Dekoback v EUIPO - DecoPac (DECOPAC) (EU trade mark - Judgment) [2020] EUECJ T-80/19 (05 March 2020)

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(EU trade mark — Revocation proceedings — EU word mark DECOPAC — Genuine use of the mark — Article 51(1)(a) and (2) of Regulation (EC) No 207/2009 (now Article 58(1)(a) and (2) of Regulation (EU) 2017/1001) — Evidence — Article 75, second sentence, of Regulation No 207/2009 (now Article 94(1), second sentence, of Regulation 2017/1001) — Right to be heard)

Dekoback GmbH, established in Helmstadt-Bargen (Germany), represented by V. von Moers, lawyer,

European Union Intellectual Property Office (EUIPO), represented by P. Sipos, acting as Agent,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 26 November 2018 (Case R 1795/2017-5), relating to revocation proceedings between Dekoback and DecoPac,

composed of A. Kornezov, President, E. Buttigieg and G. Hesse (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 12 February 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 1 April 1996, DecoPac, Inc. 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 goods and services in respect of which registration was sought are in Classes 29, 30 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

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

– Class 35: ‘Product merchandising and consulting services relating thereto for bakeries’.

4 On 24 November 1997, the EU trade mark application was published in Community Trade Marks Bulletin No 29/1997. On 16 June 1998, the sign DECOPAC was registered as an EU trade mark under the number 000160747.

5 On 27 October 2015, the applicant, Dekoback GmbH, filed an application for revocation of that mark with EUIPO pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001). In that application, the applicant claimed that the contested mark had not, within a continuous period of five years, been put to genuine use in the European Union in connection with any of the goods and services in respect of which it had been registered.

6 On 9 May 2016, DecoPac submitted observations and furnished evidence seeking to prove genuine use of the contested mark. As was stated, in essence, by the Board of Appeal in the contested decision, the evidence submitted consisted of the following documents:

– an affidavit provided by the chief executive officer of DecoPac, confirming that DecoPac is the owner of the company G T Culpitt & Son (Holding Ltd.), of which the company Culpitt Ltd., established in the United Kingdom, is a wholly owned subsidiary. Culpitt Ltd. is authorised to import and distribute goods bearing the contested mark (exhibit 1);

– invoices issued by Culpitt between 24 January 2011 and 16 April 2015, referring to goods delivered to customers in Germany, Austria, Belgium, Bulgaria, Cyprus, Denmark, Spain, Estonia, Finland, France, Greece, Hungary, Ireland, Iceland, Italy, Malta, the Netherlands, Portugal, the Czech Republic, Romania, the United Kingdom, Slovakia, Slovenia and Sweden (exhibits 2 to 5);

– photographs dated 14 January 2016 and 9 February 2016 and undated photographs showing the word sign DECOPAC being used on packaging and labels, for example in respect of the following goods: ‘Decoset — little pirates’, ‘DecoPics — sunglasses’, ‘DecoSet — queen crown & scepter’, ‘DecoSet — fisher with action fish’, ‘DecoSet — soccer-kick off-boys’, ‘DecoPics — witch and skeleton’ and ‘rings-bunny & tails’ (exhibit 6);

– excerpts from the following catalogues: Culpitt 2013-2014 catalogue, Culpitt 2014 ‘Halloween and Christmas’ catalogue, Culpitt 2014-2015 catalogue, Culpitt 2015 ‘Halloween and Christmas’ catalogue and Culpitt 2016 ‘Party and Spring’ catalogue. In all those catalogues, the reference to DecoPac is in the footnotes, in which it is stated that DecoPic, DecoPlac and DecoSet, the trade marks that appear on goods such as those in these catalogues, are trade marks of DecoPac (exhibits 7 to 11).

7 By decision of 14 June 2017, the Cancellation Division declared DecoPac’s rights to be revoked in their entirety on the ground of lack of genuine use, with effect as from 27 October 2015.

8 On 14 August 2017, DecoPac filed a notice of appeal before the Board of Appeal of 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.

