JUDGMENT OF THE GENERAL COURT (Second Chamber)
5 May 2015 (*)
(Community trade mark — Opposition proceedings — Application for the figurative Community mark Castello — Earlier national figurative mark ‘Castelló’ — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation No (EC) 207/2009 – Right to be heard — Second sentence of Article 75 of Regulation No 207/2009)
In Case T‑715/13,
Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented by M. Wolter, M. Kefferpütz and A. Marx, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Horno del Espinar, S L, established in El Espinar (Spain),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 1 October 2013 (Case R 2338/2012-2), concerning opposition proceedings between Horno del Espinar, S L and Lidl Stiftung & Co. KG,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 24 December 2013,
having regard to the response lodged at the Court Registry on 31 March 2014,
having regard to the decision of 12 June 2014 not to allow the lodging of a reply,
further to the hearing on 21 January 2015,
gives the following
Judgment
Background to the dispute
1        On 9 April 2008, the applicant, Lidl Stiftung & Co. KG, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in Classes 29, 30 and 31 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, and correspond to the following description:
–        Class 29: ‘Baking ingredients of all kinds, included in class 29, namely candied fruits, glacier cherries, raisins, sultanas, candied orange peel and candied lemon peel; prepared almonds and nuts of all kinds; coconut flakes; prepared fillings for baking, mainly consisting of poppy seeds, nuts, almonds, coconut flakes and/or fru; gelatine for food; ground poppy seeds; foodstuffs for flavouring, included in class 29, peel and/or flesh of citrus fruits, including in dried or dehydrated form; preserved, frozen and cooked fruits and vegetables’;
–        Class 30: ‘Flour and preparations made from cereals; sugar; salt; cocoa; starch for food, potato starch, corn starch; binding agents for sauces, sauce powder; baking ingredients of all kinds, included in class 30, namely cake glazes, coatings, glaze, preparations for stiffening whipped cream, flavourings for baking and cooking oils, sugar topping, marzipan, marzipan compounds, nut-nougat, baking wafers, vanilla and vanillin sugar, vanilla beans; honey, treacle; chocolate and chocolate goods, chocolate toppings, sheets, granules and flakes; decorative chocolate and confectionery; yeast; raising agents for baking, in particular baking powder, sodium bicarbonate; spices and spice mixes; foodstuffs for flavouring, included in class 30, citrus fruit extracts, including in dried or dehydrated form; bakery mixes, bread mixes, cake paste; pasta; bread and pastry products; bread and bread products, breading and breadcrumbs; cakes, gâteaux; confectionery products; puddings, custard powder, preparations for making desserts’;
–        Class 31: ‘Poppy seeds, nuts and almonds of all kinds; fresh fruits’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 32/2008, of 11 August 2008.
5        On 24 October 2008, Horno del Espinar, S L (‘the opposing party’) filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of, inter alia, the goods referred to in paragraph 3 above.
6        The opposition was based on a number of earlier rights, including the following Spanish figurative mark:
7        That earlier mark covered services in Class 35 corresponding to the following description: ‘retail services in stores of all kinds of foodstuff[s], [e]specially patisserie and confectionery’.
8        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
9        On 22 October 2012, the Opposition Division upheld the opposition in its entirety, on the basis of its finding that there was a likelihood of confusion between the mark applied for and the earlier mark.
10      On 20 December 2012 the applicant filed an appeal with OHIM pursuant to Articles 58 to 64 of Regulation No 207/2009 against the decision of the Opposition Division.
11      By decision of 1 October 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal.
12      The first point made by the Board of Appeal was that, contrary to the applicant’s assertions, the Opposition Division was entitled to decide on the facts, evidence and arguments submitted to it without addressing the issue of genuine use of the earlier mark, as the applicant had made no request for proof of genuine use pursuant to Article 43(2) and (3) of Regulation No 40/94 before lodging its appeal before the Board (paragraphs 17 and 18 of the contested decision). The Board added that the other formal irregularity alleged by the applicant — namely that the renewal certificate for the earlier mark, together with a translation into the language of the case, had not been submitted to OHIM by the opposing party within the time allowed — had to be rejected as being incorrect on the facts (paragraph 19 of the contested decision).
