JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
18 September 2015 (*)
(Community trade mark — Invalidity proceedings — Community figurative mark COLOMBIANO COFFEE HOUSE — Earlier protected geographical indication Café de Colombia — Articles 13 and 14 of Regulation (EC) No 510/2006 — Relative ground for refusal — Article 8(4) of Regulation (EC) No 207/2009)
In Case T‑359/14,
Federación Nacional de Cafeteros de Colombia, established in Bogota (Colombia), represented by A. Pomares Caballero and M. Pomares Caballero, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Accelerate s.a.l., established in Beirut (Lebanon),
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 27 March 2014 (Case R 1200/2013-5) relating to invalidity proceedings between the Federación Nacional de Cafeteros de Colombia and Accelerate s.a.l.,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 27 May 2014,
having regard to the response lodged at the Court Registry on 22 October 2014,
having regard to the decision of 1 December 2014 refusing leave to lodge a reply,
further to the hearing on 6 March 2015,
gives the following
Judgment
Background to the dispute
1 On 9 December 2010, Accelerate s.a.l. obtained from the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) registration, under No 004635553, of the following figurative Community trade mark:
2 That registration had been applied for on 5 October 2005.
3 The goods and services in respect of which the mark COLOMBIANO COFFEE HOUSE was registered are in Classes 30 and 43 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 30: ‘Tea, cocoa, sugar, rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice’;
– Class 43: ‘Services for providing food and drink; temporary accommodation’.
4 On 26 December 2011, the applicant, the Federación Nacional de Cafeteros de Colombia (National Federation of Coffee Growers of Colombia) filed an application with OHIM for a declaration of invalidity of the trade mark COLOMBIANO COFFEE HOUSE pursuant to Article 7(1)(g) and (k) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), read in conjunction with Article 52(1)(a) of that regulation, and to Article 8(4) of Regulation No 207/2009, read in conjunction with Article 53(1)(c) of that regulation.
5 The application for a declaration of invalidity was based on the Protected Geographical Indication (PGI) ‘Café de Colombia’, registered in the European Union under Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ 2006 L 93, p. 12). The application for registration of the PGI ‘Café de Colombia’ was made to the Commission on 8 June 2005 and granted for ‘coffee’ by Commission Regulation (EC) No 1050/2007 of 12 September 2007 registering certain names in the Register of protected designations of origin and protected geographical indications (Mejillón de Galicia or Mexillón de Galicia (PDO) — Café de Colombia (PGI) — Castagna Cuneo (PGI) — Asparago Bianco di Bassano (PDO)) (OJ 2007 L 240, p. 7).
6 By decision of 26 April 2013, the Cancellation Division of OHIM rejected the application for a declaration of invalidity.
7 On 25 June 2013, the applicant filed a notice of appeal before OHIM against the Cancellation Division’s decision.
8 By decision of 27 March 2014 (‘the contested decision’), the Fifth Board of Appeal of OHIM upheld the appeal in part. It rejected the application for a declaration of invalidity in so far as it was based on Article 8(4) of Regulation No 207/2009, read in conjunction with Article 53(1)(c) of that regulation, and Article 7(1)(k) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) of that regulation. However, it upheld the application for a declaration of invalidity on the basis of Article 7(1)(g) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) of that regulation, for part of the goods covered by the contested mark, namely in respect of ‘tea; cocoa; sugar’ in Class 30 and dismissed the application as to the remainder. The Board of Appeal held that there was a sufficiently serious risk of the relevant public, namely, the general public, being misled as regards a specific characteristic presented by ‘tea; cocoa; sugar’, covered by the contested mark, namely, that those goods originate in Colombia.
Forms of order sought by the parties
9 The applicant claims that the Court should:
– vary the contested decision by granting the application for a declaration of invalidity in respect of all the goods and services referred to therein;
– in the alternative, annul the contested decision inasmuch as it rejected the application for a declaration of invalidity;
– order OHIM to pay the costs.
10 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
11 In support of its action, the applicant raises five pleas in law, alleging, first, infringement of Article 14 of Regulation No 510/2006, second, infringement of Article 8(4) of Regulation No 207/2009, read in conjunction with Article 13 of Regulation No 510/2006, third, infringement of the obligation to state reasons, fourth, infringement of Article 7(1)(k) of Regulation No 207/2009 and fifth, infringement of Article 7(1)(g) of Regulation No 207/2009.
