JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
3 April 2014 (*)
(Community trade mark — Opposition proceedings — Application for the Community word mark SÔ :UNIC — Earlier Community and national word marks SO… ?, SO… ? ONE, SO… ? CHIC and non-registered word marks — Relative grounds for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Likelihood of confusion — Family of marks — Article 8(4) of Regulation No 207/2009 — Rule 15(2)(b)(iii) of Regulation (EC) No 2868/95 — Admissibility of the opposition)
In Case T‑356/12,
Debonair Trading Internacional Ldª, established in Funchal (Portugal), represented by T. Alkin, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Ibercosmetica, SA de CV, established in Mexico City (Mexico),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 4 June 2012 (Case R 1033/2011-4), relating to opposition proceedings between Debonair Trading Internacional Ldª and Ibercosmetica, SA de CV,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 6 August 2012,
having regard to the response lodged at the Court Registry on 27 November 2012,
having regard to the reply lodged at the Court Registry on 6 March 2013,
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 JudgeRapporteur, 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 3 April 2009, Ibercosmetica, SA de CV, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to 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 mark in respect of which registration was sought is the word sign SÔ :UNIC.
3 The goods in respect of which registration of the mark was sought are in Class 3 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: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 21/2009 of 8 June 2009.
5 On 4 September 2009, the applicant, Debonair Trading Internacional Ldª, filed a notice of opposition under Article 41 of Regulation No 207/2009 to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based, first, on 24 previously registered national or Community marks, all containing the word element ‘so… ?’, including:
– the Community word mark SO… ?, registered under No 485078 on 26 February 2001, designating goods in Class 3 and corresponding to the following description: ‘Toilet preparations; preparations for use in the shower and the bath, all being non-medicated; perfumes; fragrances; aftershaves, creams, gels and lotions; cosmetics; eau de cologne; toilet waters; hair styling products; anti-perspirants; deodorants for personal use’;
– the United Kingdom word mark SO… ? ONE, registered under number 2286577 on 15 April 2005, designating goods in Class 3 and corresponding to the following description: ‘Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; non-medicated toilet preparations; preparations for the care of the skin, body and hair; deodorants; talcum powders; preparations for the use of the bath; all included in Class 3, but not including any of the aforesaid goods for sale or for use in the professional hair care market, hairdressers or beauty salons’;
– the Community word mark SO… ? CHIC, registered under number 4630406 on 9 January 2008, designating goods in Class 3 and corresponding to the following description: ‘Toiletries; perfumery; cosmetics; deodorants; fragrance sachets; body lotion; shower gel; shimmer lotions; not including shaving cosmetics’.
7 Secondly, the opposition was based on a number of other earlier signs, defined by the applicant in the notice of opposition as being non-registered word marks, protected in the European Union, designating the goods ‘perfumery, cosmetics, deodorants’ and containing the word element ‘so’, most often in the context of the expression ‘so… ?’ (‘the other earlier signs at issue’).
8 The grounds relied on in support of the opposition were, inter alia, those referred to in Article 8(1)(b) and Article 8(4) of Regulation No 207/2009.
9 By decision of 24 March 2011, the Opposition Division rejected the opposition. To that end it found, inter alia, first, that there was no likelihood of confusion between the marks mentioned in paragraph 6 above and the trade mark applied for, a fortiori because the latter could not be considered to be part of the same family of marks as that which might be formed by the earlier marks and, second, that the other earlier signs at issue did not enable the opposition under Article 8(4) of Regulation No 207/2009 to be upheld, either because the use of certain of those signs had not been proven, or on account of differences between the trade mark applied for and the other earlier signs at issue, or on the ground that the applicable legislation in certain Member States did not confer any protection on those signs.
