JUDGMENT OF THE GENERAL COURT (Third Chamber)

14 May 2019 (*)

(EU trade mark — Opposition proceedings — Applications for the EU word and figurative marks Café del Sol and CAFE DEL SOL — Earlier national figurative mark Café del Sol — Proof of the existence, validity and scope of protection of the earlier mark — Translation — Rights of the defence – Article 95(2) of Regulation 2017/1001)

In Joined Cases T‑89/18 and T‑90/18,

Ramón Guiral Broto, residing in Marbella (Spain), represented by J.L. de Castro Hermida, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by P. Sipos, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Gastro & Soul GmbH, established in Hildesheim (Germany),

ACTIONS brought against the decisions of the Fourth Board of Appeal of EUIPO of 4 December 2017 (Cases R 1095/2017-4 and R 1096/2017-4), relating to opposition proceedings between Mr Guiral Broto and Gastro & Soul,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, V. Kreuschitz (Rapporteur) and N. Półtorak, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 19 February 2018,

having regard to the response lodged at the Court Registry on 3 August 2018,

having regard to the decision of 17 September 2018 joining Cases T‑89/18 and T‑90/18 for the purposes of the written part of the procedure, any oral part of the procedure and the decision which closes the proceedings,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure,

gives the following

Judgment

 Background to the dispute

1        On 16 July 2007, Gastro & Soul GmbH filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)). Registration as a mark was sought for the following figurative sign:

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2        On 17 July 2007, Gastro & Soul GmbH filed another application for registration of an EU trade mark with EUIPO pursuant to Regulation No 40/94. Registration as a mark was sought for the word sign Café del Sol.

3        The goods and services in respect of which those registrations were sought are in Classes 30, 35, 41, 43 and 45 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.

4        The EU trade mark applications were published in Community Trade Marks Bulletin No 005/2008 of 4 February 2008.

5        On 30 April 2008, the applicant, Mr Ramón Guiral Broto, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 46 of Regulation 2017/1001) to registration of the marks applied for in respect of all the goods and services referred to in paragraph 3 above.

6        The opposition was based on, inter alia, the earlier Spanish figurative mark (‘the earlier mark’), registered on 20 April 2001, which is reproduced below:

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7        The earlier mark covered services in Class 42 of the Nice Agreement.

8        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation 2017/1001).

9        By decisions of 23 May 2014 and 28 August 2014, the Opposition Division partially upheld the opposition in respect of ‘services for providing of food and drink; temporary accommodation; outside catering’ in Class 43.

10      On 22 July 2014 and 27 October 2014, Gastro & Soul GmbH filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decisions of the Opposition Division in so far as the opposition had been partially upheld in those decisions.

11      By decisions of 16 July 2015 (Cases R 2755/2014-5 and R 1888/2014‑5), the Fifth Board of Appeal of EUIPO annulled the Opposition Division’s decisions and rejected the opposition in its entirety (‘the decisions of 16 July 2015’). It found that the applicant had not duly proved the existence and validity of his earlier mark within the time limit set by the Opposition Division.

12      On 22 September 2015, the applicant brought an action for annulment of those decisions before the General Court.

13      By judgments of 13 December 2016, Guiral Broto v EUIPO — Gastro & Soul (CAFE DEL SOL) (T‑549/15, not published, EU:T:2016:719), and of 13 December 2016 Guiral Broto v EUIPO — Gastro & Soul (Café del Sol) (T‑548/15, not published, EU:T:2016:720), the Court annulled the decisions of 16 July 2015 on the ground that the Board of Appeal had not respected the applicant’s right to be heard. The Court held that, by raising of its own motion the incompleteness of the translation of the earlier figurative mark in order to reject the applicant’s opposition without previously having heard him on that issue, the Board of Appeal had infringed his right to be heard.

14      By decision of 23 May 2017, the Presidium of the Boards of Appeal referred the cases to the Fourth Board of Appeal.

