62011TJ0378_EN
Parties
Grounds
Operative part
Parties
In Case T-378/11,
Franz Wilhelm Langguth Erben GmbH & Co. KG,
established in Traben-Trarbach (Germany), represented by R. Kunze and G. Würtenberger, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),
represented by K. Klüpfel and G. Schneider, acting as Agents,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 10 May 2011 (Case R 1598/2010-4) relating to a claim of seniority of earlier marks in an application for registration of the figurative sign MEDINET as a Community trade mark,
THE GENERAL COURT (Fifth Chamber),
composed of S. Papasavvas, President, V. Vadapalas (Rapporteur) and K. O’Higgins, Judges,
Registrar: C. Kristensen, Administrator,
having regard to the application lodged at the Registry of the General Court on 18 July 2011,
having regard to the response lodged at the Registry of the General Court on 23 November 2011,
further to the hearing on 17 October 2012,
gives the following
Judgment
Grounds
Background to the dispute
1. On 29 December 2009, the applicant, Franz Wilhelm Langguth Erben GmbH & 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 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:
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3. The goods in respect of which registration was sought are in Class 33 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: ‘Wines, sparkling wines, beverages containing wine’.
4. At the same time the applicant lodged at OHIM, pursuant to Article 34 of Regulation No 207/2009, an application claiming the seniority of earlier national and international figurative marks which were, respectively, the subject of German registration number 834732 and of international registration number 364053, with effect in Austria, the Benelux countries, the Czech Republic, France, Hungary, Italy, Poland, Slovakia and Slovenia, consisting of the following sign:
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5. By decision of 30 June 2010, the Examiner refused the claim of seniority of the earlier national and international marks.
6. On 17 August 2010 the applicant lodged an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against the Examiner’s decision.
7. By decision of 10 May 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. In particular, it found that the requirement set out in Article 34(1) of Regulation No 207/2009 that there must be ‘identity’ of the marks for seniority to be claimed was not satisfied inasmuch as the Community trade mark applied for did not designate any specific colour whereas the earlier national and international marks were golden in colour.
Forms of order sought
8. The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
9. OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
10. In support of the action the applicant relies on three pleas in law, alleging, first, infringement of Article 34(1) of Regulation No 207/2009, secondly, infringement of Article 75 of that regulation and, thirdly, infringement of Article 77 thereof.
11. It is necessary to examine in turn the second, the first and the third of those pleas.
12. It must be pointed out at the outset that the applicant, in paragraph 53 of the application, refers to many arguments which were already put forward in the proceedings before the Board of Appeal and before the Examiner and states that they should also be regarded as expressly forming part of the present application.
13. Settled case-law has established that, in order to ensure legal certainty and the proper administration of justice, it is necessary, if an action is to be admissible, for the essential matters of law and fact relied on to be stated, at least in summary form, coherently and intelligibly in the application itself. In that regard, although the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed thereto, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in law which, in accordance with the relevant provisions, must appear in the application. Accordingly, to the extent that the applicant makes no specific reference to particular paragraphs of its written submissions in which the arguments put forward in the proceedings before OHIM are set out, the general references to those written submissions must be declared inadmissible (see, to that effect, judgment of 12 July 2012 in Case T-346/09 Winzer Pharma
v OHIM – Alcon (BAÑOFTAL), not published in the ECR, paragraph 43 and the case-law cited).
The second plea, alleging infringement of Article 75 of Regulation No 207/2009
14. According to settled case-law, under Article 75 of Regulation No 207/2009, decisions of OHIM are required to state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. That duty has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision. The Boards of Appeal cannot, however, be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power (see judgment of 12 July 2012 in Case T-389/11 Gucci
v OHIM – Chang Qing Qing (GUDDY), not published in the ECR, paragraph 16 and the case-law cited).
15. It must also be borne in mind that the duty to state reasons in decisions is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see GUDDY, paragraph 17 and the case-law cited).
16. First, the applicant takes the view that the Board of Appeal did not state the reasons for rejecting its detailed arguments relating to the decisions of the Boards of Appeal of OHIM on claims of priority or seniority, although those decisions concern facts which are almost identical to those in the present case.
