# 62010TJ0278(01)

JUDGMENT OF THE GENERAL COURT (Second Chamber)

24 November 2015 (
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‛Community trade mark — Opposition proceedings — Application for Community word mark WESTERN GOLD — Earlier national, Community and international word marks WeserGold, Wesergold and WESERGOLD — Relative grounds for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Decision on the appeal — Article 64(1) of Regulation No 207/2009 — Obligation to state reasons — Right to be heard — Article 75 of Regulation No 207/2009’

In Case T‐278/10 RENV,

riha WeserGold Getränke GmbH & Co. KG (formerly Wesergold Getränkeindustrie GmbH & Co. KG), established in Rinteln (Germany), represented by T. Melchert, P. Goldenbaum and I. Rohr, lawyers,

riha WeserGold Getränke GmbH & Co. KG

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by A. Pohlmann and subsequently by S. Hanne, acting as Agents,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

defendant,

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

Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented by A. Marx and M. Wolter, lawyers,

Lidl Stiftung & Co. KG

ACTION brought against the decision of the First Board of Appeal of OHIM of 24 March 2010 (Case R 770/2009-1) concerning opposition proceedings between Wesergold Getränkeindustrie GmbH & Co. KG and Lidl Stiftung & Co. KG,

THE GENERAL COURT (Second Chamber),

composed of M.E. Martins Ribeiro (Rapporteur), President, S. Gervasoni and L. Madise, Judges,

Registrar: J. Weychert, Administrator,

having regard to the written procedure and further to the hearing on 15 April 2015,

gives the following

Judgment

Judgment

Background to the dispute

Background to the dispute

| 1 | On 23 August 2006, the intervener, Lidl Stiftung & Co. KG, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)). |
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1

On 23 August 2006, the intervener, Lidl Stiftung & Co. KG, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

| 2 | The mark in respect of which registration was sought is the word sign WESTERN GOLD. |
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2

The mark in respect of which registration was sought is the word sign WESTERN GOLD.

| 3 | The goods in respect of which registration was sought are in Class 33 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 to the following description: ‘Spirits, in particular whisky’. |
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3

The goods in respect of which registration was sought are in Class 33 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 to the following description: ‘Spirits, in particular whisky’.

| 4 | The Community trade mark application was published in Community Trade Marks Bulletin No 3/2007 of 22 January 2007. |
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4

The Community trade mark application was published in Community Trade Marks Bulletin No 3/2007 of 22 January 2007.

| 5 | On 14 March 2007, Wesergold Getränkeindustrie GmbH & Co. KG, whose rights are vested in the applicant, riha WeserGold Getränke GmbH & Co. filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of the trade mark applied for in respect of all of the goods referred to in paragraph 3 above. |
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5

On 14 March 2007, Wesergold Getränkeindustrie GmbH & Co. KG, whose rights are vested in the applicant, riha WeserGold Getränke GmbH & Co. filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of the trade mark applied for in respect of all of the goods referred to in paragraph 3 above.

| 6 | The opposition was based on various earlier marks. |
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6

The opposition was based on various earlier marks.

| 7 | The first earlier trade mark relied upon was the Community word sign WeserGold, filed on 3 January 2003 and registered on 2 March 2005 under No 2994739, in respect of goods in Classes 29, 31 and 32 and corresponding, for each of those classes, to the following description:





  — | Class 29: ‘preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; milk products, namely yoghurt drinks, consisting mainly of yoghurt, fruit juices or vegetable juices’; |
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7

The first earlier trade mark relied upon was the Community word sign WeserGold, filed on 3 January 2003 and registered on 2 March 2005 under No 2994739, in respect of goods in Classes 29, 31 and 32 and corresponding, for each of those classes, to the following description:

—

Class 29: ‘preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; milk products, namely yoghurt drinks, consisting mainly of yoghurt, fruit juices or vegetable juices’;

| — | Class 31: ‘Fresh fruits’; |
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Class 31: ‘Fresh fruits’;

| — | Class 32: ‘Mineral and aerated waters; other non-alcoholic beverages, namely lemonades, carbonated drinks and cola drinks; fruit juices, fruit drinks, vegetable juices and vegetable drinks; syrups and other preparations for making beverages’. |
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Class 32: ‘Mineral and aerated waters; other non-alcoholic beverages, namely lemonades, carbonated drinks and cola drinks; fruit juices, fruit drinks, vegetable juices and vegetable drinks; syrups and other preparations for making beverages’.

| 8 | The second earlier trade mark relied upon was the German word mark WeserGold, filed on 26 November 2002 and registered on 27 February 2003 under No 30257995, in respect of goods in Classes 29, 31 and 32 and corresponding, for each of those classes, to the following description:





  — | Class 29: ‘Preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; milk products, namely yoghurt drinks, consisting mainly of yoghurt, fruit juices or vegetable juices’; |
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8

The second earlier trade mark relied upon was the German word mark WeserGold, filed on 26 November 2002 and registered on 27 February 2003 under No 30257995, in respect of goods in Classes 29, 31 and 32 and corresponding, for each of those classes, to the following description:

—

Class 29: ‘Preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; milk products, namely yoghurt drinks, consisting mainly of yoghurt, fruit juices or vegetable juices’;

| — | Class 31: ‘Fresh fruits’; |
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—

Class 31: ‘Fresh fruits’;

| — | Class 32: ‘Mineral and aerated waters; other non-alcoholic beverages, namely lemonades, carbonated drinks and cola drinks; fruit juices, fruit drinks, vegetable juices and vegetable drinks; syrups and other preparations for making beverages’. |
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Class 32: ‘Mineral and aerated waters; other non-alcoholic beverages, namely lemonades, carbonated drinks and cola drinks; fruit juices, fruit drinks, vegetable juices and vegetable drinks; syrups and other preparations for making beverages’.

| 9 | The third earlier trade mark relied upon was the international word mark No 801149 Wesergold, filed on 13 March 2003, and producing its effects in the Czech Republic, Denmark, Spain, France, Italy, Hungary, Austria, Poland, Portugal, Slovenia, Sweden, the United Kingdom and the Benelux countries, in respect of goods in Classes 29, 31 and 32 and corresponding, for each of those classes, to the following description:





  — | Class 29: ‘Preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; milk products, namely yoghurt drinks, consisting mainly of yoghurt, fruit juices or vegetable juices’; |
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9

The third earlier trade mark relied upon was the international word mark No 801149 Wesergold, filed on 13 March 2003, and producing its effects in the Czech Republic, Denmark, Spain, France, Italy, Hungary, Austria, Poland, Portugal, Slovenia, Sweden, the United Kingdom and the Benelux countries, in respect of goods in Classes 29, 31 and 32 and corresponding, for each of those classes, to the following description:

—

Class 29: ‘Preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; milk products, namely yoghurt drinks, consisting mainly of yoghurt, fruit juices or vegetable juices’;

| — | Class 31: ‘Fresh fruits’; |
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—

Class 31: ‘Fresh fruits’;

| — | Class 32: ‘Mineral and aerated waters; other non-alcoholic beverages, namely lemonades, carbonated drinks and cola drinks; fruit juices, fruit drinks, vegetable juices and vegetable drinks; syrups and other preparations for making beverages’. |
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—

Class 32: ‘Mineral and aerated waters; other non-alcoholic beverages, namely lemonades, carbonated drinks and cola drinks; fruit juices, fruit drinks, vegetable juices and vegetable drinks; syrups and other preparations for making beverages’.

| 10 | The fourth earlier trade mark relied upon was the German word mark WESERGOLD, filed on 12 June 1970, registered on 16 February 1973 under No 902472 and renewed on 13 June 2000, in respect of goods in Class 32 and corresponding to the following description: ‘Ciders, lemonades, mineral water, vegetable juice beverages, fruit juice’. |
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10

The fourth earlier trade mark relied upon was the German word mark WESERGOLD, filed on 12 June 1970, registered on 16 February 1973 under No 902472 and renewed on 13 June 2000, in respect of goods in Class 32 and corresponding to the following description: ‘Ciders, lemonades, mineral water, vegetable juice beverages, fruit juice’.

