ORDER OF THE GENERAL COURT (Third Chamber)
17 January 2024 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark B42V – International registration of the earlier figurative mark 42 Below – Decision of the Board of Appeal upholding the claims made by the applicant – Manifest inadmissibility in part – Refusal of the Board of Appeal to exercise any power within the competence of the Opposition Division – Action in part manifestly lacking any foundation in law)
In Case T‑800/22,
Palírna U Zeleného stromu a.s., established in Ústí nad Labem (Czech Republic), represented by J. Kindl, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Bacardi & Co. Ltd, established in Meyrin (Switzerland),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová-Pelzl and I. Nõmm (Rapporteur), Judges,
Registrar: V. Di Bucci,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, Palírna U Zeleného stromu a.s., seeks, in essence, the annulment and alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 October 2022 (Case R 1240/2021-2) (‘the contested decision’).
2        On 20 November 2018, the applicant filed with EUIPO an application for registration of an EU trade mark on the basis of 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).
3        Registration as a mark was sought for the following figurative sign:
4        The goods and services in respect of which registration of the mark was sought are in Classes 32, 33 and 35 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 each of those classes, to the following description:
–        Class 32: ‘Soft drinks; beer and brewery products; energy drinks; fruit juice [beverages]; mineral water [beverages]; preparations for making beverages; syrups for making soft drinks’;
–        Class 33: ‘Alcoholic beverages (except beer); alcoholic extracts; alcoholic essences; preparations for making alcoholic beverages; wine; spirits [beverages]; liqueurs; distilled beverages; aperitifs; cocktails; alcoholic energy drinks’;
–        Class 35: ‘Business management; business administration; clerical services; retail services in relation to alcoholic beverages (except beer); wholesale services in relation to alcoholic beverages (except beer); retail services in relation to beer; wholesale services in relation to beer; retail services in relation to non-alcoholic beverages; wholesale services in relation to non-alcoholic beverages; advertising; mediation of trade business for third parties’.
5        On 4 March 2019, the opponent, Bacardi & Co. Ltd, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods referred to in paragraph 4 above. The opposition was based on several earlier rights in connection with the grounds set out in Article 8(1)(b) of Regulation 2017/1001 as well as in Article 8(4) and (5) of that regulation.
6        More specifically, the opponent relied on international registration No 999 938 designating Germany, Austria, Benelux, Cyprus, Spain, France, Greece, Ireland, Italy, Poland, the Czech Republic, the United Kingdom and Sweden for the following earlier figurative sign (‘the earlier mark’):
7        The earlier mark covered, inter alia, goods and services in Classes 33, 35 and 43, corresponding, for each of those classes, to the following description:
–        Class 33: ‘Alcoholic beverages (except beers)’;
–        Class 35: ‘Advertising, business, wholesale and retail services including mail order, electronic commerce, direct marketing, sales promotions, trade fairs and exhibitions in relation to alcoholic beverages/distilled spirits; sales and promotional incentive schemes; loyalty programs; incentive marketing services and award programs; compilation of retail and consumer information into computer databases; management and operation of customer loyalty programs that identify and reward customers’;
–        Class 43: ‘Services for providing food and drink’.
8        The grounds relied on in support of the opposition on the basis of the earlier mark were those set out in Article 8(1)(b) of Regulation 2017/1001 and in Article 8(5) of that regulation.
9        On 20 May 2021, the Opposition Division rejected the opposition in so far as it was directed against the registration of the mark applied for with regard to the following services: ‘business management; business administration; clerical services; advertising; mediation of trade business for third parties’, falling within Class 35.
10      The Opposition Division, however, upheld the opposition for the remainder of the goods and services covered by the mark applied for, relying exclusively on the earlier mark referred to in paragraph 6 above, in respect of which it considered that proof of genuine use had been adduced, in accordance with Article 47(2) and (3) of Regulation 2017/1001. The Opposition Division took into account only the ground set out in Article 8(5) of Regulation 2017/1001.
