Provisional text

7 May 2025 (*)

( EU trade mark – Revocation proceedings – EU figurative mark RTL – Lack of genuine use of the mark – Article 58(1)(a) of Regulation (EU) 2017/1001 – Submission of facts and evidence for the first time before the Board of Appeal – Article 95(2) of Regulation 2017/1001 – Article 27(4) of Delegated Regulation (EU) 2018/625 – Misuse of rights )

In Case T‑1088/23,

RTL Group Markenverwaltungs GmbH,

established in Cologne (Germany), represented by W. Prinz and I. Leroux, lawyers,

applicant,

European Union Intellectual Property Office (EUIPO),

represented by A. Ringelhann, acting as Agent,

defendant,

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

Marcella Örtl,

residing in Selb (Germany), represented by J. Pröll, lawyer,

THE GENERAL COURT (Seventh Chamber),

composed of K. Kowalik-Bańczyk, President, E. Buttigieg (Rapporteur) and B. Ricziová, Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the written part of the procedure,

further to the hearing on 24 October 2024,

gives the following

1By its action under Article 263 TFEU, the applicant, RTL Group Markenverwaltungs GmbH, seeks the annulment or, in the alternative, the alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 September 2023 (Case R 86/2023-2) (‘the contested decision’).

Background to the dispute

2On 26 May 2016, the applicant obtained from 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)), registration, under No 14 884 911, of the EU figurative mark reproduced below:

(i)

3The goods and services in respect of which the mark was registered are in Classes 3, 6, 8, 9, 12, 14, 16, 18, 20, 21, 24, 25, 28, 30, 32, 33, 35, 38, 41, 42, 43 and 45 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.

4On 7 June 2021, the intervener, Ms Marcella Örtl, filed an application for revocation of the contested mark pursuant to Article 58(1)(a) of Regulation 2017/1001, on the ground that that mark had not been put to genuine use in connection with the goods or services in respect of which it was registered within a continuous period of five years.

5On 27 August 2021, the applicant submitted observations to the Cancellation Division and produced evidence of the reputation and use of the contested mark.

6By decision of 16 November 2022, the Cancellation Division partially upheld the application for revocation in respect of some goods and services for which the contested mark had been registered.

7On 13 January 2023, the applicant filed a notice of appeal with EUIPO seeking the partial annulment of the Cancellation Division’s decision, in so far as the latter had revoked the contested mark in respect of the goods and services in Classes 3, 9, 16, 24, 25, 32, 35, 41, 42 and 45 corresponding to the following description:

–Class 3: ‘Soaps; Perfumery; Cosmetics’;

–Class 9: ‘Apparatus for recording of sound or images; Apparatus for transmission of sound or images; Apparatus for the reproduction of sound or images; Video-on-demand (VOD) apparatus; Apparatus for other on-demand services; Pay TV apparatus; Apparatus for interactive television viewing; Apparatus for teleshopping; Cinematographic apparatus; Cameras; Mechanisms for coin-operated apparatus, included in Class 9; Recording discs; Optical storage discs (sound and images), all the aforesaid goods in recorded and blank form’;

–Class 16: ‘Printed matter; Books; Newspapers; Periodicals; Paper, cardboard; Paper sheets for note taking’;

–Class 24: ‘Fabrics, including textiles, textile goods and textile substitutes’;

–Class 25: ‘Clothing’;

–Class 32: ‘Beers and brewery products; Mineral water [beverages]; Aerated water; Non-alcoholic beverages; Fruit drinks; Juices’;

–Class 35: ‘Advertising, marketing and promotional services’;

–Class 41: ‘Talent promotion, namely talent scouting for others by conducting seminars, courses, conferences, training events and shows’;

–Class 42: ‘Development of database software (programming) for providing information on the internet and on other audiovisual media, and creation of homepages and websites on the internet and on other audiovisual media; Technical consultancy with regard to the development, design, production and broadcasting of television and radio programmes, databases and presentations on the internet and on other audiovisual media’;

–Class 45: ‘On-line social networking services; On-line dating services; Arranging of wedding receptions’.

8The statement of grounds of the appeal was received by EUIPO on 15 March 2023. The intervener did not submit any observations on that statement. On 15 September 2023, the applicant submitted further observations.

9By the contested decision, the Board of Appeal, first, declared the application for revocation admissible and, secondly, partially annulled the Cancellation Division’s decision in so far as it had declared the contested mark to be revoked in respect of ‘optical storage discs’ in Class 9, ‘broadcasting of television, radio and electronic media advertising’ services in Class 35, and ‘On-line social networking services; On-line dating services’ in Class 45, and dismissed the appeal as to the remainder.

Forms of order sought

10Having regard to the clarification of its claims made at the hearing, the applicant claims that the Court should:

–annul the contested decision or, if appropriate, alter it to the effect that the application for revocation of the contested mark is rejected in respect of the goods in Class 3, Class 9 with the exception of ‘optical storage discs (sound and images)’, and Classes 16, 24, 25 and 32, and all the services in Classes 35, 41 and 42 for which that mark had been registered (see paragraph 7 above);

–order EUIPO to pay the costs.

