JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
27 February 2014 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark VOGUE – Earlier Community word mark VOGUE – Likelihood of confusion – Identity or similarity of the goods – Identity or similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 – Vagueness of the trade mark application – Article 26(1)(c) of Regulation (EC) No 207/2009 – Rule 2(2) of Regulation (EC) No 2868/95 – Partial refusal to register)
In Case T‑229/12,
Advance Magazine Publishers, Inc., established in New York, New York (United States of America), represented by C. Aikens, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Eduardo López Cabré, residing in Barcelona (Spain),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 26 March 2012 (case R 1170/2011-4), concerning opposition proceedings between Mr Eduardo López Cabré and Advance Magazine Publishers, Inc.,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 May 2012,
having regard to the response lodged at the Court Registry on 3 September 2012,
having regard to the reply lodged at the Court Registry on 12 December 2012,
having regard to the change in the composition of the Chambers of the General Court,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge­Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 2 September 2004, the applicant, Advance Magazine Publishers, Inc., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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        The mark in respect of which registration was sought is the following figurative sign:
3        The goods in respect of which registration was sought are in Class 18 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, for that class, to the following description: ‘Goods of leather and/or imitation leather; clothing, belts, collars and leads for animals; whips; harness and saddlery; accessories; umbrellas; parasols; walking sticks; animal skins, hides; luggage; bags; shopping bags; trunks; travelling bags; hand bags, shoulder bags backpacks and rucksacks; bicycle bags; purses; wallets; key fobs and key cases; parts and fittings for all the aforesaid goods’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 7/2007 of 19 February 2007.
5        On 14 May 2007, Mr Eduardo López Cabré filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier trade marks:
–        Community word mark VOGUE, registered on 6 March 2002 under No 2082287, designating goods in Class 18 and corresponding to the following description: ‘Umbrellas’;
–        Spanish word mark VOGUE, registered on 21 November 1966 under No 496371, designating goods in class 18 and corresponding to the following description: ‘All kinds of umbrellas, sunshades, handles, ribs and canes for these’;
–        Spanish figurative mark registered on 20 May 1999 under No 2153619 for ‘[a]ll kinds of umbrellas, sunshades, handles, ribs and canes for these’ in Class 18, reproduced below:
7        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).
8        On 2 December 2009, the Opposition Division invited Mr López Cabré, following a request from the applicant in that regard, to furnish proof of genuine use of the earlier marks relied on in support of the opposition.
9        On 22 January 2010, Mr López Cabré provided various documents in order to show that the earlier marks had been put to genuine use in accordance with Article 42(2) and (3) of Regulation No 207/2009.
10      On 18 March 2011, the Opposition Division upheld the opposition in part, refusing registration of the mark applied for in relation to the goods ‘umbrellas, parasols, accessories’ in Class 18, on the ground that there was, in relation to those goods, a likelihood of confusion with the earlier Community word mark VOGUE. It rejected the opposition for the remaining goods and ordered each party to bear its own costs.
11      On 16 May 2011, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
12      By decision of 26 March 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal and ordered the applicant to pay Mr López Cabré the sum of EUR 550 for costs incurred in the opposition and appeal proceedings. In particular, it found that the Opposition Division was correct to uphold the opposition as regards umbrellas, parasols and accessories, since a likelihood of confusion cannot be excluded due to the identity or similarity of those goods and of those protected by the earlier Community word mark VOGUE – a mark in relation to which it had found, furthermore, that, since it had been registered less than five years at the date of publication of the mark applied for, it was not subject to proof of genuine use – and the similarity of the signs at issue.
Forms of order sought
13      The applicant claims that the Court should:
–        primarily, annul the contested decision in its entirety;
–        in the alternative, uphold the opposition solely in relation to umbrellas, parasols and accessories for umbrellas and parasols;
–        order Mr López Cabré to pay the costs.
14      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Preliminary considerations
15      It is necessary to note that, as is apparent from the contested decision, the Board of Appeal, like the Opposition Division, based the rejection of the application for registration of the mark applied for in relation to umbrellas, parasols and accessories in Class 18 on the existence of a likelihood of confusion between the mark applied for and the earlier Community word mark VOGUE, the other earlier marks having not been accepted in support of that dismissal.
16      It follows that it is solely in the light of the earlier Community word mark VOGUE that this action must be assessed.
