Alcohol Countermeasure Systems (International) v EUIPO - Lion Laboratories (ALCOLOCK) (Judgment : EU trade mark - Invalidity proceeding) [2017] EUECJ T-638/15 (29 March 2017)

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(EU trade mark — Invalidity proceedings — EU word mark ALCOLOCK — United Kingdom word mark ALCOLOCK — Relative ground for refusal — Article 8(1)(a) and (b) and Article 53(1)(a) and (b) of Regulation (EC) No 207/2009 — Genuine use of the earlier mark)

Alcohol Countermeasure Systems (International) Inc., established in Toronto (Canada), represented by E. Baud and P. Marchiset, lawyers,

European Union Intellectual Property Office (EUIPO), represented by S. Hanne, acting as Agent,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 11 August 2015 (Case R 1323/2014-1) relating to invalidity proceedings between Lion Laboratories and Alcohol Countermeasure Systems (International),

composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,

having regard to the application lodged at the Court Registry on 12 November 2015,

1 On 28 January 2010, the applicant, Alcohol Countermeasure Systems (International) Inc., obtained from the European Union Intellectual Property Office (EUIPO), and on the basis of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), registration of the EU word mark ALCOLOCK under the number 8 443 301.

2 The goods and services in respect of which that mark was registered are in Classes 9, 37 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 July 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 9: ‘Devices for disabling a vehicle in response to a detection of alcohol in the blood of its purported operator; devices for disabling a vehicle in response to a measurement of alcohol in excess of a safety threshold in the blood of its purported operator; breath alcohol testers’;

– Class 37: ‘Installation and repair services of devices for disabling a vehicle in response to a detection of alcohol in the blood of its purported operator; devices for disabling a vehicle in response to a measurement of alcohol in excess of a safety threshold in the blood of its purported operator; breath alcohol testers’;

– Class 42: ‘Compliance monitoring services of devices for disabling a vehicle in response to a detection of alcohol in the blood of its purported operator; devices for disabling a vehicle in response to a measurement of alcohol in excess of a safety threshold in the blood of its purported operator; breath alcohol testers’.

3 On 13 August 2012, Lion Laboratories filed an application for a declaration of invalidity of the contested mark pursuant to Article 53(1)(a) of Regulation No 207/2009, in conjunction with Article 8(1)(a) and (b) and Article 8(5) of that regulation.

4 The application for a declaration of invalidity was based on the earlier word mark ALCOLOCK, registered in the United Kingdom on 16 August 1996 under the number 2 040 518, to designate goods in Class 9 and corresponding to the following description: ‘Apparatus for testing, measuring, indicating, recording and/or analysing breath for alcohol; control apparatus for or responsive to the aforesaid apparatus; parts and fittings therefor’. The application was directed against all of the goods and services referred to in paragraph 2 above.

5 On 22 November 2012, the applicant submitted a request, pursuant to Article 57(2) and (3) of Regulation No 207/2009, that Lion Laboratories furnish proof of genuine use of the earlier mark.

6 By decision of 24 March 2014, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(a) and (b) of that regulation. It took the view, in particular, that the earlier mark had been put to genuine use, that the goods and services at issue were identical or similar, and that the signs at issue were identical.

7 On 21 May 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Cancellation Division’s decision.

8 By decision of 11 August 2015 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In essence, the Board of Appeal pointed out, first, that Lion Laboratories had sufficiently established that the earlier mark had been put to genuine use in the United Kingdom, second, that some of the goods in question as well as the signs at issue were identical, with the result that the requirements laid down by Article 8(1)(a) of Regulation No 207/2009 were satisfied, and, third, that there was a likelihood of confusion between the signs at issue within the meaning of Article 8(1) of Regulation No 207/2009.

11 At the hearing, the intervener withdrew its second head of claim and the Court took formal notice of that withdrawal.

12 In support of the action, the applicant relies on three pleas in law. The first plea in law alleges infringement of Article 8(2) and Article 15(2) of Regulation No 207/2009, Article 10(2) 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), Article 19(2) of the Agreement on Trade-Related Aspects of Intellectual-Property Rights (‘TRIPS Agreement’), which constitutes Annex 1 C to the Agreement establishing the World Trade Organisation (WTO) signed at Marrakesh (Morocco) on 15 April 1994, infringement of the obligation to state reasons, infringement of the right to a fair trial and distortion of facts. The second plea in law alleges infringement of Article 57(2) and (3) of Regulation No 207/2009 and infringement of the obligation to state reasons. The third plea in law alleges infringement of the concept of genuine use within the meaning of Regulation No 207/2009, as well as infringement of Article 75 of Regulation No 207/2009 and of Article 296 TFEU.

