CELEX: 62003CJ0106
Appeal
Community trade mark
Article 8(1)(b) of Regulation (EC) No 40/94
Likelihood of confusion
Word and figurative mark HUBERT
Opposition of the proprietor of the national word mark SAINT-HUBERT 41
Capacity of OHIM as defendant before the Court of First Instance

In its appeal Vedial SA (‘Vedial’) seeks to have set aside the judgment of the Court of First Instance in Case T-110/01 (
Vedial
v
OHIM
–
France Distribution (HUBERT)
[2002] ECR II-5275, ‘the judgment under appeal’), dismissing its action for annulment of the decision of the First Board
of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 9 March 2001 (Case R 127/2000-1)
in which the opposition by Vedial to registration of the word and figurative mark HUBERT sought by France Distribution was
rejected (‘the contested decision’).
Legal framework
Article 8(1)(b) and (2)(a)(ii) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994
L 11, p. 1) provides:
‘1.

Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:
…;
(b)
if because of its identity with or similarity to the 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.
2.

for the purposes of paragraph 1, “Earlier trade marks” means:
(a)
trade marks of the following kinds with a date of application for registration which is earlier than the date of application
for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those
trade marks:
…
(ii)
trade marks registered in a Member State … .’
Background to the dispute
On 1 April 1996, France Distribution filed with OHIM an application for registration of a composite word and figurative mark
comprising the name ‘HUBERT’ in black stylised capital letters bordered with white, surmounted by a bust of a chef of jovial
appearance raising his right arm with upturned thumb.
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The goods in respect of which registration was sought are in Classes 29, 30 and 42 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.
On 6 January 1998, Vedial filed a notice of opposition under Article 42 of Regulation No 40/94 against the mark applied for
in respect of some of the products covered by the mark, namely, ‘milk and milk products’ in Class 29 and ‘vinegar, sauces’
in Class 30.
The earlier mark is the national word mark SAINT-HUBERT 41 for ‘butters, edible fats, cheeses and all dairy products’ in Class
29. It is composed of two words connected by a hyphen and including the number 41.
Upon rejection of its opposition by a decision of 1 December 1999 by the Opposition Division, Vedial filed an appeal with
OHIM against the decision of the Opposition Division pursuant to Article 59 of Regulation No 40/94. In support of its appeal,
the applicant annexed to its statement of grounds several documents intended to establish the reputation of its mark in France.
That appeal was dismissed by the contested decision. The First Board of Appeal of OHIM essentially considered that, even though
there was a high degree of similarity between the goods in question and even though, for the purposes of the application of
that provision, it was possible to take account of the reputation of the earlier mark demonstrated to it by Vedial, there
was no likelihood of confusion in the mind of the public concerned since the conflicting marks did not display strong similarities.
Procedure before the Court of First Instance and judgment under appeal
By an application lodged with the Registry of the Court of First Instance on 23 May 2001, Vedial brought an action for the
annulment of the contested decision on the sole ground of infringement of the concept of likelihood of confusion for the purposes
of Article 8(1)(b) of Regulation No 40/94.
Before the Court of First Instance, OHIM acknowledged that if it were legitimate to regard the earlier mark as reputed, it
would be appropriate to conclude that there was a likelihood of confusion with the mark applied for. None the less, since
it was not possible, in OHIM’s view, to accept the reputation of the earlier mark owing to the appellant’s failure to provide
evidence of such reputation within the period granted for that purpose by the Opposition Division, it was appropriate to examine
the case without the adjunction of that factual element.
In that regard OHIM considered that, if the Court of First Instance were to find that the dominant component of the earlier
mark is the Christian name ‘HUBERT’, it would be difficult to deny the existence of a likelihood of confusion between the
marks in question. Conversely, if the Court of First Instance were to hold that the earlier mark is not particularly distinctive
and forms a whole in which no component is dominant, the differences between the marks should be sufficient to demonstrate
that there is no likelihood of confusion. OHIM leaves it to the discretion of the Court of First Instance to resolve that
point of law brought before it.
France Distribution, which was a lawfully constituted party to the proceedings before the Opposition Division and the Board
of Appeal, did not intervene in the proceedings before the Court of First Instance.
The Court of First Instance first recalled, at paragraphs 35 to 39 of the judgment under appeal, the Court’s case-law concerning
likelihood of confusion between the mark applied for and the earlier mark.