Infringement of Article 8(1)(b) of Regulation No 207/2009
17      By its single plea in law, the applicant claims that Article 8(1)(b) of Regulation No 207/2009 was infringed. That plea consists of two parts. The first relates to the absence of a likelihood of confusion between the mark applied for and the earlier Community word mark VOGUE, the second to the absence, in any event, of such a likelihood of confusion for accessories other than those relating to umbrellas and parasols.
18      In the first part of the single plea in law, the applicant considers that the Board of Appeal erred by not taking account of the plea in law developed before it, that the Opposition Division had failed to take into consideration the fact that the mark applied for had distinctive character, including for the goods at issue, due to the use, since 1917, of the word ‘vogue’ in its stylised form, as it appears in the mark applied for, in connection with fashion magazines. The applicant states that it thus claimed that the mark applied for adequately indicated that those goods came from it, which the Board of Appeal ignored, since ‘it compared the marks mechanically, that is to say in a vacuum’, thus neglecting the reality of the market. The applicant relies on, in that regard, the decision of the Second Board of Appeal of OHIM of 11 May 2004 (case R 77/2003-2), concerning opposition proceedings between Porsche AG and Intertex Hobby, SA.
19      Under the second part of that plea in law, the applicant claims that the Opposition Division had accepted, in its reasoning, the similarity of accessories and umbrellas, in so far as the former were ‘accessories for umbrellas’, since those two types of goods came from the same manufacturers, shared distribution channels and were complementary. It claims, therefore, that the Opposition Division ought to have drawn all the necessary inferences therefrom by allowing the opposition only for ‘accessories for umbrellas’ and not for all accessories, which, moreover, Mr López Cabré seemed to have conceded before the Board of Appeal. It therefore criticises the Board of Appeal for not allowing such a request for restriction of the opposition and for upholding the Opposition Division’s decision in its entirety. In the reply, the applicant states that OHIM is incorrect to claim that that category of accessories is uniform and that, therefore, some of them cannot be considered individually.
20      OHIM disputes the applicant’s arguments, stating, as regards the comparison of the goods, that the applicant does not deny the fact that umbrellas and parasols are similar. It notes, in that regard, that they are both designed to protect human beings from weather conditions and that, even though they are not always sold in the same shops, they have the same nature and the same purpose. It adds, as regards accessories, that they constitute a uniform category which, logically, includes accessories relating to umbrellas and parasols.
21      It should be noted at the outset that, pursuant to Article 65(2) of Regulation No 207/2009, the General Court is called upon to assess the legality of the decisions of the Boards of Appeal of OHIM by reviewing their application of European Union law, having regard, in particular, to the facts which were submitted to them (see, to that effect, judgment of 4 October 2007 in Case C‑311/05 P Naipes Heraclio Fournier v OHIM, not published in the ECR, paragraph 38, and Case C‑16/06 P Les Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 38).
22      Thus, within the bounds of Article 65 of Regulation No 207/2009, the General Court can carry out a full review of the legality of the decisions of OHIM’s Boards of Appeal, if necessary examining whether those boards have made a correct legal classification of the facts of the dispute (see, to that effect, Naipes Heraclio Fournier v OHIM, paragraph 39) or whether their assessment of the facts submitted to them was flawed (Les Éditions Albert René v OHIM, paragraph 39).
23      It is in the light of those principles that the applicant’s single plea in law must be examined.
24      It should be noted, in that regard, that Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and, because of 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.
25      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 economically­linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of 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 Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).
26      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T-316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).
27      In the present case, it is necessary, at the outset, to approve the Board of Appeal’s assessment, which moreover has not been disputed by the applicant, that the relevant public in respect of which the likelihood of confusion must be analysed is the average consumer of the goods at issue in the European Union. The average consumer must be deemed to be reasonably well informed and reasonably observant and circumspect.
Comparison of the goods
28      At paragraph 23 of the contested decision, the Board of Appeal found that umbrellas, in Class 18, protected by the earlier Community word mark VOGUE, and the umbrellas, parasols and accessories covered by the mark applied for are ‘identical or similar’. There is no doubt that the goods at issue are identical as regards umbrellas. It is necessary, on the other hand, to establish whether the umbrellas covered by the earlier Community word mark VOGUE and the parasols and accessories covered by the mark applied for are similar.
29      According to settled case-law, in assessing the similarity of the goods, all the relevant factors relating to those goods should be taken into account. Those factors include, inter alia, 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, for example, the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
30      To support its conclusion regarding the similarity of umbrellas, on the one hand, and parasols and accessories, on the other, the Board of Appeal noted ‘their common nature, common function, their complementarity, their common end­users and distribution channels’ (paragraph 23 of the contested decision).