11      On 19 July 2021, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
12      By the contested decision, the Board of Appeal of EUIPO allowed the appeal.
13      In the first place, the Board of Appeal held that genuine use of the earlier mark had been proved, relying both on the evidence submitted by the opponent before the Opposition Division and on the evidence submitted, for the first time, before it, which it regarded as admissible.
14      In the second place, the Board of Appeal held that, for the not insignificant part of the relevant public which perceived the number ‘42’ in the mark applied for, the signs at issue were similar to a low degree from a visual standpoint, similar to an average degree from a phonetic standpoint and identical from a conceptual standpoint, and that they were different overall for the remainder of the relevant public.
15      In the third place, the Board of Appeal held that, while the evidence put forward by the opponent showed genuine use of the earlier mark in the territories of Benelux, Germany, France, Italy and Austria, it did not show, however, the existence of a reputation of that mark in those territories, contrary to the conclusion that had been reached by the Opposition Division.
16      In those circumstances, the Board of Appeal concluded that the opposition could not be based on Article 8(5) of Regulation 2017/1001 and allowed the applicant’s appeal.
17      Consequently, the Board of Appeal, in point 1 of the operative part, annulled the decision of the Opposition Division in so far as it had refused to register the goods and services set out in paragraph 10 above. Rather than exercising any power within the competence of the Opposition Division, the Board of Appeal, in point 3 of the operative part, remitted the case to the Opposition Division. In point 4 of the operative part, the Board of Appeal ordered each of the parties to bear its own costs.
Forms of order sought
18      The applicant claims that the Court should:
–        alter the contested decision so that, first, the decision of the Opposition Division is annulled in so far as it upheld the opposition and, secondly, the opposition is rejected in its entirety;
–        order EUIPO to pay the costs, including those incurred in the proceedings before the Opposition Division and the Board of Appeal.
19      EUIPO contends that the Court should:
–        primarily, dismiss the action as being, in part, manifestly inadmissible and, in part, manifestly unfounded;
–        in the alternative, dismiss the action as unfounded;
–        order the applicant to pay the costs in the event that a hearing is held.
Law
20      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
21      In the present case, the Court considers that it has been sufficiently informed by the documents in the file and decides, pursuant to that article, to give judgment without taking further steps in the proceedings, even though one of the parties has requested that a hearing be held (see, to that effect, order of 6 October 2015, GEA Group v OHIM (engineering for a better world), T‑545/14, EU:T:2015:789, paragraph 13).
22      The applicant relies on two pleas in law, the first alleging infringement of Article 47(2) and (3) of Regulation 2017/1001, the second alleging infringement of Article 8(5) of that regulation. It should be stated that even if the application contains, besides the request for EUIPO to be ordered to pay the costs, only one head of claim formally seeking the alteration of the contested decision, the applicant must be regarded as seeking necessarily also its annulment (see, to that effect, judgment of 19 January 2022, Estetica Group Iwona Michalak v EUIPO (PURE BEAUTY), T‑270/21, not published, EU:T:2022:12, paragraph 14 and the case-law cited).
23      In that regard, it follows from paragraph 6 of the application that the applicant disputes points 1, 3 and 4 of the operative part of the contested decision, by which the Board of Appeal respectively annulled the decision of the Opposition Division in so far as it had upheld the opposition for the goods and services referred to in paragraph 10 above, remitted the case to the Opposition Division and ordered each party to bear its own costs.
24      More specifically, it should be noted that by the two pleas that it puts forward, the applicant disputes the merits of two series of assessments of the Board of Appeal concerning the genuine use of the earlier mark and the similarity of the signs at issue. As regards the second plea, concerning the similarity of the signs, the applicant submits that the Board of Appeal should have concluded that those signs were different and, consequently, itself rejected the opposition in its entirety, rather than remitting the case to the Opposition Division.
25      In view of the applicant’s line of argument, the Court considers that it should examine, first of all, the action in so far as it is directed against point 3 of the operative part of the contested decision, by which the Board of Appeal remitted the case to the Opposition Division.
Point 3 of the operative part of the contested decision
26      Under Article 71(1) of Regulation 2017/1001, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal. It may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.