13      The Board of Appeal went on to state the reasons why it considered there to be a likelihood of confusion. In substance, it stated, in the first place, that the likelihood of confusion had to be assessed in relation to the Spanish public, who, in respect of goods and services of mass consumption, bought frequently and relatively cheaply, and aimed at the general public, would have a lower level of attention than average (paragraphs 20 to 23 of the contested decision). In the second place, the Board found that the goods covered by the mark applied for were similar to a low degree to the services covered by the earlier mark (paragraphs 24 to 28 of the contested decision). In the third place, the Board found that the word element ‘Castelló’ of the earlier sign and the word element ‘Castello’ of the sign applied for were the dominant elements of those signs. Taking into account those dominant elements in particular, the Board found that, visually and phonetically, the marks at issue were similar and that they were also conceptually similar, but to a limited extent (paragraphs 32 to 35 of the contested decision). The Board concluded that there was a likelihood of confusion (paragraph 37 of the contested decision).
Forms of order sought and procedure
14      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
15      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
16      By a letter from the Registry of 26 September 2014, OHIM was invited, by a measure of organisation of procedure, to respond to several questions about the notification to the applicant of the renewal certificate for the earlier mark.
Law
17      As a preliminary matter, it must be observed that since the application for registration of the Community trade mark at issue was filed on 9 April 2008 and that date is determinative for the purposes of identifying the applicable substantive law, the present dispute is governed, on the one hand, by the procedural provisions of Regulation No 207/2009 and, on the other, by the substantive provisions of Regulation No 40/94 (judgment of 8 May 2014 in Bimbo v OHIM, C‑591/12 P, ECR, EU:C:2014:305, paragraph 12).
18      In support of its application, the applicant relies on three pleas in law, alleging: (i) infringement of the second sentence of Article 75 of Regulation No 207/2009; (ii) infringement of Article 79 of that regulation; and (iii) infringement of Article 8(1)(b) of that regulation.
19      It is appropriate first of all to examine the third plea in law, then the second, and, finally, the first. As regards the third plea, it must be noted that the provisions of Article 8(1)(b) of Regulation No 207/2009 repeat, in identical terms, those of Article 8(1)(b) of Regulation No 40/94.
The alleged infringement of Article 8(1)(b) of Regulation No 40/94
20      The applicant submits that there is no similarity between the goods covered by the mark applied for and the services covered by the earlier mark. The applicant adds that, even if it were considered that there is a low degree of similarity between them, the degree of similarity between the signs at issue is not sufficient to establish a likelihood of confusion.
21      OHIM contests the applicant’s arguments.
22      Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, that earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
23      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings, constitutes a likelihood of confusion. Under the same line of case-law, the likelihood of confusion on the part of the public must be assessed globally, according to the perception that the relevant public has of the signs and the goods or services in question, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and case-law cited).
24      The Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined in the light of those principles.
The relevant public
25      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and case-law cited).
26      In the present case, the Board of Appeal held, correctly and without being challenged on those points by the applicant, first, that, since the Board was assessing the likelihood of confusion in relation to an earlier Spanish trade mark, the relevant territory was Spain (paragraph 20 of the contested decision); second, that the relevant public was the public at large (paragraph 22 of the contested decision); and, third, that given that the goods and services covered by the signs at issue were foodstuffs intended for mass consumption, purchased frequently and at a modest price, the level of attention would be lower than average (paragraph 23 of the contested decision).
The comparison of the goods and services
27      According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant factors of the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and case-law cited).
28      Goods or services are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel) T‑316/07, ECR, EU:T:2009:14, paragraph 57 and case-law cited).
29      As regards the similarity between retail goods and services, it must be borne in mind that there is a similarity between retail goods and the services which affect those goods (see judgment of 16 October 2013 in El Corte Inglés v OHIM — Sohawon (fRee YOUR STYLe.), T‑282/12, EU:T:2013:533, paragraph 37 and case-law cited).
30      In the present case, the comparison is to be made between, on the one hand, ‘retail services in stores of all kinds of foodstuff[s], [e]specially patisserie and confectionery’ contained in class 35 and, on the other hand, various kinds of foodstuffs falling within classes 29, 30 and 31.
31      The Board of Appeal was fully entitled to hold that the goods that were the subject of the retail services covered by the earlier mark made up a relatively broad category of goods that included the goods covered by the mark applied for (paragraph 27 of the contested decision), both sets of goods moreover concerning, principally, patisserie and confectionary, and that, consequently, the services covered by the earlier mark and the goods covered by the mark sought were complementary (paragraph 26 of the contested decision).
32      The Board of Appeal also rightly found that the services at issue were generally offered in the same places as those in which the goods covered by the mark sought were offered for sale (paragraph 26 of the contested decision).
