JUDGMENT OF THE GENERAL COURT (Second Chamber)
13 September 2023 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark PROLACTAL – Earlier national figurative mark Prolàctea – Relative ground for refusal – Similarity of the signs – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Evidence submitted for the first time before the Board of Appeal – Article 27(4) of Delegated Regulation (EU) 2018/625 – Obligation to state reasons – Article 94 of Regulation 2017/1001 and Article 41(2) of the Charter of Fundamental Rights)
In Case T‑549/22,
Prolactal GmbH, established in Hartberg (Austria), represented by H. Roerdink and S. Janssen, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Prolàctea, SA, established in Castrogonzalo (Spain), represented by J. Vicente Martínez, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, V. Tomljenović and R. Norkus (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action based on Article 263 TFEU, the applicant, Prolactal GmbH, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 June 2022 (Case R 752/2021-5) (‘the contested decision’).
Background to the dispute
2 On 10 April 2019, EUIPO was notified of the designation of the European Union for international registration No 1475897 filed by the applicant with priority of Austrian trade mark AM 20515/2019 filed on 22 March 2019 for the word mark PROLACTAL.
3 The mark applied for designated goods and services contained in Classes 5, 29 to 33, 35 and 39 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 corresponding, for each of those classes, to the following description:
– Class 5: ‘Infant formula’;
– Class 29: ‘Milk; margarine; meats; meat extracts; fruit, preserved; frozen fruits; dried fruit; cooked fruits; vegetables, preserved; frozen vegetables; vegetables, dried; vegetables, cooked; eggs; milk products; fish, not live; game, not live; jellies for food; jams; compotes; powdered milk; cheese; butter; edible oils and fats; poultry’;
– Class 30: ‘Non-medicated confectionery candy; honey; spices; ice for refreshment; coffee; tea; cocoa; sugar; rice; sago; artificial coffee; golden syrup; yeast; baking powder; salt; mustard; vinegar; flour; cereal preparations; bread; edible ices; pastries; flour confectionery; rice, tapioca; sauces [condiments]’;
– Class 31: ‘Live animals; fresh fruits and vegetables; agricultural and aquacultural crops, horticulture and forestry products; sowing seeds; seeds for planting; natural plants; flowers; animal foodstuffs; malt’;
– Class 32: ‘Beer; mineral and aerated waters; non-alcoholic beverages; fruit drinks; juices; syrups and other non-alcoholic preparations for making beverages’;
– Class 33: ‘Alcoholic beverages (except beer)’;
– Class 35: ‘Advertising; business management; business administration; clerical services; import-export agency services’;
– Class 39: ‘Packaging and storage of goods; arranging of transportation for travel tours; transportation and storage’.
4 On 11 November 2019, the intervener, Prolàctea, SA, filed a notice of opposition to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
5 The opposition was based on the earlier Spanish mark reproduced below, covering goods contained in Classes 5 and 29 and corresponding, for each of those classes, to the following description:
– Class 5: ‘Serums; antitoxic serums; milk ferments for pharmaceutical purposes; foodstuffs and dietetic substances for medical or veterinary purposes; food for babies; dietary supplements for humans and animals’;
– Class 29: ‘Milk; whey; buttermilk; dry whey; milk products; dairy puddings; chilled dairy desserts; whiteners [dairy] for beverages; dairy-based dips; desserts made from milk products; dairy spreads; powdered cream; non-dairy creamer; milk ferments for culinary purposes; artificial cream (dairy product substitutes); drinks made from dairy products; coffee whiteners consisting principally of dairy products’;
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of 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).
7 On 25 February 2021, the Opposition Division partially upheld the opposition on the ground that there was a likelihood of confusion in respect of the following goods:
– Class 5: ‘Infant formula’;
– Class 29: ‘Milk; margarine; milk products; powdered milk; cheese; butter; edible oils and fats’;
– Class 30: ‘Non-medicated confectionery candy; coffee; tea; cocoa; artificial coffee; edible ices; flour confectionery’;
– Class 31: ‘Animal foodstuffs’;
– Class 32: ‘Non-alcoholic beverages; fruit drinks; juices’.
