JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber)
4 October 2007 (*)
(Community trade mark – Opposition proceedings – Application for a Community word mark VOGUE – Earlier national word mark VOGUE Portugal – Facts raised for the first time before the Board of Appeal – Extent of the examination carried out by the Board of Appeal)
In Case T-481/04,
Advance Magazine Publishers, Inc., established in New York, New York (United States), represented by M. Esteve Sanz, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Laporta Insa, acting as Agent,
defendant,
the other party in the proceedings before the Board of Appeal of OHIM being
J. Capela & Irmãos, Lda, established in Porto (Portugal),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 27 September 2004 (Case R 328/2003-2) concerning opposition proceedings between J. Capela & Irmãos, Lda and Advance Magazine Publishers, Inc.,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),
composed of M. Jaeger, President, V. Tiili and O. Czúcz, Judges,
Registrar: K. Andová, Administrator,
having regard to the application lodged at the Registry of the Court on 10 December 2004,
having regard to the response lodged at the Registry of the Court on 11 April 2005,
further to the hearing on 14 September 2006,
gives the following
Judgment
Background to the dispute
1 On 1 April 1996 Advance Magazine Publishers, Inc. filed an application for a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) as amended.
2 Registration was sought for the word mark VOGUE.
3 The goods and services in respect of which registration was sought are in classes 9, 14, 16, 25 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– class 9: ‘Software; CD-ROM ; video and audio cassettes; electronic, optical and digital publications ; optical apparatus and products including eyewear – glasses and sunglasses’;
– class 14: ‘Jewellery and horological instruments’;
– class 16: ‘Printed matter (magazines, newsletters and books; computer programmes); paper (posters, paper patterns)’;
– class 25: ‘Clothing’;
– class 41: ‘Electronic information and entertainment services accessible through global or non-global computer networks’.
4 On 13 September 1999 the application was published in the Community Trade Marks Bulletin No 72/1999.
5 On 10 December 1999 J. Capela & Irmãos, Lda lodged a notice of opposition against registration of the trade mark applied for. The opposition was based on registration number 143 183 of the Portuguese word mark VOGUE Portugal, lodged on 20 June 1967 and registered on 9 August 1968, for footwear within class 25, and on the Portuguese business name No 32 046 VOGUE – SAPATARIA registered on 28 February 1991.
6 The opposition was based on all the goods covered by the earlier trade mark and was directed against part of the goods and services designated in the Community trade mark application, namely ‘clothing’ in class 25. The grounds pleaded in support of the opposition were those in Article 8(1)(b) and (4) of Regulation No 40/94.
7 On 27 November 2000 the applicant requested, pursuant to Article 43(2) and (3) of Regulation No 40/94, that the opponent furnish proof that the earlier trade mark had been put to genuine use.
8 On 15 March 2001 the opponent sent to OHIM documents to prove the genuine use of the earlier trade mark in Portugal during the five years preceding publication of the application for the Community trade mark. Those documents consisted of declarations by 15 different companies, producing footwear under the VOGUE trade mark of the opponent, copies of approximately 670 invoices issued to the opponent by 15 footwear producers during the period from 1994 until 1999, 35 photos of various footwear models with the VOGUE trade mark and insoles with the VOGUE trade mark for VOGUE shoes. It also sent proof of the use of its business name, including photos of shoe shops under the VOGUE brand.
9 By decision of 31 January 2003 the Opposition Division ruled in favour of the opposition. It considered that the documents produced by the opponent showed genuine use of the earlier trade mark for footwear in Portugal. It stated that the word ‘Portugal’ had formed part of the earlier trade mark under an old Portuguese legal rule which was no longer in force and which required goods to mention their Portuguese origin and that the marks could now be used without that reference. It therefore considered that the marks at issue were identical. It further considered that the marks were similar since they were designed to be worn by people, both as protection and as fashion items. Therefore, according to the Opposition Division, there was a likelihood of confusion in the minds of the relevant public in Portugal.
10 On 31 March 2003 the applicant filed an appeal with OHIM under Articles 57 to 62 of Regulation No 40/94 against the Opposition Division’s decision. In the notice of appeal the applicant mentioned, in the part concerning the ‘extent of appeal: extent to which the contested decision is to be amended or cancelled’, that ‘the decision [of the Opposition Division was] contested in its entirety’.
