Marcel Pemsel su IPKat segnala l’interessante Trib. UE 6 settembr 2023, T-774/21, DPG Deutsche Pfandsystem GmbH c. EUIPO-Užstato sistemos administratorius VšĮ
L’ultima chiede la registrazione del segno seguente:
La DPG fa valere l’anteriorità seguente:
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Però di fronte alla richiesta di prova del genuine use (da noi art. 178.4 cpi; in UE art. 47.2 reg. 1001 del 2017) , la DPG non vi riesce.
Essa sovraintende al sistema tedesco di riciclo di bottiglie e packaging : per cui l’ampia prova della presenza del segno sui prodotti degli associati non vale prova del suo uso, dato che l’aveva chiesto e ottenuto come marchio individuale e non di certificazione.
<<41 That being said, it is appropriate to examine whether, beyond that function of certifying such goods, the earlier sign also fulfilled, in the light of the evidence adduced by the applicant, the function of identifying the commercial origin of the services covered by that sign.
42 In that connection, the applicant maintains that when business consumers saw the earlier sign on the terms and conditions of participation in the DPG system, on the invoices and on its website, they perceived it as an individual mark indicating the commercial origin of the services covered by that sign.
43 As a preliminary point, it must be stated that the applicant’s line of argument relates only to the nature of use of the earlier sign in relation to the services covered by that sign, that is, the services referred to in paragraph 7 above.
44 Regarding, first, the nature of use of the earlier sign on the terms and conditions of participation in the DPG system, it is true that all the pages of that document are marked with the sign.
45 However, the graphic elements of that sign such as the bottle, the can and the curving arrow pointing to the left are symbols used throughout the European Union to denote the recycling process or recycling services and are placed on items to be recycled (see, to that effect, judgment of 11 April 2019, Užstato sistemos administratorius v EUIPO – DPG Deutsche Pfandsystem (Representation of a bottle and an arrow), T‑477/18, not published, EU:T:2019:240, paragraphs 32 to 34).
46 Accordingly, when such a sign is affixed to a legal document such as the terms and conditions of participation in the DPG system, it will in all likelihood be understood as referring, on the part of business consumers, to the recycling process in itself and to the fact that certain goods are subject to a specific recycling system, that is, the DPG system, and not as indicating the commercial origin of the services covered by the earlier sign.
47 That perception is borne out by the wording of those terms and conditions of participation because, as noted by the Board of Appeal, those terms and conditions present the earlier sign systematically as a marking element of disposable drinks packaging for the purposes of certifying that those goods are covered by the DPG system.
48 Accordingly, inter alia, Article 1.2 of Part I of the terms and conditions of participation in the DPG system, which is part of the section entitled ‘Fundamental Principles of the DPG System and functions of the System Participants’, specifies that the earlier sign serves as a ‘symbol’ for the mandatory deposit. Similarly, Article 1.1 of Section 1 of Part II of those terms and conditions provides that the packaging concerned must be marked in such a way as not to impair the meaning of the earlier sign, that is, that that packaging is ‘subject to the mandatory deposit’.
49 Likewise, where Annex 1 to the terms and conditions of participation in the DPG system in its 2013 version – which does not differ substantially from the 2016 version – describes the characteristics of the earlier sign, it does not do so in relation to the services covered by that sign. That annex, entitled ‘Specifications for First Distributors regarding the Marking of DPG Packaging’, merely sets out the various components of the earlier sign in order to assist first distributors in marking disposable drinks packaging. The way in which the earlier sign is presented within that annex thus refers to its function of certifying that the goods concerned are subject to the DPG system.
50 Further, the terms and conditions of participation in the DPG system associate the earlier sign more closely with the activities of the professionals participating in the DPG system than with the services covered by that sign. In particular, according to Article 2 of Section 1 of Part V of those terms and conditions, collectors are encouraged to display the sign in the context of their operations in order to ‘disclose [their] participation in the DPG System’. From that perspective, the earlier sign serves to indicate that certain operators specialising in the collection, treatment and recycling of waste contribute to the implementation of the DPG system as collectors rather than to designate the services concerned.
51 In those circumstances, there is nothing to suggest that business consumers will perceive the marking of the earlier sign on the terms and conditions of participation in the DPG system, irrespective of its certification function, as an indication of the commercial origin of the services covered by that sign.
52 Regarding, second, the invoices submitted by the applicant, it must first be stated that they are marked by the earlier sign on the top right and that sign is juxtaposed with the applicant’s business name, that is, ‘DPG Deutsche Pfandsystem GmbH’, which is set out in large underlined letters in bold type on the top left.
53 As is apparent from paragraphs 45 and 46 above, the elements making up the earlier sign are not designed to refer, on the part of business consumers, to the commercial origin of a specific category of services, but rather to the fact that certain goods are subject to a specific recycling system, that is, the DPG system.
54 Moreover, the applicant submits that, according to case-law, the use of the earlier sign together with the business name of its proprietor on invoices does not, in principle, preclude that sign from being able to refer to the commercial origin of the services covered by that sign.
55 In that connection, it must be stated that, in paragraphs 74 and 77 of the contested decision, the Board of Appeal did not assert that the earlier sign marking the invoices was not perceived as indicating the commercial origin of the services covered by that sign on the ground that it was used together with the applicant’s business name.
56 Regarding the content of the invoices, they display the amount of the participation fees payable by the participants in the DPG system. The invoices thus stated that those fees are calculated according to the approximate amount of items of DPG packaging that the first distributor intends to put into circulation on the German market. Having regard to that wording, the invoicing of the services provided by the applicant and, moreover, covered by the earlier sign have a merely indirect link to that sign, as the sign was associated more closely with the activity of the first distributors and thereby with its use of certifying that the packaging concerned is covered by the DPG system.
57 Having regard to the foregoing, the applicant, which bears the burden of proof, has not shown that, in addition to the earlier sign’s primary function of certification, business consumers perceived the affixing of that sign to the invoices as an indication of commercial origin of the services covered by that sign.
58 Third, the use of the earlier sign on the applicant’s website is similarly not sufficient to show that the relevant public perceives the sign as referring to the commercial origin of the services designated by that sign.
59 As considered by the Board of Appeal, on the applicant’s website, the services which it provides and which are, moreover, designated by the earlier sign are associated, inter alia, with the applicant’s business name, that is, ‘DPG Deutsche Pfandsystem GmbH’. By contrast, the earlier sign is present only at the top left of that website, with the result that business consumers are not guided on the applicant’s website by any element that is sufficiently clear to enable them to associate the services concerned with that sign.
60 What is more, that site states in its FAQ that, in essence, in order to comply with regulatory requirements concerning marking of disposable drinks packaging, it is necessary to display the earlier sign on the packaging in question. Thus, the sign is presented as being a marking element used for the purposes of certifying that the packaging concerned was part of the DPG system.
61 In those circumstances, there is nothing to suggest that, in addition to the earlier sign’s primary function of certifying that the packaging concerned is part of the DPG system, business consumers perceived the use of that sign on the applicant’s website as an indication of commercial origin of the services covered by that sign.
62 Having regard to all the foregoing, the Court holds that the applicant has not submitted sufficient evidence to establish that the earlier sign has been put to genuine use in accordance with the essential function of individual marks within the European Union in respect of the services for which it was registered>>.