31      It is necessary to examine in turn the comparison of first, parasols and umbrellas and, second, accessories and umbrellas.
32      As regards the comparison of parasols and umbrellas, it is necessary to find that the Board of Appeal’s analysis is correct only in part. Although umbrellas and parasols function according to the same type of mechanism, namely, a mast supporting a circular piece of fabric stretched by means of ribs and a sliding device, although they are both designed to protect human beings from certain discomforts caused by the weather and although they are complementary, it must be noted that their end-users are not the same and that the distribution channels of those goods frequently differ. Thus, while parasols fulfil a recreational purpose, which is most often relevant during spring or summer months, in particular in holiday destinations, umbrellas meet a more everyday need, which is mainly one of city dwellers. Admittedly, since those goods are aimed at the average consumer in the European Union, the specific climate of one or other Member State may sometimes moderate that distinction, without however affecting it. The Board of Appeal was, therefore, entitled to find that umbrellas and parasols are similar but should have, on the other hand, emphasised the low degree of that similarity, which it did not.
33      As regards the comparison of accessories and umbrellas, it is necessary to note, first, that the applicant did not state what, in this case, was to be understood by the word ‘accessories’, for example by stating to which goods those accessories related. As is apparent from the case-law, that is a vague category (see, to that effect, judgment of 27 September 2012 in Case T‑39/10 El Corte Inglés v OHIM – Emilio Pucci International (PUCCI), not published in the ECR, paragraph 30), although it is necessary to identify the class to which those accessories belong, in this case Class 18.
34      In that respect, it should be noted that Article 26(1)(c) of Regulation No 207/2009 states that an application for a Community trade mark must contain a list of the goods or services in respect of which the registration is requested and that, under Rule 2(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), the list of goods and services is to be worded in such a way as to indicate clearly the nature of the goods and services.
35      It is clear from the abovementioned provisions that it is for the person requesting registration of a sign as a Community trade mark to give, in the application, a list of the goods or services in respect of which the registration is requested and to provide, for each of those goods or services, a description clearly indicating their nature (Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 23).
36      While those provisions require the goods and services for which the protection of the Community trade mark is sought to be identified by the applicant with sufficient clarity and precision, it is so as to enable OHIM and economic operators, on that basis alone, to determine the extent of the protection sought (see, by analogy, Case C‑307/10 Chartered Institute of Patent Attorneys [2012] ECR, paragraph 49).
37      More specifically, compliance with such a requirement enables, in opposition proceedings, the Opposition Division and, where relevant, the Board of Appeal to assess the degree of similarity between the goods at issue, in particular where it relates to concepts the content of which is largely dependent on the context and characteristics of the mark applied for and of the earlier mark. By way of example, some goods in Class 18, such as goods of leather or imitation leather, may, as appropriate, be considered to be clothing accessories (see, to that effect, judgment of 10 September 2008 in Case T‑96/06 Tsakiris‑Mallas v OHIM – Late Editions (exē), not published in the ECR, paragraph 32; judgment of 8 March 2013 in Case T‑498/10 Mayer Naman v OHIM – Daniel e Mayer (David Mayer), not published in the ECR, paragraph 70; and judgment of 16 September 2013 in Case T‑569/11 Gitana v OHIM – Teddy (GITANA), not published in the ECR, paragraph 45), travel accessories (see, to that effect, judgment of 15 November 2011 in Case T‑434/10 Hrbek v OHIM – Outdoor Group (ALPINE PRO SPORTSWEAR & EQUIPMENT), not published in the ECR, paragraphs 34 to 36) or accessories for animals (see, to that effect, judgment of 8 July 2010 in Case T‑385/08 Trautwein v OHIM (Representation of a dog), not published in the ECR, paragraphs 25 and 26).
38      Thus, without having the information required by the abovementioned provisions as regards one of the goods at issue (accessories), the Board of Appeal could not, without erring in law and reasoning in the abstract (see, to that effect, Case T‑295/01 Nordmilch v OHIM (OLDENBURGER) [2003] ECR II‑4365, paragraph 46), consider that accessories and umbrellas were similar, ‘given their common nature, common function, their complementarity, their common end-users and distribution channels’ (paragraph 23 of the contested decision).