The Court of First Instance then went on, at paragraphs 40 to 59 of the judgment under appeal, to compare on the one hand
the goods concerned and on the other the conflicting signs. Thus it found that the ‘dairy products’ and ‘edible fats’ in respect
of which the earlier mark had been registered were identical, respectively, with ‘milk and milk products’ and similar to ‘vinegar,
sauces’ covered by the trade mark application in question. On the other hand, it considered that the earlier mark and the
mark applied for ‘are not similar visually’, that they are ‘dissimilar from an aural point of view’ and that there ‘is no
conceptual similarity between the conflicting marks’.
Finally, at paragraphs 60 to 66 of the judgment under appeal, the Court of First Instance adjudged there to be no risk of
confusion between the earlier mark and the mark applied for. It held in particular at paragraph 63 that ‘even though there
is identity and similarity between the goods covered by the conflicting marks, the visual, aural and conceptual differences
between the signs constitute sufficient grounds for holding that there is no likelihood of confusion in the mind of the targeted
public’. At paragraphs 65 and 66, it went on to state that, ‘in this case, the conflicting signs cannot in any way be regarded
as identical or similar from the visual, aural or conceptual points of view’ and that, consequently, ‘one of the essential
conditions for applying Article 8(1)(b) of Regulation No 40/94 has not been satisfied’.
Accordingly, the Court of First Instance dismissed the action for annulment of the contested decision.
The appeal
In its appeal, in support of which it raises three pleas, Vedial claims that the Court should:
–
set aside the judgment under appeal;
–
give final judgment on the dispute by granting the forms of order sought at first instance or, in the alternative, remit the
case to the Court of First Instance;
–
order OHIM to pay the costs.
OHIM contends that the Court should dismiss the appeal and order Vedial to pay the costs.
First plea
Parties’ arguments
In its first plea Vedial submits that in the judgment under appeal the Court of First Instance infringed the general principle
of Community law under which the parties delimit the subject-matter of a case, which was upheld by the Court in its judgment
in Joined Cases C-430/93 and C-431/93
Van Schijndel and Van Veen
[1995] ECR I-4705).
It states that, under that principle it is for the parties alone to determine the scope of the dispute. It precludes the court
from raising an issue not referred to in the parties’ submissions. Thus, where on a given point there is no dispute between
the parties or where they expressly acknowledge the existence of a legal, relevant and specific fact, the court cannot act
of its own motion except if the agreement between the parties on the specific point is contrary to public policy.
In the present case, during the procedure before the Court of First Instance, Vedial and OHIM were agreed as to a similarity,
if only a phonetic one, between the earlier mark and the mark applied for, and as to a risk of confusion if it were not possible
to criticise the Board of Appeal for taking the view that the earlier mark was very distinctive, if only owing to the reputation
gained by it in France. According to Vedial, that delimitation of the dispute was not contrary to public policy.
Accordingly, the Court of First Instance, it is claimed, infringed the principle under which the parties delimit the subject-matter
of a case by considering, contrary to the agreement between the parties on that point, that the conflicting marks displayed
no similarities.
OHIM contends that the first plea is unfounded. The abovementioned principle applies in civil law but not to the predominantly
administrative law disputes concerning the Community trade mark. Moreover, OHIM has no
locus standi
of its own, since it was not a party to the proceedings before the Board of Appeal. When an action comes before the Court
of First Instance it must determine whether OHIM, that is to say the Board of Appeal, correctly applied Regulation No 40/94
and, if it concludes that OHIM infringed that regulation, it must set the decision aside.
OHIM points out that in its action before the Court of First Instance Vedial maintained that the contested decision infringed
the concept of likelihood of confusion and expressly requested the Court of First Instance to examine the conflicting marks
and to determine that there was a likelihood of confusion. Accordingly, the Court of First Instance was right to examine that
concept and to apply Regulation No 40/94. It cannot therefore be said to have infringed the principle under which the parties
delimit the subject-matter of a case.
Moreover, OHIM contends that in the present case there was no agreement between Vedial and itself. In its view, apart from
the fact that the view of OHIM is expressed in the view taken by the Board of Appeal, as was adjudged by the Court of First
Instance in the judgment under appeal, France Distribution, which could have acted as an intervener before the Court of First
Instance, in no way assented to Vedial’s interpretation of the likelihood of confusion. However, in disputes relating to industrial
and commercial property the Rules of Procedure of the Court of First Instance confer on the intervener a position which is
almost identical to that of the other parties.