8 On 23 April 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion on the part of the relevant public in respect of all the goods at issue. First, it observed that the goods at issue were either identical or similar to varying degrees. Secondly, it took the view that the relevant territory for the assessment of the likelihood of confusion was Spain and that the relevant public consisted of the general public and professionals, whose level of attention was average except with regard to the goods at issue in Class 5, in respect of which the relevant public will display a higher-than-average level of attention. Thirdly, the Board of Appeal took the view that the signs at issue were visually similar at least to a slightly lower-than-average degree and phonetically similar to an above-average degree. Likewise, they evoked very similar concepts. Fourthly, it took the view that the earlier mark’s distinctiveness was slightly below average. Lastly, the Board of Appeal took the view that the applicant had failed to establish the coexistence on the Spanish market of the two marks in question or, in any case, that the alleged coexistence was based on the absence of a likelihood of confusion and that it was peaceful.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant relies on six pleas in law: The first plea alleges infringement of Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), on the ground that EUIPO erred in concluding that the evidence submitted for the first time at the appeal stage was to be considered new and was therefore inadmissible.
14 The second and fifth pleas, which it is appropriate to examine together, allege infringement of the principles of the protection of legitimate expectations and legal certainty on the ground, first, that the decision of the Board of Appeal to reject as inadmissible the requests for proof of use filed by the applicant is not proportional to the consequences of that decision for the applicant and, secondly, that the standard of proof as regards the coexistence of the marks at issue imposed by the Board of Appeal goes beyond what could be expected of the applicant.
15 The third plea alleges infringement of Article 7(1)(c) of Regulation 2017/1001.
16 The fourth plea alleges infringement of Article 94 of Regulation 2017/1001 and Article 41(2) of the Charter of Fundamental Rights of the European Union.
17 Lastly, the sixth plea alleges infringement of the relevant case-law with regard to the global assessment of the likelihood of conclusion on the ground that the Board of Appeal failed to take all the circumstances of the case into account.
The first plea, alleging infringement of Article 27(4) of Delegated Regulation 2018/625
18 By its first plea, the applicant submits, in essence, that the Board of Appeal infringed the provisions of Article 27(4) of Delegated Regulation 2018/625 by rejecting the evidence referred to in paragraphs 36 and 37 of the contested decision as inadmissible on the ground that it had been submitted for the first time before it and did not satisfy the requirements of Article 95(2) of Regulation 2017/1001. That evidence concerned the use of the applicant’s mark PROLACTAL on the Spanish market and the coexistence of that mark with the intervener’s mark on that market.
19 Although the applicant admits that it submitted the documents in question for the first time before the Board of Appeal, it disputes that they are new documents and submits that the Board of Appeal erred in taking the view that it did not file any documentary evidence before the Opposition Division. In that regard, the applicant submits, in essence, that, in its observations made before the Opposition Division to support its claim as to the coexistence of the marks at issue, it referred to its registered firm name in Austria and to the Austrian mark registered under the reference AT 121968. In the applicant’s view, those documents are ‘easily accessible for anyone in the relevant public registers’.
20 In addition, the applicant submits that the Board of Appeal incorrectly took the view that the applicant had not given any explanation for the late submission of the evidence in question. In the applicant’s view, it explained in its reply lodged before the Board of Appeal that the documents in question ‘[were] merely supplementing relevant facts and evidence which [had] already been submitted in due time’.
21 EUIPO and the intervener dispute the applicant’s arguments.
22 In addition, EUIPO submits that Annexes A 11 and A 12 of the application, comprising, respectively, an extract from the Austrian register of companies showing the applicant’s registration as a company governed by Austria law and an extract from the Austrian Trademark Register showing the registration of the figurative mark PROLACTAL under the reference AT 121968, are inadmissible because they have been submitted for the first time before the Court.
