DECISION

of the Second Board of Appeal

of 23 July 2019

In Case R 1613/2018-2

Zill GmbH & Co. KG
Hanns-Martin-Schleyer-Straße 31 89415 Lauingen Germany	Cancellation Applicant / Appellant

represented by Charrier Rapp & Liebau Patentanwälte Partg mbB, Fuggerstraße 20, 86150 Augsburg, Germany

v

British Polythene Limited
96 Port Glasgow Road Greenock, Scotland PA15 2UL United Kingdom	EUTM Proprietor / Defendant

represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom

APPEAL relating to Cancellation Proceedings No 14 507 C (European Union trade mark registration No 13 714 209)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), A. Szanyi Felkl (Rapporteur) and S. Martin (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 5 February 2015, British Polythene Limited (‘the EUTM proprietor’) sought to register the word mark

POLIWRAP

for the following list of goods:

Class 16 - Wrapping and packaging materials; packaging material of plastic; plastic film for packaging, films; sheets or tubes of plastic; sacks, bags and containers made of plastic materials; carrier bags; cling film made wholly or principally of plastic materials; plastic bubble packs; all the aforegoing being for wrapping and packaging purposes; bags for microwave cooking; garbage bags, refuse sacks, dustbin liners; self-sealing plastic mail bags; resealable plastic bags; polythene bags; stretch film; silage bale wrap (packaging material);

Class 17 - Plastics, namely, in extruded form for use and manufacture and semi-processed plastic substances; semi-processed plastic substances; plastic fibres; plastics in the form of films, foils, sheets, rods, slabs or tubes; plastics materials in the form of moulding and extrusions; foils, boards, poles and pipes made of plastic; tubes made of plastic; sealing, packing and insulating materials; plastics in extruded form for use in manufacture, and for use in agriculture and horticulture; plastic mulches (sheets or films) for use in agriculture and horticulture; plastic sheeting for horticultural, agricultural, industrial or civil engineering use; sheet plastics; plastics in sheet or film form for laying on the ground for preventing weed growth; plastics in sheet or film form and in perforated or aperture sheet or film form, for use in agriculture and horticulture; plastic materials for agriculture and horticulture applications; silage sheets; packing, padding and stuffing materials of plastics or rubber; semi-processed synthetic resins; silage bale wrap (horticultural film); plastic membranes and vapour barriers;

Class 19 - Plastics materials for use in building, road-making, civil engineering, construction, namely, building materials of all plastic, construction elements of plastic, films of plastic for use in building, expanded plastics for use in building and construction, fibre and reinforced plastic construction materials, roofing materials of plastic, membranes for roofing, damp proof membranes of synthetic plastic materials, building and construction materials and elements (not of metal), plastic materials for applications in agriculture and horticulture, namely, protective enclosures for horticultural use and plant propagation, expanded plastics for use in construction of agricultural or horticultural structures, films of plastic for agricultural or horticultural structures, field tunnel film, carrot film, green house film, frames (non-metallic) for greenhouses and horticultural structures plastic road building materials (non-metallic).

2. The application was published on 21 April 2015 and the mark was registered on 2 February 2017.

3. On 17 February 2017, Zill GmbH & Co. KG (‘the cancellation applicant’) filed a request for a declaration of invalidity of the registered mark for all the above goods.

4. The grounds of the request for a declaration of invalidity were those laid down in Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

5. The request for a declaration of invalidity was based on the following earlier rights:

1. German trade mark registration No 39 755 863 filed on 21 November 1997 and registered on 12 May 1998 for ‘plastics in extruded form (included in this class)’ in Class 17;

2. International trade mark registration No 706 341 designating the Benelux, Denmark, Estonia, France, Italy, Lithuania, Hungary, Austria, Romania, Slovenia, Finland and Sweden and the UK filed and registered on 18 November 1998 for ‘plastics in extruded form (included in this class)’ in Class 17.

