CJEU Order C-76/11 Tresplain Investments 29 Nov 2011

ORDER OF THE COURT (Eighth Chamber)

29 November 2011 (*)

(Appeals – Community trade mark – Regulation (EC) No 40/94 – Articles 8(4) and 52(1)(c) – Community figurative mark Golden Elephant Brand – Application for a declaration of invalidity based on a non-registered national figurative mark GOLDEN ELEPHANT –Reference to the national law governing the earlier trade mark – Common-law action for passing-off)

In Case C-76/11 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 21 February 2011,

Tresplain Investments Ltd, established in Tsing Yi, Hong Kong (China), represented by B. Brandreth, Barrister,

appellant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,

respondent,

Hoo Hing Holdings Ltd, established in Romford (United Kingdom), represented by M. Edenborough QC,

intervener at first instance,

THE COURT (Eighth Chamber),

composed of A. Prechal (Rapporteur), President of the Chamber, L. Bay Larsen and C. Toader, Judges,

Advocate General: P. Cruz Villalón,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, Tresplain Investments Ltd asks the Court to set aside the judgment in Case T-303/08 Tresplain Investments v OHIM – Hoo Hing (Golden Elephant Brand) [2010] ECR II-0000 (‘the contested judgment’), in which the General Court dismissed its application for annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 7 May 2008 (Case R 889/2007-1) relating to invalidity proceedings between Hoo Hing Holdings Ltd (‘Hoo Hing’) and Tresplain Investments Ltd (‘the contested decision’).

Legal context

2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. However, that first regulation, as amended by Council Regulation (EC) No 422/2004 of 19 February 2004 (OJ 2004 L 70, p. 1, ‘Regulation No 40/49’), continues to apply to this case.

3 Article 8 of Regulation No 40/94, entitled ‘Relative grounds for refusal’, provided in paragraph 4:

‘Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign,

(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.’

4 Under the heading ‘Relative grounds for invalidity’, Article 52(1) of that regulation provided:

‘A Community trade mark shall be declared invalid on application to [OHIM] or on the basis of a counterclaim in infringement proceedings:

...

(c) where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled.’

Background to the dispute

5 On 4 February 1999, at the request of the appellant, OHIM registered the figurative mark Golden Elephant Brand as a Community trade mark to designate the goods in Class 30 within the meaning 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, that correspond to the following description, namely ‘rice’.

6 On 5 August 2005, Hoo Hing filed an application for a declaration that that trade mark was invalid on the basis of the combined provisions of Article 8(4) and Article 52(1)(c) of Regulation No 40/94.

7 In support of its application, it claimed that the rules on passing-off gave it the right, in the United Kingdom, to prohibit use of the contested Community trade mark Golden Elephant Brand on the basis of its non-registered figurative mark GOLDEN ELEPHANT, which it claimed to have been using in the United Kingdom since 1988 for rice.

8 By a decision of 16 April 2007, the Cancellation Division of OHIM considered, with regard to the ground for invalidity provided for in the combined provisions of Articles 8(4) and 52(1)(c) of Regulation No 40/94, that Hoo Hing had established, to the requisite standard, that it had used the earlier national trade mark GOLDEN ELEPHANT in the United Kingdom in the course of business at the date on which the application for the Community trade mark Golden Elephant Brand was filed, namely 29 April 1996, and that the national trade mark was not merely of local significance.

9 It dismissed the application for a declaration of invalidity, however, in view of the negligible market share of the rice sold under the earlier mark, as Hoo Hing had not established that the relevant public had attached ‘goodwill’, that is to say the attractive force which brings in custom, to the goods associated with the earlier mark and it had not, therefore, shown that the rules governing an action for passing-off allowed it to prohibit use of that Community trade mark.

10 On 8 June 2007, Hoo Hing lodged an appeal with OHIM against that decision. By the contested decision, the First Board of Appeal of OHIM granted that appeal. It annulled the Cancellation Division’s decision, declared the Community trade mark Golden Elephant Brand invalid and ordered the appellant to pay the costs.

