C. & S. v EUIPO - Scuderia AlphaTauri (CS jeans your best fashion partner) (EU trade mark - Judgment) [2023] EUECJ T-645/22 (28 June 2023)

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(EU trade mark – Revocation proceedings – EU figurative mark CS jeans your best fashion partner – Lack of genuine use of the mark – Nature of use – Lack of use in connection with the goods in respect of which the mark is registered – Article 58(1)(a) of Regulation (EU) 2017/1001)

C. & S. Srl, established in Umbertide (Italy), represented by E. Montelione, lawyer,

European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,

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

Scuderia AlphaTauri SpA, established in Faenza (Italy), represented by A. Renck and S. Petivlasova, lawyers,

composed of F. Schalin, President, I. Nõmm (Rapporteur) and D. Kukovec, 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 under Article 263 TFEU, the applicant, C. & S. Srl, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 August 2022 (Case R 182/2022-1) (‘the contested decision’).

2 On 20 September 2010, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (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 in respect of which registration was sought are in Class 25 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: ‘Clothing, footwear, headgear’.

6 On 3 December 2020, the intervener, Scuderia AlphaTauri S.p.A, filed an application for revocation of the contested mark on the ground set out in Article 58(1)(a) of Regulation 2017/1001.

7 On 2 December 2021, the Cancellation Division upheld that application and revoked the contested mark as from 3 December 2020.

8 On 28 January 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

9 By the contested decision, the First Board of Appeal dismissed the appeal on the ground that, examined as a whole, the evidence submitted by the applicant did not prove genuine use of the contested mark in connection with the goods covered by that mark. First of all, it took the view that certain items of evidence (namely a registration report of the applicant, financial statements for the years 2015 to 2019 and undated presentations of the applicant) made no reference at all to the contested mark.

10 Next, it took the view that other evidence (namely several invoices dated between 4 February 2015 and 10 July 2020 and a sponsorship calendar of a football team for the year 2015) did not prove use of the contested sign in connection with the goods covered by the contested mark, since that evidence did not appear to relate to the sale of clothing, but to the provision of services, namely the design and custom manufacturing of clothing.

11 Lastly, it took the view that evidence submitted by the applicant (namely undated photos of goods and shop fronts) showed use of a mark in a form differing from the contested mark in elements which altered the distinctive character of that mark in the form in which it was registered.

– order the applicant to pay the costs in the event that a hearing is convened.

15 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 58(1) of Regulation 2017/1001 on the ground that the Board of Appeal erred in its assessment of the genuine nature of the use of the contested mark. In its first complaint, the applicant criticises the Board of Appeal for not having taken the view that the use of the contested mark in connection with clothing manufacturing services amounted to use of that mark in connection with clothing covered by the contested mark. In the second complaint, the applicant submits that the Board of Appeal erred in taking the view that the use of an element of the contested mark did not constitute genuine use of that mark in accordance with point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.

17 Given the date on which the application for revocation at issue was filed, namely 3 December 2020, which is decisive for the purposes of identifying the substantive law applicable, the present dispute is governed by the substantive provisions of Regulation 2017/1001 (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 2, and of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3).

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

19 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 inter alia 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. However, that provision provides that no person may claim that the proprietor’s rights in a trade mark should be revoked where, during the interval between expiry of that period and filing of the application for revocation, genuine use of the trade mark has been started or resumed.

20 According to settled case-law, 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 (judgment of 21 November 2013, Recaro v OHIM – Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 19; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43, and order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 27).

21 In addition, 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 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28, and of 8 July 2020, Euroapotheca v EUIPO – General Nutrition Investment (GNC LIVE WELL), T‑686/19, not published, EU:T:2020:320, paragraph 35).