10 On 13 May 2011 the applicant filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11 By decision of 4 June 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. In particular, it held, first, that the notice of opposition, in so far as it was based on the other earlier signs at issue, did not meet the conditions for admissibility set out in Rule 15(2)(b)(iii) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), in so far as the applicant had indicated that the opposition was based on non-registered marks used in the course of trade in the European Union, whereas such a category of intellectual-property rights did not exist, and, second, that there was no likelihood of confusion between the marks at issue. To this latter end, the Board of Appeal essentially observed, inter alia, that:
– the goods covered by the mark applied for and those covered by the first two earlier marks mentioned in paragraph 6 above were identical, similar or similar to a low degree;
– the relevant public was the general public in the United Kingdom or in the whole of the European Union, depending on which of those earlier marks was concerned;
– the trade mark applied for and those earlier marks were visually and phonetically similar to a low degree and were conceptually different;
– as the trade mark applied for did not contain exactly the same initial part, corresponding to the element ‘so… ?’, as the earlier marks, it could not be included in the same family of marks as that which might be formed by the earlier marks (‘the family of marks relied on’).
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
13 Furthermore, in view of the applicant’s argument concerning one of the pleas in law in the application, this must be regarded as requesting, essentially, that the Court should alter the contested decision by upholding the opposition on the basis of Article 8(4) of Regulation No 207/2009. Likewise, taking account of the information set out in the reply, the applicant must be regarded as requesting, essentially, by way of alternative to its other requests, that the Court should alter the contested decision in order to give it the possibility to resubmit a notice of opposition on the basis of Article 8(4) of Regulation No 207/2009.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
15 In support of its action, the applicant relies on three pleas in law: (i) infringement of Article 8(1)(b) of Regulation No 207/2009; (ii) infringement of Rule 15(2)(b)(iii) of Regulation No 2868/95; and (iii) infringement of Article 8(4) of Regulation No 207/2009.
The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
16 In its first plea, the applicant disputes only the reasoning of the Board of Appeal that the trade mark applied for cannot be considered to be part of the family of marks relied on.
17 In this regard, the applicant submits that the cumulative conditions laid down by case-law (Case T‑194/03 Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II‑445, paragraphs 123 to 127) for a finding that there is a likelihood of confusion between a trade mark applied for and a family of earlier marks are satisfied in the present case.
18 First of all, it should be noted that the risk that the public might believe that the goods or services at issue come from the same undertaking or from economicallylinked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, 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).
19 It is also apparent from case-law that when the opposition to a Community trade mark application is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’, which may be the case, inter alia, either when they reproduce in full a single distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of a single prefix or suffix taken from an original mark, such a circumstance constitutes a relevant factor for the purpose of assessing whether there is a likelihood of confusion (BAINBRIDGE, paragraph 123, and judgment of 18 December 2008 in Case T‑16/07 Torres v OHIM — Sociedad Cooperativa del Campo San Ginés (TORRE DE BENÍTEZ), not published in the ECR, paragraph 79). In the case of a family or series of trade marks, a likelihood of confusion results from the fact that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and form the view, erroneously, that the latter trade mark is part of that family or series of marks (Case C‑317/10 P Union Investment Privatfonds v UniCredito Italiano [2011] ECR I‑5471, paragraph 54; see also, to that effect, BAINBRIDGE, paragraph 124).
20 A likelihood of confusion attaching to the existence of a series or family of earlier marks can be pleaded only if both of two conditions are satisfied. First, the opposing party must furnish proof of use of a number of marks capable of constituting a series (‘the first condition’). Second, the trade mark applied for must not only be similar to the marks belonging to the series, but must also display characteristics capable of associating it with the series (‘the second condition’). This could not be the case where, for example, the element common to the earlier serial marks is used in the trade mark applied for either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content (BAINBRIDGE, paragraphs 126 and 127, and judgment of 27 June 2012 in Case T‑344/09 Hearst Communications v OHIM — Vida Estética (COSMOBELLEZA), not published in the ECR, paragraphs 86 and 87).