Findings of the Court
Even on the supposition that the principle under which the parties delimit the subject-matter of a case applies in proceedings
such as those at first instance concerning an action against a decision of an appeal board of OHIM on an opposition to registration
of a mark based on the likelihood of confusion with an earlier mark, OHIM does not in any event have the power to alter before
the Court of First Instance the terms of the dispute, as delimited in the respective claims and allegations of the applicant
for registration and of the opposing party.
In fact, although under Article 133(2) of the Rules of Procedure of the Court of First Instance, OHIM is the defendant in
proceedings before the Court of First Instance, the proceedings before that Court are intended to resolve a dispute between
the claimant for registration and the holder of an earlier mark, as is borne out by the following provisions in Regulation
No 40/94 and the Rules of Procedure of the Court of First Instance.
First, under Article 63(2) and (3) of Regulation No 40/94, that action seeks to examine the lawfulness of the decision of
the Board of Appeal which decided the dispute concerning registration of the mark applied for and to obtain, in an appropriate
case, the annulment or alteration of that decision.
Yet before both the Opposition Division and the Board of Appeal, the dispute is between the applicant for registration and
the party opposing it, without OHIM being a party to the dispute.
It is important to note, in particular, that under Article 42(1)(a) of Regulation No 40/94, only owners of earlier marks may
oppose registration of a mark on the relative ground of refusal provided for in Article 8(1)(b) thereof. Thus, OHIM does not
have the power to oppose registration of a mark on such a ground.
Nor, secondly, is the action before the Court of First Instance against the decision of a Board of Appeal on an opposition
open to OHIM. In fact, under Article 63(4) of Regulation No 40/94 such an action ‘shall be open to any party to proceedings
before the Board of Appeal adversely affected by its decision’.
Thirdly, the capacity of defendant conferred on OHIM is limited in its effects. Conversely, the parties to the proceedings
before the Board of Appeal, other than the applicant, entitled, under Article 134(1) of the Rules of Procedure of the Court
of First Instance, to participate in the proceedings before the Court of First Instance as interveners, are accorded in that
connection extensive rights such as to assimilate them to actual defendants.
Thus, Article 134(2) of the Rules of Procedure states that: ‘The interveners referred to in paragraph 1 shall have the same
procedural rights as the main parties.’
Moreover, contrary to the ordinary rule in regard to intervention set out in Article 116(4)(a) of the Rules of Procedure,
Article 134(3) thereof provides that ‘[a]n intervener … may, in his response …, seek an order annulling or altering the decision
of the Board of Appeal on a point not raised in the application’. By dint of
a contrario
reasoning under the latter provision OHIM is not entitled, for its part, to formulate such forms of order.
Finally it is clear from Article 134(4) thereof that, in derogation from Article 122 of the Rules of Procedure, even if OHIM
does not respond to the application in the manner and within the period prescribed, the default procedure is not to apply
where a party to the proceedings before the Board of Appeal other than the applicant intervenes before the Court of First
Instance.
Therefore OHIM cannot be granted power, by partially concurring with the analysis put forward by the applicant, or acquiescing
in its appeal, to alter the terms of the dispute before the Court of First Instance. Any other finding would defeat the legitimate
expectation of the party which was successful before the Board of Appeal, in so far as the purpose of proceedings before the
Court of First Instance is, pursuant to Article 63(2) of Regulation No 40/94, to review the legality of the decision of the
Board of Appeal.
In this case the Court of First Instance was in no way bound by the agreement between Vedial and OHIM as to the similarity
or even the likelihood of confusion between the conflicting marks. The Court was therefore correct to consider, in the judgment
under appeal, whether the contested decision infringed the concept of likelihood of confusion, as Vedial alleged in its application,
and to apply Regulation No 40/94.
The first ground of appeal must therefore be dismissed.
Second ground of appeal
Arguments of the parties
In its second ground of appeal Vedial argues that the Court of First Instance infringed the rights of the defence by failing
to act in accordance with its legitimate expectation as to the parameters of the dispute agreed by the parties. Having regard
to the position adopted by OHIM in its response submitted to the Court of First Instance, it withdrew its request to be permitted
to submit a response and limited its arguments to the parameters defined by OHIM’s statement of its position.
According to Vedial, even if the Court of First Instance was not bound by the principle under which the parties delimit the
scope of the case, it should have ordered that the matter be reopened and notified the parties that it did not concur with
their view as to the aural similarity of the conflicting marks.