27      First, it is apparent from the use of the verb ‘may’ in Article 71(1) of Regulation 2017/1001 that the Board of Appeal of EUIPO has a broad discretion for the purposes of ‘either exercis[ing] any power within the competence of the department which was responsible for the decision appealed or remit[ting] the case to that department for further prosecution’ (judgment of 4 May 2022, Advanced Superabrasives v EUIPO – Adi (ASI ADVANCED SUPERABRASIVES), T‑4/21, not published, EU:T:2022:274, paragraph 66).
28      Secondly, it should be borne in mind that the Opposition Division allowed the opposition relying on the only earlier mark referred to in paragraph 6 above and on the basis of Article 8(5) of Regulation 2017/1001.
29      In the contested decision, the Board of Appeal held that that assessment was erroneous on the ground that the condition relating to the reputation of the earlier mark had not been satisfied and decided to annul the decision of the Opposition Division and remit the case to the latter, while specifying, in paragraphs 81 to 83 of the contested decision, the following:
‘Bearing in mind the parties’ legitimate interest that the case be examined by both instances of the Office, the Board uses its discretion in accordance with Article 71(1) [of Regulation 2017/1001] and remits the case to the Opposition Division for further prosecution and, in particular, for the assessment of Article 8(1)(b) [of Regulation 2017/1001], taking into account all of the above as well as the additional earlier rights claimed by the opponent in its opposition, if necessary.
Considering that the assessment of Article 8(1)(b) [of Regulation 2017/1001] is still outstanding, for reasons of economy of proceedings the Board does not deem it appropriate to examine the applicant’s arguments concerning the coexistence of the signs at this stage. It is therefore recommended to the Opposition Division that it re-assess this argument (which had already been dealt with in the contested decision in the context of Article 8(5) [of Regulation 2017/1001]) in connection with Article 8(1)(b) [of Regulation 2017/1001].
Finally, it is recommended that the Opposition Division grant the parties a further opportunity to be heard with respect to Article 8(1)(b) [of Regulation 2017/1001], in particular concerning the comparison of the goods and services’.
30      The Board of Appeal thus exercised the broad discretion which Article 71(1) of Regulation 2017/1001 confers on it, for the purposes of, inter alia, remitting the case to the first instance (see, to that effect, judgment of 4 May 2022, Advanced Superabrasives v EUIPO – Adi (ASI ADVANCED SUPERABRASIVES), T‑4/21, not published, EU:T:2022:274, paragraph 69 and the case-law cited).
31      It is moreover clear that that reasoning is not vitiated by any manifest error of assessment. Since the opponent had not exclusively based its opposition on the ground under Article 8(5) of Regulation 2017/1001 but also on other grounds of refusal by relying not only on the earlier mark but also on other earlier rights, the Board of Appeal was entitled to hold that it was in the legitimate interest of the parties that the Opposition Division conduct a more comprehensive examination of the case.
32      Furthermore, even if the Board of Appeal was wrong to hold that genuine use of the earlier mark had been shown and that the signs at issue were similar, as the applicant argues in its two pleas, such illegality has no effect on the assessment, contained in paragraph 81 of the contested decision, concerning the interest in the Opposition Division examining the other earlier rights raised by the opponent, which could in itself justify remitting the case to the Opposition Division.
33      Accordingly, it must be inferred that the action is manifestly lacking any foundation in law in so far as it is directed against point 3 of the operative part of the contested decision.
Point 1 of the operative part of the contested decision
34      In point 1 of the operative part of the contested decision, the Board of Appeal annulled the decision of the Opposition Division in so far as it had upheld the opposition for the goods and services referred to in paragraph 10 above.
35      According to Article 72(4) of Regulation 2017/1001, an action before the Court against a decision of a Board of Appeal of EUIPO is ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’.
36      That provision reflects the interest in bringing proceedings which, according to settled case-law, is an essential prerequisite for any legal proceeding and must, in the light of the purpose of the action, exist at the time at which the action is brought, failing which that action will be inadmissible (see judgment of 25 September 2015, Copernicus-Trademarks v OHIM – Bolloré (BLUECO), T‑684/13, EU:T:2015:699, paragraph 27 and the case-law cited).
