Henkell & Co. Sektkellerei KG v European Union Intellectual Property Office (T-20/15)

Contents

Judgment of the General Court (Ninth Chamber)14 April 2016^note(EU trade mark — Opposition proceedings — Application for the EU word mark PICCOLOMINI — Earlier EU word mark PICCOLO — No genuine use of the earlier mark — Article 42(2) of Regulation (EC) No 207/2009)In Case T‑20/15,Henkell & Co. Sektkellerei KG, established in Wiesbaden (Germany), represented by J. Flick, lawyer,vEuropean Union Intellectual Property Office (EUIPO), represented by A. Kusturovic and A. Folliard-Monguiral, acting as Agents,the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, beingCiacci Piccolomini d’Aragona di Bianchini Società Agricola, established in Milan (Italy), represented by F. Cecchi, P. Pozzi and F. Ghisletti Giovanni, lawyers,THE GENERAL COURT (Ninth Chamber),composed of G. Berardis, President, O. Czúcz and A. Popescu (Rapporteur), Judges,Registrar: I. Dragan, Administrator,having regard to the application lodged at the Court Registry on 14 January 2015,having regard to the response of EUIPO lodged at the Court Registry on 26 May 2015,having regard to the response of the intervener lodged at the Court Registry on 4 May 2015,further to the hearing on 28 January 2016,gives the following

Judgment

Background to the dispute

1On 16 January 2012 the intervener, Ciacci Piccolomini d’Aragona di Bianchini Società Agricola, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2Registration as a mark was sought for the word sign PICCOLOMINI.

3The goods in respect of which registration was sought are in Class 33 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, and correspond to the following description: ‘Alcoholic beverages (except beers)’.

4The EU trade mark application was published in Community Trade Marks Bulletin No 35/2012 of 20 February 2012.

5On 14 May 2012, the applicant, Henkell & Co. Sektkellerei KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods in Class 33 referred to in paragraph 3 above.

6The opposition was based on the earlier EU word mark PICCOLO, which was registered on 14 August 2001 under the number 952770.

7The earlier mark covers goods and services in classes 33 and 42 corresponding to the following description:— Class 33: ‘Alcoholic beverages (except beers), in particular wines, still wines, sparkling wines, herb wines and vermouth, spirits’;— Class 42: ‘Providing of food and drink; temporary accommodation’.

8The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

9On 28 November 2012, the intervener requested, in accordance with Article 42(2) of Regulation No 207/2009, that the applicant furnish proof of genuine use of the earlier mark.

10On 19 February 2013, the applicant stated that it had used the mark PICCOLO in relation to sparkling wine in 16 Member States of the European Union and the mark PIKKOLO for sparkling wine in Germany and Austria. The applicant added that the difference in spelling between the element ‘pikkolo’ and the element ‘piccolo’ was only minor and that the relevant public would hardly notice it because the pronunciation of those two elements was identical. The applicant also submitted documents and other evidence for the purpose of proving genuine use of the earlier mark.

11By decision of 17 September 2013, the Opposition Division concluded that the applicant had furnished proof of genuine use of the earlier mark and upheld the opposition in its entirety.

12On 18 November 2013, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

13By decision of 31 October 2014 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the appeal and annulled the decision of the Opposition Division on the ground that the applicant had submitted insufficient proof of genuine use of the earlier mark. In addition, the Board of Appeal rejected the opposition pursuant to Article 42(2) of Regulation No 207/2009.

