mobile.de v EUIPO - Droujestvo S Ogranichena Otgovornost "Rezon" (mobile.ro) (EU trade mark - Judgment) [2019] EUECJ T-412/18 (12 July 2019)

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(EU trade mark — Invalidity proceedings — EU figurative mark mobile.ro — Earlier national figurative mark mobile — Genuine use of the earlier mark — Article 18 of Regulation (EU) 2017/1001 — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation 2017/1001)

mobile.de GmbH, established in Dreilinden (Germany), represented by T. Lührig, lawyer,

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and H. O’Neill, acting as Agents,

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

Droujestvo S Ogranichena Otgovornost ‘Rezon’, established in Sofia (Bulgaria), represented by M. Yordanova-Harizanova and V. Grigorova, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 29 March 2018 (Case R 111/2015-1), relating to invalidity proceedings between Droujestvo S Ogranichena Otgovornost ‘Rezon’ and mobile.de,

composed of D. Gratsias (Rapporteur), President, I. Labucka and I. Ulloa Rubio, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 4 December 2018,

having regard to the response of the intervener lodged at the Court Registry on 22 November 2018,

1 On 2 July 2008, the applicant, mobile.de GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) 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 European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The services in respect of which registration was sought are in, inter alia, Classes 35 and 42 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 42: ‘Providing internet platforms for the buying and selling of vehicles, vehicle trailers and vehicle accessories’.

5 On 16 May 2013, the intervener, Droujestvo S Ogranichena Otgovornost ‘Rezon’, filed an application with EUIPO for a declaration of invalidity of the mark at issue in respect of the services referred to in paragraph 3 above.

6 In support of its application for a declaration of invalidity, the intervener relied on the Bulgarian figurative mark registered on 20 April 2005 (‘the earlier national mark’) and reproduced below:

7 The earlier national mark was registered for services in, inter alia, Classes 35 and 42 of the Nice Agreement and corresponding to the following description:

– Class 35: ‘Advertising; business management; business administration; office function’;

– Class 42: ‘Scientific and technological services and research and related design services; industrial analysis and research services; design and development of computer hardware and software; legal services’.

8 Before the Cancellation Division, the applicant requested that the intervener furnish proof of use of the earlier national mark, in accordance with Article 57(2) and (3) of Regulation No 207/2009 (now Article 64(2) and (3) of Regulation 2017/1001) and Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 10 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), in respect of the services referred to in paragraph 7 above. In view of the fact that the earlier national mark had been registered on 20 April 2005 and that the application for a declaration of invalidity had been made on 16 May 2013, the Cancellation Division requested the intervener to submit proof of use of the earlier national mark in Bulgaria for the period from 16 May 2008 to 15 May 2013 (‘the reference period’).

9 By decision of 19 November 2014, the Cancellation Division rejected the application for a declaration of invalidity on the ground that there was no similarity between the services covered by the conflicting marks and that, consequently, there was no likelihood of confusion.

10 On 12 January 2015, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.

11 By decision of 29 March 2018 (‘the contested decision’), the Board of Appeal annulled the decision of the Cancellation Division and declared the mark at issue invalid in respect of the services in Classes 35 and 42 referred to in paragraph 3 above.

12 In particular, the Board of Appeal stated, first of all, that proof of use of the earlier national mark submitted by the intervener refers to the word sign mobile.bg and to the figurative signs reproduced below:

13 According to the Board of Appeal, those signs differ from the earlier national mark in elements which do not alter the distinctive character of the latter, within the meaning of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.

14 Next, the Board of Appeal took the view that the evidence submitted by the intervener demonstrated genuine use of the earlier national mark within the meaning of Article 64(2) of Regulation 2017/1001, but only for advertising services in connection with vehicles.

15 Finally, after finding that there are significant similarities between the advertising services in connection with vehicles covered by the earlier national mark and the services covered by the contested sign (see paragraph 3 above) and between the signs at issue, the Board of Appeal found that there was a likelihood of confusion for the average consumer in Bulgaria comprising the relevant public and thus annulled the mark at issue in respect of the services in Classes 35 and 42 referred to in paragraph 3 above.

