Judgment of the General Court (Second Chamber) of 7 December 2022.Borussia VfL 1900 Mönchengladbach GmbH v European Union Intellectual Property Office.EU trade mark – Revocation proceedings – EU word mark Fohlenelf – Genuine use of the mark – Article 58(1)(a), Article 94(1) and Article 97(1)(d) of Regulation (EU) 2017/1001.Case T-747/21.

Judgment // 07/12/2022 // 3 min read
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Judgment of the General Court (Second Chamber) of 7 December 2022 –Borussia VfL 1900 Mönchengladbach v EUIPO – Neng (Fohlenelf)

(Case T‑747/21) ( 1 )

(EU trade mark – Revocation proceedings – EU word mark Fohlenelf – Genuine use of the mark – Article 58 (1) (a), Article 94 (1) and Article 97 (1) (d) of Regulation (EU) 2017/1001)

  1. EU trade mark – Appeals procedure – Persons entitled to appeal and to be parties to the proceedings – Persons concerned by a decision adversely affecting them – Decision recognising genuine use of the contested mark for some of the goods – Request for annulment of that decision for those goods – No interest in bringing proceedings – Inadmissibility

(European Parliament and Council Regulation 2017/1001, Art. 72(4))

(see paragraphs 13-15)

  1. EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Proof of use – Genuine use – Concept – Criteria for assessment

(European Parliament and Council Regulation 2017/1001, Arts 58 (1) (a) and 97 (1) (f); Commission Regulation 2018/625, Arts 10(3) and (4), and 19(1))

(see paragraphs 30-34, 41)

  1. EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Word mark Fohlenelf

(European Parliament and Council Regulation 2017/1001, Art. 58(1)(a))

(see paragraphs 39, 40, 45, 51, 53, 55, 58, 62, 63)

  1. EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Use of the mark in a form differing in elements which do not alter the distinctive character of the mark – Subject matter and scope of Article 18(1)(a) of Regulation 2017/1001

(European Parliament and Council Regulation 2017/1001, Arts 18 (1), second subpara., (a), and 58(1) (a))

(see paragraphs 79, 80)

  1. EU trade mark – Surrender, revocation and invalidity – Grounds for revocation – Lack of genuine use of the mark – Proof of use – Partial use – Effect – Concept of ‘some of the goods or services covered by the registration’

(European Parliament and Council Regulation 2017/1001, Arts 18 (1), and 58 (1) (a) and (2))

(see paragraphs 36, 98, 99)

Operative part

The Court:

  1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 September 2021 (Case R 2126/2020-4) in so far as proof of genuine use of EU word mark Fohlenelf was rejected in relation to ‘soaps’ in Class 3, ‘self-adhesive films of paper or plastic, self-adhesive labels’ in Class 16, ‘porcelain and earthenware’ in Class 21, as well as in relation to ‘drinking bottles’, in so far as they constitute a subcategory of goods within ‘household or kitchen containers’ also in Class 21, ‘bath towels of textile’ in Class 24 and ‘games, toys’ in Class 28;

  2. Dismisses the action as to the remainder;

  3. Orders each party to bear its own costs.

( 1 ) OJ C 37, 24.1.2022.

Trade marks