14In order to reach the conclusion that there had been no genuine use of the earlier mark, first, the Board of Appeal found that, with regard to the entire body of evidence, it could safely be concluded that the term ‘piccolo’ formed part of internationally used wine terminology and that the average consumer would therefore be familiar with that term. Secondly, it stated that consumers who did not understand the term ‘piccolo’ would not automatically assume that it constituted a trade mark when they were confronted with it in the context of the marketing of sparkling wine. Thirdly, it pointed out that the sign PIKKOLO or PICCOLO was clearly used in a descriptive manner or in an abbreviated form, namely the term ‘picc.’, and that it featured exclusively together with other descriptive terms, such as the terms ‘trocken’ and ‘dry’ for the various products of the applicant, or with a part of the applicant’s company name, namely the term ‘henkell’. Fourthly, it found that that latter term, which is part of the applicant’s company name, was the most dominant element in terms of its positioning and size, both on the bottles’ labels and on the packaging. It added that that term did not have any apparent meaning, with the result that, owing to the way in which it was represented, it would immediately be regarded as a distinctive sign.

Forms of order sought

15The applicant claims that the Court should:— annul the contested decision;— order EUIPO and the intervener to pay the costs.

16EUIPO and the intervener contend that the Court should:— dismiss the action;— order the applicant to pay the costs.

Law

17In support of the action, the applicant relies on a single plea in law alleging infringement of Article 42(2) of Regulation No 207/2009.

18First, it must be borne in mind that it is apparent from recital 10 of Regulation No 207/2009 that the legislature considered there to be no justification for protecting an earlier trade mark except where that mark was actually used. Consequently, pursuant to Article 42(2) of Regulation No 207/2009, if the applicant for registration of a trade mark so requests, the proprietor of an earlier EU trade mark — or, under Article 42(3), the proprietor of an earlier national trade mark — who has given notice of opposition must furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application, the earlier trade mark has been put to genuine use in the Community or in the Member State in which it is protected, in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided that the earlier trade mark has at that date been registered for not less than five years. In the absence of proof to that effect, the opposition is to be rejected.

19According to settled case-law, the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification resulting from a function actually performed by the mark on the market (see, to that effect, judgment of 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraphs 36 to 38 and the case-law cited, and judgment of 30 November 2009 in Esber v OHIM — Coloris Global Coloring Concept (COLORIS), T‑353/07, unpublished, EU:T:2009:475, paragraph 20 and the case-law cited).

20Under Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), proof of use must relate to the place, time, extent and nature of use of the earlier mark for the goods and services in respect of which it is registered and on which the opposition is based.

21Secondly, it is apparent from the case-law that there 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, by analogy, judgment of 11 March 2003 in Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

22The assessment of whether the use of the trade mark is genuine, must be based on an overall assessment of all the relevant factors in the specific case, namely the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares 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 in VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003 in Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

23Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgment of 12 December 2002 in Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and judgment of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).

24It is in the light of those considerations that it must be examined whether the Board of Appeal was right to find, in paragraphs 21 and 51 of the contested decision, that the applicant had submitted insufficient proof that the earlier mark had been put to genuine use within the meaning of Article 42(2) of Regulation No 207/2009.

25It must be stated at the outset that, since the application for registration of the EU trade mark was published on 20 February 2012, the five-year period referred to in Article 42(2) of Regulation No 207/2009 runs, in the present case, from 20 February 2007 to 19 February 2012 (‘the relevant period’).

26In support of the single plea in law, the applicant claims that, contrary to the Board of Appeal’s finding, the evidence submitted in the course of the proceedings before EUIPO proved that there had been genuine use of the earlier mark.

27First, the applicant submits, in essence, that the Board of Appeal’s assessment that the term ‘piccolo’ is perceived as purely descriptive leads to the de facto annulment of the earlier mark. Secondly, it takes the view that the Board of Appeal acted unlawfully in examining the distinctive character of the earlier mark in the context of its assessment of the proof of genuine use of that mark and in finding that that mark was devoid of any distinctive character. Thirdly, it takes the view that the Board of Appeal’s assessment that the earlier mark lacks distinctive character is exclusively based on documents which postdate the relevant period and were provided by the intervener with the statement of grounds for the appeal against the Opposition Division’s decision. According to the applicant, there is therefore no piece of evidence which proves that the earlier mark lacked distinctiveness during the relevant period. Fourthly and lastly, the applicant submits that, even if the Court were to come to the conclusion that the Board of Appeal had competence to assess that the earlier mark had no distinctive character, the Court’s review of the legality of the contested decision will clearly show that, contrary to the conclusion drawn by the Board of Appeal, that mark has been used as a trade mark and not only in a descriptive manner.