18 In support of its action, the applicant raises four pleas in law, alleging infringement of:

– point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, read in conjunction with Article 64(2) and (3) of that regulation;

– Article 19(2) and Article 10(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), read in conjunction with Article 64(2) and (3) of Regulation 2017/1001;

– Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) and (2)(a)(ii) of that regulation;

– Article 4(3) TEU, read in conjunction with Article 59(1)(b) and Article 61(2) of Regulation 2017/1001.

The first plea in law, alleging infringement of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, read in conjunction with Article 64(2) and (3) of that regulation

19 The applicant submits, first of all, that, by applying point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 in order to assess the use of the earlier national mark, the Board of Appeal erred in law. According to the applicant, that provision concerns only genuine use of EU trade marks. On the other hand, the use of national marks is to be assessed according to the relevant national law.

20 That argument cannot be accepted. It is true that, according to Article 18(1) of Regulation 2017/1001, if, within a period of 5 years following registration, the proprietor has not put the EU trade mark to genuine use in the European Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of 5 years, the EU trade mark is to be subject to the sanctions provided for in that regulation, unless there are proper reasons for non-use.

21 Correspondingly, according to Article 64(2) of Regulation 2017/1001, if the proprietor of the EU trade mark so requests, the proprietor of an earlier EU trade mark, being a party to the invalidity proceedings, is to furnish proof that, during the period of 5 years preceding the date of the application for a declaration of invalidity, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which the proprietor of that earlier trade mark cites as justification for his application for a declaration of invalidity, or that there are proper reasons for non-use, provided that the earlier EU trade mark has at that date been registered for not less than 5 years. Furthermore, according to that provision, if at the date on which the EU trade mark application was filed or at the priority date of the EU trade mark application, the earlier EU trade mark had been registered for not less than 5 years, the proprietor of the earlier EU trade mark is to furnish proof that the conditions set out in Article 47(2) of Regulation 2017/1001 were satisfied at that date.

22 However, according to Article 64(3) of Regulation 2017/1001, paragraph 2 of that provision is to apply to earlier national trade marks, by replacing use in the European Union with use in the Member State in which the earlier national trade mark forming the basis of the application for a declaration of invalidity is protected.

23 It follows that, when the proprietor of an EU trade mark requests proof of genuine use to be furnished, that use constitutes a condition which must be met, under Regulation 2017/1001 itself, not only by EU trade marks but also by earlier national marks relied on in support of an application for a declaration of invalidity of that EU trade mark. Consequently, contrary to what the applicant argues, the application of Article 64(2) of Regulation 2017/1001 to earlier national marks under paragraph 3 of that article means that genuine use is to be defined according to Article 18 of that regulation. Therefore, the Board of Appeal did not err in law when it assessed whether the earlier national mark had been put to genuine use within the meaning of that latter provision.

24 Next, the applicant submits that the Board of Appeal erred by taking the view that the use of the word sign mobile.bg and of the figurative signs reproduced in paragraph 12 above amounts to use of the earlier national mark within the meaning of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001. In particular, the applicant submits that, in referring to a mobile phone, the word ‘mobile’ is descriptive of the services covered by the earlier national mark (see paragraph 7 above). Consequently, the distinctive character of the earlier national mark is exclusively the result of its figurative element, namely, the frame in the shape of a rectangle which is reminiscent of a registration plate. It is due to that figurative element that the relevant public ultimately makes the connection between the earlier national mark and a vehicle.

25 It should be recalled that the purpose of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be limited to situations in which the sign actually used by the proprietor of a trade mark to identify goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgment of 12 May 2016, mobile.international v EUIPO — Rezon (mobile.de), T‑322/14 and T‑325/14, not published, EU:T:2016:297, paragraph 53 and the case-law cited).

26 A finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the added elements based on the intrinsic qualities of each of those elements and the relative position of the various elements within the arrangement of the trade mark (judgment of 12 May 2016, mobile.de, T‑322/14 and T‑325/14, not published, EU:T:2016:297, paragraph 54).

27 The applicant submits, in that regard, that the use of the word sign mobile.bg cannot be regarded as constituting genuine use of the earlier national mark, since that sign does not include the determinant figurative element of that mark and its distinctiveness and is also phonetically and conceptually different from it. Furthermore, according to the applicant, it cannot be held that use of the word sign mobile.bg responds to modernisation requirements of the earlier national mark, with the result that the Board of Appeal’s assessment is incompatible with the spirit of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.