9 On 16 October 2017, DecoPac submitted, in particular, the following items of evidence:

– 78 invoices, bearing the heading DECOPAC, which had been issued by DecoPac to Culpitt (exhibit 13);

– 2 invoices, bearing the heading DECOPAC, which had been sent by DecoPac to the applicant (exhibit 14);

– 11 invoices, bearing the heading DECOPAC, which had been sent by DecoPac to customers in Greece (exhibit 15);

– 34 invoices, bearing the heading DECOPAC, which had been issued by DecoPac to customers in the United Kingdom (exhibit 16);

– screenshots of DecoPac’s website dating from 2011 to 2015 (exhibit 17) stating, in particular, that both DecoPac itself and Culpitt deliver decorations within the European Union;

– 13 photographs of packaging (plastic bags) and labels for inedible goods, two of which packages bear the dates of 20 December 2010 and 9 September 2010 and the rest of which do not bear any date (exhibit 21);

– samples of cardboard boxes (edible goods) which do not bear any date (exhibit 22);

– a screenshot of the website of the encyclopaedia Wikipedia with regard to the expression ‘sugar paste’ (exhibit 23);

– a screenshot of the do-it-yourself website Craftsy, regarding ‘gum paste’ (exhibit 24);

– an affidavit from the chief executive officer of DecoPac for DecoPac and for Culpitt (exhibits 25 and 26);

10 By letter of 20 July 2018, the rapporteur of the Board of Appeal requested, in particular, that DecoPac explain the link between the goods referred to on the invoices that it had submitted and the photographs of packaging that it had provided. By letter dated 20 September 2018, DecoPac replied and provided, inter alia, a correlation table showing the link between the goods taken into account on the invoices, the excerpts from the catalogues, the samples of instruction cards and the photographs of packaging.

11 By decision of 26 November 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO partially upheld the appeal brought by DecoPac and annulled the Cancellation Division’s decision in so far as the Cancellation Division had declared the contested EU trade mark to be revoked in respect of the goods in Class 30, namely ‘edible and inedible decorations for cakes and pastries’. The Board of Appeal dismissed the appeal as to the remainder and ordered each party to bear its own costs relating to the proceedings before EUIPO.

12 In the first place, the Board of Appeal found that DecoPac had furnished proof of genuine use of the contested mark in respect of the period from 27 October 2010 to 26 October 2015 (‘the relevant period’).

13 In the second place, the Board of Appeal took the view that, as most of the evidence of use submitted by DecoPac was dated within the relevant period or bore a date that was very close to that period, that evidence contained sufficient indications concerning the time of use.

14 In the third place, as regards the place of use, the Board of Appeal observed that it was clear from the evidence furnished that the contested mark had been put to use in many Member States, such as Austria, Slovakia, Belgium, Italy, Spain, Germany, Portugal, Malta, Denmark, the Netherlands, Hungary, Sweden and Greece.

15 In the fourth place, the Board of Appeal found, in essence, that, as regards the extent of use, the overall analysis of the documents provided by DecoPac showed that, in the light of, in particular, the characteristics of the goods concerned, the length of the period during which the mark had been used and the frequency of use, the contested mark had been put to sufficiently extensive use in relation to the commercial volume of the overall use.

16 In the fifth place, as regards the nature of use, the Board of Appeal found that the contested mark not only constituted a company name, but also functioned as a house mark indicating the commercial origin of the goods concerned. Furthermore, it took the view that the form in which the mark had been used in the evidence, a logo which was slightly different from the word sign DECOPAC, should be accepted for the purposes of establishing genuine use.

– declare the trade mark DECOPAC, which has been registered for DecoPac under the number 000160747, to be cancelled in its entirety.

19 It must be pointed out, at the outset, that Regulation No 207/2009 was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), which entered into force on 23 March 2016. Regulation No 207/2009, as amended, was repealed and replaced, with effect from 1 October 2017, by Regulation 2017/1001.

20 Furthermore, as a transitional measure, Article 80 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), provides that Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) and Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 1996 L 28, p. 11) are to continue to apply to ongoing proceedings where Regulation 2018/625 does not apply, until such proceedings are concluded.

21 In view of the date on which the application for revocation at issue was filed, namely 27 October 2015, which is decisive for the purposes of identifying the law applicable, the present dispute is governed by the provisions of Regulation No 207/2009, Regulation No 2868/95 and Regulation No 216/96.

22 In support of its action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of the right to be heard and, secondly, lack of genuine use of the contested mark.

23 The first plea is divided into two parts, the first of which relates to the non-disclosure of certain confidential items of information and the second of which alleges infringement of the right to be heard in that the applicant was not given the opportunity to present its comments on the observations that DecoPac submitted on 20 September 2018.

24 The applicant submits, in the first place, that the Board of Appeal, erroneously and without providing sufficient reasoning, agreed to treat certain items of business information submitted by DecoPac, in particular those submitted on 20 September 2018, as confidential. The applicant maintains that, after the Board of Appeal took cognisance of that information, it changed its assessment regarding the genuine use of the contested mark, to the detriment of the applicant.