28EUIPO and the intervener dispute the merits of the applicant’s claims. They take the view that a detailed examination of the evidence submitted by the applicant in the course of the proceedings, or to which the applicant referred, confirms that the Board of Appeal was right to find that proof of genuine use of the earlier mark had not been furnished.

29The Court considers it appropriate to examine the applicant’s fourth argument, relating, in essence, to the nature of use of the earlier mark, before examining the first three arguments.

30By its fourth argument, the applicant maintains that, contrary to what the Board of Appeal found, the earlier mark has been used as a trade mark and not only in a descriptive manner (see paragraph 27 above).

31In the present case, it must be pointed out that, in its examination of whether the use of the earlier mark was genuine, first of all, the Board of Appeal stated that the parties to the proceedings before EUIPO were arguing as to whether the earlier mark had been used as a descriptive indication of a certain size of bottle rather than as a trade mark in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which that mark is registered. Next, it pointed out, first, that that issue was distinct from the question of whether the earlier mark was registrable under Article 7(1) of Regulation No 207/2009 and, secondly, that that question could only be the subject of invalidity proceedings brought before the Cancellation Division on the basis of Article 52(1)(a) of that regulation. Lastly, it stated, on the basis of the judgment of 16 May 2013 in Reber v OHIM — Klusmeier (Wolfgang Amadeus Mozart PREMIUM) (T‑530/10, unpublished, EU:T:2013:250), that it was competent to assess whether the specific use which had been made of the earlier mark was of a descriptive nature with regard to the genuine use requirement under Article 42(2) of Regulation No 207/2009.

32Furthermore, it must be pointed out that, as is stated in paragraph 8 of the contested decision and as is apparent from the analysis of the documents in EUIPO’s file, which was sent to the Court, the applicant, in order to prove genuine use of the earlier mark, provided the following items of evidence in the course of the proceedings before EUIPO:— a statutory declaration by its marketing director, dated 13 February 2013, which refers to images of sparkling wine bottles and lists the sales figures in respect of bottles of sparkling wine bearing the words ‘piccolo’ or ‘pikkolo’ for the years 2007 to 2011 in various Member States of the European Union;— images of sparkling wine bottles;— excerpts from product folders and price lists valid as of 1 April 2007 and in consecutive years, in German with partial translations, showing for instance the product range of 0.2 l bottles bearing the word ‘pikkolo’;— an excerpt from an export price list valid as of 1 April 2008 and as of 1 April 2009, in English, showing the range of 0.2 l bottles bearing the word ‘pikkolo’;— various invoices relating to the period from 2007 to 2012, directed at companies in Greece, Italy and Finland, concerning, inter alia, the delivery of 0.2 l bottles of ‘HENKELL TRO. DRY SEC PICC.’;— an excerpt from a marketing leaflet.

33After analysing the documents referred to in paragraph 32 above and those provided by the intervener, the Board of Appeal found, in paragraph 51 of the contested decision, that the earlier mark had not been genuinely used in accordance with its essential function which was to guarantee the identity of the origin of the goods and services for which it was registered.

34The Court holds that such a finding could reasonably be deduced from the examination of the documents referred to in paragraph 32 above.

35In that regard, first of all, it must be pointed out that the Board of Appeal did not call into question either the duration or extent of use which had been made of the earlier mark and that that is not disputed by the parties.

36Next, as regards the place of use, the applicant disputes the Board of Appeal’s finding that it markets its goods only in Germany, Greece, Italy and Finland. It claims to have sold products under the sign PICCOLO in 20 Member States of the European Union and products under the sign PIKKOLO in two Member States, as is allegedly proved by the statutory declaration of its marketing director, dated 13 February 2013.