21 In the present case, at paragraphs 30 and 49 of the contested decision, the Board of Appeal held, essentially, that the second condition was not met, with the result that the possibility that the relevant public might confuse the trade mark applied for with the family of marks relied on could be ruled out, without it being necessary to examine whether the first condition was met. So far as concerns the second condition, first, the Board of Appeal observed that the element ‘so… ?’, common to the earlier marks, was not reproduced identically in the mark applied for, which did not contain either the suspension points or the question mark, but featured a circumflex over the letter ‘o’ followed by another punctuation mark, namely a colon. Secondly, the Board of Appeal emphasised that the element ‘unic’ in the mark applied for was not an English expression, unlike the expressions following the element ‘so… ?’ in the family of marks relied on. Therefore, according to the Board of Appeal, the trade mark applied for did not fit into the pattern of those earlier marks, but would be understood as a fanciful expression.
22 In this connection, in the first place, it is necessary to reject the argument by which the applicant alleges that the Board of Appeal failed to check whether the first condition was met. Given that the two conditions are cumulative (see paragraph 20 above), the Board of Appeal was in no way obliged to establish whether the first condition was met, since it had found that the second was not met. Such a finding was sufficient to rule out any possibility that a likelihood of confusion might result from the association of the trade mark applied for with the family of marks relied on.
23 In the second place, having regard to the goods covered by the earlier marks and the territories in which they are protected, the Board of Appeal’s findings concerning the relevant public, which are, moreover, not disputed by the applicant, must be confirmed.
24 In the third place, as regards the fact that the Board of Appeal discounted the possibility that the trade mark applied for might be considered capable of association with the family of marks relied on, it must be observed that, in accordance with the case-law referred to in paragraph 19 above, a family of marks exists, inter alia, when a number of marks contain a single distinctive element or repeat a single prefix or suffix taken from an original mark. Admittedly, as the applicant, in essence, observes, those two hypotheses were set out in the case-law for the purposes of defining the concept of a family of marks and not for the purposes of establishing the circumstances in which there is a likelihood of confusion between a trade mark applied for and a family of earlier marks. However, the Board of Appeal did not err in looking to those hypotheses when it examined the issue of whether the trade mark applied for could be confused with the family of marks relied on. As the applicant itself concedes, the likelihood of confusion with regard to a family of marks results from the possibility that the relevant public may believe that the mark applied for is part of the same family as that formed by the earlier marks (see, to that effect, BAINBRIDGE, paragraph 124). For that likelihood of confusion to exist, it is therefore necessary that the mark applied for should have characteristics which might suggest that it belongs to the family of marks at issue.
25 In the present case, the element ‘so… ?’, which is common to the earlier marks liable to form the family of marks relied on, does not coincide with the element ‘sô :’ in the mark applied for.
26 While it is true, as the applicant points out, that the use, in the case-law referred to in paragraph 19 above, of the expression ‘inter alia’ indicates that the two hypotheses mentioned by that case-law are not exhaustive, it cannot be inferred from that fact that the presence, in the trade mark applied for, of an element that does not coincide with that which characterises the family of marks relied on allows that mark to be associated with that family, in the absence of other associating factors. Admittedly, the use of the expression ‘inter alia’ leaves open the possibility of finding, even in conditions other than those required by the two hypotheses mentioned above, that a mark belongs to a family of marks. However, that cannot be the case where the conditions mentioned in those hypotheses are not met and, as in the present case, no other element is adduced in support of the mark belonging to that family of marks.
27 For the rest, the Board of Appeal has drawn attention to other differences between the trade mark applied for and the family of marks relied on, as OHIM correctly submits. Those differences relate to, inter alia, the perception of the marks at issue from the conceptual point of view, which, as the applicant itself observes, is an essential element in the context of a family of marks.
28 In that regard, contrary to what the applicant claims, the Board of Appeal was justified in finding that the mark applied for, viewed as a whole, did not correspond to the pattern characterising the family of marks relied on.