25 Furthermore, it argues that, according to the case-law of the Court of Justice, inter alia the judgment of 19 June 2018, Baumeister (C‑15/16, EU:C:2018:464), the confidentiality of business documents expires after a period of five years. It maintains that, as a result, all the data dating from before 2015 should, in any event, have been disclosed. The applicant submits, in essence, that, owing to the Board of Appeal’s acceptance of certain items of information as confidential, its rights of defence have been infringed

26 EUIPO contends, in essence, that the confidentiality of the documents is not capable of placing the applicant at a disadvantage, since all the documents that came from DecoPac, including the observations dated 20 September 2018, were notified to the applicant in their entirety.

27 It must be pointed out at the outset that Article 88(4) of Regulation No 207/2009 (which was replaced by Article 114(4) of Regulation 2017/1001), read in conjunction with Rule 88(c) of Regulation (EC) No 2868/95, provides that files may contain certain documents which are withheld from inspection, in particular if the party concerned showed a special interest in keeping them confidential.

28 In the present case, it is apparent from the contested decision that, for the purposes of preserving the confidential nature of certain data and certain items of information relating to DecoPac’s customers, in accordance with the provisions referred to in paragraph 27 above, the Board of Appeal, in the contested decision, described certain items of evidence that had been submitted by DecoPac only in general terms. In that regard, it must, first, be pointed out that those provisions concern the non-disclosure of certain documents or certain items of business information which are considered to be confidential vis-à-vis third parties and not vis-à-vis parties to proceedings pending before EUIPO. Consequently, the confidentiality which the Board of Appeal granted in the contested decision was not capable of preventing the applicant from having access to the documents and business information which DecoPac had placed on the file. In the present case, EUIPO points out that all of the documents submitted by DecoPac, including those which were considered to be confidential vis-à-vis third parties and, in particular, the observations of 20 September 2018, were notified to the applicant in their entirety, a point which has not been disputed by the applicant. Secondly, as regards the description, in general terms, in the contested decision of the evidence submitted by DecoPac, the applicant has also not specified which aspects or passages of the contested decision that complaint relates to or explained in what way that confidential treatment was detrimental to it.

Infringement of the right to be heard in that the applicant was not given the opportunity to present its comments on the observations that DecoPac submitted on 20 September 2018

30 The applicant submits, in the second place, that the Board of Appeal erred in not hearing it following the submission of the information and observations which DecoPac submitted on 20 September 2018.

31 EUIPO confirms that the applicant did not have the opportunity to react to the observations that DecoPac submitted on 20 September 2018. However, it maintains that those observations contain only clarifications that were sought by the rapporteur of the Board of Appeal in relation to the information and evidence which were already available in the case file.

32 It must be stated that the applicant was not given an opportunity to reply to the observations that DecoPac submitted on 20 September 2018.

33 As regards, in particular, EU trade mark law, it must be borne in mind that, according to the second sentence of Article 75 of Regulation No 207/2009, decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. Under Article 63(2) of that regulation, the Board of Appeal is to invite the parties, in the examination of the appeal, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself. Those provisions lay down the general principle of protection of the rights of defence. That principle includes the right to be heard, which is set out in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union (see, to that effect, judgment of 7 September 2017, VM v EUIPO — DAT Vermögensmanagement (Vermögensmanufaktur), T‑374/15, EU:T:2017:589, paragraphs 119 and 120 (not published and the case-law cited), and of 20 March 2019, Prim v EUIPO — Primed Halberstadt Medizintechnik (PRIMED), T‑138/17, not published, EU:T:2019:174, paragraphs 24 and 25).

34 Under that principle, any person adversely affected by a decision of a public authority must have been afforded the opportunity effectively to make its point of view known before the adoption of that decision. The right to be heard extends to all the matters of fact or of law which form the basis of the decision, but not to the final position which the public authority intends to adopt (see judgment of 1 June 2016, Grupo Bimbo v EUIPO (Shape of a bar with four circles), T‑240/15, not published, EU:T:2016:327, paragraph 61 and the case-law cited).