| 11 | The fifth earlier mark relied upon was the Polish work mark WESERGOLD, filed on 26 June 1996 and registered on 11 May 1999 under No 161413, in respect of goods in Class 32 and corresponding to the following description: ‘Mineral waters and spring waters; table waters; non-alcoholic beverages, fruit juices, fruit nectars, fruit syrups, vegetable juices, vegetable nectars, refreshments, beverages made from fruit juices, lemonade, effervescing beverages, mineral beverages, ice teas, flavoured mineral waters, mineral waters with added fruit juices — all the aforesaid beverages also dietetic preparations not adapted for medical purposes’. |
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11

The fifth earlier mark relied upon was the Polish work mark WESERGOLD, filed on 26 June 1996 and registered on 11 May 1999 under No 161413, in respect of goods in Class 32 and corresponding to the following description: ‘Mineral waters and spring waters; table waters; non-alcoholic beverages, fruit juices, fruit nectars, fruit syrups, vegetable juices, vegetable nectars, refreshments, beverages made from fruit juices, lemonade, effervescing beverages, mineral beverages, ice teas, flavoured mineral waters, mineral waters with added fruit juices — all the aforesaid beverages also dietetic preparations not adapted for medical purposes’.

| 12 | The ground relied upon in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). |
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12

The ground relied upon in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

| 13 | On 11 June 2009, the Opposition Division upheld the opposition and rejected the application for the Community trade mark. For reasons of procedural economy, the Opposition Division limited its examination of the opposition to the earlier Community word sign, for which proof of genuine use was not required. |
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13

On 11 June 2009, the Opposition Division upheld the opposition and rejected the application for the Community trade mark. For reasons of procedural economy, the Opposition Division limited its examination of the opposition to the earlier Community word sign, for which proof of genuine use was not required.

| 14 | On 13 July 2009, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. |
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14

On 13 July 2009, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

| 15 | By decision of 24 March 2010 (‘the contested decision’), the First Board of Appeal of OHIM upheld the appeal and annulled the Opposition Division’s decision. It found that the relevant public consisted of the general public of the European Union. In its view, the goods covered by the mark applied for, in Class 33 — namely, ‘spirits and, in particular whisky’ — were not similar to the goods covered by the earlier trade marks, in Classes 29 and 31 (see paragraphs 20 and 21 of the contested decision). The Board of Appeal found that there was a low degree of similarity between the goods covered by the mark applied for in Class 33 and those covered by the earlier marks in Class 32 (see paragraphs 22 to 28 of the contested decision). The signs at issue showed a moderate degree of visual (see paragraph 33 of the contested decision) and phonetic (see paragraph 34 of the contested decision) similarity, but were conceptually different (see paragraphs 35 to 37 of the contested decision). As regards the distinctiveness of the earlier trade marks, the Board of Appeal considered, in essence, that this was slightly below average owing to the presence of the word ‘gold’, which has a low distinctiveness (see paragraphs 38 to 40 of the contested decision). Last, it stated that the evaluation of all the circumstances of the case, in the assessment of the likelihood of confusion, led to the conclusion that there was no likelihood of confusion between the signs at issue (see paragraphs 41 to 47 of the contested decision). |
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15

By decision of 24 March 2010 (‘the contested decision’), the First Board of Appeal of OHIM upheld the appeal and annulled the Opposition Division’s decision. It found that the relevant public consisted of the general public of the European Union. In its view, the goods covered by the mark applied for, in Class 33 — namely, ‘spirits and, in particular whisky’ — were not similar to the goods covered by the earlier trade marks, in Classes 29 and 31 (see paragraphs 20 and 21 of the contested decision). The Board of Appeal found that there was a low degree of similarity between the goods covered by the mark applied for in Class 33 and those covered by the earlier marks in Class 32 (see paragraphs 22 to 28 of the contested decision). The signs at issue showed a moderate degree of visual (see paragraph 33 of the contested decision) and phonetic (see paragraph 34 of the contested decision) similarity, but were conceptually different (see paragraphs 35 to 37 of the contested decision). As regards the distinctiveness of the earlier trade marks, the Board of Appeal considered, in essence, that this was slightly below average owing to the presence of the word ‘gold’, which has a low distinctiveness (see paragraphs 38 to 40 of the contested decision). Last, it stated that the evaluation of all the circumstances of the case, in the assessment of the likelihood of confusion, led to the conclusion that there was no likelihood of confusion between the signs at issue (see paragraphs 41 to 47 of the contested decision).

Procedure before the General Court and the Court of Justice

Procedure before the General Court and the Court of Justice

| 16 | By application lodged at the Registry of the General Court on 21 June 2010, the applicant brought an action for annulment of the contested decision on the ground of infringement of Article 8(1)(b), Article 64, the second sentence of Article 75 and, in the alternative, the first sentence of Article 75 of Regulation No 207/2009. |
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16

By application lodged at the Registry of the General Court on 21 June 2010, the applicant brought an action for annulment of the contested decision on the ground of infringement of Article 8(1)(b), Article 64, the second sentence of Article 75 and, in the alternative, the first sentence of Article 75 of Regulation No 207/2009.

| 17 | The parties presented oral argument and answered the questions put by the Court at the hearing on 27 June 2012. |
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17

The parties presented oral argument and answered the questions put by the Court at the hearing on 27 June 2012.

| 18 | By judgment of 21 September 2012 in Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (WESTERN GOLD) (T‐278/10, ECR, ‘the judgment of the General Court’, EU:T:2012:459), the General Court annulled the contested decision and ordered OHIM to bear its own costs and to pay the costs of the applicant and ordered the intervener to bear its own costs. |
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18

By judgment of 21 September 2012 in Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (WESTERN GOLD) (T‐278/10, ECR, ‘the judgment of the General Court’, EU:T:2012:459), the General Court annulled the contested decision and ordered OHIM to bear its own costs and to pay the costs of the applicant and ordered the intervener to bear its own costs.

Wesergold Getränkeindustrie

OHIM — Lidl Stiftung (WESTERN GOLD)

| 19 | In reaching that decision, the General Court examined the first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, without ruling on the other three pleas raised by the applicant. After finding, in paragraph 58 of its judgment, that, in spite of their visual and phonetic similarities, the signs at issue were different overall, owing to significant conceptual differences between them, the General Court took issue with the Board of Appeal, in paragraphs 72, 82 and 83 of the judgment, first, for having found that the applicant had not invoked the increased distinctiveness resulting from the use of the earlier marks; next, for having failed, because of such an error, to examine a potentially relevant factor in the global assessment as to whether there was a likelihood of confusion between the mark applied for and the earlier marks; and, last, for having, because of such an omission, acted in breach of essential procedural requirements, which meant that the contested decision must be annulled. |
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19

In reaching that decision, the General Court examined the first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, without ruling on the other three pleas raised by the applicant. After finding, in paragraph 58 of its judgment, that, in spite of their visual and phonetic similarities, the signs at issue were different overall, owing to significant conceptual differences between them, the General Court took issue with the Board of Appeal, in paragraphs 72, 82 and 83 of the judgment, first, for having found that the applicant had not invoked the increased distinctiveness resulting from the use of the earlier marks; next, for having failed, because of such an error, to examine a potentially relevant factor in the global assessment as to whether there was a likelihood of confusion between the mark applied for and the earlier marks; and, last, for having, because of such an omission, acted in breach of essential procedural requirements, which meant that the contested decision must be annulled.

| 20 | By application lodged at the Registry of the Court of Justice on 4 December 2012, OHIM brought an appeal against the judgment of the General Court, claiming that the Court of Justice should set that judgment aside. |
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20

By application lodged at the Registry of the Court of Justice on 4 December 2012, OHIM brought an appeal against the judgment of the General Court, claiming that the Court of Justice should set that judgment aside.

| 21 | By judgment of 23 January 2014 in OHMI v riha WeserGold Getränke (C‐558/12 P, ECR, ‘the judgment on appeal’, EU:C:2014:22), the Court of Justice set aside the judgment of the General Court. |
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21

By judgment of 23 January 2014 in OHMI v riha WeserGold Getränke (C‐558/12 P, ECR, ‘the judgment on appeal’, EU:C:2014:22), the Court of Justice set aside the judgment of the General Court.

