JUDGMENT OF THE GENERAL COURT (First Chamber)
20 March 2013 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark Caffè KIMBO – Earlier national word mark BIMBO – Relative grounds for refusal – Well-known trade mark within the meaning of Article 6 bis of the Paris Convention – Article 8(1) of Regulation (EC) No 207/2009)
In Case T‑277/12,
Bimbo, SA, established in Barcelona (Spain), represented by J. Carbonell Callicó, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Café do Brasil SpA, established in Melito di Napoli (Italy), represented by M. Mostardini, G. Galimberti and F. Melluci, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 15 May 2012 (Case R 1017/2011-4), relating to opposition proceedings between Bimbo, SA and Café do Brasil SpA,
THE GENERAL COURT (First Chamber),
composed of J. Azizi, President, S. Frimodt Nielsen (Rapporteur) and M. Kancheva, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 25 June 2012,
having regard to the response of OHIM lodged at the Court Registry on 4 October 2012,
having regard to the response of the intervener lodged at the Court Registry on 1 October 2012,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 30 October 2003, the intervener, Café do Brasil SpA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark for which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration was sought fall, inter alia, within Class 30 of the Nice Agreement of 15 June 1957 concerning the international classification of goods and services for the purposes of the registration of marks, as revised and amended, and correspond to the following description: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacles; yeast, baking-powder; salt, mustard; vinegar sauces (condiments); relish; ice’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 45/2004 of 8 November 2004.
5 On 3 February 2005, the applicant, Bimbo, SA, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the Spanish word mark BIMBO, registered under number 291655, applied for on 8 March 1955 and authorised on 4 October 1955, in respect of the goods ‘cereals, milling industry, baking, pastry and starch’ in Class 30, reputation being claimed in Spain in respect of all of those goods, and on the earlier mark BIMBO, well-known in Spain in respect of those same goods.
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(a) and (b) and Article 8(5) of Regulation No 207/2009).
8 On 14 March 2011, the Opposition Division upheld the opposition in respect of part of the goods at issue, namely ‘flour and preparations made from cereals, bread, pastry and confectionery, ices; yeast, baking‑powder’ in Class 30, on the basis of Article 8(1)(b) and Article 8(2)(c) of Regulation No 207/2009.
9 On 12 May 2011, the intervener filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 15 May 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM upheld that appeal in part and annulled the Opposition Division’s decision in so far as it rejected the Community trade mark application in respect of ‘flour, confectionery, ices, yeast and baking-powder’ in Class 30. The Board of Appeal dismissed the appeal as to the remainder and thus confirmed the rejection of the Community trade mark application as regards ‘preparations made from cereals, bread, pastry’.
11 In the contested decision, the Board of Appeal stated as follows:
– first, the earlier Spanish trade mark No 291 655 ‘BIMBO’ must be disregarded since the applicant has not proved the renewal of that registration within the time-limit set by OHIM to substantiate its opposition (contested decision, point 10);
– second, the opposition must be examined on the basis of the earlier unregistered mark ‘BIMBO’, which is well-known in Spain, and that, therefore, the only ground of opposition to be examined is Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(2)(c) of that regulation (point 11);
– third, the well-known character of the unregistered trade mark ‘BIMBO’ has been substantiated in Spain, before the date of filing of the contested Community trade mark application, only in respect of ‘packaged sliced bread’ (points 13 to 23 in reference to the items of evidence summarised on pages 4 and 5 of the Opposition Division’s decision);
– fourth, the ‘preparations made from cereals, bread’ and ‘pastry’ in the trade mark application are identical or similar to the ‘packaged sliced bread’ in respect of which the well-known character of the earlier mark ‘BIMBO’ is established (points 27 and 28);
– fifth, the ‘flour’ and ‘yeast and baking-powder’ in the trade mark application are dissimilar to the applicant’s ‘packaged sliced bread’ since, although the former are important ingredients of bread, they have a different nature, purpose and method of use (point 29);
– sixth, the ‘confectionary’ and ‘ices’ in the trade mark application differ in nature, purpose and method of use from the applicant’s ‘packaged sliced bread’ (points 30 and 31);
– seventh, the signs are similar overall (points 36 to 40);
– eighth, there is a likelihood of confusion in respect of the goods in the trade mark application which are found similar to those for which the well-known character of the earlier mark was established, which has the effect that the opposition must be upheld in respect of ‘preparations made from cereals, bread, pastry’ (point 45);
– ninth, there is no likelihood of confusion in respect of goods which are dissimilar, that is, ‘flour, confectionery, ices, yeast and baking-powder’ (point 46).
