CELEX: 62015TJ0126
EU trade mark
Opposition proceedings
Application for EU figurative mark Supeco
Earlier EU figurative mark SUPER COR
Relative ground for refusal
Likelihood of confusion
Extent of the examination carried out by the Board of Appeal
Goods and services on which the opposition is based
Article 8(1)(b) of Regulation (EC) No 207/2009
Rule 15(2)(f) of Regulation (EC) No 2868/95
Communication No 2/12

Background to the case
On 30 April 2012, the intervener, Grup Supeco Maxor, SL, filed an application for registration of an EU 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
).
The mark in respect of which registration was sought is the following figurative sign:
The services in respect of which registration was sought belong to, inter alia, Class 35 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 include, in particular, ‘auctioneering’ and services for the ‘bringing together, for others, of a variety of … goods (excluding the transport thereof) … enabling customers to conveniently view, select and purchase those goods from local businesses, including in shops, retailing of … goods’ (‘retail services’).
On 16 August 2012 the applicant, El Corte Inglés, SA, filed a notice of opposition to registration of the mark applied for in respect of all the services referred to in the application.
The opposition was based on, inter alia, the following EU figurative mark, filed on 18 June 2008 and registered on 1 February 2012 under No 6997407 in respect of goods and services belonging to, inter alia, Class 35:
The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009. The notice of opposition featured a reference to, inter alia, the ‘list of goods and services’ and the ‘[opposition] [b]ased on parts of the goods and services’ followed by the following list of services in Class 35: ‘advertising; business management; business administration; office functions’.
On 28 February 2014 the Opposition Division partially upheld the opposition, finding that there was a likelihood of confusion between the mark applied for and the earlier mark. It refused, inter alia, registration of the mark applied for in respect of all the contested services in Class 35. Basing itself on Communication No 2/12 of 20 June 2012 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations (OJ OHIM 7/2012), the Opposition Division took the view that the applicant’s intention was to cover all of the services included in the alphabetical list of the particular class of the Nice Classification concerned. It thus compared the services in Class 35 covered by the mark applied for with the services mentioned in the notice of opposition, as well as with the services relating to ‘auctioneering’ and ‘rental of vending machines’ included in the alphabetical list relating to Class 35, and concluded from this that they were identical or similar.
On 24 April 2014 the intervener filed a notice of appeal against the Opposition Division’s decision.
By decision of 4 December 2014 (‘the contested decision’) the Fifth Board of Appeal of EUIPO partially upheld the appeal, annulling and altering the Opposition Division’s decision in so far as the latter had upheld the opposition for ‘auctioneering’ and for retail services.
At the outset the Board of Appeal indicated, in paragraph 14 of the contested decision, that the scope of the opposition brought by the applicant before the Opposition Division was limited to the services expressly listed in the notice of opposition. It noted, in that regard, that ‘auctioneering’ services were not listed in that notice as services in Class 35 covered by the earlier mark and that, moreover, the applicant had never claimed, during the opposition or appeal proceedings, that its opposition was also based on those services. On the contrary, according to the Board of Appeal, the applicant had confirmed, in its observations on the appeal, that the opposition ‘was based on part of the goods and services’ covered by the earlier marks, thus designating the services explicitly listed in the notice of opposition. From this the Board of Appeal inferred that the opposition was not based on ‘auctioneering’ and that there was no need to determine whether the earlier mark related to further services not covered by the literal meaning of the class headings.
The Board of Appeal therefore limited the examination of the similarity of the services, as regards those covered by the earlier mark, to the services of ‘advertising, business management, business administration, office functions’. It found, in this regard, that those services showed no similarities to ‘auctioneering’ or to the retail services covered by the mark applied for (paragraphs 36 to 42 of the contested decision).
Forms of order sought
The applicant claims that the Court should:
—
annul the contested decision in so far as it annulled and altered the decision of the Opposition Division;
—
order EUIPO and the intervener to pay the costs.
EUIPO contends that the Court should:
—
dismiss the action;
—
order the applicant to pay the costs.
The intervener contends that the Court should:
—
dismiss the action;
—
order the applicant to pay the costs.
Law
The applicant raises, in essence, a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
Without challenging either the Board of Appeal’s definition of the relevant public or its assessment of the similarity of the signs at issue, the applicant submits that the Board of Appeal failed to take account of certain services not mentioned in the notice of opposition but covered by the earlier mark, including ‘auctioneering’, when comparing the services concerned, and, also, that it wrongly concluded that there was no similarity between, on the one hand, the services covered by the earlier mark and, on the other hand, the ‘auctioneering’ and retail services covered by the mark applied for.