11EUIPO contends that the Court should:

–dismiss the action;

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

12The intervener contends that the Court should:

–dismiss the action;

–order the applicant to pay the costs.

Law

13In support of its action, the applicant relies on four pleas in law. The first, second and third pleas allege infringement of Article 58(1)(a) of Regulation 2017/1001, in that the Board of Appeal made errors of law and of assessment in upholding the revocation of the contested mark in respect of the goods and services in the various classes for which it had been registered and, in essence, infringement of Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1). The fourth plea concerns, in essence, infringement of Article 63(1)(a) of Regulation 2017/1001, in that the Board of Appeal incorrectly found that the misuse of rights allegedly made by the intervener by reason of the filing of the applications for revocation was not relevant to the examination of those applications.

14The Court deems it appropriate to examine first of all the fourth plea, then the first plea and, lastly, the second and third pleas together.

Preliminary observations

15Article 58(1)(a) of Regulation 2017/1001 provides that 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.

16There 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 (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).

17Furthermore, it follows from a combined reading of Article 58(1)(a) of Regulation 2017/1001 and Article 58(2) of that regulation that evidence of genuine use must, in principle, cover all of the goods or services for which a contested mark is registered. If the evidence of genuine use is adduced only in respect of part of the goods or services for which the contested mark is registered and if the other conditions laid down by Article 58(1)(a) of Regulation 2017/1001 are met, the rights of the proprietor of that mark may be declared to be revoked in respect of the goods or services for which it has not adduced evidence of genuine use or has even adduced no evidence of use at all (judgment of 18 October 2016, August Storck v EUIPO – Chiquita Brands (Fruitfuls), T‑367/14, not published, EU:T:2016:615, paragraph 21).

18If a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45, and of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23).

19When 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 – Espadafor 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).

20Furthermore, 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).

21It is in the light of those principles that it is appropriate to examine whether the Board of Appeal made any errors of law or of assessment when it upheld the partial revocation of the contested mark in respect of the goods and services in Classes 3, 9, 16, 24, 25, 32, 35, 41 and 42.

22In the present case, both the Cancellation Division and the Board of Appeal regarded the period from 7 June 2016 to 6 June 2021 as being the five-year period in respect of which the applicant was required to prove genuine use of the contested mark, which the applicant does not dispute.

The fourth plea in law, alleging a misuse of rights

23The Board of Appeal found, in paragraphs 18 and 19 of the contested decision, that Article 63(1)(a) of Regulation 2017/1001 did not require the applicant for a declaration of revocation to demonstrate an interest in bringing proceedings. Thus, it stated that such an interest in bringing proceedings, or a financial interest, were not relevant for the purposes of assessing the admissibility of an application for revocation. Furthermore, in paragraphs 20 and 21 of the contested decision, the Board of Appeal noted that there was no evidence to suggest that the intervener had brought the application for revocation in a manner that constituted a misuse of rights.

24The applicant disputes the Board of Appeal’s finding and, relying on case-law and a decision given by the Grand Board of Appeal of EUIPO, maintains that, in some circumstances, the abusive nature of the application for revocation may lead to its inadmissibility. The applicant also refutes the Board of Appeal’s finding that there was no evidence to suggest that the application for revocation had been filed abusively.

25EUIPO and the intervener dispute the applicant’s arguments.

26In that regard, it should be borne in mind that, under Article 63(1)(a) of Regulation 2017/1001, an application for revocation of an EU trade mark may be submitted to EUIPO in the cases defined in Articles 58 and 59 of that regulation by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which, under the terms of the law governing it, has the capacity in its own name to sue and be sued.

27According to the case-law, while relative grounds for refusal of registration protect the interests of proprietors of some earlier rights, absolute grounds for refusal of registration and grounds for revocation aim to protect the public interest underlying them, which explains why Article 63(1)(a) of Regulation 2017/1001 does not require the applicant to show an interest in bringing proceedings (see judgment of 16 November 2017, Carrera Brands v EUIPO – Autec (Carrera), T‑419/16, not published, EU:T:2017:812, paragraph 33 and the case-law cited).

28That analysis is borne out by recital 24 of Regulation 2017/1001, which states that EU trade marks are protected only where they are actually used. In the light of such a consideration, the purpose of Article 63(1)(a) of Regulation 2017/1001 is to allow the broadest possible range of people to challenge an EU trade mark which has not been put to genuine use for a given period of time without requiring them to demonstrate an interest in bringing proceedings (see judgment of 16 November 2017, Carrera

29, T‑419/16, not published, EU:T:2017:812, paragraph 34 and the case-law cited).

30Since, under Article 63(1)(a) of Regulation 2017/1001, an application for revocation may be submitted by ‘any natural or legal person’ for no use or insufficient use of a mark, the question of whether there has been a misuse of rights is not relevant for the purpose of analysing the admissibility of an application for revocation brought under that provision (see judgment of 7 September 2022, Peace United v EUIPO – 1906 Collins (MY BOYFRIEND IS OUT OF TOWN), T‑699/21, not published, EU:T:2022:528, paragraph 24 and the case-law cited; see also, to that effect, order of 19 January 2021, Leinfelder Uhren München v EUIPO, C‑401/20 P, not published, EU:C:2021:31, paragraph 21).

