Provisional text

25 June 2025 (*)

( EU trade mark – Revocation proceedings – EU figurative mark representing five coloured parallel strips – Genuine use of the mark – Nature of use – Use in relation to goods in respect of which the mark is registered – Article 18(1)(a) and Article 58(1)(a) of Regulation (EU) 2017/1001 )

In Case T‑372/24,

K-Way SpA,

established in Milan (Italy), represented by D. Sindico and E. Ravezzani, lawyers,

applicant,

European Union Intellectual Property Office (EUIPO),

represented by R. Raponi, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Adorno Gubbini,

residing in Bagnolo Mella (Italy),

THE GENERAL COURT (Sixth Chamber),

composed of M.J. Costeira, President, U. Öberg and P. Zilgalvis (Rapporteur), Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the written part of the procedure,

further to the hearing on 20 March 2025,

gives the following

1By its action under Article 263 TFEU, the applicant, K-Way SpA, seeks the alteration and, in the alternative, the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 May 2024 (Case R 1748/2023-2) (‘the contested decision’).

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Law

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The claim for annulment

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The first part, concerning the assessments of the evidence of use relating to the single-brand stores

29The applicant disputes the findings of the Board of Appeal, contained in paragraph 57 of the contested decision, according to which, although evidence relating to the shop name and layout of its stores show that the mark at issue was used in a way that was not purely symbolic, that evidence does not automatically establish that every good sold in those stores bore that mark. In its view, those findings infringe EU legislation and the case-law arising from the judgment of 11 September 2007, Céline (C‑17/06, EU:C:2007:497), according to which there is no obligation to affix the mark at issue to the goods themselves to prove genuine use of that mark. The use of a shop name may be regarded as a use in relation to goods where the third party uses that sign in such a way that a link is established between the sign which constitutes the company name or shop name of that third party and the goods marketed by it.

30The applicant is of the opinion that the link between the single-brand stores, the shop name of which bears the mark at issue, and the goods marketed in those stores has been proven. All the stores, it argues, have the same layout, with the mark at issue ‘clearly visible’, and are designed in such a way as to create a direct link between that mark and the goods marketed in those stores. According to the applicant, in the light of all the evidence submitted, the Board of Appeal should have recognised the automatic link between the shop name and the goods marketed in the stores and found that the mark at issue is used for every product from those stores, whether or not the sign is visible on the goods themselves.

31In the applicant’s view, it is because the Board of Appeal failed to establish a link between the shop name and the products sold in the stores that it, incorrectly, failed to take into consideration that the photographs in which handbags, briefcases and shopping bags appeared proved that the mark at issue is used for those goods.

32EUIPO disputes the applicant’s arguments.

33In the present case, in paragraph 57 of the contested decision, the Board of Appeal noted that all of the shops featured the same layout, with the mark at issue ‘clearly visible’. It found that the use of the contested mark on the shop name of the single-brand stores served to support the evidence of use of the sign at issue on the goods concerned and showed that that sign had been used in a way that was not purely symbolic. However, in its view, use of the mark at issue on the shop name of the single-brand stores did not automatically mean that every good sold in those stores bore that mark.

34In that regard, it should be borne in mind that, in accordance with the case-law to which the applicant refers, use of the company name, the commercial name or a shop name may be regarded as a genuine use of the registered mark where the sign is affixed to the goods marketed or where, even if it is not affixed, that sign is used in such a way that a link is established between the sign which constitutes the company name, the commercial name or the shop name and the goods marketed or the services provided (judgment of 26 April 2023, Rochem Group v EUIPO – Rochem Marine (R.T.S. ROCHEM Technical Services), T‑546/21, not published, EU:T:2023:221, paragraph 61; see also, to that effect, judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraph 22 and 23).

35It must also be borne in mind that, in paragraph 76 of the judgment of 8 July 2020, Euroapotheca v EUIPO – General Nutrition Investment (GNC LIVE WELL) (T‑686/19, not published, EU:T:2020:320), it has been held that a link between a sign represented on a shop name and the goods marketed under that shop name was established since photographs of a shop name in sales outlets were used to identify sales of those goods. In that judgment, the Court took account, in particular, of the fact that the proprietor of the mark in question sold its own products and advertised them in order to create and maintain market share for the goods in question.

36However, it is clear that, in the present case, the Board of Appeal did not infringe the case-law cited in paragraph 34 above, to which the applicant refers. As is apparent from paragraph 57 of the contested decision, it found that the use of the mark at issue on the shop name of the applicant’s single-brand stores was relevant in so far as it served to substantiate the use of that mark.

37In that regard, it must also be borne in mind that, in the case giving rise to the judgment of 8 July 2020, GNC LIVE WELL (T‑686/19, not published, EU:T:2020:320), pictures of the stores’ shop name which reproduced the mark concerned were only one element among others which made it possible to find that there had been genuine use of that mark. However, contrary to what the applicant submits in the present case, it cannot be inferred from the above that the fact that goods are sold in stores bearing a shop name which corresponds to an EU trade mark is sufficient, in all cases, to establish genuine use of that mark in relation to all of those goods.

38Furthermore, as is apparent from the documents before the Court (paragraphs 45 and 46 of the contested decision) and as EUIPO claims, the applicant uses several marks in relation to the goods it markets. That fact may be capable of preventing the consumer from perceiving a link between the use of the mark represented on the stores’ shop name and the goods marketed in those stores, to which the mark concerned has not been affixed (see, to that effect, judgment of 15 October 2020, Decathlon v EUIPO – Athlon Custom Sportswear (athlon custom sportswear), T‑349/19, not published, EU:T:2020:488, paragraph 73).

39That finding cannot be called into question by the fact, relied on by the applicant during the hearing in response to a question from the Court, that it uses some of its marks solely for specific products and others, like the mark at issue, in a general manner, on packaging and in advertising, to identify all of its activity.

40In that regard, it must be noted that, in accordance with the case-law cited in paragraph 24 above, genuine use of a mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned.

41It follows that the Board of Appeal did not err in law or make an error of assessment when examining the evidence relating to the applicant’s single-brand stores, with the result that the first part of the single plea in law must be rejected.

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On those grounds,

hereby:

1.Alters the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 May 2024 (Case R 1748/2023-2) in so far as it concerns shopping bags, in Class 18, and upholds, in respect of those goods, the action brought before that Board of Appeal of EUIPO by K-Way SpA against the decision of the Cancellation Division of 11 July 2023;

2.The decision of the Cancellation Division of 11 July 2023 is annulled to the extent that it revoked the EU trade mark registered under No 3971561 for non-use in respect of the abovementioned shopping bags;

3.Dismisses the action as to the remainder;

4.Orders each party to bear its own costs.

Costeira

Öberg

Zilgalvis

Delivered in open court in Luxembourg on 25 June 2025.

[Signatures]

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Language of the case: Italian.

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Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.