Case T‑278/10 RENV
riha WeserGold Getränke GmbH & Co. KG (formerly Wesergold Getränkeindustrie GmbH & Co. KG)
v
Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (OHIM)
(Community trade mark — Opposition proceedings — Application for Community word mark WESTERN GOLD — Earlier national, Community and international word marks WeserGold, Wesergold and WESERGOLD — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Decision on the appeal — Article 64(1) of Regulation No 207/2009 — Obligation to state reasons — Right to be heard — Article 75 of Regulation No 207/2009)
Summary — Judgment of the General Court (Second Chamber), 24 November 2015
1. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — High distinctiveness of the earlier mark — Irrelevant where no similarity between the marks concerned
(Council Regulation No 207/2009, Art. 8(1)(b))
2. Actions for annulment — Judgment annulling a measure — Effects — Obligation to implement — Scope — Both the operative part and the grounds of the judgment to be taken into account
(Art. 266 TFEU)
3. Community trade mark — Appeals procedure — Action before the EU judicature — Annulment of a judgment of the General Court vitiated by an error of law in the interpretation of Article 8(1)(b) of Regulation No 207/2009 — Factual findings of the General Court not vitiated by error not called into question
(Council Regulation No 207/2009, Art. 8(1)(b))
4. Community trade mark — Appeals procedure — Appeal brought against a decision of a unit of the Office ruling at first instance and referred to the Board of Appeal — Functional continuity between those two bodies — Examination of the appeal by the Board of Appeal — Scope
(Council Regulation No 207/2009, art. 64(1))
5. Community trade mark — Appeals procedure — Appeal against a decision of the Opposition Division of OHIM — Examination by the Board of Appeal — Scope — Observance of the rights of the defence
(Council Regulation No 207/2009, Arts 64(1), and 76(1))
6. Community trade mark — Procedural provisions — Statement of reasons for decisions — Article 75, first sentence, of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU — Recourse by the Board of Appeal to implicit reasoning — Lawfulness — Conditions
(Art. 296, second para., TFEU; Council Regulation No 207/2009, Art. 75, first sentence)
1. See the text of the decision.
(see paras 32, 34)
2. Even if the operative part of the judgment on appeal declares that judgment of the General Court is set aside without specifying the extent to which it is set aside, it does not preclude the operative part of the judgment on appeal being read in conjunction with the grounds set out in that judgment. In order to comply with a judgment annulling a measure and to implement it fully, the institution is required to have regard not only to the operative part of the judgment but also to the grounds which led to it and constitute its essential basis, in so far as they are necessary to determine the exact meaning of what is stated in the operative part. It is those grounds which, on the one hand, identify the precise provision held to be illegal and, on the other, indicate the specific reasons which underlie the finding of illegality contained in the operative part and which the institution concerned must take into account when replacing the annulled measure.
(see paras 36, 37)
3. Where the Court of Justice has stated in a judgment on appeal that the judgment under appeal must be set aside, in so far as, by that judgment, the General Court had held that the Board of Appeal was required to examine the enhanced distinctiveness of the earlier marks, acquired through use, and had annulled the decision at issue on the ground that the Board had failed to do so, notwithstanding a prior finding in the judgment under appeal that the marks at issue were dissimilar, the Court of Justice does not intend to call into question the findings of fact made by the General Court as regards the analysis of the similarity of the signs at issue, and which constituted the basis of the reasoning of the Court of Justice.
As that ground for setting aside the judgment under appeal does not affect those findings of fact, the examination of the ground of appeal is therefore concluded by the finding that examination of the enhanced distinctiveness of the earlier marks, acquired through use, was ineffective, since the signs at issue were different.
That is also confirmed where the Court of Justice has observed that, since the General Court had already found that the marks at issue were dissimilar overall, any likelihood of confusion had to be ruled out and the possible enhanced distinctiveness of the earlier marks, acquired through use, could not offset the lack of similarity between the marks at issue.
In addition, if the analysis of the similarity of the signs at issue were to be called into question at this stage, when the Court of Justice made no mention of any error by the General Court on that point, that would be tantamount to setting up the Second Chamber of the General Court as an appellate court from the First Chamber of the General Court and, furthermore, to depriving the judgment on appeal of part of its binding effect, in so far as the setting-aside of the judgment under appeal could not go further than the setting-aside declared by the Court of Justice and allow the facts to be called into question, thereby rendering inoperative the grounds on which the judgment on appeal is based.
(see paras 38-40, 43)
4. See the text of the decision.
(see paras 57-59)
5. See the text of the decision.
(see paras 61, 62)
6. See the text of the decision.
(see paras 68, 69)