The first plea in law, alleging infringement of Article 8(2) and Article 15(2) of Regulation No 207/2009, Article 10(2) of Directive 89/104/EEC, Article 19(2) of the TRIPS Agreement, infringement of the obligation to state reasons, infringement of the right to a fair trial and distortion of facts

13 As a preliminary point, it must be recalled, first, that the obligation to state reasons provided for in the first sentence of Article 75 of Regulation No 207/2009 has the same scope as the obligation laid down in Article 296 TFEU, as consistently interpreted in case-law, according to which the statement of reasons must disclose, clearly and unequivocally, the reasoning of the author of the measure, in such a way as to enable, on the one hand, interested parties to ascertain the reasons for the measure adopted in order to enable them to protect their rights, and, on the other hand, the European Union Courts to exercise their power to review the legality of the decision (judgments of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 64 and 65, and of 18 June 2014, Cantina Broglie 1 v OHIM — Camera di Commercio, Industria, Artigianato e Agricoltura di Verona (RIPASSA), T‑595/10, not published, EU:T:2014:554, paragraph 18). Furthermore, in accordance with settled case-law, the obligation to state reasons is an essential procedural requirement and distinct from the question of whether the reasons given are correct. The fact that a statement of reasons may be incorrect does not mean that there is no statement of reasons (see judgment of 21 January 2016, Spokey v OHIM — Leder Jaeger (SPOKeY), T‑846/14, not published, EU:T:2016:24, paragraph 18 and the case-law cited).

14 In the present case, in the final part of its argument concerning the first plea in law, the applicant states that, by not taking the specificities of the case into consideration and by failing properly to weigh up the interests at stake, the Board of Appeal improperly conducted its analysis and thus failed to state and identify legitimate and legal grounds for its findings. According to the applicant, that failure to state reasons and lack of grounds for the contested decision, in the light of the circumstances of the case and in the absence of proper evidence of use provided by Lion Laboratories, deprived the applicant of its right to a fair trial and to its assets.

15 It follows that the applicant infers a supposed infringement of the obligation to state reasons from legal errors allegedly made by the Board of Appeal, without submitting any further argument in that regard. Accordingly, the applicant’s claim does not come within a head of claim alleging infringement of the obligation to state reasons, but seeks rather to dispute the merits of the contested decision.

16 Second, the Court has excluded the possibility of relying on the right to a fair ‘trial’ in proceedings before the Boards of Appeal of EUIPO since proceedings before the Boards of Appeal are administrative and not judicial in nature (see, to that effect, judgment of 12 December 2002, Procter & Gamble v OHIM (Soap bar shape), T‑63/01, EU:T:2002:317, paragraphs 22 and 23). Consequently, the applicant cannot effectively claim infringement of such a right in the present case.

The first head of claim, alleging misinterpretation of the concept of an earlier trade mark, within the meaning of Article 8(2) of Regulation No 207/2009

18 The applicant criticises the Board of Appeal on the ground that it misinterpreted the concept of an earlier trade mark, within the meaning of Article 8(2) of Regulation No 207/2009, by having taken into account, for the purposes of assessing whether the earlier mark had been put to genuine use, evidence concerning the use of another mark owned by Lion Laboratories, and by having distorted the evidence submitted and the statements made by the latter.

19 Under Article 53(1)(a), in conjunction with Article 8(1)(a) and (b), of Regulation No 207/2009, an EU trade mark is to be declared invalid on application by the proprietor of an earlier trade mark, first, where it is identical to the earlier trade mark and the goods or services for which registration was applied for are identical to the goods or services for which the earlier trade mark is protected and, second, where, due to its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there is a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Moreover, pursuant to Article 8(2)(a)(ii) of Regulation No 207/2009, the term ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

20 Under Article 57(2) and (3) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of the same regulation, an application for a declaration of invalidity is to be rejected if, following a request by the proprietor of the contested trade mark, the applicant for a declaration of invalidity who is the proprietor of an earlier national trade mark fails to furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity and the five-year period prior to the date of publication of the application for registration of the contested trade mark, the earlier national trade mark has been put to genuine use in the Member State concerned in connection with the goods or services in respect of which it is registered and on which the application for a declaration of invalidity is based, or fails to furnish proof that there are proper reasons for its non-use.

21 In the first place, the applicant argues that Articles 57 and 42 of Regulation No 207/2009 require the establishment of genuine use of the earlier mark, as identified by its registration number and the date of that registration, with the result that evidence of genuine use of another trade mark with a different registration number and date of registration is invalid. In that regard, it contends that Lion Laboratories submitted a licence agreement under which it granted Alcolock GB Ltd the right to use the word mark ALCOLOCK, registered in the United Kingdom on 20 August 2004 under the number 2 371 210 (‘trade mark No 2 371 210’). It further states that the evidence of use submitted by Lion Laboratories was connected to that licence agreement, with the result that it showed use of trade mark No 2 371 210, and not use of the earlier mark. Moreover, the applicant argues that the use of trade mark No 2 371 210 could not be taken into account in order to assess the use of the earlier mark on the ground that it was the proprietor of rights allowing it to oppose the registration or use of trade mark No 2 371 210. Consequently, according to the applicant, since the evidence submitted by Lion Laboratories did not relate to the earlier mark, it should have been rejected by the Board of Appeal.

22 It must be pointed out that, under the combined provisions of point (a) of the second subparagraph of Article 15(1) and Article 42(2) and (3) of Regulation No 207/2009, which is applicable to applications for a declaration of invalidity by virtue of Rule 40(6) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), proof of genuine use of an earlier national or EU trade mark which forms the basis of an opposition to an EU 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 under which it was registered (see, by analogy, judgment of 25 October 2012, Rintisch, C‑553/11, EU:C:2012:671, paragraph 30; see also judgments of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited, and of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM — Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 27 and the case-law cited), even though that different form is itself registered as a trade mark (judgments of 25 October 2012, Rintisch, C‑553/11, EU:C:2012:671, paragraph 30, and of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 30).