6. By decision of 2 August 2018 (‘the contested decision’), the Cancellation Division rejected the request for a declaration of invalidity in its entirety. It gave, in particular, the following grounds for its decision:

• The Cancellation Division noted that on the application form, the applicant claims that the earlier international trade mark registration No 706 431 is registered in the Benelux, Denmark, Estonia, France, Italy, Lithuania, Hungary, Austria, Romania, Slovenia, Finland and Sweden and the UK. First, it is noted that the international mark does not actually designate Hungary, which can be seen from the printout from the Romarin database. However, in the applicant’s observations dated 1 August 2017 it specifically limits the list of territories on which it relies to Austria, Italy, the Benelux, Slovenia, Romania, Finland and France. Therefore, these are the only territories which the Cancellation Division will take into account for the present purposes.

Proof of use

• The EUTM proprietor requested the applicant to submit proof of use of the trade marks on which the application is based, German trade mark No 39 755 863 and international trade mark No 706 341.

• The application for a declaration of invalidity was filed on 17 February 2017. The date of filing of the contested trade mark is 5 February 2015. The applicant was, therefore, required to prove that the trade marks on which the application is based were genuinely used in Germany, and the Benelux, France, Italy, Austria, Romania, Slovenia and Finland from 17 February 2012 to 16 February 2017 inclusive. Since the earlier marks were registered for more than five years prior to the date of filing of the contested mark, use of the earlier marks had to be shown also for the period from 5 February 2010 to 4 February 2015 inclusive, however, as the territories of Slovenia and Romania were designated at a later date, with a registration date of 13 May 2011 for Slovenia and 6 January 2011 for Romania, they are not subject to this second period of use.

• On 1 August 2017, the cancellation applicant submitted the following evidence as proof of use:

• CRL 1 and CRL 2: Photographs of the PolyWrap product with the description ‘Bale netwraps Heavy-duty netwrap for round bales’;

• CRL 3 to CRL 11: Copies of invoices issued by the applicant to customers in Germany, Austria, Italy, the Benelux, Slovenia, Romania, Finland, and France ranging from 2010 to 2016 and an indication of how many products were sold in each year;

• CRL 12: A printout from the ROMARIN database for the international trade mark 706 341;

• CRL 13: A document of unknown source providing minimum turnover figures for the product for the years 2010-2016 in Germany, Austria, Italy, the Benelux, Slovenia, Romania, Finland and France. It states that these are only minimum turnover figures and the real figures were much higher;

• CRL 14: Extracts from Wikipedia concerning ‘plastic extrusion’ and techniques of ‘blown film extrusion’.

• The earlier marks are registered for ‘plastics in extruded form (included in this class)’ in Class 17. The invoices describe the goods sold as ‘Polywrap-Roundbale netwrap’, and, in addition to the other pieces of evidence, it is clear that the goods for which it has shown use are plastics used for wrapping bales. These goods for which the mark has been used do not fall within any of the categories for which the earlier marks are registered. In fact, these goods, ‘plastics for wrapping (bales)’, are classified under Class 16 of the Nice Classification. In the explanatory note for Class 17 of the Nice Classification it states, inter alia, that this class covers ‘plastic films, other than for wrapping and packaging, for example, anti-dazzle films for windows’. Class 17 does cover ‘plastic sheeting for agricultural purposes’; however, these goods are different to those for which the applicant has shown use. The aforementioned goods are for coverings for greenhouses and other such uses, but specifically, they are not for wrapping purposes. Indeed they can be used for covering silage but their purpose in this respect is not to wrap and protect the silage, but to pack it into a mound which is airtight in order to ferment the cut grass or other green fodder and convert it into silage. Therefore, the purpose of these types of goods is clearly different to those for which use has been shown.

• The goods for which the cancellation applicant has shown use consist of a type of plastic net wrapping that is used to hold bales together and protect them from the elements, and these are contained within the specification of Class 16 of the Nice Classification and not in Class 17. Indeed, in its observations of 01/08/2017 the applicant itself states that the leaflets submitted prove that the goods are ‘bale netwraps’ and ‘PolyWrap’ for bales which consists of ‘a bale net consisting of plastics in extruded form to protect straw and hay bales against wind and weather’. Therefore, it is clear that the applicant is using these goods as a type of plastic wrapping for bales which should be protected under Class 16. Moreover, the wording of the specification of the goods of both of the earlier marks is very specific in that it states (‘included in this class’) to specifically limit the goods to goods that would be naturally contained in this class, being Class 17, and therefore, a wider interpretation of the goods cannot be implied. Consequently, it is concluded that the applicant has not shown use for the goods for which the marks are registered, but for others for which it has no protection.