35 It must be pointed out, first of all, that, in the present case, the documents of 20 September 2018 were submitted by DecoPac in response to a letter from the rapporteur of the Board of Appeal dated 20 July 2018. In that letter, the rapporteur requested that DecoPac provide the Board of Appeal with explanations regarding the link between the invoices and the photographs of packaging, bearing the contested mark, of the goods concerned which had been submitted on 5 May 2016 and 16 October 2017 as evidence of genuine use of that mark. Furthermore, the rapporteur pointed out in that letter that some of the photographs submitted did not bear a date or bore a date which was subsequent to the relevant period.

36 In its letter of reply dated 20 September 2018, DecoPac provided some examples of goods which appeared in the photographs that were already contained in the case file and the references to those goods on the invoices relating to them. With regard to the other goods, it submitted a correlation table for the purpose of showing the link between the goods taken into account on the invoices, the photographs of packaging, the excerpts from the catalogues and the samples of instruction cards. Next, DecoPac explained that the dates shown on certain photographs were irrelevant. It submitted that the goods shown in the photographs existed and were sold during the relevant period before the dates on which the photographs were taken.

37 It must be stated that that letter and the attached table do not contain any new items of evidence in comparison with the evidence that had already been submitted and was included in EUIPO’s case file, as DecoPac also pointed out on page 4 of that letter, evidence on which the applicant had therefore had an opportunity to present its comments, but only contain explanations seeking, in particular, to show the link between the items of evidence which had already previously been placed on the file. The product numbers that are referred to on the invoices are also visible in the images of the corresponding goods that appear in the catalogue excerpts, in the samples of instruction cards or in the photographs of the packaging of those goods contained in the case file. The table thus represents only an overview of the correspondence between the goods that were taken into account on the invoices submitted and the goods that were photographed, since all the images and invoices referred to in the letter of 20 September 2018 were already included in the case file.

38 Furthermore, it is apparent from EUIPO’s case file that it would have been possible, in principle, for the Board of Appeal itself to establish the links between the various items of evidence that were established by DecoPac in its observations of 20 September 2018, since the same serial numbers for the goods concerned appear in the various items of evidence and link them.

39 Consequently, the applicant was in a position to present its comments on all the matters of fact and of law which form the basis of the contested decision, including all the items of evidence in EUIPO’s case file, and the observations of 20 September 2018 are not decisive with regard to the outcome of the proceedings for the reasons explained in paragraphs 37 and 38 above. In that regard and in any event, the applicant has not in any way shown and it has not been established that, if it had been given an opportunity to make observations in response to DecoPac’s letter of 20 September 2018, it would have been better able to defend itself and influence the Board of Appeal’s assessment (see, to that effect, judgment of 26 March 2014, Still v OHIM (Fleet Data Services), T‑534/12 and T‑535/12, not published, EU:T:2014:157, paragraph 35), let alone that it would have been able to put forward arguments capable of altering the outcome of the proceedings (see, to that effect, judgment of 7 September 2017, Vermögensmanufaktur, T‑374/15, EU:T:2017:589, paragraph 133 (not published and the case-law cited)). It follows that the applicant’s right to be heard during the appeal proceedings has not been infringed.

40 It follows that the second part of the first plea must also be rejected as unfounded and, in consequence, the first plea must be rejected in its entirety.

41 The applicant relies on a second plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009. That plea consists of four parts relating, respectively, to the evidential value of the invoices with regard to proving genuine use of the contested mark during the relevant period, the Board of Appeal’s allegedly erroneous finding that the contested mark was used as a ‘house mark’, the alleged lack of evidence that the goods concerned had reached the end consumers and the alleged lack of distinction between genuine use of the contested mark in connection with edible and inedible decorations for cakes and pastries, since the evidence relates solely to inedible decorations.

42 It must be pointed out at the outset that Article 51(1) of Regulation No 207/2009 provides, inter alia, that the rights of the proprietor of an EU trade mark must be declared to be revoked if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

43 According to settled case-law, there is genuine use of a trade mark, for the purposes of Article 51(1)(a) of Regulation No 207/2009, where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see judgment of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 38 and the case-law cited). In addition, the condition relating to genuine use of the contested mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39; see also, to that effect, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).

44 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 use of the mark in the course of trade is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market share 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 order of 11 September 2019, Camomilla v EUIPO, C‑68/19 P, not published, EU:C:2019:711, paragraph 12 and the case-law cited).

45 According to Rule 22(2) of Regulation No 2868/95, the indications and evidence for the furnishing of proof of use are to consist of indications concerning the place, time, extent and nature of use of the trade mark for the goods and services in respect of which it is registered.