Forms of order sought
12 The applicant claims that the Court should:
– alter the contested decision, in accordance with Article 65(3) of Regulation No 207/2009, on account of the infringement of Article 8(1)(b) of that regulation, and of Articles 64, 75 and 76 thereof, refusing the registration of the trade mark applied for in respect of ‘flour and preparations made from cereals, bread, pastry and confectionery, ices; yeast and baking-powder’;
– in the alternative, annul the contested decision;
– order OHIM and the intervener to pay the costs.
13 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 As a preliminary point, it must be observed that the applicant relied before OHIM on two earlier trade marks as a basis for its opposition to the trade mark applied for: the Spanish word mark BIMBO, registered under number 291655, applied for on 8 March 1955 and authorised on 4 October 1955 in respect of the goods ‘cereals, milling industry, baking, pastry and starch’ in Class 30, and the mark BIMBO, well‑known in Spain in respect of those same goods (see paragraph 6 above).
15 However, like the Opposition Division in its decision of 14 March 2011, the Board of Appeal stated in the contested decision, without the applicant contesting that point in the present action, that the opposition based on the earlier Spanish trade mark No 291655 BIMBO had to be rejected, since the applicant had not proved the renewal of that registration within the time-limit set by OHIM and that, therefore, the opposition had to be examined on the basis of the earlier unregistered mark BIMBO, which was well known in Spain (contested decision, points 10 and 11).
16 It is in the light of that mark alone that the present action must be assessed, in support of which the applicant pleads, first, infringement of Articles 64, 75 and 76 of Regulation No 207/2009 and, second, infringement of Article 8(1)(b) of that regulation.
Infringement of Articles 64, 75 and 76 of Regulation No 207/2009
17 Pursuant to Article 64(1) of Regulation No 207/2009:
‘Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.’
18 Article 76 of that regulation also provides:
‘1. In proceedings before it [OHIM] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [OHIM] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
2. [OHIM] may disregard facts or evidence which are not submitted in due time by the parties concerned.’
19 Furthermore, it follows from Article 75 of that regulation that:
‘Decisions of [OHIM] shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments.’
20 According to the applicant, it is not possible to reconsider the two issues which the Opposition Division definitively adjudicated upon in the decision of 14 March 2011. Those issues were not challenged in due time by the intervener. First, it is now accepted that the earlier mark BIMBO is well known in Spain within the meaning of Article 6 bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (‘the Paris Convention’), for the goods ‘cereals, milling industry, baking, pastry and starch’. Secondly, it has been tacitly acknowledged that the abovementioned goods are similar or identical to the goods ‘flour and preparations made from cereals, bread; yeast, baking powder’ in the trade mark application. In ruling on those two issues so as to reach a conclusion which was different from that adopted by the Opposition Division (see paragraph 11 above, third to sixth indents), the Board of Appeal infringed Articles 64, 75 and 76 of Regulation No 207/2009.
The issue of the existence and extent of the well-known mark
21 Since Article 8(2)(c) of Regulation No 207/2009 refers to trade marks which are ‘well-known in a Member State, in the sense in which the words “well-known” are used in Article 6 bis of the Paris Convention’, it is necessary, in order to ascertain how the existence and extent of a well‑known mark can be proved, to refer to the guidelines for the interpretation of Article 6 bis (see, by analogy, Case T-420/03 El Corte Inglés v OHIM – Abril Sánchez and Ricote Saugar (BoomerangTV) [2008] ECR II-837, paragraph 79).
22 Under Article 2 of the joint recommendation concerning the provisions on the protection of well-known trademarks, adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organisation (WIPO) at the 34th series of meetings of the assemblies of the Member States of the WIPO (of 20 to 29 September 1999), in determining whether a mark is a well-known mark within the meaning of the Paris Convention, the competent authority can take into account any circumstances from which it may be inferred that the mark is well known, including: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of any use of the mark; the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent to which they reflect use or recognition of the mark; the record of successful enforcement of rights in the mark, in particular, the extent to which the mark has been recognised as well known by competent authorities; the value associated with the mark (see, to that effect and by analogy, BoomerangTV, paragraph 21 above, paragraph 80).