31Furthermore, Article 63(1)(a) of Regulation 2017/1001 does not make the admissibility or validity of an application for revocation subject to good faith on the part of the applicant for a declaration of revocation. The revocation for non-use of a mark during the five-year period provided for is a legal consequence imposed by Article 58(1)(a) of Regulation 2017/1001 and by Article 64(2) of that regulation, and the trade mark’s proprietor does not gain the right to retain its registration because the applicant for a declaration of revocation has also engaged in unfair competition (see, to that effect and by analogy, order of 2 September 2020, DTE Systems v EUIPO – Speed-Buster (PedalBox +), T‑801/19, not published, EU:T:2020:383, paragraph 38 and the case-law cited).

32Admittedly, as noted by the applicant, it follows from the case-law that EU law cannot be relied on for abusive or fraudulent ends (see, to that effect, judgment of 28 July 2016, Kratzer, C‑423/15, EU:C:2016:604, paragraph 37).

33The applicant is of the view that, in accordance with the principle established by that case-law, the submission of an application for revocation may, in exceptional and specific circumstances, such as those at the origin of the case which gave rise to the decision of the Grand Board of Appeal of 1 February 2020 (Case R 2445/2017-G, ‘the Sandra Pabst case’), constitute an abusive practice or be part of such a practice.

34However, as the Board of Appeal correctly stated, in essence, in paragraph 21 of the contested decision, the facts of the present case are not comparable to those of the Sandra Pabst case, since the latter was characterised by exceptional circumstances, which are absent in the present case. First, the Sandra Pabst case related to a company that had been artificially established for the sole purpose of filing multiple applications for revocation, which is not the case of the intervener in the present case. Secondly, it related to the almost simultaneous filing, by a single company, of 37 applications for revocation against the same party and of multiple applications for revocation with EUIPO (850 applications over a period of two years), whereas, in the present case, the applicant refers only to the two applications for revocation filed with EUIPO concerning its marks.

35Thirdly, the Grand Board of Appeal noted, in the Sandra Pabst case, that some of the many applications for revocation concerned were doomed to fail and were used solely for the purpose of exerting pressure or as a ‘retaliatory measure’ due to the applicant for revocation’s failure to negotiate acquisition of the marks at issue’ and therefore in order to obtain an unfair advantage by forcing the proprietor of those marks to conclude an agreement to transfer them. The applicant does not demonstrate that such circumstances existed in the present case. The intervener’s knowledge of the use of the contested mark in the media sector, relied on by the applicant, due to its reputation, does not in itself demonstrate that the application for revocation of that mark in respect of goods and services which have no obvious connection with the media sector was doomed to fail and therefore served only to place an undue burden on it or to put pressure on it. On the contrary, the fact that the intervener intends to use a mark which is likely to cause confusion due to similarities with the contested mark, which is apparent from a dispute over the applicant’s opposition to the registration of a mark filed by the intervener before the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office), demonstrates the latter’s actual interest in the register of marks being ‘updated’ in so far as concerns the extent of the monopoly held by the applicant on the contested mark, in accordance with recital 24 of Regulation 2017/1001, according to which there is justification for protecting EU trade marks only where they are actually used.

36In the light of the foregoing, the Board of Appeal made no error of law or of assessment in rejecting the applicant’s submission concerning the inadmissibility of the application for revocation due to the alleged abusive nature of that application. Accordingly, the fourth plea in law must be rejected as unfounded.

The first plea in law, alleging infringement of Article 58(1)(a) of Regulation 2017/1001 concerning the revocation of the contested mark in respect of advertising, marketing and promotional services, with the exception of ‘broadcasting of television, radio and electronic media advertising’, in Class 35, and infringement of Article 95(2) of that regulation

37The applicant maintains that the Board of Appeal infringed Article 58(1)(a) of Regulation 2017/1001 by finding that it had not demonstrated genuine use of the contested mark in respect of advertising, marketing and promotional services, with the exception of ‘broadcasting of television, radio and electronic media advertising’, in Class 35.

38In that context, the applicant also disputes the Board of Appeal’s refusal to take into account the observations and evidence that it had submitted before it on 15 September 2023 (see paragraph 8 above). The applicant confirmed at the hearing that those arguments should be understood, as EUIPO interpreted them, as claiming infringement by the Board of Appeal of Article 95(2) of Regulation 2017/1001, as clarified by Article 27(4) of Delegated Regulation 2018/625.

The refusal to take into account the observations and evidence submitted by the applicant on 15 September 2023

39The applicant maintains that the Board of Appeal made a procedural error by failing to take into account the observations and evidence submitted by the applicant before it on 15 September 2023, which supplemented the evidence already submitted before the Cancellation Division and in the statement setting out the grounds of appeal. In particular, it claims that the Board of Appeal failed to exercise its discretion in this respect.

40EUIPO disputes the applicant’s arguments and argues that the possibility for the Board of Appeal to take into consideration facts and evidence submitted for the first time before it, within the meaning of Article 27(4) of Delegated Regulation 2018/625, necessarily refers only to documents produced in accordance, in particular, with the provisions of Articles 22, 24 and 26 of that same regulation. Since the applicant did not submit the observations and evidence at issue in the statement of grounds of the appeal or any reply, the Board of Appeal was not required to examine their admissibility under the provisions of Article 95(2) of Regulation 2017/1001 and Article 27(4) of Delegated Regulation 2018/625, respectively.