11 The Board of Appeal took the view that the conditions of Article 52(1)(c) of Regulation No 40/94, read in conjunction with Article 8(4) of that regulation, were met and declared the trade mark invalid on that basis.

12 It stated that, in order to found an action for passing-off under common law, as developed by English case-law, the claimant must prove that three conditions have been met. It must establish, first, that it has acquired goodwill or reputation in the market under the non-registered mark and that its goods are known by some distinguishing feature; second, that there has been a misrepresentation (intentional or not) on the part of the proprietor of the subsequent trade mark leading, or likely to lead, the public to believe that the goods offered for sale by that proprietor are those of the claimant; and, third, that the claimant has suffered, or is likely to suffer, damage as a result of the confusion engendered by the misrepresentation by the proprietor of the subsequent trade mark.

13 The Board of Appeal stated that the evidence provided by Hoo Hing showed genuine and serious business activity involving importation into the United Kingdom and the sale to Chinese and Thai food establishments of specialised types of rice under the earlier mark. The sign, it found, had therefore been used in the course of trade within the meaning of Article 8(4) of Regulation No 40/94.

14 It stated that it was clear from the evidence adduced by Hoo Hing that the earlier mark had been used in the United Kingdom, namely in London and in the neighbouring counties of Kent and Bedfordshire. In addition, a statutory declaration provided by Hoo Hing confirmed the sale of rice to customers in other major cities in the United Kingdom, namely Manchester, Liverpool, Birmingham, Glasgow and Bristol. Hoo Hing had therefore proved that the use of the earlier mark was of more than mere local significance within the meaning of Article 8(4) of Regulation No 40/94.

15 In relation to the condition, laid down in Article 8(4)(b) of Regulation No 40/94, that the non-registered trade mark must give its proprietor the right to prohibit use of a subsequent trade mark, the Board of Appeal found, first, that Hoo Hing had demonstrated the presence of a sufficient degree of goodwill, at the date of filing of the application for the Golden Elephant Brand Community trade mark, in its business from the sale of specialised types of rice.

16 The Board of Appeal, furthermore, considered that the Community trade mark was a misrepresentation of the earlier national mark GOLDEN ELEPHANT. In that regard, it noted that the goods in question were identical. That was also the case in respect of the word elements of the marks at issue. There was phonetic and conceptual identity between those marks, as well as a marked visual resemblance. It was therefore inevitable that the public would not be able to distinguish the signs at issue and that consumers who had been exposed to the earlier mark would identify rice sold by the appellant under the Community trade mark with rice sold by Hoo Hing.

17 Finally, taking the view that Hoo Hing had shown the existence of goodwill in the United Kingdom for the earlier mark, which bore a strong resemblance to the Community trade mark at issue and covered identical goods, the Board of Appeal held that it was reasonable to conclude that it might suffer damage.

The action before the General Court and the judgment under appeal

18 By application lodged at the Registry of the Court of First Instance (now the General Court) on 30 July 2008, the appellant brought an action for annulment of the contested decision.

19 By the judgment under appeal, the General Court dismissed that action in its entirety.

20 After dismissing the first plea, based on infringement of Articles 73 and 74 of Regulation No 40/94, which is not in issue in the present appeal, the Court examined, from paragraph 89 of the contested judgment, the second plea, based on infringement of Article 8(4) of that regulation.

21 In rejecting that second plea, the Court first made a series of preliminary remarks in paragraphs 89 to 95 of the contested judgment.

22 It thus noted, at paragraph 90 of the contested judgment, that it follows from the combination of Articles 8(4) and 52(1)(c) of Regulation No 40/94 that ‘the proprietor of a non-registered trade mark which is of more than mere local significance can obtain the cancellation of a subsequent Community trade mark where and to the extent that, under the law of the relevant Member State, first, rights to that sign were acquired prior to the date of application for registration of the Community trade mark, and, second, that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark’.

