Privatbrauerei Eichbaum v EUIPO - Anchor Brewing Company (STEAM) (EU trade mark - Judgment) [2022] EUECJ T-609/21 (14 September 2022)

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(EU trade mark – Revocation proceedings – EU word mark STEAM – Genuine use of the mark – Nature of use – Article 18(1), second subparagraph, heading (a), and Article 58(1)(a) of Regulation (EU) 2017/1001 – Obligation to state reasons – Right to be heard – Article 94(1) of Regulation 2017/1001)

Privatbrauerei Eichbaum GmbH & Co. KG, established in Mannheim (Germany), represented by M. Schmidhuber and E. Levenson, lawyers,

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė‑Orlovskienė and J. Ivanauskas, acting as Agents,

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

Anchor Brewing Company LLC, established in San Francisco, California (United States), represented by I. Kuschel and W. von der Osten‑Sacken, lawyers,

composed of M.J. Costeira, President, T. Perišin and P. Zilgalvis (Rapporteur), Judges,

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 By its action based on Article 263 TFEU, the applicant, Privatbrauerei Eichbaum GmbH Co. KG, seeks partial annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 July 2021 (Case R 780/2020‑2), relating to revocation proceedings between the applicant and the intervener, Anchor Brewing Company LLC (‘the contested decision’).

2 On 2 November 2006, the intervener, formerly called Anchor Brewing Company, filed an application for registration of an EU trade mark with EUIPO under 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).

4 The goods for which registration was sought are in Class 32 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: ‘Beer; alcoholic beer; non-alcoholic beer; alcohol reduced beer; malt beer; malt beverages’.

5 The trade mark application was published in Community Trade Marks Bulletin No 15/2007 of 16 April 2007. That mark was registered on 29 January 2009 under No 5435375.

6 On 2 October 2018, the applicant filed an application with EUIPO for revocation of the registered mark under Article 58(1)(a) of Regulation 2017/1001 in respect of all the goods referred to in paragraph 4 above.

7 By decision of 28 February 2020, the Cancellation Division rejected the application for revocation in its entirety.

8 On 28 April 2020, the applicant filed a notice of appeal with EUIPO, under Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.

9 By the contested decision, the Board of Appeal upheld the appeal in part, annulled the decision of the Cancellation Division in respect of the goods ‘non-alcoholic beer; alcohol reduced beer; malt beer; malt beverages’ and declared the contested mark to be revoked in respect of those goods. It dismissed the appeal in the remainder. In essence, the Board of Appeal found that the contested mark had been put to genuine use only in respect of ‘beer’ and ‘alcoholic beer’.

10 In particular, as regards the nature of the genuine use, the Board of Appeal took the view, first, that the evidence consisting of photographs of cardboard transport cases showing the inscription ‘steam beer’ on one side of those cases could demonstrate the use of the contested mark as a trade mark. Similarly, it took the view that the inscription ‘steam beer’ could be seen all along the distribution chain and in retail outlets and supermarkets. Moreover, whilst recalling that genuine use of a mark could be made on the goods themselves or on their packaging, the Board of Appeal noted that the distributors who were in contact with the cases were also part of the relevant public.

– annul the contested decision inasmuch as it dismissed the appeal relating to the goods ‘beer; alcoholic beer’ and ordered the applicant to bear its own costs incurred for the purposes of the revocation and appeal proceedings;

– alter the contested decision by declaring the contested mark to be revoked in its entirety;

13 EUIPO contends that the documents contained in Annexes A.9 to A.12 to the application have been produced for the first time before the Court and must, therefore, be declared inadmissible.

14 The documents in question correspond, as regards Annex A.9, to documents relating to the various types of packaging; as regards Annex A.10, to screenshots and printouts from websites concerning ‘Dampfbier’; as regards Annex A.11, to a printout of pages from an online encyclopaedia concerning a list of types of beer; and lastly, as regards Annex A.12, to a printout concerning the ‘Brewers Association’.

15 It should be noted that, with regard to Annex A.12, the applicant considers that it is able to submit to the Court that document explaining the role of the ‘Brewers Association’, in response to the Board of Appeal’s findings in relation to Annexes HE 9 to HE 11, submitted by the intervener and on which the applicant claims that it was unable to comment, given that the Board of Appeal had mentioned them, for the first time, in the contested decision. In that regard, it relies on paragraphs 41 and 42 of the judgment of 18 June 2020, Primart v EUIPO (C‑702/18 P, EU:C:2020:489).

16 It must be borne in mind that, in accordance with the case-law, the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO in accordance with Article 72 of Regulation 2017/1001, with the result that it is not the Court’s function to review the facts in the light of documents produced for the first time before it (see, to that effect, judgment of 18 March 2016, Karl-May-Verlag v OHIM – Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 17 and the case-law cited). The documents in Annexes A.9 to A.12 to the application have, however, been submitted for the first time before the Court.

17 As regards the judgment of 18 June 2020, Primart v EUIPO (C‑702/18 P, EU:C:2020:489), relied on by the applicant, it is true that, in paragraph 46 of that judgment, the Court of Justice held that, under Article 263 TFEU, read in the light of Article 47 of the Charter of Fundamental Rights of the European Union, an applicant had to be able to challenge before the EU Courts each and every issue of fact and law on which an EU body based its decisions.