33      It follows from the foregoing that Board of Appeal was fully entitled, in paragraph 28 of the contested decision, to conclude that the goods covered by the mark applied for and the services covered by the earlier mark were similar to a low degree (see, to that effect, judgments of 24 September 2008 in Oakley v OHIM-Venticinque (O STORE), T‑116/06, ECR, EU:T:2008:399, paragraphs 52 to 58, and fRee YOUR STYLe., paragraph 29 above, EU:T:2013:533, paragraphs 37 to 39).
34      The preceding conclusion is not called into question by the applicant’s submission, which is unproven, that Spanish consumers would be aware of the fact that the goods offered for sale on markets or in supermarkets were generally made by third-party undertakings and not by the retailer.
35      Even if the consumers concerned thought that the goods offered for sale by a retailer were generally made by third-party undertakings and not by the retailer, it nevertheless remains the case that those consumers might think that liability for the manufacture of the goods offered for sale by that retailer falls on that retailer where, first, there is a similarity between the mark covering those goods and that of the retailer and where, second, the latter mark covers retail services relating to the same goods.
The comparison of the signs
36      It is settled case-law that the global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 23, and of 17 October 2013 in Isdin v OHIM and Bial-Portela, C‑597/12 P, ECR, EU:C:2013:672, paragraph 19).
37      The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 41 and case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments OHIM v Shaker, cited above, EU:C:2007:333, paragraph 42, and of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which the relevant public retains, so that all the other components are negligible in the overall impression produced by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).
38      In that regard, it must be held, as the Board of Appeal did correctly (paragraph 32 of the contested decision), that the words ‘castelló’ and ‘castello’ constitute, respectively, the dominant components of the earlier mark and the mark sought due to their size and their position in the signs at issue. That dominance applies, first, with regard to the non-verbal components in the two marks, which have an essentially decorative function, and, second, the phrase ‘castelló y juan s.a.’ and the word ‘dulces’, which are only present in the earlier mark and are represented in characters that are smaller and occupy a secondary position in comparison.
–       The visual similarity
39      It must be observed that the words ‘castelló’ and ‘castello’ are identical except for the font used and the presence of an accent on the letter ‘o’ in the earlier mark, which are negligible differences.
40      While the signs at issue differ in the form and the colour of the designs that constitute the visual background on which the dominant components are written and in the presence, in the earlier mark, of the phrase ‘castelló y juan s.a.’ and the word ‘dulces’, those are only, as the Board of Appeal stated (paragraph 33 of the contested decision), minor differences that cannot lead to the conclusion that the signs are not similar.
41      Having regard to the foregoing, it must be held that the Board of Appeal was fully entitled to conclude, on the basis of the overall impression created by the signs at issue, that they were visually similar.
–       The phonetic similarity
42      The pronunciation of the words ‘castelló’ and ‘castello’, which constitute the dominant components of the signs at issue, are identical except for the presence of an accent on the letter ‘o’, which has the effect, as regards the earlier mark, of placing the stress on that letter and not on the letter ‘e’, as is the case for the mark applied for.
43      That difference, and the pronunciation of the phrase ‘castelló y juan s.a.’ and the word ‘dulces’, are not sufficient, however, as the Board of Appeal found (paragraph 34 of the contested decision), to lead to the conclusion that the signs are overall not similar.
44      Having regard to the forgoing, it must be held that the Board of Appeal was fully entitled to find, on the basis of the overall impression created by the two signs at issue, that they were phonetically similar.
–       The conceptual similarity
45      It must be held that the Board of Appeal was fully entitled to find, in paragraph 35 of the contested decision, that both the word ‘castelló’ and the word ‘castello’ would be perceived by the relevant public as referring to a family name and that, to that limited extent, the marks at issue were conceptually similar (see, to that effect, judgment of 23 February 2010 in Özdemir v OHIM — Aktieselskabet af 21 November 2001 (James Jones), T‑11/09, EU:T:2010:47, paragraph 34).
46      It should be added that the presence, in the earlier mark, of the phrase ‘castelló y juan s.a.’ is not liable to create a conceptual difference between the two marks. As the Board of Appeal correctly stated (paragraph 32 of the contested decision), that expression will be perceived by the public as a reference to a company.
47      Furthermore, the presence, in the earlier mark, of the word ‘dulces’ meaning ‘sweets’ in Spanish, is not liable to call into question the Board of Appeal’s conclusion as regards the conceptual comparison of the signs. The relevant public would give less attention to that component, which occupies, as stated above (see paragraph 38 above), a secondary position in the earlier mark and which has, as the Board of Appeal noted (paragraph 32 of the contested decision), little distinctive character for the goods that are the subject of the retail services covered by the earlier mark.
