JUDGMENT OF THE GENERAL COURT (Third Chamber)
20 January 2021 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark BE EDGY BERLIN – Earlier national word mark EDJI – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑329/19,
12seasons GmbH, established in Berlin (Germany), represented by M. Gail, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Société immobilière et mobilière de Montagny, established in Roanne (France), represented by A. Grolée, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 19 March 2019 (Case R 1522/2018-5), relating to opposition proceedings between Société immobilière et mobilière de Montagny and 12seasons,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, V. Kreuschitz and G. Steinfatt (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 31 May 2019,
having regard to the response of EUIPO lodged at the Court Registry on 31 October 2019,
having regard to the response of the intervener lodged at the Court Registry on 3 December 2019,
having regard to the request for a hearing lodged by the applicant and having decided, pursuant to Article 106(1) of the Rules of Procedure of the General Court, to open the oral part of the procedure,
having regard to the letter by which the applicant stated that it was withdrawing its request to present oral argument at a hearing and, after considering that it had sufficient information available to it from the documents in the file, and having decided to close the oral part of the procedure,
gives the following
Judgment
Background to the dispute
1 On 28 October 2016, the applicant, 12seasons GmbH, 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 European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in Classes 18 and 25 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, for each of those classes, to the following description:
– Class 18: ‘Leather and imitations of leather, and goods made of leather and imitations of leather, namely briefcases, beach bags, wallets, shopping bags, handbags, bags (game -) [hunting accessories], holdalls, backpacks, satchels, casual bags; bags [envelopes, pouches] of leather, for packaging; animal skins, hides; trunks and travelling bags; umbrellas; parasols; walking sticks; whips; harnesses; saddlery’;
– Class 25: ‘Clothing, in particular belts; footwear, in particular insoles; headgear.’
4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/231 of 6 December 2016.
5 On 12 January 2017, the intervener, Société immobilière et mobilière de Montagny, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of all the goods referred to in paragraph 3 above.
6 The opposition was based, inter alia, on the earlier French word mark EDJI, filed on 9 December 2011 and registered on 28 February 2014, under No 113880373, for goods and services in Classes 9, 14, 18, 25 and 35.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 By decision of 8 June 2018, the Opposition Division upheld the opposition in part in respect of ‘goods made of leather and imitations of leather, namely briefcases, beach bags, wallets, shopping bags, handbags, bags (game -) [hunting accessories], holdalls, backpacks, satchels, casual bags; bags [envelopes, pouches] of leather, for packaging; trunks and travelling bags’ in Class 18 and ‘clothing, in particular belts; footwear, in particular insoles; headgear’ in Class 25.
9 On 2 August 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 68 of Regulation 2017/1001, against the decision of the Opposition Division, claiming that the opposition should be rejected in its entirety.
10 By decision of 19 March 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First, the Board of Appeal found that the relevant public was the French public, whose level of attention was average, or even higher than average if the price of the goods was particularly high.
11 Secondly, the Board of Appeal upheld the Opposition Division’s findings concerning the comparison of the goods and services at issue. Thus, as regards the goods in Class 18 covered by the mark applied for, on the one hand, it found that ‘goods made of leather and imitations of leather, namely briefcases, beach bags, wallets, shopping bags, handbags, backpacks, satchels, casual bags; trunks and travelling bags’ were identical to the goods covered by the earlier mark, that ‘goods made of leather and imitations of leather, namely bags (game -) [hunting accessories], holdalls’ were highly similar to the goods covered by the earlier mark and that ‘bags [envelopes, pouches] of leather, for packaging’ were similar to the goods covered by the earlier mark. On the other hand, it found that the goods ‘leather and imitations of leather; animal skins, hides; umbrellas; parasols; walking sticks; whips; harnesses; saddlery’ differed from the goods and services covered by the earlier mark and rejected the intervener’s arguments in that regard. As regards the goods in Class 25 covered by the mark applied for, the Board of Appeal confirmed that ‘clothing, footwear, headgear’ were identical to the goods covered by the earlier mark.