28 The Board of Appeal noted, in paragraph 32 of the contested decision, that the earlier national mark consisted of the word ‘mobile’ framed within lines forming a rectangle reminiscent of a registration plate. As the Board of Appeal noted, the figurative elements forming the frame in question are rather weak. Those elements give the impression of a simple framing of the word ‘mobile’, that word being the component most likely to attract attention and of being remembered by the consumer. If that type of framing is, furthermore, perceived as a registration plate, as the applicant and EUIPO argue, that interpretation is in line with the message conveyed by the word ‘mobile’, which refers to something that can move. Furthermore, the word ‘mobile’ is, for the relevant public, visually and phonetically very similar to its Bulgarian equivalent ‘мобилен’, which also refers to something that can move. Therefore, even if, in the mind of the relevant public, the word ‘mobile’ might refer to a mobile telephone, it is just as likely that it will refer to a mobile item, without there being an immediate and obvious relationship with the advertising services taken into account in the examination of the application for a declaration of invalidity of the mark at issue. In that context, since the Board of Appeal did not find that genuine use had been demonstrated in respect of the services in Class 42 listed in the second indent of paragraph 7 above, the applicant’s argument that the word ‘mobile’ is descriptive of those services is irrelevant. Consequently, as the Board of Appeal noted, and contrary to the applicant’s argument, the distinctive character of the earlier national mark is mainly focused on the word ‘mobile’.

29 As the Board of Appeal set out in paragraph 37 of the contested decision, the word sign mobile.bg reproduces the dominant element of the earlier national mark, namely the word ‘mobile’, and does not reproduce its frame, which is only a banal element. The same is true of the added element ‘.bg’, which will be perceived as a simple indication of the top level domain name associated with Bulgaria. That very common short reference does not have a particular distinctive character, since it merely conveys the message that a Bulgarian website is associated with the sign ‘mobile’. In view of the increased similarity following from those assessments on a visual, phonetic and conceptual level, the Board of Appeal did not err in finding that the sign mobile.bg is broadly equivalent to the earlier national mark, meaning that it is a form which does not alter the distinctive character of the earlier national mark, within the meaning of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.

the applicant submits that the use of the light-blue colour on the left-hand side and in the full stop between ‘mobile’ and ‘bg’ alters the distinctive character of the earlier national mark because of the difference between the contrast created by that colour and the contrast created by the use of the colour black in the registered form of that mark. Furthermore, according to the applicant, the difference in distinctive character is demonstrated by the fact that an internet search based on the words ‘mobile’ and ‘mobile.bg’ or even ‘mobile.de’ does not produce the same results.

31 Last, the applicant argues that the intervener is the proprietor of a Bulgarian mark identical to the figurative mark reproduced in the previous paragraph. According to the applicant, the possibility for the proprietor of a registered trade mark to rely on its use in a form which differs from that in which it was registered by elements which do not affect its distinctive character, even if that different form is itself registered as a mark, exists only where that latter mark was registered after the mark on which the application for a declaration of invalidity is based.

32 That latter argument must be rejected at the outset. According to point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, ‘use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor’ constitutes ‘genuine use’. That provision therefore does not lay down a condition that the registration of the sign used as a trade mark must be subsequent to the registration of the trade mark on which the application for a declaration of invalidity is based. Consequently, even if the intervener is the proprietor of a national figurative mark identical to that reproduced in paragraph 30 above, the registration of which took place prior to that of the mark on which the application for a declaration of invalidity is based — in the present case the earlier national mark — that fact does not in any way affect the application of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 in the present case.

33 Moreover, contrary to what the applicant argues, it must be held that the lighter colour used on the far left-hand side and for the full stop separating the word ‘mobile’ and the abbreviation ‘bg’ is a negligible difference which does not alter the distinctive character of the earlier national mark, since it is only a variation of minor stylisation in respect of the frame surrounding the word ‘mobile’, the main and dominant element of the earlier national mark. The same is true of the positioning of the element ‘.bg’ on the grounds set out in paragraph 29 above. In those circumstances, the fact that an internet search based on the terms ‘mobile’, ‘mobile.bg’ or ‘mobile.de’ does not produce the same results follows from the technical modalities of how online search engines function and does not affect the application of Article 18(1) of Regulation 2017/1001, which focuses on the distinctive character of the registered mark and of the sign used, taking all of their elements into account.