23 Likewise, pursuant to Article 4 of that recommendation, a mark is to be deemed to be in conflict with a well-known mark where that mark, or an essential part thereof, constitutes a reproduction, an imitation, a translation, or a transliteration, liable to create confusion, of the well‑known mark, and is used, is the subject of an application for registration, or is registered, in respect of goods and/or services which are identical or similar to the goods and/or services to which the well-known mark applies.
24 In addition, it is apparent from Rule 16(2) and (3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), as applicable to the facts, that, if the opposition is based on a well-known mark, the notice of opposition must in principle be accompanied by evidence attesting that it is well-known; that evidence may be submitted later within a period specified by OHIM.
25 It is apparent from those provisions that the protection conferred on the earlier well-known mark, on which the applicant relies, applies in respect of all the goods or services for which the mark has been recognised to be well known by the competent authorities, having regard to the circumstances and, in particular, to the various items of evidence attesting that the mark is well known which may be submitted by the applicant.
26 Moreover, in proceedings concerning relative grounds for refusal, the very wording of Article 76(1), in fine, of Regulation No 207/2009, requires that the examination carried out by OHIM be restricted to the facts, evidence and arguments provided by the parties and the relief sought. Thus the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the relative grounds for refusal which the party concerned has relied on and the related facts and evidence the parties have presented (see, by analogy, Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraph 28 and the case-law cited). The criteria for applying a relative ground for refusal or any other provision relied on in support of the claims made by the parties are naturally part of the matters of law submitted for examination by OHIM. It should be borne in mind in this regard that a matter of law may have to be ruled on by OHIM even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of Regulation No 207/2009 in the light of the facts, evidence and arguments provided by the parties and the relief sought. Thus the matters of law put forward before the Board of Appeal also include any question of law which must necessarily be examined for the purpose of assessing the facts, evidence and arguments provided by the parties and for the purpose of allowing or dismissing the claims, even if the parties have not put forward a view on that question and even if OHIM has omitted to rule on that aspect (see, by analogy, Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) ECR II-287, paragraph 21).
27 In the present case, it can be seen from the file that, following the notice of opposition, OHIM informed the applicant on 8 March 2005 that it had a certain period within which to set out the facts, evidence and observations submitted in support of the opposition, together with supporting documents. In that regard, OHIM stated to the applicant, inter alia, that it fell to it to prove the existence and the extent of the protection conferred by the trade marks relied upon. So far as concerns the well-known mark, OHIM informed the applicant that it was a matter for it to prove for what goods and/or services that mark was well known.
28 In response, on 7 October 2005 the applicant provided a series of items of evidence which, while they primarily concerned the earlier Spanish mark, were also impliedly put forward in respect of the well-known mark. In several places in its reply, the applicant thus referred to ‘earlier marks’ and not only to the earlier Spanish mark.
29 In its observations on the opposition, the intervener also criticised, under the pretext of challenging the reputation relied upon by the applicant for the earlier Spanish mark under Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009), the various items of evidence provided in that regard. Specifically, the intervener submitted that it was apparent from that evidence that the Spanish consumer appeared to know the BIMBO mark only for its association with ‘packaged sliced bread’. Such evidence may equally be relied upon to establish reputation within the meaning of the aforementioned provision, as to establish the well-known character of the mark at issue under Article 8(2)(c) of Regulation No 40/94 (now Article 8(2)(c) of Regulation No 207/2009).
30 On 14 March 2011, the Opposition Division found that that evidence proved that the unregistered mark BIMBO was well known within the meaning of Article 6 bis of the Paris Convention for ‘packaged sliced bread’. On the basis of that finding the Opposition Division concluded that that mark was well known in Spain so far as concerns the following goods: ‘cereals, milling industry, baking, pastry and starch’ (see the Opposition Division’s decision, page 5, first and sixth paragraphs). Therefore, the Opposition Division upheld the opposition with regard to the ‘flour and preparations made from cereals, bread, pastry and confectionery, ices; yeast, baking powder’ in the trade mark application.
31 In its appeal before the Board of Appeal, the intervener requested that the opposition be rejected in respect of all of the abovementioned goods. While the intervener’s arguments relating to the absence of a likelihood of confusion did indeed concern those goods, the intervener referred here however only to the applicant’s Spanish trade mark, which OHIM did not take into account, and not to its well-known mark.