23 Article 95(2) of Regulation 2017/1001 provides that EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’.
24 It follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation 2017/1001 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 77 and the case-law cited, and of 2 June 2021, Franz Schröder v EUIPO – RDS Design (MONTANA), T‑854/19, EU:T:2021:309, paragraph 24 and the case-law cited).
25 However, it is equally apparent from that wording that a party has no unconditional right to have facts and evidence which were invoked or submitted out of time taken into account by EUIPO. In stating that EUIPO ‘may’ decide to disregard such evidence, Article 95(2) of Regulation 2017/1001 grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take it into account (see judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 78 and the case-law cited, and of 2 June 2021, MONTANA, T‑854/19, EU:T:2021:309, paragraph 25 and the case-law cited).
26 Consequently, the taking into account of that additional evidence is in no way a ‘favour’ granted to one party or the other, but rather must result from an objective, reasoned exercise of the discretion conferred on EUIPO by Article 95(2) of Regulation 2017/1001 (see judgment of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraph 58 and the case-law cited).
27 However, the exercise of EUIPO’s discretionary power provided for in Article 95(2) of Regulation 2017/1001 is circumscribed by Article 27(4) of Delegated Regulation 2018/625, which states:
‘In accordance with Article 95(2) of Regulation [2017/1001], the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:
(a) they are, on the face of it, likely to be relevant for the outcome of the case; and
(b) they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’
28 In addition, it must be observed that it is for the party submitting facts and evidence for the first time before the Board of Appeal to explain before it to what extent that submission satisfies the conditions laid down in Article 27(4) of Delegated Regulation 2018/625 (judgment of 6 October 2021, Kondyterska korporatsiia ‘Roshen’ v EUIPO – Krasnyj Octyabr (Representation of a lobster), T‑254/20, not published, EU:T:2021:650, paragraph 57).
29 It is appropriate to examine whether the Board of Appeal, in the exercise of its discretionary power, complied with the cumulative conditions laid down in Article 27(4) of Delegated Regulation 2018/625.
30 As regards the assessment of the condition relating to the existence of valid reasons for the late submission of evidence, laid down in Article 27(4)(b) of Delegated Regulation 2018/625, the Board of Appeal noted, in paragraph 50 of the contested decision, that the applicant had not given any explanation as to the obstacles which would have prevented the submission of such evidence before the Opposition Division and considered, in that regard, that such submission would have been possible in view of the dates and the nature of the documents. The Board of Appeal also noted, in paragraph 44 of the contested decision, that the evidence submitted by the applicant for the first time before it could not be regarded as supplementing evidence submitted before the Opposition Division, since the applicant had not submitted any documentary evidence before the Opposition Division to support its claims that the mark applied for coexisted in Spain with the intervener’s marks.
31 As regards the assessment of the supplementary nature of evidence submitted out of time, which is also provided for in Article 27(4)(b) of Delegated Regulation 2018/625, it should be noted that, according to the case-law, supplementary evidence is that characterised by a link with other evidence which has previously been submitted in due time and which supplements that evidence (see, to that effect, judgments of 14 May 2019, Guiral Broto v EUIPO – Gastro & Soul (Café del Sol and CAFE DEL SOL), T‑89/18 and T‑90/18, not published, EU:T:2019:331, paragraph 42, and of 9 September 2020, Kludi v EUIPO – Adlon Brand (ADLON), T‑144/19, not published, EU:T:2020:404, paragraph 56).
32 In the present case, although it is true that the applicant argued before the Opposition Division that the marks at issue coexisted on Spanish territory, it did not, however, submit any evidence in support of that claim, as the applicant itself admits. In those circumstances, the Board of Appeal was fully entitled to find that the evidence submitted for the first time before it did not constitute supplementary evidence for the purposes of Article 27(4)(b) of Delegated Regulation 2018/625.