46 However, that rule does not state that each item of evidence must necessarily give information about all four elements to which proof of genuine use must relate. It cannot be ruled out that an accumulation of items of evidence may allow genuine use to be proved, even though each of those items of evidence, considered in isolation, would be insufficient (see, to that effect, judgment of 7 November 2019, Intas Pharmaceuticals v EUIPO — Laboratorios Indas (INTAS), T‑380/18, EU:T:2019:782, paragraph 62 (not published and the case-law cited)).

47 By the various arguments which it puts forward in the context of its second plea, arguments which have been summarised in paragraph 41 above, the applicant disputes, in essence, the Board of Appeal’s findings regarding the extent, nature and place of use of the contested mark.

48 In the first place, the applicant disputes the evidential value of the invoices which DecoPac submitted in order to establish use of the contested mark. The applicant submits, first, that, of the 47 invoices bearing the heading ‘DECOPAC’ that were sent by DecoPac to external customers (exhibits 14 to 16), only 33 invoices fall within the relevant period. It maintains that those invoices were sent only to customers established in Greece and the United Kingdom and represent insignificant amounts. The applicant submits, secondly, that the 78 invoices bearing the heading ‘DECOPAC’ that DecoPac sent to Culpitt (exhibit 13) should be considered to be internal and irrelevant documents, since that company is a wholly owned subsidiary of DecoPac.

49 As regards the extent of use, which the applicant calls into question in the present case by means of its argument relating to the invoices, it must be borne in mind that the question whether use is quantitatively sufficient to maintain or create market share for the goods or services protected by the mark depends on a number of factors and on a case-by-case assessment. The characteristics of those goods or services, the frequency or regularity of the use of the trade mark, whether the mark is used for the purpose of marketing all the identical goods or services of the undertaking which is the proprietor of that mark or merely some of them, or evidence of use of the mark which the proprietor is able to provide, are among the factors which may be taken into account (see judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 71 and the case-law cited).

50 It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule, which would not allow EUIPO or, following the bringing of an action, the Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down. Thus, when it serves a real commercial purpose, even minimal use of the trade mark may be sufficient to establish genuine use (see judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72 and the case-law cited).

51 In the present case, as regards the frequency and time of use of the contested mark, it must be pointed out, first of all, that EUIPO’s case file contains, first, a total of 47 invoices bearing the heading ‘DECOPAC’ which were sent by DecoPac to external customers, namely to three different customers established in Germany, Greece and the United Kingdom (exhibits 14 to 16, see paragraph 9 above). Although it is true that those invoices do not all date from the relevant period, 33 of those 47 invoices were issued during and throughout that period, which, in any event, shows that the earlier mark was used publicly and outwardly on many occasions.

52 Secondly, as EUIPO rightly points out, regular and outward use of the contested mark is also shown by the invoices which Culpitt sent throughout the relevant period to various external customers established in various Member States (exhibits 2 to 5, see paragraph 6 above). Although those invoices do not mention the contested mark, it is indeed the case that they refer to, inter alia, goods sold under the trade marks DecoPics, DecoPic, DecoPlac and Decoset. A considerable proportion of those goods have been displayed in Culpitt’s various catalogues, from which DecoPac submitted excerpts relating to the years 2013 to 2015 inclusive (exhibits 7 to 11). In relation to the marks referred to above, it is stated at the bottom of the pages in the catalogues that they are trade marks that belong to DecoPac. Furthermore, it is apparent from the product numbers mentioned both on the invoices and on the photographed packaging (exhibits 6, 21 and 22) that some of the decorations invoiced correspond to the goods in the photographs. The contested mark clearly appears on that packaging in the form of the sign DECOPAC.

53 Lastly, the 78 invoices bearing the heading ‘DECOPAC’ that DecoPac sent to Culpitt (exhibit 13, see paragraph 9 above) make it possible to deduce, in the light of the other items of evidence submitted, including the excerpts from Culpitt’s catalogues referred to in paragraph 52 above, the affidavits from the chief executive officer of DecoPac (exhibits 1, 25 and 26) and the photographs of packaging for edible and inedible decorations (exhibits 6, 21 and 22), that the goods concerned, which were delivered by DecoPac and invoiced by it to the distribution company that is part of the same group, are sold by that distribution company on the European Union market. That is a method of business organisation which is common in the course of trade, involving use of the mark which cannot be regarded as purely internal use by a group of companies, since the mark is also used outwardly and publicly. The Board of Appeal was therefore right in also taking into account the invoices that were issued by DecoPac to Culpitt.

