Judgment — ECLI:EU:T:2012:138
Date: 2012-03-21
Language of the case: English
Court formation: Fourth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful

summary visual comparison of the graphic elements of the two marks. 39 According to settled case-law, the identity or similarity between two signs, to which Lindt Goldhase, paragraph 33 above (paragraph 53), refers, must be examined on the basis of their visual, phonetic and conceptual similarity. That examination must, moreover, be based on the overall impression given by the marks at issue, bearing in mind their distinctive and dominant components (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35, and the case-law cited). 40 Accordingly, the Board of Appeal erred in finding that there was no identity or similarity between the contested mark and the earlier Taiwanese mark without carrying out an overall analysis of all the relevant factors, and, in particular, without examining the phonetic and conceptual similarities between those two marks. In the present case, such an analysis was necessary all the more so because, as the applicant claims, the seizure of goods bearing the earlier Taiwanese marks by the Polish customs authorities at the request of the holder of the contested mark suggests that those two marks are in fact sufficiently similar to create a likelihood of confusion. 41 Second, the applicant disputes the finding by the Board of Appeal at point 18 of the contested decision that the applicant merely produced zip fasteners in accordance with the intervener’s instructions. It claims that it supplied zip fasteners under the earlier Taiwanese marks, as displayed in its catalogue. 42 In that regard, it must be stated that the catalogue annexed by the applicant to its application does indeed contain zip fasteners bearing the earlier Taiwanese marks and that, in an e-mail dated 19 December 2000, the intervener referred to the applicant’s catalogue to order zip fasteners. 43 Accordingly, the General Court requested the intervener to produce any document to support the claim that the intervener communicated to the applicant the specifications according to which the zip fasteners should be manufactured. The intervener answered this question by producing some invoices and by referring to documents in the file. However, those documents do not contain technical or commercial specifications. In particular, they do not contain any evidence to suggest that the intervener had asked the applicant to affix the contested mark on the zip fasteners. 44 Therefore, it must be concluded that the finding of the Board of Appeal that the applicant manufactured zip fasteners in accordance with the intervener’s instructions is not substantiated by the evidence in the file. 45 Third, according to paragraphs 19 and 22 of the contested decision, the intervener started in 2000 to market zip fasteners in Poland under the sign corresponding to the contested mark. It states that it was therefore the intervener who made that mark known in the EU. 46 However, as the applicant claims, nothing in the file enables the finding that the intervener actually used the contested mark by affixing it to goods, whether before or after the date of the application for registration. At the hearing, OHIM stated that the claim, in point 19 of the contested decision, as regards the use of the contested mark was based only on the intervener’s statements and not on objective factual findings. 47 Consequently, the finding of the Board of Appeal as regards the actual use of the contested mark, the merits of which were disputed by the applicant and which is relevant to the assessment of the intervener’s intention (see paragraphs 34 and 35 above), is not substantiated by the evidence in the file. 48 Fourth, the applicant claims that, contrary to what was found at point 20 of the contested decision, it sold zip fasteners in Poland between 2000 and 2005. In that regard, the Court finds that (i) the applicant’s claim is substantiated by evidence which it had included in the file and (ii) that it is corroborated by the intervener, who explained, in its answer to a written question from the Court, that he had decided to end his business relations with the applicant, as the latter had started to compete on the Polish market through the intermediary Pik Foison. In that respect, it has been established during the proceedings before the Court that in 2004 the applicant had sold to Pik Foison several consignments of zip fasteners under the earlier Taiwanese marks. 49 It follows that the finding of the Board of Appeal regarding the lack of sales of zip fasteners by the applicant in the EU between 2000 and 2005 is contradicted by the evidence in the file. That finding is relevant to the assessment of the commercial efforts of the applicant and the intervener in the EU and, consequently, to the intervener’s intention. 50 In the light of the foregoing, it must be concluded that four of the six considerations taken into account by the Board of Appeal are not based on an analysis of all of the relevant factors, as required by Lindt Goldhase, paragraph 33 above (paragraph 53), and are not substantiated by the evidence in the file or are based on incorrect factual findings. 51 As regards the two remaining considerations, it must be noted that they are insufficient in themselves to determine whether the intervener acted in bad faith when filing his application for a Community trade mark. The fact that the applicant did not show any interest in protecting the earlier Taiwanese marks in the EU and the fact that the intervener was not, as a matter of law, required to inform the applicant beforehand of his application for a Community trade mark do not enable the intervener’s intention at the time of filing that application to be identified. 52 Consequently, the Board of Appeal could not correctly find that the intervener was not acting in bad faith and dismiss the application for invalidity lodged by the applicant on the basis of those considerations. 53 The sole plea in law must therefore be upheld and the contested decision annulled. Application for a declaration of invalidity of the contested mark 54 First of all, it must be noted that, in requesting the Court to declare the contested mark invalid, the applicant has made an application for alteration, under Article 65(3) of Regulation No 207/2009, asking the Court to adopt the decision that the Board of Appeal ought to have taken (see, to that effect, judgment of 4 October 2006 in Case T-190/04 Freixenet v OHIM (Shape of a frosted white bottle), not published in the ECR, paragraphs 16 and 17). Consequently, this application is admissible, contrary to what OHIM maintains. 55 However, it must be recalled that the power to alter decisions does not have the effect of conferring on the Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (Case C-263/09 P Edwin v OHIM [2011] ECR I‑5853, paragraph 72). 56 In the present case, the factors established in the contested decision do not enable the Court to determine what decision the Board of Appeal was required to take. Indeed, while those factors do not justify the finding that the intervener was not acting in bad faith, as the Court stated above in the course of examining the application for annulment, they also do not justify, in themselves, the contrary finding. 57 Accordingly, the applicant’s application for alteration requesting that the Court declare the contested mark invalid must be rejected. Costs 58 Under Article 87(2) 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. Since OHIM has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant. 59 Under the third subparagraph of Article 87(4) of the Rules of Procedure, the Court may order an intervener to bear his own costs. In this case, the intervener shall bear his own costs. On those grounds, THE GENERAL COURT (Fourth Chamber) hereby: 1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 1 April 2009 (Case R 529/2008‑4); 2. Orders OHIM to bear its own costs and pay the costs of Feng Shen Technology Co. Ltd; 3. Orders Mr Jarosław Majtczak to bear his own costs. Pelikánová Jürimäe van der Woude Delivered in open court in Luxembourg on 21 March 2012. [Signatures] * Language of the case: English.