• Therefore, having examined the material listed above the Cancellation Division found that the evidence is insufficient to prove that the earlier trade marks were genuinely used in the relevant territories during the relevant period for the goods for which they are registered. As such, the applicant has failed to prove the nature of use of the goods in relation to the goods for which the earlier marks are registered. The criteria for proving use of the earlier marks are cumulative. Therefore, the failure of the applicant to prove the nature of use of the sign in relation to the goods for which it is registered means that the Cancellation Division does not have to examine the remaining factors of use.

7. On 16 August 2018, the cancellation applicant filed an appeal requesting that the contested EUTM be declared invalid. The statement of grounds of the appeal was received on 8 October 2018.

8. The observations of the EUTM proprietor were received on 8 November 2018.

Submissions and arguments of the parties

9. The arguments raised in the statement of grounds may be summarised as follows:

• As to the goods for which proof of use has been proven, it is clear that the sheeting for which the earlier marks have been used is, from a physical or literal point of view clearly ‘plastics in extruded form’. In the cancellation applicant’s statement dated 26 July 2017, it has already been pointed out that every plastic film and plastic sheet is usually made by extrusion procedures. Enclosure CRL 14 illustrates this. Therefore, any plastic film or plastic sheeting is plastics in extruded form without any doubt. This holds for any kind of use of the plastic sheeting.

• The goods distributed under the cancellation applicant’s mark are not used for the purpose of wrapping and can therefore clearly not fall into Class 16 of the Nice classification as the contested decision indicates. Even if the mark is ‘Polywrap’ and therewith contains the word component ‘wrap’ and even if the title page of the catalogue filed as CRL 1 reads ‘Bale netwraps – Heavy-duty netwrap for round bales’ the product distributed by the cancellation applicant is not wrapping material and not for wrapping bales by the farmer. This product is used to bring form to a hay bale, but is clearly not suitable for wrapping this hay bale. The cancellation applicant encloses pictures to illustrate this, i.e. to show how the ‘Polywrap’ product is used within a bale press. The bale press is drawn by a tractor and fed with hay. It contains a bobbin with the ‘Polywrap’ product and the hay is secured as a round bale within the ‘Polywrap’ product when it leaves the bale press. At a final stage, the round bales can be conserved with a heavy duty membrane (Agrar-Stretchfolie) in order to transport them or to initiate silage. The last process is obviously the wrapping process and the last material (Agrar-Stretchfolie) is the wrapping material, which should be classified in Class 16. However, the ‘Polywrap’ product, which has been used just to hold the hay bale in a cylindrical form is not wrapping material, but clearly a plastic product in extruded form for agricultural purposes which is identical to the ‘plastic sheeting for agricultural purposes’ clearly belonging to Class 17 according to the Nice classification.

• As a side remark it cannot be understood how the Cancellation Division comes to the conclusion that the broad term ‘plastic sheeting for agricultural purposes’ just includes coverings for green houses ‘and other such uses’, but not the clearly agricultural use for which the ‘Polywrap’ product of the cancellation application is intended.

• Finally, even if the product were suitable for wrapping (which is clearly not the case) or for other purposes, such as building purposes (Class 19), it would remain a plastic sheet in extruded form and therefore also be covered by Class 17 of the Nice classification.

10. The arguments raised in reply to the appeal may be summarised as follows:

• Plastic products fall into many different classes and are not contained within Class 17 depending on what the eventual product is. For example, plastic funnels fall into Class 21 as kitchen utensils whereas plastic tiles are in Class 19 as building materials and plastic castors are proper to Class 20.

• Turning to plastic sheeting and products which can be more readily aligned with plastic silage wrap, ‘awnings of plastic’ are proper to Class 22 whereas ‘plastic membranes for water proofing’ are proper to Class 19 as building materials, yet both of these products are in essence ‘plastic sheeting’, and if the cancellation applicant’s arguments were to be followed, would be proper to Class 17. There are many examples within the Nice classification and TM Class database such as ‘wallpaper of plastic’ being in Class 27 as wall covering, ‘plastic sheet materials [tarpaulins]’ in Class 22, ‘curtains made of plastic’ and ‘coverings of plastic for furniture’ in Class 24, and ‘plastic liners for containers’ in Class 22. Plastic film or net for wrapping purposes is proper to Class 16.