15      On 3 August 2017, the chairperson of the Fourth Board of Appeal invited the applicant comment on the reasons why the Fifth Board of Appeal had upheld the appeal in its decisions of 16 July 2015 and on the consequences to be drawn from the judgments of 13 December 2016, CAFE DEL SOL (T‑549/15, not published, EU:T:2016:719), and of 13 December 2016 Café del Sol (T‑548/15, not published, EU:T:2016:720) (‘the communication of 3 August 2017’). Furthermore, in that communication, the chairperson of the Fourth Board of Appeal stated that that communication did not comprise any invitation to file additional documents at that stage of the proceedings and that the Board of Appeal reserved the right to reject any additional evidence presented outwith the time limit set.

16      On 8 September 2017, the applicant submitted its observations to the Fourth Board of Appeal in response to the communication of 3 August 2017.

17      By decisions of 4 December 2017 (‘the contested decisions’), the Fourth Board of Appeal found that the opposition was unfounded and allowed the marks applied for to proceed to registration also with respect to the ‘services for providing of food and drink; temporary accommodation; outside catering’ in Class 43. It justified that conclusion by finding, in essence, that, as the applicant had submitted only an incomplete translation of his earlier mark, he had not sufficiently proved the existence of that mark.

 Forms of order sought

18      The applicant claims that the Court should:

–        annul and quash the contested decisions on the basis of the arguments put forward in the application and declare the opposition based on the earlier trade mark to be well founded;

–        confirm the decisions of the Opposition Division or, if the Court lacks jurisdiction, refer the matter back to the Board of Appeal ordering it to consider the opposition to be well founded;

–        in the alternative, quash and annul the contested decisions on grounds of inconsistency, infringement of the rights of the defence and infringement of the principle of legal certainty and refer the cases back to the Board of Appeal.

19      EUIPO contends that the Court should:

–        dismiss the actions;

–        order the applicant to pay the costs.

 Law

20      In support of the actions, the applicant relies on three pleas in law. The first plea is based on the adequacy of the documentation substantiating the earlier mark. The second plea alleges inconsistency, infringement of the rights of the defence and infringement of the principle of legal certainty on account of the Fourth Board of Appeal’s position regarding the possibility of filing a complete translation of the earlier mark. The third plea alleges that the rules laying down the formal requirements are subordinate, instrumental and auxiliary in nature and that it is possible to remedy irregularities.

21      The Court considers it appropriate to examine the second plea first.

22      The applicant submits that EUIPO infringed his rights of defence and the principle of legal certainty by communicating to him contradictory information regarding the possibility of submitting additional documents in the course of the proceedings that preceded the adoption of the contested decisions.

23       The applicant maintains that it was only as a result of the warning set out in the communication of 3 August 2017 that he did not provide a full translation of the certificate in respect of the earlier mark and that the Board of Appeal manifestly infringed obligations concerning the consistency of decisions, the protection of legal certainty and his rights of defence by criticising him for having failed to provide a complete translation.

24      According to EUIPO, the Board of Appeal properly heard the applicant on the irregularity of the translation of the registration certificate and the resulting lack of substantiation of the mark at issue. It submits that that is what the Board of Appeal did by issuing the communication of 3 August 2017.

25      EUIPO maintains that the communication of 3 August 2017 did not contain a definitive warning that a translation would be rejected as inadmissible. It submits that the sentence ‘[t]he Board reserves the right to reject any additional evidence presented now as late’ did not presuppose that any document submitted later would irremediably be declared inadmissible. It asserts that the sentences ‘[p]roof of use has been given for the earlier mark, which might eventually have to be examined. The opponent may also comment on the proof of use issue’ indicated that the earlier mark could eventually be found to be substantiated.

26      Furthermore, EUIPO submits that the chairperson of the Board of Appeal was not competent to decide on his own on the admissibility of a substantiating document that was filed late. According to EUIPO, that matter falls within the competence of the Board of Appeal as a collective body.

