v Budějovický Budvar, C‑96/09 P, ECR, EU:C:2011:189). The applicant states, inter alia, that its Internet presence is a very effective means of advertising and a primary communications channel. It submits that the Courts of the European Union should take into account the fact that, under German law, it is sufficient, to secure protection for a trade name, to show the commencement of a business activity and it is not necessary to prove a specific degree of intensity of that business activity.

20 Under Article 8(4) of Regulation No 207/2009, the proprietor of a sign other than a trade mark may oppose the registration of a Community trade mark if that sign satisfies four conditions. The sign relied on must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with 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; and, lastly, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those four conditions limit the number of signs other than marks which may be relied on to dispute the validity of a Community trade mark throughout the European Union in accordance with Article 1(2) of Regulation No 207/2009 (judgment of 24 March 2009 in Moreira da Fonseca v OHIM — General Óptica (GENERAL OPTICA), T‑318/06 to T‑321/06, ECR, EU:T:2009:77, paragraph 32). Those conditions are cumulative, with the result that, 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 207/2009 cannot succeed (judgment of 30 June 2009 in Danjaq v OHIM — Mission Productions (Dr. No), T‑435/05, ECR, EU:T:2009:226, paragraph 35).

21 The applicant puts forward, in essence, three arguments. First, it considers, in essence, that the Board of Appeal’s application of the case-law of the Court of Justice to the criterion of ‘use of more than mere local significance’ is erroneous, inasmuch as the Board of Appeal did not consider the establishment of a real presence on the market to be sufficient. Secondly, it takes the view that it has proved to the requisite legal standard that that condition is satisfied. Thirdly, it relies on national law according to which it is not necessary to prove a specific degree of intensity of business activity.

22 As regards the first argument, concerning the definition of the criterion of ‘use of more than mere local significance’, it must be pointed out that that criterion has been defined in a number of judgments of the Court of Justice and of the General Court.

23 In its judgment in Anheuser-Busch v Budějovický Budvar, cited in paragraph 18 above, EU:C:2011:189, paragraph 143, the Court of Justice held, inter alia, that Article 8(4) of Regulation No 207/2009 does not concern the ‘genuine’ use of a sign relied on in support of an opposition and that there is nothing in the wording of Article 42(2) and (3) of the regulation to suggest that the requirement for proof of genuine use applies to such a sign. However, in order to be capable of preventing the registration of a new sign on the basis of Article 8(4) of Regulation No 207/2009, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of that sign as a distinctive element vis-à-vis its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance (judgment in Anheuser-Busch v Budějovický Budvar, cited in paragraph 18 above, EU:C:2011:189, paragraphs 159 and 160). The Court of Justice also stated in the judgment of 10 July 2014 in Peek & Cloppenburg v OHIM, C‑325/13 P and C‑326/13 P, EU:C:2014:2059, paragraph 51, that the criterion of ‘use of more than mere local significance’ is an independent requirement which must be assessed in the light of EU law.

24 Prior to the judgment in Anheuser-Busch v Budějovický Budvar, cited in paragraph 18 above, EU:C:2011:189, the General Court had already held that the rationale of Article 8(4) of Regulation No 207/2009 was to restrict the number of conflicts between signs, by preventing an earlier sign, which is not sufficiently important or significant, from making it possible to challenge either the registration or the validity of a Community trade mark (judgment in GENERAL OPTICA, cited in paragraph 20 above, EU:T:2009:77, paragraph 36). Furthermore, the General Court stated that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must 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 textual interpretation of Article 8(4) of Regulation No 207/2009. Secondly, account must be taken of the economic dimension of the sign’s significance, which is assessed in the light of (i) 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, (ii) the group of addressees among which it is known as a distinctive element, namely consumers, competitors or even suppliers, or (iii) the exposure given to the sign, for example, through advertising or on the Internet (judgment in GENERAL OPTICA, cited in paragraph 20 above, EU:T:2009:77, paragraph 37). Furthermore, the General Court held that the fact that a sign confers on its proprietor an exclusive right throughout the national territory is in itself insufficient to prove that it is of more than mere local significance within the meaning of Article 8(4) of Regulation No 207/2009 (judgment in GENERAL OPTICA, cited in paragraph 20 above, EU:T:2009:77, paragraph 39). Lastly, the General Court has stated that, in the context of Article 8(4) of Regulation No 207/2009, the use of an earlier sign cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the sign (see, to that effect, judgment of 23 October 2013 in Dimian v OHIM — Bayer Design Fritz Bayer (Baby Bambolina), T‑581/11, EU:T:2013:553, paragraph 29).