18 However, such an opportunity to call into question assessments by the Board of Appeal cannot extend to the presentation of new evidence before the Court, unless that evidence is intended to substantiate or to challenge before the Court the accuracy of a well-known fact (see, to that effect, judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 30 and the case-law cited).

19 It is apparent from the case-law that the principle that it is not the Court’s function to review the facts in the light of documents produced for the first time before it is of particular application when the purpose of those documents is to challenge assessments made by the Board of Appeal (see, to that effect, judgment of 24 October 2018, Bayer v EUIPO – Uni-Pharma (SALOSPIR), T‑261/17, not published, EU:T:2018:710, paragraph 20 and the case-law cited). Moreover, it cannot be maintained that the purpose of the document concerning the ‘Brewers Association’, constituting Annex A.12 to the application, is to substantiate or to challenge the accuracy of a well-known fact on which the Board of Appeal relied.

20 In view of all the foregoing considerations, Annexes A.9 to A.12 to the application must be rejected as inadmissible, without it being necessary to assess their probative value.

21 In support of its action, the applicant relies on three pleas in law, the first alleging infringement of Article 58(1)(a) and of Article 18 of Regulation 2017/1001, the second alleging infringement of the first sentence of Article 94(1) of that regulation, and the third alleging infringement of the second sentence of Article 94(1) of that regulation. It is appropriate to begin by examining the second and third pleas in law.

The second plea in law, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001

22 In support of its second plea, the applicant submits that the Board of Appeal did not substantiate its assumption that the affixing of the sign STEAM BEER onto transport cases is sufficient to prove genuine use of the contested mark. The same, it argues, applies to the considerations that the case-law on the use of a sign as a descriptive indication is not applicable in the present case. In addition, the applicant criticises the Board of Appeal for not having examined the judgments of 16 May 2013, Reber v OHIM – Klusmeier (Wolfgang Amadeus Mozart PREMIUM) (T‑530/10, not published, EU:T:2013:250), and of 14 April 2016, Henkell & Co. Sektkellerei v EUIPO – Ciacci Piccolomini d’Aragona di Bianchini (PICCOLOMINI) (T‑20/15, EU:T:2016:218).

24 It should be borne in mind that, in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That duty to state reasons has the same scope as that stemming from Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. It has two purposes: first, to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and, second, to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to address all relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgment of 7 June 2017, Mediterranean Premium Spirits v EUIPO – G-Star Raw (GINRAW), T‑258/16, not published, EU:T:2017:375, paragraph 88).

25 In addition, the duty to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient to set out the facts and the legal considerations having decisive importance in the context of the decision (judgments of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 19, and of 7 June 2017, GINRAW, T‑258/16, not published, EU:T:2017:375, paragraph 89).

26 First, as regards the question as to why the affixing of the mark to transport packaging is sufficient to prove genuine use of the contested mark, the Board of Appeal pointed out in paragraph 27 of the contested decision, referring to the judgment of 14 April 2016, PICCOLOMINI (T‑20/15, EU:T:2016:218), that genuine use of a trade mark could be made on the goods at issue or on their packaging. It added, in paragraph 28 of the contested decision, that the distributors (wholesalers) of the intervener’s goods were also part of the relevant public and were in contact with the transport boxes. Consequently, the applicant’s claim that the Board of Appeal’s position is not substantiated must be rejected.

27 Secondly, as regards the claim that the Board of Appeal did not explain why the judgments relied on by the applicant did not apply to the present case and what differences there were in relation to the cases examined in those judgments, it must be stated that the Board of Appeal examined the case-law resulting from those judgments in detail in paragraphs 35 to 37 of the contested decision. In particular, it noted that, in the judgment of 14 April 2016, PICCOLOMINI (T‑20/15, EU:T:2016:218), the Court had held that the Board of Appeal had examined the perception of the sign at issue resulting from the actual conditions of its use as a trade mark for the purposes of Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001) and not the inherent distinctive character of that mark. As regards the judgment of 16 May 2013, Wolfgang Amadeus Mozart PREMIUM (T‑530/10, not published, EU:T:2013:250), the Board of Appeal highlighted the fact that, in that judgment, it was the specific manner in which the mark had been used that did not allow the conclusion that it had been used as a trade mark. Moreover, that assessment must be read with regard to the Board of Appeal’s other findings in paragraphs 29 to 34 of the contested decision and in particular to its finding in paragraph 32 thereof that the purpose of the proceedings in question was not to assess the distinctiveness of the contested mark. The applicant’s claims are, therefore, unfounded.

28 As for the claim that the Board of Appeal did not examine the judgments cited in paragraph 27 above, it should be noted that the applicant acknowledges, in paragraph 82 of the application, that, ‘in paragraphs 35 and 36 of the contested decision, the [Board of Appeal] quoted parts of [those judgments] and simply highlighted certain sections without specifying the reasons why, in its view, [those judgments were] not applicable to the present case’, with the result that that claim must be rejected.

The third plea in law, alleging infringement of the second sentence of Article 94(1) of Regulation 2017/1001

30 In the third plea, the applicant submits that the Board of Appeal disregarded, in their entirety, its arguments relating to proof of genuine use of the contested mark consisting of an inscription on transport packaging. Moreover, the Board of Appeal ignored the applicant’s arguments regarding the descriptive use of the sign STEAM BEER and the alteration of the distinctive character of the contested mark and relied on the use of the symbol ‘®’, on which the applicant was unable to comment.