• According to case‑law, the scope of registered rights must be determined with legal certainty. Third parties should not have to wonder or consider if overtly broad terms could be deemed to cover certain goods and it is the duty of the trade mark owner to ensure that an average person, engaged in the relevant trade would clearly ascertain the nature of the goods or services which are protected by a trade mark registration without the need for further explanation.

• Furthermore, ‘plastics in extruded form (included in this class)’ in Class 17 is derived from the Class 17 heading ‘plastics and resins in extruded form for use in manufacture’. Without any further clarity being present in the term, it must simply be deemed and interpreted to relate to ‘plastics in extruded form’ for use in manufacture. In the 19/06/2012, C‑307/10, IP Translator, EU:C:2012:361 case, the CJEU again reiterated that the goods and services for which protection is sought must be identified by the applicant with sufficient clarity and precision to enable competent authorities and economic operators, on that basis alone, to determine the extent of protection conferred by the trade mark registration. Such identification must be sufficiently clear and precise and will not automatically be deemed to cover all goods in the Class.

• A term which is not sufficiently clear and precise must therefore only be deemed to cover the goods it mentions, and therefore ‘plastics in extruded form (included in this class)’ cannot be deemed to cover ‘plastic sheeting for agricultural purposes’, ‘plastic sheeting for industrial purposes’ or any other plastic goods in Class 17, far less goods in Class 16, and can be only deemed to cover ‘plastics in extruded form (included in this class) for manufacture, in blocks, cylinders’.

• The trade mark ‘POLYWRAP’ is misleading if the goods are not intended to wrap a product.

• The photographs submitted on appeal show a tractor in the process of wrapping silage into bales. The cancellation applicant alleges that these photographs show the mark ‘POLYWRAP’ applied to bales. However, the photographs do not show any trade mark, are not dated, have no location and cannot therefore provide any relevant evidence to show use of the mark ‘POLYWRAP’.

• If the photographs are accepted as proof of use for the earlier marks, it is equally clear that the product is used in the wrapping of silage. The argument put forward that the ‘POLYWRAP’ product is used to bring a hay bale in form means that the product wraps the bale into a cylindrical shape and is therefore wrapping the hay into a form as can be clearly seen from the photograph on page 4 of the statement of grounds. Moreover, exhibit CRL 1 describes the product as follows: ‘POLYWRAP bale netwraps by Zill have an improved spreading characteristic, so that they run in the complete width of the bale. They ensure an edge to edge wrapping on all makes and models of machines’. Further on the same page, under a picture, it states ‘wrapping recommendation. The EUTM proprietor attached brochures or extracts from websites to illustrate that it is not just the cancellation applicant who refers to its product as wrapping – it is known throughout the industry that plastic film and net wrap are used and described as wrapping for silage bales.

• The onus is on the cancellation applicant to ensure that its specification has sufficient clarity. Furthermore, net wrap is not actually a film, but polythene twine made into a fine netting for wrapping silage.

• The contested decision did not state that the term ‘plastics in extruded form (included in this class)’ should or could be deemed to cover ‘plastic sheeting for agricultural purposes’. It was merely considering what plastic films were included in Class 17 and correctly stated that ‘plastic sheeting for agricultural purposes’ is a different type of product to plastic for wrapping purposes, not that the cancellation applicant’s registered goods could be deemed to cover them.

• The Cancellation Division was correct in its assessment that ‘plastic sheeting for agricultural purposes’ refers to plastic sheeting such as plastic mulches, greenhouse or poly tunnel film or silage sheeting for placing over a mound of silage, but sheeting does not wrap the product and is placed on top, and therefore would not encompass the products for which the cancellation application has used its mark, being a net wrap, namely a fine netting made of fine polythene twine for wrapping. It is therefore a plastic wrapping or packaging product.

• The cancellation applicant has therefore failed to prove use of its earlier marks in relation to the goods for which the marks are registered within the relevant period. The criteria for proving use are cumulative and therefore failure to prove use in respect of the nature of the goods, as in this case, is fatal and can only lead to a rejection of the cancellation action.