34 Since the earlier national mark and the sign reproduced in paragraph 30 above are broadly equivalent in that, first, they have a dominant word element in common, second, they also have in common the principles governing their graphic representation, such as the font style and the framing, and, third, they differ in secondary, short and non-decisive elements as regards their distinctive character, the Board of Appeal was entitled to conclude, in paragraphs 32 to 36 of the contested decision, that the use of the sign reproduced in paragraph 30 above amounted to use of the earlier national mark within the meaning of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.

the applicant submits that the addition of the letter ‘n’ in blue leads the relevant public to understand that sign as referring to the Bulgarian word meaning ‘mobile’. According to the applicant, the sign in question is therefore clearly different the earlier national mark from a conceptual point of view, but also from a phonetic point of view, in view of the addition of the element ‘.bg’.

36 In that regard, the assessments made in paragraphs 33 and 34 above remain relevant, so that, contrary to what the applicant argues, the sign reproduced in paragraph 35 above is broadly equivalent to the earlier national mark. Furthermore, the added letter ‘n’, in a different colour, differs from the word ‘mobile’, the dominant element of the earlier national mark, while at the same time forming with it the Bulgarian equivalent of that word. Consequently, as the Board of Appeal noted in paragraphs 38 and 39 of the contested decision, the use of that sign does not alter the distinctive character of the earlier national mark.

37 The Board of Appeal therefore did not err in finding, in paragraphs 36, 37 and 39 of the contested decision, read in conjunction with paragraph 30 of that decision, that the proof relating to the use of the signs reproduced in paragraph 12 above constitutes proof of use of the earlier national mark, such that the first plea in law must be rejected.

The second plea in law, alleging infringement of Article 19(2) and Article 10(3) of Delegated Regulation 2018/625, read in conjunction with Article 64(2) and (3) of Regulation 2017/1001

38 The applicant argues that the evidence submitted by the intervener before the Cancellation Division and the Board of Appeal does not demonstrate genuine use of the earlier national mark. In particular, first, the evidence submitted by the intervener as regards use of the earlier national mark through its website demonstrates only use of the word sign mobile.bg as a domain name and not as a mark for the services offered by the intervener. Second, the applicant disputes that the invoices submitted show use of the earlier national mark with regard to the relevant public for advertising services in connection with vehicles, which also counteracts the probative value of certain written statements submitted by the intervener. The same applies to the price lists and the Google Analytics statistics submitted by the intervener, which do not demonstrate such use. Third, the applicant notes that certain screen captures submitted by the intervener, which show the two figurative signs reproduced in paragraph 12 above, are not dated, with the result that it is impossible to determine whether they fall within the reference period. Furthermore, proof of use of those signs in some specialised magazines in the vehicles sector was not accompanied by information on the corresponding turnover.

39 It must be stated at the outset that, in view of Article 81(2)(d) and (i) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation No 207/2009 on the European Union trade mark and repealing Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1) and Article 82(2)(d) and (i) of Delegated Regulation 2018/625, the applicant’s reference to Article 10(3) and to Article 19(2) of the latter regulation actually refers to Rule 22(3) and Rule 40(6) of Regulation No 2868/95. Those latter provisions of Regulation No 2868/95, which contain provisions which are essentially identical to those put forward by the applicant, are applicable ratione temporis in the present case (see paragraph 8 above).

40 There is genuine use of a mark where it 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 was registered, in order to create or preserve an outlet for those goods or services, but genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (judgment of 12 May 2016, mobile.de, T‑322/14 and T‑325/14, not published, EU:T:2016:297, paragraph 63).

41 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. 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 (judgment of 12 May 2016, mobile.de, T‑322/14 and T‑325/14, not published, EU:T:2016:297, paragraph 64).

42 In the present case, it should be recalled at the outset that the Board of Appeal found, in paragraph 59 of the contested decision, that the intervener had adduced proof of genuine use of the earlier national mark with regard to advertising services in connection with motor vehicles in Class 35.

