Case T‑105/16
Philip Morris Brands Sàrl
v
European Union Intellectual Property Office
(EU trade mark — Invalidity proceedings — EU figurative mark Superior Quality Cigarettes FILTER CIGARETTES Raquel — Earlier international figurative mark Marlboro — Relative ground for refusal — Reputation — Production of evidence for the first time before the Board of Appeal — Discretion of the Board of Appeal — Article 76(2) of Regulation (EC) No 207/2009 (now Article 95(2) of Regulation (EU) 2017/1001) — Rule 50(1) of Regulation (EC) No 2868/95)
Summary — Judgment of the General Court (Third Chamber) of 1 February 2018
1. EU trade mark — Appeals procedure — Action brought against a decision by the Cancellation Division — Examination by the Board of Appeal — Scope — Facts and evidence not produced in support of the opposition within the period prescribed for that purpose — Account taken — Discretion of the Board of Appeal — New or supplementary evidence
(Council Regulation No 207/2009, Art. 76(2); Commission Regulation No 2868/95, Art. 1, Rule 50(1), third para.)
2. EU trade mark — Decisions of EUIPO — Legality — EUIPO's previous decision-making practice
(Council Regulation No 207/2009)
3. EU trade mark — Appeals procedure — Action brought against a decision by the Cancellation Division — Examination by the Board of Appeal — Scope — Facts and evidence not produced in support of the opposition within the period prescribed for that purpose — Account taken — Discretion of the Board of Appeal — Failure to take into account evidence submitted out of time but which may be capable of modifying the substance of the contested decision — Infringement of the principle of sound administration
(Council Regulation No 207/2009, Arts 8(5) and 76(2))
4. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier identical or similar mark enjoying a reputation — Protection of the well-known earlier mark extended to dissimilar goods or services — Condition — Link between the marks — Criteria for assessment
(Council Regulation No 207/2009, Arts 8(5) and 53(1)(a))
5. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Similarity of the marks concerned — Degree of similarity required
(Council Regulation No 207/2009, Arts 8(5) and 53(1)(a))
6. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits
(Council Regulation No 207/2009, Art. 65(3))
1. See the text of the decision.
(see paras 38-41)
2. See the text of the decision.
(see para. 55)
3. Notwithstanding the interpretation of Rule 50 of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark and Article 76(2) of Regulation No 207/2009 on the European Union trade mark, the broad discretion enjoyed by the European Union Intellectual Property Office (EUIPO) in the performance of its duties cannot exempt it from its duty to assemble all the elements of fact and law necessary for the exercise of its discretion in cases where the refusal to take account of certain evidence submitted late would breach the principle of sound administration.
In that regard, in the context of invalidity proceedings, where the Board of Appeal refuses to take into consideration evidence of the reputation of the earlier mark, within the meaning of Article 8(5) of Regulation No 207/2009, which is produced out of time but which may modify the substance of the contested decision, it makes a procedural error in breach of the principle of sound administration.
In the light of the requirement imposed on EUIPO to take into account decisions already taken and to consider with particular care whether it should decide in the same way or not, the earlier decision of the Board of Appeal, in which it was acknowledged that the earlier mark had acquired substantial reputation throughout the European Union, was clearly an indication that that mark might have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. By refusing to examine such evidence on the ground that it was submitted out of time, the Board of Appeal failed to examine a potentially relevant factor in the application of that provision. Therefore, the Board of Appeal should, in accordance with its duty of sound administration, have accepted the evidence of the earlier mark’s reputation submitted for the first time before it, if only to refute that evidence.
(see paras 65-68, 77, 79)
4. See the text of the decision.
(see para. 74)
5. See the text of the decision.
(see para. 75)
6. See the text of the decision.
(see para. 80)