OHMI

riha WeserGold Getränke

| 22 | The Court of Justice found that the judgment of the General Court was vitiated by an error of law in the interpretation of Article 8(1)(b) of Regulation No 207/2009, as the General Court had wrongly considered that the Board of Appeal’s failure to examine the enhanced distinctiveness of the earlier marks meant that the contested decision must be annulled. The Court of Justice held, in paragraph 48 of the judgment on appeal, that the examination of that factor by the Board of Appeal was irrelevant for the purposes of assessing whether there was a likelihood of confusion between the marks at issue, since the General Court had already found that the marks at issue were different overall, so that any risk of confusion was precluded and the possible enhanced distinctiveness of the earlier mark, acquired through use, could not offset the lack of similarity between those marks. |
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22

The Court of Justice found that the judgment of the General Court was vitiated by an error of law in the interpretation of Article 8(1)(b) of Regulation No 207/2009, as the General Court had wrongly considered that the Board of Appeal’s failure to examine the enhanced distinctiveness of the earlier marks meant that the contested decision must be annulled. The Court of Justice held, in paragraph 48 of the judgment on appeal, that the examination of that factor by the Board of Appeal was irrelevant for the purposes of assessing whether there was a likelihood of confusion between the marks at issue, since the General Court had already found that the marks at issue were different overall, so that any risk of confusion was precluded and the possible enhanced distinctiveness of the earlier mark, acquired through use, could not offset the lack of similarity between those marks.

| 23 | The Court of Justice held in paragraph 61 of the judgment on appeal:
  ‘Since the General Court examined only one of the four pleas in law relied on by riha WeserGold Getränke in support of its action, the Court of Justice considers that the state of the proceedings in the present case does not permit judgment to be given. The case must therefore be referred back to the General Court.’ |
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23

The Court of Justice held in paragraph 61 of the judgment on appeal:

‘Since the General Court examined only one of the four pleas in law relied on by riha WeserGold Getränke in support of its action, the Court of Justice considers that the state of the proceedings in the present case does not permit judgment to be given. The case must therefore be referred back to the General Court.’

| 24 | After delivery of the judgment on appeal and in accordance with Article 118(1) of the Rules of Procedure of the General Court of 2 May 1991, the case was assigned to the Second Chamber of the General Court. |
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24

After delivery of the judgment on appeal and in accordance with Article 118(1) of the Rules of Procedure of the General Court of 2 May 1991, the case was assigned to the Second Chamber of the General Court.

Procedure and forms of order sought after referral

Procedure and forms of order sought after referral

| 25 | The parties were asked to submit their observations, in accordance with Article 119(1) of the Rules of Procedure of 2 May 1991. The applicant, OHIM and the intervener lodged their statements in observation within the prescribed period, on 1 April and 8 and 14 May 2014 respectively. |
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25

The parties were asked to submit their observations, in accordance with Article 119(1) of the Rules of Procedure of 2 May 1991. The applicant, OHIM and the intervener lodged their statements in observation within the prescribed period, on 1 April and 8 and 14 May 2014 respectively.

| 26 | In its observations, the applicant claims that the Court should:





  — | annul the contested decision; |
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26

In its observations, the applicant claims that the Court should:

—

annul the contested decision;

| — | order OHIM or the intervener to pay the costs, including those relating to the proceedings before the Court of Justice. |
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—

order OHIM or the intervener to pay the costs, including those relating to the proceedings before the Court of Justice.

| 27 | In their observations, OHIM and the intervener contend that the Court should:





  — | dismiss the action; |
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27

In their observations, OHIM and the intervener contend that the Court should:

—

dismiss the action;

| — | order the applicant to pay the costs relating to the proceedings before this Court (T‐278/10 and T‐278/10 RENV) and those relating to the proceedings before the Court of Justice (C‐558/12 P). |
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—

order the applicant to pay the costs relating to the proceedings before this Court (T‐278/10 and T‐278/10 RENV) and those relating to the proceedings before the Court of Justice (C‐558/12 P).

Law

Law

| 28 | In support of the action, the applicant raises four pleas in law, alleging infringement, in the first place, of Article 8(1)(b) of Regulation No 207/2009; in the second place, of Article 64 of that regulation; in the third place, of the second sentence of Article 75 of that regulation; and, in the fourth place, of the first sentence of Article 75 of that regulation. |
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28

In support of the action, the applicant raises four pleas in law, alleging infringement, in the first place, of Article 8(1)(b) of Regulation No 207/2009; in the second place, of Article 64 of that regulation; in the third place, of the second sentence of Article 75 of that regulation; and, in the fourth place, of the first sentence of Article 75 of that regulation.

First plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

First plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

| 29 | The applicant infers from the judgment on appeal that the argument relating to enhanced distinctiveness, acquired through use, and the influence of that distinctiveness ought to have been assessed in the context of the examination of the visual, phonetic and conceptual similarities of the signs at issue and that the Court should therefore undertake such an examination, examining the enhanced distinctiveness, acquired through use, of the earlier marks, and adjudicate on the action in its entirety, including all four pleas, without being bound by the judgment of the General Court. |
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29

The applicant infers from the judgment on appeal that the argument relating to enhanced distinctiveness, acquired through use, and the influence of that distinctiveness ought to have been assessed in the context of the examination of the visual, phonetic and conceptual similarities of the signs at issue and that the Court should therefore undertake such an examination, examining the enhanced distinctiveness, acquired through use, of the earlier marks, and adjudicate on the action in its entirety, including all four pleas, without being bound by the judgment of the General Court.

| 30 | From that aspect, the applicant claims, in essence, first of all, that the signs at issue present a moderate degree of similarity, which was found both by the Board of Appeal and in the judgment of the General Court. The applicant maintains, next, that the existence of conceptual dissimilarity between the signs cannot offset the visual and phonetic similarities found. Last, the applicant calls into question the examination relating to the similarity of the goods at issue, the analysis of the existence of a likelihood of confusion and the distinctiveness of the earlier marks. |
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30

From that aspect, the applicant claims, in essence, first of all, that the signs at issue present a moderate degree of similarity, which was found both by the Board of Appeal and in the judgment of the General Court. The applicant maintains, next, that the existence of conceptual dissimilarity between the signs cannot offset the visual and phonetic similarities found. Last, the applicant calls into question the examination relating to the similarity of the goods at issue, the analysis of the existence of a likelihood of confusion and the distinctiveness of the earlier marks.

| 31 | In that regard, it should be pointed out that it is apparent merely on reading the judgment of the General Court that, as both OHIM and the intervener rightly observe, the General Court reached the conclusion, set out in paragraph 58 of its judgment, that ‘the signs [were] different overall, despite their visual and phonetic similarities’. |
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31

In that regard, it should be pointed out that it is apparent merely on reading the judgment of the General Court that, as both OHIM and the intervener rightly observe, the General Court reached the conclusion, set out in paragraph 58 of its judgment, that ‘the signs [were] different overall, despite their visual and phonetic similarities’.

| 32 | Furthermore, it is apparent from the judgment on appeal that the Court of Justice set aside the judgment of the General Court on the sole ground that, notwithstanding the lack of similarity between the signs at issue, the General Court had taken issue with the Board of Appeal for not having examined the existence of the enhanced distinctiveness of the earlier marks, acquired through use, whereas, as the marks were different overall, any likelihood of confusion was precluded. It follows that the criterion of the enhanced distinctiveness of the earlier marks, acquired through use, must be examined only where similarity between the signs and also similarity between the goods and services concerned have already been found, and only in the context of the examination relating to the likelihood of confusion. |
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32