17. That argument cannot succeed. The Board of Appeal was not required to carry out a detailed analysis of those different decisions and, furthermore, it stated, in paragraph 21 of the contested decision, the reasons why it did not regard the decisions referred to by the applicant as relevant. It thus stated that those decisions were ‘contrary to the settled practice of the first-instance divisions of [OHIM]’ and were also not ‘consistent with the legal provisions in force’.
18. Secondly, the applicant submits that the Board of Appeal failed to comply with its obligation to state reasons by stating that there was no rule in Regulation No 207/2009 under which a mark in black and white was protected in every colour. It adds that, if the Board of Appeal had examined the principles of Community trade mark law, amply cited by the applicant in that connection, it ought to have found that at least a ‘claim of partial seniority’ was justified in the present case.
19. Those arguments cannot succeed either. First, the Board of Appeal, in paragraph 20 of the contested decision, did not merely state that ‘[Regulation No 207/2009] did not [contain] a legal principle that a mark in black and white is protected in every colour’, but stated that, ‘on the contrary, the marks [had] to be compared as registered, and the colour of a mark may or may not, as the case may be, be one of the dominant and distinctive elements of that mark, influence the global impression produced by that mark and increase or reduce the similarity (and therefore the scope of protection) in the light of the elements of the opposing mark’.
20. Secondly, the applicant’s argument that the Board of Appeal should have allowed at least a ‘claim of partial seniority’, is, in actual fact, a complaint that the Board of Appeal did not agree with its opinion and not a complaint that it failed to state adequate reasons for its decision. It must be borne in mind, in the light of the case-law cited in paragraph 15 above, that the question whether the reasoning is well founded must be distinguished from the obligation to state reasons.
21. In view of the foregoing, the Board of Appeal gave adequate reasons for refusing to uphold the claim of seniority of the earlier marks in the application for registration of the figurative sign MEDINET as a Community trade mark, enabling the applicant to defend its rights and enabling the European Union Courts to exercise their power to review the legality of the decision.
22. The second plea must therefore be rejected.
The first plea, alleging infringement of Article 34(1) of Regulation No 207/2009
23. It must be noted at the outset that, although the Board of Appeal, in the contested decision, and the parties, in their written pleadings, refer to the Community trade mark applied for as being in black and white, that does not mean that the Community trade mark in respect of which registration is sought designates the colours black and white; rather it does not designate any specific colour.
24. The applicant takes the view that, by refusing to uphold the claim of seniority of the earlier national and international marks in the application for registration of the Community trade mark MEDINET, the Board of Appeal infringed Article 34(1) of Regulation No 207/2009.
25. Under Article 34(1) of Regulation No 207/2009, the proprietor of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, who applies for an identical trade mark for registration as a Community trade mark for goods or services which are identical with or contained within those for which the earlier trade mark has been registered, may claim for the Community trade mark the seniority of the earlier trade mark in respect of the Member State in or for which it is registered.
26. In order to uphold the claim of seniority of the earlier national mark for the purposes of the application for registration of the Community trade mark, three cumulative conditions must be fulfilled: the earlier mark and the Community trade mark applied for must be identical; the goods or services covered by the Community trade mark applied for must be identical to, or contained within, those covered by the earlier mark; and the proprietor of the marks at issue must be the same (Case T-103/11 Shang v OHIM (justing)
[2012] ECR, paragraph 14).
27. It should be borne in mind that a sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences which are so insignificant that they may go unnoticed by an average consumer ( justing, paragraph 16).
28. The condition that the sign and mark must be identical must be interpreted restrictively because of the consequences attaching to such identity. In the present case, under Article 34(2) of Regulation No 207/2009, the proprietor of the Community trade mark for which the seniority of the earlier mark has been recognised will, if he surrenders the earlier mark or allows it to lapse, be able to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered ( justing, paragraph 17).
29. In the present case, it is not disputed that the goods covered by the Community trade mark applied for and those covered by the earlier national and international marks are identical. It is also common ground that the proprietor of the marks at issue is the same.
30. Furthermore, it must be pointed out that, although the earlier national and international marks and the Community trade mark applied for include a common word element, namely the element ‘medinet’, contained in a figurative shape representing a cross, the former are golden in colour whereas the latter does not designate any specific colour.