32 In its observations on the appeal, the applicant pointed out that the intervener did not criticise the assessments made by the Opposition Division in relation to the existence of the well-known mark BIMBO and its scope in terms of goods. According to the applicant, no party to that appeal challenged those points. They could not, therefore, in its opinion, be modified by the Board of Appeal.
33 It is apparent from the foregoing that, while the intervener’s appeal before the Board of Appeal did not in fact address the issue of the existence and extent of the well-known mark – as the applicant submitted during the proceedings –, it nevertheless cannot be inferred from that silence that the intervener acknowledged that that mark was well known in Spain so far as concerns ‘cereals, milling industry, baking, pastry and starch’ in Class 30. The onus is on the applicant to establish the existence and extent of the well-known mark put forward in support of the opposition. Such a demonstration is thus based on the examination by the Opposition Division and, if necessary, by the Board of Appeal of the evidence provided in that respect by the applicant in response to the request to this effect made by OHIM under Rule 16(2) and (3) of Regulation No 2868/95.
34 To meet the stipulations of Article 64(1) of Regulation No 207/2009, the Board of Appeal could thus exercise powers within the competence of the Opposition Division and decide on the appeal, ruling as it did in points 13 to 23 of the contested decision on the existence and the extent of the applicant’s well-known mark, in the light of the circumstances and, inter alia, of the various items of evidence produced by the applicant attesting to the fact that that mark was well known.
35 In any event, even had the intervener expressly recognised the extent of the earlier well-known mark claimed by the applicant and upheld by the Opposition Division, which it did not do, that fact did not place the Board of Appeal under an obligation to hold that the existence and the extent of that right had been proved. Article 8 of Regulation No 207/2009 provides, essentially, that a relative ground for refusal of registration of a Community trade mark exists only if there is a conflict between the Community trade mark for which registration is sought and another earlier mark. Under the case-law, it is for OHIM to ascertain, on the basis of evidence which it is up to the opponent to produce, the existence and the scope of the marks relied on in support of the opposition. The issues of the existence and the scope of an earlier mark are thus not factors which can be left to the free assessment of the parties. Consequently, the argument that the applicant derives from the intervener’s alleged agreement as regards the scope of the earlier mark in question must be rejected (see, to that effect and by analogy, BoomerangTV, paragraph 21 above, paragraph 77 and the case-law cited).
36 Moreover, the evidence submitted by the applicant to establish the well‑known character of the earlier marks, specifically with regard to the extent to which they were well known, had been criticised by the intervener at the initial stage of the proceedings, before the Opposition Division (see paragraph 29 above). That issue had thus indeed been raised by the applicant before OHIM.
37 In the present case, OHIM could therefore decide on the opposition without even having to raise of its own motion the issue of the existence and the extent of the applicant’s well known mark.
The tacit recognition of the similarity between certain goods
38 Article 64(1) of Regulation No 207/2009 provides that, following the examination as to the merits of the appeal, the Board of Appeal is to decide on it and that, 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, in the present case, itself decide on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or reversing the contested decision. It follows from that provision that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (Case T‑504/09 Völkl v OHIM – Marker Völkl (VÖLKL) [2011] ECR II-0000, paragraph 53).
39 Where an appeal before the Board of Appeal concerns only part of the goods or services covered by an application for registration or by the opposition, that appeal entitles the Board of Appeal to carry out a new examination of the substance of the opposition, but only so far as concerns those goods or services, since the application for registration and the opposition were not brought before it as regards the other goods or services covered (VÖLKL, paragraph 38 above, paragraph 54).
40 In that regard, where it is based on Article 8(1)(b) of Regulation No 207/2009, opposition to the registration of a Community trade mark requires OHIM to adjudicate on whether the goods and services covered by the conflicting marks are similar or identical. That is also the case even where OHIM, or one of the parties to the proceedings, considers it unnecessary to examine whether the goods or services in question are identical or similar because of the considerable differences between the marks, which, in any event, rule out a likelihood of confusion. Next, the fact that, in the present case, the applicant or the intervener agreed in the proceedings before the Opposition Division that the goods covered by the marks could potentially be identical did not in any way divest OHIM of the power to adjudicate on whether the goods covered by those marks were similar or identical. Likewise, therefore, that fact has not deprived the other party to the proceedings of the right to challenge, within the limits of the factual and legal context of the dispute before the Board of Appeal, the findings of that body on this point (see, to that effect and by analogy, Case T‑172/05 Armacell v OHIM – nmc (ARMAFOAM) [2006] ECR II-4061, paragraphs 41 and 42).