39      Next, it should be noted, so far as this point is relevant, that it was not open to the Board of Appeal, contrary to the applicant’s claim with which Mr López Cabré seemed to have agreed, to allow the opposition, as regards accessories, only for ‘accessories for umbrellas’. Although Article 43(1) of Regulation No 207/2009 provides that the applicant may, at any time, withdraw his Community trade mark application or restrict the list of goods or services contained therein and although OHIM, for its part, must examine the application in relation to all the goods or services on the list concerned, taking into account, if necessary, restrictions to that list within the meaning of that provision (see, to that effect, Mozart, paragraphs 22 and 23), in this case, no restriction of the trade mark application is apparent from the administrative file (see paragraph 14 of the contested decision).
40      Since the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (Case T‑66/03 ‘Drie Mollen sinds 1818’ v OHIM – Nabeiro Silveria (Galáxia) [2004] ECR II‑1765, paragraph 45, and judgment of 29 January 2013 in Case T‑662/11 Müller v OHIM – Loncar (Sunless), not published in the ECR, paragraph 16), the applicant cannot reasonably rely on the Board of Appeal’s refusal to allow such a restriction.
41      Lastly, it must be held that the Board of Appeal was also incorrect, at paragraph 24 of the contested decision, despite having based its analysis on only the earlier Community word mark VOGUE, to remark that the goods listed in the specification of Mr López Cabré’s two Spanish marks did not cover a broader spectrum and did not therefore alter the scope of its assessment. That statement has no factual basis: it is clear from paragraph 6 above that those marks were filed for ‘[a]ll kinds of umbrellas, sunshades, handles, ribs and canes for these’, in contrast to the earlier Community word mark VOGUE which was registered only for ‘umbrellas’.
42      It follows from the review of the comparison of the goods at issue that they are either identical (umbrellas) or have a low degree of similarity (parasols and umbrellas) or were not sufficiently identifiable (accessories) for the Board of Appeal to be able actually to assess their degree of similarity with the goods protected by the earlier Community word mark VOGUE, namely, umbrellas.
Comparison of the signs
43      It should be recalled that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, their distinctive and dominant components, in particular, being borne in mind. The perception of the marks by the average consumer of the goods or services at issue plays a decisive role in the global assessment 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 (see Case C-334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
44      In the present case, the Board of Appeal concluded that there is a high degree of visual similarity between the signs at issue, that they are phonetically identical and, conceptually, that they are either identical for a French or English-speaking public or neutral for the average consumer of the European Union who understands neither French nor English.
–       Visual comparison
45      The signs at issue are, on the one hand, a word mark consisting of the word ‘vogue’ and, on the other, a figurative mark consisting only of the word ‘vogue’, that word being stylised to reproduce the graphics of the title of fashion magazines owned by the applicant. The identical nature of the five letters forming the word ‘vogue’ leads to the conclusion, like the Board of Appeal’s finding, that, notwithstanding the specific presentation of that word in the mark applied for, the signs at issue are visually highly similar.
–       Phonetic comparison
46      Since the signs at issue contain the same single word and the word ‘vogue’ is pronounced the same way in both cases, the Board of Appeal was correct to conclude that the signs are phonetically identical.
–       Conceptual comparison
47      The Board of Appeal noted, at paragraph 21 of the contested decision, that, for the average French and English-speaking consumer, the word ‘vogue’ will have the same meaning regardless of the sign at issue. OHIM states, in the response, what those meanings are, namely, in French, ‘faveur’ (favour), ‘popularité en général, déterminée par la mode’ (general popularity determined by fashion) and, in English, ‘the prevailing fashion or style at a particular time’. That analysis is not disputed by the applicant, nor does it dispute the analysis that the signs at issue are conceptually neutral when they are perceived by the average consumer in the European Union who understands neither French nor English. In such a case, it is not possible to make a conceptual comparison of the signs (see, to that effect, GITANA, paragraph 67 and the case-law cited).
Likelihood of confusion
48      The applicant disputes the Board of Appeal’s assessment on the ground that it did not take into account the distinctive character of its mark, which excludes any likelihood of confusion.
49      OHIM disputes the applicant’s arguments.
50      It must, first, be stated that reliance, by the applicant, on the distinctive character of the mark applied for resulting from the link which would be made immediately with magazines belonging to it cannot succeed. As OHIM correctly notes, the repute of a sign can be taken into consideration only if it has been invoked in support of the scope of protection of the earlier trade mark (Case C-39/97 Canon [1998] ECR I-5507, paragraph 19; Case C-498/07 P Aceites del Sur-Coosur v Koipe [2009] ECR I-7371, paragraph 84; and GITANA, paragraph 72).