37It should be noted, in that regard, that, in order to assess the evidential value of a document, regard should be had first and foremost to the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable. In the present case, the statutory declaration was drawn up by the applicant’s marketing director and cannot therefore be as reliable and credible as a declaration by a third party or a person who is unconnected with the company in question. The statutory declaration is not sufficient in itself and is merely an indication which needs to be confirmed by other evidence (see, to that effect, judgment of 16 May 2013 in Wolfgang Amadeus Mozart PREMIUM, T‑530/10, EU:T:2013:250, paragraph 36).

38However, as EUIPO and the intervener correctly point out, the particulars in the statutory declaration are not confirmed by the evidence which accompanies it. On the contrary, it is clear from the invoices provided by the applicant that those invoices refer only to the territories of four Member States. Consequently, the Board of Appeal did not err in finding, in paragraph 37 of the contested decision, that the evidence provided by the applicant showed that it did not market its sparkling wine in the whole of the European Union, but only in Germany, Greece, Italy and Finland.

39Lastly, as regards the analysis, in the contested decision, of the nature of the use to which the earlier mark had been put, which the applicant particularly and primarily calls into question (see paragraph 27 above), the Board of Appeal, in essence, found, in paragraphs 39 to 51 of the contested decision, that, regardless of whether consumers understood the meaning of the term ‘piccolo’, the way in which the earlier mark had been used on the applicant’s bottles of sparkling wine and on the product folders and invoices did not make it possible to conclude that that mark had been used as a trade mark.

40The applicant disputes that analysis by claiming primarily that particular weight has to be given to the way in which the earlier mark is used on the products because that is precisely the way in which that mark is presented to consumers whereas the product folders, price lists and invoices are intended for the trade only and not for the consumer. According to the applicant, it is clear from the product get-up that that mark has been used as a trade mark and not in a descriptive manner. It adds that it is common practice in the relevant sector to indicateonly trade marks in a prominent way. Consequently, in the applicant’s view, the depiction of the mark in question highlighted in a prominent and eye-catching way shows the applicant’s intention of using this term as a trade mark and not as a descriptive indication of the size of the bottle, which corresponds, moreover, to the perception of the use of the term by the consumer.

41It must be held that the applicant’s arguments cannot succeed.

42Irrespective of whether the term ‘piccolo’ is a technical term used in the winery sector or whether it is also commonly used in order to market sparkling wines to the average wine consumer, it must be held that, in any event, the way in which the earlier mark is used on the product itself, namely the bottles of sparkling wine, does not make it possible to conclude that that mark has been used as trade mark, that is to say in accordance with its essential function which is to give an indication of the commercial origin of the product concerned. Genuine use of a trade mark may be held to exist only where that mark is used to guarantee the identity of the origin of the goods or services for which it was registered (judgment of 16 June 2015 in Polytetra v OHIM — EI du Pont de Nemours (POLYTETRAFLON), T‑660/11, EU:T:2015:387, paragraph 70).

43Contrary to what the applicant claims, the term ‘piccolo’ is in no way displayed on the goods or on the packaging in a prominent way which attracts the consumer’s attention. On the contrary, as the Board of Appeal correctly stated in paragraphs 42 to 45 of the contested decision, it is clearly the term ‘henkell’ which is predominant, both on the goods and on the packaging.

44As regards the goods, as the Board of Appeal pointed out in paragraph 43 of the contested decision, the term ‘henkell’ is reproduced in the uppermost position on the label on the neck of the bottle and is highlighted by a banner. A graphical symbol appears underneath that term and that symbol is itself placed above the term ‘piccolo’ or ‘pikkolo’. The term ‘piccolo’ or ‘pikkolo’ is positioned above the indication ‘dry sec’, which is written in much smaller characters. The graphical symbol on the neck of the bottle is also reproduced on the label in the centre of the bottle. It is situated above the term ‘henkell’, which is written in large bold type and is itself situated above the term ‘trocken’, which is written in much smaller characters.

