Judgment — ECLI:EU:T:2013:11
Date: 2013-01-15
Language of the case: English
Court formation: Fourth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Germany

Summary — Judgment of the General Court (Fourth Chamber), 15 January 2013 1. Community trade mark — Procedural provisions — Decisions of the Office — Observance of the rights of the defence (Council Regulation No 207/2009, Arts 63(2), 75 and 76) 2. Community trade mark — Appeals procedure — Appeal against a decision of the Opposition Division of OHIM — Examination by the Board of Appeal — Scope — Observance of the rights of the defence (Council Regulation No 207/2009, Arts 63(2), 64(1), 75 and 76) 3. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Use of the mark in a form differing in elements which do not alter the distinctive character of the mark (Council Regulation No 207/2009, Arts 15(1)(a), and 42(2) and (3)) 4. Community trade mark — Definition and acquisition of the Community 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 207/2009, Art. 8(1)(b)) 5. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) 6. Community trade mark — Definition and acquisition of the Community 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 — Word marks BELLRAM and RAM (Council Regulation No 207/2009, Art. 8(1)(b)) 7. Community trade mark — Definition and acquisition of the Community 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 — Similarity between the goods or services in question — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) 1. See the text of the decision. (see paras 23, 24) 2. It follows from Article 64(1) of Regulation No 207/2009 on the Community trade mark that, following the examination as to the merits of the appeal, the Board of Appeal is to decide on it and that, in doing so, it may, inter alia, ‘exercise any power within the competence of the department which was responsible for the contested decision’, that is to say, give judgment itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or annulling the decision taken at first instance before the Office for Harmonisation in the Internal Market (Trade Marks and Designs). It thus follows from that provision that the effect of the appeal brought before it is that the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact. Therefore, in so far as the opposition was based inter alia on one of the earlier word marks and the Board of Appeal had a discretion, under Article 64(1) of Regulation No 207/2009, to assess the likelihood of confusion between just that earlier mark and the mark applied for, it was for the applicant to submit, in accordance with Article 76(1) of that regulation, in the appeal before the Board of Appeal, its observations on that earlier mark if it wished the Board of Appeal to address them in the contested decision. It is not clear from either Articles 63(2), 75 and 76 of Regulation No 207/2009, which provide for the right to be heard, or the case-law that the Board of Appeal is required to ask the parties for their observations on the existence of a likelihood of confusion between the mark applied for and one of the earlier marks if the Board of Appeal bases its assessment of the likelihood of confusion on an earlier mark which the Opposition Division did not take into account but which was relied upon in support of that opposition. Accordingly, the Board of Appeal does not breach the applicant’s right to be heard by not expressly inviting it to submit observations on the earlier mark which the Opposition Division did not take into account. (see paras 25, 27-29) 3. Under Article 15(1)(a), in conjunction with Article 42(2) and (3), of Regulation No 207/2009 on the Community trade mark, proof of genuine use of an earlier national or Community trade mark which is the basis of opposition proceedings against a Community trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. (see para. 61) 4. See the text of the decision. (see paras 78, 83) 5. See the text of the decision. (see paras 80-82, 92) 6. There is, for average Spanish consumers, a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, between the word sign BELLRAM, in respect of which registration as a Community trade mark is sought for ‘cheese’ in Class 29 of the Nice Agreement, and the word mark RAM, previously registered in Spain for ‘fresh milk, condensed milk and powdered milk, cheese, butter, yoghurt, kefir, and other derivatives of milk’ and ‘food product[s] of animal origin; edible fats and oils; pulses and other vegetables prepared for consumption or preserved; jellies and marmalades; meat, poultry and game; eggs; salad dressings; milk drinks in which milk is the basic ingredient; expressly excluding conserved fish and sea products’ also in Class 29 of the Nice Agreement, in so far as ‘milk’ and ‘cheese’ are highly similar and to the extent that the signs at issue are highly similar, having regard to their visual and phonetic similarities. (see paras 84, 90, 102, 105) 7. See the text of the decision. (see para. 86)