Case T‑342/12
Max Fuchs
v
Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (OHIM)
(Community trade mark — Opposition proceedings — Application for a Community figurative mark representing a star within a circle — Earlier Community and national figurative marks representing a star within a circle — Relative ground for refusal — Likelihood of confusion — Distinctive character of the earlier mark — Article 8(1)(b) of Regulation No 207/2009 — Revocation of the earlier Community mark — Continued interest in bringing proceedings — Failure to find that there was no need to adjudicate in part)
Summary — Judgment of the General Court (Second Chamber), 8 October 2014
1. Actions for annulment — Conditions for admissibility — Interest in bringing proceedings — To be considered of the Court’s own motion
2. Community trade mark — Appeals procedure — Action before the EU judicature — Interest in bringing proceedings — Revocation of the earlier Community mark on which the opposition is based
(Council Regulation No 207/2009, Arts 45, 55(1), 58(1), second sentence, and 64(3))
3. 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 — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
4. 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 — Similarity of the marks concerned — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
5. Community trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Criteria
(Council Regulation No 207/2009)
6. 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 — Similarity of the marks concerned — Figurative marks without verbal elements — Phonetic comparison
(Council Regulation No 207/2009, Art. 8(1)(b))
7. 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 — Figurative marks representing star within a circle
(Council Regulation No 207/2009, Art. 8(1)(b))
1. Since the conditions of admissibility of an action, in particular whether there is a legal interest in bringing proceedings, concern an absolute bar to proceedings, it is for the Court to consider of its own motion whether the applicant retains an interest in obtaining the annulment of the contested decision.
(see para. 22)
2. Notwithstanding the intervention of a definitive decision revoking the earlier Community mark on which the opposition was based, the applicant retains an interest in challenging the contested decision.
The revocation of the mark upon which an opposition is based, when it occurs only after a decision of the Board of Appeal allowing an opposition based on that mark, does not constitute either a withdrawal or a repeal of that decision. In the case of revocation under the provisions of Article 55(1) of Regulation No 207/2009, the Community mark is deemed not to have had, as from the date of the application for revocation, the effects provided for under that regulation. By contrast, until that date, the Community mark benefitted in full from all the effects arising from that protection, laid down in Section 2 of the regulation. Consequently, at the date on which the contested decision was adopted, the earlier Community mark benefited in full from all the effects specified in those provisions. Therefore, for the Court to find that the litigation becomes devoid of purpose when, in the course of the proceedings, a revocation decision is reached would amount to taking into account matters arising after the adoption of the contested decision, which neither affect the well-foundedness of that decision nor have any relevance for the opposition proceedings at the origin of the annulment action.
Moreover, if the Court were to annul the contested decision, its ex tunc revocation could procure an advantage for the applicant that he would not obtain in the event of a declaration that there was no need to adjudicate. If the Court were required to declare that there is no need to adjudicate, the applicant could simply present, before OHIM, a fresh application for registration of his mark, without it being possible for opposition to that application thereafter to be mounted on the basis of the earlier Community mark that had been revoked. By contrast, if the Court were required to give a ruling on the substance and allow the action to the extent that it related to those goods, in holding that there was no likelihood of confusion between the marks at issue, nothing would then preclude the registration of the mark applied for.
Finally, the mere fact that appeals against the decisions of the Opposition Division and of the Board of Appeal have a suspensory effect under the second sentence of Article 58(1) and of Article 64(3) of Regulation No 207/2009, cannot suffice to call into question the applicant’s interest in pursuing the action. It must be recalled that, according to Article 45 of Regulation No 207/2009, it is only once an opposition has been rejected by a definitive decision that the mark is to be registered as a Community trade mark.
(see paras 24, 26, 28, 29)
3. See the text of the decision.
(see paras 34, 54)
4. See the text of the decision.
(see para. 39)
5. See the text of the decision.
(see paras 43, 51)
6. See the text of the decision.
(see para. 47)
7. See the text of the decision.
(see para. 62)