45As regards the packaging, the presentation of the term ‘piccolo’ or ‘pikkolo’ is similar to that on the goods. On the packaging, the graphical symbol is situated above the term ‘henkell’, which is written in large bold type and is itself situated above the term ‘trocken’, which is written in much smaller characters. The term ‘piccolo’ or ‘pikkolo’ appears at the bottom of the packaging in a font which is the same as that of the term ‘trocken’, together with other words in even smaller characters.

46As both the Board of Appeal and the intervener have correctly pointed out, whether on the goods or on the packaging, it is therefore clearly the term ‘henkell’ which, on account of its size and its positioning, is dominant. The term ‘piccolo’ or ‘pikkolo’ appears, in the overall image, only as secondary and as an ancillary element.

47Consequently, as EUIPO and the intervener correctly point out, on the bottle or the packaging, it is rather the term ‘henkell’ which will be perceived as an indication of the commercial origin of the goods, whereas the term ‘piccolo’ or ‘pikkolo’ will merely be descriptive of the size of the bottle.

48That finding is, moreover, entirely borne out by the product folders, the price lists and the invoices which the applicant provided in the course of the proceedings before EUIPO. As the Board of Appeal found in paragraph 40 of the contested decision and as EUIPO and the intervener submit, it is evident that the term ‘pikkolo’ or ‘piccolo’ is used in such a way as to describe the size of the bottle. That term features exclusively together with other descriptive terms such as the terms ‘trocken’ and ‘dry’ for the various products of the applicant and is automatically associated with 0.2 l bottles in the same way as the term ‘magnum’ or the expression ‘double magnum’ are used to designate 1.5 l or 3 l bottles.

49As regards, in particular, the invoices, they contain the words ‘henkell trocken dry sec picc.’ or the words ‘henkell tro. dry sec picc’, followed by an indication relating to the size of the bottle of wine, namely the reference ‘200 ml’, with, in certain cases, indications relating to the percentage of alcohol, for example the reference ‘11.5% by vol.’. It is clear that such indications, which are, moreover, used in an abbreviated form, cannot be perceived as indicators of the commercial origin of the goods. As EUIPO states, the fact that the abbreviated term ‘picc.’ always appears after the expressions ‘trocken dry sec’ or ‘tro. dry sec’, which all describe the degree of sweetness of the sparkling wine in different languages, must be interpreted as meaning that the term ‘piccolo’ is itself descriptive and is not another indication of the commercial origin in addition to the part of the company name ‘henkell’.

50It must therefore be held that the items of evidence provided by the applicant before the Opposition Division and the Board of Appeal, even assessed as a whole, do not prove to the requisite legal standard that the earlier mark was put to genuine use during the relevant period. It must be added that, as is apparent from the reasoning relating to the analysis of the applicant’s fourth argument, the Board of Appeal’s examination as to whether there had been genuine use of the earlier mark complies with the applicable rules and case-law. It must be stated, in particular, that the Board of Appeal did not in any way infringe the principles, relied on by the applicant, resulting, inter alia, from the judgment of 24 May 2012 in Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314). Likewise, it must be pointed out that it is apparent from the examination of that argument that the Board of Appeal did not in any way rule on whether there were absolute grounds precluding the earlier mark from being registered or from being valid, but confined itself to assessing whether that mark had been put to genuine use in accordance with its essential function.

51It follows that there cannot be held to be any infringement of Article 42(2) of Regulation No 207/2009 as regards the earlier mark.

52It must, moreover, be added that that finding cannot be called into question in the light of Annexes A.8 to A.12 to the application, which consist, respectively, of a compilation of various product get-ups used in Germany since 1935; of a depiction of the label on the back of the product; of a product survey of a large supermarket store in Germany; of historical pictures, advertising and a CD-ROM containing television advertising dating from 1957 to 1964; and, lastly, of a consumer survey conducted in Germany, dated October 1991.