33 Furthermore, contrary to what the applicant claims, the fact that it stated that the evidence submitted before the Board of Appeal ‘[was] merely supplementing relevant facts and evidence which [had] already been submitted in due time’ is not such as to justify its late submission. Such a statement does not enable the Board of Appeal to know, for the purpose of exercising its discretionary power, the reasons why the applicant had not been in a position to submit that evidence in due time.
34 In addition, it is also necessary to reject the applicant’s argument that the evidence submitted for the first time before the Board of Appeal was intended to respond to the Opposition Division’s findings that ‘formal coexistence in national or [EU] registries of certain marks [was] not per se particularly relevant’. Responding to the applicant’s argument that its Austrian mark PROLACTAL coexisted with the intervener’s earlier Spanish mark, the Opposition Division indeed emphasised that it was necessary to prove the coexistence of those marks on the market. However, the evidence submitted before the Board of Appeal was not only not supplementary evidence, as stated in paragraph 32 above, but was also not intended to ‘contest findings made or examined by the first instance of its own motion in the decision subject to appeal’ within the meaning of Article 27(4)(b) of Delegated Regulation 2018/625.
35 It follows that the condition laid down in Article 27(4)(b) of Delegated Regulation 2018/625 can be regarded as not having been satisfied and that the Board of Appeal was therefore correct to reject the evidence submitted for the first time before it.
36 Accordingly, the first plea must be rejected as unfounded, without it being necessary to examine the admissibility of Annexes A 11 and A 12 to the application.
The second and fifth pleas, alleging infringement of the principles of the protection of legitimate expectations and legal certainty
37 The principle of legal certainty requires that legislation be clear and precise and that its application be foreseeable for all interested parties (judgment of 16 June 1993, France v Commission, C‑325/91, EU:C:1993:245, paragraph 26).
38 The corollary of that principle is the principle of the protection of legitimate expectations, which extends to any individual in a situation where it is clear that the EU administration has, by giving him or her precise, unconditional and concordant assurances, emanating from authorised and reliable sources, led him or her to entertain justified hopes. However, such assurances must comply with the applicable provisions and rules, since promises which do not take account of those provisions cannot give rise to a legitimate expectation on the part of the person concerned (see, to that effect, judgment of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 64 and the case-law cited).
39 In the first place, the applicant submits, in essence, that the Board of Appeal infringed the principles of the protection of legitimate expectations and legal certainty by rejecting its requests for proof of use.
40 EUIPO and the intervener dispute the applicant’s arguments.
41 It must be noted that Article 47(2) of Regulation 2017/1001 provides that, if the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition is to furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which he or she cites as justification for his or her opposition, or that there are proper reasons for non-use, provided that the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition is to be rejected. If the earlier EU trade mark has been used in relation to only part of the goods or services for which it is registered it is, for the purposes of the examination of the opposition, to be deemed to be registered in respect only of that part of the goods or services. Paragraph 3 of that article provides that those rules are also to apply to earlier national trade marks, by substituting use in the Member State in which the earlier national trade mark is protected for use in the European Union.
42 Article 10(1) of Delegated Regulation 2018/625 provides that a request for proof of use of an earlier mark pursuant to Article 47(2) or (3) of Regulation (EU) 2017/1001 is to be admissible if it is submitted as an unconditional request in a separate document within the period specified by EUIPO pursuant to Article 8(2) of that delegated regulation.
43 Furthermore, the Court has held, in a case concerning invalidity proceedings, that a request for proof of use made in a pleading, and not as an unconditional request in a separate document, in accordance with Article 19(2) of Delegated Regulation 2018/625, was to be considered inadmissible. Article 10(1) of that delegated regulation and Article 19(2) thereof both concern the submission of a request for proof of use, the former in the context of opposition proceedings and the latter in the context of invalidity proceedings. It must be observed that those provisions impose the same requirement as regards the submission of such a request, namely that that request be submitted as an unconditional request in a separate document. It should therefore be concluded that the requirements of those provisions may be interpreted in the same way (see order of 8 November 2022, Grupa ‘Lew’ v EUIPO – Lechwerke (GRUPALEW.), T‑672/21, not published, EU:T:2022:705, paragraph 48 and the case-law cited).