54 As regards, more specifically, the commercial volume, those invoices must be considered in conjunction with other items of evidence that were submitted before the Cancellation Division and the Board of Appeal. In that regard, it is apparent from, in particular, the affidavit from the chief executive officer of DecoPac which was signed on 16 October 2017 (exhibits 25 and 26) that, in the course of the relevant period, DecoPac itself, in its own name, sold more than [confidential] (1) DECOPAC decorations within the European Union, for an amount of more than [confidential] United States Dollars (USD) (approximately EUR [confidential]). The majority of those sales, namely more than [confidential] DECOPAC decorations, which were sold for an amount of more than USD [confidential] (approximately EUR [confidential]), were made directly by DecoPac to external customers in Germany, Greece and the United Kingdom.

55 It is true that it is apparent from the case-law that affidavits from a person who has close ties with the party concerned, such as that referred to in paragraph 54 above, are of less evidential value than those from third parties and that they cannot therefore, on their own, constitute sufficient proof of use of the mark (see, to that effect, judgment of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 61). The fact remains that, in the present case, that affidavit is borne out by, inter alia, the 47 invoices bearing the heading ‘DECOPAC’ which DecoPac sent to external customers (exhibits 14 to 16). By way of example, invoice No 8383422, dated 16 March 2011, was issued for an amount of USD 58 800 (approximately EUR 52 850) and invoice No 52285609 of 2 September 2015 was issued for an amount of USD 2 130.55 (approximately EUR 1 916).

56 It follows from the foregoing that the Board of Appeal was right in finding that the abovementioned invoices, in conjunction with the other items of evidence, prove use of the contested mark which is objectively such as to create or preserve an outlet. The commercial volume, in relation to the period and frequency of use, is not so low that it may be concluded that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.

57 The applicant’s argument relating to the evidential value of the invoices, so far as concerns the extent of use, must therefore be rejected as unfounded.

58 Regarding the nature of use of the contested mark, the applicant submits, first, that the Board of Appeal erred in finding that the contested mark had functioned as a house mark during the relevant period, secondly, that DecoPac has not proved genuine use of the contested mark that is aimed at end consumers and, thirdly, that the Board of Appeal erred in not distinguishing genuine use of the contested mark relating to edible decorations from that relating to inedible decorations.

59 The applicant alleges that the Board of Appeal erred in finding that the contested mark functioned as a house mark during the relevant period. It submits that DecoPac is only a company name, which is not capable of distinguishing goods. In addition, it maintains that the prefix ‘deco’ is not sufficiently distinctive. Furthermore, it submits that the link between the word mark DECOPAC and the other marks that begin with ‘deco’ and are used in connection with the goods concerned, such as DecoPic, DecoSet or DecoPlac, is not clearly explained.

60 It is true that, as regards the use of a sign both as a company name and as a trade mark, the Court of Justice has held that the purpose of a company, trade or shop name is not, in itself, to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being ‘in relation to goods or services’ (see judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraph 21 and the case-law cited).

61 However, there is use ‘in relation to goods’ when the proprietor of the mark affixes the sign constituting its company, trade or shop name to the goods which it markets or to the packaging. Furthermore, even where the sign is not affixed, there is use ‘in relation to goods’ where the sign is used in such a way that a link is established between the sign which constitutes the company, trade or shop name and the goods marketed. Where that condition is satisfied, the fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods or services (see judgment of 30 November 2009, Esber v OHIM — Coloris Global Coloring Concept (COLORIS), T‑353/07, not published, EU:T:2009:475, paragraph 38 and the case-law cited; judgment of 18 July 2017, Savant Systems v EUIPO — Savant Group (SAVANT), T‑110/16, not published, EU:T:2017:521, paragraph 26).

62 Furthermore, genuine use of a mark relates to the market on which the proprietor of the EU trade mark pursues its commercial activities and on which it hopes to put its mark to use. Consequently, for the purposes of assessing whether there has been outward use of a mark, the relevant public at which marks are aimed comprises not only end consumers, but also specialists, industrial customers and other professional users (see, to that effect, judgment of 7 July 2016, Fruit of the Loom v EUIPO — Takko (FRUIT), T‑431/15, not published, EU:T:2016:395, paragraph 49 and the case-law cited).

