Judgment — ECLI:EU:T:2014:985
Date: 2014-11-25
Language of the case: English
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful
Origin: United Kingdom

JUDGMENT OF THE GENERAL COURT (Third Chamber) 25 November 2014 (*) (Community trade mark — Opposition proceedings — Application for Community figurative mark KAISERHOFF — Earlier national word mark KAISERHOFF — Suspension of the administrative proceedings — Rules 20 and 50 of Regulation (EC) No 2868/95 — ‘Examination of the facts by the Office of its own motion’ — Article 76(1) of Regulation (EC) No 207/2009) In Case T‑556/12, Royalton Overseas Ltd, established in Road Town, British Virgin Islands (United Kingdom), represented by C. Năstase, lawyer, applicant, v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent, defendant, the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being S.C. Romarose Invest Srl, established in Bucharest (Romania), represented by R.-G. Dragomir and G.-L. Ilie, lawyers, ACTION brought against the decision of the First Board of Appeal of OHIM of 4 October 2012 (Case R 2535/2011-1) concerning opposition proceedings between S.C. Romarose Invest Srl and Royalton Overseas Ltd, THE GENERAL COURT (Third Chamber), composed of S. Papasavvas, President, N.J. Forwood and E. Bieliūnas (Rapporteur), Judges, Registrar: E. Coulon, having regard to the application lodged at the Court Registry on 21 December 2012, having regard to the response of OHIM lodged at the Court Registry on 15 March 2013, having regard to the response of the intervener lodged at the Court Registry on 28 March 2013, having regard to the measures of organisation of procedure of 23 May 2014, having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court, gives the following Judgment Background to the dispute 1 On 13 July 2010, the applicant — Royalton Overseas Ltd — filed an application for the 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 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 following figurative sign: 3 The goods in respect of which registration was sought are in Classes 8 and 21 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended. 4 The Community trade mark application was published in Community Trade Marks Bulletin No 152/2010 of 17 August 2010. 5 On 8 October 2010, the intervener — S.C. Romarose Invest Srl — filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. 6 The opposition was based on the earlier Romanian word mark KAISERHOFF, registered on 4 May 2010 under No 110 809 and covering goods and services in Classes 11, 21 and 35. 7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009. 8 On 13 October 2011, the Opposition Division partially upheld the opposition. 9 On 7 December 2011, Royalton Overseas filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision. 10 Additionally, in both its written statement setting out the grounds of appeal, filed with OHIM on 13 February 2012, and in its additional observations, submitted to OHIM by letter of 15 March 2012, Royalton Overseas requested the suspension of the proceedings before the Board of Appeal (‘the request for suspension’) pending a decision from the Tribunalul Bucureşti (Bucharest Municipal Court, Romania) in the case registered as Case No 5089/3/12 concerning a cancellation action brought by Royalton Overseas in respect of the earlier trade mark. 11 In that regard, it should be noted at the outset that the Board of Appeal, misled by the English translation provided by Royalton Overseas, made a clerical error of its own in its decision of 4 October 2012 (‘the contested decision’), indicating that the cancellation action was registered as Case No 5080/3/2012 instead of Case No 5089/3/2012. 12 By the contested decision, the First Board of Appeal of OHIM dismissed the appeal. In particular, it held that it was necessary to refuse the request for suspension. First, Royalton Overseas had not produced any copies of the original cancellation action registered as Case No 5089/3/12 and, secondly, the English translation that Royalton Overseas had provided of the action purportedly brought did not establish whether the earlier trade mark was currently the subject of a cancellation action in Romania. In any event, the cancellation action referred to by Royalton Overseas could not be taken into consideration, because it had been brought after the appeal had been lodged with OHIM and after the written statement setting out the grounds of appeal had been submitted. Lastly, the Board had serious doubts as to that company’s true intentions in submitting the request for suspension, particularly in view of the fact that Royalton Overseas had brought other cancellation actions against the earlier trade mark — concluded by the time the contested decision was adopted — before the Tribunalul Bucureşti in the past. 13 As regards the opposition brought on the basis of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found that, since the goods in question were, in part, identical and, in part, highly similar and the signs at issue were highly