JUDGMENT OF THE GENERAL COURT (Third Chamber)
1 February 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark HACKER SPACE – Earlier EU word mark HACKER-PSCHORR and earlier EU figurative mark Hacker Pschorr, as well as earlier national word marks HACKERBRÄU and HACKER – Relative ground for refusal – Identification of the ground on which the opposition is based – Article 8(1)(a) and (b) of Regulation (EU) 2017/1001 – Article 2(2)(c) of Delegated Regulation (EU) 2018/625)
In Case T‑349/22,
Hacker-Pschorr Bräu GmbH, established in Munich (Germany), represented by C. Tenkhoff and T. Herzog, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and D. Hanf, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Jana Vandělíková, residing in Prague (Czech Republic),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin (Rapporteur), President, P. Škvařilová-Pelzl and G. Steinfatt, Judges,
Registrar: E. Coulon,
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, Hacker-Pschorr Bräu GmbH, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 April 2022 (Case R 1268/2021-1) (‘the contested decision’).
Background to the dispute
2        On 29 October 2019, Ms Jana Vandělíková filed an application with EUIPO for registration of an EU trade mark, pursuant to 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), in respect of the word sign HACKER SPACE.
3        The mark applied for designated goods in Classes 3, 5, 29, 32 and 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.
4        On 23 December 2019, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods in Classes 29, 32 and 33.
5        The opposition was based on the following earlier marks:
–        the German word mark HACKERBRÄU, registered under number 12 046;
–        the German word mark HACKER, registered under number 135 250;
–        the EU word mark HACKER-PSCHORR, registered under number 2 464 311;
–        and the EU figurative mark registered under number 17 510 116, reproduced below:
6        When it filed the notice of opposition, the applicant used EUIPO’s online tool and ticked the box ‘Article 8(1)(a) [of Regulation 2017/1001] – The contested mark is identical to the earlier trade mark and covers identical goods and/or services’ as a ground of opposition in respect of all the earlier marks. By contrast, the applicant did not tick the box ‘Article 8(1)(b) [of Regulation 2017/1001] – There exists a likelihood of confusion on the part of the public’.
7        No statement setting out the grounds of the opposition was filed by the applicant with the notice of opposition.
8        On 30 March 2020, the parties were informed that the applicant had been given until 4 August 2020 to substantiate the earlier rights and to submit further material.
9        On 30 July 2020, the applicant submitted additional facts and evidence. In its observations, it argued only that the mark applied for had to be rejected in so far as, pursuant to Article 8(1)(b) of Regulation 2017/1001, there was a likelihood of confusion.
10      On 27 May 2021, the Opposition Division upheld the opposition in part, on the basis of Article 8(1)(b) of Regulation 2017/1001, and rejected the application for registration of the mark at issue (i) in part in so far as it designated goods in Class 29, and (ii) in full in so far as it designated goods in Classes 32 and 33.
11      On 22 July 2021, Ms Vandělíková filed a notice of appeal with EUIPO against the decision of the Opposition Division.
12      By the contested decision, the Board of Appeal upheld the appeal, annulling the decision of the Opposition Division in so far as it had upheld the opposition, and rejecting the opposition in its entirety.
13      The Board of Appeal found that the Opposition Division had based its decision on a ground (namely Article 8(1)(b) of Regulation 2017/1001) which had not been relied on by the applicant in the notice of opposition. It rejected the opposition as unfounded, given that the signs at issue were not identical, with the result that one of the necessary conditions for the application of Article 8(1)(a) of Regulation 2017/1001 was not satisfied.
14      The Board of Appeal maintained that the applicant, in choosing a specific ground of opposition, had set the framework of the proceedings and that the addition, after the expiry of the opposition period, of any ground of opposition broadened the scope of the opposition, which was not permissible.
15      The Board of Appeal also maintained that the scope of Article 8(1)(a) of Regulation 2017/1001 could not extend so far as to include the situation relating to the application of Article 8(1)(b) of that regulation. Consequently, when the applicant relied on Article 8(1)(a) of Regulation 2017/1001 as the sole ground for the opposition, the Board of Appeal was prevented from examining the applicability of Article 8(1)(b) of that regulation.