23 The fundamental condition of genuine use of a trade mark is that, as a consequence of that use, the mark may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking (see, by analogy, judgments of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraph 28, and of 15 July 2015, λ, T‑215/13, not published, EU:T:2015:518, paragraph 30).

24 In the present case, it is not disputed that, since it is a word mark consisting of the word sign ALCOLOCK, trade mark No 2 371 210 is identical to the word sign comprising the earlier mark. Thus, it may, a fortiori, within the meaning of the case-law cited in paragraph 22 above, be regarded as a form of the earlier mark which is itself registered as a trade mark. Furthermore, it is not disputed that trade mark No 2 371 210 designated goods in Class 9 identical to those designated by the earlier mark.

25 Consequently, the fact that the word sign ALCOLOCK was used under the earlier mark or under trade mark No 2 371 210 could not give rise to any difference in the minds of the relevant class of persons as regards the fact that the earlier mark designated goods from Lion Laboratories.

26 Moreover, the applicant’s argument, alleging the existence of rights on which it can rely in order to oppose the registration or use of trade mark No 2 371 210, is irrelevant in the present case, since the mark on which the application for a declaration of invalidity is based and in relation to which the applicant requested evidence of genuine use, is the earlier mark, and not trade mark No 2 371 210.

27 Accordingly, contrary to the applicant’s argument, the Board of Appeal was correct in finding, in paragraph 34 of the contested decision, that, for the purposes of assessing genuine use of the earlier mark, it had to take account of the licence agreement submitted by Lion Laboratories under which the latter granted a licence to a third party for the use of trade mark No 2 371 210, which is identical to the earlier mark, despite the fact that the earlier mark was not mentioned in that licence agreement. It could also, therefore, have based its decision on the evidence of use resulting from the implementation of that licence agreement.

28 In the second place, the applicant argues that the Board of Appeal distorted the statements allegedly made by Lion Laboratories, which amounted to an admission that the earlier mark had never been put to genuine use and that the filing of trade mark No 2 371 210 was purely fraudulent or made only so as to allow it artificially to preserve its rights without having to worry about providing evidence of use of the earlier mark. It adds that, in paragraphs 7 and 8 of the contested decision, the Board of Appeal also distorted the content of the licence agreement.

29 It should be recalled that there is distortion of the clear sense of the evidence where, without recourse to new evidence, the assessment of the existing evidence appears to be clearly incorrect (see judgment of 18 July 2007, Industrias Químicas del Vallés v Commission, C‑326/05 P, EU:C:2007:443, paragraph 60 and the case-law cited).

30 As regards the alleged statements mentioned in paragraph 28 above, it must be noted that the applicant infers their existence from a letter by Lion Laboratories of 21 March 2013, submitted before EUIPO, in response to the applicant’s request that genuine use of the earlier mark be established. In that letter, Lion Laboratories summarised the various items of evidence of use that it had submitted to EUIPO. As the applicant itself admitted, Lion Laboratories also stated that it had entered into a licence agreement with Alcolock GB for the use of trade mark No 2 371 210 and that the evidence provided came from that company. However, it must be noted that none of the statements alleged by the applicant comes from the letter of 21 March 2013, with the result that the Board of Appeal cannot be criticised on the ground that it committed a distortion.

31 As regards the licence agreement, allegedly distorted in paragraphs 7 and 8 of the contested decision, it must be pointed out that those paragraphs contain, respectively, the list of items of evidence submitted on 21 March and on 16 October 2013 by Lion Laboratories before the Cancellation Division in order to establish genuine use of the earlier mark. The licence agreement is mentioned in the first indent of paragraphs 7 and 8, which indicate, incorrectly, that the licence agreement covered the earlier mark and not trade mark No 2 371 210. That error, which is formal in nature, cannot be regarded as a distortion. It should be noted that, in paragraph 34 of the contested decision, the Board of Appeal rightly found that Lion Laboratories was the proprietor of two identical trade marks, trade mark No 2 371 210 and the earlier mark, that the licence agreement covered the first mark but that it was nonetheless relevant for the purposes of assessing the genuine use of the second mark and that it had to be understood as including the latter. It follows that the Board of Appeal took account of the fact that the licence agreement covered trade mark No 2 371 210, with the result that the assessment of that evidence was not erroneous.

32 It follows from this that the Board of Appeal cannot be criticised on the ground that it distorted the alleged statements made by Lion Laboratories or the content of the licence agreement submitted by it.

33 As to the applicant’s claim that the earlier mark and the contested mark co-existed on the United Kingdom market for more than eight years before Lion Laboratories lodged a request for a declaration of invalidity, it must be recalled, on the assumption that the applicant intends to invoke Article 54(2) of Regulation No 207/2009, that the proprietor of an earlier national mark who has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Member State in which the earlier mark was protected, while being aware of such use, is no longer entitled, on the basis of the earlier trade mark, to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless the application for the later EU trade mark was filed in bad faith. In that regard, the relevant date from which the period of limitation in consequence of acquiescence starts running is that on which the proprietor becomes aware of the use of the later mark (see judgment of 20 April 2016, Tronios Group International v EUIPO — Sky (SkyTec), T‑77/15, EU:T:2016:226, paragraph 32 and the case-law cited). In the present case, the applicant did not present evidence in support of the use of the sign comprising the contested mark before its registration. Consequently, the starting point for the period of limitation must be taken to be the date of registration of the contested mark. Since that mark was registered on 28 January 2010 and the application for a declaration of invalidity was lodged on 13 August 2012, it must be held that the five-year limitation period had not expired at the time when the application for a declaration of invalidity was lodged. The applicant’s argument must therefore be rejected.