23 The Court added, at paragraph 91 of the contested judgment, that ‘the applicant for a declaration of invalidity must establish that the sign at issue falls within the scope of the law of the Member State relied on and that it enables the use of a subsequent mark to be prohibited’.

24 At paragraph 93 of the contested judgment, the Court pointed out that it follows from Article 5(4) of the Trade Marks Act 1994, as interpreted by the national courts, that, in order to obtain annulment of the Community trade mark concerned, the proprietor of the non-registered national trade mark must establish, in accordance with the legal rules governing actions for passing-off laid down by the law of the United Kingdom, that three conditions, concerning the goodwill acquired, misrepresentation and damage caused to that goodwill, are satisfied.

25 In that regard, the Court observed, at paragraphs 94 and 95 of the contested judgment, that although the appellant does not challenge that theoretical approach, also adopted in paragraph 23 of the contested decision, it nevertheless took the view that, for each of those conditions, the Board of Appeal did not apply that approach correctly to the present case.

26 With regard, first, to the condition relating to the existence of goodwill, the Court held, at paragraphs 97 to 100 of the contested judgment, that the Board of Appeal acted correctly in examining whether the proprietor of the earlier national mark had proved that it had acquired goodwill on 29 April 1996, the date on which the application for the Community trade mark was filed.

27 The Court also held that the Board of Appeal had correctly found that the evidence provided by Hoo Hing in this regard was sufficient.

28 On this point the Court found as follows at paragraphs 104 to 107 of the contested judgment:

‘104 [Hoo Hing] produced, inter alia, a statutory declaration from its director, dated 13 December 1998, which indicated the annual tonnage of rice sold from 1988 to 1997. According to that declaration, [Hoo Hing] sold 84 tonnes of rice under the earlier mark in the United Kingdom in 1995, 52 tonnes in 1996 and between 42 and 68 tonnes per year between 1988 and 1994.

105 As the Board of Appeal found in paragraph 31 of the contested decision, the content of the statutory declaration is corroborated by the remainder of the evidence submitted by [Hoo Hing]. While it is true that the majority of that evidence submitted by [Hoo Hing] concerns a period subsequent to 29 April 1996, it is nevertheless the case that some of the evidence provided relates to a period prior to that date. For example, as the Board of Appeal noted in paragraph 30 of the contested decision, [Hoo Hing] provided eight sales invoices issued between 1992 and 29 April 1996 and sent to customers located in London, Kent and Middlesex (United Kingdom), in relation to the sale of rice bearing the words “Golden Elephant”.

106 Further, [Hoo Hing] produced shop till rolls which show sales of rice on various dates in the months of March and April 1993, December 1994, and January, February and March 1995. In that regard, the [appellant] claims that the till rolls refer only to “G/E” or “‘GE” rice and not to the earlier mark. However, it must be held that that fact alone does not suffice to deprive them of all evidential value. In fact, as the Board of Appeal pointed out in paragraph 32 of the contested decision, it is normal that goods sold are described in an abbreviated form on till rolls. It should also be noted that this was not the only evidence provided by [Hoo Hing] to demonstrate the sale of rice under the earlier mark in the United Kingdom. In that respect, it should be pointed out that the Board of Appeal is bound to carry out an overall assessment of all the evidence placed before OHIM. However, it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see, to that effect, judgment of the Court of Justice of 17 April 2008 in Case C-108/07 P Ferrero Deutschland v OHIM, not published in the ECR, paragraph 36). The Board of Appeal correctly took account of the till rolls as evidence which corroborates the content of the statutory declaration.

107 In any event, it must be held that, even if those till rolls were devoid of evidential value, the fact that [Hoo Hing] sold rice under the earlier trade mark in the United Kingdom, at a time prior to the date on which the application for the contested Community trade mark was filed, is proven to the requisite standard by the submission of the statutory declaration in conjunction with a number of invoices.’