The global assessment of the likelihood of confusion
48      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, point 17, and of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
49      In the present case, it follows from paragraphs 25 to 47 above, that the Board of Appeal correctly held that the goods and services at issue presented a low degree of similarity; that the signs at issue were similar, visually and phonetically, and, to a lesser extent, conceptually; and, finally, that the relevant public was composed of the average consumer in Spain whose level of attention was lower than average. Consequently, the Board did not make any error in concluding that there was a likelihood of confusion.
50      Furthermore, it must be added that, contrary to the applicant’s submission, the Board of Appeal did not restrict its analysis of the signs at issue only to the components that it had identified as being dominant. The Board expressly took into account the other elements of the two marks as regards the visual comparison (paragraph 33 of the contested decision) and the phonetic comparison (paragraph 34 of the contested decision).
51      The Board of Appeal also took into account the other relevant elements of the two signs at issue, but in a more implicit manner, as regards the conceptual comparison, as is apparent from a combined reading of paragraphs 32 and 35 of the contested decision.
52      It follows from the foregoing that the plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 must be rejected.
Infringement of Article 79 of Regulation No 207/2009
53      The applicant submits that OHIM infringed Article 79 of Regulation No 207/2009 in that OHIM did not notify it (i) of the filing of documents showing the renewal of the earlier mark and that of another of the opposing party’s marks and (ii) of the observations in response lodged by the opposing party before the Board of Appeal on 24 April 2013.
54      In so far as the plea concerns non-notification of the observations referred to in the previous paragraph, it will be examined together with the second ground of the plea alleging the infringement of the second sentence of Article 75 of Regulation No 207/2009, which alleges that the applicant’s right to be heard was breached because it did not receive those observations.
55      In so far as it relates to the failure to notify the filing of documents showing the renewal of the earlier mark and another mark of the opposing party, the plea will be examined together with the third ground of the plea alleging the infringement of the second sentence of Article 75, of Regulation No 207/2009.
Infringement of the second sentence of Article 75 of Regulation No 207/2009
56      The applicant relies on three grounds to support its first plea.
The first ground
57      The applicant submits that OHIM infringed its right to be heard by not informing it that OHIM had not received a request for proof of genuine use of the earlier mark in the letter that the applicant sent to OHIM on 14 May 2012 for the purpose of setting out its observations on the opposition.
58      It is not in dispute that the letter of 14 May 2012, comprising 13 pages, each numbered automatically by facsimile machine, did not contain any request for proof of genuine use.
59      In addition, it is not a document of which the applicant would not have been aware, since the applicant itself sent it to OHIM.
60      The Board of Appeal was fully entitled, therefore, without first hearing the applicant in that respect, to rely on that document to find, at paragraphs 17 and 18 of the contested decision, that no request for proof of genuine use had been lodged before the adoption of the decision of the Opposition Division of 22 October 2012.
61      It must also be held that the Board of Appeal was in no way required, under any application of a duty of care, to inform the applicant that the submission of 14 May 2012, of which it was possible to believe that the applicant had only submitted a part, did not contain a request for proof of genuine use.
62      It follows from the forgoing that the first ground must be rejected.
The second ground
63      The applicant submits that it never received the observations in response that the opposing party filed before the Board of Appeal on 24 April 2013 and that, for that reason, its right to be heard was infringed.
64      In that regard, it is apparent from the case-file that, on 25 April 2013, OHIM sent, by facsimile, a document to the applicant. In addition, OHIM added to the case-file a letter of 25 April 2013 addressed to the applicant. That letter referred to the opposing party’s observations, presented as being annexed to that letter and bearing the date of 24 April 2013.
65      Having regard to that evidence, which has not been effectively challenged by the applicant, it must be held that the applicant’s complaint lacks a basis in fact. Likewise, the ground alleging infringement of Article 79 of Regulation No 207/2009, in so far as it concerns the failure to notify the observations in response filed by the opposing party before the Board of Appeal on 24 April 2013, must be held to be without a factual basis.
The third ground
66      The applicant submits that OHIM did not inform it that the opposing party had filed evidence of the renewal of the earlier mark and of another of the opposing party’s marks and that OHIM referred to it for the first time in paragraph 19 of the contested decision. Those facts were admitted by OHIM in its response to the measure of organisation of procedure decided by the General Court.