similar, there was a likelihood of confusion. The Board of Appeal added that Royalton Overseas’ argument that the registration certificate for the earlier trade mark had been issued in error by the Oficiul de Stat pentru Invenţii şi Mǎrci (Romanian State Office for Inventions and Trade Marks) (OSIM), in the light of OSIM Decision No 262 of 2 June 2011 partially upholding a third party’s opposition to the registration of the earlier trade mark for goods and services in Classes 11, 21 and 35, could not succeed. First, Royalton Overseas had not produced a copy of the original decision and, secondly, even if the Board of Appeal had been required to take into account the restriction of the goods and services pursuant to Decision No 262, the outcome of the opposition proceedings before OHIM would not have been affected, mainly because of the high degree of similarity which the Board had found between the signs at issue. Forms of order sought 14 Royalton Overseas claims that the Court should: – annul the contested decision; – order OHIM and Romarose Invest to pay the costs, including those incurred in the proceedings before the Board of Appeal. 15 OHIM contends that the Court should: – dismiss the action; – order Royalton Overseas to pay the costs. 16 Romarose Invest contends that the Court should: – dismiss the action and uphold the contested decision; – order Royalton Overseas to pay the costs, which amount to EUR 6 000. Law Documents submitted for the first time before the General Court 17 As an annex to its application, Royalton Overseas produced certified copies of both the original and the English translation of a certificate issued on 12 December 2012 by the Tribunalul Bucureşti establishing that a cancellation action had been brought by that company and registered as Case No 5089/3/2012 (Annex A 3 to the application). Royalton Overseas also enclosed a copy of Decision No 262 of the Board of Appeal of OSIM (Annex A 6 to the application) and a copy of OSIM’s corrections, as published in Boletinul oficial de proprietate industriala, sectiunea mǎrci şi indicatii geografice (Romanian Official Industrial Property Gazette, Marks and Geographical Indications Section) No 2/2012 of 29 February 2012, along with the English translations of those documents, showing that the registration certificate for the earlier trade mark, issued by OSIM on 30 August 2011, was not valid (Annex A 7 to the application). 18 For its part, Romarose Invest appended the following documents to its response: copies of correspondence with OSIM, dated 2 and 4 November 2011 respectively, concerning a request for documentary verification of the existence of the trade mark KAISERHOFF at national, Community and international level (Annex 1 to Romarose Invest’s response); extracts from the Tribunalul Bucureşti’s online Case Register relating to Cases Nos 53083/3/2011, 53567/3/2011, 53568/3/2011 and 5089/3/2012 (Annexes 2, 4 and 5 to Romarose Invest’s response); copies of the application, reply and defence in relation to a counterclaim lodged by Royalton Overseas in Case No 5089/3/2012 (Annexes 3 and 4 to S.C. Romarose Invest’s response); extracts from the online Case Register of the Curtea de Apel București (Bucharest Court of Appeal, Romania) relating to Cases Nos 53567/3/2011 and 53568/3/2011 (Annex 5 to Romarose Invest’s response); and a series of invoices justifying its request for costs of EUR 6 000 (Annex 6 to Romarose Invest’s response), together with English translations of all of those documents. 19 However, those documents, produced for the first time before the Court by Royalton Overseas and Romarose Invest, cannot be taken into consideration by the Court for the purposes of assessing the validity of the contested decision. The purpose of actions before the Court is to secure review of the legality of decisions of the OHIM Boards of Appeal for the purposes of Article 65 of Regulation No 207/2009 and, accordingly, the role of the Court is not to re-evaluate the factual circumstances in the light of evidence which has been produced for the first time before it. The abovementioned documents must therefore be disregarded, without it being necessary to assess their probative value (see, to that effect, Case T‑346/04 of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case-law cited). Substance 20 In support of its action, Royalton Overseas relies, in essence, on two pleas in law, alleging respectively: (i) infringement of Rule 20(7), read together with Rule 50(1), of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), infringement of Article 76(1) of Regulation No 207/2009 and breach of the principles of equality before the law and impartiality, in that the Board of Appeal did not take into account the evidence produced by Royalton Overseas in support of its request for suspension; and (ii) infringement of Articles 42(5) and 76(1) of Regulation No 207/2009 and breach of the principles of equality before the law and impartiality, in that the Board of Appeal did not take into account the evidence produced by Royalton Overseas as grounds for rejecting the opposition. 