29 At paragraphs 108 to 115 of the contested judgment the Court held that, taking into account the national case-law in this regard, the Board of Appeal made no error by finding that the trading activity of the proprietor of the earlier national mark, consisting of the sale of rice under that trade mark in the United Kingdom, was sufficient to have acquired goodwill before the application to register the Golden Elephant Brand sign as a Community trade mark was filed, notwithstanding the fact that the sales of rice in question were small when compared with the total market for rice imported into the United Kingdom.

30 Second, with regard to the condition relating to the misrepresentation of the earlier mark, the Court examined, first, the arguments of the appellant based on the peaceful co-existence of the Community and national trade marks at issue, in the absence of specific cases of confusion between them, and on the acquiescence of the proprietor of the earlier mark.

31 In that regard, the Court held, in paragraphs 125 to 128 of the contested judgment, that as that argument constitutes a ground of defence which the appellant did not submit before OHIM and which OHIM was not required, of its own motion, to examine under Article 74(1), in fine, of Regulation No 40/94, it is inadmissible under Article 135(4) of the Rules of Procedure of the General Court, as it seeks to change the subject-matter of the proceedings before the Board of Appeal.

32 On the other hand, the Court examined the merits of the appellant’s argument that, in the context of an action for passing-off, the law of the United Kingdom requires the claimant to adduce evidence of specific instances of confusion of the marks at issue in order to prove misrepresentation.

33 In that regard, the Court held that the Board of Appeal had correctly found that, given the identical nature of the goods covered by the trade marks at issue, the identical nature of their word element in both English and Chinese and the similarities between their figurative elements, each of the marks being represented by an elephant’s head with graphic differences, the sale of rice in the United Kingdom under the Community trademark Golden Elephant Brand had to be considered as a misrepresentation as it was likely to lead the public to attribute the commercial origin of that product to the proprietor of the earlier national trade mark GOLDEN ELEPHANT.

34 The Court found, moreover, at paragraph 140 of the contested judgment, that, contrary to the appellants argument ‘that the intervener ought to have adduced evidence of specific instances of confusion’, it is apparent from an examination of the law of the United Kingdom, and in particular national case law, that it is for the court in question to determine whether it is likely that the relevant public will be deceived and that, although ‘specific instances of confusion may be useful’, the decision of the court does not depend solely or even primarily on the evaluation of such evidence.

35 It was also stated, at paragraph 141 of the contested judgment, that, according to the applicable national law, while ‘[t]he absence of evidence of specific instances of confusion may play a role in the sense that it is possible that that fact may reflect adversely on the claimant’s case in an action for passing-off, if the goods of the defendant to that action have been openly on the market for a long time’, such an absence may often be readily explained and is rarely decisive.

36 Third, with regard to the condition relating to evidence of damage caused to the goodwill, the Court held that that condition had also been fulfilled.

37 In that regard, the General Court pointed out, in paragraph 147 of the contested judgment ‘that it is clear from the national case-law that, in the context of an action for passing-off, the claimant is not obliged to prove that he has suffered damage. It is sufficient that damage is likely.’

38 The Court held, at paragraphs 149 and 150 of the contested judgment, that the Board of Appeal was correct to find that there was a likelihood of damage, as the goods in question were identical and a significant number of customers of the proprietor of the earlier national mark would consider that the rice sold by the appellant under the contested Community trade mark came from that proprietor.

Forms of order sought by the parties

39 The appellant claims that the Court should set aside the contested judgment and order OHIM to pay the costs.

40 OHIM and Hoo Hing contend that the appeal should be dismissed and the appellant ordered to bear the costs of the proceedings at both instances.

The appeal

41 Under Article 119 of its Rules of Procedure, where an appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, dismiss the appeal by reasoned order without opening the oral procedure. That provision should be applied in the present case.

42 In support of its appeal, the appellant raises a single plea alleging infringement of Article 8(4) of Regulation No 40/94, which is made up of three parts.