34 Finally, the applicant’s claim that trade mark No 2 371 210 was lodged with the sole aim of allowing Lion Laboratories to preserve artificially its rights in the earlier mark seeks to challenge, in essence, the claim that the earlier mark has been put to genuine use. For that reason, it will be examined in the context of the third plea in law, by which the applicant challenges the Board of Appeal’s finding that the earlier mark had been the subject of such use.

The second head of claim, alleging infringement of Article 15(2) of Regulation No 207/2009, Article 10(2) of Directive 89/104 and Article 19(2) of the TRIPS Agreement

36 The applicant submits that the Board of Appeal erred in taking the view that Lion Laboratories had consented, by way of a licence agreement, to the use of the earlier mark by a third party, within the meaning of Article 10(2) of Directive 89/104, Article 15(2) of Regulation No 207/2009, and Article 19(2) of the TRIPS Agreement.

37 It is apparent from Article 15(2) of Regulation No 207/2009, which is, in essence, identical to Article 10(2) of Directive 89/104, that use of the trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Furthermore, Article 19(2) of the TRIPS Agreement provides that, when subject to the control of its owner, use of a trade mark by another person is to be recognised as use of the trade mark for the purpose of maintaining the registration.

38 As regards the alleged infringement of Article 10(2) of Directive 89/104 and of Article 15(2) of Regulation No 207/2009, it must be recalled in this regard that, in the context of invalidity proceedings, it is for the proprietor of the contested mark to furnish proof that he consented to the alleged use of that mark by a third party (see, to that effect, judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 44).

39 In the present case, as the applicant correctly submits, the onus was on Lion Laboratories to furnish proof that it had consented to the use of the contested mark.

40 Furthermore, it should be noted that, taking account of the significance of its effect of extinguishing the exclusive right of the proprietor of the EU trade mark to use that mark, the consent must be expressed in such a way that an intention to renounce that right is unequivocally demonstrated. Such an intention generally follows from an express giving of consent. However, it is conceivable that consent may, in certain cases, be inferred from facts and circumstances prior to, simultaneous with or subsequent to the use of the mark at issue by a third party which also unequivocally demonstrate that the proprietor has renounced his rights (see judgments of 13 January 2011, Park v OHIM — Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 61 and the case-law cited, and of 30 January 2015, Now Wireless v OHIM — Starbucks (HK) (now), T‑278/13, not published, EU:T:2015:57, paragraph 35).

41 For the purposes of establishing genuine use of the earlier mark, Lion Laboratories produced before EUIPO a licence agreement under which it had granted a third party a licence to use trade mark No 2 371 210, as well as providing invoices, press articles, advertisements and extracts from websites.

42 The applicant argues that the licence agreement does not establish the consent of Lion Laboratories to the use of the contested mark by the third party mentioned in that agreement. According to the applicant, in order for evidence of such consent to be provided, it would have been necessary, first, that the licence agreement should relate to the same trade mark as that on which the application for a declaration of invalidity was based and genuine use of which had to be established and, second, that use of the earlier mark had been in accordance with the terms of the licence agreement. However, according to the applicant, the licence agreement did not relate to the earlier mark, but to trade mark No 2 371 210, and the third party named in the licence agreement had used that trade mark in breach of that agreement.

43 Those arguments must be rejected. According to case-law, where the proprietor of an EU trade mark maintains that use of that mark by a third party constitutes genuine use of that mark for the purposes of Article 15 of Regulation No 207/2009, that proprietor is claiming implicitly that that use was made with his consent (see judgments of 13 January 2011, PINE TREE, T‑28/09, not published, EU:T:2011:7, paragraph 62 and the case-law cited, and of 30 January 2015, now, T‑278/13, not published, EU:T:2015:57, paragraph 36 and the case-law cited).

44 Furthermore, as is apparent from paragraph 27 above, the fact that the licence agreement designates a mark other than the earlier mark does not preclude it from being taken into account for the purposes of assessing whether the earlier mark has been put to genuine use. It must therefore be stated that the same circumstance did not prevent the assessment of the consent of Lion Laboratories to the use of the earlier mark by its contractual partner and did not lead to the conclusion that Lion Laboratories had not consented to such use. In addition, it is necessary to find that the infringements of the licence agreement alleged by the applicant, even if proved, are, in the absence of other factors, not such as to cast doubt on the reality of the consent given by Lion Laboratories at the moment when the agreement was signed, in the light of the use of the earlier mark.

45 With regard to the other items of evidence submitted by Lion Laboratories, it seems unlikely that Lion Laboratories could have had those documents in its possession and could have submitted them as evidence of use of the earlier mark if that use had been carried out against its wishes.