43 Furthermore, it is apparent from paragraphs 6 and 40 to 58 of the contested decision that the Board of Appeal based that finding inter alia on the following elements produced by the intervener:

– several copies of a magazine specialising in vehicle advertising, distributed in Bulgaria and showing the sign

– two screen captures of the section on the general conditions of the website ‘mobile.bg’, as it appeared on 22 February 2010 and on 6 May 2012, showing the same sign;

– declarations of the director of the intervener regarding the services offered through the website ‘mobile.bg’;

– screen captures showing the price lists relating to the publishing of advertisements on the website ‘mobile.bg’ under the figurative sign reproduced in the first indent above, as they appeared on several dates between 2009 and 2013;

– a Google Analytics report including data on the number of sessions, users and page views relating to the website ‘mobile.bg’ covering the period between 1 January 2009 and 31 December 2013;

– a selection of invoices regarding advertising services covering the period between June 2008 and May 2013;

– several declarations by managers of car sales undertakings proving that the undertakings in question offer their cars for sale through the website ‘mobile.bg’;

– a series of declarations summarising the data from the intervener’s accounting records regarding the turnover relating to the services offered through the website ‘mobile.bg’ between January 2009 and May 2013;

– a declaration by the intervener’s chief accountant summarising the total number of invoices issued by the intervener to clients using the services offered through the website ‘mobile.bg’ between January 2008 and May 2013.

44 In that regard, it should be noted that, first, the copies of several editions of the magazine ‘mobile.bg’ specialising in vehicle advertising, to which the Board of Appeal refers in paragraph 40 of the contested decision and which cover several years of the relevant period, show, on the cover, the sign reproduced in the first indent of paragraph 43 above.

45 Second, the selected invoices which have been produced refer to the provision of advertising services on the website ‘mobile.bg’, which, according to a certificate dated 1 September 2011 issued by the registry of ‘.bg’ domain names and referred to in the first indent of paragraph 6 of the contested decision, has belonged to the intervener since March 2002. The invoices in question were issued for an overall sum of approximately 66 000 Bulgarian leva (BGN), that is between EUR 33 700 and EUR 33 800 on average for the reference period. They cover a period between June 2008 and May 2013, that is to say, within the reference period. They concern advertising services provided via the website ‘mobile.bg’ to various clients in Bulgaria. The names of the majority of those clients refer to the motor vehicle retail industry. It is also apparent from those documents that the intervener produced at least one invoice for each month between June 2008 and May 2013, the only exceptions being September 2009 and February 2010, for which no invoice has been produced. The invoices in question indicate sums between BGN 296.57 and BGN 3 600.

46 Third, the screen captures referred to in the second and fourth indents of paragraph 43 above clearly show the sign reproduced in the first indent of that paragraph. It is also apparent from those screen captures that the website ‘mobile.bg’ operates as an advertising forum promoting the sale of motor vehicles intended both for professionals in that sector and for individuals. Fourth, the prices in the lists referred to in the fourth indent of paragraph 43 above concern advertising services offered under the sign reproduced in the first indent of that paragraph. Fifth, the Google Analytics report referred to in the fifth indent of paragraph 43 above shows, inter alia, that the website ‘mobile.bg’ had more than 340 million sessions between 2009 and 2013 and that, at each session, approximately 24 pages of that website were visited on average.

47 In view of all of those elements, the arguments put forward by the applicant in support of the present plea in law must be rejected.

48 Contrary to what the applicant argues, the documents illustrating the content of the website ‘mobile.bg’ during the relevant period (see paragraph 46 above) show first and foremost, in a clear and visible manner, the sign reproduced in the first indent of paragraph 43 above. The display of that sign makes it clear that the services offered via that website are offered under the sign in question, which thus operates as the element indicating their commercial origin. The same is true of the specialist magazine ‘mobile.bg’ which repeatedly features the same sign on the cover. Consequently, in view of the assessment in paragraph 37 above, the Board of Appeal did not err in finding, in paragraphs 46, 54 and 55 of the contested decision, that the invoices produced demonstrate actual use of the earlier national mark, within the meaning of paragraph 39 above, for the provision of advertising services for vehicles.

49 In that context, the Board of Appeal was also correct to take into account, in paragraphs 40, 44, 52 and 53 of the contested decision, the declarations referred to in the third, eighth and ninth indents of paragraph 43 above, in order to conclude, in paragraph 55 of that decision, that a significant volume of transactions had been carried out under the earlier national mark during the reference period.