63 In the present case, first of all, the analysis of the invoices provided by DecoPac shows that the majority of the relevant public was a clientele consisting of baking professionals, that is to say a knowledgeable public which is more easily able to establish a link between the signs used and the goods supplied by DecoPac. Furthermore, details of the various goods marketed were disseminated to that relevant public, as is apparent, in particular, from Culpitt’s catalogues (exhibits 7 to 11) in which images of the goods appear in connection with the sign DECOPAC and which cover a considerable part of the relevant period.

64 What is more, it must be pointed out that more than 100 of the invoices provided contain the contested mark and the address of the website on which that mark also appears. In addition, the visual arrangement of the invoices highlights the contested mark, because it consistently appears in the middle of the heading in the form of a logo in bold white upper-case letters on a black band with the symbol ® at the bottom on the right-hand side, as the first element, next to a reference to the company name ‘DECOPAC, INC.’ in normal letters. The other marks, inter alia, DecoPic, DecoPics and DecoSet, which cover some of the goods marketed under the contested mark and reflect the details of those goods, appear opposite the invoiced price. Such an arrangement confirms that the use made of the sign DECOPAC goes beyond that of merely identifying the company and indicates, in addition, as a trade mark, the commercial origin of the goods supplied. The arrangement of the invoices is therefore such as to enable a close link to be established between the sign DECOPAC and the invoiced goods.

65 In addition, as was pointed out by the Board of Appeal and EUIPO, the sign DECOPAC appears on the various types of packaging for the goods marketed under the shop name of DecoPac. Nineteen photographs of plastic packaging for the goods marketed on which the sign DECOPAC appears (exhibit 21), which also make it possible to establish a link between the other marks and the contested mark, as well as cardboard packaging bearing that sign and containing two types of edible decorations (exhibit 22) were submitted as evidence. The sign also appears in the catalogues (exhibits 7 to 11) in connection with the other marks, inter alia, DecoPic, DecoPics and DecoSet.

66 Furthermore, as regards the fact that some of the photographs of packaging for the goods concerned bear dates that are a few months after the end of the relevant period — they were taken on 14 January 2016 and 9 February 2016 respectively (exhibit 6) — it is apparent from the case-law that it is not precluded, in assessing whether the use during the relevant period is genuine, that account be taken, where appropriate, of any circumstances subsequent to that period. Such circumstances may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period (see, to that effect, order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 31, and judgment of 19 April 2013, Luna v OHIM — Asteris (Al bustan), T‑454/11, not published, EU:T:2013:206, paragraph 45).

67 In the present case, the photographs in question that were taken subsequent to the relevant period confirm the use of the contested mark that is apparent from the invoices (exhibits 2 to 5 and 13 to 16), the excerpts from the catalogues (exhibits 7 to 11) and the photographs which fall within that period (exhibit 21) and also from the affidavit provided by the chief executive officer of DecoPac (exhibits 25 and 26) stating that the sign DECOPAC appeared on all the plastic packaging for the inedible decorations and on all the cardboard packaging for the edible decorations.

68 It follows that the argument alleging that the Board of Appeal erred in its assessment regarding the use of the contested mark as a house mark must be rejected as unfounded.

69 The applicant submits that DecoPac has not proved genuine use of the contested mark that is aimed at end consumers. It maintains that it has not been proved that the invoices represent actual sales and that the goods were delivered by DecoPac itself, because the deliveries to end consumers relating to those invoices could just as easily have been made by Culpitt under its own shop name. It argues that that possibility is substantiated by the photograph of the packaging of product No 6959 (exhibit 18) on which the sign Culpitt and not the contested mark appears. Furthermore, it submits that it is apparent from consulting the website of Sugar World, the company to which some of DecoPac’s invoices are addressed, that the packaging of some of the edible decorations bears the sign Culpitt.

70 Nevertheless, it must be pointed out that the Board of Appeal and EUIPO rightly state that ‘outward use’ does not necessarily mean use aimed at end consumers. Genuine use of a mark relates to the market on which the proprietor of the EU trade mark pursues its commercial activities and on which it hopes to put its mark to use in the territory of the European Union, in the present case, as is apparent from, in particular, the invoices provided, a public of baking professionals (see also paragraph 63 above). The line of reasoning advocated by the applicant is based on the incorrect assumption that marks used only in relations between professionals cannot enjoy the protection of Regulation No 207/2009. It must be pointed out in that regard that the relevant public at which trade marks are aimed comprises not only end consumers but also specialists, industrial customers and other professional users (see judgment of 21 November 2013, Recaro v OHIM — Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 25 and the case-law cited).