21 By its first plea, Royalton Overseas essentially criticises the Board of Appeal for not suspending the opposition proceedings pending delivery of the Tribunalul Bucureşti’s decision in Case No 5089/3/2012 in cancellation proceedings against the earlier trade mark. In that regard, Royalton Overseas submits that, contrary to the findings of the Board of Appeal, it did indeed adduce evidence that such proceedings existed by appending to its letter containing its additional observations — sent to OHIM on 15 March 2012 — a certified translation of the cancellation action concerned and a copy of that action as filed with the Tribunalul Bucureşti, bearing that court’s official stamp. 22 Royalton Overseas also submits that the Board of Appeal took into account only the evidence adduced by Romarose Invest, thereby demonstrating its lack of impartiality. According to Royalton Overseas, in not taking its evidence into account and in refusing to suspend the opposition proceedings, the Board of Appeal infringed Rule 20(7), read together with Rule 50(1), of Regulation No 2868/95, Article 76(1) of Regulation No 207/2009 and the principles of equality before the law and impartiality. 23 OHIM acknowledges that, contrary to the Board of Appeal’s statement in paragraph 15 of the contested decision, Royalton Overseas did indeed provide a copy of the stamped application for cancellation of the earlier trade mark — lodged with the Tribunalul Bucureşti on 21 February 2012 — together with an English translation of that application. First, however, OHIM argues that the fact that a cancellation action was brought against the earlier trade mark must be weighed against the fact that, of the two earlier actions brought by Royalton Overseas on the same legal basis, one was withdrawn and the other dismissed. It was reasonable, therefore, for the Board of Appeal to be uncertain as to whether the third action brought by Royalton Overseas was being used as a delaying tactic. 24 Secondly, OHIM argues that it cannot be inferred from the fact that a cancellation action had been brought that there was an infringement of Article 76(1) of Regulation No 207/2009, since that provision does not oblige OHIM to take into account every document produced by the parties if such documents are unrelated to the dispute. Moreover, by virtue of settled case-law, a procedural irregularity cannot lead to the annulment of the contested decision unless it is shown that, but for that irregularity, the decision would have been substantially different, which is not the situation in the present case. 25 Romarose Invest contends, in essence, that the Board of Appeal took into account all the evidence submitted to OHIM, including the evidence adduced by Royalton Overseas. It maintains that the Board of Appeal was right to refuse the request for suspension in the light of the circumstances of the case, particularly Royalton Overseas’ bad faith, characterised by the fact that it had attempted, through its cancellation actions, to delay the outcome of the appeal proceedings before OHIM concerning the opposition. 26 First, as regards the matter of Royalton Overseas having produced evidence of the cancellation action in Case No 5089/3/2012, it should be borne in mind that Article 76(1) of Regulation No 207/2009 requires OHIM, in proceedings before it, to examine the facts of its own motion. However, in proceedings relating to relative grounds for refusal of registration, OHIM is to be restricted in that examination to the facts, evidence and arguments provided by the parties and the relief sought. 27 It is settled law that Article 76(1) of Regulation No 207/2009 is a statement of the duty of diligence, under which the relevant institution is required to examine carefully and impartially all the relevant factual and legal aspects of the case in question (see judgment of the General Court of 21 February 2013 in Laboratoire Bioderma v OHIM — Cabinet Continental (BIODERMA), T‑427/11, not published in the ECR, paragraph 24 and the case-law cited). 28 In that regard, it should be noted that — as can be seen from the information available to OHIM and as OHIM has acknowledged in its response — the Board of Appeal was wrong to find that Royalton Overseas had not provided proof of the cancellation action in Case No 5089/3/2012. It follows that the Board of Appeal did not examine carefully the evidence in the documents before it and accordingly failed in its duty of diligence, thereby infringing Article 76(1) of Regulation No 207/2009. 29 Secondly, it must be determined whether the Board of Appeal could validly refuse the request for suspension, notwithstanding the existence of the cancellation action in Case No 5089/3/2012. In that regard, it should be borne in mind that Rule 20(7)(c) of Regulation No 2868/95, applicable to proceedings before the Board of Appeal in accordance with Rule 50(1) of that regulation, provides that OHIM may suspend opposition proceedings where a suspension is appropriate in the circumstances. 