Case T‑247/14
Meica Ammerländische Fleischwarenfabrik Fritz Meinen GmbH & Co. KG
v
Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (OHIM)
(Community trade mark — Opposition proceedings — Application for the Community figurative mark STICK MiniMINI Beretta — Earlier Community word mark MINI WINI — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Article 8(3) of Regulation (EC) No 216/96)
Summary — Judgment of the General Court (Sixth Chamber), 4 February 2016
1. Community trade mark — Appeals procedure — Appeal to a Board of Appeal — Challenge to the contested decision by the defendant in its observations — Inapplicability of the conditions laid down in Article 60 of Regulation No 207/2009
(Council Regulation No 207/2009, Art. 60; Commission Regulation No 216/96, Art. 8(3))
2. 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))
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 — Refusal to register on a ground relating to refusal even limited to part of the Union
(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 — Composite mark
(Council Regulation No 207/2009, 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 for identical or similar goods or services — Likelihood of confusion with the earlier mark — High distinctiveness of the earlier mark — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
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 — Likelihood of confusion with the earlier mark — Figurative mark STICK MiniMINI Beretta and word mark MINI WINI
(Council Regulation No 207/2009, Art. 8(1)(b))
1. It is apparent from the wording of Article 8(3) of Regulation No 216/96, laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) that, in the context of proceedings before the Board of Appeal, the defendant may, in its submissions, exercise its right to challenge the decision that is contested. Thus, simply by virtue of its status as a defendant, it is allowed to challenge, inter alia, the validity of a decision of the Opposition Division. Nor does that provision limit that right to the pleas in law already raised in the appeal. It provides, in fact, that the submissions may relate to a point not raised in the appeal. Moreover, that provision does not make any reference to the fact that the defendant could itself have brought an appeal against that decision. Accordingly, that decision may be challenged either in separate proceedings, as provided for in Article 60 of Regulation No 207/2009, or in the submissions provided for in Article 8(3) of Regulation No 216/96.
To accept of the admissibility of the applicant’s submissions in its response does not amount to permitting the defendant before the Board of Appeal to bring an action disregarding the time limit and payment of the fee for appeal provided for in Article 60 of Regulation No 207/2009. It is clear from the wording of Article 8(3) of Regulation No 216/96 that the possibility of seeking a decision annulling or altering the contested decision on a point not raised in the appeal is limited to inter partes proceedings. Those submissions may be made in the response submitted in the context of those proceedings. That is why that provision states that those submissions are to cease to have effect should the appellant discontinue the proceedings before the Board of Appeal. Thus, in order to challenge a decision of the Opposition Division, separate proceedings, as provided for in Article 60 of Regulation No 207/2009, are the only legal remedy by which it is certain that the appellant’s objections may be asserted. It follows that submissions seeking a decision annulling or altering the contested decision on a point not raised in the appeal within the meaning of Article 8(3) of Regulation No 216/96 differ from the appeal provided for in Article 60 of Regulation No 207/2009. Accordingly, the conditions laid down in Article 60 of Regulation No 207/2009 do not apply to those submissions.
Accordingly, a defendant that submits in its response, within the prescribed time limit, submissions seeking a decision altering the decision of the Opposition Division is not required to comply with the time limit or to pay the fee for appeal provided for in Article 60 of Regulation No 207/2009.
(see paras 22-25)
2. See the text of the decision.
(see paras 32-34, 37, 66)
3. See the text of the decision.
(see para. 38)
4. See the text of the decision.
(see paras 45-47, 53)
5. See the text of the decision.
(see paras 67,68)
6. See the text of the decision.
(see paras 73-80)