41 In the present case, the intervener brought an appeal before the Board of Appeal to request it to reject the opposition in respect of all the goods for which the Opposition Division had upheld that opposition, namely ‘flour and preparations made from cereals, bread, pastry and confectionery, ices; yeast, baking-powder’.
42 Consequently, contrary to what the applicant claims, the Board of Appeal did not exceed the limits of its jurisdiction, as defined in Article 64(1) of Regulation No 207/2009, when it carried out a new, full examination of the merits of the opposition, in terms of both law and fact, so far as concerns the comparison of the abovementioned goods, including in particular the ‘flour, yeast and baking powder’ covered by the mark applied for, with the goods protected by the well-known mark on which the opposition was based.
Conclusion
43 It follows from the foregoing that the Board of Appeal did not infringe Article 64(1) or Article 76(1) and (2) of Regulation No 207/2009 in examining the items of evidence provided by the applicant to substantiate the existence and extent of the well-known trade mark relied upon as the basis of the opposition and in subsequently making a comparison of the goods, having regard to all the goods in respect of which the opposition had initially been upheld.
44 Moreover, the examination of the contested decision shows that the Board of Appeal set out there, in points 13 to 23, the grounds on which it considered, in the light of the various items of evidence provided by the applicant, the well-known character of the earlier mark to have been demonstrated only for ‘packaged sliced bread’ and, in points 25 to 31, the grounds on which it considered, on account of their intrinsic characteristics, that the various goods examined were identical (comparison of ‘packaged sliced bread’ and ‘preparations made from cereals and bread’), similar (comparison of ‘packaged sliced bread’ and ‘pastry’) or different (comparison of ‘packaged sliced bread’ and ‘flour’, ‘yeast and baking powder’, ‘confectionary’ and ‘ices’).
45 Sufficient reasons, as required by the first sentence of Article 75 of Regulation No 207/2009, are therefore given for the contested decision. In respect of the obligation provided for by the second sentence of Article 75 of the regulation, pursuant to which OHIM decisions are to be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments, it must be observed that, although this right to be heard covers all the matters of fact or of law and the evidence which form the basis for the decision, it does not apply to the final position which the administration intends to adopt (see Case T-273/02 Krüger v OHIM – Calpis (CALPICO) [2005] ECR II-1271, paragraphs 64 and 65, and the case-law cited).
46 That is true a fortiori in the present case because the evidence taken into consideration by the Board of Appeal was known by the applicant, since it was produced and commented on by it during the proceedings before OHIM, or it consisted of deductions made from practical experience which can presumed to be known by everyone. Such deductions belong within the category of well-known facts, the accuracy of which OHIM is not required to prove (see, to that effect, Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraphs 50 and 51).
47 Consequently, the first plea, relating to the infringement of Articles 64, 75 and 76 of Regulation No 207/2009, must be rejected.
Infringement of Article 8(1)(b) of Regulation No 207/2009
48 In accordance with 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, an 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.
49 In that regard, for the purposes of the application of Article 8(1)(b) of Regulation No 207/2009, it is apparent from Article 8(2)(c) of that regulation that the concept of ‘earlier mark’ includes a mark which, on the date of application for registration of the Community trade mark, is well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6 bis of the Paris Convention.
50 Pursuant to Article 6 bis (1) of the Paris Convention:
‘The countries of the Union [for the Protection of Industrial Property] undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trade mark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.’
51 According to settled case-law, the risk that the public might 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 that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
52 In the contested decision, the Board decided to uphold the appeal in part after reasoning as follows. First of all, OHIM found that the opposition should be examined only in the light of the earlier unregistered mark, BIMBO, which was well known in Spain before the date on which the disputed Community trade mark application was filed only in respect of ‘packaged sliced bread’ (points 13 to 23 of the contested decision, referring to the evidence summarised on pages 4 and 5 of the Opposition Division’s decision). Therefore, OHIM stated that the likelihood of confusion should be assessed by reference to the average Spanish consumer (point 24 of the contested decision). Subsequently, OHIM concluded that the ‘preparations made from cereals, bread’ and ‘pastry’ in the trade mark application were identical or similar to the ‘packaged sliced bread’ in respect of which the well-known character of the earlier mark ‘BIMBO’ was established (points 27 and 28); that the ‘flour’, ‘yeast and baking‑powder’ in the trade mark application were dissimilar to the applicant’s ‘packaged sliced bread’ since, essentially, even if the former are important ingredients of bread, they have a different nature, purpose and method of use (point 29); and that the ‘confectionary’ and ‘ices’ in the trade mark application differed in nature, purpose and method of use from the applicant’s ‘packaged sliced bread’ (points 30 and 31). OHIM also considered that the signs were similar overall (points 36 to 40). As a result, in terms of the overall assessment of the likelihood of confusion, OHIM decided, first, that there was a likelihood of confusion in respect of the goods covered by the trade mark application which were found similar to goods for which the well-known character of the earlier mark was established; as a consequence the opposition had to be upheld in respect of ‘preparations made from cereals, bread and pastry’ (point 45), and, second, that there was no likelihood of confusion in respect of goods which were dissimilar, that is, ‘flour, confectionery, ices, yeast and baking-powder’ (point 46).