31. The applicant submits, first, that the Board of Appeal should, in order to determine whether the condition of identity of the sign and mark was satisfied, have applied the principles relating to the identity of marks which have been elaborated on in opposition proceedings. Furthermore, it takes the view that the Board of Appeal failed to appreciate the difference between the subject-matter and the scope of protection. Lastly, the claim of seniority of the earlier mark does not mean that, after the national rights have been abandoned, the Community trade mark produces its effects in the relevant countries on the basis of the priority of those national rights. On the contrary, the scope of the protection conferred by the Community trade mark in the relevant countries is still determined by reference to the scope of the protection conferred by the marks in respect of which seniority was claimed. The present case therefore raises the question of the scope of protection conferred by the marks at issue.
32. As regards the identity of marks, the Board of Appeal found, in paragraph 15 of the contested decision, that ‘there is no identity if the earlier mark [was] in colour and the mark in respect of which registration as a Community trade mark was applied for [was] not’. It added, in paragraph 18 of the contested decision, that ‘[a]cceptance of the claim of seniority would, in actual fact, be tantamount to replacing the earlier mark in colour by the protection of a mark in black and white, that is to say, to altering the reproduction of the mark’. Last, it found, in paragraph 19 of the contested decision, that ‘the extracts from registers provided [allowed] the word element [“medinet”], which [was] clearly legible on the Community trade mark application, to be made out only indistinctly’ and that ‘in the extracts from registers, that word element [was] lighter than the background, whereas it [was] darker in the Community trade mark application (black on a white background)’.
33. Regarding the question of the scope of protection of the marks at issue, the Board of Appeal stated, in paragraph 20 of the contested decision, that ‘[t]he scope of protection of the earlier mark or even of the mark in respect of which registration as a Community trade mark was applied for (assuming its subsequent registration) [was] not at issue in the present case’, that ‘the subject-matter of protection [had] to be the same otherwise the marks [could] not be identical’ and that ‘[that was shown] by the reference to the judgment [of the Court of Justice] in Arthur et Félici e’.
34. It must be pointed out, as was stated by OHIM at the hearing, that the ‘reference to the judgment [of the Court of Justice] in Arthur et Félicie ’ must be understood as a reference to the judgment in Case C-291/00 LTJ Diffusion
[2003] ECR I-2799.
35. Furthermore, the Board of Appeal rejected the reference the applicant made to the judgment of the General Court of 18 June 2009 in Case T-418/07 LIBRO
v OHIM – Causley (LiBRO), not published in the ECR, finding that it was ‘irrelevant because that judgment … concerned only the examination of likelihood of confusion and, in that context, the examination of the degree of similarity between the marks’ (paragraph 20 of the contested decision).
36. In addition, according to the Board of Appeal:
‘[s]peculative considerations about the scope of protection of the mark at issue … vis-à-vis any third party’s marks have, however, no place in the examination of a claim of seniority. It is not necessary to interpret the identity of marks in exactly the same way in Article 34 of [Regulation No 207/2009] as in other provisions, for example, in Article 8(1)(a) of [Regulation No 207/2009] or indeed in assessing use in an identical (registered) form for the purpose of Article 15(1) [of that regulation]’ (paragraph 20 of the contested decision).
37. In that regard, OHIM stated, in the response, that, contrary to what the applicant claimed, the case-law relating to the application of Article 8(1) of Regulation No 207/2009 was not relevant for the purpose of the application of Article 34 of that regulation inasmuch as the perception of consumers, which is the decisive factor in opposition proceedings, plays no part in a claim of seniority of an earlier mark.
38. However, at the hearing, OHIM stated that the judgment in LTJ Diffusion
had indeed formed the basis for the contested decision, but that, although the perception of consumers could be taken into account in considering whether there was identity of marks, as defined in the context of the application of Article 34 of Regulation No 207/2009, another factor, namely the scope of protection of the marks at issue, also had to be taken into account.
39. It must be borne in mind that the definition of the identity of marks in the judgment in justing
(paragraph 16), is based on that given by the Court of Justice in the judgment in LTJ Diffusion
(paragraph 54), in response to a request for a preliminary ruling concerning the interpretation of Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), which is equivalent to Article 8(1)(a) of Regulation No 207/2009.