67      As regards the filing of documents demonstrating the renewal of another of the opposing party’s marks, it must be pointed out that, as a rule, a procedural irregularity will entail the annulment of a decision in whole or in part only if it is shown that, in the absence of such irregularity, the contested decision might have been substantively different (see judgment of 12 March 2003 in Maja v Commission, T‑254/99, ECR, EU:T:2003:67, paragraph 49 and case-law cited). In the present case, it is not disputed that the Board of Appeal did not rely on the other mark in adopting the contested decision. It follows that even if the filing of those documents had not been notified to the applicant and such a notification was required or the applicant should have been given the opportunity to submit its observations on that filing, such irregularity would be without consequence as to the content of the contested decision. That argument must therefore be rejected as ineffective.
68      As regards the filing of documents demonstrating the renewal of the earlier mark, it must be noted that, under the second sentence of Article 75 of Regulation No 207/2009 (which repeats, in identical terms, the wording of the second sentence of Article 73 of Regulation No 40/94), OHIM’s decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to set out their views. That provision constitutes a specific application of the general principle of protection of the rights of the defence, guaranteed, furthermore, by Article 41(2)(a) of the Charter of Fundamental Rights of the European Union, according to which a person whose interests are affected by a decision of a public authority must be given the opportunity effectively to make his point of view known. The right to be heard extends to all the factual and legal material which forms the basis of the decision-making measure (judgment of 26 March 2014 in Still v OHIM (Fleet Data Services), T‑534/12 and T‑535/12, EU:T:2014:157, paragraph 31).
69      In the present case, it is not disputed that the applicant was not able, prior to the adoption of the contested decision, to submit its observations on the material relating to proof of the renewal of the earlier mark filed by the opposing party, since that material was not forwarded to the applicant.
70      That evidence constitutes one of the foundations of the contested decision. The establishment or otherwise of the existence, validity and scope, of the protection of the earlier mark is a specific question which precedes the assessment of the likelihood of confusion. Thus OHIM may not reject an application for registration of a mark under Article 8 of Regulation No 207/2009, if the existence, validity and scope of the protection of the earlier mark are not established first.
71      Moreover, the Board of Appeal explicitly relied, in paragraph 19 of the contested decision, on material relating to the evidence of renewal of the earlier mark submitted by the opposing party in order to reject the plea of irregularity which had been raised by the applicant against the decision of the Opposition Division.
72      It follows from the foregoing that, by not communicating to the applicant the material relating to the evidence of renewal of the earlier mark, the Board of Appeal did not allow the applicant to submit its observations on material that constituted one of the foundations of the contested decision.
73      The notification of material relating to evidence of the renewal of the earlier mark is all the more necessary since the applicable texts make provision for it and OHIM practices confirm that necessity.
74      Thus, it is apparent from Title II of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995, L 303, p. 1), as amended, that the procedure for opposition to the registration of a mark comprises two distinct phases, a first phase concerning the admissibility of the opposition, and a second, inter partes, phase. That second phase commences, as Rule 18 of the regulation provides, when OHIM has found that the opposition is admissible and that none of the grounds listed in Rule 17 precludes that admissibility (see, to that effect, judgment of 18 October 2012 in Jager & Polacek v OHIM, C‑402/11 P, ECR, EU:C:2012:649, paragraphs 48 and 49).
75      The material relating to the existence, validity and scope of the protection of the earlier mark, in particular the renewal certificate for that mark, falls, as Rule 19 of Regulation No 2868/95 provides, within the inter partes phase.
76      The material concerned, therefore, is material that is required to be communicated to the other party to the proceedings.
77      Even if the communication of the renewal certificate for the earlier mark were to fall within the first phase concerning the admissibility of the opposition that was referred to in paragraph 74 above or the phase laid down in Rule 18(1) of Regulation No 2868/95, the fact remains that, pursuant to Rule 16a of that regulation, any document submitted by the opposing party is to be sent to the other party. The renewal certificate for the earlier mark had therefore, in any event, to be sent to the applicant.
78      Furthermore, it must be added that OHIM stated, at the hearing, that the practice followed by OHIM’s services was to communicate the certificate of renewal of the earlier mark to the applicant.
79      In that regard, it must be observed that the Guidelines on the proceedings before OHIM provide that two copies of the evidence relating, inter alia, to the existence, validity and scope of the protection of the earlier mark must be submitted, one copy of which is intended for the other party, unless that evidence is submitted by facsimile or electronic communication.