OHIM considers that the second ground of appeal presupposes that the Court of First Instance infringed the abovementioned
principle, which in its view it did not. It adds that, both in its application and at the hearing, Vedial set out its views
at length, as well as explaining its interpretation of the regulatory provisions and relevant case‑law.
Findings of the Court
As regards the second ground of appeal, even on the assumption that Vedial and OHIM were agreed that there was some similarity
between the conflicting marks or even that there was a likelihood of confusion, it must be borne in mind first of all that,
as analysis of the first ground of appeal makes clear, the Court of First Instance was in no way bound by that view, but had
a duty to determine whether, by finding that there was no similarity between the two marks, the Board of Appeal had infringed
Regulation No 40/94 in the contested decision. Secondly, the Court of First Instance did not base its decision on facts or
arguments extraneous to the issue.
Accordingly, the Court of First Instance in no way failed to act in accordance with the legitimate expectations of Vedial,
nor was it bound to reopen the matter in order to notify it that it did not agree that there was aural similarity between
the earlier mark and the mark applied for.
The second ground of appeal must therefore be dismissed.
Third ground of appeal
Arguments of the parties
In its third ground of appeal, which was submitted in the alternative, Vedial argues that the Court of First Instance infringed
the concept of likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
By the first limb of this plea, Vedial claims that the Court of First Instance erred in finding, at paragraph 62 of the judgment
under appeal, that there was no likelihood of confusion between the earlier mark and the mark applied for without establishing,
as it should have done, whether there was a risk that the public might believe that the goods or services in question originate
from undertakings which are linked economically only.
By the second limb of the same plea, Vedial alleges that the Court of First Instance was wrong to find, at paragraph 63 of
the judgment under appeal, that the visual, aural and conceptual differences between the earlier mark and the mark applied
for constituted sufficient grounds to discount any likelihood of confusion. According to Vedial, the question is not whether
there are differences between the conflicting marks, but whether those marks are identical or similar and whether, taken together
with the identity or similarity of the goods or services concerned, the extent of those similarities is such that there is
a likelihood of confusion.
By the third limb of this plea, Vedial argues that the Court of First Instance did not apply the rule of interdependence in
a clear manner. It erred in failing to state that the alleged slight degree of similarity between the earlier mark and the
mark applied for was counteracted by the high degree of similarity between the goods concerned and by the strong distinctiveness
of the earlier mark.
By the final limb of the third plea Vedial argues that the Court of First Instance was wrong, at paragraph 62 of the contested
decision, to restrict the relevant persons to the ‘target public’, which is to say purely to consumers likely to purchase
the marked goods. In Vedial’s submission, the relevant public for the purposes of assessing the likelihood of confusion is
composed of all persons likely to come across the mark.
OHIM argues that the third ground of appeal should be dismissed as unfounded in regard to all limbs.
Findings of the Court
For the purposes of applying Article 8 (1)(b) of Regulation No 40/94, the likelihood of confusion presupposes both that the
mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application
for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are
cumulative (see to that effect, on the identical provisions of Article 4(1)(b) of First Council Directive 89/104/EEC of 21
December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), Case C-39/97
Canon
[1998] ECR I-5507, paragraph 22).
Contrary to Vedial’s claim, the Court of First Instance did not rely on the visual, aural and conceptual differences between
the earlier mark and the mark applied for in deciding that there was no likelihood of confusion.
After making a comparative study, at paragraphs 48 to 59 of the judgment under appeal, of the two marks in the visual, aural
and conceptual senses, the Court of First Instance concluded, as stated at paragraph 65 of the judgment, that the marks could
in no way be regarded as identical or similar for the purposes of Article 8(1)(b) of Regulation No 40/94.
Having found that there was no similarity between the earlier mark and the mark applied for, the Court of First Instance correctly
concluded that there was no likelihood of confusion, whatever the reputation of the earlier mark and regardless of the degree
of identity or similarity of the goods or services concerned.
The third ground of appeal is therefore unfounded in regard to each of its limbs and must be dismissed.
Accordingly, the appeal must be dismissed in its entirety.
Costs
Under Article 62(2) of the Rules of Procedure of the Court, applicable to appeal proceedings by virtue of Article 118 of those
rules, the unsuccessful party is to be ordered to pay the costs if they have been asked for in the successful party’s pleadings.
Since OHIM sought such an order and Vedial has failed in its appeal it must be ordered to pay the costs.
On those grounds, the Court (Second Chamber) hereby:
1.
Dismisses the appeal;
2.
Orders Vedial SA to pay the costs.
Signatures.
–
Language of the case: French.