41The intervener maintains that, since the observations of 15 September 2023 were submitted outside the procedural time limits set for submitting observations, the Board of Appeal was right not to take them into consideration in its decision.

42The Board of Appeal decided, in paragraph 13 of the contested decision, that there was no need to take into account the applicant’s submission of 15 September 2023, justifying that finding by reference to Article 95(2) of Regulation 2017/1001, the fourth sentence of Article 68(1) of that same regulation and Article 26 of Delegated Regulation 2018/625.

43It follows from that statement of reasons, in essence, as confirmed by EUIPO at the hearing in response to a question put by the Court, that the Board of Appeal found that, since the statement of 15 September 2023 had not been produced in due time (see Article 95(2) of Regulation 2017/1001), namely within four months of the date of notification of the Cancellation Division’s decision (see the fourth sentence of Article 68(1) of Regulation 2017/1001), or, upon a reasoned request, in a reply to the response of the other party to the proceedings before the Board of Appeal (see Article 26 of Delegated Regulation 2018/625), it was appropriate to exclude it from its examination.

44In that regard, it must be noted that, under Article 95(2) of Regulation 2017/1001, EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

45It results from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation 2017/1001 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 77 and the case-law cited).

46In stating that EUIPO ‘may’ decide to disregard such evidence, Article 95(2) of Regulation 2017/1001 grants it wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take that evidence into account (see judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 78 and the case-law cited; judgment of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraph 56).

47The taking into account by EUIPO of those additional facts and evidence are in no way a ‘favour’ granted to one party or the other, but rather must result from an objective, reasoned exercise of the discretion conferred on EUIPO by Article 95(2) of Regulation 2017/1001 (see judgment of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraph 58 and the case-law cited).

48The exercise of EUIPO’s discretion provided for in Article 95(2) of Regulation 2017/1001 is governed by Article 27(4) of Delegated Regulation 2018/625, the purpose of which, in accordance with recital 8 of that delegated regulation, is to set out precisely the limits of the discretion of the Boards of Appeal of EUIPO concerning the examination of evidence filed late.

49According to the case-law, it is for the Court to assess whether the Board of Appeal in fact exercised the broad discretion conferred on it for the purpose of deciding, in a reasoned manner and taking due account of all the relevant circumstances, whether it was necessary to take account of the facts or evidence produced for the first time before it in order to deliver its decision (see, to that effect, judgment of 30 November 2022, ADS L. Kowalik, B. Włodarczyk v EUIPO – ESSAtech (Accessory for wireless remote controls), T‑611/21, EU:T:2022:739, paragraph 36 and the case-law cited).

50In the present case, it should be noted that, as the applicant acknowledges, its observations of 15 September 2023 and the evidence relating thereto were not produced either before the Cancellation Division or within the time limit for filing the statement of grounds of the appeal. The applicant could also not apply for leave to file a possible reply under Article 26 of Delegated Regulation 2018/625, since the other party had not responded to the statement of reasons.

51Nevertheless, in accordance with the case-law referred to in paragraphs 44 to 47 above, where the facts and evidence were not submitted and produced by the applicant within the time limits accorded to the applicant for that purpose under the provisions of Regulation 2017/1001, and thus not in due time within the meaning of Article 95(2) of that regulation, the Board of Appeal had to exercise its discretion, as governed by Article 27(4) of Delegated Regulation 2018/625, in order to decide whether or not it was appropriate to take those elements into account when making the decision it was called upon to make.

52Such an objective, reasoned exercise of the discretion under Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Delegated Regulation 2018/625, within the meaning of the case-law recalled in paragraph 46 above, is clearly lacking in the present case, in so far as the Board of Appeal rejected the facts and evidence submitted by the applicant on 15 September 2023 on the sole ground that they had not been produced with one of the written submissions referred to in Articles 22, 24 and 26 of Delegated Regulation 2018/625, without having examined whether the conditions referred to in Article 27(4) of Delegated Regulation 2018/625, under which such facts and evidence produced for the first time before it may be accepted, were satisfied in the present case.

53Contrary to what is indicated in that ground of the contested decision and to what EUIPO maintains, the examination of the admissibility of the observations and evidence produced for the first time before the Board of Appeal cannot be limited to the facts and evidence produced with the written submissions referred to in Articles 22, 24 and 26 of Delegated Regulation 2018/625.

54Such a limitation does not follow either from Article 95(2) of Regulation 2017/1001 or from Article 27(4) of Delegated Regulation 2018/625. The latter provision, which governs the Board of Appeal’s discretion as to the possibility of accepting facts and evidence produced for the first time before it, provides in that regard for two conditions, namely, first, they must be relevant on the face of it, and, secondly, valid reasons must be presented explaining why they have not been produced in due time. EUIPO was not able to show, in response to an oral question put by the Court, any other provision which might have specified ‘otherwise’ within the meaning of the case-law referred to in paragraph 45 above, allowing the Board of Appeal not to effectively exercise its discretion and to reject facts and evidence produced for the first time before it on the sole ground that they had been produced other than in the written submissions provided for by Delegated Regulation 2018/625.