31 In addition, the applicant claims that it was not given the opportunity to present comments on Annexes HE 9 to HE 11, produced by the intervener during the administrative procedure.

33 The second sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.

34 That provision enshrines, in EU trade mark law, the general principle of protection of the rights of the defence. In accordance with that principle, persons whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make their point of view known. The right to be heard extends to all the factual and legal material which forms the basis for the decision, but not to the final position which the authority intends to adopt (see judgment of 20 October 2021, Square v EUIPO ($ Cash App), T‑211/20, not published, EU:T:2021:712, paragraph 34 and the case-law cited).

35 Similarly, it is apparent from the case-law that the failure to take into account the applicant’s comments does not constitute a breach of its rights of the defence. While respect for the right of the defence required EUIPO to allow the applicant to make its point of view known effectively, it could not compel EUIPO to adhere to that point of view. The effectiveness of the expression of the applicant’s point of view required only that that point of view be expressed in good time for EUIPO to be able to take cognisance of it and, with all due attention, to assess its relevance to the content of the measure being adopted (see, to that effect, 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 62).

36 It follows that the applicant’s claims that the Board of Appeal disregarded some of its arguments must be rejected.

37 As for the merits of the Board of Appeal’s position in that regard, that question will be examined in the context of the first plea in law.

38 With regard to the claim that the applicant has not been able to comment on the use of the symbol ‘®’, next to the contested mark on the transport cases, it must be stated, as EUIPO has done, that, in so far as the photographs illustrating that use had been produced before the Cancellation Division, the applicant was in a position to comment on their relevance in the course of the administrative procedure. Therefore, no infringement of its right to be heard can be established in the present case in that regard.

39 Lastly, it must be held that the applicant cannot reasonably rely on infringement of its right to be heard with regard to the documents submitted by the intervener before the Cancellation Division as Annexes HE 9 to HE 11. Even if that division did not refer to those documents, the applicant was in a position to dispute their probative value before the Board of Appeal. However, as the applicant appears to acknowledge, it did not do so.

The first plea in law, alleging infringement of Article 58(1)(a) and Article 18 of Regulation 2017/1001

41 The applicant submits that the Board of Appeal erred in holding that the evidence submitted was sufficient to demonstrate genuine use of the contested mark. In particular, it claims, first, that the photographs submitted were taken outside the relevant period and that, in order to substantiate the fact that the transport cases were those mentioned in the invoices, the Board of Appeal relied on the statutory declaration made by the intervener’s chief executive officer (CEO). Secondly, it considers that the affixing of an inscription to the transport packaging cannot be regarded as use of the contested mark. Thirdly, the Board of Appeal ignored the fact that the contested mark had not been used in its registered form and that the additional elements used altered the distinctive character of that mark. Fourthly, the applicant considers that the designation ‘steam beer’ is used as a descriptive indication and not as an indication of origin.

43 Under Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO 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.

44 As regards the criteria for assessing genuine use, under Article 10(3) and (4) 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), applicable to revocation proceedings in accordance with Article 19(1) of that regulation, proof of use must relate to the place, time, extent and nature of the use made of the contested mark and is limited to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing as referred to in Article 97(1)(f) of Regulation 2017/1001.

45 It should be borne in mind that, in proceedings for revocation of a trade mark, it is, in principle, for the proprietor of the mark to establish genuine use of that mark (see, to that effect, judgment of 23 January 2019, Klement v EUIPO, C‑698/17 P, not published, EU:C:2019:48, paragraph 57 and the case-law cited).

46 In that regard, it is apparent from the case-law that there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition of genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and externally (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraphs 37 and 43).

47 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the 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 (judgment of 8 July 2004, Sunrider v OHIM – Espador Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

48 In order 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. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that the commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (see judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42 and the case-law cited).

49 An accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 66 and the case-law cited).

50 Genuine use of a trade mark cannot be proved by means of probabilities or suppositions but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).

51 In addition, it must be noted that, under the combined provisions of heading (a) of the second subparagraph of Article 18(1) and Article 47(2) of Regulation 2017/1001, proof of genuine use of an earlier EU trade mark which forms the basis of an opposition against an EU trade mark application also includes proof of use of the earlier mark in a form that differs in elements which do not alter the distinctive character of that mark in the form in which it was registered (see judgment of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited).

52 The present plea in law must be examined in the light of the abovementioned principles.

53 In the present case, in order to prove genuine use of the contested mark, the intervener produced, inter alia, the following evidence:

– an overview of shipments to the European Union between 2011 and August 2018 and a statutory declaration dated 1 February 2019 and signed by its CEO, some terms of which were clarified on 9 September 2019 (Annexes HE 1 and HE 8);

– numerous invoices referring to, inter alia, ‘anchor steam beer’, dating from 2013 to 2018 and sent in particular to Bier & Co., a company established in the Netherlands, and to James Clay & Sons, a company established in the United Kingdom (Annexes HE 2 and HE 4);

– photographs of cases displaying, inter alia, the figurative sign STEAM BEER. According to the intervener’s CEO, those photographs were taken in 2018 in the Netherlands, in Austria and in James Clay & Sons’ facilities in the United Kingdom (Annexes HE 3a and HE 5);

– declarations signed by the importers, namely Bier & Co., whose director confirms having imported and sold ‘steam beer’ products in the European Union since 2008, and Broom House Investments Ltd, a company whose director confirms having imported and sold ‘steam beer’ products in the United Kingdom during the previous five years (Annexes HE 3b and HE 6).