44 In the present case, the applicant submitted several requests for proof of use of the earlier mark before the Opposition Division. However, as is apparent from paragraphs 27 to 33 of the contested decision and as the applicant admits in the application, although the first request was filed within the time limit, it was not submitted in a separate document, but rather as part of its observations of 18 August 2020 in reply to the opposition. The subsequent requests were submitted after 18 August 2020, the date on which the time limit expired.
45 In the applicant’s view, it should have been granted a period of time to correct the formal deficiency consisting in the failure to submit the request in a separate document.
46 In that regard, it should be noted that the formal requirement concerning the submission of requests for proof of use in a separate document is intended to ensure the adversarial nature of proceedings and to enable the adjudicating bodies of EUIPO to have available all the information necessary in order for them to be in a position to assess those requests.
47 Furthermore, the existence of a time limit, like the strict application of procedural rules, serves the requirements of legal certainty and the need to ensure a balance between the rights and obligations of the parties to the proceedings.
48 In the light of all the foregoing, it must be held that the Board of Appeal did not err in rejecting the requests for proof of use of the earlier mark as inadmissible.
49 In the second place, the applicant submits, in essence, that the Board of Appeal infringed the principles of the protection of legitimate expectations and legal certainty by taking the view, in paragraphs 116 and 117 of the contested decision, that the coexistence of two marks had to be based on the absence of a likelihood of confusion on the part of the relevant public. In the applicant’s view, it is disproportionately difficult, if not impossible, to prove a peaceful coexistence between trade marks based on the absence of a likelihood of confusion of those marks.
50 EUIPO and the intervener dispute the applicant’s arguments.
51 It should be borne in mind that the possibility cannot be entirely precluded that, in certain cases, the coexistence of earlier marks on the market might potentially eliminate the likelihood of confusion between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds of refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 2 October 2013, Cartoon Network v OHIM – Boomerang TV (BOOMERANG), T‑285/12, not published, EU:T:2013:520, paragraph 55 and the case-law cited).
52 It is clear from that case-law that the applicant, contrary to what it submits, was required to demonstrate that the coexistence of the marks on which it relied was based on the absence of a likelihood of confusion on the part of the relevant public.
53 It was therefore without infringing the principle of legal certainty that the Board of Appeal, relying on settled case-law of the Court, noted in paragraphs 116 and 117 of the contested decision the conditions that must be satisfied in order for the coexistence of marks to contribute to diminishing the likelihood of confusion on the part of the relevant public.
54 The applicant’s claim that it is disproportionate, if not impossible, to prove a peaceful coexistence between trade marks based on the absence of a likelihood of confusion of those marks must be rejected from the outset.
55 Although it is undoubtedly for the proprietor of the contested trade mark to demonstrate during the proceedings before EUIPO concerning relative grounds for refusal that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the mark upon which the proprietor relies and the earlier mark on which the application for annulment is based, it is open to such a proprietor to advance a body of evidence to that effect. In that regard, evidence demonstrating that the relevant public recognised each of the trade marks at issue before the time of filing the application for registration of the contested mark is particularly relevant. In addition, in so far as according to the case-law the coexistence of two trade marks must be sufficiently long to be capable of influencing the perception of the relevant consumers, the duration of the coexistence also constitutes an essential factor. It should also be noted that any argument based on coexistence implies a priori, first, that the earlier trade marks are identical to the trade marks at issue and, secondly, genuine use of the trade mark on which the applicant relies in the relevant territory. Furthermore, in so far as only peaceful coexistence between the trade marks at issue can be taken into account, any dispute between the proprietors of the earlier trade marks prevents a finding of coexistence (see judgment of 30 June 2015, La Rioja Alta v OHIM – Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraphs 80 to 82 and the case-law cited).