55It must be concluded from the above that the Board of Appeal made an error in excluding from its examination the observations and evidence produced by the applicant on 15 September 2023 without exercising, in the light of the conditions laid down in Article 27(4) of Delegated Regulation 2018/625, the discretion conferred on it by Article 95(2) of Regulation 2017/1001.

The assessment of genuine use of the contested mark in respect of the services in Class 35

56In paragraphs 33 to 39 of the contested decision, the Board of Appeal found that the evidence produced by the applicant demonstrated the use of the contested mark in respect of a subcategory of advertising, marketing and promotional services in Class 35 for which that mark had been registered, namely in respect of ‘broadcasting of television, radio and electronic media advertising’. Consequently, it annulled the Cancellation Division’s decision in so far as it had declared the contested mark to be revoked in respect of those services and rejected the application for revocation in their respect.

57By contrast, the Board of Appeal noted that use of the contested mark had not been demonstrated in respect of other subcategories of advertising, marketing and promotional services in Class 35. It noted, first, that there was no provision of advertising services for a third-party client (paragraph 41 of the contested decision) and, secondly, that the use of the contested mark on third-party advertising posters showed that the programme presented on those posters could be watched on the television channel of the group to which the applicant belonged, but did not show that that mark was used for the purposes of providing advertising, marketing and promotional services (paragraph 42 of the contested decision).

58The applicant claims that the Board of Appeal infringed Article 58(1)(a) of Regulation 2017/1001 by finding that it had not demonstrated genuine use of the contested mark in respect of advertising, marketing and promotional services, with the exception of ‘broadcasting of television, radio and electronic media advertising’, in Class 35. By referring, in particular, to the activities of Ad Alliance (formerly IP Deutschland), a company acting as a ‘marketing company’ and as the advertising agency of the group to which it belongs, the applicant maintains that the services provided to advertisers relating to television advertising include the design of advertising strategies and the creation of advertisements for broadcast on one of the television channels of that group.

59The applicant maintains that, by not taking into account the specific features of advertising services, particularly on television, linked to the intervention of advertising agencies such as Ad Alliance, and by finding that the advertising services were provided exclusively by advertising agencies, the Board of Appeal misunderstood the functioning of the television advertising market.

60EUIPO contends that the evidence to which the applicant refers relates to the use of the contested mark in respect of the ‘broadcasting and transmission of television programmes’ services in Class 38, and ‘broadcasting of television, radio and electronic media advertising’ in Class 35. In any event, that evidence, in particular the documents referring to Ad Alliance and IP Deutschland, does not demonstrate that the advertising services were provided to third parties.

61The intervener argues that the applicant does not provide advertising services, but merely makes available its television and radio channels through which advertisers broadcast their advertisements, which falls within the services in Class 38. Advertising services consist of the production of advertisements, the development of advertising strategies and the provision of advertising spaces or time slots. Those services, which come within the traditional activity of advertising agencies, are not provided by the applicant. The evidence submitted at best relates to advertising carried out in its own interest, namely in order to attract customers towards the services for the broadcasting of advertisements provided by the applicant.

62In that regard, as a preliminary point, it should be noted, first, as the Cancellation Division did, in essence, on page 34 of its decision and the Board of Appeal in paragraph 31 of the contested decision, that the use of a trade mark by a company which is economically linked to the proprietor of that mark is presumed to be use of that mark with the consent of the proprietor and is therefore to be deemed to constitute use by the proprietor, in accordance with Article 18(2) of Regulation 2017/1001 (see, to that effect, judgment of 30 January 2015, Now Wireless v OHIM – Starbucks (HK) (now), T‑278/13, not published, EU:T:2015:57, paragraph 38).

63Therefore, in the present case, the use of the contested mark by the companies in the group to which the applicant belongs, such as Ad Alliance, must be found to have been made with the applicant’s consent and thus to constitute use by the applicant. The evidence relating to any use of the contested mark by those companies must therefore be taken into account for the purposes of assessing the genuine use of that mark.

64Secondly, according to the case-law, the ‘advertising, marketing and promotional services’ in Class 35 concern, in essence, specialised consultancy and support services for undertakings seeking to promote and develop their products or services. Accordingly, those products or services include services which are intended to help other undertakings manage and improve their activities by increasing their visibility or by securing better returns (see, to that effect, judgments of 2 June 2016, Staywell Hospitality Group v EUIPO – Sheraton International IP (PARK REGIS) and Sheraton International IP v EUIPO – Staywell Hospitality Group (PARK REGIS), T‑510/14 and T‑536/14, not published, EU:T:2016:333, paragraph 54, and of 31 January 2024, ECE Group v EUIPO – ECE Piknik Ürünleri Plastik ve Kömür Üretim Ithalat Ihracat (ECE QUALITY OF LIFE), T‑581/22, not published, EU:T:2024:47, paragraph 45).

