CELEX: 62009TJ0279
Community trade mark
Opposition proceedings
Notification of the opposing party’s pleading before the Board of Appeal
Rules 50(1), 20(2) and 67(1) of Regulation (EC) No 2868/95
Rights of the defence

Grounds
Background to the dispute
1. On 5 March 2004, the applicant, Mr Antonino Aiello, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 Community trade mark (OJ 2009 L 78, p. 1)).
2. The trade mark in respect of which registration was sought is the figurative sign reproduced below:
>image>3
3. The goods in respect of which registration was sought are, inter alia, in Classes 3, 18 and 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes, animal skins; trunks and valises, umbrellas, parasols, walking sticks’;
– Class 25: ‘Clothing, including boots, shoes and slippers’.
4. The Community trade mark application was published in Community Trade Marks Bulletin No 15/2005 of 11 April 2005.
5. On 14 June 2005, Cantoni ITC SpA (‘the opposing party’), filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for.
6. The opposition was based on the following earlier rights:
– the figurative Community mark, registered on 10 February 2004 under number 2689891, reproduced below:
>image>4
– the Italian word mark CAPRI registered on 27 January 1986 under number 396526.
7. So far as concerns th e earlier Community mark, the opposition was based on all of the goods in Classes 3, 18 and 25 designated by that mark and corresponding, for each of those classes, to the following description:
– Class 3: ‘Soaps; perfumery, essential oils, cosmetics, hair lotions; shampoos; dentifrices’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; bags, handbags, gent’s handbags, purses; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;
– Class 25: ‘Underclothing and outer clothing, footwear, headgear’.
8. As regards the earlier Italian mark, the opposition was based on goods in Classes 3 and 25, covered by, inter alia, that mark and corresponding, for each of those classes, to the following description:
– Class 3: ‘Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;
– Class 25: ‘Underclothing and outer clothing, footwear, headgear’.
9. The opposition was directed against the goods referred to in paragraph 3 above.
10. The grounds put forward in support of the opposition were those referred to in Article 8(1)(b) and 8(5) of Regulation No 40/94 (now Article 8(1)(b) and 8(5) of Regulation No 207/2009).
11. By a decision of 30 May 2008, the Opposition Division upheld the opposition. It first pointed out that the goods designated by the trade mark applied for and those covered by the earlier Community trade mark were ‘more or less identical’. It then went on to hold that the signs at issue were similar to an average degree in visual and phonetic terms and that they were conceptually similar. In addition, it held that the earlier Community trade mark had a normal distinctive character and concluded from this that there was a likelihood of confusion between the marks at issue.
12. On 30 July 2008, the applicant brought an appeal before OHIM against the Opposition Division’s decision, including with this a pleading setting out the grounds of his appeal. On 23 October 2008, the opposing party lodged a response to the abovementioned pleading of the applicant (‘the opposing party’s pleading’).
13. On 24 November 2008, OHIM sent the opposing party’s pleading, by fax, to the number indicated by the applicant in his trade mark application.
14. By decision of 2 April 2009 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. According to the contested decision, the applicant had failed to reply to the opposing party’s pleading. In respect of the substance of the case, the Board of Appeal held, inter alia, that the goods covered by the earlier Community mark were intended for the general public and that the goods to which the trade mark applied for referred were more or less identical to those covered by the earlier Community mark. With regard to the comparison of the signs at issue, the Board of Appeal held that there was a high degree of visual similarity and an average degree of phonetic similarity between them and that they were practically identical in conceptual terms. The Board of Appeal also pointed out that the earlier Community mark had a distinctive character in so far as there was, from the point of view of the average consumer, no link between the geographical name designating the Island of Capri and the goods covered by that mark.
Forms of order sought
15. The applicant claims that the Court should:
– annul the contested decision and reject the opposition;
– order OHIM to pay the costs.
16. OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of the head of claim seeking that OHIM be directed to reject the opposition
17. By his first head of claim, the applicant requests the General Court, inter alia, to direct OHIM to reject the opposition and thus to allow registration of the mark applied for. It must be recalled in this connection that, according to settled case-law, in an action before the European Union Courts against the decision of a Board of Appeal of OHIM, the latter is, under Article 63(6) of Regulation No 40/94 (now Article 65(6) of Regulation No 207/2009), required to take the measures necessary to comply with the judgment of those courts. It is therefore not for the General Court to issue directions to OHIM. It is for the latter to draw the appropriate inferences from the operative part of the Court’s judgments and the grounds on which they are based (Case T-33/03 Osotspa  v OHIM — Distribution & Marketing (Hai)  [2005] ECR II-763, paragraph 15; see, to that effect, Case T-129/01 Alejandro  v OHIM — Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 22).
18. Consequently, the applicant’s claim that the Court should direct OHIM to reject the opposition is inadmissible.
Substance
19. In support of his application, the applicant puts forward two pleas for annulment. The first plea alleges infringement of Rules 50(1) and 20(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1). The second plea alleges, essentially, infringement of Article 8(1)(b) of Regulation No 40/94.
20. In his first plea, the applicant claims, in essence, that, contrary to Rules 50(1) and 20(2) of Regulation No 2868/95, the opposing party’s pleading, lodged during the proceedings before the Board of Appeal, was not communicated to him. That failure, he submits, constitutes a ‘serious’ infringement of his rights of defence, since the applicant was prevented from filing his observations on the opposing party’s pleading.
21. OHIM states in reply, essentially, that the opposing party’s pleading had come to the applicant’s direct knowledge and that the applicant therefore cannot claim an infringement of his rights of defence.
22. Pursuant to Rule 50(1) of Regulation No 2868/95, on the examination of the appeal before the Board of Appeal, ‘[u]nless otherwise provided, the provisions relating to proceedings before the department which has made the decision against which the appeal is brought shall be applicable to appeal proceedings mutatis mutandis ’.
23. Concerning the provisions relating to the proceedings before the Opposition Division, Rule 20(2) of Regulation No 2868/95 provides that ‘any submission by the opposing party shall be communicated [by OHIM] to the applicant, who shall be given an opportunity to reply within a period specified by [OHIM]’.
24. It follows from a combined reading of Rules 50(1) and 20(2) of Regulation No 2868/95 that, in the proceedings before the Board of Appeal, OHIM communicates the submissions of the opposing party to the applicant for a Community trade mark, who has brought the appeal before the Board of Appeal, and invites him to file his observations.
25. OHIM, moreover, does not dispute the fact that it had the task of notifying the opposing party’s pleading to the applicant in order to enable the latter to file his observations before the Board of Appeal adopted the contested decision. It even states that it sent the opposing party’s pleading to the applicant, by fax, at the number indicated in the trade mark application.
26. At the hearing, in response to a written question put by the Court in connection with a measure of organisation of procedure under Article 64 of the Rules of Procedure of the General Court, OHIM admitted that it had erred in sending the opposing party’s pleading, by fax, to the number indicated in the trade mark application and not to the fax number of the applicant’s representative in the proceedings before the Opposition Division and the Board of Appeal. That latter number was, inter alia, mentioned in the form relating to the appeal before the Board of Appeal.
27. OHIM contends, however, that, notwithstanding that error, the applicant was aware of the opposing party’s pleading, with the result that he could have submitted his defence. OHIM indeed states that the communications were notified directly to the applicant, to his fax number indicated in the trade mark application and that, inasmuch as the applicant was aware of the contested decision, he cannot claim not to have known of the opposing party’s pleading.
28. However, OHIM cannot infer from the fact that the applicant knew of the contested decision that he was aware of the opposing party’s pleading in sufficient time to reply to it. Although the contested decision and the opposing party’s pleading were both sent by fax to the number indicated in the trade mark application, the applicant pointed out at the hearing, first, that the number was that of a business consultant who had represented him in 2004 during the registration procedure and, secondly, that it was following his occasional presence in Italy, in May 2009, that the applicant was able personally to take cognisance of the contested decision. It has therefore in no way been established that the applicant had become personally aware of the opposing party’s pleading in such a way as to enable him to reply to it before the Board of Appeal.