53Annexes A.8 to A.12 to the application, which the applicant submitted for the first time in the course of the proceedings before the Court, cannot be taken into consideration and must be rejected as inadmissible. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded and there is no need to assess their probative value (see, to that effect, judgment of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

54In any event, it must be pointed out that, even if Annexes A.8 to A.12 to the application were not inadmissible, it is evident that they either do not concern the relevant period or that they relate to marks other than that at issue here, with the result that it would not have been possible to take them into account in the present case.

55As regards, lastly, the decision of the Regional Court, Wiesbaden, of 10 April 1972, which is contained in Annex A.13 to the application and was referred to by the applicant at the hearing, it must be borne in mind that neither the parties nor the Court itself can be precluded from drawing on the case-law of the Courts of the European Union, national case-law or international case-law for the purposes of interpreting EU law. That possibility of referring to national decisions is not covered by the case-law according to which the purpose of actions brought before the Court is to review the legality of decisions of the Boards of Appeal in the light of the evidence submitted by the parties before the latter, since the purpose is not to criticise the Boards of Appeal on the ground that they failed to take the factual aspects of a specific national decision into account, but rather to cite decisions in support of a plea alleging that the Boards of Appeal infringed a provision of Regulation No 207/2009 (see, to that effect, judgment of 12 July 2006 in Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 70 and 71).

56In the present case, it must be stated that the applicant is not citing the decision of the Regional Court, Wiesbaden, to provide an example of the interpretation to be given to a provision of law, but to clarify a question of fact, namely to establish whether the applicant has used the term ‘piccolo’ as a trade mark. Consequently, what is involved here concerns proof of genuine use of the earlier mark, which the applicant should have submitted before EUIPO. Furthermore, as is the case with Annexes A.8 to A.12 to the application, it must be pointed out that the decision of the Regional Court, Wiesbaden, does not relate to genuine use of the earlier mark and does not concern the relevant period.

57In the light of all of the foregoing, the applicant’s fourth argument must therefore be rejected as unfounded.

58The first three arguments, relating to the alleged de facto annulment of the earlier mark and to the Board of Appeal’s alleged assessment of the distinctive character of the earlier mark (see paragraph 27 above), must be rejected. Contrary to what the applicant implies, the Board of Appeal did not in any way rule on whether there were absolute grounds precluding the earlier mark from being registered or from being valid, but confined itself to assessing whether that mark had been put to genuine use in accordance with its essential function (see paragraph 50 above).

59The Board of Appeal confined itself to finding that the evidence provided showed that the earlier mark had been used by the applicant in a descriptive manner, namely in order to describe a bottle of a certain size. Furthermore, as EUIPO and the intervener correctly pointed out in their written pleadings and at the hearing, the Board of Appeal did not in any way examine the distinctive character of that mark per se in the opposition proceedings, but the perception of the sign resulting from the actual conditions of its use as a trade mark for the purposes of Article 42(2) of Regulation No 207/2009, as it is required to do in assessing whether the use of any earlier mark is genuine. The argument that the lack of distinctive character established by the Board of Appeal is exclusively based on documents which were provided by the intervener and postdate the relevant period (see paragraph 27 above) must be rejected as unfounded since, first, the Board of Appeal in no way found that the earlier mark lacked distinctive character and, secondly, that argument has no factual basis. Contrary to what the applicant maintained at the hearing in response to a question put by the Court, it is clear, inter alia, from paragraphs 21 and 39 to 44 of the contested decision that the Board of Appeal took the view that the earlier mark had not been put to genuine use on the basis, primarily, of the evidence provided by the applicant, which does not postdate the relevant period.

60In the light of all of the foregoing, the applicant’s single plea in law must be rejected as unfounded and the present action must therefore be dismissed.

Costs

61Under 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

Operative part

On those grounds,THE GENERAL COURT (Ninth Chamber)hereby:

1.Dismisses the action;

2.Orders Henkell & Co. Sektkellerei KG to bear its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO) and by Ciacci Piccolomini d’Aragona di Bianchini Società Agricola.

Delivered in open court in Luxembourg on 14 April 2016.