21.1.2019

Official Journal of the European Union

C 25/15

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(Case C-580/18 P)

(2019/C 25/18)

Language of the case: German

Parties to the proceedings

Appellant: Nestlé Unternehmungen Deutschland GmbH (represented by: A. Jaeger-Lenz and C. Elkemann, Rechtsanwältinnen, and A. Lambrecht, Rechtsanwalt)

Other parties to the proceedings: Lotte Co. Ltd, European Union Intellectual Property Office

Form of order sought

The appellant claims that the Court should:

—set aside the judgment of the General Court (Ninth Chamber) of 12 July 2018 (T-41/17) and dismiss the action brought against the decision of the Fourth Board of Appeal of the [European Union Intellectual Property Office (EUIPO)] of 28 October 2016 (Case R 250/2016-5);

—in the alternative, set aside the General Court’s judgment under appeal and refer the case back to the General Court;

—order the applicant (Lotte Co. Ltd) to pay the costs of the proceedings.

Grounds of appeal and main arguments

The appellant relies on the following grounds of appeal:

1.The General Court erred in law when it used its power to alter the contested decision under Article 65(3) of Regulation No 207/2009, (1) notwithstanding the fact that the Board of Appeal had not made any sufficient findings of fact with regard to the frequency and temporal consistency of use. This undermined the appellant’s interests, as the General Court’s findings do not go far enough and fail to take into consideration the relevant evidence. If corresponding findings had already been made by the Board of Appeal, the appellant would have been able to challenge these in an action before the General Court.

2.In its assessment of ‘genuine use’ referred to in Article 42(2) and (3) of Regulation No 207/2009, the General Court finds it to be decisive that, when compared with the turnover figures included in the affidavit submitted, the turnover figures used for the purposes of calculations were too low. However, the General Court ought at most to have taken into account the objective production and sales capacities for that sector. The current, subjective circumstances of a particular undertaking should be irrelevant for the purposes of establishing use. Further, the use of a particular mark can be classified as genuine even where it is insignificant in quantitative terms, as there are no absolute minimum levels. It is not appropriate to carry out an assessment of the business strategy and of the commercial success of the goods in question. All that is relevant is whether the use is purely symbolic.

3.The General Court also misinterpreted the constituent elements of ‘genuine use’ under Article 42(2) and (3) of Regulation No 207/2009, as it generalised the size of the overall market without taking into account the objective production and sales capacities for that sector and the degree of diversification of the undertakings on the market concerned.

4.The General Court distorted the factual information relating to genuine use of the earlier mark by overlooking decisive information in the affidavit, in particular with regard to the temporal consistency of use.

5.The fact that, when assessing the question of use giving rise to certain rights, the General Court took the subjective circumstances of the appellant’s licensee to be decisive and considered, in particular, that the scope of the business activities and the production and sales capacities of the licensee were decisive, constitutes an infringement of the general principle of equal treatment.

6.The fact that the General Court departed from earlier decisions taken by itself and by the Court of Justice in which the General Court or the Court of Justice had established genuine use in comparable factual circumstances also constitutes an infringement of the general principle of equal treatment.

(1) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version), OJ 2009 L 78, p. 1.

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