65In order to demonstrate use in respect of a service, that service must be offered to third parties and generally involve economic consideration (see, to that effect and by analogy, judgments of 30 September 2016, Alpex Pharma v EUIPO – Astex Pharmaceuticals (ASTEX), T‑355/15, not published, EU:T:2016:591, paragraphs 37 and 38, and of 7 December 2022, Borussia VfL 1900 Mönchengladbach v EUIPO – Neng (Fohlenelf), T‑747/21, not published, EU:T:2022:773, paragraph 90).

66Accordingly, it is necessary to examine whether the evidence submitted by the applicant during the administrative procedure, relating in particular to the activities of the companies in the group to which it belongs, including Ad Alliance, demonstrates, as it claims, the use of the contested mark in respect of the advertising, promotion and marketing services in Class 35 for which it was registered, with the exception of services for the broadcasting of advertisements.

67In that regard, the applicant maintains that the advertising services, which are provided under the contested mark, in particular by Ad Alliance, consist of consultancy services, communication services and services for the creation and production of advertisements.

68Referring to the arguments and evidence presented, in particular, with the written submissions of 27 August 2021 (see paragraph 5 above) and of 15 March 2023 (see paragraph 8 above), submitted during the administrative procedure, the applicant states that Ad Alliance provides, as advertising, promotion and marketing services in Class 35, in particular, services relating to the profitability of an advertising medium or an advertising campaign, consultancy services aimed at identifying television programmes with which the advertisements could be associated, as well as services relating to the design of advertisements, more particularly with regard to television advertisements (‘tailor-made concepts’). Such services are comparable to the activity of a ‘traditional’ advertising agency.

69In that regard, it should be noted that, contrary to what the Board of Appeal found in the contested decision, the evidence produced by the applicant during the administrative procedure demonstrates that the group to which it belongs, through the companies in the group, in particular Ad Alliance, provided – for consideration and during the relevant period – third parties with advertising, promotion and marketing services in Class 35, with the exception of broadcasting of advertisements.

70First, the applicant demonstrated that the companies in the group to which it belonged had provided advertisers with services relating to the creation and production of advertisements, in particular television advertisements.

71In that regard, it submitted ‘presentations sent to advertisers’ (see, in particular, Annexes 90 to 94 to the written submission of 27 August 2021), containing the contested mark, in the registered form or in other forms which do not, however, alter its distinctive character, setting out offers of services in the form of specialised advertising (‘Special Creations’ or ‘Special Ads’). Such specialised advertising is broadcast during a television programme, over the image of the ongoing programme, and may consist, in particular, of a horizontal or vertical strip (‘cut in’), a large advertisement appearing as an individually designed frame or an advertisement placed without a separator during the ongoing programme (‘framesplit’ or ‘programmesplit’), or an advertisement moving across the screen (‘skyscraper’).

72A form of specialised advertising proposed in the offers in question could also be designed by the applicant by highlighting the advertiser’s product using a concept linked to a successful television programme broadcast on a channel of the RTL Group, for example, a product ‘rewarded’ by a ‘golden buzzer’ (see, in particular, Annexes 92 and 93 to the written submission of 27 August 2021).

73That form of specialised advertising, proposed in order to enable the advertiser to benefit directly from the success of a television programme, involves a creative contribution in the design of the advertisement which is specific to the programmes broadcast by the group to which the applicant belongs.

74Furthermore, it appears from the document entitled ‘Special Ads Booking Conditions’ (see Annex 90 to the written submission of 27 August 2021) that ‘the production costs [of “Special Ads” or “Special Creations”] are invoiced separately by the marketing department of the RTL Group’, which confirms that such specialised advertisements are not offered as broadcasting of advertising content, but constitute a complementary service to that broadcasting.

75In the written submission of 15 March 2023, the applicant also submitted advertisements dating from 2020 and 2021 promoting the advertisers’ products in which the contested trade mark was used as part of the advertising content. For example, the advertising displayed by the applicant consisted of a zoom-in of the letters of the contested mark until it revealed that the background of the capital letter ‘T’ making up that mark was itself ‘composed’ of the multiplication of the product being advertised.

76The provision, under the contested trade mark, of advertising, marketing and promotional services, with the exception of broadcasting of advertisements to advertisers, is supported by other evidence that was submitted, in particular, by the document entitled ‘General Conditions of Sale’ or by technical data sheets accompanying offers for the services provided (see, in particular, Annexes 111 and 134 to the written submission of 27 August 2021) from which it emerges that the media production departments of the group to which the applicant belongs support advertisers by designing and producing advertising material, including sound and audiovisual advertising spots.

77Such services involve a creative contribution from the companies of the group to which the applicant belongs in the design of the advertisements. Consequently, contrary to what the Board of Appeal stated, those services are not limited to the mere broadcasting of advertising content created by a third party.

78Secondly, it also follows from the evidence produced (see, in particular, Annexes 92 to 94 to the written submission of 27 August 2021) that the applicant offered advertisers its services in the field of advertising strategy development in the media it owns, by offering them the possibility of participating in promotional operations created by the group to which the applicant belongs, such as sponsorship in connection with specific television programmes or product placement in the latter.