12 It is appropriate first of all to examine the third plea in law and then the second plea.
The third plea in law, alleging infringement of the obligation to state reasons
13 The applicant claims that the Board of Appeal infringed its obligation to state the reasons on which its decisions are based by failing to provide a response in the contested decision to the applicant’s arguments concerning the Cancellation Division’s erroneous application of Article 13(1) of Regulation No 510/2006. The applicant considers that it was unable to ascertain the reasons why the Board of Appeal did not apply Article 13(1) of Regulation No 510/2006.
14 Under Article 75 of Regulation No 207/2009, decisions of OHIM must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that deriving from Article 296 TFEU, as consistently interpreted in case-law, according to which the statement of reasons must disclose, clearly and unequivocally, the reasoning of the author of the measure, in such a way as to enable, on the one hand, interested parties to ascertain the reasons for the measure adopted in order to enable them to protect their rights, and, on the other hand, the European Union judicature to exercise its power to review the legality of the decision (judgments of 21 October 2004 in KWS Saat v OHIM, C‑447/02 P, ECR, EU:C:2004:649, paragraphs 64 and 65, and 25 October 2012 in riha v OHIM — Lidl Stiftung (VITAL&FIT), T‑552/10, EU:T:2012:576, paragraph 18).
15 However, in stating the reasons for the decisions which they are called upon to make, the Boards of Appeal are not obliged to take a view on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (judgment of 12 November 2008 in Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T‑7/04, ECR, EU:T:2008:481, paragraph 81, and VITAL&FIT, cited in paragraph 16 above, EU:T:2012:576, paragraph 26).
16 In the contested decision, the Board of Appeal, when considering the application for a declaration of invalidity in so far as it was based on Article 8(4) of Regulation No 207/2009, indicated that the earlier right invoked was a PGI under Regulation No 510/2006. It noted that it was appropriate to establish first of all whether or not the PGI guaranteed, on the basis of Regulation No 510/2006, the invalidity of the contested Community trade mark. The Board of Appeal noted that Article 14 of Regulation No 510/2006 established three cumulative conditions for Article 8(4) of Regulation No 207/2009 to be applicable, namely, first, that the filing date of the PGI should be earlier than that of the trade mark application, second, that the PGI and the contested mark relate to the same class of product and third, that one of the situations described in Article 13(1) of Regulation No 510/2006 should exist.
17 The Board of Appeal considered that the first condition was satisfied, since the application for registration of the contested Community trade mark was filed after the application for registration of the PGI. It then stated that it was appropriate to consider the second condition, that is, to determine whether the goods and services covered by the contested mark come within the ‘same class of product’ as the coffee covered by the PGI ‘Café de Colombia’. Following its assessment, the Board of Appeal concluded that that condition in Article 14 of Regulation No 510/2006 was not met and that, given that the conditions were cumulative, the application for invalidity based on Article 8(4) of Regulation No 207/2009, read in conjunction with Article 53(1)(c) of that regulation and Articles 13 and 14 of Regulation No 510/2006, had to be rejected.
18 It must be held that, by that reasoning, the Board of Appeal presented sufficiently clearly the reasons why it considered that, one of the cumulative conditions of Article 14 of Regulation No 510/2006 not having been met, namely, that the contested mark did not relate to the ‘same class of product’ as the PGI, there was no need to consider whether the application for a declaration of invalidity of that mark corresponded to one of the situations referred to in Article 13 of that regulation.
19 It follows that the applicant was in a position to understand the reasons why the Board of Appeal held that there was no need to apply Article 13(1) of Regulation No 510/2006 and that the Board of Appeal responded adequately to its arguments in that respect.
20 The third plea in law must therefore be rejected.
The second plea in law, alleging infringement of Article 8(4) of Regulation No 207/2009, read in conjunction with Article 13 of Regulation No 510/2006
21 The applicant claims that the Board of Appeal wrongly applied Article 14(1) of Regulation No 510/2006, read in conjunction with Article 8(4) of Regulation No 207/2009, when it should have applied Article 13 of Regulation No 510/2006. The Board of Appeal therefore wrongly rejected the application for a declaration of invalidity on the ground that the requirement laid down by Article 14 of Regulation No 510/2006, according to which the contested mark had to relate to the ‘same class of product’ as the PGI, was not met. The applicant submits that, had the Board of Appeal applied Article 8(4) of Regulation No 207/2009, read in conjunction with Article 13 of Regulation No 510/2006, it would have granted the application for a declaration of invalidity.