29 That pattern consists of the beginning of a question, expressed by the element ‘so… ?’, followed, in the majority of cases, by a word or expression which exists in everyday English and which constitutes a sort of response to that question. By contrast, in the mark applied for, first, the element ‘sô :’ does not refer to the beginning of a question, on account of the absence both of the question mark and of the suspension points and because of the presence of the colon and the addition of the circumflex over the letter ‘o’, which does not exist in the English word ‘so’, which itself may introduce a question. Secondly, the element ‘unic’ is not a word which exists in English. Even if, as the applicant claims, that element may refer to the English word ‘unique’, the failure to observe English spelling differentiates further the mark applied for from those of the family of marks relied on.
30 In the fourth place, contrary to what the applicant claims, little significance attaches to the fact that the Board of Appeal, in its evaluation of the possibility that the mark applied for might be considered to belong to the family of marks relied on, did not take account of the fact that the goods covered were, in part, identical.
31 Even if the degree of similarity of the goods at issue were to have an impact on that evaluation, the graphic and semantic differences between the mark applied for and the family of marks relied on (see paragraphs 25 to 28 above) are sufficient to preclude the mark applied for from being regarded as belonging to that family of marks, irrespective of the goods covered.
32 In the light of the foregoing considerations, it is necessary to confirm the Board of Appeal’s analysis that, even if the earlier marks were to form a family of marks, that fact does not permit a finding that there is a likelihood of confusion in the present case.
33 Consequently, the first plea in law must be rejected.
The second plea in law, alleging infringement of Rule 15(2)(b)(iii) of Regulation No 2868/95
34 At paragraphs 11 to 14 of the contested decision, the Board of Appeal, after having observed that the applicant, in the notice of opposition, had relied on a number of earlier non-registered marks protected in the European Union, observed both that the representation of those marks had not been provided and that such a category of intellectual-property rights did not exist, in so far as non-registered marks were defined by the national legislation of the Member States which granted them protection, and not under provisions of EU law. Having established that the letter attached to that notice of opposition (‘the attached letter’) did not contain any supplementary information sufficient to remedy the deficiencies in that notice, the Board of Appeal took the view that the opposition, in so far as it was based on the other earlier signs at issue, did not meet the conditions set out in Rule 15(2)(b)(iii) of Regulation No 2868/95 and was therefore inadmissible.
35 The applicant submits that the notice of opposition and the attached letter did meet those conditions.
36 In this connection, the applicant criticises the Board of Appeal on the ground that the latter misinterpreted the part of the notice of opposition concerning the other earlier signs. The fact of having checked, on the form established by OHIM for submission of a notice of opposition, the ‘non-registered trade mark’ box and the ‘EM’ box (‘the “non-registered trade mark” box’ and ‘the “EM” box’) did not mean that the applicant wished to base its opposition on non-registered marks protected by EU law, a category which it concedes does not exist, but rather should be understood to the effect that it considered the non-registered marks mentioned in that notice to be protected in all of the Member States.
37 The applicant acknowledges that non-registered marks are governed by the laws of the Member States and that there are differences between those laws. Nevertheless, it claims that, in every Member State, the signs on which it relies confer on their owner the right to prevent a third party from using a sign in the course of trade. Therefore, there should not be any practical differences irrespective of whether that right is relied on in the whole of the European Union or in each Member State separately.
38 In addition, according to the applicant, the fact of using the ‘non-registered trade mark’ box also with regard to Member States the legal order of which does not grant any express protection to such marks does not render the opposition inadmissible. The issue of whether, in the Member States concerned, the earlier sign relied on by an opposing party gives it the right to prevent the use of a more recent mark, as required by Article 8(4)(b) of Regulation No 207/2009, is concerned with the examination of the merits of the opposition, and not its admissibility.