Forms of order sought
16      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
17      EUIPO contends that the Court should annul the contested decision.
Law
18      In support of the action, the applicant relies on three pleas in law. The first plea alleges infringement of Article 47(5) and Article 46 of Regulation 2017/1001, read in conjunction with Article 8(1) of that regulation. The second plea alleges infringement of Article 2(2)(c) and Article 7(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), read in conjunction with the principles of sound administration and interpretation in good faith. The third plea alleges infringement of the principles of equal treatment and sound administration, including the principle of procedural economy, as well as infringement of Article 41(1) of the Charter of Fundamental Rights of the European Union.
19      The Court considers that it is appropriate to examine the first and second pleas together. First, they relate, in essence, to the issue of whether, in order to determine the ground(s) on which the opposition was based, the Board of Appeal should have taken into consideration the facts, evidence and observations submitted by the applicant after the expiry of the opposition period. Second, they concern the scope of the opposition, as well as the issue of whether the provisions of Article 8(1)(a) and (b) of Regulation 2017/1001 are to be regarded as constituting a single ground of opposition and whether, consequently, the Board of Appeal should also have examined the appeal in the light of Article 8(1)(b) of that regulation.
The first and second pleas in law, alleging, first, infringement of Article 47(5) and Article 46 of Regulation 2017/1001, read in conjunction with Article 8(1) of that regulation, and, second, infringement of Article 2(2)(c) and Article 7(1) of Delegated Regulation 2018/625, read in conjunction with the principles of sound administration and interpretation in good faith
20      By the first plea, the applicant argues, in essence, that the Board of Appeal erred in law by ignoring the likelihood of confusion between the marks at issue and by rejecting the opposition. Consequently, the Board of Appeal infringed Article 47(5) and Article 46 of Regulation 2017/1001, read in conjunction with Article 8(1) of that regulation.
21      First, the applicant claims that the Board of Appeal should have examined whether the conditions for the application of Article 8(1)(a) and (b) of Regulation 2017/1001 were satisfied, in so far as Article 46(1) of that regulation refers to the ground of opposition alleging infringement of paragraph 1 of Article 8 of Regulation 2017/1001, without making any distinction according to whether the provisions set out in subparagraphs (a) or (b) of that paragraph are concerned, since those provisions have the same purpose of protecting the primary function of an earlier trade mark, which is to enable the average consumer to distinguish the goods of one undertaking from those of other undertakings without any possibility of confusion.
22      Second, the applicant submits that it was necessary to take into account the fact that, both in the form used for the notice of opposition and in its additional observations, it had relied on Article 8(1) of Regulation 2017/1001 as a ground of opposition.
23      By its second plea, the applicant argues, inter alia, that the Board of Appeal should have taken account of the fact that, in the present case, its intention was to base the opposition on Article 8(1)(b) of Regulation 2017/1001. By failing to take account of that intention, the Board of Appeal infringed Article 2(2)(c) and Article 7(1) of Delegated Regulation 2018/625, read in conjunction with the principles of sound administration and interpretation in good faith.
24      First, it claims that the form used for the notice of opposition should have been considered in the light of the facts, evidence and arguments submitted in support of the opposition.
25      Second, the applicant submits that the interpretation of its statement of opposition should not have been confined to the literal meaning of the terminology used, but should have attempted to ascertain the applicant’s true intentions, in particular in the light of the fact that that party was not represented by a lawyer.
26      Third, the applicant submits that, if the Board of Appeal considered that the conditions for the application of Article 8(1)(a) of Regulation 2017/1001 were not met, it should have examined whether the conditions of Article 8(1)(b) of that regulation were satisfied, since (i) the latter provision corresponds to a lesser form of infringement of an earlier right than that referred to in Article 8(1)(a) of that regulation and (ii) Article 2(2)(c) of Delegated Regulation 2018/625 does not distinguish between the provisions set out in subparagraphs (a) and (b) of Article 8(1) of Regulation 2017/1001.
27      EUIPO disputes the applicant’s arguments, in so far as the applicant claims that additional grounds may validly be relied on after the expiry of the opposition period. By contrast, EUIPO accepts that the Board of Appeal incorrectly assessed the applicant’s notice of opposition (filed within the opposition period) and misapplied the formal condition laid down in Article 2(2)(c) of Delegated Regulation 2018/625, irrespective of whether Article 8(1)(a) and (b) of Regulation 2017/1001 constituted a single ground of opposition.