27      It maintains that the applicant is exclusively accountable for the error of considering that the chairperson of the Board of Appeal could decide, in advance, on the admissibility of a document that had not even been filed. EUIPO submits that even if the applicant misunderstood the chairperson’s communication, nothing prevented him from submitting a complete translation of the registration certificate anyway, by way of precaution, for example.

28      Consequently, EUIPO maintains that the contested decisions were adopted in accordance with Article 72(6) and Article 94 of Regulation 2017/1001.

29      It is necessary to bear in mind the settled case-law according to which, as is confirmed by Articles 41, 47 and 48 of the Charter of Fundamental Rights of the European Union, the rights of the defence, which include the right to be heard, are very prominent and have broad scope in the legal order of the European Union, and those rights must apply in all proceedings which are liable to culminate in a measure adversely affecting a person. Moreover, those rights must be respected even where the applicable legislation does not expressly provide for such a procedural requirement. The right to be heard thus guarantees every person the opportunity to make known his views effectively during an administrative procedure and before the adoption of any decision liable to affect his interests adversely (see, to that effect, judgments of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 74, and of 18 June 2014, Spain v Commission, T‑260/11, EU:T:2014:555, paragraph 62 and the case-law cited).

30      The right to be heard extends to all the matters of fact or of law which form the basis for the decision-making act, but not to the final position which the authority intends to adopt (see judgment of 23 September 2015, Mechadyne International v OHIM (FlexValve), T‑588/14, not published, EU:T:2015:676, paragraph 13 and the case-law cited).

31      In the present case, following the judgments of 13 December 2016, CAFE DEL SOL (T‑549/15, not published, EU:T:2016:719), and of 13 December 2016, Café del Sol (T‑548/15, not published, EU:T:2016:720), which acknowledged that the applicant’s rights of defence had been infringed on the ground that he had not been heard on the incompleteness of the translation into the language of the proceedings of the earlier mark that gave rise to the opposition on which the decisions of the Fifth Board of Appeal rejecting his opposition were based, the cases were referred to the Fourth Board of Appeal by decisions of 23 May 2017.

32      Following a request by the applicant inquiring whether he was allowed to file other documents and asking to be informed of any deadlines in that regard, the chairperson of the Fourth Board of Appeal invited him in the communication of 3 August 2017 to submit his observations both regarding the reasons which had led the Fifth Board of appeal to reject his opposition and the consequences to be drawn from the judgments of 13 December 2016, CAFE DEL SOL (T‑549/15, not published, EU:T:2016:719), and of 13 December 2016, Café del Sol (T‑548/15, not published, EU:T:2016:720). The chairperson of the Fourth Board of Appeal stated that that invitation did not comprise an invitation to file additional documents and that the Board of Appeal reserved the right to reject any additional evidence as submitted late.

33      By giving the impression that the applicant was not permitted to file additional documents, the chairperson of the Fourth Board of Appeal failed to have regard to the scope of the judgments of 13 December 2016, CAFE DEL SOL (T‑549/15, not published, EU:T:2016:719), and of 13 December 2016, Café del Sol (T‑548/15, not published, EU:T:2016:720), which granted the applicant the opportunity of submitting to the Board of Appeal a translation into the language of the proceedings of the indications of colour in respect of the earlier mark.

34      Furthermore, by proceeding in the manner set out in paragraph 32 above, the chairperson of the Fourth Board of Appeal prevented the applicant from effectively submitting his views in the course of the administrative procedure.

35      As is apparent from the applicant’s observations of 8 September 2017, the communication of 3 August 2017 induced him not to include as an annex to his observations a translation into the language of the proceedings of the earlier mark on which his opposition was based. That communication therefore had an influence on the content of the applicant’s views and on the way in which he submitted them.

36      In the contested decisions, the Board of Appeal also stated that, in order for it to be able to exercise its discretion, it would have been for the applicant to submit a full translation and to explain why it had not been possible to submit a complete translation earlier (see paragraph 46 of the contested decisions). By inducing the applicant in the communication of 3 August 2017 not to submit that translation, the chairperson of the Fourth Board of Appeal infringed the applicant’s right effectively to submit his views for the purposes of his opposition and therefore to have the Board of Appeal exercise its discretion.