The first branch of the single plea

43 In the first branch of its single plea, the appellant claims that the Court and the Board of Appeal erred in law by finding that the existence of goodwill created a right of more than mere local significance. It does not do so unless the goodwill is of more than mere local significance.

44 The appellant claims, in particular, that although, as the Court held, goodwill may be established by relatively small trading activity, the scope of the goodwill thus established is, however, likely to be very limited.

45 Moreover, it is apparent from the national case-law concerning the action for passing-off that the right of the owner of the goodwill to prevent use by another of the same or confusingly similar signs may be limited to a particular locality.

46 In this case, the Board of Appeal relied on sales made under the earlier national trade mark in various towns throughout the United Kingdom to determine the territorial scope of the goodwill. It did not, however, consider the nature or scale of that trade. The evidence demonstrates that this trade only generated local goodwill, geographically limited to the area immediately surrounding the retail outlets in which the sales were made.

47 In that context, the evidence relating to the market share held by the proprietor of the earlier national mark is relevant as it demonstrates that even if the sales by that proprietor are sufficient to acquire goodwill, that goodwill is merely of local significance.

48 The appellant contends, moreover, that there is little indication in OHIM’s practice in taking decisions as to the meaning of a right ‘of more than mere local significance’ within the meaning of Article 8(4) of Regulation No 40/94. It also refers to OHIM’s guidance in relation to that provision.

49 In that regard, the Court notes that it is not disputed, as is apparent from paragraph 13 of the contested judgment, that in the contested decision, the Board of Appeal expressly asserted that, as it was clear from the evidence adduced by the proprietor of the earlier national mark that it had been used in the United Kingdom, namely in London and in the neighbouring counties of Kent and Bedfordshire, and that a statutory declaration by that proprietor had confirmed the sale of rice to customers in other major cities in the United Kingdom, namely Manchester, Liverpool, Birmingham, Glasgow and Bristol, the proprietor had therefore proved ‘that the use of the earlier mark went beyond mere local significance within the meaning of Article 8(4) of Regulation No 40/94’.

50 Furthermore, it is also clear from the contested judgment that the Opposition Division had already reached the same conclusion.

51 However, it must be noted that, as OHIM and Hoo Hing have argued, the appellant did not challenge the contested decision on that point before the General Court.

52 The appellant is thus submitting, for the first time in an appeal before the Court of Justice, a plea that it did not raise at first instance.

53 Such a plea, which in any event cannot be considered to be a matter of public interest which the General Court should have examined of its own motion, cannot be examined by the Court of Justice since, in an appeal, its jurisdiction is confined to review of the findings of law on the pleas argued before the General Court (see to that effect, inter alia, Case C-16/06 P Les Éditions Albert René v OHIM [2008] ECR I-10053, paragraph 126, and Case C-408/08 P Lancôme v OHIM [2010] ECR I-1347, paragraphs 52 and 53 and the case-law cited).

54 Furthermore, it cannot be maintained that this plea is merely an amplification of the original plea put before the General Court under Article 8(4) of Regulation No 40/94.

55 In that plea, the appellant expressly referred to only one of the conditions for the application of that provision, namely the condition under which, according to the law of the Member State that is relied on pursuant to that provision, that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark, and which has been interpreted, moreover, in Case C-96/09 P Anheuser-Busch v Bud?jovický Budvar [2011] ECR I-0000, paragraphs 141 to 169. In that context, the appellant claimed that the Board of Appeal had misapplied the national law relating to the action of passing-off.

56 That condition for the application of Article 8(4) of Regulation No 40/94, which is assessed in the light of the applicable national law, is distinct from that covered by the first branch of the single plea, namely that the earlier right relied on must relate to a ‘sign used in the course of trade of more than mere local significance’, which is assessed in the light of European Union law, and has been interpreted, moreover, by the Court of Justice at paragraphs 188 to 191 of Anheuser-Busch v Bud?jovický Budvar.

