JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

22 May 2019 (*)

(European Union trade mark — Opposition proceedings — Application for the European Union word mark ANDREA INCONTRI — Earlier European Union word mark ANDREIA — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Distinctive character of a first name and a surname — Power to alter decisions)

In Case T‑197/16,

Andrea Incontri Srl, established in Milan (Italy), represented by A. Perani and J. Graffer, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Higicol, SA, established in Baguim do monte (Portugal), represented by Á. Pinho and J.M. Pimenta, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 25 February 2016 (Case R 146/2015-4), relating to opposition proceedings between Higicol and Andrea Incontri,

THE GENERAL COURT (Fourth Chamber),

composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín and I. Reine (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 22 April 2016,

having regard to the response of EUIPO lodged at the Court Registry on 4 July 2016,

having regard to the response of the intervener lodged at the Court Registry on 21 July 2016,

having regard to the written questions put by the Court to the parties and their replies to those questions lodged at the Court Registry on 14 and 16 November 2017, and on 9 August 2018 and 27 September 2018,

having regard to the absence of a reply from EUIPO to one of those questions,

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 of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 22 June 2012, the applicant, Andrea Incontri Srl, filed an application for registration of a European Union trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (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)).

2        Registration as a mark was sought for the word sign ANDREA INCONTRI.

3        The goods in respect of which registration of the mark was sought are in Class 3 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 to the following description: ‘Perfumery, cosmetics, nail art stickers; aloe vera preparations for cosmetic purposes; aromatics (essential oils); balms other than for medical purposes; flower perfumes (bases for -); make-up; wax (depilatory-); make-up powder; cosmetics; eyelashes (cosmetic preparations for -); eyebrow cosmetics; creams (cosmetic-); deodorants for human beings; massage gels other than for medical purposes; petroleum jelly for cosmetic purposes; nail polish; cleansing milk for toilet purposes; lotions for cosmetic purposes; lip glosses; mascara; beauty masks; eyebrow pencils; pencils (cosmetic -); cosmetic kits; oils for toilet purposes; oils for cosmetic purposes; pomades for cosmetic purposes; sun-tanning preparations (cosmetics); baths (cosmetic preparations for — ); douching preparations for personal sanitary or deodorant purposes (toiletries); sunscreen preparations; cosmetic preparations for slimming purposes; skin care (cosmetic preparations for -); depilatories; perfumery; antiperspirants (toiletries); make-up preparations; nail care preparations; shaving preparations; toiletries; make-up removing preparations; lacquer-removing preparations; varnish-removing preparations; perfumes; lipsticks; bath salts, not for medical purposes; shampoos, false nails’.

4        The European Union trade mark application was published in Community Trade Marks Bulletin No 2013/003 of 4 January 2013.

5        On 3 April 2013, the intervener, Higicol, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the following earlier marks:

–        the international registration designating France and the United Kingdom of the word mark ANDREIA, filed and registered on 18 October 2010 under number 1059449 in respect of ‘beauty products, perfumery and cosmetics’ in Class 3;

–        the Portuguese word mark ANDREIA, filed on 21 February 1975, registered on 2 December 1991 under number 188614 and renewed until 2 December 2021 in respect of ‘beauty products, perfumery and cosmetics’ in Class 3;

–        the Spanish word mark ANDREIA, filed on 18 September 2006, registered on 22 March 2007 under number 2730651 in respect of ‘beauty products and cosmetics’ in Class 3.

7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/2001).

8        On 18 November 2014, the Opposition Division, on the basis of the earlier Portuguese mark, upheld the opposition for all the contested goods except for ‘air fragrancing preparations’.

9        On 15 January 2015, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision, inasmuch as it upheld the opposition.

10      By decision of 25 February 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In the interests of procedural economy, the Board of Appeal restricted itself to a comparison with the earlier international registration No 1059449 of the mark ANDREIA, which had not been registered for more than five years when the contested European Union trade mark application was published.

11      The Board of Appeal found that the goods designated by the mark applied for and those designated by the earlier international registration were identical.