30 It should be observed that the Board of Appeal’s discretion to suspend proceedings (or not) is broad. Rule 20(7)(c) of Regulation No 2868/95, recapitulated in the preceding paragraph, illustrates that broadness of discretion. Suspending proceedings remains optional for the Board of Appeal, which will do so only if it considers it appropriate (see, to that effect, Case T‑342/02 of 16 September 2004, Metro-Goldwyn-Mayer Lion v OHIM — Moser Grupo Media (Moser Grupo Media) [2004] ECR II‑3191, paragraph 46). Proceedings before the Board of Appeal are therefore not automatically suspended as a result of a request for suspension by a party before it (Case T‑145/08 of 16 May 2011, Atlas Transport v OHIM — Atlas Air (ATLAS) [2011] ECR II‑2073, paragraph 69). 31 The fact that the Board of Appeal has a broad discretion to suspend proceedings before it does not mean that its assessment falls outside the scope of judicial review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ascertaining that no manifest error of assessment or misuse of powers has occurred (ATLAS, paragraph 30 above, paragraph 70). 32 First of all, it is necessary to determine whether the Board of Appeal was required to suspend the proceedings given that a cancellation action concerning the earlier trade mark was pending before a Romanian court. 33 In that regard, as was stated in paragraph 30 above, the Board of Appeal has a broad discretion in matters relating to the suspension of proceedings. Accordingly, even if it were established that an action was pending before a national court in which the earlier trade mark on which a contested decision was based was under challenge, that fact would not be a sufficient basis, in itself, for categorising the Board of Appeal’s refusal to suspend proceedings as a manifest error of assessment. In exercising its discretion with respect to the suspension of proceedings, the Board of Appeal must observe the general principles governing procedural fairness within a European Union governed by the rule of law. It follows that, in exercising that discretion, the Board of Appeal must take into account not only the interests of the party whose Community mark is contested, but also those of the other parties. The decision whether or not to suspend must follow upon a weighing of the competing interests (see, to that effect, ATLAS, paragraph 30 above, paragraph 76). 34 It must be concluded that, in the present case, even if the Board of Appeal had properly examined the evidence in the case-file and had found that a cancellation action concerning the earlier trade mark was pending before a Romanian court, it could still have formed the view that, if a proper balance was to be struck between the interests involved, it was appropriate to refuse the request for suspension. 35 In the present case, it can be seen from the contested decision that the Board of Appeal was following a line of reasoning which would have led it to refuse the request for suspension even if Royalton Overseas had proved the existence of the cancellation action in Case No 5089/3/2012. 36 Secondly, therefore, it is necessary to determine whether the Board of Appeal correctly weighed the interests involved when it found in the contested decision that it was necessary in any event to refuse the request for suspension. 37 In that regard, it should first of all be noted that the Board of Appeal found that, even if Royalton Overseas had proved the existence of a cancellation action in Case No 5089/3/2012, that action had to be disregarded, since it had been brought after the appeal had been lodged with OHIM and after the written statement setting out the grounds of that appeal had been submitted (paragraph 16 of the contested decision). 38 It should be borne in mind that opposition proceedings and cancellation proceedings are two distinct and autonomous types of proceedings, each with their own effects, and that it is possible to entertain cancellation proceedings irrespective of whether opposition proceedings based on the mark to which the application for cancellation relates have been brought and are still pending (see, by analogy, Case T‑27/09 of 10 December 2009, Stella Kunststofftechnik v OHIM — Stella Pack (Stella) [2009] ECR II‑4481, paragraph 32). 39 Each of the two types of proceedings has its own purpose and effects. Opposition is designed to frustrate, under certain conditions, an application for registration of a mark owing to the existence of an earlier mark and rejection of that opposition does not entail cancellation of the latter mark. Such cancellation can be brought about only where proceedings have been instituted for that purpose (see, by analogy, Stella, paragraph 38 above, paragraph 34). 