40. However, the mere fact that the definition of the identity of marks in the judgment in justing
(paragraph 16) is based on that given by the Court of Justice in the judgment in LTJ Diffusion
(paragraph 54), cannot call in question the relevance of that definition for the application of Article 34 of Regulation No 207/2009. Even although the objectives of Article 8(1)(a) and of Article 34 of that regulation are not the same, it is a condition for the application of both of them that the marks at issue must be identical. Furthermore, the case-law relating to those two articles requires the identity of marks to be interpreted strictly ( LTJ Diffusion, paragraph 50, and justing, paragraph 17).
41. A concept which is used in different provisions of a legal measure, must, for reasons of coherence and legal certainty, and particularly if it is to be interpreted strictly, be presumed to mean the same thing, irrespective of the provision in which it appears.
42. Lastly, although Article 5(1)(a) of First Directive 89/104, just like Article 8(1)(a) of Regulation No 207/2009, does not expressly refer to the perception of the relevant public, the fact remains that the Court of Justice, in the judgment in LTJ Diffusion, took it into account in order to refine its definition of the identity of marks, and in thus holding that they are identical where they contain differences so insignificant that they may go unnoticed by an average consumer.
43. Therefore, the Court of Justice’s interpretation of the identity of marks in the judgment in LTJ Diffusion for the purposes of the application of Article 5(1)(a) of First Directive 89/104, which is identical to Article 8(1)(a) of Regulation No 207/2009, is relevant for the application of Article 34 of Regulation No 207/2009.
44. Consequently, it must be held that the Board of Appeal was required to apply the same definition of the identity of marks as that established by the case-law in connection with the application of Article 8(1)(a) of Regulation No 207/2009.
45. In that regard, it must be stated that, contrary to what OHIM claimed at the hearing, it cannot be inferred from paragraph 20 of the contested decision that the Board of Appeal in fact applied the definition of the identity of marks as set out in the judgment in LTJ Diffusion
(paragraph 54). Although the Board of Appeal refers to that judgment in order to state that the subject-matter of protection must be the same if the marks are to be identical, it states at the end of the same paragraph that the identity of marks in Article 34 of Regulation No 207/2009 does not necessarily have to be interpreted in the same way as in Article 8(1)(a) of that regulation.
46. However, that error does not vitiate the reasoning set out in the contested decision, since it is evident, on reading all the grounds for the contested decision, that the Board of Appeal’s findings are consistent with the definition used by the Court in paragraph 27 above.
47. As for the scope of protection of the marks at issue, contrary to what OHIM submits, that is not a factor to be taken into consideration in examining the claim of seniority of the earlier mark. As stated in paragraph 26 above, one of the conditions examined by OHIM in order to uphold or refuse such a claim is that of whether the marks at issue are identical. An examination of whether such marks are identical involves a comparison of the elements comprising the marks and not an assessment or comparison of the scope of protection which those marks have or might have, and which may, moreover, vary in the light of the provision of Regulation No 207/2009 applicable.
48. Secondly, the applicant takes the view that there is no obvious difference, within the meaning of the Guidelines concerning proceedings before OHIM (Part B, paragraph 5.5), between the marks at issue to justify the refusal of the claim of seniority of the earlier mark. Not only did the Community trade mark applied for in black and white, as the greater, include the colour ‘pale gold’ of the earlier national and international marks as the lesser, but, furthermore, the Community trade mark applied for contains, without any additions, all the elements which constitute the earlier national and international marks. Lastly, there are no phonetic and conceptual differences.
49. It must be pointed out that it is common ground between the parties that the marks at issue each include the word element ‘medinet’ contained in a figurative shape representing a cross. Therefore, the question which arises is that of whether the difference between those marks stemming from the fact that the earlier national and international marks are golden in colour whereas the Community trade mark applied for does not designate any colour is such that those marks may not be regarded as identical.
50. In that regard, it must be pointed out that, although the Guidelines concerning proceedings before OHIM state, as regards Article 34 of Regulation No 207/2009, that ‘[a]s far as figurative marks are concerned the examiner will object if there is any obvious difference in the appearance of the marks’, those guidelines are merely a set of rules setting out the line of conduct which OHIM proposes to adopt (see, to that effect, Case T-410/07 Jurado Hermanos v OHMI (JURADO) [2009] ECR II-1345, paragraph 20, and the judgment of 7 July 2010 in Case T-124/09 Valigeria Roncato v OHMI – Roncato (CARLO RONCATO), not published in the ECR, paragraph 27).