It should be remembered in this regard that the applicant, in the notice of opposition form, ticked the box entitled ‘Based on parts of the goods and services’ and then listed the following services: ‘advertising; business management; business administration; office functions’ (see paragraph 6 above).
Furthermore, in the accompanying explanatory statement relating to its opposition, the applicant provided no further details of the services on which that opposition was based.
Thus, as the intervener rightly points out, unlike the opposition at issue in the judgment of 15 January 2013 in Lidl Stiftung v OHIM — Lactimilk (BELLRAM) (
T‑237/11
, ECR,
EU:T:2013:11
), the notice of opposition in the present case shows no contradiction capable of raising doubts as to the services that form the basis of the opposition, as the applicant announced its intention to base its opposition on only a portion of the goods and services covered by its mark and at the same time listed a portion of those services, in particular those in Class 35, mentioned in the intervener’s application for registration.
The applicant nevertheless argues that the Board of Appeal erred in inferring from the notice of opposition that it related only to services concerning ‘advertising, business management, business administration, office functions’ and that it could not be construed as relating also to ‘auctioneering’. It invokes, in this regard, Point V of Communication No 2/12, according to which, ‘as regards [EU] trade marks registered before [21 June 2012] which use all the general indications listed in the heading of a particular class [of the Nice Classification], [EUIPO] considers that the intention of the applicant … was to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made’. As the earlier mark was registered before 21 June 2012 and used the general indications listed in the heading of Class 35 of the Nice Classification, the applicant infers that its opposition was also based on the ‘auctioneering’ and ‘rental of vending machines’ services included in the alphabetical list for that class.
It should be noted that, although it follows from the wording of Point V of Communication No 2/12 that the goods and services protected by a mark are not limited, for EU trade marks registered before 21 June 2012, to those expressly listed in the trade mark application, it cannot be inferred from those words alone that that broad interpretation of the goods and services concerned applies also to the notice of opposition based on a mark registered before 21 June 2012. As was rightly pointed out by EUIPO, specific provisions govern the content of that notice and the opposition proceedings. Pursuant to those provisions, read in the light of the case-law, that notice must indicate clearly and precisely the goods and services on which the opposition is based.
It thus follows from Rule 15(2)(f) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (
OJ 1995 L 303, p. 1
) as amended by, inter alia, Commission Regulation (EC) No 1041/2005 of 29 June 2005 (
OJ 2005 L 172, p. 4
), in most of the versions other than the French-language version, that the notice of opposition must contain the goods and services on which the opposition is based.
The French-language version of Rule 15(2)(f) of Regulation No 2868/95 admittedly provides that ‘l’acte d’opposition doit comporter … les produits et services à l’encontre desquels l’opposition est formée’ (‘the notice of opposition shall contain … the goods and services against which the opposition has been filed’).
However, as EUIPO observes, the French-language version is one of the only versions that reads as such, inasmuch as most of the other linguistic versions of the provision in question relate to the goods and services on which the opposition is based. The English-language version mentions ‘the goods and services on which the opposition is based’, the German version mentions ‘die Waren und Dienstleistungen, auf die sich der Widerspruch stützt’, the Italian version mentions ‘i prodotti e i servizi sui quali si basa l’opposizione’, and the Spanish version mentions ‘los productos y servicios en los que se basa la oposición’.
It is settled case-law that the wording used in one language version of a provision of EU law cannot serve as the sole basis for the interpretation of that provision, or be made to override the other language versions in that regard. Such an approach would be incompatible with the requirement that EU law be applied uniformly. Where there is a divergence between the various language versions, the provision in question must thus be interpreted by reference to the general scheme and the purpose of the rules of which it forms part (see judgment of 15 November 2012 in Kurcums Metal,
C‑558/11
, ECR,
EU:C:2012:721
, paragraph
and the case-law cited).
As regards the general scheme of the rules concerning opposition proceedings, it must, on the one hand, be noted, as EUIPO has pointed out, that all references in the notice of opposition imposed by the provisions of Rules 15(2)(b) to (e) and (g) of Regulation No 2868/95, which surround the reference required by Rule 15(2)(f), relate to the earlier mark, confirming the interpretation that that latter provision refers to the goods and services covered by that mark. On the other hand, Rule 15(3)(a) of Regulation No 2868/95, which provides that a notice of opposition ‘may’ contain an indication of the goods and services against which the opposition is directed confirms that the reference in the notice of opposition to the goods and services covered by the contested mark is no more than optional and is not coterminous with Rule 15(2)(f) of that regulation, as Rule 15(3)(a) even specifies that, in the absence of that indication, the opposition will be considered to be directed against all of the goods and services of the EU trade mark application that is the subject of the opposition.
