Case T-63/07

Mäurer + Wirtz GmbH & Co. KG

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for Community figurative mark tosca de FEDEOLIVA – Earlier Community and national word marks TOSCA – Relative grounds for refusal – Failure to take an argument into consideration – Article 74(1) of Regulation (EC) No 40/94 (now Article 76(1) of Regulation (EC) No 207/2009))

Summary of the Judgment

1.      Community trade mark – Appeals procedure – Appeals before the Community judicature – Legality of the decision of a Board of Appeal adjudicating in opposition proceedings – Challenge in reliance on new elements of law or fact – Inadmissible

(Council Regulation No 40/94, Arts 63 and 74(1))

2.      Community trade mark – Procedural provisions – Opposition proceedings – Examination restricted to the submissions of the parties – Harm caused to the distinctiveness or reputation of the earlier trade mark

(Council Regulation No 40/94, Art. 74)

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 enjoying a reputation – Protection of the earlier mark with a reputation extended to goods or services which are not similar

(Council Regulation No 40/94, Art. 8(5))

1.      Under Article 74(1) of Regulation No 40/94 on the Community trade mark, in proceedings relating to relative grounds for refusal of registration, the examination is to be restricted to the facts, evidence and arguments provided by the parties. It follows that, in relation to a relative ground for refusal of registration, elements of law and of fact which are pleaded before the Court without having previously been raised before the Board of Appeal cannot affect the legality of a decision of that board.

Consequently, in the context of the review of the legality of decisions of the Boards of Appeal, for which the Court has jurisdiction under Article 63 of that regulation, those elements of fact and of law which are pleaded before the Court without having previously been raised before the departments of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) cannot be examined for the purpose of assessing the legality of the decision of the Board of Appeal and must therefore be declared inadmissible.

(see paras 22-23)

2.      By ticking box 95 of the notice of opposition, the applicant indicated that its opposition was based on the contention that the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks.

One argument, put forward in the proceedings before the Board of Appeal, according to which use of the mark applied for would lead to an erosion of the earlier marks’ reputation, since the public would no longer associate the opposing party’s products with its marks, is restricted to formulating a matter already raised when the notice of opposition was filed. Thus, such an argument explains at most the nature of the harm caused to the earlier marks – identified by the opposing party as erosion of their reputation – and provides brief reasons for that argument, in the form of the claim that the public would no longer associate its products with its marks.

In that regard, the criteria for applying a relative ground for refusal or any other provision relied on in support of arguments put forward by the parties are naturally part of the matters of law submitted for examination by the Office for Harmonisation in the Internal Market (Trade Marks and Designs). The opposing party’s argument states only that the conditions laid down in Article 8(5) of Regulation No 40/94 on the Community trade mark are met and explains briefly why that is the case, namely because the public would no longer associate its goods with the earlier marks covering those goods.

In the light of the grounds of opposition put forward by the opposing party before the Opposition Division, that argument merely clarifies the nature of the alleged likelihood of harm and provides reasons in that regard, and does not add a new fact or evidence for the purposes of Article 74(2) of that regulation.

It is therefore an error of law to classify that argument – which seeks to clarify the nature and origin of the harm which opposition to registration of the mark applied for aims to prevent pursuant to Article 8(5) of Regulation No 40/94 – as a new fact for the purposes of Article 74(2) of Regulation No 40/94, and to reject that argument as inadmissible. The argument should have been taken into account by the Board of Appeal under Article 74(1) of that regulation.

(see paras 31-36)

3.      The extent to which the opposing party who intends to rely on the relative ground for refusal referred to in Article 8(5) of Regulation No 40/94 on the Community trade mark must plead and prove that the mark applied for gives rise to a future, non-hypothetical risk of detriment to the earlier marks, or of unfair advantage being taken of them, varies depending on whether the mark applied for appears capable, at first sight, of giving rise to one of the risks referred to in that provision.

It is possible, particularly in the case of an opposition based on a mark with an exceptionally high reputation, that the probability of a future, non-hypothetical risk of detriment to the earlier mark or of unfair advantage being taken of it by the mark applied for is so obvious that the opposing party does not need to put forward and prove any other fact to that end. However, it is also possible that the mark applied for does not, at first sight, appear capable of giving rise to one of the risks covered by Article 8(5) of Regulation No 40/94 with respect to the earlier mark with a reputation, even though it is identical with or similar to the earlier mark, in which case the non-hypothetical, future risk of detriment or unfair advantage must be established by other evidence, which it is for the opposing party to put forward and prove.

(see paras 39-40)