11 On 2 June 2003 the applicant lodged a statement setting out the grounds of its appeal under Article 59 of Regulation No 40/94. It pointed out in its statement that it was the holder of international registration No 158005 for the word mark VOGUE, which has effect in Portugal, and that that mark had been registered for, inter alia, ‘ready-made clothing of all kinds; underclothing’ in class 25 on 3 December 1951 and that it was, therefore, prior to the supposedly earlier mark of the opponent. According to the applicant, the trade mark VOGUE was thus already protected in Portugal and the protection which it enjoys in that country would not be extended, even if the mark was registered as a Community trade mark. As a consequence, the two marks have co-existed in Portugal for more than 30 years. Registration of the mark VOGUE as a Community trade mark would not, according to the applicant, change the respective rights enjoyed by the proprietors of that Community trade mark and the earlier trade mark in Portugal. In contrast, the rejection of the application for the Community trade mark would require the applicant to have recourse to the national systems of protection, which are more costly and complicated, in order to protect its trade mark throughout the European Union.
12 The applicant attached to its statement of grounds an extract from a database regarding the international registration of the trade mark VOGUE and an affidavit according to which it held all the outstanding shares in the company which, according to the extract, was the holder of that registration.
13 By decision of 27 September 2004 (‘the contested decision’) the Second Board of Appeal dismissed the appeal. It held that the argument relating to the international registration of the trade mark VOGUE covering Portugal was inadmissible, since it had not been raised before the Opposition Division and the existence of that trade mark had not even been mentioned. Moreover, it considered that the marks at issue were identical and the goods were similar for the reasons set out by the Opposition Division and that, consequently, there was a likelihood of confusion in Portugal as regards the trade marks in dispute.
Forms of order sought by the parties
14 The applicant claims the Court should:
– annul the contested decision;
– in the alternative, annul the contested decision in so far as it implicitly confirms the decision of the Opposition Division according to which the earlier trade mark had been put to genuine use, or annul the Opposition Division’s decision in so far as it established that genuine use;
– order OHIM to pay the costs of the present proceedings and those of the appeal procedure before it.
15 OHIM contends that the Court should :
– dismiss the action;
– order the applicant to pay the costs.
Law
16 The applicant puts forward, in essence, four pleas in support of its action, alleging infringement by the Board of Appeal of its obligation to examine the issues presented for the first time before it, infringement by the Board of Appeal of the obligation to re-examine the entirety of the matter, lack of proof of genuine use, and finally infringement of Article 8(1)(b) of Regulation No 40/94.
17 In support of its first plea, the applicant claims, in essence, that by refusing to consider the argument, presented for the first time before the Board of Appeal, according to which the applicant is the holder of an earlier international registration of the trade mark VOGUE covering Portugal, the Board of Appeal infringed the obligation to examine the evidence presented for the first time before it.
18 OHIM contends that the Board of Appeal was fully entitled to and bound to refuse to take into account the new facts and evidence and that, in any case, it could have rejected them under Article 74(2) of Regulation No 40/94. Moreover, the applicant’s argument relating to the earlier international registration of the trade mark VOGUE is manifestly unfounded and to refer the case back before the Board of Appeal would not change the outcome of it.
19 In the present case, the Board of Appeal stated that, while it might be admissible in appeal proceedings to allow the parties to develop and supplement arguments that have been raised at first instance, ‘it seems wrong in principle and contrary to the wording of Article 74(2) [of Regulation No 40/94] to allow them to plead entirely new facts and arguments’. It therefore held that the applicant’s arguments were inadmissible.
20 However, the Board of Appeal thereby misconstrues Article 74(2) of Regulation No 40/94. That provision, under which OHIM may not take into account facts that were not pleaded or evidence that was not submitted in due time by the parties, grants the Board of Appeal, when presented with facts and evidence which are submitted late, a discretion as to whether or not to take account of such information when making the decision which it is called upon to give (Case C-29/05 P OHIM v Kaul [2007] ECR I-0000, paragraph 68).
21 Therefore, instead of exercising the discretion which it thus has, the Board of Appeal wrongly considered itself to be lacking any discretion, in the present case, as to whether to take account or not of the facts and evidence at issue (see, to that effect, OHIM v Kaul, paragraph 69).
22 Moreover, as the Board of Appeal did not examine the facts and evidence at issue, or the applicant’s arguments relating thereto, and merely held them inadmissible, the Court cannot substitute itself for OHIM in the assessment of their relevance in the present case and therefore cannot rule on OHIM’s reasoning in that regard.
23 It follows that the contested decision must be annulled without it being necessary to examine the other grounds raised by the applicant.
24 In those circumstances, there is also no need to rule on the admissibility of the applicant’s pleas in the alternative.
Costs
25 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs. As OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the pleas of the applicant.
On those grounds,
THE COURT OF FIRST INSTANCE (Third Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 27 September 2004 (Case R 328/2003-2);
2. Orders OHIM to bear its own costs and those incurred by Advance Magazine Publishers, Inc.
Delivered in open court in Luxembourg on 4 October 2007.