As regards the purpose of the rules determining the content of the notice of opposition, it must be noted that Regulation No 2868/95 distinguishes between two types of references in that notice: those the absence of which may, under Rule 17 of that regulation, lead to the inadmissibility of that notice, provided for in particular by Rule 15(2) of that regulation; and those provided for by Rule 15(3), the absence of which is liable to impact solely on the examination of the merits of the opposition. In particular, as has been noted in paragraph 26 above, Rule 15(3)(a) provides that, absent an indication of the goods and services against which the opposition is brought, the opposition will be considered to be directed against all of the goods and services of the trade mark application that is the subject of the opposition. By contrast, if the notice of opposition does not contain the reference required by Rule 15(2)(f) of Regulation No 2868/95, the opposition is to be rejected as being inadmissible pursuant to Rule 17(4) of that regulation. The same condition cannot, therefore, feature both in Rule 15(2) and in Rule 15(3) of Regulation No 2868/95.
In those circumstances, the lack of reference to the goods and services on which the opposition is based in the French-language version of Rule 15(2)(f) of Regulation No 2868/95 – an omission which is clearly a typographical error – does not allow that provision to be interpreted as not requiring an indication, in the notice of opposition, of those goods and services.
Furthermore, it should be noted that, according to settled case-law since the judgment of 19 June 2012 in Chartered Institute of Patent Attorneys (
C‑307/10
, ECR,
EU:C:2012:361
, paragraphs
,
and
, concerning Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (
OJ 2008 L 299, p. 25
)), of the consequences of which Communication No 2/12 was specifically intended to take account, in order to respect the requirements of clarity and precision enabling the competent authorities and economic operators to determine the extent of the protection sought, an applicant for a trade mark which uses all of the general indications of a particular class heading of the Nice Classification to identify the goods or services for which protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services. If the application relates to only some of those goods or services, the applicant will be required to specify which of the goods or services in that class are intended to be covered (see, to that effect, judgments of 27 February 2014 in Advance Magazine Publishers v OHIM — López Cabré (VOGUE),
T‑229/12
,
EU:T:2014:95
, paragraph
, and 29 April 2015 in Chair Entertainment Group v OHIM — Libelle (SHADOW COMPLEX),
T‑717/13
,
EU:T:2015:242
, paragraphs
,
and
).
Such requirements of clarity and precision must be regarded as binding also upon the opposing party, in relation to the designation of the goods and services on which the opposition is based, for the purpose of allowing EUIPO to decide on the opposition and the applicant for the mark that is the subject of the opposition to put forward its arguments in defence (see, to that effect, judgment of 12 February 2015 in Klaes v OHIM — Klaes Kunststoffe (Klaes),
T‑453/13
,
EU:T:2015:98
, paragraph
). Thus, in particular, where, as in the present case, the opposing party indicates that it is basing its opposition on a portion of the goods and services covered by the mark of which it is the proprietor, it must indicate clearly and precisely the goods and services on which its opposition is based.
It follows that, contrary to the applicant’s submissions, Point V of Communication No 2/12 cannot apply, even by analogy, in the present case in order to support the inference that the opposition was based on, in addition to the services referred to in the notice of opposition, services relating to ‘auctioneering’ and the ‘rental of vending machines’.
In light of the foregoing, the Board of Appeal cannot be required to take into consideration, for the purposes of its examination of the opposition, goods and services that were not mentioned in the notice of opposition. The Board of Appeal therefore acted correctly in comparing only the services listed in the notice of opposition, on which that opposition was based, with the contested services covered by the mark applied for.
That assessment cannot be called into question by the applicant’s claim that, as a very well-known undertaking involved in the retail sale of all types of goods to third parties, it was entitled to cover retail services.
As EUIPO correctly points out, and without it being necessary to rule on the admissibility of that argument, which is, moreover, also challenged by EUIPO, the entitlement of the proprietor of a mark to provide certain services and the well-known status of that proprietor as an operator of those services do not mean that the trade mark of which it is the proprietor necessarily protects those services, or,
a fortiori
, that any oppositions which it may file are accordingly based on those services.
It thus follows from all of the foregoing that the Board of Appeal acted correctly in comparing the contested services of the mark applied for with only those services covered by the earlier mark that were mentioned in the notice of opposition, with the consequence that, in the absence of any argument calling into question the result of the comparison made, the single plea in law raised in the application must be rejected as being unfounded, without there being any need to rule on its admissibility, which has been challenged by the intervener.
The present action must, consequently, be dismissed.
Costs
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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:

1.
Dismisses the action;

2.
Orders El Corte Inglés, SA to pay the costs.

Martins Ribeiro
Gervasoni
Madise
Delivered in open court in Luxembourg on 24 May 2016.
[Signatures]
(
*1
)	Language of the case: French.