50 The veracity of those declarations is not called into question by the applicant’s arguments that the description of the services offered to vehicle retail undertakings featuring on the invoices produced is not accurate and does not demonstrate use of the earlier national mark. As is apparent from the declarations made by the managers of the undertakings in question (see the seventh indent of paragraph 43 above), those undertakings used the intervener’s services by visiting the website ‘mobile.bg’ and in particular in a space reserved for each of those undertakings under a special web address with the domain name ‘mobile.bg’. As has been set out in paragraph 48 above, the website ‘mobile.bg’ shows first and foremost, in a clear and visible manner, the sign reproduced in the first indent of paragraph 43 above. It must be held that the intervener’s offer of services to the undertakings in question is made under that sign, which amounts to use of the earlier national mark (see paragraph 37 above).

51 Thus, the fact that certain screen captures, produced by the intervener in the annex to four declarations of its manager dated 12 October 2011 and to which the Board of Appeal referred in paragraph 40 of the contested decision, do not clearly show their dates does not affect the probative value of the other elements on which the Board of Appeal relied.

52 Furthermore, the fact that the price lists made available online on the ‘mobile.bg’ website demonstrate that there were commercial transaction offers and not completed commercial transactions does not in any way affect the Board of Appeal’s conclusion. As has been indicated in paragraph 39 above, genuine use of a mark is intended to create or preserve an outlet for goods or services in respect of which the mark has been registered. That is precisely the function of a services price list published under the mark in question.

53 As regards the Google Analytics report (see the fifth indent of paragraph 43 above), the reference to the two addresses ‘mobilen.bg’ and ‘mobile.bg’ must be understood as meaning that the statistical data in that report concern the same website, which appears under those two web addresses. It follows that the applicant’s argument that there is doubt as to whether the report in question concerns the website ‘mobile.bg’ must be rejected. The same is true of the argument that the report in question does not illustrate the configuration of the website ‘mobile.bg’ during the reference period. The configuration at issue relates to the screen captures referred to in the second and fourth indents of paragraph 43 above.

54 It must be held that the abovementioned elements demonstrate an extended and frequent commercial exploitation of the earlier national mark during the relevant period in Bulgaria. That exploitation occurred, first, through the visible display of the figurative sign reproduced in the first indent of paragraph 43 above, on the website offering advertising services for motor vehicles and on the cover of specialist magazines on the same subject and, second, through the use of the words ‘mobile.bg’ as a web address and as an element referring to the forum through which advertising services were offered and which is indicated on the invoices produced. That exploitation is consistent with those uses considered to be justified in the car advertising sector in order to maintain or create market shares for that type of service and therefore meets the requirements relating to the period, geographical area, nature and extent of use.

55 Consequently, the Board of Appeal did not err in taking the view, in an assessment taking account of all of the relevant elements, that the extent of use of the earlier national mark is in line with the genuine use required by Article 64(2) of Regulation 2017/1001. The second plea in law must therefore be rejected.

The third plea in law, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) and (2)(a)(ii) of that regulation

56 In support of the third plea in law, the applicant submits, as regards the similarity of the services, first, that the Board of Appeal erred in taking the view that the ‘advertising services in connection with vehicles’ covered by the earlier national mark are similar to the ‘gathering of information’ services covered by the mark at issue. In particular, according to the applicant, to find, as the Board of Appeal did in paragraph 68 of the contested decision, that the gathering of information is a service included in that of advertising is a result of an unduly extensive perception of the concept of advertising. On the other hand, in the mind of the consumer, the gathering of information is perceived as ‘providing information in a neutral manner’. Second, the applicant submits that ‘providing internet platforms for the buying and selling of vehicles’, an IT service also covered by the mark at issue, is to be distinguished from advertising services, since, in the mind of the relevant public, those two types of service are not offered by the same operators. With regard to the similarity of the signs, the applicant submits that the signs at issue are not similar, since the suffix ‘.ro’ forming part of the mark at issue distinguishes it from the earlier national mark from a phonetic and conceptual point of view.

57 In that regard, it must be held that, as EUIPO submitted, the gathering of information is a preliminary phase necessary for advertising goods. As regards in particular advertising in connection with vehicles, that service requires information on the offer of such goods for sale to be gathered before being made available to the public who might be interested in purchasing the goods. Therefore, the Board of Appeal was correct to find, in paragraph 68 of the contested decision, that the gathering of information is a service similar to that of advertising.