46 Accordingly, the applicant’s arguments cannot cast doubt on the fact that the earlier mark had been used with the consent of Lion Laboratories within the meaning of Article 15(2) of Regulation No 207/2009 and Article 10(2) of Directive 89/104.

47 Moreover, as regards the infringement of Article 19(2) of the TRIPS Agreement pleaded by the applicant, it must be recalled that, since the European Union is a party to the TRIPS Agreement, it is under an obligation to interpret its trade-mark legislation, as far as possible, in the light of the wording and the purpose of that agreement (see judgment of 16 November 2004, Anheuser-Busch, C‑245/02, EU:C:2004:717, paragraph 42 and the case-law cited; judgment of 11 May 2010, Abadía Retuerta v OHIM (CUVÉE PALOMAR), T‑237/08, EU:T:2010:185, paragraph 64).

48 However, according to the case-law, first, account being taken of their nature and structure, the Agreement establishing the WTO and its annexes are not in principle among the rules in the light of which the EU Courts are to review the legality of measures adopted by the EU institutions in the context of an action for annulment and, second, the provisions of the TRIPS Agreement, which is an annex to the WTO Agreement, are not such as to create rights upon which individuals may rely directly before the courts by virtue of EU law (judgments of 14 December 2000, Dior and Others, C‑300/98 and C‑392/98, EU:C:2000:688, paragraphs 42 and 43, and of 11 May 2010, CUVÉE PALOMAR, T‑237/08, EU:T:2010:185, paragraph 66).

49 It is apparent from that line of case-law that, although the provisions of the TRIPS Agreement do not have direct effect, it is nevertheless true that trade-mark legislation, that is to say, in the present case, Article 15(2) of Regulation No 207/2009, must, as far as possible, be interpreted in the light of the wording and purpose of that agreement.

50 However, in the present case, it must be stated that the applicant merely mentions Article 19(2) of the TRIPS Agreement, without putting forward any specific argument to support the view that the assessment of the consent given by Lion Laboratories to the use by a third party of the contested mark on the basis of Regulation No 207/2009 could be called into question by that provision.

51 Consequently, the second head of claim and, accordingly, the first plea in law, must be rejected.

The second plea in law, alleging infringement of Article 57(2) and (3) of Regulation No 207/2009

52 The applicant criticises the Board of Appeal on the ground that it failed sufficiently to distinguish the periods during which genuine use of the earlier mark had to be demonstrated, in accordance with Article 57(2) and (3) of Regulation No 207/2009. According to the applicant, the Board of Appeal assessed the use of the earlier mark overall, by having considered the two periods mentioned in those provisions as a whole, whereas it was required to assess that use during each period separately. That error, it submits, led the Board of Appeal to compensate between the two periods in question and to take the view that the genuine use of the earlier mark was established during the two periods, whereas it was clear that that use was not genuine during at least one of those two periods. According to the applicant, it follows that there was an infringement of Article 57(2) and (3) of Regulation No 207/2009 and an infringement of the obligation incumbent upon the Board of Appeal to set out reasons for its findings.

53 In the first place, it must be noted that the applicant infers a supposed infringement by the Board of Appeal of the obligation to state reasons from the latter’s alleged infringement of Article 57(2) and (3) of Regulation No 207/2009, without submitting any further argument in that regard. Consequently, in the light of the case-law cited in paragraph 13 above, the applicant’s allegation does not come within a head of claim alleging infringement of the obligation to state reasons, but seeks to dispute the merits of the contested decision.

54 It should be recalled that, in accordance with Article 57(2) of Regulation No 207/2009, the periods to be taken into account in order to establish genuine use of the earlier mark are the five-year period preceding the date of the application for a declaration of invalidity and the five-year period prior to the date of publication of the application for registration of the contested mark.

55 In the present case, as was correctly pointed out by the Board of Appeal, without being challenged by the parties, since the application for registration of the contested mark was published on 5 October 2009 and the application for a declaration of invalidity was lodged on 13 August 2012, genuine use of the earlier mark had to be established for the periods from, respectively, 5 October 2004 to 4 October 2009 (‘the first period’) and from 13 August 2007 to 12 August 2012 (‘the second period’) (collectively ‘the relevant periods’).

56 Furthermore, it must be noted that the Board of Appeal, in paragraphs 35 to 37 of the contested decision, assessed the evidence of use of the earlier mark in relation to the second period. In that regard, it confirmed that Lion Laboratories had provided evidence of comprehensive use relating to the period between 13 August 2007 and 12 August 2012. In paragraphs 38 and 39 of that decision, the Board of Appeal assessed the evidence of the use of the earlier mark in relation to the first period. In that regard, it noted that, taking account of the overlap between the two relevant periods, a large part of the evidence relating to the period between 13 August 2007 and 12 August 2012 also related to the period between 5 October 2004 and 4 October 2009. It also took the view, in paragraph 39 of the contested decision, that the evidence of use of the earlier mark during the first period ‘may not be comprehensive’ but that it provided sufficient indication as to the time, place and extent of use of the earlier mark. It concluded, in paragraph 40 of that decision, that the evidence of use of the earlier mark, when those two periods were considered together, showed that the earlier mark had been put to genuine use during the relevant periods.