Furthermore, it is apparent from the judgment on appeal that the Court of Justice set aside the judgment of the General Court on the sole ground that, notwithstanding the lack of similarity between the signs at issue, the General Court had taken issue with the Board of Appeal for not having examined the existence of the enhanced distinctiveness of the earlier marks, acquired through use, whereas, as the marks were different overall, any likelihood of confusion was precluded. It follows that the criterion of the enhanced distinctiveness of the earlier marks, acquired through use, must be examined only where similarity between the signs and also similarity between the goods and services concerned have already been found, and only in the context of the examination relating to the likelihood of confusion.

| 33 | It follows from paragraphs 48 to 50 of the judgment on appeal that:





  ‘48 | In that way, by holding that the Board of Appeal’s failure to examine the enhanced distinctiveness of the earlier marks, acquired through use, meant that the contested decision was invalid, the General Court called for the Board of Appeal to examine a factor that was of no relevance to the assessment as to whether there was a likelihood of confusion, for the purposes of Article 8(1)(b) of Regulation No 207/2009, between the marks at issue. Since the General Court had already found that the marks at issue were dissimilar overall, any likelihood of confusion had to be ruled out and the possible enhanced distinctiveness of the earlier marks, acquired through use, could not offset the lack of similarity between the marks at issue. |
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33

It follows from paragraphs 48 to 50 of the judgment on appeal that:

‘48

In that way, by holding that the Board of Appeal’s failure to examine the enhanced distinctiveness of the earlier marks, acquired through use, meant that the contested decision was invalid, the General Court called for the Board of Appeal to examine a factor that was of no relevance to the assessment as to whether there was a likelihood of confusion, for the purposes of Article 8(1)(b) of Regulation No 207/2009, between the marks at issue. Since the General Court had already found that the marks at issue were dissimilar overall, any likelihood of confusion had to be ruled out and the possible enhanced distinctiveness of the earlier marks, acquired through use, could not offset the lack of similarity between the marks at issue.

| 49 | In those circumstances, OHIM is right to claim that the judgment under appeal is vitiated by an error in law in the interpretation of Article 8(1)(b) of Regulation No 207/2009. |
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49

In those circumstances, OHIM is right to claim that the judgment under appeal is vitiated by an error in law in the interpretation of Article 8(1)(b) of Regulation No 207/2009.

| 50 | It follows from the foregoing that, without it being necessary to examine the other two grounds of appeal, the judgment under appeal must be set aside, in so far as, by that judgment, the General Court held that the Board of Appeal was required to examine the enhanced distinctiveness of the earlier marks, acquired through use, and annulled the contested decision on the ground that the Board had failed to do so, notwithstanding a prior finding in the judgment under appeal that the marks at issue were dissimilar.’ |
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50

It follows from the foregoing that, without it being necessary to examine the other two grounds of appeal, the judgment under appeal must be set aside, in so far as, by that judgment, the General Court held that the Board of Appeal was required to examine the enhanced distinctiveness of the earlier marks, acquired through use, and annulled the contested decision on the ground that the Board had failed to do so, notwithstanding a prior finding in the judgment under appeal that the marks at issue were dissimilar.’

| 34 | Since the General Court found that the signs at issue were not similar and that one of the conditions for the application of Article 8(1)(b) of Regulation No 207/2009 was thus not fulfilled, any likelihood of confusion was precluded, as is apparent from paragraph 48 of the judgment on appeal. |
| --- | --- |

34

Since the General Court found that the signs at issue were not similar and that one of the conditions for the application of Article 8(1)(b) of Regulation No 207/2009 was thus not fulfilled, any likelihood of confusion was precluded, as is apparent from paragraph 48 of the judgment on appeal.

| 35 | The applicant cannot therefore call into question, as it attempts to do, the analysis of the similarity between the signs at issue carried out in the judgment of the General Court and the result at which that Court arrived, which, moreover, were not called into question in the judgment on appeal. |
| --- | --- |

35

The applicant cannot therefore call into question, as it attempts to do, the analysis of the similarity between the signs at issue carried out in the judgment of the General Court and the result at which that Court arrived, which, moreover, were not called into question in the judgment on appeal.

| 36 | Although the operative part of the judgment on appeal declares that judgment of the General Court is set aside specifying the extent to which it is set aside, it does not preclude the operative part of the judgment on appeal being read in conjunction with the grounds set out in that judgment. |
| --- | --- |

36

Although the operative part of the judgment on appeal declares that judgment of the General Court is set aside specifying the extent to which it is set aside, it does not preclude the operative part of the judgment on appeal being read in conjunction with the grounds set out in that judgment.

| 37 | According to a consistent line of decisions, in order to comply with a judgment annulling a measure and to implement it fully, the institution is required to have regard not only to the operative part of the judgment but also to the grounds which led to it and constitute its essential basis, in so far as they are necessary to determine the exact meaning of what is stated in the operative part. It is those grounds which, on the one hand, identify the precise provision held to be illegal and, on the other, indicate the specific reasons which underlie the finding of illegality contained in the operative part and which the institution concerned must take into account when replacing the annulled measure (judgment of 26 April 1988 in Asteris and Others v Commission, 97/86, 99/86, 193/86 and 215/86, ECR, EU:C:1988:199, paragraph 27; see also, to that effect, judgments of 15 May 1997 in TWD v Commission, C‐355/95 P, ECR, EU:C:1997:241, paragraph 21, and of 7 October 1999 in Irish Sugar v Commission, T‐228/97, ECR, EU:T:1999:246, paragraph 17). |
| --- | --- |

37

According to a consistent line of decisions, in order to comply with a judgment annulling a measure and to implement it fully, the institution is required to have regard not only to the operative part of the judgment but also to the grounds which led to it and constitute its essential basis, in so far as they are necessary to determine the exact meaning of what is stated in the operative part. It is those grounds which, on the one hand, identify the precise provision held to be illegal and, on the other, indicate the specific reasons which underlie the finding of illegality contained in the operative part and which the institution concerned must take into account when replacing the annulled measure (judgment of 26 April 1988 in Asteris and Others v Commission, 97/86, 99/86, 193/86 and 215/86, ECR, EU:C:1988:199, paragraph 27; see also, to that effect, judgments of 15 May 1997 in TWD v Commission, C‐355/95 P, ECR, EU:C:1997:241, paragraph 21, and of 7 October 1999 in Irish Sugar v Commission, T‐228/97, ECR, EU:T:1999:246, paragraph 17).

Asteris and Others

Commission

TWD

Commission

Irish Sugar

Commission

| 38 | It should be borne in mind that, in paragraph 50 of the judgment on appeal, the Court of Justice stated that ‘the judgment under appeal must be set aside, in so far as, by that judgment, the General Court [had] held that the Board of Appeal was required to examine the enhanced distinctiveness of the earlier marks, acquired through use, and [had] annulled the [decision at issue] on the ground that the Board had failed to do so, notwithstanding a prior finding in the judgment under appeal that the marks at issue were dissimilar’, which means that the Court of Justice did not intend to call into question the findings of fact made by the General Court as regards the analysis of the similarity of the signs at issue, and which constituted the basis of the reasoning of the Court of Justice. |
| --- | --- |

38

It should be borne in mind that, in paragraph 50 of the judgment on appeal, the Court of Justice stated that ‘the judgment under appeal must be set aside, in so far as, by that judgment, the General Court [had] held that the Board of Appeal was required to examine the enhanced distinctiveness of the earlier marks, acquired through use, and [had] annulled the [decision at issue] on the ground that the Board had failed to do so, notwithstanding a prior finding in the judgment under appeal that the marks at issue were dissimilar’, which means that the Court of Justice did not intend to call into question the findings of fact made by the General Court as regards the analysis of the similarity of the signs at issue, and which constituted the basis of the reasoning of the Court of Justice.

| 39 | As that ground for setting aside the judgment under appeal did not affect those findings of fact, the examination of the first ground of appeal was therefore concluded by the finding that examination of the enhanced distinctiveness of the earlier marks, acquired through use, was ineffective, since the signs at issue were different. |
| --- | --- |