• The EUTM proprietor asks that the cancellation applicant not only bear the costs of the cancellation and the subsequent appeal but also stated that the cancellation applicant ‘had previously opposed the EUTM proprietor’s application and did not pay any award of costs in that matter’ [sic.]. The scale of award of costs should therefore be made to reflect the opposition, the cancellation and the appeal.

Reasons

11. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

12. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

On the proof of use

13. Article 64(2) EUTMR provides that the EUTM proprietor may request proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier mark has been put to genuine use, provided that the earlier mark has at that date been registered for more than five years. If, at the date on which the EU trade mark application was filed, the earlier mark had been registered for more than five years, the proprietor of the earlier mark shall furnish proof that, in addition, the conditions contained in Article 47(2) EUTMR were satisfied, i.e. shall furnish proof that the earlier mark has been put to genuine use as regards the goods and services it intends to protect.

14. The request for proof of genuine use by the trade mark applicant (or EUTM proprietor in this case) adds that preliminary issue to the opposition proceedings (or in this case invalidity action pursuant to Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTM) and in that sense changes their content, in so far as it constitutes a new, specific claim linked to factual and legal considerations which are separate from those which gave rise to the opposition (cancellation action) to the registration of an EUTM (18/10/2007, T-425/03, AMS Advanced Medical Services, EU:T:2007:311, § 112; 13/09/2010, T-292/08, Often, EU:T:2010:399, § 32).

15. As such it is clear that the examination of the proof of use, as rightfully requested in the present case, is an indispensable preliminary step which must be adjudicated upon before any relevant or meaningful application of Article 8(1)(b) EUTMR can take place as it not only defines the scope of the subsequent proceedings, but in some cases whether the proceedings themselves should even take place or be immediately rejected in the absence of proper use (08/03/2013, T-498/10, David Mayer, EU:T:2013:117, § 35; 28/03/2012, T-214/08, Outburst, EU:T:2012:161, § 45 and the case-law mentioned therein).

16. There is genuine use of a trade mark where the mark is used in accordance with its essential function as a trade mark, which is to guarantee the identity of the origin of goods or services for which it is registered, in order to create or preserve an outlet for those goods and services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37; 30/04/2008, T-131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 38; 18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 27).

17. Genuine use of the mark entails use of the mark on the relevant market and not just internal use by the undertaking concerned (27/09/2007, T-418/03, La Mer, EU:T:2007:299, § 54; 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 36-37). 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 (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 47).

18. As to the criteria for assessing genuine use, according to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence for furnishing proof of use is to consist of indications concerning the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the cancellation application is based.

19. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not appropriate (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 27 and 31).

20. As stated in the contested decision, the Board confirms that the application for a declaration of invalidity was filed on 17 February 2017. The date of filing of the contested trade mark is 5 February 2015. The cancellation applicant was, therefore, required to prove that the trade marks on which the application is based were genuinely used in Germany, and the Benelux, France, Italy, Austria, Romania, Slovenia and Finland from 17 February 2012 to 16 February 2017 inclusive. Since the earlier marks were registered for more than five years prior to the date of filing of the contested mark, use of the earlier marks had to be shown also for the period from 5 February 2010 to 4 February 2015 inclusive, however, as the territories of Slovenia and Romania were designated at a later date, with a registration date of 13 May 2011 for Slovenia and 6 January 2011 for Romania, they are not subject to this second period of use.

21. However, for procedural economy and given that the goods covered by both of these two earlier marks are identical, as are the marks themselves the Board will first proceed with the proof of use and the assessment of the invalidity action based on the earlier German trade mark No 39 755 863.

22. Within the time limit set by the Office, the cancellation applicant submitted evidence to prove genuine use of the earlier marks, summarised in paragraph 6 above.

23. The main issue of the appeal and argument of the parties lies in the nature of use, in the concrete use in relation to the registered goods ‘plastics in extruded form (included in this class)’ in Class 17 of the earlier marks and whether the wording of said list of goods is too broad and may embrace a number of sub-categories in respect of which use has not been demonstrated.