22 It is in the light of those considerations that the applicant’s complaints should be examined.

23 It should be noted, as a preliminary point, that the Board of Appeal was fully entitled to take the view, in paragraph 18 of the contested decision, that the period in respect of which the applicant had to prove genuine use of the contested mark corresponded, in the present case, to the five years preceding the filing of the application for revocation, namely from 3 December 2015 to 2 December 2020 inclusive.

24 In order to prove genuine use of the contested mark, the applicant submitted, inter alia, the following evidence during the administrative proceedings:

– undated company presentations of the proprietor of the contested mark, partly in Italian and partly in English.

25 It is in the light of that evidence that the two complaints raised by the applicant should be examined.

The first complaint, alleging failure to take into account the use of the contested mark as regards clothing manufacturing services

26 In the first complaint, the applicant submits, first, that use of a mark in connection with clothing manufacturing services amounts to use of that mark in connection with clothing, secondly, that EUIPO and the intervener accept that it is a clothing manufacturing undertaking and, thirdly, that the contested mark is used in connection with ‘clothing manufacturing’ services. It thus submits that the use which it made of the contested mark in connection with those services also constitutes use of the mark in connection with clothing.

27 In that regard, it maintains, first of all, that, in the context of the assessment of a likelihood of confusion, a mark designating ‘clothing’ would be protected even against an identical or similar sign used as a mark designating clothing manufacturing services. Next, and in that sense, it states that, according to the case-law, retail services concerning the sale of specific goods are similar to an average degree to those specific goods. Lastly, and in that regard, it relies on the link of complementarity between the use of the contested mark in connection with clothing, on the one hand, and the service of manufacturing clothing for third parties, on the other.

28 By way of auxiliary argument, the applicant also appears to submit that the contested mark was used in connection with the registered goods, arguing that it appears on invoices dated between 4 February 2015 and 10 July 2020 and on a calendar in the context of the sponsorship of a football team.

30 In paragraphs 22 to 24 of the contested decision, the Board of Appeal stated that the calendar did not contain any information on the goods offered under the contested mark and that the invoices dated between 4 February 2015 and 10 July 2020 submitted by the applicant did not relate to the sale of goods covered by the contested mark, but to the provision of services, namely the design and custom manufacturing of clothing under the licence of a third party’s trade mark. It thus concluded that the calendar and the invoices were not solid and objective evidence of the use of the contested mark in relation to the goods covered by that mark. Accordingly, it took the view, in essence, that use of a mark in connection with the service of manufacturing clothing cannot amount to use of the same mark in connection with clothing.

32 In the first place, it should be noted that the applicant does not put forward any argument seeking to call into question the fact that the evidence of genuine use of the contested mark does not relate to the goods in respect of which it was registered, inter alia clothing.

33 In that regard, first, the applicant merely relies on the presence of the contested mark on invoices and on a calendar in the context of the sponsorship of a football team. It does not put forward any argument seeking to call into question the Board of Appeal’s finding, set out in paragraphs 21 and 22 of the contested decision, that neither the invoices nor the calendar show a sufficient connection between the contested mark and the registered goods. It must be stated that the calendar does not contain any information on the goods that were offered under the contested mark. In addition, it must be observed that the invoices cannot be cross-referenced with the photos of the goods submitted by the applicant, since those photos do not contain any product code or other identifier which would allow it to be established with the required certainty that the goods shown in the photos are actually the goods listed in the invoices.

34 Secondly, it should be noted that the applicant admits itself in its pleadings that it is a manufacturing undertaking whose sole activity consists in the manufacturing of clothing.

35 The Board of Appeal therefore correctly took the view that the evidence submitted by the applicant would not relate to the sale of goods covered by the contested mark.

36 In the second place, contrary to what the applicant submits, the use of the contested mark in connection with clothing manufacturing services cannot be regarded as genuine use of the mark at issue in connection with clothing.