39

As that ground for setting aside the judgment under appeal did not affect those findings of fact, the examination of the first ground of appeal was therefore concluded by the finding that examination of the enhanced distinctiveness of the earlier marks, acquired through use, was ineffective, since the signs at issue were different.

| 40 | That is also confirmed in paragraph 48 of the judgment on appeal, where the Court of Justice observed that, ‘since the General Court had already found that the marks at issue were dissimilar overall, any likelihood of confusion had to be ruled out and the possible enhanced distinctiveness of the earlier marks, acquired through use, could not offset the lack of similarity between the marks at issue’. |
| --- | --- |

40

That is also confirmed in paragraph 48 of the judgment on appeal, where the Court of Justice observed that, ‘since the General Court had already found that the marks at issue were dissimilar overall, any likelihood of confusion had to be ruled out and the possible enhanced distinctiveness of the earlier marks, acquired through use, could not offset the lack of similarity between the marks at issue’.

| 41 | The analysis of the similarity between the signs at issue, and in particular the difference between them found by the General Court, was disputed by the applicant in the proceedings before the Court of Justice, as is apparent from paragraph 38 of the judgment on appeal, where the Court of Justice recalled that the applicant maintained that the first ground of appeal was unfounded ‘in so far as the General Court’s finding that there [was] no similarity between the marks in question [had been] an interim conclusion which had yet to take account of the distinctiveness of the earlier marks’. |
| --- | --- |

41

The analysis of the similarity between the signs at issue, and in particular the difference between them found by the General Court, was disputed by the applicant in the proceedings before the Court of Justice, as is apparent from paragraph 38 of the judgment on appeal, where the Court of Justice recalled that the applicant maintained that the first ground of appeal was unfounded ‘in so far as the General Court’s finding that there [was] no similarity between the marks in question [had been] an interim conclusion which had yet to take account of the distinctiveness of the earlier marks’.

| 42 | By not upholding the applicant’s submissions, and by setting aside the judgment of the General Court on the ground that the dissimilarity between the signs at issue necessarily had the consequence that there was no likelihood of confusion, the Court of Justice intended to uphold, by implication but necessarily, the analysis carried out by the General Court, which established that the signs were different. |
| --- | --- |

42

By not upholding the applicant’s submissions, and by setting aside the judgment of the General Court on the ground that the dissimilarity between the signs at issue necessarily had the consequence that there was no likelihood of confusion, the Court of Justice intended to uphold, by implication but necessarily, the analysis carried out by the General Court, which established that the signs were different.

| 43 | In addition, if the analysis of the similarity of the signs at issue were to be called into question at this stage, when the Court of Justice made no mention of any error by the General Court on that point, that would be tantamount to setting up the Second Chamber of the General Court as an appellate court from the First Chamber of the General Court and, furthermore, to depriving the judgment on appeal of part of its binding effect, in so far as the setting-aside of the judgment under appeal could not go further than the setting-aside declared by the Court of Justice and allow the facts to be called into question, thereby rendering inoperative the grounds on which the judgment on appeal is based. |
| --- | --- |

43

In addition, if the analysis of the similarity of the signs at issue were to be called into question at this stage, when the Court of Justice made no mention of any error by the General Court on that point, that would be tantamount to setting up the Second Chamber of the General Court as an appellate court from the First Chamber of the General Court and, furthermore, to depriving the judgment on appeal of part of its binding effect, in so far as the setting-aside of the judgment under appeal could not go further than the setting-aside declared by the Court of Justice and allow the facts to be called into question, thereby rendering inoperative the grounds on which the judgment on appeal is based.

| 44 | It therefore follows from the judgment on appeal that, in the context of these proceedings, it is for the Court, as is clear from paragraph 61 of the judgment on appeal, to examine the second to the fourth pleas raised before it in the first proceedings. |
| --- | --- |

44

It therefore follows from the judgment on appeal that, in the context of these proceedings, it is for the Court, as is clear from paragraph 61 of the judgment on appeal, to examine the second to the fourth pleas raised before it in the first proceedings.

| 45 | The first plea must therefore be rejected. |
| --- | --- |

45

The first plea must therefore be rejected.

Second plea, alleging infringement of Article 64 of Regulation No 207/2009

Second plea, alleging infringement of Article 64 of Regulation No 207/2009

| 46 | The applicant takes issue, in essence, with the Board of Appeal for having infringed Article 64 of Regulation No 207/2009 by examining the likelihood of confusion solely by reference to the Community trade mark registered as No 2994739. It maintains that, since the Opposition Division had found that there was a likelihood of confusion between the Community trade mark and the mark applied for and since the Board of Appeal found, on the contrary, that there was no likelihood of confusion, it ought either to have referred the case back to the Opposition Division or to have examined whether there was a likelihood of confusion by reference to all the earlier marks relied on, but not, as it did, to have found that there was no likelihood of confusion without assessing that likelihood by reference to all the earlier marks and merely taking only the earlier Community trade mark into consideration. |
| --- | --- |

46

The applicant takes issue, in essence, with the Board of Appeal for having infringed Article 64 of Regulation No 207/2009 by examining the likelihood of confusion solely by reference to the Community trade mark registered as No 2994739. It maintains that, since the Opposition Division had found that there was a likelihood of confusion between the Community trade mark and the mark applied for and since the Board of Appeal found, on the contrary, that there was no likelihood of confusion, it ought either to have referred the case back to the Opposition Division or to have examined whether there was a likelihood of confusion by reference to all the earlier marks relied on, but not, as it did, to have found that there was no likelihood of confusion without assessing that likelihood by reference to all the earlier marks and merely taking only the earlier Community trade mark into consideration.

| 47 | In that regard, it is apparent from paragraph 16 of the contested decision that the Board of Appeal referred to ‘earlier marks’ and to ‘ordinary consumers in the European Union’, having regard to the fact that the earlier marks were, first, a Community mark and a German mark (WeserGold, see paragraphs 7 and 8 above), next, an international mark and a mark producing effects in the Czech Republic, Denmark, Spain, France, Italy, Hungary, Austria, Poland, Portugal, Slovenia, Sweden, the United Kingdom and the Benelux countries (Wesergold, see paragraph 9 above) and, last, a German mark and a Polish mark (WESERGOLD, see paragraphs 10 and 11 above). |
| --- | --- |

47

In that regard, it is apparent from paragraph 16 of the contested decision that the Board of Appeal referred to ‘earlier marks’ and to ‘ordinary consumers in the European Union’, having regard to the fact that the earlier marks were, first, a Community mark and a German mark (WeserGold, see paragraphs 7 and 8 above), next, an international mark and a mark producing effects in the Czech Republic, Denmark, Spain, France, Italy, Hungary, Austria, Poland, Portugal, Slovenia, Sweden, the United Kingdom and the Benelux countries (Wesergold, see paragraph 9 above) and, last, a German mark and a Polish mark (WESERGOLD, see paragraphs 10 and 11 above).

| 48 | In paragraph 23 of the contested decision, the Board of Appeal referred to German consumers and then to consumers in the other Member States. |
| --- | --- |

48

In paragraph 23 of the contested decision, the Board of Appeal referred to German consumers and then to consumers in the other Member States.

| 49 | As regards the analysis of the signs at issue, the Board of Appeal referred to all of the earlier marks, thus emphasising the fact that the examination, strictly speaking, concerned those marks and not just the earlier Community trade mark, even though it refers to the earlier mark and not to the earlier marks. |
| --- | --- |

49

As regards the analysis of the signs at issue, the Board of Appeal referred to all of the earlier marks, thus emphasising the fact that the examination, strictly speaking, concerned those marks and not just the earlier Community trade mark, even though it refers to the earlier mark and not to the earlier marks.

| 50 | Paragraph 31 of the contested decision is worded as follows:
  ‘Both the earlier trade mark and the trade mark applied for are word marks. The earlier trade mark consists of one word composed of nine letters, written in upper-case letters, in lower-cases letters or with an upper-case letter in the middle of the word, namely “WeserGold”, “Wesergold” and “WESERGOLD”.’ |
| --- | --- |