25 It is apparent from that case-law, as the Board of Appeal correctly stated, that a party which relies on Article 8(4) of Regulation No 207/2009 must be required to provide, inter alia, evidence relating to the economic dimension of the use of the earlier right. It is also apparent from the judgments referred to in paragraph 24 above that it is not sufficient to submit pieces of evidence which show only that an earlier right exists or that it is possible to rely on it vis-à-vis third parties. In order to demonstrate the fact that an earlier sign is actually used in a sufficiently significant manner in the course of trade, for the purposes of the case-law cited in paragraph 23 above, it is, by contrast, necessary to prove the existence of actual and sufficient business activities.

26 The Board of Appeal did not therefore misinterpret the case-law in finding that the economic dimension of the criterion of ‘use of more than mere local significance’ had not been sufficiently proved by the mere fact of the presence or creation of an earlier right. In particular, the Board of Appeal’s assessment that the mere presence of a website does not show whether, or to what extent, that site has been visited by third parties is an argument which is consistent with the case-law cited in paragraphs 23 and 24 above. Consequently, the first argument which the applicant put forward in the context of the single plea must be rejected.

27 As regards the applicant’s second argument, that it has proved to the requisite legal standard that the signs relied on have been used in a significant manner in the course of trade, it is necessary to examine the various items of evidence which it has submitted.

28 In the first place the applicant submitted, within the period set by OHIM, first, an extract from the database WHOIS from which it is apparent that the domain name ‘funny-bands.com’ was created on 25 May 2010 and that it was the proprietor of that domain name and, secondly, six screen shots from the website ‘www.funny-bands.com’. It is apparent from the first two screen shots that they date from 14 June 2011. The other four screen shots do not indicate a date.

29 It is therefore apparent from those documents that the Internet domain name has existed since 25 May 2010, that the website ‘www.funny-bands.com’ was accessible on 14 June 2011, that, at the time, the applicant was the proprietor of the Internet domain name and that that site was intended, at least on the date indicated, for the marketing of goods under the name FUNNY BANDS, namely multi-coloured silicone bracelets aimed at the German-speaking, English-speaking, French-speaking, Spanish-speaking and Italian-speaking publics since the description of the goods was available in German, English, French, Italian and Spanish. Nevertheless, as the Board of Appeal rightly stated and contrary to the applicant’s assertions, it is not possible to deduce the existence of actual business activities, and even less of activities which have a certain economic dimension, from the mere presence of an Internet site. The existence of a website that is established by the submission of screen shots does not establish the intensity of the alleged commercial use of the rights relied on, which may be shown by, inter alia, a certain number of visits to the site, the emails received via the site or the volume of business generated. Consequently, the evidence referred to in paragraph 28 above does not make it possible to prove ‘use of more than mere local significance’ according to the definition of that criterion in the case-law cited in paragraph 24 above.

30 In the second place, the applicant submitted, on 9 January 2012, additional screen shots which it had obtained by means of the Internet service ‘Wayback Machine’ and which showed the website ‘www.funny-bands.com’ as it appeared on 26 June 2010, 27 July 2010, 28 August 2010, 18 September 2010, 17 October 2010 and 11 November 2010. Those screen shots do not differ significantly from the screen shots referred to in paragraph 28 above.

31 It must be pointed out in that regard that the Board of Appeal was right to find, for the reasons set out in paragraph 29 above, that those screen shots did not contain any evidence as regards the intensity of the alleged use of the rights relied on. They do not therefore make it possible to prove use ‘of more than mere local significance’ for the purposes of the case-law cited in paragraphs 23 and 24 above.

32 In the third place, the applicant submitted for the first time before the Board of Appeal, as an annex to its statement of grounds of appeal filed with OHIM on 25 June 2012, 11 invoices, three dated 8 June, one dated 14 June and seven dated 20 July 2010, on each of which the name and street of the addressee had been effaced. Three of those invoices, including that of 14 June 2010, were addressed to persons established in Austria. The other invoices state as destinations towns which are situated in various regions in Germany. All of those invoices, which are worded in German, state that the sender is the applicant, namely Out of the Blue. Those invoices also contain the logos OUT OF THE BLUE, ROXON and happynature. The description of the goods invoiced is, in each case, ‘Gummiarmband “Funny Bands”’ (silicone bracelet ‘Funny Bands’). The website ‘www.ootb.de’ and the email address ‘[email protected]’ are referred to at the top of the invoices.