54 In the present case, given the date on which the application for revocation was filed, namely 2 October 2018, the Board of Appeal acted correctly in taking the view that the relevant period for the purposes of assessing genuine use of the contested mark extended from 2 October 2013 to 1 October 2018.

55 As noted by EUIPO, the applicant’s arguments focus only on calling into question the Board of Appeal’s findings relating to the nature of the use of that mark. Thus the other aspects of use, namely place, time and extent, are not disputed.

– Consideration by the Board of Appeal of the statutory declaration allegedly not supported by the other evidence

56 According to the applicant, the Board of Appeal infers a connection between, on the one hand, invoices which do not show either the contested mark or the sign STEAM BEER in a stand-alone position and, on the other hand, the illustrations of the transport cases, which had been taken outside the relevant period, solely on the basis of the intervener’s statutory declaration. The Board of Appeal, it is argued, thus relied solely on the intervener’s declaration with regard to the decisive question as to whether or not the transport cases were put on the market during the relevant period. In so doing, the Board of Appeal disregarded the principle that the statement of a party or of a managing employee of that party does not, in itself, constitute a piece of evidence and has to be corroborated by other evidence. Similarly, the applicant claims that the photographs were taken outside the relevant period.

58 In the present case, the Board of Appeal observed in paragraph 24 of the contested decision that the only evidence taken into account by the Cancellation Division as to the nature of the use consisted of photographs of cardboard transport boxes bearing the inscription STEAM BEER on one side thereof. In that regard it found, in paragraph 25 of the contested decision, that the fact that the photographs produced by the intervener had been taken at the end of the relevant period or the month after did not constitute a valid argument to discredit the veracity of the statements contained in its CEO’s declaration. The Board of Appeal considered, in particular, that the intervener’s CEO had confirmed that the photographs of the ‘steam beer’ product cases and their contents related to the sales and shipments identified on the invoices dating from the relevant period and that there was no objective reason to cast doubt on that assertion.

59 In that regard, it must be borne in mind that statutory declarations made by a person with close links to the party concerned are of lower probative value than those made by third parties and therefore cannot, on their own, constitute sufficient proof (see judgment of 16 June 2015, H.P. Gauff Ingenieure v OHIM – Gauff (Gauff JBG Ingenieure), T‑585/13, not published, EU:T:2015:386, paragraph 28 and the case-law cited). It is necessary, therefore, to assess whether the information contained in the statutory declaration made by the intervener’s CEO is corroborated by other evidence.

60 The applicant submits, in essence, that the existence of a connection between the invoices and the photographs described in the statutory declaration made by the intervener’s CEO is not supported by other evidence.

61 It is true, as the applicant argues, that the intervener’s CEO establishes a connection between the invoices and the photographs produced and explains, in particular, that the photographs taken in October and November 2018 correspond to the goods in the invoices produced in Annexes HE 2 and HE 4.

62 However, it should be noted that, in addition to the statutory declaration from the intervener’s CEO, the intervener also produced a large number of invoices addressed to various importers in the European Union, photographs showing the presence of the sign STEAM BEER on one side of the transport cases and statements from the companies to which the invoices in question were addressed.

63 As regards specifically the question whether the photographs produced by the intervener relate to the goods covered by the invoices also produced, it should be noted that it is apparent from the declaration produced by Bier & Co. that photographs demonstrating that the intervener’s goods were visible on the EU market were produced, while the declaration from Broom House Investments Ltd attests that photographs of cases bearing the sign STEAM BEER were produced. The applicant is therefore not justified in claiming that the existence of the connection between the invoices and the photographs rested solely on the statutory declaration made by the intervener’s CEO.

64 In that regard, it should be borne in mind that written statements from third-party companies in relation to the proprietor of the trade mark at issue may be sufficient, on their own, to attest to certain facts (see, to that effect, judgment of 15 February 2017, M. I. Industries v EUIPO – Natural Instinct (Natural Instinct Dog and Cat food as nature intended), T‑30/16, not published, EU:T:2017:77, paragraph 43 and the case-law cited).

65 In any event, the Board of Appeal could easily have established the connection between the various items of evidence intended to demonstrate the genuine use of the contested mark, namely the invoices, on the one hand, and the photographs, on the other hand, without referring to the explanations provided by the intervener’s CEO (see, to that effect, judgment of 23 October 2015, I Castellani v OHIM – Chomarat (Representation of a circle), T‑137/14, not published, EU:T:2015:798, paragraph 48). A large number of the invoices submitted include the words ‘anchor steam beer 24-12 oz’, followed by a reference to ‘1.00 – case’, while the photographs of the cases mention ‘San Francisco’s original steam beer’, ‘24/12 oz bottles’ and ‘four 6-packs’. The latter particulars show clearly that a case featuring the STEAM BEER sign contains 24 bottles of 12 US fluid ounces. The same particulars appear on the invoices produced by the intervener.