51. Consequently, it is not in the light of those guidelines, but in the light of the case-law cited in paragraph 27 above, that it must be determined whether that difference is so insignificant that the marks at issue must be regarded as identical.
52. It must be stated at the outset that the fact that a mark is registered in colour or, on the contrary, does not designate any specific colour cannot be regarded as a negligible element in the eyes of a consumer. The impression left by a mark is different according to whether that mark is in colour or does not designate any specific colour.
53. In that regard, the judgment referred to by the applicant in the application, according to which ‘[the protection of] an earlier mark [which] does not designate any specific colour also extends to combinations of colour’ ( LiBRO, paragraph 65), is not relevant in the present case inasmuch as, as stated in paragraph 47 above, the scope of protection of the marks is not a factor to be taken into consideration in examining a claim of seniority. In any event, it may be deduced from that judgment that the scope of protection of a Community trade mark designating a colour is different from that of a Community trade mark which does not designate any specific colour.
54. Consequently, it must be held that the Board of Appeal was right to find that the marks at issue were not identical.
55. That finding cannot be called in question by the other arguments put forward by the applicant.
56. In that regard, it must be borne in mind, first, that Decision EX-03-5 of the President of OHIM of 20 January 2003 concerning the formal requirements of a priority or seniority claim, and rules 15(2)(e) and 103(2)(e) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), which were invoked by the Board of Appeal in order to answer the question of the extent to which the seniority of an earlier mark in colour could be claimed in an application for registration of a Community trade mark in black and white, are not relevant. In any event, according to the applicant, the Board of Appeal infringed the hierarchy of norms by interpreting Community trade mark legislation on the basis of administrative rules.
57. It must be pointed out, as regards the measures referred to in paragraph 56 above, that the Board of Appeal explained, after stating, in paragraph 15 of the contested decision, that a mark in colour was not identical to a mark in black and white, that ‘that [was] why Article 3(3) of Decision EX-03-5 … [required] that, if the earlier mark [was] in colour, the evidence (extract from the register) of the earlier mark also [had to be] in colour’ (paragraph 16 of the contested decision), that ‘in the context of an international registration which [presupposed] identity with the basic trade mark, it [was] also required that, if the basic mark [was] in colour, the application for international registration also [had to be] in colour’ and that ‘the colour reproduction of the mark [was] also necessary in the context of rule 15(2)(e) of [Regulation No 2868/95]’ (paragraph 17 of the contested decision).
58. It is apparent from the previous paragraph that the Board of Appeal did not give an interpretation of Article 34 of Regulation No 207/2009 on the basis of the measures referred to in paragraph 56 above, but only referred to them in order to support its finding that the colour of a mark constitutes an important element of that mark, in particular in an examination of a claim of seniority of an earlier mark in an application for registration of a sign as a Community trade mark, which requires those marks to be exactly identical.
59. Therefore, contrary to what the applicant claims, the Board of Appeal did not infringe the hierarchy of norms and was fully entitled to cite those various provisions in order to support the interpretation given to Article 34 of Regulation No 207/2009.
60. Secondly, the applicant submits that the Board of Appeal should have taken account of earlier decisions of the Boards of Appeal of OHIM in which the claim of seniority of an earlier mark was upheld when the difference between the mark applied for and the earlier mark was slight.
61. In that regard, it should first of all be noted that OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law. Although, in the light of the principles of equal treatment and sound administration, OHIM must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the application of those principles must always be consistent with respect for legality (see judgment of 22 May 2012 in Case T-179/11 Sport Eybl & Sports Experts
v OHIM – Seven (SEVEN SUMMITS), not published in the ECR, paragraph 68 and the case-law cited).
62. Moreover, for reasons of legal certainty and, specifically, of sound administration, the examination of any trade mark application must be stringent and exhaustive, in order to prevent trade marks from being improperly registered. An examination of that nature must be undertaken in each individual case (see SEVEN SUMMITS, paragraph 69 and the case-law cited).