51      Next, regarding reliance on previous decision-making practice of OHIM, it is settled case-law that that can have no bearing on the legality of the contested decision (Case C‑412/05 P Alcon v OHIM [2007] ECR I‑3569, paragraph 65; Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891; and GITANA, paragraph 48).
52      Lastly, the global assessment implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Canon, paragraph 17, and Joined Cases T-81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II-5409, paragraph 74).
53      In the present case, it is necessary to find that the global assessment of the likelihood of confusion by the Board of Appeal did not infringe Article 8(1)(b) of Regulation No 207/2009 as regards, first, umbrellas and, second, parasols. In the first instance, the goods at issue are identical and the signs at issue are visually highly similar, phonetically identical and conceptually identical or neutral, as the case may be. Therefore, the Board of Appeal was right to find, concerning those types of goods, a likelihood of confusion between the earlier Community word mark VOGUE and the mark applied for. In the second instance, the low degree of similarity between parasols and umbrellas is, in the present case, offset by the strong visual similarity and the phonetic identity, as well as the conceptual identity for French or English-speaking consumers, of the signs at issue. Consequently, it is necessary to hold that the Board of Appeal’s inaccuracy in comparing parasols and umbrellas does not affect its conclusion regarding the likelihood of confusion, in that respect, between the earlier Community word mark VOGUE and the mark applied for.
54      On the other hand, the Board of Appeal was wrong to consider that there was a likelihood of confusion between the mark applied for and the earlier Community word mark VOGUE as regards accessories. For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar, those conditions are cumulative (see easyHotel, paragraph 42 and the case-law cited). Consequently, the similarity or identical nature of the signs at issue cannot offset the lack of any assessment of the similarity of the goods at issue, namely, accessories and umbrellas, since the applicant had not sufficiently defined what it meant by ‘accessories’, by example by seeking to restrict its application for a Community trade mark.
55      It should be borne in mind that the General Court reviews the legality of the decisions of OHIM bodies. If it holds that such a decision, called into question in an action brought before it, is vitiated by illegality, it must annul it. It may not dismiss the action while substituting its own reasoning for that of the competent OHIM body which is the author of the contested act (Case T-402/07 Kaul v OHIM – Bayer (ARCOL) [2009] ECR II-737, paragraph 49, and Case T‑70/08 Axis v OHIM – Etra Investigación y Desarrollo (ETRAX) [2010] ECR II‑4645, paragraph 29). It is therefore for OHIM to draw the appropriate conclusions from this judgment in the light of all the legal and factual considerations which it will have in its possession, in particular the findings at paragraphs 34, 35, 38 and 40 of this judgment and the wording of the judgment delivered today in Case T-37/12, also between the applicant and OHIM.
56      Therefore, the first part of the applicant’s single plea in law must be upheld in part and the contested decision must be annulled in so far as the Board of Appeal confirmed the Opposition Division’s decision upholding the opposition for ‘accessories’. The upholding in part of the first part of the single plea in law renders irrelevant, first, the second part of that plea in law and, second, the applicant’s second claim, to which that second part was related exclusively, seeking the opposition to be upheld solely in relation to umbrellas, parasols and accessories for umbrellas and parasols.
Costs
57      Since Mr López Cabré does not have status of party in these proceedings, the applicant’s head of claim requesting that he be ordered to pay the costs is inadmissible.
58      Under Article 87(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other head of claim, the Court may order that the costs be shared or that each party bear its own costs.
59      In the circumstances, the parties must be ordered to bear their own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of OHIM of 26 March 2012 (case R 1170/2011-4), concerning opposition proceedings between Mr Eduardo López Cabré and Advance Magazine Publishers, Inc., in so far as it confirmed the Opposition Division’s decision of 18 March 2011 upholding the opposition for accessories in Class 18 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.
2.      Dismisses the remainder of the claim for annulment of the decision referred to at paragraph 1 of the operative part.
3.      Declares that there is no need to adjudicate on the claim for the opposition to be upheld solely in relation to umbrellas, parasols and accessories for umbrellas and parasols.
4.      Orders each party to bear its own costs.
Gratsias
Kancheva
Wetter
Delivered in open court in Luxembourg on 27 February 2014.
[Signatures]
* Language of the case: English.