29. In any event, it must be recalled that, under Rule 67(1) of Regulation No 2868/85, ‘[i]f a representative has been appointed or where the applicant first named in a common application is considered to be the common representative pursuant to Rule 75(1), notifications shall be addressed to that appointed or common representative’. Therefore, OHIM cannot rely on the alleged notification of the opposing party’s pleading to the applicant himself in order to justify the failure to notify the applicant’s representative.
30. It should also be pointed out that, at the hearing, OHIM itself stated that the practice of the Registry of the Board of Appeal was to notify every document to the specially appointed representative, in order to ensure that the applicant, who might be outside the European Union, receives all communications.
31. Moreover, contrary to what OHIM contended at the hearing, it cannot be inferred from Rule 77 of Regulation No 2868/95, under which any notification addressed to a representative has the same effect as if it had been addressed to the represented person, that notification to the represented person is the same as notification to the representative. If that were the case, Rule 67 of that regulation would serve no purpose.
32. As regards OHIM’s argument to the effect that, notwithstanding its error, the applicant could have submitted his defence by bringing an action before the General Court and submitting a reply and observations during the hearing, suffice it to point out, as the applicant submits, that the contested decision was adopted without the applicant having been able to file his observations on the opposing party’s pleading.
33. Under the second sentence of Article 75 of Regulation No 207/2009, OHIM’s decisions may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. In accordance with that provision, a Board of Appeal of OHIM may base its decision only on matters of fact or of law on which the parties have been able to set out their views (Case C-447/02 P KWS Saat  v OHIM  [2004] ECR I-10107, paragraphs 41 and 42; Case T-242/02 Sunrider  v OHIM (TOP)  [2005] ECR II-2793, paragraphs 58 and 59; and Case T-168/04 L & D  v OHIM — Sämann (Aire Limpio)  [2006] ECR II-2699, paragraph 115).
34. The provision referred to above enshrines, within the context of Community trade mark law, the general principle of the protection of the rights of the defence (Case T-320/03 Citicorp  v OHIM (LIVE RICHLY)  [2005] ECR II-3411, paragraph 21, and Case T-317/05 Kustom Musical Amplification  v OHIM (Shape of a guitar)  [2007] ECR II-427, paragraph 26). According to that general principle, a person whose interests are appreciably affected by a decision addressed to that person and taken by a public authority must be given the opportunity to make his point of view known (Case 17/74 Transocean Marine Paint Association  v Commission  [1974] ECR 1063, paragraph 15; Case T-34/00 Eurocool Logistik  v OHIM (EUROCOOL)  [2002] ECR II-683, paragraph 21; and LIVE RICHLY , paragraph 22).
35. Admittedly, a procedural irregularity will lead to the annulment of all or part of a decision only if it is shown that, had it not been for that irregularity, the contested decision might have been substantively different (judgment of 11 July 2006 in Case T-247/03 Torres  v OHIM  — Bodegas Muga (Torre Muga) , not published in the ECR, paragraph 79, and Case T-137/09 Nike International  v OHIM — Muñoz Molina (R10)  [2010] ECR II-5433, paragraph 30).
36. In the present case, the applicant submitted at the hearing that the opposing party’s pleading devoted several pages to the distinctive character of the earlier mark. Even though, in his pleading setting out the grounds of his appeal before the Board of Appeal, the applicant had submitted arguments relating to the distinctive character of the earlier mark, it must be held that, in paragraph 17 of the contested decision, with a view to concluding that the earlier mark had a distinctive character, the Board of Appeal held, in terms similar to those used in the opposing party’s pleading, that there was no link between the geographical name of the Island of Capri and the goods designated by the earlier mark. On that aspect, however, the applicant did not have the opportunity to file his observations in reply to the opposing party’s pleading, with the result that it cannot be claimed that, had that irregularity not occurred, the contested decision could not have been different, contrary to what OHIM contended at the hearing.
37. It follows from all of the foregoing that the plea alleging infringement of Rule 50(1) and Rule 20(2) of Regulation No 2868/95 must be upheld, without there being any need to examine the second plea.
38. Consequently, the action must be upheld and the contested decision annulled.
Costs
39. Under Article 87(2) 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. Since OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
Operative part
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 2 April 2009 (Case R 1148/2008-1);
2. Orders OHIM to pay the costs.