79Thirdly, the applicant also correctly refers, in order to demonstrate the use of the contested mark in respect of advertising, marketing and promotional services, to its consultancy activities aimed at identifying television programmes with which the advertisements could be associated. Those activities can contribute to the effectiveness of the advertiser’s advertising strategy and guarantee the protection of its brand against the negative impacts that would result from its association with undesirable content (brand safety). The group to which the applicant belongs therefore designs the ‘advertising environment’ in such a way that it offers greater attractiveness for the advertiser, thereby contributing to the profitability of the advertising medium it offers.

80Lastly, the evidence produced by the applicant demonstrates that the companies in the group to which it belongs, such as Ad Alliance, provided consultancy services relating to the marketing of television advertising, in particular by exploiting data relating to the television advertising market collected by the applicant, in particular in order to adapt the advertising strategy to the different sectors or different targeted publics.

81Such services indeed fall within the scope of consultancy and specialised support services for undertakings seeking to promote their goods and services and develop their advertising strategies and aim to help those undertakings improve their business by increasing their visibility or by securing better returns on advertising investment within the meaning of the case-law referred to in paragraph 64 above.

82It follows from paragraphs 70 to 81 above that, contrary to what the Board of Appeal found, the evidence produced by the applicant, even without taking into account the evidence produced with the written submission of 15 September 2023, excluded by the Board of Appeal from its examination (see paragraph 42 above), demonstrates that the group to which it belongs provided, under the contested mark and during the relevant period, third parties with advertising, promotion and marketing services, which were not limited to the broadcasting of advertisements but aimed to actively contribute to the development of an advertising strategy for those third parties, taking into account the knowledge available to the companies in the group to which the applicant belongs as regards the functioning of the media advertising sector.

83In that respect, it should, moreover, be noted that it is apparent from the evidence produced by the applicant in the administrative procedure that the annual turnover of the group to which it belongs from television advertising amounted to several billion euros during the relevant period and that that group had significant advertising market shares in various Member States of the European Union, in particular in Germany. Since the applicant has demonstrated that it has used the contested mark for advertising, promotion and marketing services other than the broadcasting of advertisements, part of those revenues and market shares must therefore be considered to have come from the provision of those services.

84In the light of the foregoing, the first plea in law should be upheld and, therefore, the contested decision should be altered by rejecting the application for revocation of the contested mark in respect of all the services in question in Class 35.

The second and third pleas in law, alleging infringement of Article 58(1)(a) of Regulation 2017/1001 as regards the revocation of the contested mark in respect of the goods in Classes 3, 9, 16, 24, 25 and 32 and the services in Classes 41 and 42

85The Board of Appeal revoked the contested mark in respect of the goods in Class 9 other than ‘optical storage discs’ and in respect of the goods and services in Classes 3, 16, 24, 25, 32, 41 and 42 for which the contested mark had been registered. In that regard, it noted that the applicant had not shown actual outward use of the contested mark in respect of those goods and services and that the reputation of that mark, on which the applicant relied, was not relevant in the context of that assessment. According to the Board of Appeal, a mark with a reputation may, like all other EU trade marks, be subject to revocation in the public interest for non-use. The extent of the protection of such a mark with a reputation in the event of conflict with other intellectual property rights is, according to the Board of Appeal, unrelated to the question of use capable of ensuring the maintenance of the rights of such a mark with a reputation in respect of the goods and services for which it is registered.

86The applicant claims that the Board of Appeal infringed Article 58(1)(a) of Regulation 2017/1001 by failing to take into account, when assessing the evidence of genuine use of the contested mark in respect of the goods in Classes 3, 9, 16, 24, 25 and 32 and the services in Classes 41 and 42, the exceptional reputation enjoyed by that mark as a ‘media mark’ in the European Union, which should therefore, in the light of the principle of the unitary character of the EU trade mark, enjoy enhanced protection when applying the rules on revocation.

87According to the applicant, some goods and services in Classes 3, 9, 16, 24, 25, 32, 41 and 42, which have a public identical to that of the advertising, television broadcasting and television entertainment services for which the contested mark is well known, are likely to benefit from its power of attraction. Since there is a direct ‘material’ or ‘mental’ link between those goods and the applicant’s core business, the use in respect of such goods and services of a sign that is even vaguely similar would lead to confusion on the part of the public concerning possible economic links, which would undermine the value of the RTL mark and would lead to its dilution.

88The applicant maintains that, in such circumstances, Article 58(1)(a) of Regulation 2017/1001 does not require proof of use for each product and service for which the mark with a reputation is registered. It states that ‘such use exists … with regard to goods in respect of which the proprietor of the mark can assert its rights in the light of the protection of reputation.’

89EUIPO and the intervener dispute the applicant’s arguments.

90In that regard, in the first place, it should be noted that, by its argument, the applicant maintains, in essence, that the principle according to which, in order to avoid revocation, use of an EU trade mark must be proven in respect of each product and service for which it is registered does not apply where a contested mark has a reputation for other goods or services.

91Such an argument is at variance not only with the very wording of Article 58(1)(a) of Regulation 2017/1001, but also with the purpose pursued by that provision, as specified in recital 24 of that regulation (see paragraph 28 above). In laying down in Articles 18(1) and 58(1)(a) of Regulation 2017/2009 a rule under which an EU trade mark that has not been used for a period of five years is to be revoked, the EU legislature intended to make preservation of the rights connected with an EU trade mark conditional on the mark being actually used (judgment of 21 December 2016, Länsförsäkringar, C‑654/15, EU:C:2016:998, paragraph 25).