66 Moreover, it must be stated that the applicant does not put forward any arguments capable of demonstrating that the photographs produced by the intervener did not correspond to the goods referred to in the invoices addressed to its importers in the European Union.

67 As for the claim that the photographs are from after the relevant period, the Board of Appeal considered that the fact that some photographs had been taken the month after the end of the relevant period, namely in November 2018, did not constitute a valid argument to discredit the veracity of the assertions in the declaration made by the intervener’s CEO.

68 In that respect, it must be borne in mind that use during the relevant period may, where appropriate, take into account any circumstances subsequent to that period. Such circumstances may make it possible to confirm or to better appreciate the extent of the use of the trade mark during the relevant period and the actual intentions of the proprietor during that same period (see judgment of 10 September 2008, Boston Scientific v OHIM – Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 38 and the case-law cited).

69 In the present case, it should be noted in particular that since, as is apparent from the invoices submitted by the intervener, the sale of the goods in respect of which the packaging bears the sign STEAM BEER took place during the relevant period, the fact that some photographs showing that packaging were taken immediately after that relevant period does not render those photographs, from the persons to whom the invoices submitted were addressed, irrelevant for the purpose of attesting to genuine use of that sign.

70 Therefore, in the absence of any specific argument calling into question the evidential value of those photographs, the applicant’s claims relating to their probative character must be rejected.

71 Lastly, the applicant’s argument that the presence of the figurative sign ANCHOR STEAM BEER on the side of the transport case influences the perception of the sign STEAM BEER on the front of that box, must be examined below, along with the analysis as to whether the presence of other elements alters the distinctive character of the earlier mark (see paragraph 103 below).

– The relevance of transport packaging to demonstrate genuine use of a trade mark

73 The applicant submits that the Board of Appeal, like the Cancellation Division, erred in assuming that the affixing of the sign STEAM BEER to the transport cases was sufficient to prove genuine use of the contested mark. According to the applicant, the Board of Appeal should have made a distinction between the different types of packaging. The consumer rarely sees the tertiary level of packaging. According to the applicant, the public expects the reference to the producer to be affixed directly on the product, that is to say on the bottle or on the container in the case of beer, but not on a cardboard box used for transporting the goods.

74 The applicant adds that, even accepting that transport cases are also occasionally placed in retail stores, those are likely to be isolated cases and it would be wrong to infer genuine use of the contested mark from such particular cases. In addition, it claims that the affixing of the mark concerned to transport packaging is at most conceivable in cases where there is no labelling or any identical labelling affixed directly on the product. However, in the present case, the trade mark affixed on the bottles and on the containers is different from that featuring on the transport cases.

75 Lastly, the applicant points out that the sign STEAM BEER is displayed only on the front face of the transport case, whereas the intervener’s logo is affixed on the long side and on the bottles. The Board of Appeal did not take into account that, in the impression created by the transport case, the sign STEAM BEER fades completely into the background next to the intervener’s logo as an indication of origin.

77 In the present case, the Board of Appeal found, in paragraph 26 of the contested decision, that the sign STEAM BEER, present on one side of the transport cases, photographs of which were produced by the intervener, could be seen all along the distribution chain as well as in retail outlets and supermarkets. In particular, it considered, in the light of the explanations provided by the intervener that retailers placed the cases in those of their shops in which consumers purchased beer, that the photographs produced showed that the sign STEAM BEER, placed on one side of the box, was clearly visible in the shops, ‘even though all customers would not buy a box of six-packs’. It added that there was no reason to doubt the display of the transport boxes in the photographs and that beers bearing other marks were also stored in large boxes and placed next to the box bearing the sign STEAM BEER. Moreover, the Board of Appeal noted, in paragraphs 27 and 28 of the contested decision, that proof of genuine use of a mark could be provided by affixing that mark on the goods themselves or on their packaging and that the intervener’s distributors in the European Union were part of the relevant public and were also in contact with those boxes.

78 In that regard, it should be borne in mind that, according to the case-law, a link between the contested mark and the goods concerned may be established without it being necessary for the mark to be affixed on the goods (see judgment of 14 December 2016, PAL-Bullermann v EUIPO – Symaga (PAL), T‑397/15, not published, EU:T:2016:730, paragraph 54 and the case-law cited).

79 Similarly, Article 10(4) of Delegated Regulation 2018/625 includes packages among the different types of evidence capable of establishing genuine use of a trade mark (see paragraph 44 above).

80 It follows that the affixing of a mark on the packaging containing the goods covered by that mark may constitute proof of genuine use of that mark.

81 In the present case, the sign STEAM BEER is clearly visible on the front face of the transport cases containing the bottles of beer. Furthermore, it must be noted that, while the applicant disputes that the transport cases are visible to end consumers, it does not deny the fact that the sign STEAM BEER appears on those cases.

82 Consequently, in application of, inter alia, the case-law cited in paragraph 78 above, the applicant’s argument as to the irrelevance of the evidence of use, consisting of an affixing of the contested mark on the transport cases, must be rejected. Similarly, as EUIPO rightly maintains, the case-law does not distinguish between the different types of packaging that may be taken into account for the purpose of establishing genuine use of a registered trade mark.