57 It follows that the first branch of the ground of appeal must be rejected as clearly inadmissible.

The second branch of the single plea

58 In the second branch of its single plea, the appellant claims that the General Court erred in law by failing to assess the relevance of the evidence that parallel trading of the rice sold under the two marks at issue justified the conclusion that there was misrepresentation.

59 The appellant claims that, although the General Court held, at paragraphs 140 and 144 of the contested judgment, that the Board of Appeal was entitled to conclude that the Community trade mark is a misrepresentation of the earlier national trade mark on the basis of its own impression of the sign and the Community trade mark concerned, it did not, however, examine to what extent the evidence of simultaneous trading of the rice by Hoo Hing and by the appellant supported the conclusion that there was a concurrent goodwill in favour of the latter.

60 Since the appellant had traded rice under the appellant’s own trade mark, it acquired its own goodwill. However, in that case, no legal action would be possible because there has been no misrepresentation by the appellant of the goods that it is trading, even if the similarities between the signs at issue may cause confusion on the part of the relevant public in respect of the goods marketed.

61 It is apparent from national case-law that, in a situation where two traders have been concurrently using in the United Kingdom the same or similar names for their goods or businesses, the factual situation may well be that neither of them can be said to be guilty of any misrepresentation.

62 The appellant claims that if proper consideration had been given to its argument based on the existence of concurrent goodwill, it would have to have been concluded that one of the three essential conditions for the action of passing-off had not been fulfilled, namely the condition of misrepresentation.

63 In that regard, the Court notes that although, when examining the condition relating to the requirement of misrepresentation, the General Court did not address the merits of that argument based on the peaceful co-existence of the marks at issue on the market, it is clear from paragraphs 125 to 128 of the contested judgment that it considered that argument to be inadmissible under Article 135(4) of its Rules of Procedure since the appellant had not raised that argument before OHIM and since, as OHIM was not required to examine it of its own motion, it was seeking to change the subject-matter of the proceedings before the Board of Appeal.

64 However, it must be noted that, in its appeal, the appellant does not put forward any argument to show that those paragraphs of the contested judgment are vitiated by any error of law.

65 By the second branch of its single plea, the appellant also seems to criticise paragraphs 141 and 142 of the contested judgment, in which the General Court rejected, on the basis of an analysis of legal theory and of the national case-law, the appellant’s argument that, in a situation of peaceful co-existence of the marks at issue on the market, the claimant in an action for passing-off had to adduce evidence of specific instances of confusion.

66 Nevertheless, it should be noted that, as regards the examination, in the context of an appeal, of the findings made by the General Court with regard to national law that is invoked by a party, the Court of Justice has jurisdiction to determine, first of all, whether the General Court, on the basis of the documents and other evidence submitted to it, distorted the wording of the national provisions at issue or of the national case-law relating to them, or of the academic writings concerning them; second, whether the General Court, as regards those particulars, made findings that were manifestly inconsistent with their content; and, lastly, whether the General Court, in examining all the particulars, attributed to one of them, for the purpose of establishing the content of the national law at issue, a significance which is not appropriate in the light of the other particulars, where that is manifestly apparent from the documentation in the case-file (Case C-263/09 P Edwin v OHIM [2011] ECR I-0000, paragraph 53).

67 However, it must be stated that the appellant has not shown that it is apparent from the documents and from the other evidence submitted to the General Court that the latter erred in its determination of the content of the applicable national law, in this case the rules relating to the action for passing-off, which is open to criticism by the Court of Justice at the appeal stage within the limits of the jurisdiction of the Court of Justice referred to in the previous paragraph of this order.

68 In those circumstances, it must be held that the second branch of the single plea is clearly unfounded.

The third branch of the single plea

69 By the third branch of its single plea, the appellant claims that the General Court and the Board of Appeal erred in considering that the evidence of trading by the claimant in the action for passing-off indicated that it had acquired goodwill associated with the earlier national trade mark.