50

Paragraph 31 of the contested decision is worded as follows:

‘Both the earlier trade mark and the trade mark applied for are word marks. The earlier trade mark consists of one word composed of nine letters, written in upper-case letters, in lower-cases letters or with an upper-case letter in the middle of the word, namely “WeserGold”, “Wesergold” and “WESERGOLD”.’

| 51 | In those circumstances, although the Board of Appeal uses the word ‘earlier mark’ to describe all the earlier marks, that is the consequence of the finding, made in paragraph 32 of the contested decision, which cannot but be confirmed, that ‘the use of lower-case and upper-case letters (in the middle of a word) has no effect on the comparison of the signs since the [General Court] regards a word mark in principle as a combination of letters or words in normal script with no specific graphic elements’. |
| --- | --- |

51

In those circumstances, although the Board of Appeal uses the word ‘earlier mark’ to describe all the earlier marks, that is the consequence of the finding, made in paragraph 32 of the contested decision, which cannot but be confirmed, that ‘the use of lower-case and upper-case letters (in the middle of a word) has no effect on the comparison of the signs since the [General Court] regards a word mark in principle as a combination of letters or words in normal script with no specific graphic elements’.

| 52 | Last, it follows from a simple reading of paragraphs 33, 36, 39 and 40 of the contested decision that the Board of Appeal did in fact refer to the ‘earlier marks’ and not just to the Community trade mark, even stating again, in paragraph 45 of that decision, that the signs concerned were WESTERN GOLD and WeserGold, WESERGOLD or Wesergold. |
| --- | --- |

52

Last, it follows from a simple reading of paragraphs 33, 36, 39 and 40 of the contested decision that the Board of Appeal did in fact refer to the ‘earlier marks’ and not just to the Community trade mark, even stating again, in paragraph 45 of that decision, that the signs concerned were WESTERN GOLD and WeserGold, WESERGOLD or Wesergold.

| 53 | It follows from the foregoing that the second plea must be rejected in any event. |
| --- | --- |

53

It follows from the foregoing that the second plea must be rejected in any event.

Third plea, alleging infringement of the second sentence of Article 75 of Regulation No 207/2009

Third plea, alleging infringement of the second sentence of Article 75 of Regulation No 207/2009

| 54 | First, the applicant takes issue, essentially, with the Board of Appeal for not having informed it in advance that it intended to rule on all of the earlier marks on which the opposition to the mark applied for was also based. |
| --- | --- |

54

First, the applicant takes issue, essentially, with the Board of Appeal for not having informed it in advance that it intended to rule on all of the earlier marks on which the opposition to the mark applied for was also based.

| 55 | In that regard, it should be observed that this plea, whereby the applicant claims that it was not informed that the Board of Appeal would rely on all of the earlier marks, contradicts the second plea, alleging that the examination of the likelihood of confusion ought to have been carried out solely by reference to the earlier Community trade mark. |
| --- | --- |

55

In that regard, it should be observed that this plea, whereby the applicant claims that it was not informed that the Board of Appeal would rely on all of the earlier marks, contradicts the second plea, alleging that the examination of the likelihood of confusion ought to have been carried out solely by reference to the earlier Community trade mark.

| 56 | When asked about that contradiction at the hearing, however, the applicant did not enlighten the Court as to the interrelation between the two pleas and their consistency. |
| --- | --- |

56

When asked about that contradiction at the hearing, however, the applicant did not enlighten the Court as to the interrelation between the two pleas and their consistency.

| 57 | That being the case, it should be observed that it is apparent from the case-law that there is continuity, in terms of their functions, between the different departments of OHIM, namely the examiner, the Opposition Division, the Administration of Trade Marks and Legal Divisions and the Cancellation Divisions, on the one hand, and the Boards of Appeal, on the other (see judgment of 13 March 2007 in OHIM v Kaul, C‐29/05 P, ECR, EU:C:2007:162, paragraph 30 and the case-law cited). |
| --- | --- |

57

That being the case, it should be observed that it is apparent from the case-law that there is continuity, in terms of their functions, between the different departments of OHIM, namely the examiner, the Opposition Division, the Administration of Trade Marks and Legal Divisions and the Cancellation Divisions, on the one hand, and the Boards of Appeal, on the other (see judgment of 13 March 2007 in OHIM v Kaul, C‐29/05 P, ECR, EU:C:2007:162, paragraph 30 and the case-law cited).

OHIM

Kaul

| 58 | It follows, specifically, from that continuity in terms of functions between the various departments of OHIM that, when the Boards of Appeal conduct the required review of decisions taken by the departments of OHIM at first instance, they must base their decision on all the matters of fact and of law which the parties concerned introduced either in the proceedings before the department which heard the application at first instance or in the appeal (judgment of 11 July 2006 in Caviar Anzali v OHIM — Novomarket (Asetra), T‐252/04, ECR, EU:T:2006:199, paragraph 31). More generally, as the Court of Justice held in the judgment in OHIM v Kaul, cited in paragraph 57 above (EU:C:2007:162, paragraphs 56 and 57), it follows from Article 64(1) of Regulation No 207/2009, which provides that, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal and, in doing so, may ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that, by the effect of the appeal before it, the Board of Appeal is required to undertake a full re-examination of the substance of the case before it, both in law and in fact (judgment of 28 April 2010 in Claro v OHIM — Telefónica (Claro), T‐225/09, EU:T:2010:169, paragraphs 30 and 31). |
| --- | --- |

58

It follows, specifically, from that continuity in terms of functions between the various departments of OHIM that, when the Boards of Appeal conduct the required review of decisions taken by the departments of OHIM at first instance, they must base their decision on all the matters of fact and of law which the parties concerned introduced either in the proceedings before the department which heard the application at first instance or in the appeal (judgment of 11 July 2006 in Caviar Anzali v OHIM — Novomarket (Asetra), T‐252/04, ECR, EU:T:2006:199, paragraph 31). More generally, as the Court of Justice held in the judgment in OHIM v Kaul, cited in paragraph 57 above (EU:C:2007:162, paragraphs 56 and 57), it follows from Article 64(1) of Regulation No 207/2009, which provides that, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal and, in doing so, may ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that, by the effect of the appeal before it, the Board of Appeal is required to undertake a full re-examination of the substance of the case before it, both in law and in fact (judgment of 28 April 2010 in Claro v OHIM — Telefónica (Claro), T‐225/09, EU:T:2010:169, paragraphs 30 and 31).

Caviar Anzali

OHIM — Novomarket (Asetra)

OHIM

Kaul

Claro

OHIM — Telefónica (Claro)

| 59 | It follows that all the matters dealt with by the lower-level department of OHIM in the decision which is the subject of the appeal to the Board of Appeal form part of the legal and factual framework of the case before the Board of Appeal, which bases its decision on all of those matters and has therefore jurisdiction to examine them. Since the question of the similarity between the earlier marks necessarily had to be examined in order to determine whether there was a likelihood of confusion and since the parties had submitted observations before the Opposition Division, the Board of Appeal had jurisdiction, by virtue of the continuity in terms of functions between the different departments of OHIM, to re-examine it in its decision and, if appropriate, to arrive in that regard at a different conclusion from that arrived at by the Opposition Division. Thus, even if the Opposition Division found on the sole basis of the earlier Community trade mark that there was a likelihood of confusion, it follows from the continuity in functional terms that it was for the Board of Appeal to examine all of the earlier marks, as it did, since, in departing from the decision of the Opposition Division, it considered that there was no likelihood of confusion between the signs at issue. |
| --- | --- |

59

It follows that all the matters dealt with by the lower-level department of OHIM in the decision which is the subject of the appeal to the Board of Appeal form part of the legal and factual framework of the case before the Board of Appeal, which bases its decision on all of those matters and has therefore jurisdiction to examine them. Since the question of the similarity between the earlier marks necessarily had to be examined in order to determine whether there was a likelihood of confusion and since the parties had submitted observations before the Opposition Division, the Board of Appeal had jurisdiction, by virtue of the continuity in terms of functions between the different departments of OHIM, to re-examine it in its decision and, if appropriate, to arrive in that regard at a different conclusion from that arrived at by the Opposition Division. Thus, even if the Opposition Division found on the sole basis of the earlier Community trade mark that there was a likelihood of confusion, it follows from the continuity in functional terms that it was for the Board of Appeal to examine all of the earlier marks, as it did, since, in departing from the decision of the Opposition Division, it considered that there was no likelihood of confusion between the signs at issue.