22 Article 8(4) of Regulation No 207/2009 provides:
‘Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.’
23 According to Article 8(4) of Regulation No 207/2009, read in conjunction with Article 41(1)(c) of that regulation, the existence of a sign other than the mark allows opposition to the registration of a Community mark where that sign fulfils four conditions cumulatively: that sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of the application for registration of the Community trade mark, or, as the case may be, the date of priority claimed in respect of the application for registration of the Community trade mark; and, lastly, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those four conditions limit the number of signs other than marks which may be relied on to dispute the validity of a Community trade mark throughout the European Union under Article 1(2) of Regulation No 207/2009 (judgments of 24 March 2009 in Moreira da Fonseca v OHIM-General Óptica (GENERAL OPTICA), T‑318/06 to T‑321/06, ECR, EU:T:2009:77, paragraph 32, and 14 September 2011 in Olive Line International v OHIM — Knopf (O-live), T‑485/07, EU:T:2011:467, paragraph 49).
24 It is apparent from the expression ‘where and to the extent that, pursuant … to the law of the Member State governing that sign’, that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is entirely justified, given that Regulation No 207/2009 makes it possible for signs which fall outside the Community trade mark system to be relied on against a Community trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the Community trade mark and whether it can justify a prohibition of the use of a subsequent trade mark (judgments in GENERAL OPTICA, cited in paragraph 23 above, EU:T:2009:77, paragraph 34, and of 7 May 2013 in macros consult v OHIM — MIP Metro (makro), T‑579/10, ECR, EU:T:2013:232, paragraph 56).
25 In the present case, it is undisputed that the earlier right relied on in support of the application for a declaration of invalidity is the PGI ‘Café de Colombia’, which is governed by Regulation No 510/2006. It is also undisputed that that PGI, the application for registration for which was filed on 8 June 2005, has priority over the contested mark, registration for which was filed on 5 October 2005.
26 It was therefore incumbent on the Board of Appeal to take account of Regulation No 510/2006 in order to determine whether it conferred on a PGI’s proprietor the right to prohibit the use of a subsequent trade mark and thus assess whether, on the basis of that regulation, the applicant could request a declaration of invalidity of the contested mark.
27 Article 13 of Regulation No 510/2006, entitled ‘Protection’, provides, at paragraph 1 thereof:
‘Registered names shall be protected against:
(a) any direct or indirect commercial use of a registered name in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name or in so far as using the name exploits the reputation of the protected name;
(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” or similar;
(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;
(d) any other practice liable to mislead the consumer as to the true origin of the product.
Where a registered name contains within it the name of an agricultural product or foodstuff which is considered generic, the use of that generic name on the appropriate agricultural product or foodstuff shall not be considered to be contrary to points (a) or (b) in the first subparagraph.’
28 Article 14 of Regulation No 510/2006, entitled ‘Relations between trademarks, designations of origin and geographical indications’ provides, at paragraph 1 thereof:
‘Where a designation of origin or a geographical indication is registered under this Regulation, the application for registration of a trademark corresponding to one of the situations referred to in Article 13 and relating to the same class of product shall be refused if the application for registration of the trademark is submitted after the date of submission of the registration application to the Commission.
Trademarks registered in breach of the first subparagraph shall be invalidated.’
29 It should be recalled that, in the contested decision, the Board of Appeal stated that it was appropriate to establish first of all whether or not the PGI guaranteed, on the basis of Regulation No 510/2006, the invalidity of the contested mark. It considered that the three cumulative conditions laid down by Article 14 of Regulation No 510/2006 had to be met for Article 8(4) of Regulation No 207/2009 to be applicable.
30 The applicant considers that Article 8(4)(b) of Regulation No 207/2009 does not require the legislation governing the sign to enable its proprietor to ‘cancel’ a trade mark, but only to prohibit its ‘use’. Accordingly, pursuant to Article 8(4)(b) of Regulation No 207/2009, the following conditions must be examined: whether the PGI ‘Café de Colombia’ was used in the course of trade, which was of more than mere local significance, whether the rights were acquired before the date of submission of the Community trade mark application, and whether, in accordance with Regulation No 510/2006, that PGI enabled its proprietor to prohibit the use of the contested mark. That last condition is not provided for in Article 14 of Regulation No 510/2006 but in Article 13 of that regulation, which defines the scope of the protection conferred on PGIs. It adds that that interpretation is also borne out by the General Court’s case-law.