12      The Board of Appeal also found that, for the relevant public, namely average, reasonably well-informed and reasonably observant and circumspect consumers, the words of which the mark applied for was comprised, irrespective of whether or not they were perceived as a first name and a surname, had no meaning in relation to the contested goods and were co-dominant in the overall impression produced by the mark applied for. According to the Board of Appeal, there was a medium degree of visual and phonetic similarity between the signs. In respect of the conceptual comparison, the Board of Appeal held that none of the signs at issue had a meaning. The issue of whether the term ‘andrea’ would be interpreted as a first name was, according to that Board, irrelevant, given that a first name does not convey a concept which would allow for a conceptual comparison. The Board of Appeal added that, if the relevant public perceived the terms ‘andrea’ and ‘andreia’ as first names, it would understand that they are two different versions of the same first name. In its view, the sign ANDREA INCONTRI as a whole had no conceptual meaning. The ‘incontri’ element had no meaning in French or in English and, although it could not be ruled out that that element might be considered to be a surname of Italian origin, no clear concept could be obtained from it by the average French or English consumer. Therefore, the Board of Appeal found that, since the two signs did not convey any precise concept, the conceptual comparison remained neutral.

13      In respect of the likelihood of confusion, the Board of Appeal held first that the word ANDREIA had no connection with the goods for which it was registered and thus that it had a normal degree of distinctiveness. Secondly, the Board of Appeal found that it had not been established that the term ‘andreia’ would necessarily be perceived as a first name by consumers in France and in the United Kingdom, or that surnames were in principle of greater distinctiveness than first names, or that the ‘incontri’ word element was of greater distinctiveness than the ‘andrea’ element. Having regard to those elements, and to the identity of the goods in question and to the average degree of inherent distinctiveness of the earlier trade mark, the Board of Appeal concluded that it could not be ruled out that the relevant public would establish a link as to the commercial origin of the goods at issue and, accordingly, that a likelihood of confusion would be created.

 Forms of order sought

14      The applicant claims that the Court should:

–        ‘totally alter’ the contested decision;

–        as a consequence, accept the registration of the mark applied for in its entirety;

–        order the other parties to pay the costs of the present proceedings, as well as those of the opposition and appeal proceedings before EUIPO.

15      EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs incurred by EUIPO.

16      The intervener contends that the Court should:

–        dismiss the appeal and confirm the contested decision;

–        order the applicant to pay the costs, including those incurred by the intervener.

 Law

 Admissibility

 The first two heads of claim

17      EUIPO contends that the applicant’s first and second heads of claim are inadmissible, as is, accordingly, the application in its entirety.

–       The first head of claim

18      Under Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001), the General Court has jurisdiction to annul or to alter the contested decision. It must, however, be pointed out that the annulment of all or part of a decision constitutes a necessary prerequisite in order to alter that decision. Therefore, an application to alter a decision cannot be allowed in the absence of a claim for annulment (see, to that effect, judgment of 30 November 2006, Camper v OHIM — JC (BROTHERS by CAMPER), T‑43/05, not published, EU:T:2006:370, paragraph 99).

19      In the present case, it must be noted that, in its first head of claim, the applicant merely seeks the alteration of the contested decision. However, in the light of the contents of the application, that head of claim may be interpreted as including a claim for annulment (see, to that effect, judgment of 27 February 2014, Advance Magazine Publishers v OHIM — Nanso Group (TEEN VOGUE), T‑509/12, EU:T:2014:89, paragraphs 15 and 16 and the case-law cited).

20      It follows that the first head of claim is admissible and that the plea of inadmissibility raised by EUIPO must be rejected so far as it concerns that head of claim.

–       The second head of claim

21      Under the power to alter decisions conferred upon it by Article 65(3) of Regulation No 207/2009, the General Court has jurisdiction to adopt the decision which the Board of Appeal should have taken. Under Article 64(1) of Regulation No 207/2009 (now Article 71(1) of Regulation 2017/1001), a Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. Accordingly, the Court may, when an action against a decision of a Board of Appeal has been brought before it, take a decision that could have been taken by the examiner, the Opposition Division or the Cancellation Division. On the other hand, it may not take decisions that do not fall within the competence of those departments. The Opposition Division does not adopt formal decisions declaring the registration of the European Union trade mark, against which an appeal could be brought. It follows that the Court is not entitled to register a European Union trade mark (see order of 30 June 2009, Securvita v OHIM (Natur-Aktien-Index), T‑285/08, EU:T:2009:230, paragraphs 14 to 22 and the case-law cited; judgment of 17 February 2011, Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 52).

22      In its second head of claim, the applicant seeks that the Court accept the registration of the trade mark applied for ANDREA INCONTRI in its entirety. That head of claim must therefore be rejected as inadmissible.