83 Regarding the question as to whether the end user is confronted with the transport cases on which the sign STEAM BEER appears, it should be noted, as the Board of Appeal did, that the relevant public here consists not only of end users but also of distributors of the goods covered by that mark, who are among those in contact with those cases.

84 In that regard, it must be borne in mind that, although genuine use of a mark requires that it be used publicly and outwardly, the outward use of a mark does not necessarily mean use directed at end users. Genuine use of the 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. Accordingly, taking the view that outward use of a mark, within the meaning of the case-law, must consist of use directed at end users would effectively exclude marks used only in business-to-business relationships from the protection of Regulation 2017/1001. The relevant public to which marks are addressed does not consist solely of end users but also of specialists, industrial clients and other professional users (see judgment of 7 July 2016, Fruit of the Loom v EUIPO – Takko (FRUIT), T‑431/15, not published, EU:T:2016:395, paragraphs 48 and 49 and the case-law cited).

85 Therefore, in so far as, in the present case, the distributors of the goods covered by the contested mark, who are part of the relevant public, were confronted with packages bearing the sign STEAM BEER and containing those goods, the question as to whether end users would also see those packages is irrelevant in this instance.

86 In view of the foregoing considerations, the applicant’s present complaint must be rejected.

– Alteration of the distinctive character of the contested mark by the addition of the word ‘beer’

87 The applicant criticises the Board of Appeal on the ground that it failed to take account of the fact that the contested mark had not been used in its registered form and submits that the Board of Appeal did not realise that the element ‘beer’ alters the distinctive character of that mark. In particular, it considers that the consumer will not artificially split the term ‘steam beer’ into two terms, ‘steam’ and ‘beer’. Likewise, the graphic representation of that sign suggests that the two elements are of equal importance.

88 The applicant takes the view that the case-law applied by the Cancellation Division is not relevant because it concerns the addition of descriptive elements to a mark which do not alter its distinctive character, whereas, in the present case, the additional element changes the meaning of the contested mark and makes it a completely descriptive term. The word ‘steam’, by reason of the association thus created with the subsequent word, loses its autonomy and will no longer be perceived by the relevant public as an independent term. In support of its argument – not followed by the Board of Appeal – that the addition of a suffix to a term would result in the combination of those two elements acquiring a meaning that is purely descriptive of the goods in question, the applicant refers to the judgment of 16 May 2013, Wolfgang Amadeus Mozart PREMIUM (T‑530/10, not published, EU:T:2013:250).

89 Lastly, the applicant submits that, due to the spatial proximity of the elements concerned, the public will focus on the overall image when looking at the transport case and that, accordingly, it will perceive the predominant and distinctive element ‘anchor’, present on the side of the box. That element, which alters the distinctive character of the contested mark, affects the perception of the sign STEAM BEER on the front of the transport case.

91 In the present case, the Board of Appeal confirmed, in paragraph 23 of the contested decision, the Cancellation Division’s finding that the use of the contested mark in the figurative form ANCHOR STEAM BEER, on the labels of beer bottles and on one side of the transport cases, alters the distinctive character of the contested mark.

92 Thus the Board of Appeal found, in paragraph 24 of the contested decision, that the only evidence taken into account by the Cancellation Division regarding the nature of the use of the contested mark consisted of the photographs of cardboard transport cases showing the inscription ‘steam beer’ on one side thereof, as follows:

93 Although the Board of Appeal did not rule expressly on the question as to whether use of the contested mark in the form of the sign STEAM BEER would alter its distinctive character, it did nevertheless, having regard to the functional continuity between the Cancellation Division and the Board of Appeal, as demonstrated by Article 71(1) of Regulation 2017/1001 (see, to that effect, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 30, and of 10 July 2006, La Baronia de Turis v OHIM – Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, EU:T:2006:197, paragraphs 57 and 58), implicitly, but necessarily, validate the Cancellation Division’s assessment. The Cancellation Division considered that the photographs of the cases featuring the sign STEAM BEER in a stylised form demonstrated use of the contested mark in a form that did not alter its distinctive character. In particular, the Cancellation Division found that the representation of the letters in bold type did not alter that character, given that the word ‘steam’ was perfectly recognisable and that the representation in bold type was decorative. As for the term ‘beer’, the Cancellation Division found that it would be understood by the whole of the relevant public and would be perceived as a descriptive element referring to the nature of the goods, the result being that it was devoid of any distinctive character.

94 In that regard, it must be recalled that a finding of an alteration of distinctive character of the registered mark calls for an assessment of the distinctive and dominant character of the components added, on the basis of the intrinsic qualities of each of those elements, as well as on the relative position of the different components within the arrangement of the trade mark (see judgment of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 28 and the case-law cited).

95 For the purposes of such a finding, account must also be taken of the intrinsic qualities of the mark at issue and, in particular, of the greater or lesser degree of the distinctive character of that mark used solely as part of a composite trade mark or jointly with another mark. The weaker the distinctive character of that mark, the easier it will be to alter it by adding a component that is itself distinctive and the more the mark at issue will lose its ability to be perceived as an indication of the origin of the product. The reverse is also true (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 29 and the case-law cited).

96 In that regard, the Court has stated that, in order for heading (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 to apply, the additions to the registered mark must not alter the distinctive character of the mark in the form in which it was registered, in particular because of their ancillary position in the sign or their weak distinctive character (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 31 and the case-law cited).