12 Thirdly, as regards the comparison of the signs at issue, the Board of Appeal found that they were visually and phonetically similar to an average degree and that they were not conceptually similar. Therefore, taking into account the normal degree of distinctiveness of the earlier mark, the average or even high level of attention of the relevant public and the overall similarity of the signs at issue, the Board of Appeal concluded that the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, could not be excluded as regards the goods covered by the mark applied for which were found to be identical or similar to the goods covered by the earlier mark.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
14 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
15 The intervener contends that the Court should:
– dismiss the action;
– uphold the contested decision;
– reject the application for registration as regards the goods in Classes 18 and 25, referred to in paragraph 8 above;
– order the applicant or EUIPO to pay the costs incurred by the intervener in the proceedings before EUIPO and before the Court.
Law
16 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation.
17 Bearing in mind the date on which the application for registration in question was made, namely 28 October 2016, which is determinative for the purposes of identifying the applicable substantive law, the facts of present proceedings are governed, first, by the procedural provisions of Regulation 2017/1001 and, second, by the substantive provisions of Regulation No 207/2009, as amended (see, to that effect, judgments of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 4, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
18 Consequently, in the present case, as regards the substantive provisions, the references made by the Board of Appeal in the contested decision to Article 8(1)(b) of Regulation 2017/1001, and by the parties in their pleadings, should be understood as referring to Article 8(1)(b) of Regulation No 207/2009, which is identical in content.
19 Similarly, the applicant’s reference to Article 60(1)(a) of Regulation 2017/1001 must be understood as referring to Article 53(1)(a) of Regulation No 207/2009, which is identical in content.
20 In that regard, it should be noted that, since the proceedings before the Board of Appeal are opposition proceedings, Article 53(1)(a) of Regulation No 207/2009, relating to relative grounds for invalidity, is not applicable in the present case.
21 It must therefore be held that, in support of the action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
22 The applicant submits, in essence, that, since the marks at issue are not similar, the Board of Appeal erred in concluding that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
23 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
24 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services identified (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
25 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
26 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
27 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 22).
28 The overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components. However, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 23).
29 As a preliminary point, it should be noted that the applicant does not dispute the Board of Appeal’s assessment regarding the comparison of the goods and services in question.
30 In the first place, as regards the definition of the relevant public, the applicant submits that, given that the proprietors of the registered EU trade marks are German, the relevant territory for determining whether there is a likelihood of confusion is not only Germany but the whole of the European Union.
31 First, it must be stated that that argument lacks clarity. It should be noted that the proprietor of the earlier national mark is a French undertaking and the applicant for the mark BE EDGY is a German undertaking. The applicant’s reference to ‘registered EU trade marks’, the proprietors of which are German, is therefore unclear. Furthermore, contrary to what the applicant appears to argue, the Board of Appeal did not consider Germany to be the relevant territory.
32 Second, it must be noted that the earlier mark on which the opposition is based is a French trade mark. Under Article 8(1)(b) of Regulation No 207/2009, the likelihood of confusion must be assessed on the part of the public in the territory in which the earlier trade mark is protected. Thus, the Board of Appeal rightly found that, since the earlier mark is a French mark, the relevant public is the French public.
33 In the second place, as regards the signs at issue, the Board of Appeal found that the earlier mark EDJI has no meaning in French and has a normal level of inherent distinctiveness. As regards the mark applied for, the Board of Appeal took the view that the word element ‘be edgy’ visually dominates the sign because of its large size and its position within the sign, that the element ‘berlin’ would be perceived as a descriptive indication of the geographical origin of the goods and that the figurative elements, namely the two triangles, would be perceived as purely decorative. It added that the French public would understand the word ‘be’ as the English verb ‘to be’, but that it was unlikely to perceive the meaning of the English word ‘edgy’.
34 The applicant merely states that the marks at issue have a low degree of distinctiveness, but does not put forward any argument in that regard. That assertion cannot therefore call into question the Board of Appeal’s assessment that the earlier mark has a normal degree of distinctiveness.
35 The applicant also claims that the overall impression created by the mark applied for is dominated by its beginning, namely the element ‘be’.
36 In that regard, it is apparent from the case-law that, although the consumer usually attaches more importance to the beginning of words, that consideration cannot apply in all cases, nor can it invalidate the principle that the assessment of the similarity of marks must take account of the overall impression given by them (see judgments of 26 November 2014, Aldi Einkauf v OHIM – Alifoods (Alifoods), T‑240/13, EU:T:2014:994, paragraph 53 (not published) and the case-law cited, and of 3 May 2018, Gall Pharma v EUIPO – Pfizer (Styriagra), T‑662/16, not published, EU:T:2018:242, paragraph 26 and the case-law cited).
