Case T-420/03
El Corte Inglés, SA
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Community trade mark – Opposition proceedings – Application for registration of the Community figurative mark BoomerangTV – Earlier national and Community word and figurative marks BOOMERANG and Boomerang – Relative grounds for refusal – No likelihood of confusion – No well-known trade mark within the meaning of Article 6bis of the Paris Convention – No damage to reputation – Failure to produce evidence before the Opposition Division of the existence of certain earlier trade marks or translations thereof – Production of evidence for the first time before the Board of Appeal – Article 8(1)(b) and (2)(c), Article 8(5) and Article 74(2) of Regulation (EC) No 40/94 – Rule 16(2) and (3), Rule 17(2) and Rule 20(2) of Regulation (EC) No 2868/95)
Summary of the Judgment
1. Community trade mark – Appeals procedure – Appeal brought against a decision of the Opposition Division of the Office – Examination by Board of Appeal
(Council Regulation No 40/94, Art. 74(2))
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 – Recognition of the validity of the registration of the earlier mark by the trade mark applicant
(Council Regulation No 40/94, Art. 8)
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
(Council Regulation No 40/94, Art. 8(1)(b))
1. Under Article 74(2) of Regulation No 40/94 on the Community trade mark, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) may disregard facts or evidence which are not submitted in due time by the parties concerned.
It follows that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the passing of the time‑limits to which such submission is subject under the provisions of that regulation and that the Office is in no way prohibited from taking account of facts and evidence which are submitted or produced late. However, a party has no unconditional right to have such facts and evidence submitted out of time taken into consideration by the Office. In stating that the latter ‘may’, in such a case, decide to disregard those facts and that evidence, Article 74(2) of that regulation grants the Office a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account.
Where the Office is called upon to give judgment in the context of opposition proceedings, taking facts or evidence submitted out of time into account is particularly likely to be justified where the Office considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account.
There is no need, in principle, to restrict the application of the abovementioned principles on the basis of the nature of the facts and evidence in question, since no such restriction is provided for in Article 74(2) of Regulation No 40/94. The nature of the facts and evidence at issue is, nevertheless, a factor which the Office may take into account when exercising the discretion granted to it under that provision.
(see paras 40-43)
2. Article 8 of Regulation No 40/94 on the Community trade mark provides, essentially, that a relative ground for refusal of registration of a Community trade mark exists only if there is a conflict between the Community trade mark for which registration is sought and another earlier mark. It is for the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to ascertain, on the basis of evidence which it is up to the opponent to produce, the existence of the national mark relied on in support of the opposition. The issue of the existence of an earlier mark is thus not a factor which can be left to the free assessment of the parties. Consequently, even on the assumption that the trade mark applicant has actually recognised the ‘validity’ of the registration of an earlier mark, or indeed that of other earlier rights, that fact does not place the Opposition Division and the Board of Appeal under an obligation to hold that the existence of those rights has been proved.
(see para. 77)
3. There is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark between the figurative sign BoomerangTV, for which registration is sought as a Community trade mark for ‘Telecommunications; services of radio and television programmes; radio and television broadcasting and diffusion’ and ‘Educational, formative and entertainment services; cinema and recording studies, rent of videos, concourse (scattering), installation of televisions and radiophones, production of films’ in Classes 38 and 41 of the Nice Agreement respectively, and the Boomerang figurative marks registered earlier in Spain for goods in Classes 8, 11, 16, 18, 25 and 28 and in Ireland and the United Kingdom for goods in Class 25, and the figurative mark Boomerang which is the subject of a Community trade mark application for a range of goods in Classes 3, 18 and 25 of that Agreement.
The goods covered by the earlier rights differ by their nature, their intended purpose and their method of use from the services in respect of which registration of the mark BoomerangTV has been applied for. In addition, those goods and those services are not in any way in competition with each other or complementary. The fact that some of the goods covered by the earlier rights might be used for the purposes of promoting the services in respect of which registration of the trade mark BoomerangTV has been applied for, or that the sports sector, under which several earlier rights might fall, might be linked to that of television productions, in which the trade mark applied for falls, cannot undermine that finding. Such connections are too imprecise and coincidental to allow the conclusion that the goods and services in question are complementary.
(see paras 99-100)