31 According to the applicant, the function of Article 14 of Regulation No 510/2006 differs from that of Article 8(4) of Regulation No 207/2009. Article 14 of Regulation No 510/2006 lays down an absolute prohibition of registration that can be declared by OHIM ex officio and is applicable when the absolute grounds for refusal are examined. That article does not require registration to be refused upon ‘opposition of the proprietor’ of the earlier right, unlike Article 8(4) of Regulation No 207/2009 which governs the procedures concerning relative grounds of refusal. The applicant refers to the new OHIM Guidelines for Examination in the Office for Harmonisation in the Internal Market (Trade Marks and Designs) on Community Trade Marks and on Registered Community Designs, adopted by decision of its President of 13 June 2014, which entered into force on 1 August 2014 (‘the OHIM Guidelines’), and in particular the part relating to Article 8(4) of Regulation No 207/2009, which confirms the interpretation according to which that provision must be read in conjunction with Article 13 of Regulation No 510/2006.
32 OHIM contends that Article 14 of Regulation No 510/2006 is a specific provision governing the relationship between marks and PGIs and defines the scope of protection conferred on a PGI in conflict with a trade mark application. Article 14(1) of Regulation No 510/2006 is the substantive provision applicable to an application for a declaration of invalidity based on a PGI.
33 According to OHIM, it follows from the position of the applicant that the scope of the protection conferred on PGIs differs depending on whether the case concerns an ex officio examination of the absolute grounds for refusal or an examination as part of inter partes proceedings. OHIM adds that, however, if it is held that the concept of ‘same class of product’ in Article 14 of Regulation No 510/2006 and that of ‘comparable products’ in Article 13 of that regulation are equivalent, the overlap between the two provisions would be wider and the differences in the scope of the protection would be less pronounced. That would appear to be the practice followed by the Board of Appeal. The latter, by using the criteria established by the Court of Justice for the concept of ‘comparable products’ in order to define the concept of ‘same class of product’, applies the same criteria in both situations. Accordingly, OHIM argues that the outcome of the proceedings would have been the same even if Article 13(1) of that regulation had been applied directly to the present case.
34 It should be recalled that, in the present case, the application for a declaration of invalidity was formed on the basis of Article 8(4) of Regulation No 207/2009, read in conjunction with Article 53(1)(c) of that regulation, which provides that a trade mark is to be declared invalid where the legislation governing the sign relied on in support of the application for a declaration of invalidity ‘confers on its proprietor the right to prohibit the use of a subsequent trade mark’.
35 The protection conferred on PGIs against the commercial use of a protected name stems from Article 13(1) of Regulation No 510/2006.
36 Accordingly, in the case of an application for a declaration of invalidity based on a PGI, as in the present case, in order to enable the Board of Appeal to give a ruling, it is appropriate that Article 8(4) of Regulation No 207/2009 and Article 13(1) of Regulation No 510/2006 be applied in combination.
37 That is borne out in the case-law, from which it emerges that Article 8(4) of Regulation No 207/2009 provides that, pursuant to the applicable national law, the sign in question must confer on its proprietor the right to prohibit the ‘use’ of a subsequent trade mark, but does not require that, pursuant to the applicable national law, the sign in question must confer on its proprietor the right to prohibit the ‘registration of a trade mark’ (judgments of 12 June 2007 in Budějovický Budvar and Anheuser-Busch v OHIM (BUDWEISER and AB GENUINE Budweiser KING OF BEERS), T‑57/04 and T‑71/04, ECR, EU:T:2007:168, paragraph 95, and 12 June 2007 in Budějovický Budvar v OHIM — Anheuser-Busch (BUD), T‑60/04 to T‑64/04, EU:T:2007:169, paragraph 78).
38 Moreover, as regards OHIM’s argument that the Court of Justice held that ‘Article 14 of Regulation No 2081/92 [now Article 14 of Regulation No 510/2006] specifically governs the relationship between names registered under the regulation and trade marks’ (judgment of 4 March 1999 in Consorzio per la tutela del formaggio Gorgonzola, C‑87/97, ECR, EU:C:1999:115, paragraph 21) and according to which that article would therefore constitute a lex specialis applicable when a PGI is in conflict with an application for registration of a trade mark, suffice it to note that that judgment of the Court of Justice did not concern proceedings brought before OHIM on the basis of Article 8(4) of Regulation No 207/2009. OHIM cannot take a general statement out of context in order to claim that it also applies to the present case.