37 First, it is apparent from Article 18(1) and Article 58(1)(a) of Regulation 2017/1001, referred to in paragraphs 18 and 19 above, that the requirement that there be genuine use of the contested EU trade mark must concern the goods or services ‘in respect of which it is registered’. Those provisions do not indicate that use of a mark in connection with goods or services similar to those in respect of which it is registered can be regarded as genuine use of the mark at issue.

38 In that regard, secondly, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in examining whether genuine use has been proved in connection with the goods or services in respect of which the contested mark has been registered (see, by analogy, judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 29). That can be deduced from the fact that, according to the case-law, genuine use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him or her, without any possibility of confusion, to distinguish those goods or services from others which have another origin (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 36). The importance of the criterion of the purpose is also consistent with the case-law which states that, when assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing, in particular, whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods and services covered by the mark (judgment of 1 September 2021, Sony Interactive Entertainment Europe v EUIPO – Vieta Audio (Vita), T‑561/20, not published, EU:T:2021:524, paragraph 59).

39 In the present case, it cannot be disputed that the specific needs of consumers of the goods covered by the contested mark are not the same as those of users of the service of manufacturing clothing.

40 Thirdly, the Court has recalled the need for the contested mark to be used on the evidence on which it appears in such a way as to establish a link between it and the goods concerned. In that regard, it has already been held, in certain cases, that evidence submitted did not contain any indication that there was a house brand for the goods at issue; rather, the use of the contested mark, as was apparent from the evidence, related to the company, trade or shop name of the proprietor of the contested mark, enabling the consumer to identify the retail shop in which he or she could buy the goods, and was not intended to distinguish the goods of that proprietor from similar goods of third parties (see, to that effect, judgments of 13 May 2009, Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK), T‑183/08, not published, EU:T:2009:156, paragraphs 31 and 32, and of 17 September 2019, Rose Gesellschaft v EUIPO – Iviton (TON JONES), T‑633/18, not published, EU:T:2019:608, paragraph 65).

41 Likewise, the Court has taken the view that, given the fact that, on reading the invoices adduced before it, none of them mentioned goods covered by the contested mark, those invoices were, of themselves, incapable of proving that the proprietor of the mark at issue actually sold goods under that mark and were therefore incapable of showing genuine use of that mark, even though the contested sign appeared at the head of those invoices (see, to that effect, judgments of 18 January 2011, Advance Magazine Publishers v OHIM – Capela & Irmãos (VOGUE), T‑382/08, not published, EU:T:2011:9, paragraph 48, and of 29 September 2011, New Yorker SHK Jeans v OHIM – Vallis K.-Vallis A. (FISHBONE), T‑415/09, not published, EU:T:2011:550, paragraph 66).

42 In the present case, it should be noted that the evidence adduced did not contain any indication that there was a house brand of the applicant for clothing. The use of the contested mark, as is apparent from that evidence, related rather to that mark in so far as it served to identify the service of manufacturing clothing for third parties and was not intended to distinguish clothing sold by the applicant from similar goods of third parties. Therefore, the use of the contested mark, as is apparent from the evidence adduced by the applicant, was intended only to identify the applicant’s activity as a clothing manufacturing undertaking.

43 In that context, and fourthly, it is necessary to interpret the list of goods and services in respect of which an earlier mark is registered and with regard to which proof of genuine use has been requested, in order to ascertain the extent of the protection of that mark and to settle the issue of its genuine use, in the most coherent manner, in the light not only of its literal meaning and its grammatical construction, but also, if there is a risk of an absurd result, of its context and the actual intention of the mark’s proprietor as regards its scope (see, to that effect, judgment of 17 October 2019, Alliance Pharmaceuticals v EUIPO – AxiCorp (AXICORP ALLIANCE), T‑279/18, EU:T:2019:752, paragraph 50).

44 Moreover, while it is true that, as the applicant observes, the Nice Classification is purely administrative, it is still necessary to refer to it in order to determine, where necessary, the range or the meaning of the goods and services in respect of which a mark has been registered (judgment of 10 September 2014, DTM Ricambi v OHIM – STAR (STAR), T‑199/13, not published, EU:T:2014:761, paragraph 35).