56 In the present case, it must be held that the applicant has not succeeded in proving the coexistence of the earlier marks on which it relies, nor has it submitted any evidence of the way in which the relevant public encountered the marks at issue on the market.
57 As regards the alleged infringement of the principle of the protection of legitimate expectations by the Board of Appeal, it is sufficient to note that the applicant does not in any way claim, in its action, to have been given precise assurances from the adjudicating bodies of EUIPO such as to give rise to pardonable confusion on its part.
58 In the light of all the foregoing, the second and fifth pleas should be rejected as unfounded.
The third plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
59 The applicant submits, in essence, that the Board of Appeal should have found that the earlier mark was descriptive for all goods in Classes 5 and 29 and that it was devoid of any distinctive character. Therefore, the Board of Appeal should have rejected the opposition in its entirety.
60 EUIPO and the intervener dispute those arguments of the applicant.
61 As to the question of whether the earlier national mark has distinctive character as regards the goods concerned, it must be noted that it follows from the coexistence of EU trade marks and national trade marks, and from the fact that the registration of the latter does not fall within the sphere of competence of EUIPO, and that judicial review in respect of them does not fall within the jurisdiction of the Court, that in proceedings opposing the registration of an EU trade mark, the validity of national trade marks may not be called into question. It should also be noted that Article 8(2)(a)(ii) of Regulation 2017/1001 expressly provides, in opposition proceedings, for trade marks registered in a Member State to be taken into consideration as earlier trade marks. It follows that, in order to avoid infringing Article 8(1)(b) of Regulation 2017/1001, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of an EU trade mark is based (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraphs 40, 46 and 47).
62 Consequently, the applicant is incorrect to submit that the Board of Appeal should have found that the earlier national mark was descriptive and devoid of distinctive character.
63 The third plea must therefore be rejected as unfounded.
The fourth plea, alleging infringement of Article 94 of Regulation 2017/1001 and Article 41(2) of the Charter of Fundamental Rights
64 The applicant submits, in essence, that the Board of Appeal failed to explain in the contested decision why it had not taken into account its arguments relating to the standard of proof required for the coexistence of the marks and, therefore, infringed Article 94 of Regulation 2017/1001 and Article 41(2) of the Charter of Fundamental Rights.
65 EUIPO and the intervener dispute those arguments of the applicant.
66 It should be recalled that, pursuant to Article 94 of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. That obligation to state reasons has the same scope as that under Article 296 TFEU and Article 41(2)(c) of the Charter of Fundamental Rights, pursuant to which the reasoning of the body which adopted the act in question must be set out clearly and unequivocally. It has two purposes: first, to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and, secondly, to enable the EU Courts to exercise their power to review the legality of the decision. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons for an act meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgment of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 186).
67 Furthermore, the duty to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient to set out the facts and the legal considerations having decisive importance in the context of the decision (see, to that effect, judgment of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 19 and the case-law cited).
68 It is apparent from the contested decision that the Board of Appeal set out clearly and unequivocally the reasons which led it to conclude that the applicant had failed to establish the coexistence on the Spanish market of the two marks in question. First, it noted, in paragraphs 38 to 42 of the contested decision, the applicable provisions and the case-law of the Court of Justice and the General Court on evidence submitted late in proceedings before EUIPO. Secondly, in paragraphs 43 to 53 of the contested decision, the Board of Appeal explained that the evidence submitted by the applicant for the first time at the appeal stage for the purpose of proving the coexistence of the marks was inadmissible. Thirdly, it noted, in paragraphs 116 and 117 of the contested decision, the conditions that must be satisfied in order for the coexistence of two marks possibly to contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public. Fourthly and lastly, in paragraphs 119 and 120 of the contested decision, the Board of Appeal noted that the applicant had failed to establish the coexistence on the Spanish market of the two trade marks in question and stated that, in any case, the applicant had not demonstrated that the alleged coexistence was based on the absence of a likelihood of confusion and that it was peaceful.
