JUDGMENT OF THE GENERAL COURT (Third Chamber)
29 November 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark TVR – Earlier EU figurative mark TVR ITALIA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Right to fair legal process – Legitimate expectations)
In Case T‑53/23,
TVR Automotive Ltd, established in Walliswood (United Kingdom), represented by A. von Mühlendahl and H. Hartwig, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
TVR Italia Srl, established in Milan (Italy),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, I. Nõmm and D. Kukovec (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, TVR Automotive Ltd, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 October 2022 (Case R 1493/2018-5) (‘the contested decision’).
Background to the dispute
2        On 1 October 2013, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark applied for covered goods in, inter alia, Class 12 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, which include, among others, goods corresponding to the following description: ‘Motor cars; aerodynamic attachments for vehicle bodies; aerodynamic fairings for vehicles; aero-dynamic fairings for vehicles; aerofoils for air vehicles; aerofoils for land vehicles; aerofoils for sea vehicles; aerofoils for water vehicles; aeronautical apparatus, machines and appliances; aeroplanes; aircraft; amphibious vehicles; apparatus for locomotion by land, air or water; automobiles; automotive vehicles; bicycle frames; bicycles; boats; cars; components for brakes for vehicles; cycles; driving motors for land vehicles; electric motors for land vehicles; electric vehicles; engines for land vehicles; engines for motor land vehicles; equipment trailers; helicopters; jet aircraft; jet boats; land automotive vehicles; motor cycles; motor vehicle bodies; motorbikes; power trains for land vehicles; powerboats; [tyres]; touring land vehicles; tricycles; trucks; vans; vehicle bodies; vehicle body hardware; vehicles for locomotion by land, air, water or rail; watercraft; wheel brakes; wheel rims; wheels; windscreens; yachts; bodywork parts for vehicles’.
4        On 11 February 2014, the other party to the proceedings before EUIPO, TVR Italia Srl, filed a notice of opposition to registration of the mark applied for pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), inter alia, in respect of the goods referred to in paragraph 3 above.
5        The opposition was based on the earlier EU figurative mark, designating the goods falling within Class 12 and corresponding to the following description: ‘Trucks; mopeds; bicycles; tricycles; tractors; [buses]; aeroplanes; helicopters; gliders; boats; dinghies; ships; apparatus for locomotion by air or water; fittings for bicycles and motorcycles; parts of boats and aeroplanes’, reproduced below:
6        The ground relied upon in support of the opposition was, inter alia, that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
7        On 30 May 2018, the Opposition Division upheld the opposition in part in respect of the goods referred to in paragraph 3 above, rejecting the application for registration in respect of those goods.
8        On 31 July 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as the opposition was upheld. On 4 October 2021, it filed a pleading setting out the grounds of that appeal, in which was stated that that appeal concerned only the following products in Class 12: ‘Motor cars; aerodynamic attachments for vehicle bodies; aerodynamic fairings for vehicles; aero-dynamic fairings for vehicles; aerofoils for land vehicles; apparatus for locomotion by land; automobiles; automotive vehicles; cars; components for brakes for vehicles; driving motors for land vehicles; electric motors for land vehicles; electric vehicles; engines for land vehicles; engines for motor land vehicles; equipment trailers; land automotive vehicles; motor vehicle bodies; power trains for land vehicles; [tyres]; touring land vehicles; vehicle bodies; vehicle body hardware; vehicles for locomotion by land or rail; wheel brakes; wheel rims; wheels; windscreens; bodywork parts for vehicles’.
9        In the contested decision, the Board of Appeal dismissed the appeal on the ground that, so far as concerns the goods forming the object of the appeal, namely the goods referred to in paragraph 8 above, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. It found, first, that the goods at issue were targeted at the general public as well as at professionals, whose level of attention could vary from average to high. Secondly, those goods were considered to be identical or similar. Thirdly, according to the Board of Appeal, the marks at issue were visually highly similar and phonetically identical, while they were not similar conceptually. Fourthly, the earlier mark was considered to be of normal distinctiveness. Fifthly, the Board of Appeal concluded that there was a likelihood of confusion on the part of the German relevant public.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event of the parties being summoned to a hearing.
Law
12      Having regard to the date on which the application for registration at issue was filed, namely 1 October 2013, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed, as argued by the applicant, by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, inasmuch as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
13      Accordingly, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of those provisions being identical.
Substance
14      In support of the action, the applicant puts forward, in essence, a single plea in law, alleging (i) infringement of Article 8(1)(b) of Regulation No 207/2009 and (ii) infringement of the right to fair legal process and of the principle of protection of legitimate expectations.