45 In the present case, in view of the clear literal meaning of the list of goods in Class 25, namely ‘clothing, footwear, headgear’, the consideration that clothing, on the one hand, and the service of manufacturing clothing, on the other, can be distinguished from each other and cannot be confused in the context of demonstrating genuine use of the contested mark is the result of an interpretation which is perfectly coherent within the meaning of the case-law cited in paragraph 43 above.

46 Consequently, the applicant cannot reasonably rely on evidence intended to show genuine use of the contested mark in connection with the service of manufacturing clothing in order to demonstrate genuine use of the contested mark in connection with clothing.

47 Fifthly, the applicant, relying on the EUIPO Guidelines, submits that a mark designating ‘clothing’ would be protected even against an identical or similar sign used as a mark covering clothing manufacturing services and that retail services concerning the sale of specific goods are similar to an average degree to those specific goods.

49 First of all, as has been noted in paragraph 37 above, proof of genuine use of the contested EU trade mark must necessarily concern the goods or services ‘in respect of which it is registered’, the scope of protection of the mark in question being limited to those goods or services which it covers.

50 Next, the criteria applied in the context of the examination of the likelihood of confusion of marks at issue for the purpose of assessing the similarity of the goods covered by the contested mark and the service of manufacturing clothing are not relevant in the present case for the purpose of determining genuine use of that mark.

51 The situation in the present case is not comparable to that which gave rise to the case-law according to which the definition of an independent subcategory of goods or services must be based on the same criteria, whether in the context of an application for restriction of the list of goods or services covered by the application for registration or of an opposition, so as to enable the goods or services at issue, defined on the basis of the same criteria, to be compared in the context of the assessment of the likelihood of confusion (judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 41).

52 Lastly, as is apparent from paragraph 40 above, the Court has already held that, for the purpose of demonstrating genuine use of a mark, the trade or shop name of the proprietor of the mark at issue, enabling the consumer to identify a retail store in which he or she may purchase the goods, is not, in principle, intended to distinguish the goods of that proprietor from similar goods of third parties.

The second complaint, alleging an error in the assessment of evidence containing an element of the contested mark

54 In the second complaint, the applicant submits that, contrary to what the Board of Appeal found, it made use of the contested mark in a form differing in elements which did not alter the distinctive character of that mark in the form in which it had been registered. It observes that the mark was used for the goods for which it was registered, in the following form:

55 It submits that that use does not constitute use in a form which would alter the distinctive character of the contested mark.

57 It must be noted that point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 relates to a situation where the national or EU trade mark at issue is used in trade in a form slightly different from the form in which registration was effected. The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark in question may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgments of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 27, and of 8 July 2020, GNC LIVE WELL, T‑686/19, not published, EU:T:2020:320, paragraph 53).

58 Thus, in order to find that the distinctive character of the trade mark as registered has altered, it is necessary to carry out an assessment of the distinctive and dominant character of the elements added or removed, on the basis of the intrinsic qualities of each of those elements, as well as the relative position of the different elements within the arrangement of the mark (see order of 10 May 2016, Volkswagen v EUIPO – Andrã (BAG PAX), T‑324/15, not published, EU:T:2016:326, paragraph 14 and the case-law cited).

59 Furthermore, according to the case-law, it is relevant to examine whether the differences between the mark used and the mark as registered are capable or not of changing the overall impression created by that mark (see, to that effect, judgments of 10 June 2010, Atlas Transport v OHIM – Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 42, and of 10 December 2015, Sony Computer Entertainment Europe v OHIM – Marpefa (Vieta), T‑690/14, not published, EU:T:2015:950, paragraph 53).

60 It is in the light of those considerations that the applicant’s arguments relating to the use and shape of the contested mark must be examined.