33 As regards those invoices, the Board of Appeal was right in finding that they neither refer to the Internet domain name ‘www.funny bands.com’ nor the trade name FUNNY BANDS. The uniform wording on all the invoices submitted refers solely to a product called ‘silicone bracelet “Funny Bands”’. Consequently, those invoices are capable of proving only the use of the product name FUNNY BANDS. It is, however, apparent from Paragraph 5(2) of the Markengesetz (German Law on trade marks) that that provision, which is relied on by the applicant, protects as trade names, in addition to titles of works, which are not the subject-matter of these proceedings, ‘signs which are used, in the course of trade, as names, company names, or specific designations of a business activity or undertaking’. Furthermore, the applicant stated in its application that a trade name for the purposes of Paragraph 5(2) of the Markengesetz identifies a company or a branch of the business of a company. Similarly, an Internet domain name is considered by the German case-law and German legal literature referred to by the applicant to be a sign which identifies a company. It is therefore apparent from the evidence provided by the applicant that a trade name and an Internet domain name like those protected by German law cannot be equated with a product name. The applicant was therefore required to furnish proof of ‘use of more than mere local significance’ in relation to the trade name, for the purposes of the abovementioned Paragraph, and to the Internet domain name, and not in relation to a product name, in respect of which, as is apparent from paragraphs 18 and 19 of the contested decision, which the applicant has not called into question, the opposition was, moreover, found inadmissible by the Board of Appeal.

34 It must be pointed out that the applicant admits, in paragraph 11 of its application, that ‘[f]rom these invoices, on[e] can obviously see that [it] has been using the sign “FUNNY BANDS” for the concerned goods’. In the next paragraph of the application, the applicant deduces merely from the fact that it markets a product under the name FUNNY BANDS, that it ‘has been actively using the designation “Funny Bands” in the German market, both as an Internet Domain name and as an identifier for its business branch by the same name in order to actively market “Funny Bands” bracelets’. However, such a deduction is not possible, as the Board of Appeal rightly concluded in paragraph 66 of the contested decision, because, in the absence of any reference to the Internet domain name ‘www.funny-bands.com’ or to the trade name FUNNY BANDS on the invoices submitted, the mere fact that the applicant markets a product under the name FUNNY BANDS does not establish the intensity of use of the rights relied on and does not therefore in any way prove ‘use of more than mere local significance’ in relation to those rights. In that regard, it must be stated that the question, which was raised by the Board of Appeal, of whether it could be sufficient to prove that there is some probability of use of more than mere local significance does not arise, because the mere co-existence of the website ‘www.funny-bands.com’, which offers for sale goods known as FUNNY BANDS, and of invoices which refer to those goods does not necessarily mean that the goods invoiced were purchased on that website, since those invoices mention the website ‘www.ootb.de’, a fact which rather seems to indicate that the goods invoiced were purchased on the latter site.

35 It is apparent from the foregoing that the Board of Appeal did not err in finding that all of the evidence provided by the applicant, including that submitted belatedly, was insufficient to prove use of more than mere local significance. Consequently, the second argument which the applicant put forward in the context of the single plea must be rejected.

36 As regards the third argument, that the Courts of the European Union should take into account the conditions laid down by national law, it is necessary to bear in mind the case-law of the Court of Justice, according to which, contrary to what the applicant submits, the criterion relating to use of more than mere local significance must not be interpreted in the light of national law, but only in the light of EU law (judgment in Peek & Cloppenburg v OHIM, cited in paragraph 23 above, EU:C:2014:2059, paragraph 51). The third argument which the applicant put forward in the context of the single plea must therefore also be rejected.

37 Consequently, it must be held that the Board of Appeal did not infringe Article 8(4) of Regulation No 207/2009 in finding that the applicant had not succeeded in proving that the conditions laid down by Article 8(4) of Regulation No 207/2009 were satisfied. The single plea relied on by the applicant must therefore be rejected and, accordingly, the action must be dismissed in its entirety.

38 That finding is not, moreover, called into question by the argument put forward by the applicant for the sake of completeness according to which the Board of Appeal infringed Article 76(2) of Regulation No 207/2009. Even if the Board of Appeal had not been entitled to regard the invoices as inadmissible, it is clear from the contested decision that it in fact took into account all the evidence submitted by the applicant. In paragraph 53 of the contested decision, it took into account the evidence provided belatedly by the applicant on 9 January 2012. As for the invoices which the applicant submitted for the first time before the Board of Appeal, it is true that the Board of Appeal found them to be inadmissible pieces of evidence because they were belated, but it nevertheless examined them for the sake of completeness in paragraphs 63 to 65 of the contested decision and rightly found that even those invoices did not prove to the required legal standard the use of the rights relied on.

39 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 form of order sought by the Commission.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Out of the blue v OHMI - Dubois and autre (FUNNY BANDS) (Judgment) [2014] EUECJ T-344/13 (19 November 2014) URL: http://www.bailii.org/eu/cases/EUECJ/2014/T34413.html Cite as: [2014] EUECJ T-344/13, ECLI:EU:T:2014:974, EU:T:2014:974

Court of Justice of the European Communities (including Court of First Instance Decisions)