71 Furthermore, and as is apparent from paragraphs 51 to 53 above, the Board of Appeal rightly pointed out that the contested mark had been used outwardly, as required by the case-law.

72 As regards the photograph highlighted by the applicant on which only the sign Culpitt appears, EUIPO rightly argues that that one single example does not undermine the evidential value of the other items of evidence submitted by DecoPac, in particular of the much greater number of photographs of packaging bearing the sign DECOPAC.

73 Furthermore, as regards the screenshots of the website of Sugar World, a customer of DecoPac established in Greece, which the applicant submitted for the first time before the Court, it must be borne in mind that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009. It follows from that provision that facts not submitted by the parties before the adjudicating bodies of EUIPO cannot be submitted at the stage of the action brought before the Court and that the Court cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraphs 136 to 138 and the case-law cited).

74 In any event, as has been held in paragraph 70 above, genuine use of an EU trade mark does not relate solely to use vis-à-vis end consumers, but also to use of that mark vis-à-vis professionals or intermediaries, such as Sugar World. Since it follows from all of the foregoing that genuine use has been proved to the requisite legal standard, the screenshots of Sugar World’s website, displaying decorations the packaging of which bears the sign Culpitt and not that of DECOPAC, are not capable of weakening the evidence submitted by DecoPac which has been examined above.

75 Consequently, the applicant’s argument that genuine use has not been established because that use has not been proved vis-à-vis end consumers of the decorations must be rejected as unfounded.

– Distinction between use in connection with inedible and edible decorations

76 The applicant submits that the Board of Appeal erred in not distinguishing genuine use of the contested mark relating to edible decorations from that relating to inedible decorations, two different sub-categories which meet consumers’ different specific needs. It maintains that DecoPac has not provided any proof as regards the sub-category of edible decorations.

77 In that regard, the Board of Appeal found that the evidence furnished showed genuine use of the contested mark in connection with the goods ‘edible and inedible decorations for cakes and pastries’.

78 Although it is true that it is apparent from EUIPO’s case file that the volume of sales of edible decorations was lower than that of inedible decorations, the fact remains that that case file nevertheless contains sufficient evidence relating to the use of the contested mark in connection with edible decorations. Thus, decorations made of gum paste and sugar paste, for example decorations in the shape of bows (gumpaste bows) with different patterns printed on them, are referred to on more than twenty or so of the invoices issued by Culpitt and by DecoPac. They include, for example, invoices OP/1773370 dated 1 June 2015 and OP/1775742 of 19 June 2015. Those same edible decorations also appear in their cardboard packaging, which bears the sign DECOPAC, in the photographs submitted as exhibit 22. Furthermore, the quantities sold are not negligible, as is shown, for example, by the 200 packages of decorations containing gumpaste which are referred to on invoice No 50442864. Lastly, as exhibit 20, DecoPac provided copies of recipes which refer to DecoPac, recipes in which edible decorations, for example in the form of succulents, are also included, succulents which are, in turn, referred to on the invoices issued by DecoPac.

79 It follows that, as is apparent from the evidence placed on EUIPO’s case file, the use of the contested mark as regards edible decorations cannot be characterised as being merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.

80 Consequently, the applicant’s argument that the Board of Appeal erred in not distinguishing genuine use of the contested mark relating to edible decorations from that relating to inedible decorations must be rejected as unfounded.

81 Lastly, in so far as the applicant, in submitting that the invoices which DecoPac issued in its own name concern only customers established in Greece and the United Kingdom, disputes the Board of Appeal’s finding as regards the place of use of the contested mark (see paragraph 14 above), its argument cannot be accepted. It is apparent, in particular from paragraph 52 above, that the Board of Appeal was right in taking into consideration the invoices which Culpitt sent to various external customers established in twenty-four Member States (see paragraph 6 above and exhibits 2 to 5). It follows that use of the contested mark in the European Union has been proved to the requisite legal standard.

82 Consequently, the Board of Appeal was right in finding, on the basis of the evidence submitted, that there had been genuine use of the contested mark in connection with edible and inedible decorations for cakes and pastries in Class 30.

83 It follows from all of the foregoing that the second plea must be rejected as unfounded and consequently the action must be dismissed in its entirety.

84 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.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Dekoback v EUIPO - DecoPac (DECOPAC) (EU trade mark - Judgment) [2020] EUECJ T-80/19 (05 March 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T8019.html Cite as: [2020] EUECJ T-80/19, EU:T:2020:81, ECLI:EU:T:2020:81

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