15      In support of that plea, the applicant confines itself to challenging the Board of Appeal’s assessments in relation to the comparison of the goods concerned by the marks at issue. In particular, it takes issue with the Board of Appeal for failing to take account of the outcome of another set of opposition proceedings between the same parties as those in the present case. According to the applicant, the Board of Appeal should have based its analysis of the similarity of those goods on the ‘interpretation’ of the earlier decisions adopted by the adjudicating bodies of EUIPO during those opposition proceedings and not on an ‘independent de novo’ assessment.
16      EUIPO disputes the applicant’s arguments.
17      As a preliminary point, it should be stated that the complaints alleging infringement of the right to fair legal process and of the principle of the protection of legitimate expectations have been put forward without providing details enabling the Court to assess whether they are well founded.
18      Furthermore, the opposition proceedings to which the applicant refers were initiated by its predecessor against the earlier mark in the present proceedings. That opposition was based, inter alia, on an even earlier EU word mark, namely ‘TVR’, whose genuine use had been shown in respect of the products in Class 12 and corresponding to the following description: ‘Sports cars and their component parts’. By a decision of 14 February 2011 of the Opposition Division (Annex A.6 to the application), confirmed by a decision of 18 March 2016 of the Fourth Board of Appeal (Annex A.7 to the application), it was found, inter alia, that the goods covered by the earlier mark, as referred to in paragraph 5 above, were not similar to ‘sports cars and their component parts’ in Class 12.
19      In addition, it must be observed that, by order of 9 September 2016, TVR Italia v EUIPO – TVR Automotive (TVR ITALIA)
(T‑277/16, not published, EU:T:2016:546), the General Court dismissed the action brought against the abovementioned decision of 18 March 2016 of the Fourth Board of Appeal. Likewise, by order of 2 March 2017, TVR Italia v EUIPO (C‑576/16 P, not published, EU:C:2017:165), the Court of Justice dismissed the appeal against that judgment of the General Court as manifestly inadmissible.
20      In that regard, first, it must be recalled that the decisions concerning the registration of a sign as an EU trade mark which EUIPO takes under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions that the Boards of Appeal take under Regulation No 207/2009 must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice of the Boards of Appeal (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47, and of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
21      Accordingly, contrary to what is submitted by the applicant, the Board of Appeal correctly assessed the similarity of the goods concerned on the basis of the relevant provisions of Regulation No 207/2009 and not on the basis of the application and interpretation of earlier decisions of EUIPO.
22      Secondly, admittedly, in accordance with the case-law, where the adjudicating bodies of EUIPO decide to take a different view from the one adopted in their previous decisions, they should, having regard to the context in which they adopt their new decision, since reliance on those previous decisions forms part of that context, provide an explicit statement of their reasoning for departing from those decisions (see order of 22 October 2020, Grammer v EUIPO (Representation of a geometric figure), T‑833/19, not published, EU:T:2020:509, paragraph 66 and the case-law cited).
23      However, the fact remains that the Board of Appeal explicitly stated why the findings made in the earlier decisions of EUIPO, relied on by the applicant, could not be transposed to the present case, so that the applicant cannot criticise it on the ground that it disregarded the existence of those decisions. The Board of Appeal found, in paragraph 31 of the contested decision, that the goods at issue in the present case were different from the goods concerned in the previous decisions.
24      That finding by the Board of Appeal is moreover free of any error of assessment. In particular, as is apparent from paragraph 18 above, EUIPO’s earlier decision-making practice relied on by the applicant concerned the comparison between the goods covered by the earlier mark and ‘sports cars and their component parts’ in Class 12. As pointed out by the Board of Appeal in paragraph 33 of the contested decision, sports cars have a particular purpose since their design focuses primarily on speed and rapidity. In the present case, the goods covered by the earlier mark were compared not to ‘sports cars and their component parts’ in Class 12, but to a wider range of goods in the same class, set out in paragraph 3 above, which contained, in essence, vehicles and cars in general, whose purpose cannot be restricted to that of sports cars.
25      It thereby follows that EUIPO’s previous decisions on which the applicant relies were adopted in a factual context different from that of the contested decision. Accordingly, the Board of Appeal did not commit any error of assessment inasmuch as it did not base its findings as to the similarity of the goods at issue on the assessments made in those decisions.
26      Consequently, the applicant’s arguments concerning the failure by the Board of Appeal to take the previous decisions of EUIPO into account must be rejected.
27      Since the applicant has raised no other argument in support of the single plea and given the absence of any fact demonstrating infringement of Article 8(1)(b) of Regulation No 207/2009, of the right to fair legal process or of the principle of the protection of legitimate expectations, that plea must be rejected and, consequently, the action in its entirety must be dismissed.
Costs
28      Under Article 134(1) 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.
29      Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that the parties are summoned to attend a hearing. Since no hearing has been organised, it must be held that each party is to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders TVR Automotive Ltd and the European Union Intellectual Property Office (EUIPO) to bear their own costs.
Schalin
Nõmm
Kukovec
Delivered in open court in Luxembourg on 29 November 2023.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.