Opinion of the Advocate General — ECLI:EU:C:2016:129
Date: 2016-03-01
Language of the case: German
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible
Origin: Germany

Summary — Judgment of the Court (Grand Chamber), 8 November 2016 1. Appeals — Pleas in law — Plea submitted for the first time in the context of the appeal — Inadmissibility (Art. 256(1), second subpara., TFEU; Statue of the Court of Justice, Art. 58, first para.) 2. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Decision upholding the ancillary appeal brought by the defendant in its response — Decision not challenged by the appellant before the General Court on the ground of breach of the adversarial principle — Examination by the General Court of its own motion — Precluded (Council Regulation No 207/2009, Arts 63(2) and 75, second sentence; Commission Regulation No 216/96, Art. 8(3)) 3. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Weak distinctive character of the earlier mark — Effect (Council Regulation No 40/94, Art. 8(1)(b)) 4. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Coexistence of earlier marks — Acknowledgment of a certain degree of distinctiveness of a national mark (Council Regulation No 40/94, Arts 7(1)(b) and (c) and 8(1)(b); European Parliament and Council Directive 2008/95, Art. 3(1)(b) and (c)) 1. See the text of the decision. (see para. 43) 2. Whilst the European Union Intellectual Property Office (EUIPO) has acknowledged that, by the decision at issue, the First Board of Appeal of EUIPO partially upheld the defendant’s ‘ancillary’ appeal as provided for in Article 8(3) of Regulation No 216/96 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), as amended, without having first placed the appellant in a position to put forward any observations on that appeal, thereby infringing the adversarial principle as given formal expression in Article 63(2) and the second sentence of Article 75 of Regulation No 207/2009 on the European Union trade mark, the fact remains that, in the absence of any challenge by the appellant relating to that matter in the proceedings before the General Court and in the absence of the slightest criticism on the appellant’s part of the analysis which led the First Board of Appeal to uphold the ‘ancillary’ appeal, the General Court cannot be criticised for having failed to raise that infringement of its own motion. (see para. 45) 3. See the text of the decision. (see paras 61-63, 70) 4. See the text of the decision. (see paras 66-68)