63. In the present case, the Board of Appeal, in paragraph 21 of the contested decision, regarded the earlier decisions referred to by the applicant ‘as being contrary to the settled practice of the first-instance divisions of [OHIM], but also as being at variance with the legal provisions in force’. It added that ‘[e]ither the cases referred to by the [applicant] were not comparable and, in that case, it [was] not necessary for them to [have been] decided on in the same way, or they were comparable and, in that case, it [was] the principle that OHIM’s actions must be lawful which [took precedence] and there [was] no right to a repetition of incorrect decisions’.
64. The Board of Appeal therefore took the earlier decisions into consideration. It studied them and found that there was no need to decide in the same way, as those cases were either not comparable or it would have been contrary to the principle of legality. It follows that the Board of Appeal adopted a decision which complies with the case-law cited in paragraphs 61 and 62 above.
65. In any event, the fact that the earlier national and international marks are in colour whereas the Community trade mark applied for does not designate any specific colour does not constitute an insignificant difference, as the Court has determined in paragraph 52 above.
66. Lastly, the applicant submits that upholding the claim of seniority of the earlier mark would not have the effect that the Community trade mark applied for would have the priority of the earlier mark, but would only allow the applicant to act against the national or Community trade marks of third parties which were filed after the registration of the earlier national and international trade marks of which it is the proprietor but before the present Community trade mark application, on the basis of those earlier marks, consolidated, in their respective forms, under the ‘umbrella’ of the Community trade mark. OHIM should therefore have upheld a ‘claim of partial seniority’ which would have enabled the applicant to rely, in the relevant countries, on the seniority of the marks in colour and not the seniority of the Community trade mark for the representation in black and white.
67. OHIM takes the view that that argument is inadmissible because it was put forward for the first time in the application and is capable of altering the subject-matter of the dispute dealt with before the Board of Appeal. In any event, to uphold a ‘claim of partial seniority’ would mean altering the subject-matter of the mark, which is impossible.
68. In that regard, even if the applicant’s argument were admissible, it could not succeed. To accept such an argument would render meaningless the requirement that the marks must be identical set out in Article 34(1) of Regulation No 207/2009. If the applicant’s reasoning were to be followed, it would be possible to claim the seniority of an earlier mark even though the Community trade mark applied for is completely different, since, as the applicant points out, ultimately, the proprietor of the marks bases his opposition proceedings in respect of the period between the date of registration of the earlier mark and the date of registration of the Community trade mark, on the earlier mark as it was initially registered. Consequently, the requirement that the marks must be identical would be without purpose.
69. Furthermore, the possibility of relying on the seniority of a part of the earlier national mark is not provided for by Article 34 of Regulation No 207/2009. Article 34 of that regulation is to be interpreted strictly and the Court cannot, therefore, uphold such a claim.
70. In the light of all of the foregoing, the first plea must be dismissed.
The third plea, alleging infringement of Article 77 of Regulation No 207/2009
71. Article 77(1) of Regulation No 207/2009 provides that if OHIM considers that oral proceedings would be expedient they shall be held either at the instance of OHIM or at the request of any party to the proceedings.
72. In that regard, the Board of Appeal enjoys a discretion as to whether oral proceedings before it are really necessary (see judgment of 3 February 2011 in Joined Cases T-299/09 and T-300/09 Gühring v OHIM (Combination of broom yellow and silver grey and combination of yellow ochre and silver grey), not published in the ECR, paragraph 34 and the case-law cited).
73. The applicant submits that oral proceedings before the Board of Appeal would have been expedient in order to discuss in detail the legal situation in this case. It takes the view that, by not taking into account the element of expediency referred to in Article 77 of Regulation No 207/2009 and by ‘forcing’ it to bring an action before the Court, the Board of Appeal thus infringed that Article.
74. It is, however, apparent from the file and from the contested decision that the Board of Appeal had before it all the information needed as a basis for the operative part of that decision. As regards in particular the head of claim that the holding of a hearing would have enabled the Board of Appeal to examine whether the representation of a mark which does not designate any specific colour may encompass those which designate a colour or whether it could at least be recognised as having a partial seniority, it must be stated that the applicant has not shown to what extent oral clarifications on that point, supplementing those already given in its submissions to the Board of Appeal, would have led to the operative part not being adopted in those terms.
75. Consequently, the third plea must be rejected and therefore the action must be dismissed in its entirety.
Costs
76. Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
77. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
Operative part
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Franz Wilhelm Langguth Erben GmbH & Co. KG to pay the costs.