 Admissibility of the evidence adduced for the first time before the General Court

23      According to settled case-law, the purpose of actions brought before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009; it is not therefore the Court’s function to review the facts in the light of documents produced for the first time before it. Such documents must therefore be excluded as inadmissible, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

24      In support of the application, the applicant has submitted before the Court evidence which was not adduced before the Board of Appeal, namely an introduction to the ANDREA INCONTRI trade mark, press cuttings in relation to that mark and an extract from the Wikipedia website. Those documents are in Annexes 1, 2 and 4 to the application.

25      In reply to the Court’s written questions, put by way of measures of organisation of procedure, the applicant admittedly stated that the documents referred to in paragraph 24 above appeared to be necessary only at the stage of the action before the Court, in order to challenge the arguments contained in points 25 and 32 of the contested decision respectively, according to which, first, the ‘andrea’ and ‘incontri’ word elements of the mark applied for are co-dominant and, secondly, the ‘incontri’ word element might not be perceived by the relevant public as a surname.

26      It must, however, be pointed out that the Opposition Division had already found, in its decision that the word ‘incontri’ did not have any meaning for the Portuguese public and that none of the ‘andrea’ or the ‘incontri’ word elements could be regarded as more distinctive than the other elements. Therefore, the applicant could have already submitted the evidence in Annexes 1, 2 and 4 to the application before the Board of Appeal, in support of its appeal against the Opposition Division’s decision. Accordingly, those documents, produced for the first time before the Court, must be rejected as inadmissible.

 Substance

27      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. The applicant submits that the Board of Appeal erred in finding that there is a likelihood of confusion between the marks at issue in respect of the goods in question.

28      It must be recalled that Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

29      According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

 The relevant public and its level of attention

30      There is no need in the present case to call in question the finding of the Board of Appeal, which moreover is not disputed by the parties, that the goods covered by the marks at issue, namely cosmetic and make-up products, are everyday consumer goods and that the relevant public consists of the general public, that is to say average consumers who are reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 5 October 2012, Lancôme v OHIM — Focus Magazin Verlag (COLOR FOCUS), T‑204/10, not published, EU:T:2012:523, paragraph 24 and the case-law cited).

31      In addition, as the Board of Appeal correctly observed in point 20 of the contested decision, the level of attention of the relevant public when purchasing cosmetic products such as those concerned in the present case, which are generally inexpensive everyday consumer goods, should be described as average (see, to that effect, judgment of 3 June 2015, Giovanni Cosmetics v OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraphs 24 and 25 (not published)).

32      Furthermore, for reasons of procedural economy, whereas the Opposition Division based its assessment on the comparison with the earlier Portuguese mark No 188614, the Board of Appeal, in point 21 of the contested decision, for its part restricted its assessment to a comparison between the mark applied for and international registration No 1059449 of the mark ANDREIA designating France and the United Kingdom, which is not subject to an obligation in terms of use. Since the applicant has not raised any challenge in that regard, it is necessary to examine whether there is, as the Board of Appeal concluded, a likelihood of confusion on the part of the relevant French consumers and the relevant consumers of the United Kingdom.

 The comparison of the goods

33      The Board of Appeal correctly found, in point 22 of the contested decision, without the parties disputing that issue, that the ‘beauty products, perfumery and cosmetics’ in Class 3 and designated by the earlier international registration, were identical to the products included in Class 3 and designated by the mark applied for.

34      The applicant states, however, that such an overlapping of products does not apply in respect of the other trade marks upon which the opposition is based. In its view, no evidence of use of those marks in Spain has been supplied and the documents in relation to Portugal primarily concern nail varnish. That product cannot be regarded as identical or similar to most of the contested products in Class 3.

35      In that regard, it should be noted that the Courts of the European Union may dismiss a plea or complaint as ineffective where they find that that plea or complaint is not capable, in the event that it is well-founded, of leading to the annulment sought (see, to that effect, judgment of 26 October 2017, HB v Commission, T‑706/16 P, not published, EU:T:2017:758, paragraph 42 and the case-law cited).