24. As a preliminary point, there is a general principle in the European Union that goods and services must be worded in the register with sufficient clarity and precision, to enable the competent authorities, such as the Office as well as economic operators, in particular competitors, on that basis alone, to determine the extent of the protection sought (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 115; 19/06/2012, C-307/10, IP Translator, EU:C:2012:361, §49; 10/07/2014, C-420/13, Netto Marken Discount, EU:C:2014:2069, § 42).

25. This principle is of application ex tunc and not only from the date of any judgment. Further, the principle of a clear and precise indication of the goods and services is assured in a number of provisions, in particular, Article 31(2) EUTMR (requirement of clarity and precision, 19/06/2012, C-307/10, IP Translator, EU:C:2012:361, §§ 36, 40, 42 and 47; 07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 31; 10/07/2014, C-420/13, Netto Marken Discount, EU:C:2014:2069, § 31; 29/09/1998, C-39/97, Canon, EU:C: 1998:442, §28; 12/12/2002, C-273/00, Methylcinnamat, EU:C:2002:748, § 34, 35; 11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 45), Article 31(l)(c) EUTMR (indication of goods and services to obtain a filing date), Article 2(1)(c) EUTMIR in conjunction with Article 33 EUTMR (09/07/2008, T-304/06, Mozart, EU:T:2008:268, §23; 27/02/2014, T-229/12, Vogue, EU:T:2014:95, §34; 11/06/2014, T-486/12, Metabol, EU:T:2014:508, § 36-37).

26. Those general principles are further confirmed by the case-law. Where the revocation applicant for registration of a trade mark indicates, a heading of a particular class, ‘it must, in any event, specify whether it is referring to all the goods or services included in the alphabetical list of that class or only some of them’, and in the latter case, to which of them (19/06/2012, C-307/10, IP Translator, EU:C:2012:361, § 61; 10/07/2014, C-420/13, Netto Marken Discount, EU:C:2014:2069, § 51-52; 17/07/2014, C-141/13 P, Walzer Traum, EU:C:2014:2089, § 40). Since the classes of the Nice Agreement often cover a large number of very different goods, a general indication to a class is not sufficient in order to identify the goods specifically covered (20/03/2013, T‑571/11, Club Gourmet, EU:T:2013:145, § 24).

27. The protection of a trade mark should be limited to and not go beyond the goods and services that are determined by the applicant to the extent that they are recorded in the files or subsequently in the register. Given this, from the outset, a comparison should not have been made with all the goods from the alphabetical list of the classes involved, but only with those of the application (decisions of 30/01/2014, R 501/2013-4, Cowa, § 13-14; 11/02/2014, R 410/2013-2, Narin, §20; 04/06/2014, R 1312/2013-2, Dinkool, §20; 03/11/2014, R1774/2013-1, Vinagra / Viagra).

28. As such, given that the requirements of place, time, extent and nature of use are cumulative, the Board will first deal with the nature of use requirement, which is the main issue in this case, to see whether it has been met before assessing the remaining requirements.

29. In the explanatory note for Class 17 of the Nice Classification, ‘plastics in extruded form for use in manufacture’ refers to plastic material that has been made from unprocessed plastics, classified in Class 1, and will be made into finished plastic products that are classified in various classes. The plastic included in Class 17 is usually in the form of extruded bars, blocks, pellets, rods, sheets, and tubes that will be used to make other products. Occasionally, the plastic in Class 17 is a finished product in its own right, such as ‘plastic film other than for wrapping’ delineated in the Alphabetical List. All those plastics in Class 17 are produced by polymerisation or the chemical transformation of polymers, and are used in the process of making the finished plastic products (17/04/2008, T‑389/03, Pelican, EU:T:2008:114, § 69). However, the plastics of Class 17 are usually in an interim state between the raw material and the finished plastic products.

30. The heading of Class 17 lists: ‘Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal.’ Packing materials are clearly not excluded. The goods that appear in the proof of use submitted are packing materials for agricultural use. ‘Plastic sheeting for agricultural purposes’ is definitely classified under Class 17, in the alphabetical list. As regards the applicant’s submissions, the Board notes that in the letter L108 of 6 February 2015, the Office’s classification expert ordered the applicant to move ‘silage bale wrap’ from Class 16 to Class 17. The opponent’s goods are also ‘bale wraps’ or ‘bale netwraps’ made of plastic and reinforced plastic. After some consultation, the Office allowed the applicant to place ‘silage bale wraps’ in both classes, Class 16 and Class 17.