40 Accordingly, the opportunity available to all to file an application for the cancellation of a mark is completely independent of any parallel opposition proceedings in which the earlier trade mark to which the application for cancellation relates is involved. Moreover, cancellation proceedings initiated after opposition has been raised can at most give rise to suspension of the opposition proceedings. Indeed, if the earlier trade mark were to be cancelled, the opposition proceedings would be devoid of purpose (see, to that effect and by analogy, Stella, paragraph 38 above, paragraphs 37 and 38). 41 However, bringing opposition proceedings without awaiting the outcome of the cancellation proceedings would not be of any advantage to the proprietor of the earlier mark cited in the opposition proceedings and to which the application for cancellation relates. Even if the opposition proceedings resulted in refusal of the Community trade mark application, there would be nothing to prevent the same application from being filed again once the earlier mark had been cancelled (see, by analogy, Stella, paragraph 38 above, paragraph 39). 42 It follows from all of the foregoing that it is not possible to conclude that the act of filing an application for cancellation of the earlier trade mark while opposition proceedings brought on the basis of that earlier trade mark are still pending is evidence of bad faith on the part of the proprietor of the mark applied for (see, to that effect and by analogy, Stella, paragraph 38 above, paragraph 40). It necessarily follows that the Board of Appeal could not validly base its refusal of the request for suspension solely on the fact that the cancellation action brought in Case No 5089/3/2012 against the earlier trade mark on which the opposition was based had been brought after the appeal had been lodged and the written statement setting out the grounds of appeal had been submitted — in other words, while the opposition proceedings were still pending. 43 Next, it should be noted that the Board of Appeal also observed that, during the opposition proceedings, Royalton Overseas had brought, not one, but three cancellation actions against the earlier trade mark. 44 The cancellation action in Case No 5089/3/2012, on which the request for suspension was based, was the third action brought by Royalton Overseas, following its actions in Cases Nos 53083/3/2011 and 53568/3/2011, which had been concluded by the time the contested decision was adopted. 45 Accordingly, the Board of Appeal also refused to allow the request for suspension on the basis of the argument that the various cancellation actions against the earlier trade mark in Romania and the dates on which they were brought raised serious doubts as to Royalton Overseas’ true intentions. In the Board of Appeal’s view, that company appeared to be contemplating the possibility of bringing a cancellation action against the earlier trade mark in order to delay the outcome of the opposition proceedings in the present case or other proceedings involving the parties (paragraph 18 of the contested decision). 46 As regards, first, the issue of the dates on which the cancellation actions were brought, it should of course be noted that the Board of Appeal made no mention in the contested decision of the specific dates on which the cancellation actions in Cases Nos 53083/3/2011 and 53568/3/2011 had been brought before the Romanian court and that it is not possible to glean that information from any of the documents in the case-file for the proceedings before OHIM. However, from the other documents currently before the Court — particularly Romarose Invest’s comments on Royalton Overseas’ written statement setting out the grounds for its appeal — and from the numbers assigned to those cases, it was in fact possible to deduce that those actions had been filed after Romarose Invest had filed its notice of opposition with OHIM. In that regard, it should be noted that Royalton Overseas has not denied that the cancellation actions were brought while the opposition proceedings were still pending before OHIM. None the less, even in those circumstances — as has been stated in paragraph 42 above — the fact that a cancellation action was brought while opposition proceedings were still pending is not sufficient reason to refuse a request for suspension. 47 As regards, secondly, Royalton Overseas’ supposed intention of delaying the outcome of the opposition proceedings or other proceedings involving the parties, it must be pointed out that, not only does the Board of Appeal not explain what it means by ‘other proceedings involving the parties’, it also fails to explain what interest Royalton Overseas would have in delaying the outcome of the opposition proceedings. Pursuant to Article 45 of Regulation No 207/2009, so long as opposition proceedings are pending, the Community trade mark applied for cannot be registered and the applicant must accordingly go without the protection conferred by that mark. Moreover, the Board of Appeal’s adoption of that position implies that Royalton Overseas would have had to have anticipated the negative — so far as that company was concerned — outcome of the opposition proceedings then under way and, in consequence, be seeking to delay their conclusion. The ground thus relied upon by the Board of Appeal is not only abstract but also unsupported by any objective evidence and accordingly cannot justify the Board of Appeal’s refusal to grant the request for suspension. 