| 60 | It should be noted, moreover, that it does not follow from Article 75 of Regulation No 207/2009 that the Board of Appeal is required to invite the parties to comment on a likelihood of confusion with several earlier marks where, as in the present case, the Board of Appeal bases its examination of the likelihood of confusion on earlier marks which the Opposition Division did not take into consideration, but which had properly been relied on in support of that opposition. In that regard, it is common ground that, by opposition of 14 March 2007, the applicant relied on all of the earlier marks referred to in paragraphs 7 to 11 above in support of that opposition and that, in the grounds underlying the opposition filed on 26 September 2008, the applicant expressly relied on the likelihood of confusion between all of the earlier marks and the mark applied for (see, to that effect, judgment of 15 January 2013 in Lidl Stiftung v OHIM — Lactimilk (BELLRAM), T‐237/11, ECR, EU:T:2013:11, paragraph 27). |
| --- | --- |

60

It should be noted, moreover, that it does not follow from Article 75 of Regulation No 207/2009 that the Board of Appeal is required to invite the parties to comment on a likelihood of confusion with several earlier marks where, as in the present case, the Board of Appeal bases its examination of the likelihood of confusion on earlier marks which the Opposition Division did not take into consideration, but which had properly been relied on in support of that opposition. In that regard, it is common ground that, by opposition of 14 March 2007, the applicant relied on all of the earlier marks referred to in paragraphs 7 to 11 above in support of that opposition and that, in the grounds underlying the opposition filed on 26 September 2008, the applicant expressly relied on the likelihood of confusion between all of the earlier marks and the mark applied for (see, to that effect, judgment of 15 January 2013 in Lidl Stiftung v OHIM — Lactimilk (BELLRAM), T‐237/11, ECR, EU:T:2013:11, paragraph 27).

Lidl Stiftung

OHIM — Lactimilk (BELLRAM)

| 61 | It must therefore be held that the applicant had the opportunity, both before the Opposition Division and before the Board of Appeal, to rely on its arguments relating to the likelihood of confusion between the mark applied for and all of the earlier marks, but that it chose not to set out arguments specific to each of the earlier marks, since it preferred to rely, in a generic and therefore undifferentiated manner, on the earlier trade marks WESERGOLD (paragraph 1 of its notice of opposition of 26 September 2008), Wesergold (paragraph 3 of that notice of opposition) or WeserGold (paragraph 8 of that notice of opposition). It is common ground that, by letter of 22 December 2009, the applicant put forward arguments, in the context of the action brought by the intervener against the Opposition Division’s decision, relating to the question whether there was a likelihood of confusion between the earlier trade marks and the mark applied for, stating that several earlier marks relied on had in common the word ‘wesergold’ with the letters ‘w’ and ‘g’ in upper case. In so far as the opposition was based on all of the earlier trade marks mentioned in paragraphs 7 to 11 above and since the Board of Appeal had jurisdiction, in accordance with Article 64(1) of Regulation No 207/2009, to examine the likelihood of confusion between the trade mark applied for and all of the earlier trade marks, it was for the applicant, in accordance with Article 76(1) of Regulation No 207/2009, to submit, in the context of the appeal before the Board of Appeal, its observations on those earlier trade marks in a way specific to each of them, in so far as that could be justified. The applicant cannot therefore properly claim that it could not foresee that the Board of Appeal would base its examination of the likelihood of confusion on all of the earlier trade marks (see, to that effect, judgment in BELLRAM, cited in paragraph 60 above, EU:T:2013:11, paragraph 28). |
| --- | --- |

61

It must therefore be held that the applicant had the opportunity, both before the Opposition Division and before the Board of Appeal, to rely on its arguments relating to the likelihood of confusion between the mark applied for and all of the earlier marks, but that it chose not to set out arguments specific to each of the earlier marks, since it preferred to rely, in a generic and therefore undifferentiated manner, on the earlier trade marks WESERGOLD (paragraph 1 of its notice of opposition of 26 September 2008), Wesergold (paragraph 3 of that notice of opposition) or WeserGold (paragraph 8 of that notice of opposition). It is common ground that, by letter of 22 December 2009, the applicant put forward arguments, in the context of the action brought by the intervener against the Opposition Division’s decision, relating to the question whether there was a likelihood of confusion between the earlier trade marks and the mark applied for, stating that several earlier marks relied on had in common the word ‘wesergold’ with the letters ‘w’ and ‘g’ in upper case. In so far as the opposition was based on all of the earlier trade marks mentioned in paragraphs 7 to 11 above and since the Board of Appeal had jurisdiction, in accordance with Article 64(1) of Regulation No 207/2009, to examine the likelihood of confusion between the trade mark applied for and all of the earlier trade marks, it was for the applicant, in accordance with Article 76(1) of Regulation No 207/2009, to submit, in the context of the appeal before the Board of Appeal, its observations on those earlier trade marks in a way specific to each of them, in so far as that could be justified. The applicant cannot therefore properly claim that it could not foresee that the Board of Appeal would base its examination of the likelihood of confusion on all of the earlier trade marks (see, to that effect, judgment in BELLRAM, cited in paragraph 60 above, EU:T:2013:11, paragraph 28).

BELLRAM

| 62 | It follows from the considerations set out in paragraphs 60 and 61 above that the Board of Appeal did not breach the applicant’s right to be heard by not explicitly inviting to submit observations on the earlier marks other than the Community trade mark. |
| --- | --- |

62

It follows from the considerations set out in paragraphs 60 and 61 above that the Board of Appeal did not breach the applicant’s right to be heard by not explicitly inviting to submit observations on the earlier marks other than the Community trade mark.

| 63 | It follows that, in so far as in, the context of this plea, the applicant challenges the jurisdiction of the Board of Appeal referred to in paragraph 61 above, this plea is unfounded and must be rejected. |
| --- | --- |

63

It follows that, in so far as in, the context of this plea, the applicant challenges the jurisdiction of the Board of Appeal referred to in paragraph 61 above, this plea is unfounded and must be rejected.

| 64 | Second, the applicant takes issue with the Board of Appeal for having breached its right to be heard on the issue relating to the alleged enhanced distinctiveness of the earlier marks, acquired through use. |
| --- | --- |

64

Second, the applicant takes issue with the Board of Appeal for having breached its right to be heard on the issue relating to the alleged enhanced distinctiveness of the earlier marks, acquired through use.

| 65 | In that regard, it is sufficient to state that this complaint is inoperative, since, even on the assumption, quod non, that the Board of Appeal ought to have informed the applicant in advance of its right to submit observations, in any event, that error could not have entailed the annulment of the contested decision, since it is apparent from paragraph 50 of the judgment on appeal that, in the absence of similarity between the signs at issue, the question of the distinctiveness of the earlier marks, acquired through use, is wholly irrelevant. |
| --- | --- |

65

In that regard, it is sufficient to state that this complaint is inoperative, since, even on the assumption, quod non, that the Board of Appeal ought to have informed the applicant in advance of its right to submit observations, in any event, that error could not have entailed the annulment of the contested decision, since it is apparent from paragraph 50 of the judgment on appeal that, in the absence of similarity between the signs at issue, the question of the distinctiveness of the earlier marks, acquired through use, is wholly irrelevant.

| 66 | It follows from all of the foregoing that the third plea must be rejected. |
| --- | --- |

66

It follows from all of the foregoing that the third plea must be rejected.