57 It is clear from this, first, that the Board of Appeal assessed in turn the evidence of the use of the earlier mark in relation to the second period, and then the evidence relating to the first period. Consequently, contrary to what the applicant argues, the Board of Appeal assessed the genuine use of the earlier mark separately in relation to each period. Second, it is apparent from the findings in paragraph 39 of the contested decision that the Board of Appeal took the view that the evidence relating to the first period established, by itself and to the requisite legal standard, genuine use of the earlier mark during that period, since it provided sufficient information on the time, place and extent of that use. Furthermore, since the Board of Appeal stated that the relevant periods overlapped, it was entitled to take the view that evidence relating to a point in time falling within the period common to those periods was relevant for the assessment of the genuine use of the contested mark during each of those periods. It follows that the applicant’s claim that the Board of Appeal compensated between the use of the earlier mark found during the second period and that found during the first period in order to find genuine use of that mark during the first period has no basis in the contested decision.

The third plea in law, alleging infringement of the concept of genuine use, infringement of Article 75 of Regulation No 207/2009 and infringement of the obligation to state reasons

59 The applicant criticises the Board of Appeal on the ground that it erred in finding that the earlier mark had been put to genuine use, notwithstanding the irrelevance or lack of probative value of several items of evidence of the use of that mark submitted by Lion Laboratories. The Board of Appeal, it is contended, also infringed its obligation to state reasons by failing to show the link established by consumers between the earlier mark, used as a corporate name, and the goods in question.

60 As is apparent from recital 10 of Regulation No 207/2009, the legislature took the view that the protection of an earlier mark was justified only in so far as it was actually used. Pursuant to that recital, Article 57(2) and (3) of Regulation No 207/2009 states that the proprietor of an EU trade mark may request proof that the earlier trade mark has been put to genuine use in the territory in which it is protected during the five-year period preceding the date of the application for a declaration of invalidity and the five-year period preceding the date of the publication of the application for registration of the contested mark.

61 In accordance with Rule 22(3) of Regulation No 2868/95, which applies to applications for a declaration of invalidity pursuant to Rule 40(6) of that regulation, proof of use must consist of indications concerning the place, time, extent and nature of the use of the earlier trade mark.

62 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 of 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 good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. 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 judgments of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 38 and the case-law cited, and of 17 December 2015, Bice International v OHIM — Bice (bice), T‑624/14, not published, EU:T:2015:998, paragraph 35 and the case-law cited).

63 Genuine use of a trade mark exists where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and services for which it is registered, in order to create or preserve an outlet for those goods and services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, 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 (see, by analogy, judgments of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37, and of 17 December 2015, bice, T‑624/14, not published, EU:T:2015:998, paragraph 36).

64 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 in the course of trade 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 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 judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 34 and the case-law cited, and of 17 December 2015, bice, T‑624/14, not published, EU:T:2015:998, paragraph 37 and the case-law cited).

65 As for 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 (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).

66 In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, it is necessary to carry out an overall assessment, which takes into account all the relevant factors of the particular case. That assessment implies a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. In addition, the turnover and volume of sales of the goods achieved under the earlier trade mark cannot be assessed in absolute terms but must be appraised 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 market concerned. As a result, the EU Courts have stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 39; see also judgment of 17 December 2015, bice, T‑624/14, not published, EU:T:2015:998, paragraph 39 and the case-law cited).

67 By contrast, genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 8 April 2016, Frinsa del Noroeste v EUIPO — Frisa Frigorífico Rio Doce (FRISA), T‑638/14, not published, EU:T:2016:199, paragraph 49).

68 Finally, it cannot be ruled out that an accumulation of items of evidence may make it possible to establish the necessary facts, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (judgments of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 36, and of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 34).

69 It is in the light of those considerations that the issue of whether the Board of Appeal acted correctly in finding that the earlier mark had been put to genuine use falls to be examined.

70 In order to assess whether the earlier mark had been put to genuine use, the Board of Appeal relied on the following evidence submitted by Lion Laboratories, as described in the contested decision:

– a copy of the trade mark licensing agreement dated 31 May 2007, signed between Lion Laboratories and Alcolock GB, by which the latter was licensed by the former to use the earlier mark;

– a selection of invoices dated between 2006 and 2012, accompanied by the corresponding purchase orders and email requests. The invoices list the Alcolock and Alcolock 500 products and the services relating to the repair and maintenance of those products;

– a selection of press articles discussing the goods and services of Alcolock GB;

– a selection of advertisements and invoices for placing advertisements in various publications in the United Kingdom.

71 The applicant argues, first, that some of those items of evidence did not relate to the relevant territory, namely the United Kingdom, and that their date could not be determined with certainty.

72 It submits that the press article entitled ‘Too drunk to start’, dated October 2007, was published in an Irish magazine, meaning that it related to the Irish market and was consequently irrelevant for the purposes of establishing genuine use of the earlier mark in the United Kingdom. The applicant further submits that it is not possible to know whether the advertising materials submitted by Lion Laboratories were published or, if they were, in which publications they were published, given that those publications were not submitted. Furthermore, one of the publications mentioned in one of the invoices submitted was an Irish publication, as is clear from its internet domain name. The applicant adds that those documents also do not make it possible to establish that the goods to which they relate were marketed as they are described therein. Finally, it submits that the dates on the advertising materials were handwritten thereon and it was therefore not possible to establish the duration, place and date of their use.