92That condition is explained by the consideration that it would not be justifiable if a mark which is not used were to obstruct competition by limiting the range of signs which can be registered as trade marks by others and by denying competitors the opportunity to use that trade mark or a similar one when putting onto the internal market goods or services which are identical or similar to those covered by the mark in question. Consequently, non-use of an EU mark may also restrict the free movement of goods and the freedom to provide services (judgments of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 32, and of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 54).

93The rationale for the requirement that a mark must have been put to genuine use in order to be protected under EU law is that EUIPO’s register cannot be compared to a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, that register must faithfully reflect what undertakings actually use on the market to distinguish their goods and services in economic life (see judgment of 8 June 2022, Muschaweck v EUIPO – Conze (UM), T‑293/21, EU:T:2022:345, paragraph 48 and the case-law cited).

94Furthermore, the EU Courts have held that the provisions relating to the extended protection conferred on an EU trade mark that has a reputation or is well known in the European Union pursue a different objective from those which require proof of genuine use of the EU trade mark, which could result in the revocation of the trade mark (see, to that effect, judgments of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 53, and of 3 September 2015, Iron & Smith

94, C‑125/14, EU:C:2015:539, paragraph 21). While Article 8(5) of Regulation 2017/1001 concerns the conditions governing protection that also extends beyond the categories of goods and services in respect of which an EU trade mark has been registered, the concept of ‘genuine use’ expresses the minimum condition of use that all marks must satisfy in order to be protected. It follows that the provisions concerning the requirement of genuine use of the EU trade mark and, in particular, the criteria laid down by the case-law, for the purposes of proving genuine use, are to be distinguished from the provisions and criteria relating to the reputation of such a mark. Those two types of provisions must therefore be interpreted independently (see judgment of 4 October 2017, Intesa Sanpaolo v EUIPO – Intesia Group Holding (INTESA), T‑143/16, not published, EU:T:2017:687, paragraph 46 and the case-law cited).

95Therefore, assuming that the contested mark has a reputation, within the meaning of Article 8(5) of Regulation 2017/1001, in the media sector, that fact alone does not demonstrate that that mark has been put to genuine use in respect of the goods and services in question in Classes 3, 9, 16, 24, 25, 32, 41 and 42.

96No other finding may be drawn from the unitary character of the EU trade mark.

97In accordance with Article 1(2) of Regulation 2017/1001, read in conjunction with recital 4 thereof, the unitary character of an EU trade mark is expressed solely by the fact that it enjoys uniform protection and has equal effect throughout the entire European Union.

98Furthermore, recital 7 of Delegated Regulation 2018/625, which, moreover, concerns only procedural rules relating, inter alia, to revocation proceedings, cannot be usefully relied on by the applicant for the purposes of interpreting the substantive provisions of Regulation 2017/1001.

99In the second place, the applicant maintains that the extended protection of the contested mark, which allegedly has a reputation, is necessary in order to allow the use of that mark in the context of future licensing agreements in respect of the goods and services referred to in the second and third pleas in law. Even assuming that that argument must be regarded as being distinct from the one which was addressed in paragraphs 90 to 98 above, it should be noted that the applicant does not submit any evidence, such as a licensing agreement which would be signed with a third party for the use of the contested mark in respect of the goods in question, capable of demonstrating, first, actual use of the contested mark in the context of licensing the mark granted to third parties during the relevant period and, secondly, the extent of such use.

100Furthermore, the applicant refers to the administrative file and, more particularly, to the few photographs of notebooks, beach towels, baby rompers or beer cans bearing a form of the contested mark, accompanied by invoices and emails sent to RTL as a customer of the undertakings producing them at RTL’s request. In the absence of other evidence relating to the marketing of those products to third parties, those photographs are not capable of demonstrating either actual outward use of the contested mark for the purposes of creating commercial outlets for the goods in Classes 16, 24, 25 and 32 or, a fortiori, the extent of such use (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 55).

101The Board of Appeal therefore correctly upheld the revocation of the contested mark in respect of the goods and services in Classes 3, 9, 16, 24, 25, 32, 41 and 42.

102In the light of the foregoing, the second and third pleas in law must be rejected.

Costs

103Under 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. However, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.

104In the present case, since all the parties have been unsuccessful in part, each party must be ordered to bear its own costs.

On those grounds,

hereby:

1.Alters the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 September 2023 (Case R 86/2023-2) so as to reject the application for revocation in respect of all the services in Class 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, corresponding to the following description: ‘Advertising, marketing and promotional services’;

2.Dismisses the action as to the remainder;

3.Orders RTL Group Markenverwaltungs GmbH, EUIPO and Ms Marcella Örtl to bear their own costs.

Kowalik-Bańczyk

Buttigieg

Ricziová

Delivered in open court in Luxembourg on 7 May 2025.

[Signatures]

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Language of the case: German.

The name of the present case is a fictitious name. It does not correspond to the real name of any of the parties to the proceedings.