69 Therefore, the Board of Appeal set out the legal considerations having decisive importance in the context of the contested decision. The statement of reasons set out by the Board of Appeal in the contested decision enabled the applicant to understand the reasons for it and to bring an action disputing its merits and then enabled the Court to exercise its power of review.
70 Consequently, the fourth plea must be rejected as unfounded.
The sixth plea, alleging infringement of relevant case-law with regard to the global assessment of the likelihood of confusion
71 The applicant submits that the Board of Appeal failed to take into account certain circumstances relevant to the present case for the purposes of the global assessment of the likelihood of confusion, namely:
– that the applicant tried to restore the situation that it was in two years before the date of filing the application for registration because it had forgotten to renew its mark;
– that the intervener had tolerated the existence of the applicant’s earlier EU trade mark as well as its presence on the Spanish market for decades;
– that there are a large number of other very similar marks registered for identical goods;
– the factual reality between the parties rather than the reality on paper;
– the descriptiveness of the marks relied on.
72 EUIPO and the intervener dispute the applicant’s arguments.
73 It should be borne in mind that, pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 thereof, and to Article 177(1)(d) of the Rules of Procedure of the General Court, the application must contain, inter alia, the subject matter of the dispute and a brief statement of the pleas in law on which it is based. Those elements must be sufficiently clear and precise to enable the defendant to prepare its defence and the General Court to rule on the application, if necessary without any further information. In order to guarantee legal certainty and the sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (orders of 28 April 1993, De Hoe v Commission, T‑85/92, EU:T:1993:39, paragraph 20, and of 21 May 1999, Asia Motor France and Others v Commission, T‑154/98, EU:T:1999:109, paragraph 49; and judgment of 15 June 1999, Ismeri Europa v Court of Auditors, T‑277/97, EU:T:1999:124, paragraph 29).
74 It follows from the case-law that requirements similar to those set out in the preceding paragraph apply where a claim or an argument is relied on in support of a plea in law (see judgment of 23 February 2022, Lackmann Fleisch- und Feinkostfabrik v EUIPO – Schuju (Хозяйка), T‑185/21, not published, EU:T:2022:89, paragraph 39 and the case-law cited).
75 It must be stated that the applicant’s general assertion that the Board of Appeal infringed the relevant case-law relating to the global assessment of the likelihood of confusion is neither substantiated nor proven. In its written pleadings, the applicant does not develop any specific arguments in that regard or identify the case-law to which it refers.
76 Furthermore, the applicant does not explain how its having tried to restore the previous situation, the existence of other similar marks or ‘the factual reality between the parties’ were, in the present case, to have an impact on the global assessment of the likelihood of confusion.
77 As regards the coexistence of the marks on the Spanish market, it is sufficient to recall that the applicant, as has been held in paragraph 56 above, has not succeeded in proving the coexistence of the earlier marks.
78 As regards the allegedly descriptive character of the marks relied on, it should be recalled that it has been held in paragraph 62 above that the applicant was incorrect to submit that the Board of Appeal should have found that the earlier national mark was descriptive and devoid of distinctive character.
79 Consequently, the sixth plea must be rejected as in part inadmissible and in part unfounded.
80 In the light of all the foregoing considerations, the action must be dismissed in its entirety.
Costs
81 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
82 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has requested that the applicant be ordered to pay the costs only in the event that a hearing is convened, EUIPO should be ordered, in the absence of a hearing, to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Prolactal GmbH to bear its own costs and to pay those incurred by Prolàctea, SA;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Marcoulli | Tomljenović | Norkus |
Delivered in open court in Luxembourg on 13 September 2023.
V. Di Bucci | | S. Papasavvas |