39 Furthermore, the applicant submits that the interpretation adopted by the Board of Appeal renders the ‘EM’ box misleading, since that box could not validly be used in association with earlier signs having one of the natures pre-defined in the form for introducing the notice of opposition, namely ‘non-registered trade mark’, ‘trade name’ and ‘company name’, but only with other signs that the opposing party must himself define, of which only Community designs are governed by EU law.
40 OHIM maintains that Rule 15(2)(b)(iii) of Regulation No 2868/95 establishes a clear distinction between an earlier right, for the purposes of Article 8(4) of Regulation No 207/2009, which exists in the whole of the European Union, and an earlier right, for the purposes of that article, which exists in one or more Member States. Thus, the box entitled ‘EM’ could not validly be checked unless a single earlier right is claimed in the whole of the European Union. The existence of such a box is linked to the fact that Article 8(4) of Regulation No 207/2009 does not list expressly or exhaustively the earlier rights on which reliance may be placed under that provision.
41 While conceding that the essential elements concerning the signs relied on in support of an opposition based on Article 8(4) of Regulation No 207/2009 can be deduced from the documents attached to the notice of opposition, OHIM observes that, in the present case, the attached letter did not contain all the information required to observe the right to be heard and to ensure equality of arms between the parties to the opposition proceedings.
42 As a preliminary point, it should be noted that Rule 15 of Regulation No 2868/95 states the following:
‘…
2. The notice of opposition shall contain:
…
(b) a clear identification of the earlier mark or earlier right on which the opposition is based, namely:
…
(iii) where the opposition is based on an earlier right within the meaning of Article 8(4), an indication of its kind or nature, a representation of the earlier right, and an indication of whether this earlier right exists in the whole Community or in one or more Member States, and if so, an indication of the Member States;
…’
43 First of all, it must be noted that, as the applicant correctly submits, the Board of Appeal’s assertion that the applicant had omitted to provide a representation of the other earlier signs at issue is factually inaccurate. In so far as the signs concerned are word signs, the reference to those signs in the corresponding pages of the notice of opposition must be considered to be a representation of those signs which, for the rest, complies with point 3.6 of the explanatory notes concerning OHIM’s notice of opposition form.
44 Next, the notice of opposition shows that the applicant, in respect of each of the other earlier signs at issue, checked the box entitled ‘Non-registered trade mark’, so far as concerns the nature of the earlier right relied on, and the box entitled ‘EM’, so far as concerns the territory in which that sign was protected. It is common ground between the parties that that latter box corresponds to the territory of the European Union, which is also apparent from point 3.5 of the explanatory notes concerning OHIM’s notice of opposition form.
45 In this connection, without it being necessary to establish whether the box entitled ‘EM’ can be validly checked in regard to a sign protected in all Member States, instead of checking the boxes corresponding to each of the Member States, it must be stated that the applicant erred by checking that box. The applicant itself, in the attached letter, stated as follows:
‘Leaving aside the registrations of the opponent’s marks, the opponent has the right to prevent use of the mark applied for in the UK and Ireland at least on the basis of the law of passing off and in other Community [S]tates on the basis of the law of unfair competition having regard to the extensive goodwill and reputation earned with the opponent and its predecessors in title through the use of the relevant trade marks.’
46 Although, contrary to what OHIM maintains, it is apparent from a reading of the notice of opposition in conjunction with the attached letter that the right to which the above passage relates arises from the other earlier signs at issue, described as non-registered trade marks in the notice of opposition, that letter does not permit the inference that the applicant was relying on such a right in all the Member States. After having expressly cited the United Kingdom and Ireland, the applicant confined itself to inserting a reference to ‘other Community States’, which cannot be interpreted as being a reference to all of the Member States and does not specify which Member States are in question.
47 However, the fact that the applicant incorrectly checked the box entitled ‘EM’ did not render entirely inadmissible its opposition based on Article 8(4) of Regulation No 207/2009. The information provided in the notice of opposition and in the attached letter made it possible to understand the nature and representation of the other earlier signs at issue, and what right those signs were supposed to confer on the applicant in the United Kingdom and in Ireland under the rules on passing off.