70 The statutory declaration of the director of Hoo Hing constitutes the only evidence of the scale of rice sales under the figurative mark GOLDEN ELEPHANT before the date when the application for registration of the Community trade mark Golden Elephant Brand was lodged. However, it is apparent from paragraphs 105 and 107 of the contested judgment that the General Court held that the Board of Appeal was entitled to find, as evidence of the use of the earlier figurative trade mark for rice sold by Hoo Hing, the combination of that statutory declaration and the invoices drawn up by Hoo Hing as well as the till rolls adduced by it that refer to ‘G/E’ or ‘GE’.

71 However, as the General Court pointed out at paragraph 105 of the contested judgment, those invoices did not show use of the earlier mark, but simply use of the words ‘GOLDEN ELEPHANT’. Furthermore, the references ‘G/E’ or ‘GE’ that appear on the till rolls do not support the conclusion that the sales corresponding to those references related to rice bearing the earlier figurative mark.

72 It is apparent from paragraphs 137, 138 and 143 of the contested judgment that the presence of figurative elements, in particular the presence of an image of the identical concept of an elephant, was considered to be decisive in the finding that there was misrepresentation.

73 In that regard, the Court notes that the General Court has exclusive jurisdiction to find and appraise the relevant facts and also to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts and evidence are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (Case C-254/09 P Calvin Klein Trademark Trust v OHIM [2010] ECR I-0000, paragraph 49 and the case-law there cited).

74 It should be noted that, by the argument developed in the third branch of its single plea, the appellant criticises the assessment made by the General Court, at paragraphs 104 to 107, of the evidence provided by Hoo Hing in support of its application for a declaration of invalidity, while making no claim that the General Court distorted that evidence.

75 Furthermore, it is apparent from paragraphs 106 and 107 of the contested judgment that the General Court expressly took account of the fact, raised by the appellant, ‘that the till rolls refer only to ‘G/E’ or ‘GE’ rice’. The General Court held, however, first, that the Board of Appeal could, in the context of an overall assessment of all the evidence adduced, take account of the till rolls as evidence which corroborates the content of the statutory declaration of the director of Hoo Hing. It held, moreover, that even if those till rolls were devoid of evidential value, the fact that Hoo Hing had ‘sold rice under the earlier trade mark in the United Kingdom, at a time prior to the date on which the application for the contested Community trade mark was filed, [was] proven to the requisite standard by the submission of the statutory declaration in conjunction with a number of invoices’.

76 The appellant fails to demonstrate, moreover, that the General Court distorted the content of the invoices in finding that they were evidence of the use of the earlier mark when they include the words ‘Golden Elephant’.

77 Finally, contrary to the contention of the appellant, it does not follow from paragraphs 137, 138 and 143 of the contested judgment that the presence of figurative elements, in particular that of a drawing representing an elephant head, was considered as decisive in finding that there was misrepresentation.

78 On the contrary, it follows from paragraphs 133 to 139 of the contested judgment that the General Court held that the Board of Appeal was entitled to find that the condition of the existence of a misrepresentation was satisfied in view of the overall assessment of several factors, in particular the identical nature of the goods covered by the marks at issue, the identical nature of the word element in English and in Chinese, the highly distinctive nature of which was emphasised by the General Court, as well as the similarities between the common figurative element of the marks at issue, namely an elephant head.

79 The third branch of the single plea must therefore be rejected as manifestly inadmissible.

80 It is apparent from all of the foregoing considerations that the appeal must be dismissed in its entirety as being, in part, clearly unfounded and, in part, clearly inadmissible.

Costs

81 Under Article 69(2) of the Rules of Procedure of the Court of Justice, which applies to the appeal procedure by virtue of Article 118 of those rules, 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 appellant has been unsuccessful and OHIM and Hoo Hing have applied for costs, it must be ordered to pay the costs.

On those grounds, the Court (Eighth Chamber) hereby:

1. Dismisses the appeal;

2. Orders Tresplain Investments Ltd to pay the costs.

[Signatures]

* Language of the case: English.

Order of 29 Nov 2011, C-76/11 (Tresplain Investments), ECLI:EU:C:2011:790.