97 In the present case, as the Cancellation Division rightly held, the element added to the contested mark, namely ‘beer’, is purely descriptive of the goods at issue, that is to say devoid of any distinctive character, with the result that it cannot alter the distinctive character of the contested mark, even if it were assumed that the latter is weak. It follows that the applicant cannot usefully refer to the case-law cited in paragraph 95 above.

98 Similarly, the fact that the element ‘beer’ is of the same size or forms a whole with the element ‘steam’ cannot alter that finding, given that it is purely descriptive. Furthermore, it should be noted that, contrary to what the applicant appears to be claiming, the expression ‘steam beer’ consists of two separate words which are, moreover, shown one above the other.

99 As regards the alleged lessons to be derived from the judgment of 16 May 2013, Wolfgang Amadeus Mozart PREMIUM (T‑530/10, not published, EU:T:2013:250), it should be noted that, in that judgment, it was not found that the addition of a prefix to a trade mark would result in the combination of two elements acquiring a descriptive meaning for the goods at issue. It is true that, in paragraph 39 of that judgment, in referring to paragraphs 94 to 96, 99, 102 to 104 and 110 of the judgment of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) (T‑304/06, EU:T:2008:268), the Court noted that, for the German-speaking public, the term ‘mozartkugel’, when it was in relation to, in particular, confectionery, pastries and chocolate products, was a generic and descriptive term and that, when confronted with that term, that public would perceive in the element ‘mozart’ of that term a reference to the characteristic recipe of the delicacy called ‘Mozartkugel’.

100 However, it must be noted that, in the judgment of 9 July 2008, Mozart (T‑304/06, EU:T:2008:268), the Court considered that the word ‘mozart’ itself was descriptive of the goods concerned. In other words, not only the term ‘mozartkugel’ but also the term ‘mozart’ were descriptive. Furthermore, it is important to note that neither of the two marks in respect of which genuine use had to be demonstrated in the case giving rise to the judgment of 16 May 2013, Wolfgang Amadeus Mozart PREMIUM (T‑530/10, not published, EU:T:2013:250), consisted of a single word element ‘mozart’.

101 In the present case, the contested mark, consisting of the single word element ‘steam’, benefits, by virtue of its registration, from at least a minimum degree of distinctive character (see, to that effect, judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraphs 43 and 44 and the case-law cited).

102 As for the argument that the presence of that figurative element on the other side of the transport cases will alter the distinctive character of the sign STEAM BEER when both sides of the cases at issue are perceived simultaneously, it should be noted that that circumstance is conditional upon a particular juxtaposition of separate packages, particularly when they are placed on a transport pallet. In any event, even in such a situation, it is possible to distinguish between the different transport cases, with the result that it cannot reasonably be maintained that the presence of the figurative sign ANCHOR STEAM BEER on the side of the transport cases could alter the distinctive character of the sign STEAM BEER, on the front face of those cases.

103 Similarly, the applicant’s argument that the presence on the side of the transport case of the figurative sign ANCHOR STEAM BEER influences the perception of the sign STEAM BEER on the front of that case must be rejected. That argument rests on the premiss that the relevant public will perceive the front and side faces of the transport case simultaneously. That, however, is a purely random circumstance for the purpose of considering that the distinctive character of the contested mark could thus be altered.

104 It follows that the complaint alleging that the distinctive character of the contested mark was altered by its use in the form of the sign STEAM BEER must be rejected.

105 While acknowledging that the distinctive character of a registered mark could not be challenged in revocation proceedings, the applicant criticises the Board of Appeal for finding that the meaning of the sign STEAM BEER had to be taken into account in assessing the use of the contested mark, which is not used in a stand-alone position.

106 The applicant submits that the inscription ‘steam beer’, featuring on the transport cases supposedly put on the market by the intervener, describes a type of beer. Thus, according to the applicant, the relevant public, knowing that that term describes a type of beer, would understand that inscription only as an indication that that case contained a beer of the type ‘steam beer’. That public would not regard that inscription as an indication of the commercial origin of the goods. It adds that no other evidence is required to demonstrate that the expression ‘steam beer’ is used descriptively. Furthermore, according to the applicant, the way in which the intervener describes its products, or the category to which it wishes to assign them, is irrelevant, since the only relevant factor is the perception of the relevant public.

107 The applicant takes the view, in particular, that the question as to whether the combination of the two words ‘steam beer’ was used purely descriptively by third parties was decisive in the present case, contrary to the finding of the Board of Appeal. The applicant mentions that it submitted comprehensive information on the meaning of the expression ‘steam beer’, in particular extracts from a dictionary and examples of numerous breweries using that term as a generic indication of a type of beer. Similarly, in referring to an extract from the online encyclopaedia Wikipedia, the applicant submits that the type of beer produced by the intervener was ‘steam beer’. Furthermore, that source is cited by EUIPO’s examiner in a decision relating to the refusal of registration of the sign STEAM BREW.

108 In addition, the applicant considers that the presence of the element ‘®’, which is small in size, is not decisive for the purpose of determining whether a term is used as a trade mark or as a description of a characteristic of the goods at issue.