36      In the present case, one of the earlier marks on which the opposition was based is an international registration designating France and the United Kingdom. In point 21 of the contested decision, the Board of Appeal, for reasons of procedural economy and without it being challenged by the parties in the present court proceedings, as has been mentioned in paragraph 32 above, decided to focus its examination on that mark. Accordingly, the Board of Appeal found, in point 34 of the contested decision, that the decision of the Opposition Division should be upheld without it being necessary to assess the likelihood of confusion in relation to the other trade marks on which the opposition was based or the proof of use filed with regard to those marks. Therefore the applicant’s argument, mentioned in paragraph 34 above, in relation to the evidence of use of the goods designated by the earlier Spanish and Portuguese marks, if it is well founded, is not such as to result in the annulment sought and must thus be rejected as ineffective.

 The comparison of the signs

37      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

38      In that regard, it must be noted that the signs to be compared are, on one hand, the mark applied for ANDREA INCONTRI and, on the other hand, the earlier word mark ANDREIA.

–       The distinctive character of the elements of the mark applied for

39      In point 25 of the contested decision, the Board of Appeal found that the ‘andrea’ and ‘incontri’ word elements have no meaning in relation to the contested goods and are co-dominant in the overall impression produced by the mark applied for, irrespective of whether or not French consumers and those of the United Kingdom perceive those word elements as the combination of a first name and a surname.

40      The applicant claims that the Board Appeal erred in finding that the words ‘andrea’ and ‘incontri’ are co-dominant, even if they are perceived, as it considers to be the case, as a first name and surname. ‘Andrea’ is, in its submission, a very common first name in Italy and in many other countries in the world, including in France and the United Kingdom. Moreover, according to the applicant, the ‘andrea’ element cannot be dominant, since, in so far as a first name is concerned, the relevant public does not expect a single producer to use that first name as an element of a mark, all the more so since the use of patronymic marks is common in the cosmetics sector.

41      EUIPO contends in reply that the terms ‘andrea’ and ‘incontri’ will not necessarily be recognised as a first name and surname in France and in the United Kingdom. EUIPO observes that the Board of Appeal examined two hypotheses so far as the perception of the contested mark on the part of the relevant public is concerned, namely, on one hand, the hypothesis that it is perceived as two fanciful words and, on the other hand, the hypothesis that it is perceived as a first name and a surname. It contends that, in both cases, the Board of Appeal identified solid reasons to conclude that there was a likelihood of confusion between the marks at issue. Moreover, EUIPO adds that the Board of Appeal stated, in point 32 of the contested decision, that there were no grounds to ascribe greater distinctive character to the ‘incontri’ element than to the ‘andrea’ element in France and in the United Kingdom, since the applicant had produced no specific evidence concerning the perception on the part of the public of first names and surnames in those territories.

42      The intervener contends that, since the terms ‘andreia’ and ‘andrea’ are first names in Portuguese, it is natural that consumers, when faced with a produced labelled ‘andrea incontri’, will think that it is another range of the intervener’s products, to which it has decided to add a surname.

43      First of all it must be recalled that it is settled case-law that the distinctive character of an element of which a trade mark is composed depends on the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).

44      In the case of a word mark composed of a first name and a surname, account must be taken of all the relevant factors of each case and, in particular, of the fact that the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on the distinctive character of that name (see, to that effect, judgments of 24 June 2010, Becker v Harman International Industries, C‑51/09 P, EU:C:2010:368, paragraphs 36 and 38, and of 5 October 2011, Cooperativa Vitivinícola Arousana v OHIM — Sotelo Ares (ROSALIA DE CASTRO), T‑421/10, not published, EU:T:2011:565, paragraph 50).

45      The issue of whether or not a word element is perceived as a common first name is also relevant for the purposes of assessing the distinctive character of that element (see, to that effect, judgment of 3 June 2015, GIOVANNI GALLI, T‑559/13, EU:T:2015:353, paragraph 34 (not published)).

46      In the present case, in point 25 of the contested decision, the Board of Appeal envisaged two different hypotheses. In the first of those hypotheses, the relevant public perceives the ‘andrea’ and ‘incontri’ word elements of the mark applied for as a first name and a surname. In the second, the relevant public does not perceive those elements as a first name and a surname. The Board of Appeal did not make a decision on the issue of which of those two hypotheses was correct. In essence, it concluded that, irrespective of the hypothesis envisaged, the word elements ‘andrea’ and ‘incontri’ were co-dominant in the overall impression produced by the mark applied for, on the ground that they had no meaning in relation to the goods concerned.