37      Therefore, in so far as point 1 of the operative part of the contested decision upheld the claims of the applicant by annulling the decision of the Opposition Division in so far as it had upheld the opposition for the goods referred to in paragraph 10 above, it must be held that the applicant has no interest in challenging it.
38      That conclusion is not invalidated by the fact that the applicant, by its two pleas, calls into question the merits of the assessments of the Board of Appeal relating to the genuine use of the earlier mark and the similarity of the signs at issue.
39      First, it should be noted that the assessments at issue constituted stages of reasoning which led the Board of Appeal to find that the Opposition Division had been wrong to uphold the opposition to the registration of the mark applied for on the basis of the risk that the applicant would take unfair advantage of the reputation of the earlier mark.
40      In so far as the Opposition Division had relied exclusively on the ground referred to in Article 8(5) of Regulation 2017/1001 to uphold the opposition, the Board of Appeal, by finding that the Opposition Division had erred in its assessment of that ground and by annulling its decision, upheld the claims of the applicant, regardless of the assessments contained in its reasoning.
41      In that regard, it follows from settled case-law that a decision of a Board of Appeal must be regarded as having upheld the claims of one of the parties before that Board, when it grants the application of that party on the basis of one of the grounds for refusal of registration or for invalidity of a mark or, more generally, of only part of the arguments put forward by that party, even where it does not examine or where it dismisses the other grounds or arguments raised by that party (see judgment of 25 September 2015, BLUECO, T‑684/13, EU:T:2015:699, paragraph 28 and the case-law cited).
42      Secondly, it cannot be held that the assessments at issue in themselves result in the contested decision not upholding the claims of the applicant regardless of the operative part of the contested decision, since they are binding on the Opposition Division.
43      It is true that, under Article 71(2) of Regulation 2017/1001, if the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department is to be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.
44      However, the assessments of the Board of Appeal, criticised by the applicant, do not in themselves mean that the Opposition Division is required to allow the opposition. Genuine use of the earlier mark and the existence of a similarity between the signs at issue are merely a part of the factors relevant for the examination of the ground relied on by the opponent in connection with that earlier mark, namely the existence of a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001. In that regard, the Board of Appeal itself refers, in paragraphs 82 and 83 of the contested decision, to the examination which the Opposition Division must conduct regarding the possible coexistence of the marks at issue and the comparison of the goods and services at issue.
45      It follows that the applicant’s action, in so far as it is directed against point 1 of the operative part of the contested decision, must be rejected as being manifestly inadmissible.
Point 4 of the operative part of the contested decision
46      The applicant states that, in paragraph 6 of its application, [it] also disputes point 4 of the operative part of the contested decision by which the Board of Appeal held that each party had to bear its own costs, without putting forward any argument whatsoever in support of that claim.
47      Under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure of the General Court, an application must include a brief statement of the grounds relied on. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (see judgment of 12 November 2015, CEDC International v OHIM – Fabryka Wódek Polmos Łańcut (WISENT), T‑449/13, not published, EU:T:2015:839, paragraph 16 and the case-law cited).
48      Therefore, the Court is obliged to reject as inadmissible a head of claim in an application brought before it if the essential matters of law and of fact on which the head of claim is based are not indicated coherently and intelligibly in the application itself (judgment of 18 July 2006, Rossi v OHIM, C‑214/05 P, EU:C:2006:494, paragraph 37).
49      Accordingly, the action, in so far as it is directed against point 4 of the operative part of the contested decision, must be rejected as being manifestly inadmissible.
Costs
50      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
51      Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event of the parties being summoned to attend a hearing. Since no hearing was held, it is appropriate to decide to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby orders:
1.      The action is dismissed as being, in part, manifestly inadmissible and, in part, manifestly lacking any foundation in law.
2.      Each party shall bear its own costs.
Luxembourg, 17 January 2024.
V. Di Bucci
F. Schalin
Registrar
President
*      Language of the case: English.