58 With regard to the argument based on the alleged absence of similarity between ‘providing internet platforms for the buying and selling of vehicles, vehicle trailers and vehicle accessories’ covered by the earlier national mark and advertising services in connection with vehicles, covered by the mark at issue, it must be pointed out, as the Board of Appeal noted in paragraph 69 of the contested decision, that such a platform may be the indispensable means by which advertising is carried out. That may be the case regardless of whether the platform in question is made available to a professional or to an individual for the purposes of the sale pursued. It follows that the services in question have links of structural complementarity and must, as the Board of Appeal noted in the same paragraph of the contested decision, be considered to be similar.

59 Those assessments are valid irrespective of whether the Board of Appeal was correct to take the view, in paragraph 56 of the contested decision, that it had been necessary to find that genuine use of the earlier national mark was established only in respect of advertising services in connection with vehicles. In that regard, if 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, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 46). However, the concept of ‘sub-categories capable of being viewed independently’ presupposes that the goods or services in those sub-categories are of such a different nature that a finding of genuine use for some amounts to genuine use for others would unduly extend the protection of that mark.

60 Contrary to what the Board of Appeal suggested in paragraph 58 of the contested decision, advertising services in connection with vehicles is not different from any other advertising service to the point that they should be considered to be a sub-category of advertising services. However, it must be held that the findings in paragraphs 56 and 57 above are also valid if genuine use of the earlier national mark is considered to be demonstrated for advertising services in general and not only for advertising services in connection with vehicles. It follows that the incorrect restriction of the services in respect of which the Board of Appeal found that that proof had been adduced does not affect the lawfulness of the contested decision.

61 Finally, the applicant’s argument that the suffix ‘.ro’ makes the mark at issue phonetically and conceptually different from the earlier national mark must also be rejected. As the Board of Appeal noted in paragraph 73 of the contested decision, that suffix will be perceived as a simple top level domain name associated with Romania. That very common short reference does not have a particular distinctive character since it merely conveys the message that a Romanian website is associated with the sign ‘mobile’. As all the other elements of the signs at issue are identical, the Board of Appeal did not err in finding them, in paragraphs 74 to 77 of the contested decision, to be very similar.

The fourth plea in law, alleging infringement of Article 4(3) TEU, read in conjunction with Article 59(1)(b) and Article 61(2) of Regulation 2017/1001

63 The applicant submits that the intervener obtained the registration of the earlier national mark in bad faith, consisting not only in infringement of the earlier marks belonging to the applicant, but also in imitation of the applicant’s business model.

64 However, as the Board of Appeal noted in paragraph 84 of the contested decision, only the Bulgarian bodies are competent to assess whether the applicant’s arguments are well founded in law and in fact in proceedings challenging the validity of the registration of the earlier national mark. In that regard, the applicant merely indicates that ‘it was not possible’ to bring an application for a declaration of invalidity of the earlier national mark ‘on the ground that the trade mark had been filed in bad faith’ without explaining why it was not possible.

65 In that context, Article 4(3) TEU, regarding the obligation of sincere cooperation between the European Union and its Member States, is a manifestly irrelevant provision in the present case. The same is true of Article 59(1)(b) of Regulation 2017/1001, regarding the invalidity of an EU trade mark on the grounds of bad faith when the application for the trade mark is filed. Similarly, Article 61(2) of the same regulation, which concerns limitation in consequence of acquiescence by a proprietor of an earlier national mark in order to request the invalidity of a subsequent EU trade mark, is equally ineffective, since the applicant is not relying on circumstances that show that the intervener acquiesced within the meaning of that provision, nor does it claim to have relied on such circumstances before the Board of Appeal.

66 It follows that the fourth plea in law must also be rejected and the action therefore must be dismissed in its entirety.

67 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 and the intervener.

2. Orders mobile.de GmbH to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Droujestvo S Ogranichena Otgovornost ‘Rezon’.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> mobile.de v EUIPO - Droujestvo S Ogranichena Otgovornost "Rezon" (mobile.ro) (EU trade mark - Judgment) [2019] EUECJ T-412/18 (12 July 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T41218.html Cite as: ECLI:EU:T:2019:516, [2019] EUECJ T-412/18, EU:T:2019:516, [2019] ETMR 53

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