61 In paragraphs 25 to 29 of the contested decision, the Board of Appeal found, first, that the distinctive elements of the contested mark consisted of the highly stylised group of letters ‘cs’ and the stylised word ‘jeans’ and, secondly, that the word element ‘your best fashion partner’ was lacking in distinctive character, since the relevant public would perceive it as a laudatory slogan. It took the view that the word element ‘jeans’ was not purely descriptive, but that it had a low degree of distinctiveness on the ground, first, that the letter ‘j’ stood out from the group of letters ‘eans’ because of its larger size and its graphical elements in the form of stitches and a button and, secondly, that the word ‘jeans’ was stylised. It also took the view that the omission of the word ‘jeans’ altered the distinctive character of the contested mark for the following reasons. First, because of its stylisation, the word element ‘jeans’ had a low degree of distinctiveness and could not be considered to be merely descriptive. Secondly, that word element interacted with the other elements of the contested mark, in particular the figurative element representing the group of uppercase letters ‘CS’. The uppercase letter ‘J’ was of the same size as the letters of the figurative element ‘CS’ in uppercase and that arrangement created a visual link between that figurative element and the group of letters ‘eans’. Thirdly, the stylised word ‘jeans’ occupied a co-dominant position together with the figurative element representing the group of letters ‘CS’ in uppercase and was visually outstanding, on account of its size and position, in the overall impression created by the contested mark.

63 The applicant’s reasoning is based on the incorrect view that the figurative sign representing the group of uppercase letters ‘CS’ constitutes the only distinctive element of the contested mark and that the word element ‘jeans’ and the expression ‘your best fashion partner’ have no distinctive character.

64 As the Board of Appeal correctly states, the word element ‘jeans’ has a low degree of distinctiveness and is therefore not merely descriptive.

65 On account of the stylisation and size of the uppercase letter ‘J’, the link which that letter makes between the figurative element representing the group of uppercase letters ‘CS’, on the one hand, and the group of letters ‘eans’, on the other, the size of those latter letters and the fact that the lowercase letter ‘s’ of the word element ‘jeans’ is very similar to the uppercase letter ‘S’ of the figurative element and therefore recalls that letter, it must be held that the word element ‘jeans’ has a weak distinctive character and that it cannot therefore be ignored.

66 Thus, in the circumstances of the present case, the figurative element representing the group of uppercase letters ‘CS’ cannot influence the overall impression which the sign creates in the mind of the relevant public so significantly that the view can be taken that the word element ‘jeans’ is negligible in that overall impression which the contested mark creates.

67 It follows that the omission of the weakly distinctive element ‘jeans’ is sufficient to alter the distinctive character of the contested mark (see, to that effect, judgment of 14 July 2021, Fashioneast and AM.VI. v EUIPO – Moschillo (RICH JOHN RICHMOND), T‑297/20, not published, EU:T:2021:432, paragraphs 43 to 45).

68 Furthermore, and as maintained, in essence, by the intervener, it is not apparent from the case file that the consumer would perceive the figurative element representing the group of uppercase letters ‘CS’ as the dominant part of the contested mark or that the element ‘jeans’ is negligible.

69 In the light of all the foregoing considerations, the second complaint should be rejected and, consequently, the single plea in law relied on by the applicant should be rejected and the action dismissed.

70 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.

71 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has requested that the applicant be ordered to pay the costs only in the event that a hearing is convened, EUIPO should be ordered, in the absence of a hearing, to bear its own costs.

2. Orders C. & S. Srl to bear its own costs and to pay those incurred by Scuderia AlphaTauri SpA;

3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> C. & S. v EUIPO - Scuderia AlphaTauri (CS jeans your best fashion partner) (EU trade mark - Judgment) [2023] EUECJ T-645/22 (28 June 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T64522.html Cite as: ECLI:EU:T:2023:363, [2023] EUECJ T-645/22, EU:T:2023:363

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