73 As regards the press article, it must be noted that this reports on statements made by the director of Alcolock GB, who confirmed that Alcolock used the same breathalyser as the police in the United Kingdom and that it was very popular with coach companies and truck fleet owners, who were concerned about their personal liability under new legislation relating to involuntary manslaughter which had just come into force in the United Kingdom. That article goes on to state that the Alcolock system cost around 1 000 pounds sterling (GBP) in the United Kingdom, suggesting that its cost would be around EUR 1 500 in Ireland. It follows that that article shows, as EUIPO has correctly submitted, use of the earlier mark in the United Kingdom for goods which, it is not disputed, correspond to the description of the goods in question. That article was therefore relevant for the purposes of assessing whether the earlier mark had been put to genuine use in the United Kingdom.

74 As regards the advertising materials and the corresponding invoices, it must be stated that these make reference to both the earlier mark and the goods in respect of which it was registered, namely apparatus for testing, measuring, indicating, recording or analysing breath for alcohol, a fact which the applicant does not dispute. In addition, the majority of the invoices list publications in which advertisements were inserted and the dates of those publications. In that regard, the mere fact that Lion Laboratories did not submit those publications cannot cast doubt on the fact that those advertisements were indeed inserted in those publications.

75 Furthermore, it is clear that the applicant’s observation that one of the publications was not relevant on the ground that it related to Ireland, and not the United Kingdom, concerns, if it is assumed to be correct, only 1 out of the 18 invoices presented by Lion Laboratories.

76 Moreover, the applicant does not put forward any argument or evidence in support of its claim that the goods under the earlier mark might possibly not have been marketed as they were described in the advertising materials. That argument must consequently be rejected.

77 Finally, the mere fact that the date on two of the items of advertising material was only handwritten cannot lead to the exclusion of those items from the materials on the basis of which the assessment relating to genuine use could have been made. As the use of the earlier mark must, in order to be deemed genuine, be public and outward, in accordance with the case-law noted in paragraph 63 above, in order to establish the advertisement of that use, only the dates on which the public was confronted with the earlier mark must be taken into account, that is to say, with regard to the advertising documents at issue, the dates during which they were inserted into publications aimed at consumers. In that regard, it is clear from paragraph 74 above that Lion Laboratories established that consumers had been confronted with the advertising materials in question in the identified publications, the date of which was known.

78 Accordingly, the applicant’s arguments, set out in paragraphs 71 and 72 above, cannot call into question the Board of Appeal’s findings, in paragraph 38 of the contested decision, that significant advertising activities had been undertaken to promote the goods of Lion Laboratories under the earlier mark.

79 Secondly, the applicant argues that the earlier mark has never been affixed to the goods in question and that it has been used only descriptively as the corporate name of Alcolock GB or to identify goods sold under another mark. From this the applicant concludes that the earlier mark cannot be regarded as having been put to genuine use.

80 In this regard, contrary to what the applicant contends, a number of items of advertising material produced before EUIPO by Lion Laboratories show a device on which the earlier mark is affixed, presented as being capable of measuring a person’s breath alcohol level and preventing a vehicle from being started when that level exceeds a predefined limit.

81 Moreover, the fact that a number of items of advertising material mention the earlier mark as the corporate name of Alcolock GB and show similar devices bearing a different trade mark to the earlier mark does not, as the Board of Appeal correctly stated in paragraphs 36 and 37 of the contested decision, preclude the use of that mark from being classified as genuine.

82 It is not necessary that the earlier mark be affixed to the goods in order for there to be genuine use of the mark in relation to those goods (see judgment of 15 July 2015, Cactus v OHIM — Del Rio Rodríguez (CACTUS OF PEACE CACTUS DE LA PAZ), T‑24/13, not published, EU:T:2015:494, paragraph 65 and the case-law cited). It is sufficient that the use of the earlier mark establishes a link between that mark and the marketing of the goods (see, to that effect, judgments of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraph 23, and of 6 March 2014, Anapurna v OHIM — Annapurna (ANNAPURNA), T‑71/13, not published, EU:T:2014:105, paragraph 60). The presence of the earlier mark on invoices and in articles and advertisements relating to the goods concerned is likely to establish that link (see, to that effect, judgment of 6 March 2014, ANNAPURNA, T‑71/13, not published, EU:T:2014:105, paragraph 60).

83 In the present case, it should be noted that the earlier mark is referred to for the purposes of identifying and describing the goods in question in a number of items of advertising material, invoices and purchase orders, in particular by the words ‘alcolock kit’, ‘alcolock tethered unit’ and ‘alcolock breathalyser immobiliser’, as well as in a press article submitted by the applicant. Consequently, it must be held that the link between the earlier mark and the marketing of the goods at issue was, in any event, established.

84 In that regard, the applicant errs in criticising the Board of Appeal for failing to characterise the existence of such a link. After recalling the applicable law in paragraph 36 of the contested decision, as interpreted in the case-law referred to in paragraph 81 above, the Board of Appeal stated, in essence, in paragraph 37 of that decision, that the evidence establishing the marketing by Lion Laboratories of goods bearing trade marks other than the earlier mark was relevant for the purposes of assessing whether the latter had been put to genuine use. That finding precedes, in paragraph 38 of that decision, the assessment of the relevant evidence produced by Lion Laboratories and the finding, in paragraphs 39 and 40, that the earlier mark had been put to genuine use. Accordingly, in order to reach such a conclusion, the Board of Appeal necessarily took the view that a link between the earlier mark and the goods in question had been established in the present case.