37      That finding is not called into question by EUIPO’s argument that the chairperson of the Fourth Board of Appeal’s statement of position does not bind the Board of Appeal. The chairperson of the Fourth Board of Appeal gave the applicant the impression that he had the competence to decide on his own whether it was possible to file documents at that stage of the proceedings. Furthermore, EUIPO’s arguments that that statement of position did not presuppose that any evidence submitted later would irremediably be declared inadmissible and that the applicant could comment on the proof of use issue do not alter the finding that the communication of 3 August 2017 misled the applicant as regards the possibility of submitting additional documents including a complete translation of the earlier mark and that that infringed his right effectively to submit his views before the Board of Appeal.

38      Moreover, if the applicant had submitted the translation in question, the Board of Appeal would have had to exercise its discretion under Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001).

39      That provision grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take evidence submitted late into account (see judgment of 19 April 2018, EUIPO v Group, C‑478/16 P, not published, EU:C:2018:268, paragraph 35 and the case-law cited).

40      The Court of Justice has stated in that regard that, even though Rule 50 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (replaced by Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 404, p. 1)) does not extend the discretion of the Boards of Appeal to new evidence, where evidence has been submitted within the time limit set by EUIPO the production of supplementary evidence remains possible (see, to that effect, judgment of 19 April 2018, EUIPO v Group, C‑478/16 P, not published, EU:C:2018:268, paragraph 37 and the case-law cited).

41      Consequently, if no evidence of the existence, validity and scope of protection of the mark at issue is submitted within the time limit set by EUIPO, the opposition must automatically be rejected. By contrast, if evidence has been submitted within the time limit set by the Office, the submission of supplementary evidence remains possible (see, to that effect, judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraphs 26 and 27).

42      New evidence is characterised by the absence of a link with another previously submitted document and by its late submission whereas additional or supplementary evidence is, on the other hand, evidence which supplements other evidence which has previously been submitted in due time (Opinion of Advocate General Campos Sánchez-Bordona in EUIPO v Group, C‑478/16 P, EU:C:2017:939, paragraph 60).

43      In order for the Board of Appeal to be able to exercise its discretion under Article 76(2) of Regulation No 207/2009, now Article 95(2) of Regulation 2017/1001, it is sufficient for the party concerned to have submitted, within the time limit set, some evidence that is relevant to proving the existence, validity and scope of protection of the earlier right, in accordance with Rule 19(2) of Regulation No 2868/95 (now Article 7(2) of Delegated Regulation 2018/625), even if that evidence is not sufficient to prove all those elements (Opinion of Advocate General Szpunar in OHIM v Grau Ferrer, C‑597/14 P, EU:C:2016:2, paragraph 93).

44      In the present case, it is common ground that the applicant submitted a reproduction of the earlier mark to the Opposition Division within the time limit set, but did not submit a translation of the indications ‘azul’ and ‘blanco’, and that it submitted a partial translation of the description of that mark to the Opposition Division within the time limit set. The applicant thus submitted some translations of that mark in order to prove its existence, validity and scope of protection. That evidence would have enabled the Board of Appeal to exercise its discretion under Article 76(2) of Regulation No 207/2009, now Article 95(2) of Regulation 2017/1001, if the applicant had submitted a full translation of the earlier mark and of the description of that mark.

45      That finding is not called into question by Rule 20(1) of Regulation No 2868/95 (now Article 8(1) and (7) of Delegated Regulation 2018/625), which states that the opposition is to be rejected as unfounded if the opposing party has not proved the existence, validity and scope of protection of the earlier mark, or by Rule 98(2)(a) of Regulation No 2868/95, which states that a document for which a translation is to be filed, the translation of which is not received by EUIPO within the time limit set is to be deemed not to have been received by EUIPO. The Board of Appeal cannot rely on those rules so as not to exercise the discretion granted to it by Article 76(2) of Regulation No 207/2009, now Article 95(2) of Regulation 2017/1001 for the purposes of taking into account facts and evidence that have been submitted out of time (see, to that effect, judgment of 16 November 2017, Galletas Gullón v EUIPO — Hug (GULLON DARVIDA), T‑456/16, not published, EU:T:2017:811, paragraph 38 and the case-law cited).