31. It can be seen from the above that there is a certain level of uncertainty as regards classification principles, and turning to the general Nice Classification rules, classification must be carried out according to the function and the purpose of the goods, and there is not a single good in the alphabetic list of Class 16 which would serve agricultural purposes. There is neither such result in the TMclass, for Class 16 or in the harmonised classification database of EUIPO. On the other hand, all types of plastic sheets and films, used in the field of agriculture are found under Class 17.

32. The goods produced by the cancellation applicant in the present case are clearly not classic packaging materials, which would be classified under Class 16. These are industrial plastic sheets used only in the field of agriculture. This can be clearly seen from the evidence filed at first instance. In particular, the invoices filed under exhibits CRL 3-CRL 11 describe the goods sold as ‘Polywrap-Roundbale netwrap’. Likewise, from the photographs under exhibits CRL1 and CRL 2 showing the Polywrap product with the description ‘Bale netwraps heavy-duty for round bales’, it is clear that the goods for which use of the mark ‘POLYWRAP’ has been shown relate exclusively to bale netwraps or products used with a bale press, and that they are used for agricultural purposes.

33. In this respect, a plastic bale net wrapper is a farm implement for wrapping bales in plastic (plastic sheet) either to keep hay dry when stored outside or convert damp grass into silage. As the cancellation applicant correctly states, the bale press is drawn by a tractor and fed with hay. It contains a bobbin with the ‘Polywrap’ product and the hay is secured as a round bale within the ‘Polywrap’ product when it leaves the bale press. At a final stage, the round bales can be conserved with a heavy duty membrane (Agrar-Stretchfolie) in order to transport them or to initiate silage. These are clearly illustrated, as mentioned above, in the photos and pictures filed by the cancellation applicant.

34. The ‘Polywrap’ product, as shown from the evidence filed, is clearly a type of plastic sheeting in extruded form used to hold the hay bale in a cylindrical form for agricultural purposes. Hence, given the nature and purpose of such goods and taking into account the above, it is evident that such items are proper to Class 17 and not Class 16.

35. Such items, being ‘plastic sheeting for agricultural purposes’ clearly form a sub-category of ‘plastics in extruded form for use’ (10/12/2015, T-690/14, Vieta, EU:T:2015:950, § 61; 14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 45; 17/10/2006, T-483/04, Galzin, EU:T:2006:323, § 27; 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 56).

36. As such, contrary to the Cancellation Division, the Board finds that the evidence, assessed as a whole, provides sufficient indication as to the nature of use for the earlier German mark in respect of ‘plastic sheeting for agricultural purposes’ in Class 17. As a result this condition has been met.

Time and place of use

37. As to the time and place of use, the copies of invoices filed by the cancellation application range from 2010 to 2016, are issued in German, contain the German address of the cancellation applicant, and most importantly are addressed to customers in Germany, Austria, Italy, the Benelux, Slovenia, Romania, Finland, and France. Further, as to the invoices, prices are shown in Euros.

38. As a consequence, the cancellation applicant has provided sufficient indications regarding the time and place of use of the earlier German mark. As a result, these conditions have also been met.

Extent of use

39. As to the extent of use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (11/05/2006, C-416/04 P, Vitafruit, EU:C:2006:310, § 71; 08/07/2004, T-334/01, Hipoviton, EU:T:2004:233, § 35).

40. The requirement for the extent of use does not mean that the opponent has to reveal the entire volume of sales or turnover figures. It is sufficient to submit evidence which proves that the minimum threshold for a finding of genuine use has been passed (11/05/2006, C-416/04 P, Vitafruit, EU:C:2006:310, § 72). It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule, which would not allow the Office or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 25).

41. The proof of use must consist of solid and objective evidence of effective and efficient use (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

42. Moreover, when assessing evidence of proof of use, all the circumstances of the specific case have to be taken into account in conjunction with each other in order to determine whether the mark in question has been genuinely used. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

43. On inspection, it is clear that all the invoices show a richness and depth of data which enables any impartial observer to perfectly identify the type of product, the goods in question, the date of shipment, the cost, the address of the recipient (the name has been removed for confidential reasons), etc.