39 It must therefore be held that the Board of Appeal erred in applying the provisions of Article 14 of Regulation No 510/2006 in the context of the application for a declaration of invalidity filed by the applicant on the basis of Article 8(4) of Regulation No 207/2009, read in conjunction with Article 53(1)(c) of that regulation.
40 Furthermore, it should be noted that the interpretation according to which Article 14 of Regulation No 510/2006 is not applicable in the context of invalidity proceedings based on Article 8(4) of Regulation No 207/2009 is borne out by the OHIM Guidelines. Those guidelines, although they lack binding force, are a reference source on OHIM’s practice in respect of trade marks.
41 The guidelines relating to proceedings before OHIM, published on its internet site, are a consolidated set of rules setting out the line of conduct which OHIM itself proposes to adopt, with the result that, provided that those rules are consistent with legal provisions of higher authority, they constitute a self-imposed restriction on OHIM, namely that of compliance with the rules which it has itself laid down (see judgment of 25 October 2012 in Automobili Lamborghini v OHIM — Miura Martínez (Miura), T‑191/11, EU:T:2012:577, paragraph 30 and the case-law cited, and order of 24 October 2013 in Stromberg Menswear v OHIM — Leketoy Stormberg Inter (STORMBERG), T‑457/12, EU:T:2013:576, paragraph 41).
42 As regards Article 8(4) of Regulation No 207/2009, the OHIM Guidelines indicate that protection is conferred on PGIs in the European Union, in particular as regards foodstuffs and non-food agricultural products, by Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (OJ 2012 L 343, p. 1), which repeals and replaces Regulation No 510/2006. Article 13(1) and Article 14 of Regulation No 1151/2012 contain provisions equivalent to Article 13(1) and Article 14 of Regulation No 510/2006, respectively.
43 It is true that those guidelines relating to Article 8(4) of Regulation No 207/2009 came into force on 1 August 2014, that is to say, after the adoption of the contested decision and after the adoption of Regulation No 1151/2012. However, it should be noted, first, that those guidelines are designed to bring together the practices stemming from, in particular, the decisions of the Courts of the European Union and OHIM and were drafted to reflect OHIM’s practice and, second, that they refer to provisions (Article 13(1) and Article 14 of Regulation No 1151/2012) equivalent to the provisions applicable to the present case (Article 13(1) and Article 14 of Regulation No 510/2006). The fact, as OHIM argues, that they are to be applied only after their entry into force cannot prevent the Court from referring to them in order to understand OHIM’s position on the interpretation of certain provisions.
44 In that regard, it should be noted that those guidelines do not contain any indication that they constitute a fresh interpretation of Article 8(4) of Regulation No 207/2009 after the adoption of Regulation No 1151/2012. In addition, they also expressly refer to the judgments of the Court of Justice and the General Court before the adoption of Regulation No 1151/2012. Therefore, the mere assertion of OHIM that those guidelines constitute a new approach, closer to the position of the applicant, cannot be accepted, not being borne out by the content of those guidelines.
45 As regards PGIs, the OHIM Guidelines state:
‘Earlier rights that are registered or applied for as PGIs under [inter alia Regulation No 1151/2012] (which can even include PGIs from third countries), can constitute a “sign used in the course of trade” under Article 8(4) [of Regulation No 207/2009] and may be a valid basis for an opposition to the extent that they allow the proprietor to prevent use of a subsequent mark.’
46 Concerning the scope of the protection conferred on PGIs, the OHIM Guidelines state:
‘The ability of PGIs to prevent use is governed by the relevant provisions of the EU Regulations ([Article 13 of Regulation No 1151/2012] …). In this context, it is important to distinguish the latter provisions preventing use from those that prevent registration of a trade mark [Article 14 of Regulation No 1151/2012] and which are not a basis for opposition under Article 8(4) [of Regulation No 207/2009]. Therefore, under Article 8(4) [of Regulation No 207/2009], a PGI can prevail if the conditions set out in the provisions preventing use are met, [which] are
– the contested [Community trade mark application] exclusively consists of the whole PGI or adds other words or figurative elements (direct or indirect use) for comparable products or, even for non-comparable products, if the use of the PGI exploits the reputation of the protected name
– the contested [Community trade mark application] contains or consists of an imitation or of an evocation of the PGI
– other misleading indications and practices.’