46      Furthermore, in the contested decision the Board of Appeal erred in stating that the filing of an incomplete translation permitted the inference that the original document was not received by EUIPO, with the result that only new evidence and not additional evidence could have been filed by the applicant. Under Rule 19(4) of Regulation No 2868/95 (now Article 7(5) of Delegated Regulation 2018/625), EUIPO is not to take into account parts of documents that have not been translated into the language of the proceedings within the time limit set by EUIPO. Consequently, the Board of Appeal could not regard an incomplete translation of a registration certificate as being equivalent to a failure to file the original of that document before EUIPO. The parts of the registration certificate that have been properly translated must be taken into account by the Board of Appeal when it examines the exercise of its powers. Accordingly, as has been stated in paragraph 44 above, in the light of the translations which have already been submitted by the applicant, the Board of Appeal would have been required to exercise its discretion under Article 76(2) of Regulation No 207/2009, now Article 95(2) of Regulation 2017/1001, if the applicant had submitted a complete translation of the earlier mark and of the description of that mark, in order to decide whether or not that translation had to be taken into account.

47      In that regard, it must be pointed out that the Board of Appeal’s taking into account of evidence submitted late is likely to be justified where it considers, first, that that evidence is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such evidence being taken into account (see, to that effect, judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 38 and the case-law cited).

48      An infringement of the rights of the defence entails the annulment of the contested decision if, in the absence of that procedural irregularity, it is shown that there was even a slight chance that the applicant would have been better able to defend himself (see, to that effect, judgments of 16 January 2019, Commission v United Parcel Service, C‑265/17 P, EU:C:2019:23, paragraph 56, and of 5 May 2015, Lidl Stiftung v OHIM — Horno del Espinar (Castello), T‑715/13, not published, EU:T:2015:256, paragraph 81).

49      On the foregoing grounds, the applicant was, by the communication of 3 August 2017, misled as regards the possibility of submitting additional documents including a complete translation of the earlier mark and that infringed his right effectively to submit his views before the Board of Appeal. If the applicant had submitted a complete translation of his mark, the Board of Appeal would have had to exercise its discretion as to whether or not to accept that translation, and, if it had accepted it, it cannot be ruled out that it would have upheld the opposition.

50      The contested decisions must therefore be annulled owing to infringement of the applicant’s rights of defence.

51      As regards the other heads of claim, it must be borne in mind that the power of the General Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72). In view of the fact that the Board of Appeal’s infringement of the applicant’s rights of defence deprived the applicant of the possibility of submitting additional documents including a complete translation of the earlier mark and the fact that, if those documents had been produced, the Board of Appeal would have had a discretion as regards taking them into account, the Court is not in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take. Consequently, those heads of claim must be rejected.

 Costs

52      Pursuant to Article 133 of the Rules of Procedure of the General Court, a decision as to costs is to be given in the judgment which closes the proceedings.

53      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

54      In the present case, EUIPO has been largely unsuccessful. However, the applicant has not applied for EUIPO to be ordered to pay the costs. Consequently, each party must bear its own costs.

On those grounds,

THE GENERAL COURT (Third Chamber),

hereby:

1.      Annuls the decisions of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 December 2017 (Cases R 1095/2017-4 and R 1096/2017-4) relating to opposition proceedings between Mr Ramón Guiral Broto and Gastro & Soul GmbH;

2.      Dismisses the actions as to the remainder;

3.      Orders EUIPO and Mr Guiral Broto each to bear their own costs.


Frimodt Nielsen

Kreuschitz

Półtorak

Delivered in open court in Luxembourg on 14 May 2019.


E. Coulon

 

S. Frimodt Nielsen

Registrar

 

President


*      Language of the case: English.