44. Out of all the invoices filed, numbering around 150, approximately 40 invoices, are addressed to customers throughout Germany. The amounts in the invoices range from approximately EUR 500 to over EUR 10 000 concerning the earlier German mark and the products in question. The figures indicated in the invoices are, in the Board’s view, sufficient to meet the threshold of a sufficient commercial volume of use.

45. The Board acknowledges that it could be argued given the relevant industry that the sales represented by the submitted invoices do not amount to a very extensive extent of use. Nonetheless, the Board finds that the use demonstrated by the invoices cannot be found merely residual, insignificant, marginal or symbolic. The amount of sales demonstrated by the invoices is compensated by the frequency of the sales, which is demonstrated by just under 40 invoices, which cover the entire relevant period of five years. In order to examine, in a particular case, whether an earlier mark has been put to genuine use, an overall assessment must be carried out which takes into account all the relevant factors of the particular case. That assessment implies a certain interdependence between the factors taken into account. In this respect, apart from the frequency of the sales, it must also be pointed out that the sales have been effected throughout the entire territory of Germany.

46. Moreover, the Board notes that the invoices bear numbers far apart which allows the inference that they were submitted merely by way of illustration rather than to show the total amount of sales, Even in the absence of any advertising materials, the Board concludes that the sales effected, while not perhaps vast or considerable, can be deemed as constituting use that objectively was such to create or preserve an outlet for the products concerned (27/09/2007, T-418/03, La Mer, EU:T:2007:299, § 87-90).

47. Additionally, the sales totals indicated in the invoices are not at odds with the turnover figures given in Annex CRL 13 for the product for the years 2010-2016 in Germany (amongst, Austria, Italy, the Benelux, Slovenia, Romania, Finland and France), which range from 22 288.50 EUR in 2010 to 32 819.50 EUR in 2014. They are neither at odds with the table provided by the cancellation applicant under CRL 3 to CRL 11 together with the invoices, indicating how many products were sold in each year.

48. In any event, it is reiterated that the purpose of the proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 36-38, and the case-law cited therein). However, data relating to the sales of the goods covered under the earlier trade mark have to be provided (31/01/12, T-378/09, Spa Group, EU:T:2012:34, § 82).

49. As such, although the remaining evidence, in particular the undated extract of what seems to be the cancellation applicant’s brochure/catalogue and photographs of the PolyWrap products (CRL 1 and 2) cannot be relied on in isolation (19/11/2014, T-344/13, FUNNY BANDS, EU:T:2014:974, § 29), they nevertheless lend support to the more quantitative exhibits in the form of invoices and turnover figures.

50. The Board finds that the evidence, assessed as a whole, provides sufficient indication as to the extent of use. As a result this condition has also been met.

Conclusion

51. When the evidence is evaluated as a whole, and not in piecemeal fashion, all the exhibits seamlessly combine to show that the earlier German mark has been put to genuine use in Germany, during the relevant period, on ‘plastic sheeting for agricultural purposes’ in Class 17.

52. According to Article 71(1) EUTMR, following the examination as to the admissibility of the appeal, the Board of Appeal shall decide on the appeal. It may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

53. The contested decision is annulled and the Board remits the case to the Cancellation Division for further prosecution of the application for a declaration of invalidity based on Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR , taking into account the goods for which use was proven with respect to the earlier German mark.

54. Since the case is remitted to Cancellation Division, and a final decision has yet to be rendered, this decision will be appealable with the decision definitively deciding on the application for a declaration of invalidity (Article 66(2) EUTMR).

55. In light of the above, the appeal is upheld, the contested decision is annulled and the case is remitted to the Cancellation Division for further prosecution.

Costs

56. The Board deems it equitable, pursuant to Article 109(3) CTMR, that each party bears its own costs in the appeal proceedings. The costs of the first instance proceedings should be dealt with in the final decision on the request for a declaration of invalidity.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the decision;

2. Remits the case to the Cancellation Division for further prosecution;

3. Orders each party to bear its own costs incurred in the appeal proceedings.

Signed S. Stürmann

Signed A. Szanyi Felkl

Signed S. Martin

Registrar: Signed H.Dijkema