85 Consequently, the applicant’s argument concerning the nature of the use of the earlier mark must be rejected.

86 Thirdly, the applicant argues that the volume of sales of the goods in question was, in view of the market characteristics, insufficient to lead to the conclusion that the earlier mark had been put to genuine use. It submits that it is apparent from the evidence adduced by Lion Laboratories before EUIPO that only 64 devices had been sold during the relevant periods, which, it argues, was insufficient in the light of the fact that there are more than 30 million vehicles on the road in the United Kingdom and that road safety has been a priority there since the 1960s.

87 It must be stated that, contrary to the applicant’s arguments, the invoices and purchase orders annexed to the application indicate that almost 350 devices for testing, measuring, indicating, recording or analysing breath for alcohol, as well as repair kits and spare parts for those devices, were sold during the relevant periods.

88 Furthermore, those invoices were addressed to different persons, which shows, moreover, that the use of the earlier mark was public and outward and not solely within the undertaking which owns the earlier trade mark or within a distribution network owned or controlled by that undertaking (see, to that effect, judgments of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 50, and of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 87).

89 Accordingly, notwithstanding the relatively low number of the goods in question sold during the relevant period, particularly during the first period, the sales made constitute use which objectively is such as to create or preserve an outlet for the goods concerned and which entails a volume of sales which, in relation to the period and frequency of use, is not so low as to lead to the conclusion that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.

90 Consequently, the applicant is wrong to argue that the volume of sales of the goods in question was, in any event, insufficient to support a finding that the earlier mark had been put to genuine use.

91 It follows that, after examining all of the evidence submitted by Lion Laboratories, the Board of Appeal acted correctly in finding that the evidence adduced by Lion Laboratories constituted a body of evidence showing that that company had seriously tried to acquire and maintain a commercial position in the market for breathalysers during the relevant periods and that the use of the earlier mark exceeded token use of that mark with the sole purpose of preserving the rights conferred by it. Accordingly, the Board of Appeal also acted correctly in inferring that the earlier mark had been put to genuine use in the United Kingdom during the relevant periods.

92 Furthermore, the applicant cannot argue that the contested decision was unclear, in that the Board of Appeal did not indicate clearly, in paragraph 38 of that decision, what evidence was relevant for the purposes of assessing whether the earlier mark had been put to genuine use in relation to the two relevant periods, or, in paragraph 39 of that decision, what evidence it had considered together in order to assess that use. Since the Board of Appeal stated that the relevant periods overlapped, it was clear that the evidence relevant to the two periods was that relating to a point in time falling within the period shared by those two periods, namely in the period between 13 August 2007 and 4 October 2009. Furthermore, it must be recalled that, according to the case-law referred to in paragraph 66 above, the Board of Appeal was required to carry out an overall assessment, taking account of all factors relevant to the circumstances of the case, such an assessment implying some interdependence between the relevant factors taken into account. In the present case, it relied on the evidence referred to in paragraph 70 above, which it had set out in paragraph 7 of the contested decision. Consequently, the Board of Appeal indicated in sufficient detail the evidence on which it correctly based its finding that the earlier mark had been put to genuine use.

93 In addition, no pertinence attaches to the applicant’s claims relating to the irrelevance and lack of probative value of the website extracts included in Annex 10 to its application and the documents relating to the exhibitions in which it is claimed that Lion Laboratories participated, since those elements do not feature among those examined by the Board of Appeal in order to establish that the earlier mark had been put to genuine use.

94 Finally, the claim that the Board of Appeal’s finding that the earlier mark had been put to genuine use relied on probabilities, suppositions and approximations must also be rejected. That claim rests solely on the observation that, in paragraphs 38 and 39 of the contested decision, the Board of Appeal used wording such as ‘[the] pieces of evidence are indicative …’, ‘together’, ‘[Lion Laboratories] has seriously tried to acquire and maintain a commercial position’, and ‘[the evidence relating to the first period] may not be comprehensive but provides sufficient indication’. Such wording shows, on the contrary, that the Board of Appeal, as it was required to do, assessed the genuine use of the earlier mark overall and took account of all the factors relevant to the circumstances in the present case, as well as their interdependence.

95 It follows from the foregoing that the Board of Appeal did not vitiate the contested decision either by erring in law in its assessment of whether the earlier mark had been put to genuine use or by infringing the obligation to state reasons.

96 Accordingly, the third plea in law must be rejected and, consequently, the action must be dismissed in its entirety.

97 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

2. Orders Alcohol Countermeasure Systems (International) Inc. to pay the costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Alcohol Countermeasure Systems (International) v EUIPO - Lion Laboratories (ALCOLOCK) (Judgment : EU trade mark - Invalidity proceeding) [2017] EUECJ T-638/15 (29 March 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T63815.html Cite as: [2017] EUECJ T-638/15, ECLI:EU:T:2017:229, EU:T:2017:229

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