47 Accordingly, it is clear from the OHIM Guidelines that Article 13 of Regulation No 510/2006 must be regarded as relating to opposition and invalidity proceedings based on Article 8(4) of Regulation No 207/2009, whereas Article 14 of Regulation No 510/2006 must be regarded as concerning the proceedings relating to the absolute grounds for refusal based on Article 7(1)(k) of Regulation No 207/2009.
48 Finally, OHIM claims that, even assuming that the Board of Appeal had applied Article 13 of Regulation No 510/2006, it would have adopted an identical position. OHIM submits that the application of Article 13(1)(a) of Regulation No 510/2006 would not have changed the position adopted by the Board of Appeal, since the latter equates the concept of ‘comparable products’ in that provision to that of ‘same class of product’ in Article 14 of that regulation. According to OHIM, the situation in which the use of a trade mark enables the reputation of the PCI to be exploited, laid down in Article 13(1)(a) of Regulation No 510/2006, does not apply where the PGI is not used as such in the contested mark, but is merely imitated or evoked. In the present case, the contested mark does not reproduce the PGI ‘Café de Colombia’. OHIM also submits that the application of Article 13(1)(b) of Regulation No 510/2006 would not have changed the position adopted by the Board of Appeal, in so far as, when situations of imitation or evocation are invoked, this supposes that the products covered by the contested mark are identical to those covered by the PGI. In the present case, the contested mark does not cover the same products.
49 It is true that it is apparent from the case-law that an error made by the Board of Appeal can lead to the annulment of the contested decision only if it is decisive as to the assessment of that decision. If, in the particular circumstances of the case, an error could not have had a decisive effect on the outcome, the argument based on such an error is nugatory and thus cannot suffice to justify the annulment of the contested decision (see judgment of 9 March 2012 in Colas v OHIM — García-Teresa Gárate and Bouffard Vicente (BASE-SEAL), T‑172/10, EU:T:2012:119, paragraph 50 and the case-law cited).
50 However, it should be noted that, in support of its application for a declaration of invalidity, the applicant relied on the application of other situations than that of Article 13(1)(a) of Regulation No 510/2006 relating to the use of a PGI for comparable products and the use of the PGI in order to exploit its reputation and that of Article 13(1)(b) of Regulation No 510/2006 on the evocation of the PGI. It also invoked Article 13(1)(c) of Regulation No 510/2006 relating to the situation where the contested mark is a misleading indication as to the nature or essential qualities of the product and Article 13(1)(d) of that regulation relating to the situation where the mark applied for is likely to mislead the consumer.
51 Consequently, OHIM’s argument that the position adopted by the Board of Appeal would have been the same had it applied Article 13(1)(a) and (b) of Regulation No 510/2006 does not relate to all the situations invoked by the applicant in support of its application for a declaration of invalidity and therefore it cannot be concluded that the Board of Appeal rejected the application for a declaration of invalidity in respect of all the situations invoked by the applicant.
52 It follows that the error committed by the Board of Appeal in so far as it applied Article 14 of Regulation No 510/2006, and not Article 13 of that regulation, is liable to have a decisive effect on the outcome of the application for a declaration of invalidity. The Board of Appeal, by failing to apply Article 13 of Regulation No 510/2006, did not examine whether the application for a declaration of invalidity could be upheld in so far as it was based on the various situations covered by that provision invoked by the applicant.
53 Since those questions were not examined by the Board of Appeal, it is not for this Court to rule on them, for the first time, in its review of the legality of the contested decision (see, to that effect, judgments of 5 July 2011 in Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraphs 72 and 73; 14 December 2011 in Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, ECR, EU:T:2011:739, paragraph 63, and 29 March 2012 in You-Q v OHIM — Apple Corps (BEATLE), T‑369/10, EU:T:2012:177, paragraph 75 and the case-law cited).
54 Accordingly, the second plea in law must be upheld, and, therefore, the contested decision must be annulled in so far as it rejected the applicant’s application for a declaration of invalidity, without it being necessary to examine the first plea in law put forward by the applicant or give a ruling on its first head of claim seeking, in essence, the variation of the contested decision.
Costs
55 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Annuls the decision of the Fifth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 27 March 2014 (Case R 1200/2013-5) in so far as it rejected the application for a declaration of invalidity;
2. Orders OHIM to bear its own costs and to pay those incurred by the Federación Nacional de Cafeteros de Colombia.
Van der Woude | Wiszniewska-Białecka | Ulloa Rubio |
Delivered in open court in Luxembourg on 18 September 2015.
[Signatures]