47      The Board of Appeal thus held that, if the word elements ‘andrea’ and ‘incontri’ are perceived as a first name and a surname, they are co-dominant due to their lack of meaning in relation to the goods concerned. In doing so, the Board of Appeal assessed the distinctive and dominant character of the surname ‘Incontri’ and the first name ‘Andrea’ without conducting an examination of all the relevant factors of the case. In particular, it failed to have regard to whether the first name ‘Andrea’ and the surname ‘Incontri’ were common or, on the contrary, rare, even though the applicant had claimed in the administrative proceedings that the ‘andrea’ element was a common first name and the ‘incontri’ element was rather a rare surname.

48      The Board of Appeal therefore erred in finding, without taking account of all the relevant factors, that the ‘andrea’ and ‘incontri’ word elements would be co-dominant were they to be perceived as a first name and surname.

49      None of EUIPO’s arguments is such as to call that conclusion into question.

50      In the first place, in its reply to the written questions put by the Court, EUIPO states that, if the expression ‘andrea incontri’ is perceived as a first name and a surname, the reason for which the same degree of distinctiveness is attributed to those terms is inferred from the judgment of 3 June 2015, GIOVANNI GALLI (T‑559/13, EU:T:2015:353). In particular, EUIPO refers to paragraph 53 of that judgment, in which the General Court found that ‘in view of the fact that, for at least a part of the European Union, it is not established that surnames have, in principle, a more distinctive character than first names, and in view of the fact that the majority of the public located outside Italy will not perceive either of the names Giovanni and Galli as common or rare, there are no grounds for ascribing greater distinctiveness to the element “galli” of the mark applied for than to the element “giovanni” from the point of view of the whole of the relevant public’.

51      However, it must be stated that it is clear from the judgment of 3 June 2015, GIOVANNI GALLI (T‑559/13, EU:T:2015:353), that the perception on the part of the relevant public of whether a first name or a surname of which the word mark applied for is composed is common or rare is one of the relevant factors for the purposes of assessing the distinctive character of those names.

52      As is apparent from paragraph 46 above, the Board of Appeal did not examine the distinctive character of the ‘andrea’ and ‘incontri’ word elements in the light of whether those word elements were common or rare. EUIPO cannot therefore profitably rely on paragraph 53 of the judgment of 3 June 2015, GIOVANNI GALLI (T‑559/13, EU:T:2015:353), as a basis for point 25 of the contested decision.

53      In the second place, in its reply to the written questions put by the Court, EUIPO explains that the finding that the terms ‘andrea’ and ‘andreia’ would not necessarily be perceived as first names by the relevant public, although they might be perceived in that way by a part of the relevant public, is based on the well-known fact that in those countries those first names are rare.

54      Even if that argument could be interpreted as seeking to support the conclusion that the word elements ‘andrea’ and ‘incontri’ are co-dominant if they are perceived as a first name and a surname, it must be recalled that, in accordance with Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001), in proceedings relating to relative grounds for refusal of registration, EUIPO is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

55      According to settled case-law, that provision relates, inter alia, to the factual basis of decisions of EUIPO, that is, the facts and evidence on which those decisions may validly be based. Thus, the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the facts and evidence submitted by the parties. The restriction of the factual basis of the examination by the Board of Appeal admittedly does not preclude it from taking into consideration facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (judgments of 22 June 2004, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraphs 28 and 29, and of 13 June 2012, XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), T‑542/10, not published, EU:T:2012:294, paragraph 38). However, the reasoning for a measure must be provided to the person concerned by the measure before the latter brings an action against it and non-compliance with the duty to state reasons cannot be regularised by the fact that the person concerned becomes cognisant thereof during proceedings before the EU judicature (see, to that effect and by way of analogy, judgment of 11 December 2012, Sina Bank v Council, T‑15/11, EU:T:2012:661, paragraph 56 and the case-law cited). The possibility for an EU institution or body to plead for the first time before the General Court such supplementary grounds, even if they are claimed to be well-known, in order to complete the grounds set out in the contested decision would undermine the rights of defence of the party concerned and his right to an effective judicial remedy, as well as the principle of equality of parties before the EU judicature (see judgment of 11 December 2014, CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraphs 71 and 72 and the case-law cited).

56      In the contested decision, the Board of Appeal neither referred to the alleged rarity of the terms ‘andrea’ and ‘andreia’ in the Member States concerned, nor, a fortiori, to the claim that such rarity is a well-known fact. EUIPO therefore cannot rely for the first time before the General Court on the contention alleging the rarity of those words in the Member States in question.