Fourth plea, alleging infringement of the first sentence of Article 75 of Regulation No 207/2009

Fourth plea, alleging infringement of the first sentence of Article 75 of Regulation No 207/2009

| 67 | The applicant takes issue with the Board of Appeal for having infringed the first sentence of Article 75 of Regulation No 207/2009, in setting out in a ‘summary’ manner the reasons on which the contested decision is based in the light of the earlier marks other than the Community trade mark. |
| --- | --- |

67

The applicant takes issue with the Board of Appeal for having infringed the first sentence of Article 75 of Regulation No 207/2009, in setting out in a ‘summary’ manner the reasons on which the contested decision is based in the light of the earlier marks other than the Community trade mark.

| 68 | In that regard, it must be recalled that, in accordance with the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM are to state the reasons on which they are based. According to the case-law, that obligation has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU and its objective is to allow those concerned to know the reasons for the measure adopted in order to be able to defend their rights and the Courts of the European Union to review the legality of the decision (judgments of 6 September 2012 in Storck v OHIM, C‐96/11 P, EU:C:2012:537, paragraph 86, and of 15 July 2014 in Łaszkiewicz v OHIM — Cables y Eslingas (PROTEKT), T‐18/13, EU:T:2014:666, paragraph 71). |
| --- | --- |

68

In that regard, it must be recalled that, in accordance with the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM are to state the reasons on which they are based. According to the case-law, that obligation has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU and its objective is to allow those concerned to know the reasons for the measure adopted in order to be able to defend their rights and the Courts of the European Union to review the legality of the decision (judgments of 6 September 2012 in Storck v OHIM, C‐96/11 P, EU:C:2012:537, paragraph 86, and of 15 July 2014 in Łaszkiewicz v OHIM — Cables y Eslingas (PROTEKT), T‐18/13, EU:T:2014:666, paragraph 71).

Storck

OHIM

Łaszkiewicz

OHIM — Cables y Eslingas (PROTEKT)

| 69 | Moreover, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit on condition that it enables those concerned to know the reasons why the decision of the Board of Appeal was adopted and the competent court to have sufficient information before it to exercise its power of review (judgments of 21 October 2004 in KWS Saat v OHIM, C‐447/02 P, ECR, EU:C:2004:649, paragraph 65; of 16 September 2009 in Alber v OHIM (Hand grip), T‐391/07, EU:T:2009:336, paragraph 74; and in PROTEKT, cited in paragraph 68 above, EU:T:2014:666, paragraph 72). |
| --- | --- |

69

Moreover, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit on condition that it enables those concerned to know the reasons why the decision of the Board of Appeal was adopted and the competent court to have sufficient information before it to exercise its power of review (judgments of 21 October 2004 in KWS Saat v OHIM, C‐447/02 P, ECR, EU:C:2004:649, paragraph 65; of 16 September 2009 in Alber v OHIM (Hand grip), T‐391/07, EU:T:2009:336, paragraph 74; and in PROTEKT, cited in paragraph 68 above, EU:T:2014:666, paragraph 72).

KWS Saat

OHIM

Alber

OHIM (Hand grip)

PROTEKT

| 70 | In addition, it should be observed that the Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (see, to that effect, judgment of 11 January 2007 in Technische Glaswerke Ilmenau v Commission, C‐404/04 P, EU:C:2007:6, paragraph 30). It follows that the fact that the Board of Appeal did not reproduce all of the arguments of one party, or did not reply to each of those arguments, cannot by itself lead to a finding that the Board of Appeal refused to take them into account (judgments of 9 December 2010 in Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‐303/08, ECR, EU:T:2010:505, paragraph 46, and PROTEKT, cited in paragraph 68 above, EU:T:2014:666, paragraph 73). |
| --- | --- |

70

In addition, it should be observed that the Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (see, to that effect, judgment of 11 January 2007 in Technische Glaswerke Ilmenau v Commission, C‐404/04 P, EU:C:2007:6, paragraph 30). It follows that the fact that the Board of Appeal did not reproduce all of the arguments of one party, or did not reply to each of those arguments, cannot by itself lead to a finding that the Board of Appeal refused to take them into account (judgments of 9 December 2010 in Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‐303/08, ECR, EU:T:2010:505, paragraph 46, and PROTEKT, cited in paragraph 68 above, EU:T:2014:666, paragraph 73).

Technische Glaswerke Ilmenau

Commission

Tresplain Investments

OHIM — Hoo Hing (Golden Elephant Brand)

PROTEKT

| 71 | In that regard, it is apparent from the contested decision that the Board of Appeal stated to the requisite standard its reasons for taking all of the earlier marks into account for the purposes of the examination of the likelihood of confusion. |
| --- | --- |

71

In that regard, it is apparent from the contested decision that the Board of Appeal stated to the requisite standard its reasons for taking all of the earlier marks into account for the purposes of the examination of the likelihood of confusion.

| 72 | It is apparent in paragraph 16 of the contested decision that the Board of Appeal took all of the earlier marks into account, as it used the phrase ‘since the earlier trade marks’. Next, in paragraphs 31 and 45 of that decision, the Board of Appeal mentioned all of the earlier marks, ‘namely “WeserGold”, “Wesergold” and “WESERGOLD”’. Last, in referring, in paragraph 32 of the contested decision, to the case-law of the General Court on word marks, according to which the differences arising from the combination of letters or words in normal script with no specific graphic elements have no effect, the Board of Appeal correctly stated the reasons for its decision to take all of the earlier trade marks into account. |
| --- | --- |

72

It is apparent in paragraph 16 of the contested decision that the Board of Appeal took all of the earlier marks into account, as it used the phrase ‘since the earlier trade marks’. Next, in paragraphs 31 and 45 of that decision, the Board of Appeal mentioned all of the earlier marks, ‘namely “WeserGold”, “Wesergold” and “WESERGOLD”’. Last, in referring, in paragraph 32 of the contested decision, to the case-law of the General Court on word marks, according to which the differences arising from the combination of letters or words in normal script with no specific graphic elements have no effect, the Board of Appeal correctly stated the reasons for its decision to take all of the earlier trade marks into account.

| 73 | It follows from the foregoing that the fourth plea must be rejected and the action dismissed in its entirety. |
| --- | --- |

73

It follows from the foregoing that the fourth plea must be rejected and the action dismissed in its entirety.

Costs

Costs

| 74 | In the judgment on appeal, cited in paragraph 21 above, the Court of Justice reserved the costs. It is therefore for this Court to decide, in the present judgment, on all of the costs relating to the various proceedings, in accordance with Article 219 of the Rules of Procedure of the General Court. |
| --- | --- |

74

In the judgment on appeal, cited in paragraph 21 above, the Court of Justice reserved the costs. It is therefore for this Court to decide, in the present judgment, on all of the costs relating to the various proceedings, in accordance with Article 219 of the Rules of Procedure of the General Court.

| 75 | Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful in all of the forms of order sought, it must be ordered to pay the costs incurred by OHIM and by the intervener before this Court and the Court of Justice, in accordance with the forms of order sought by them. |
| --- | --- |

75

Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful in all of the forms of order sought, it must be ordered to pay the costs incurred by OHIM and by the intervener before this Court and the Court of Justice, in accordance with the forms of order sought by them.

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

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

| | 1. | Dismisses the action; |
| --- | --- | --- |

1.

1.

Dismisses the action;

Dismisses the action;

| | 2. | Orders riha WeserGold Getränke GmbH & Co. KG to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Lidl Stiftung & Co. KG in the proceedings before this Court and the Court of Justice. |
| --- | --- | --- |

2.

2.

Orders riha WeserGold Getränke GmbH & Co. KG to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Lidl Stiftung & Co. KG in the proceedings before this Court and the Court of Justice.

Orders riha WeserGold Getränke GmbH & Co. KG to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Lidl Stiftung & Co. KG in the proceedings before this Court and the Court of Justice.

| | Martins Ribeiro


  Gervasoni


  Madise


  Delivered in open court in Luxembourg on 24 November 2015.
  [Signatures] |
| --- | --- |

Martins Ribeiro

Gervasoni

Madise

Delivered in open court in Luxembourg on 24 November 2015.

[Signatures]

---

(
  *1
  )	Language of the case: German.

*1