80      In addition, it was all the more necessary in the present case for the Board of Appeal to communicate the material relating to proof of renewal of the earlier mark to the applicant, as, in its appeal against the decision of the Opposition Division, the applicant had stated that it was not aware of a response by the opposing party to the request that OHIM had communicated to it as to the need to demonstrate a renewal of the earlier mark and, for that reason, the applicant had to assume that renewal had not been demonstrated.
81      It is true, however, that the rights of the defence are infringed by reason of a procedural irregularity only in so far as the irregularity has had a concrete effect on the ability of the person concerned to defend himself. According to settled case-law, the Court must verify, when it considers that such an irregularity has occurred, whether, given the specific factual and legal circumstances of the case, the proceedings at issue could have resulted in a different outcome if the person concerned had been better able to defend himself in the absence of the irregularity (see, to that effect, judgment of 1 October 2009 in Foshan Shunde Yongjian Housewares & Hardware v Council, C‑141/08 P, ECR, EU:C:2009:598, paragraphs 81, 88, 92, 94 and 107; see also, by analogy, judgments of 10 September 2013 in G. and R., C‑383/13 PPU, ECR, EU:C:2013:533, paragraph 40; Fleet Data Services, paragraph 68 above, EU:T:2014:157, paragraph 32, and of 26 September 2014 in Flying Holding and Others v Commission, T‑91/12 and T‑280/12, ECR, EU:T:2014:832, paragraph 72).
82      In the present case, if the evidence relating to the renewal of the earlier mark had been communicated to the applicant prior to the adoption of the contested decision, the applicant would have been in a position, which was not the case at any time before OHIM, to contest the validity of that evidence and it cannot be ruled out a priori that its observations on that point could have led the Board of Appeal to reach a different conclusion as to the existence, validity and scope of the protection of the earlier mark.
83      As the applicant rightly stated at the hearing, the renewal certificate for the earlier mark at issue might not have related to the earlier mark or the goods that it covered, or might refer to a proprietor of the mark other than the opposing party. The authenticity of the certificate might also be contested.
84      Moreover, as regards the requirement to communicate the renewal certificate for the earlier mark to OHIM, that communication might have been carried out in breach, inter alia, of the time-limit set by OHIM, which could lead to the rejection of the opposition, under Article 20(1) of Regulation No 2868/95.
85      Consequently, contrary to OHIM’s contentions, the administrative proceedings in the present case could have led to a different outcome in the absence of the infringement of the rules in force, whose objective is the protection of the rights of the defence.
86      Furthermore, as is apparent from the minutes of the hearing, OHIM confirmed at the hearing that the applicant had not at any time received notification of the renewal certificate for the earlier mark on which it could not, consequently, make any observation.
87      Thus, even if it were possible for the Court, notwithstanding the provisions of Article 65 of Regulation No 207/2009, to re-examine the factual circumstances of the dispute in the light of observations by the applicant that were not available to the Board of Appeal at the time when it adopted the contested decision, the Court would not be in a position to do so in the present case in the absence of such observations.
88      It follows from the foregoing considerations that the first plea in law, alleging an infringement of the second sentence of Article 75 of Regulation No 207/2009 must be upheld, in so far as it concerns the filing of documents giving evidence of renewal of the earlier mark. The same applies to the plea alleging an infringement of Article 79 of Regulation No 207/2009, in so far as it concerns the failure to notify the filing of documents giving evidence of renewal of the earlier mark.
89      The conclusion referred to in the preceding paragraph is not put in question by the arguments advanced by OHIM.
90      First, given that the applicant relies on a defect in the procedure followed by OHIM and, in particular, the Board of Appeal, such a plea could not, by definition, be raised before OHIM, prior to being raised before the Court. Hence, that plea cannot be regarded as constituting an alteration of the subject-matter of the proceedings.
91      Second, the argument alleging that OHIM is not required to invite the parties to make observations following a request inviting one of them to complete its file, even if that were correct, cannot be properly relied on in the present case. The complaint made against OHIM is not that it did not invite the applicant to submit its observations, but that OHIM did not communicate to the applicant certain material in the case-file on which OHIM relied in order to make its decision.
92      It follows from all of the foregoing that the contested decision must be annulled.
Costs
93      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. Since OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 1 October 2013 (Case R 2338/2012-2), concerning opposition proceedings between Horno del Espinar, S L and Lidl Stiftung & Co. KG;
2.      Orders OHIM to pay the costs.
Martins Ribeiro
Gervasoni
Madise
Delivered in open court in Luxembourg on 5 May 2015.
[Signatures]
* Language of the case: English.