57      Since EUIPO’s arguments have all been rejected, it is necessary to ascertain whether the error noted in paragraph 48 above gives a reason for upholding the single plea even though it affects only one of the two hypotheses envisaged in point 25 of the contested decision. It must be recalled in this connection that, as is apparent from paragraph 39 above, the Board of Appeal did not settle the issue of which of those two hypotheses was correct. The Court cannot give precedence to the second of those hypotheses, under which the terms ‘andrea’ and ‘incontri’ are not perceived as a first name and a surname, without substituting its own reasoning for that of the Board of Appeal. It follows that the single plea must be upheld.

58      In those circumstances, it is necessary to ascertain whether the contested decision must be annulled. It cannot in the present case be ruled out that, had the Board of Appeal correctly assessed the distinctive and dominant character of the ‘andrea’ and ‘incontri’ word elements in the hypothesis under which they are perceived as a first name and a surname, it might have found that, in that situation, the ‘andrea’ word element was of lesser distinctiveness than the ‘incontri’ word element, as the applicant claimed. The Board of Appeal thus could not have failed to settle, in point 25 of the contested decision, the issue of how the mark applied for would be perceived on the part of the relevant public. Had the Board of Appeal thus settled that issue in favour of the hypothesis in which the relevant public perceives the ‘andrea’ and ‘incontri’ word elements of the mark applied for as a first name and a surname, it might have found that there was no likelihood of confusion. Pursuant to the case-law cited in paragraph 37 above, a finding that the ‘andrea’ element was less distinctive than the ‘incontri’ element could have had an effect on the visual, phonetic and conceptual comparisons of the marks at issue and, consequently, altered the global assessment of likelihood of confusion.

59      The contested decision must therefore be annulled.

 The claim seeking alteration of the decision

60      By its first head of claim, the applicant requests the Court to ‘totally alter’ the contested decision. As noted in paragraph 19 above, the applicant is thereby in essence requesting the Court to exercise the power to alter decisions conferred upon it under Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001).

61      In this connection, it should be recalled that the power conferred on the General Court under Article 65(3) of Regulation No 207/2009 does not have the effect of conferring on that Court the power 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 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).

62      It must be noted that, in point 25 of the contested decision, the Board of Appeal did not determine whether, if the ‘andrea’ and ‘incontri’ word elements of the mark applied for were perceived as a first name and surname, all the of relevant factors of case before it warranted those names being regarded as co-dominant.

63      It is not for the Court to examine that question for the first time in its review of the legality of the contested decision.

64      It will therefore be for the Board of Appeal to take a decision in that regard, in order to make the decision it is called upon to give in the action which is still pending before it (see, to that effect, judgment of 11 December 2014, Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraphs 101 and 102 and the case-law cited).

 Costs

65      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. Moreover, under Article 134(2) of the Rules of Procedure, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared.

66      Since EUIPO and the intervener have been unsuccessful in the present case, they must be ordered, in addition to bearing their own costs, each to pay half of the applicant’s costs, in accordance with the form of order sought by the applicant.

67      Furthermore, the applicant has applied for an order that EUIPO and the intervener pay the costs which were incurred by the applicant in the administrative proceedings before EUIPO. It should be recalled in this connection that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case in respect of the costs incurred for the purposes of proceedings before the Opposition Division. Accordingly, the applicant’s request that EUIPO and the intervener, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before EUIPO can be allowed only as regards the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.

On those grounds,

THE GENERAL COURT (Fourth Chamber),

hereby:

1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 February 2016 (Case R 146/2015-4);

2.      Orders EUIPO, in addition to bearing its own costs, to pay half of the costs incurred by Andrea Incontri Srl, including the costs which the latter necessarily incurred for the purposes of the proceedings before the Board of Appeal of EUIPO;

3.      Orders Higicol, SA, in addition to bearing its own costs, to pay half of the costs incurred by Andrea Incontri Srl, including the costs which the latter necessarily incurred for the purposes of the proceedings before the Board of Appeal of EUIPO.

Kanninen

Calvo-Sotelo Ibáñez-Martín

Reine

Delivered in open court in Luxembourg on 22 May 2019.


E. Coulon

 

H. Kanninen

Registrar

 

            President


*      Language of the case: English.