53 As a preliminary point, it must be recalled that, in point 23 of the contested decision, the Board of Appeal held that the well-known character of the earlier mark relied on by the applicant was demonstrated only in respect of goods relating to ‘packaged sliced bread’, the only goods in respect of which the Board considered it appropriate to carry out a comparison of goods in order to assess whether there was a likelihood of confusion.
54 It is apparent, in that regard, that the applicant is not calling into question the factual accuracy of that assessment, merely asserting in this connection that the extent of that mark should not have been examined by the Board of Appeal in connection with the applicant’s arguments relating to the first plea, which have been rejected as unfounded by the Court. It must therefore be stated that the applicant does not advance any argument such as to substantiate its claim, put forward as the principal part of this plea, that the comparison of the goods should have been made in the light of other goods supposedly covered by the earlier well-known mark.
55 OHIM cannot therefore be criticised in the present case for having compared the goods in respect of which the opposition had initially been upheld – namely the ‘flour and preparations made from cereals, bread, pastry and confectionery, ices; yeast, baking powder’ in the trade mark application – with the goods relating to the ‘packaged sliced bread’ in respect of which it was demonstrated that the applicant’s earlier mark is well known.
56 That suffices for the Court to reject as unfounded the main line of argument submitted by the applicant in the context of this plea, which claimed – referring to this effect to the reasoning set out in the Opposition Division’s decision – that there was a ‘clear similarity’, which went beyond a likelihood of confusion, between all the goods in the list of goods covered by the Spanish well-known mark, namely ‘cereals, milling industry, baking, pastry and starch’, and those goods in the list of the goods in the trade mark application which the Board of Appeal had accepted might be registered, that is to say, ‘flour, confectionery, ices, yeast and baking-powder’.
57 As regards the applicant’s ancillary line of argument, according to which – even if the scope of the well-known mark is restricted to ‘packaged sliced bread’ – the assessment, made in the contested decision by the Board of Appeal, of the comparison of the goods is flawed because the goods in respect of which the opposition was not upheld by the Board – essentially, ‘flour, confectionery, ices, yeast and baking-powder’ – are ‘strongly’ similar to ‘packaged sliced bread’, it is clear that here the applicant is merely contradicting the assessments to the contrary made on this issue in points 29 to 31 of the contested decision without, however, adducing any evidence capable of substantiating its contention or calling in question the findings made by OHIM in the contested decision.
58 In the opinion of the Court, the reasons set out in points 29 to 31 of the contested decision prove to the required legal standard on what ground it may be concluded that there is a difference between, on one hand, ‘flour, confectionery, ices, yeast and baking-powder’ and, on the other hand, ‘packaged sliced bread’. In any event, those goods are not ‘strongly similar’, as the applicant claims at point 45 of the application.
59 In conclusion, it is apparent from the foregoing that, contrary to the applicant’s contention, the Board of Appeal did not infringe Article 8(1)(b) of Regulation No 207/2009 in holding, on the basis of an overall assessment of the likelihood of confusion several aspects of which are not disputed by the applicant and for the reasons correctly set out in points 13 to 47 of the contested decision, that the Opposition Division’s decision should be annulled in part in so far as the opposition had initially been upheld for ‘flour, confectionery, ices, yeast and baking-powder’.
60 Consequently, the second plea, relating to infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected, as a result of which the action in its entirety must be dismissed.
Costs
61 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
62 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought to that effect by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Bimbo, SA, to pay the costs.
Azizi | Frimodt Nielsen | Kancheva |
Delivered in open court in Luxembourg on 20 March 2013.
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