Judgment;Abstract — ECLI:EU:T:2021:312
Date: 2021-06-02
Language of the case: English
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful

summary makes no reference to the applicant’s arguments relating to those criteria. 60 Furthermore, in paragraphs 19 to 21 of the contested decision, the Board of Appeal itself assessed the similarity of the goods at issue, but only in the light of the Canon criteria, notwithstanding that the applicant had not disputed the outcome of that assessment. In those circumstances, and also in the absence of any argument submitted by EUIPO to this effect, the contested decision cannot be interpreted as meaning that the Board of Appeal intended to endorse the Opposition Division’s decision in the light of the two criteria in question specifically put forward by the applicant, namely the usual origin of the goods and the fact that the producers and distribution channels are the same, while at the same time developing its analysis solely in the light of criteria not referred to in the appeal brought before it, without carrying out its own explicit assessment in relation specifically to the criteria on which the applicant’s arguments are based. Although the Board of Appeal referred, in paragraph 18 of the contested decision, to the final conclusion reached by the Opposition Division in its decision, it made no reference to any specific paragraph or passage of that decision, which could have led to the conclusion that it intended to incorporate the Opposition Division’s findings in its own decision in order to avoid repetition. 61 In paragraph 19 of the response, EUIPO maintains that factors additional to the Canon criteria, such as distribution channels, are ‘relatively weak’ and cannot outweigh the fact that none of the Canon criteria is fulfilled in the present case. First, as pointed out in paragraph 45 above, the list of criteria expressly mentioned in the judgment of 29 September 1998, Canon (C‑39/97, EU:C:1998:442), is not exhaustive. Second, each criterion identified in the line of case-law arising from that judgment is independent, so that the assessment of the similarity between the goods or services at issue may be based on one of those criteria alone (paragraph 53 above). 62 Consequently, it should be held that, by not stating the reasons why criteria relating to the usual origin of the goods or the fact that the producers and distribution channels are the same were not taken into account, the Board of Appeal failed to set out all the facts and legal considerations that are crucial for finding that the goods are not similar, with the result that the contested decision is vitiated by a failure to state reasons (see, to that effect, judgment of 21 July 2016, Tropical, T‑804/14, not published, EU:T:2016:431, paragraph 178). 63 EUIPO raises before the Court various arguments to the effect that the application of those criteria would not lead, in the present case, to a finding that the goods at issue are similar (see paragraphs 32 and 33 above). 64 In that regard, it should be pointed out that no such assessment appears in the contested decision. First, it is not for the Court, in its review of the legality of the contested decision, to carry out an assessment on which the Board of Appeal has not adopted a position (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72) and, second, EUIPO cannot substantiate the contested decision before the Court with evidence that was not taken into account for the purposes of that decision (see judgment of 8 September 2017, Aldi v EUIPO – Rouard (GOURMET), T‑572/15, not published, EU:T:2017:591, paragraph 36 and the case-law cited). 65 That line of argument is therefore inadmissible (judgment of 24 September 2019, Volvo Trademark v EUIPO – Paalupaikka (V V-WHEELS), T‑356/18, EU:T:2019:690, paragraph 49). 66 The error of law and the failure to state reasons established respectively in paragraphs 56 and 62 above have the consequence that the single plea in law is well founded. 67 It follows that the contested decision must be annulled. Costs 68 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 January 2020 (Case R 67/2019-1); 2. Orders EUIPO to pay the costs. Collins Csehi Steinfatt Delivered in open court in Luxembourg on 2 June 2021. E. Coulon M. van der Woude Registrar President * Language of the case: English.