Case T-112/03

L’Oréal SA

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for word mark FLEXI AIR – Earlier word mark FLEX – Relative ground for refusal – Likelihood of confusion – Request for proof of genuine use – Article 8(1)(b), Article 8(2)(a)(ii) and Article 43(2) of Regulation (EC) No 40/94)

Summary of the Judgment

1.      Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Need to settle that question, once raised by the applicant for the trade mark, before the decision on the opposition – Consequence – Duty on the applicant to submit its observations within the time-limit set by the Office

(Council Regulation No 40/94, Arts 42 and 43(2) and (3))

2.      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 – Procedural continuity between those two tribunals – Examination of the appeal by the Board of Appeal – Scope

(Council Regulation No 40/94, Art. 74(2))

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 – Weak distinctive character of the earlier mark – Relevance

(Council Regulation No 40/94, 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 – Likelihood of confusion with the earlier mark – Word marks FLEXI AIR and FLEX

(Council Regulation No 40/94, Art. 8(1)(b))

5.      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 in a Member State for identical or similar goods or services – Likelihood of confusion with the earlier mark – Examination and, if appropriate, refusal of the trade mark applied for on the basis of Regulation No 40/94 alone

(Council Regulation No 40/94, Art. 8(1)(b) and (2)(a)(ii))

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 in a Member State for identical or similar goods or services – Likelihood of confusion with the earlier mark – Rights conferred by Regulation No 40/94 on the proprietor of an earlier national mark – Rights not greater than those conferred by the national law in question

(Council Regulation No 40/94, Art. 8(1)(b) and (2)(a)(ii); Council Directive 89/104, Art. 4(1)(b) and 2(a)(ii))

1.      Pursuant to Article 43(2) and (3) of Regulation No 40/94 on the Community trade mark, for the purposes of examining an opposition introduced under Article 42 of that regulation, the earlier mark is presumed to have been put to genuine use as long as the applicant does not request proof of such use. The presentation of such a request therefore has the effect of shifting the burden of proof to the opponent to demonstrate genuine use (or the existence of proper reasons for non‑use) upon pain of having his opposition dismissed. For that to occur, the request must be made expressly and timeously to the Office for Harmonisation in the Internal Market (Trade Marks and Designs).

Although, on that point, it is true that the ninth recital in the preamble to Regulation No 40/94 states that ‘there is no justification for protecting Community trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used’ and, from that point of view, it is inappropriate to restrict unduly the scope available to an applicant for a trade mark to require proof of use of the mark invoked against registration of the trade mark applied for, genuine use of the earlier mark is, however, a matter which, once raised by the applicant for the trade mark, must be settled before a decision is given on the opposition proper.

In that regard, since opposition proceedings and appeal proceedings are both inter partes proceedings, the Office must invite the parties, as often as necessary, to file observations on communications from the other parties or issued by itself. In order to ensure better organisation of the proceedings, those observations must, in principle, be filed within the time‑limit fixed by the Office.

(see paras 24-27)

2.      The powers of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) imply that they are to re‑examine the decisions taken by the Office’s departments at first instance. In the context of that re-examination, the outcome of the appeal depends on whether or not a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling. Thus, the Boards of Appeal may, subject only to Article 74(2) of Regulation No 40/94, allow the appeal on the basis of new facts relied on by the party who has brought the appeal or on the basis of new evidence adduced by that party.

Moreover, the extent of the examination which the Board of Appeal must conduct is not, in principle, determined by the grounds relied on by the party who has brought the appeal.  Accordingly, even if the party who has brought the appeal has not raised a specific ground of appeal, the Board of Appeal is none the less bound to examine whether or not, in the light of all the relevant matters of fact and of law, a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling.

(see para. 36)

3.      Although, in the context of the examination of an opposition brought, on the basis of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, by the proprietor of the earlier mark, the distinctive character of that mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered.

(see para. 61)

4.      There is, for the average consumer in the United Kingdom, a likelihood of confusion between the word sign FLEXI AIR, for which registration as a Community trade mark is sought in respect of ‘shampoos; gels, mousses and balms, preparations in aerosol form for hairdressing and hair care; hair lacquers; hair-colouring and hair decolorising preparations; permanent waving and curling preparations; essential oils’ in Class 3 of the Nice Agreement, and the word mark FLEX, previously registered in the United Kingdom in respect of ‘shampoos and conditioning preparations, all for hair’ in the same Class of the Nice Agreement, to the extent that, firstly, the distinctive character of the earlier mark is weak and the signs at issue are similar on the visual, phonetic and conceptual level, and, secondly, that the goods are in part identical and in part very similar.

(see paras 82-83)

5.      Since an application for a Community trade mark is subject to the procedures laid down by Regulation No 40/94, under Article 8(1)(b) and Article 8(2)(a)(ii) of that regulation, the trade mark applied for must not be registered where the proprietor of a trade mark registered earlier in a Member State brings opposition proceedings and there is a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) thereof. However, Regulation No 40/94 makes no provision for prior examination of whether the earlier national trade mark may properly be put forward in opposition under the national legislation governing it or for assessment of the likelihood of confusion between the two marks concerned in accordance with that national legislation.

(see para. 91)

6.      Regulation No 40/94 cannot confer on the proprietor of an earlier national trade mark greater rights in connection with an application for a Community trade mark than those conferred on him by the national legislation governing that earlier mark. Under Article 4(1)(b) and Article 4(2)(a)(ii) of First Directive 89/104 to approximate the laws of the Member States relating to trade marks, the national laws of the Member States governing likelihood of confusion between a trade mark applied for and an earlier national mark were fully harmonised. The legislative content of those provisions of Directive 89/104 is identical to that of Article 8(1)(b) and Article 8(2)(a)(ii) of Regulation No 40/94.

(see para. 92)