37 The element ‘edgy’ is the same size as the element ‘be’ and has a larger number of letters, with the result that it must be regarded as also being dominant in the overall impression created by the mark applied for. Furthermore, it should be noted that the Board of Appeal rightly considered the element ‘be edgy’ to be the dominant element of the mark applied for since, due to it being larger in size than the other elements and due to its central position, it represents a significant part of that mark.
38 The applicant’s arguments therefore do not call into question the Board of Appeal’s finding that the element ‘be edgy’ is the dominant element of the mark applied for.
39 In the third place, as regards the visual comparison of the signs at issue, the Board of Appeal found that the signs at issue differed in the typefaces used, differed on account of the triangles of the mark applied for, which are, however, decorative, and differed due to the presence of the word ‘be’ in the mark applied for, which has no equivalent in the earlier mark. The Board of Appeal noted that the only word element of the earlier mark, namely ‘edji’, shared its first two letters with the co-dominant element ‘edgy’ of the mark applied for and that those two elements were composed of the same number of letters. It concluded that the signs at issue were visually similar to an average degree at most.
40 The applicant submits that the signs at issue are not visually similar. It argues that the earlier mark consists of a four-letter word, that the mark applied for consists of five elements, namely two triangles and the words ‘be’, ‘edgy’ and ‘berlin’, and that those marks produce a different overall impression. The applicant submits that account should be taken of the overall impression produced by the mark, that the mark applied for cannot be broken down into its various parts in order to establish a similarity resulting from the existence of the same single element and that the consumer normally pays more attention to the beginning of a mark, namely the word ‘be’ of the mark applied for, than to the end of the mark.
41 First of all, it must be noted that it is apparent from the contested decision that, in its visual comparison of the signs at issue, the Board of Appeal took into account the similarity between the earlier mark EDJI and the co-dominant element ‘edgy’ of the mark applied for. The applicant has not put forward any argument that is capable of calling into question that similarity.
42 Next, it is true that it is apparent from the case-law cited in paragraphs 26 to 28 above that the average consumer normally perceives a mark as a whole and does not analyse its various details, and that the comparison of the marks must be carried out by considering each of them as a whole.
43 However, contrary to what the applicant appears to claim, the Board of Appeal did not base its assessment solely on the similar elements of the signs at issue, but took into account the signs as a whole. Thus, the Board of Appeal took into account the differences between the signs resulting from the presence of additional elements in the mark applied for and, for that reason, concluded that the signs at issue were visually similar only to an average degree at most.
44 As the intervener observes, the Board of Appeal relied on the overall impression created by the signs at issue, taking into account, in accordance with the case-law cited in paragraph 26 above, the distinctive and dominant elements of the signs.
45 In that regard, as EUIPO and the intervener submit, the various elements do not have the same importance in the overall impression created by the mark applied for. The Board of Appeal found that there are similarities between the distinctive and dominant elements of the signs at issue and noted that the differences between those signs related to additional, descriptive or decorative elements of less importance in the comparison.
46 Furthermore, even if, as the applicant submits, the consumer pays more attention to the beginning of the mark applied for, namely to the element ‘be’, that cannot call into question the existence of a certain degree of visual similarity resulting from the presence of the elements ‘edji’ and ‘edgy’ in the signs at issue and cannot therefore be sufficient to conclude that the signs at issue are different.
47 Consequently, the applicant’s arguments do not call into question the Board of Appeal’s conclusion that the signs at issue are visually similar to an average degree at most.
48 In the fourth place, as regards the phonetic comparison of the signs at issue, the Board of Appeal found that the earlier mark EDJI and the element ‘edgy’ in the mark applied for would be pronounced identically in French or, at the very least, in a very similar way. It also noted that the pronunciation of the marks at issue differed on account of the elements ‘be’ and ‘berlin’ of the mark applied for, the latter element being less important because of its descriptive character. The Board of Appeal concluded that the signs at issue were clearly phonetically similar and that they were similar to at least an average degree.
