Case T‑278/10
Wesergold Getränkeindustrie GmbH & Co. KG
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Community trade mark — Opposition proceedings — Application for Community word mark WESTERN GOLD — Earlier national, international and Community word marks WESERGOLD, Wesergold, and WeserGold — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Distinctiveness of the earlier marks)
Summary — Judgment of the General Court (First Chamber), 21 September 2012
1. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
2. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Re-evaluation of the facts in the light of evidence produced for the first time before it — Exclusion
(Council Regulation No 207/2009, Art. 65)
3. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Complementary nature of the goods or services
(Council Regulation No 207/2009, Art. 8(1)(b))
4. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Similarity of the marks concerned — Whether conceptual differences may neutralise visual or aural similarities — Conditions
(Council Regulation No 207/2009, Art. 8(1)(b))
5. Community trade mark — Appeals procedure — Appeal against a decision of the Opposition Division of OHIM — Examination by the Board of Appeal — Scope
(Council Regulation No 207/2009, Art. 64(1))
6. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Decision omitting to carry out a factual assessment
(Council Regulation No 207/2009, Art. 65)
1. See the text of the decision.
(see para. 26)
2. See the text of the decision.
(see para. 35)
3. See the text of the decision.
(see para. 40)
4. See the text of the decision.
(see para. 58)
5. Under Article 64(1) of Regulation No 207/2009 on the Community trade mark, following the examination as to the merits of the appeal, the Board of Appeal is to decide on that appeal and, in doing so, it may ‘exercise any power within the competence of the department which was responsible for the contested decision’, that is to say, it may make a ruling itself on the opposition either by rejecting it or by declaring it to be well founded, thereby either upholding or reversing the contested decision.
Thus, the absence of any specific invocation, submitted in the defence to the Board of Appeal of distinctive character enhanced by use, does not affect the obligation incumbent upon the Board of Appeal, where it decides on the opposition itself, to carry out a new, comprehensive examination of the merits of the opposition, in terms both of law and of fact.
The extent of the examination which the Board of Appeal must undertake in relation to the decision under appeal is not, in principle, delimited by the pleas relied on by the party who has brought the appeal. A fortiori, the extent of the examination which the Board of Appeal must undertake is not limited by the lack of precision of certain pleas raised before it.
(see paras 71, 80)
6. According to the first sentence of Article 62(1) of Regulation No 40/94 on the Community trade mark, following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. That obligation to examine the appeal includes the taking into account of enhanced distinctiveness acquired through use, where that argument is raised. It is possible that the assessment of the merits of the arguments and the evidence submitted by the applicant during the proceedings before the Office for Harmonisation in the Internal Market (Trade Marks and Designs) as regards the enhanced distinctiveness acquired through use could have led the Board of Appeal to adopt a decision different from the contested decision. Consequently, in failing to carry out such an assessment, the Board of Appeal acted in breach of essential procedural requirements, which means that the contested measure must be annulled.
Since the Board of Appeal, wrongly, did not state its findings on the arguments and evidence concerning enhanced distinctiveness acquired through use, it is not for the General Court to carry out an assessment of those arguments and that evidence in the context of an action for annulment of the contested decision. In the context of such an action, the General Court may not, in the exercise of its jurisdiction to review legality, act in lieu of the Board of Appeal in undertaking a factual assessment that the Board of Appeal failed to carry out. However, in the context of an action for annulment, such as the present case, if the General Court holds that a decision of the Board of Appeal, called into question in an action brought before it, is vitiated by illegality, it must annul it. It may not dismiss the action, substituting its own reasoning for that of the competent Office adjudicatory body responsible for the contested measure.
(see paras 81, 83)