110 The Board of Appeal found, in the same way as the Cancellation Division, that the purpose of revocation proceedings was not to assess the distinctive character of the contested mark. In that regard, it stated that it had not been demonstrated that the sign STEAM BEER affixed on the transport cases was used by the intervener as a descriptive indication of the type of beer. Similarly, the term ‘steam’ bears the element ‘®’ and is represented in a figurative form. In addition, the Board of Appeal took the view that the question as to whether the expression ‘steam beer’ had been used generically by third parties, after the registration of the contested mark, was another issue. Lastly, the Board of Appeal found that the applicant had not submitted any evidence to show that the goods covered by the contested mark were described as corresponding to a ‘steam beer’. Conversely, the intervener has shown that its beer was described as belonging to the category ‘California Common’.

111 With regard to the case-law relied on by the applicant, namely the judgments of 16 May 2013, Wolfgang Amadeus Mozart PREMIUM (T‑530/10, not published, EU:T:2013:250), and of 14 April 2016, PICCOLOMINI (T‑20/15, EU:T:2016:218), the Board of Appeal highlighted the fact that, in the cases giving rise to those judgments, the marks at issue had not been used in accordance with their essential function.

112 In the present case, it must be held, as the Board of Appeal did, that, as is apparent from the photographs of the transport cases, provided by the intervener, the sign STEAM BEER was not used in a descriptive manner, but rather as an indication of commercial origin. It is apparent from those photographs that the sign at issue is represented in a figurative form and appears to be central, due both to its size and to its position in relation to the other elements present on the front face of the transport cases. Thus, taking into account the tangible representation of the sign STEAM BEER on the transport cases, it cannot be maintained that that sign was used descriptively. In that regard, it should also be borne in mind, as has been stated in paragraph 97 above, that the addition of the element ‘beer’ does not alter the distinctive character of the contested mark.

113 As regards the presence of the symbol ‘®’, near the element ‘steam’, the applicant is indeed entitled to rely on the judgment of 14 February 2017, Pandalis v EUIPO – LR Health & Beauty Systems (Cystus) (T‑15/16, not published, EU:T:2017:75). In paragraph 44 of that judgment, the Court, after noting that there was no established practice whereby the symbol ‘®’ would automatically confer distinctive character on a descriptive indication, held that the Board of Appeal was justified in finding that the use of that symbol was not a decisive factor in examining whether the term ‘cystus’ was used as an EU trade mark or by way of description of the essential active ingredient of the goods concerned. However, in finding that the use of the symbol ‘®’ was not ‘decisive’, the Court did not maintain that that element was irrelevant, with the result that the Board of Appeal could not be criticised for having noted the presence of that symbol close to the element ‘steam’.

114 Furthermore, in view of the arguments put forward by the applicant, it must be held that the applicant claims not only that the sign STEAM BEER is used descriptively, thereby referring to the tangible representation of that sign on the evidence produced, but also that it is inherently descriptive of the goods at issue, thus calling into question the distinctiveness of the contested mark. That is apparent in particular from paragraph 78 of the application, in which the applicant stated, inter alia, that it was asking ‘how the relevant public, knowing that “[s]team [b]eer” [was] a type of beer, should perceive the term “[steam beer]”on a transport case, if not as an indication that the transport case in question contains a beer of the “[s]team [b]eer” type.’ It follows that, according to the applicant, any use of the expression ‘steam beer’ in relation to beer is descriptive.

115 In that regard, it is sufficient to note, as the Board of Appeal pointed out in paragraph 32 of the contested decision, that the purpose of revocation proceedings is not to challenge the distinctive character of the contested mark. It has already been held that it is not for EUIPO and the Court, in revocation proceedings, to call into question the presumption that a registered EU trade mark must be regarded as not being devoid of any distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001. Only the degree of distinctiveness of the mark at issue can be examined in the event that the mark is not used as registered (see, to that effect, judgment of 10 October 2017, Klement v EUIPO – Bullerjan (Form of an oven), T‑211/14 RENV, not published, EU:T:2017:715, paragraph 26).

116 Accordingly, it must be held that all of the arguments relating to the weak distinctive character of the sign STEAM BEER are ineffective in the present case.

117 Moreover, the Board of Appeal was justified in finding that the judgments of 16 May 2013, Wolfgang Amadeus Mozart PREMIUM (T‑530/10, not published, EU:T:2013:250), and of 14 April 2016, PICCOLOMINI (T‑20/15, EU:T:2016:218), concerned the specific conditions of use of a registered mark and not the calling into question of the distinctive character of that mark when assessing its genuine use.

118 It follows that the complaint alleging the descriptive use of the sign STEAM BEER must be rejected.

119 In view of the foregoing considerations, the applicant has not shown that the Board of Appeal’s assessments as to the demonstration of genuine use of the contested mark were vitiated by error, with the result that the present plea in law must be rejected in its entirety.

120 As none of the pleas in law put forward by the applicant, either for annulment or for alteration, is well founded, the action must be dismissed in its entirety.

121 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.

122 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Privatbrauerei Eichbaum v EUIPO - Anchor Brewing Company (STEAM) (EU trade mark - Judgment) [2022] EUECJ T-609/21 (14 September 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T60921.html Cite as: ECLI:EU:T:2022:563, EU:T:2022:563, [2023] ETMR 2, [2022] EUECJ T-609/21

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