49 The applicant submits that there is a phonetic difference between the beginning of the signs at issue. It argues that, contrary to what the Board of Appeal found, the consumer will remember the order of the elements and syllables of the signs at issue and will not confuse them.
50 First, it must be noted that the Board of Appeal took into account the difference in pronunciation resulting from the presence of the element ‘be’ in the mark applied for. Contrary to what the applicant appears to argue, the mere presence of the element ‘be’ at the beginning of the mark applied for is not sufficient to establish that the signs at issue are different.
51 Furthermore, as EUIPO submits, the co-dominant word element ‘edji’ of the earlier mark and the word element ‘edgy’ of the mark applied for are phonetically identical for French consumers and that phonetic identity relates to all of the earlier mark and to more than half of the mark applied for.
52 In so far as the applicant has not put forward any argument capable of calling into question the finding that the elements ‘edji’ and ‘edgy’ in the signs at issue are phonetically identical or highly similar, it therefore cannot claim that those signs are different.
53 Second, it must be noted that, contrary to what the applicant submits, the phonetic comparison is not aimed at ascertaining whether the relevant consumer will confuse the signs at issue, but seeks to establish whether there are similarities in the pronunciation of the signs.
54 Consequently, the applicant’s arguments do not call into question the Board of Appeal’s conclusion that the signs at issue are phonetically similar to at least an average degree.
55 In the fifth place, as regards the conceptual comparison of the signs at issue, the Board of Appeal found that the earlier mark had no meaning in French and that it was highly unlikely that the word ‘edgy’ of the mark applied for would be understood by the relevant French public. By contrast, that public was likely to perceive the word ‘be’ as the English verb ‘to be’ and the word ‘berlin’ as describing the origin of the goods. The Board of Appeal took the view that, since the earlier mark is not associated with any meaning, the signs are not conceptually similar.
56 It is sufficient to note that the applicant has not put forward any argument to dispute the Board of Appeal’s conclusion that the signs at issue are not conceptually similar since the earlier mark has no meaning in French.
57 In the sixth place, as regards the likelihood of confusion, the Board of Appeal concluded that the signs at issue are similar overall, in particular in view of the striking phonetic coincidence. Taking into account the normal degree of distinctiveness of the earlier mark, the average or even high level of attention of the average public and the overall similarity of the signs, the Board of Appeal concluded that there is a likelihood of confusion in respect of the goods covered by the mark applied for, which were regarded as identical or similar to the goods covered by the earlier mark.
58 The applicant disputes the existence of a likelihood of confusion. It submits that, despite the goods in question being identical, a likelihood of confusion should be ruled out since, even where consumers have a low level of attention, they clearly perceive the differences between the marks at issue. Owing to the low degree of distinctiveness of the marks, slight differences are sufficient for the overall impression produced by the signs to be different. The applicant submits that, in order to assess the similarity of marks, the consumer perceives a mark as a whole and does not analyse its various details and that, in view of the overall impression of the marks at issue, they are different.
59 It must be noted that, by those arguments, the applicant again disputes the similarity between the signs at issue and, more specifically, their overall similarity.
60 In so far as, by those arguments, the applicant complains that the Board of Appeal did not take into account the overall impression produced by the signs at issue in order to assess the similarity, it is sufficient to note that those arguments have already been rejected in paragraphs 41 to 45 above. Furthermore, it should be noted that the applicant’s arguments disputing that there is a visual and phonetic similarity, and challenging the normal degree of distinctiveness of the earlier mark have also been rejected in paragraphs 34, 47 and 54 above.
61 In so far as those arguments should be interpreted as claiming that, because of the conceptual differences of the signs at issue, they must be regarded as being different overall, it should be noted that those arguments are not such as to call into question the assessment carried out by the Board of Appeal.
62 As regards the assessment of the overall similarity of the signs at issue, the Board of Appeal noted that the conceptual difference between the signs was due only to the presence of a descriptive reference to the origin of the goods, namely the element ‘berlin’, and a reference to the English verb ‘to be’.