48 The issue of whether that right relied on by the applicant met the conditions set out in Article 8(4) of Regulation No 207/2009 and, by virtue of the reference made in that provision, in the laws of the United Kingdom and Ireland comes within the scope of the examination of the merits of the opposition, and not of its admissibility.
49 Having regard to the foregoing considerations, the present plea must be upheld in part, in so far as the Board of Appeal erred in declaring inadmissible the opposition founded on Article 8(4) of Regulation No 207/2009 with regard to the earlier signs relied on by the applicant so far as the United Kingdom and Ireland are concerned.
The third plea, alleging infringement of Article 8(4) of Regulation No 207/2009
50 The applicant submits that the evidence which it produced before OHIM was sufficient for the opposition based on Article 8(4) of Regulation No 207/2009 to succeed, if only on account of the rights which the other signs at issue conferred on it in the United Kingdom, under the rules on passing off. The applicant for that reason requests the Court to examine the merits of that part of the opposition, at least to that extent, and to establish that the action before the Board of Appeal was well founded, to that same extent.
51 It must be stated that, by this plea, the applicant is seeking to establish that its opposition based on Article 8(4) of Regulation No 207/2009 should have been upheld and, essentially, requests the Court to adopt the decision which, in its view, the Board of Appeal ought to have taken. Consequently, the applicant is seeking alteration of the contested decision, as provided for in Article 65(3) of Regulation No 207/2009 (see, to that effect, judgment of 6 June 2013 in Case T‑411/12 Celtipharm v OHIM — Alliance Healthcare France (PHARMASTREET), not published in the ECR, paragraph 44).
52 Next, it must be recalled that the power to alter decisions does not have the effect of conferring on the Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (Case C‑263/09 P Edwin v OHIM [2011] ECR I‑5853, paragraph 72).
53 In the present case the Board of Appeal, having rejected as inadmissible the opposition based on Article 8(4) of Regulation No 207/2009, did not rule on its merits, with the result that the Court cannot examine that issue.
54 The present plea in law must therefore be rejected.
Conclusion on the outcome of the action
55 First, having regard to the considerations set out in paragraphs 16 to 33 above, from which it follows that the first plea is unfounded, the applicant’s application for annulment must be dismissed in so far as concerns the part of the contested decision which rejected the opposition based on Article 8(1)(b) of Regulation No 207/2009. As a result of that dismissal, it is not necessary to establish whether, by the assertions set out in the text of the application, which are not reflected in the form of order sought therein, the applicant is requesting the Court to exercise the power to alter decisions in order to uphold the opposition based on that provision, at least in respect of certain goods.
56 Secondly, in the light of the considerations set out in paragraphs 34 to 54 above, the contested decision must be annulled in so far as the Board of Appeal rejected as inadmissible the opposition based on Article 8(4) of Regulation No 207/2009, as regards the signs relied on by the applicant so far as the United Kingdom and Ireland are concerned, and the action dismissed as to the remainder. Since, in those circumstances, the Board of Appeal will have to examine the merits of the opposition in so far as it concerned those signs, it is not necessary to rule on the applicant’s request, made only in the text of the reply, that the Court alter the contested decision in order to give the applicant the opportunity to resubmit a notice of opposition based on that provision.
Costs
57 Pursuant to Article 87(3) of its Rules of Procedure, the General Court may order that the costs be shared or that each party bear its own costs in the case where each party succeeds on some and fails on other heads. In the present case, since the action is well founded only in part, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 4 June 2012 (Case R 1033/2011-4) in so far as the Board of Appeal rejected as inadmissible the opposition based on Article 8(4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark with regard to the signs relied on by Debonair Trading Internacional Ldª so far as the United Kingdom and Ireland are concerned;
2. Dismisses the action as to the remainder;
3. Orders each party to bear its own costs.
Delivered in open court in Luxembourg on 3 April 2014.
[Signatures]