48 As regards, lastly, the other cancellation actions brought by Royalton Overseas and concluded by the time the contested decision was adopted, it can be seen from Annex 7 to Romarose Invest’s preliminary observations, received by OHIM on 17 March 2012 (Part One) and from the case-file before OHIM that, in Case No 53568/3/2011, the Tribunalul Bucureşti dismissed the action on 6 December 2011 as inadmissible on the ground that Royalton Overseas had not paid the requisite stamp duty. As regards the cancellation action in Case No 53083/3/2011, the Tribunalul Bucureşti had taken formal note of the fact that Royalton Overseas had withdrawn the action in question. 49 The reasons why those two initial actions came to nothing appear, therefore, to be of a procedural nature and, consequently, the Tribunalul Bucureşti had not made a ruling, in either of those cases, on the merits of the question whether the earlier trade mark should be cancelled, which could explain why Royalton Overseas brought a new cancellation action (Case No 5089/3/2012). In presuming that Royalton Overseas was seeking to hold up the opposition proceedings in the present case by bringing a new cancellation action, without giving a ruling on the circumstances in which the other cancellation proceedings initiated by that company had been concluded, the Board of Appeal failed to take into account all aspects of Royalton Overseas’ situation. This means that, when appraising the interests of that company, the Board of Appeal did not look at the whole picture and, accordingly, cannot be said to have properly weighed the various interests involved. 50 In the light of all of the foregoing, it must be concluded that, in merely stating that it had serious doubts as to Royalton Overseas’ true intentions in bringing the cancellation actions before the Tribunalul Bucureşti, even though that court had not given a ruling on the merits of either action by the time the contested decision was adopted and, additionally, in failing to explain what interest Royalton Overseas could have had in delaying the decision in the opposition proceedings in the present case or in other proceedings involving the parties, the Board of Appeal erred in refusing to suspend the opposition proceedings. 51 Consequently, the first plea in law must be upheld, without it being necessary to examine the complaints raised by Royalton Overseas, alleging breach of the principles of equality before the law and impartiality. 52 Furthermore, the examination of the question whether to suspend the proceedings — which, in the present case, is vitiated by a manifest error of assessment — must be made before it can be determined whether there is a likelihood of confusion between the mark applied for and the earlier trade mark for the purposes of Article 8(1)(b) of Regulation No 207/2009. 53 Accordingly, the Court is unable to determine the soundness of the analysis carried out by the Board of Appeal in the contested decision regarding the likelihood of confusion between the marks in question. 54 The contested decision must therefore be annulled, without it being necessary to appraise either the second plea in law or the admissibility of Romarose Invest’s heads of claim. Costs 55 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. In addition, under that provision, where there are several unsuccessful parties the Court is to decide how the costs are to be shared. 56 Since OHIM and Romarose Invest have been unsuccessful in the present case, they must, in accordance with the form of order sought by Royalton Overseas, be ordered to bear their own costs and to pay the costs incurred by that company. 57 In addition, since Royalton Overseas has also claimed that OHIM and Romarose Invest should be ordered to pay the costs incurred by Royalton Overseas in the proceedings before the Board of Appeal, it should be borne in mind that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. 58 Accordingly, OHIM and Romarose Invest must each be ordered to pay half of those costs. On those grounds, THE GENERAL COURT (Third 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 4 October 2012 (Case R 2535/2011-1) concerning opposition proceedings between S.C. Romarose Invest Srl and Royalton Overseas Ltd; 2. Orders OHIM to bear its own costs and to pay half of the costs incurred by Royalton Overseas, including those necessarily incurred by Royalton Overseas for the purposes of the proceedings before the Board of Appeal of OHIM; 3. Orders S.C. Romarose Invest to bear its own costs and to pay half of the costs incurred by Royalton Overseas, including those necessarily incurred by Royalton Overseas for the purposes of the proceedings before the Board of Appeal of OHIM. Papasavvas Forwood Bieliūnas Delivered in open court in Luxembourg on 25 November 2014. [Signatures] * Language of the case: English.