63 Thus, it follows that the Board of Appeal took into account not only the visual and phonetic similarities between the signs at issue, but also found that the conceptual difference between the signs does not counteract those similarities. According to settled case-law, the conceptual differences between two conflicting signs may counteract their visual and phonetic similarities, provided that at least one of those signs has a clear and specific meaning for the relevant public, with the result that that public is capable of grasping it immediately (see judgment of 24 September 2019, IAK – Forum International v EUIPO – Schwalb (IAK), T‑497/18, not published, EU:T:2019:689, paragraph 90 and the case-law cited).
64 It must be noted that the applicant does not dispute that the earlier mark has no meaning for the relevant public. Nor does it dispute the Board of Appeal’s assessment that the relevant public would not understand the word ‘edgy’ of the mark applied for, and therefore the applicant does not call into question the fact that that mark has no clear meaning.
65 Accordingly, contrary to what the applicant appears to claim, the Board of Appeal took into account the differences between the signs at issue in order to conclude that they are similar overall.
66 It follows from the foregoing that the applicant’s arguments are not capable of calling into question the Board of Appeal’s conclusion that the signs at issue are similar overall, in particular in view of the striking phonetic coincidence referred to in paragraph 52 above.
67 In addition, the applicant relies on examples taken from the case-law in which the General Court found that there was no likelihood of confusion in the case of short word signs.
68 In that regard, it must be noted that EUIPO is required to decide on the basis of the circumstances of each individual case and it is sufficient to note that the examples cited by the applicant concern marks which differ from the marks at issue and, therefore, are irrelevant.
69 Lastly, the applicant relies on a decision of 6 December 2016 of the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) which rejected the opposition brought by the intervener on the basis of the earlier mark EDJI against registration of the German mark BE EDGY, finding that there was no likelihood of confusion.
70 It must be noted that that national decision does not call into question the legality of the contested decision. It must be borne in mind that the European Union trade mark regime is autonomous and that the legality of decisions of the Boards of Appeal is assessed solely on the basis of Regulation No 207/2009, with the result that EUIPO, or, on appeal, the General Court, is not required to reach the same conclusions as those arrived at by national authorities or courts in similar circumstances (see judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).
71 In any event, as the Board of Appeal noted, that decision is not relevant since the assessment was carried out in relation to the German public and not, as in the present case, in relation to the French public.
72 It follows that the applicant’s arguments do not call into question the Board of Appeal’s conclusion that there is a likelihood of confusion.
73 Consequently, the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected and, therefore, the action must be dismissed in its entirety.
74 Furthermore, it should be noted that the intervener’s second head of claim, requesting the Court to uphold the contested decision, amounts to requesting the dismissal of the action and is thus identical to its first head of claim (see judgment of 6 March 2019, Serenity Pharmaceuticals v EUIPO – Gebro Holding (NOCUVANT), T‑321/18, not published, EU:T:2019:139, paragraph 84 and the case-law cited).
75 As regards the intervener’s third head of claim, requesting the Court to reject the application for registration in respect of the goods referred to in paragraph 8 above, it follows from settled case-law that, in an action before the EU judicature against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of the EU judicature. Accordingly, it is not for the General Court to issue directions to EUIPO. It is for the latter to draw the appropriate inferences from the operative part and grounds of the Court’s judgments (judgments of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20, and of 21 June 2017, GP Joule PV v EUIPO – Green Power Technologies (GPTech), T‑235/16, EU:T:2017:413, paragraph 19 (not published)). Consequently, the intervener’s head of claim requesting that the Court order EUIPO to reject the application for registration is inadmissible.
Costs
76 Under 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.
77 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.
78 As regards the form of order sought by the intervener regarding the costs relating to the proceedings before EUIPO, first, it should be noted that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. The intervener’s claim concerning the costs relating to the proceedings before the Opposition Division, which are not recoverable costs, must therefore be rejected.
79 Furthermore, it is sufficient to note that the costs relating to the proceedings before EUIPO continue to be governed by the contested decision (see, to that effect, judgment of 6 March 2019, NOCUVANT, T‑321/18, not published, EU:T:2019:139, paragraph 87 and the case-law cited). In the present case, in the contested decision, the Board of Appeal adjudicated on the allocation of costs incurred for the purposes of the appeal proceedings, and on the allocation of the costs incurred before the Opposition Division.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders 12seasons GmbH to pay the costs.
Collins | Kreuschitz | Steinfatt |
Delivered in open court in Luxembourg on 20 January 2021.