28      In that regard, EUIPO argues, first, that it was obvious that the mark applied for, on the one hand, and the earlier marks, on the other, were not identical. Next, it notes that Article 2(2)(c) of Delegated Regulation 2018/625 provides only that the notice of opposition is to contain a statement to the effect that the requirements under Article 8(1), (3), (4), (5) or (6) of Regulation 2017/1001 are met, without the opposing party having to provide further details. Lastly, it contends that the fact of not ticking a box on a form need not necessarily lead to the rejection of an application and that such a rejection is not appropriate, particularly where it is apparent from the observations themselves or other specific circumstances surrounding the submission of those observations that the failure to tick the box in question constitutes a mere oversight comparable to a clerical error.
29      In the present case, it is necessary first of all to examine whether, in order to determine the grounds on which the opposition was based, the Board of Appeal should have taken into consideration the facts, evidence and observations submitted by the applicant after the expiry of the opposition period.
30      In that regard, it is apparent from Article 46(1) of Regulation 2017/1001 that notice of opposition to registration of a trade mark may be given within a period of three months following the publication of the EU trade mark application.
31      According to Article 2(2)(c) of Delegated Regulation 2018/625, the notice of opposition is to contain the grounds on which the opposition is based by means of a statement to the effect that the requirements under Article 8(1), (3), (4), (5) and (6) of Regulation 2017/1001 in respect of each of the earlier marks or rights invoked by the opposing party are fulfilled.
32      It is apparent from Article 2(4) of Delegated Regulation 2018/625 that the notice of opposition may also contain a reasoned statement on the grounds, the facts and arguments on which the opposition relies, and supporting evidence.
33      It follows that, since the grounds on which the opposition is based must be relied on before the expiry of the opposition period, the facts, evidence and observations submitted by an opposing party after the expiry of that period cannot be taken into consideration in order to determine the grounds on which the opposition is based (see, by analogy, judgment of 21 January 2014, Bial-Portela v OHIM – Probiotical (PROBIAL), T‑113/12, not published, EU:T:2014:17, paragraph 29).
34      In the present case, given that the application for registration of the mark applied for was published on 13 December 2019, the three-month opposition period expired on 13 March 2020. The only relevant document submitted by the applicant before the expiry of that period was the opposition form of 23 December 2019. Thus, only the content relied on by the applicant in that form could be taken into account by the Board of Appeal in order to determine the ground(s) on which the opposition was based.
35      As regards, next, the issue of whether the provisions in Article 8(1)(a) and (b) of Regulation 2017/1001 are to be regarded as constituting a single ground of opposition and whether, consequently, the Board of Appeal should also have examined the appeal in the light of Article 8(1)(b) of that regulation, it should be noted that Article 8(1) of Regulation 2017/1001 refers to two distinct sets of conditions. Although the conditions for the application of Article 8(1)(b) of that regulation – inasmuch as they relate both to the identity and to the similarity of the marks at issue – include the conditions for the application of Article 8(1)(a) thereof (which relate only to the identity of those marks), the reverse is not true.
36      The fact that Article 46(1) of Regulation 2017/1001 and Article 2(2)(c) of Delegated Regulation 2018/625 refer to paragraph 1 of Article 8 of Regulation 2017/1001, without distinguishing the conditions of that paragraph, which are set out in subparagraphs (a) and (b) thereof respectively, cannot be interpreted as demonstrating the existence of a single ground of opposition. In that regard, it is also necessary to reject the applicant’s argument that Article 8(1)(b) of Regulation 2017/1001 corresponds to a lesser form of infringement of an earlier right than that referred to in Article 8(1)(a) of that regulation. Since only Article 8(1)(a) of Regulation 2017/1001 was relied on before it, the Board of Appeal could not find that Article 8(1)(b) of that regulation fell within the same ground of opposition and, therefore, could not examine the appeal in the light of the latter provision.
37      In the light of the foregoing, it must be concluded that, on expiry of the opposition period, the scope of the appeal had to be regarded as being fixed, so that the information provided subsequently could not have the purpose of altering the scope of the appeal, in particular at the risk of disregarding the effectiveness of mandatory time limits and, therefore, the principle of equal treatment.
38      Lastly, as regards the alleged infringement of the principles of sound administration and interpretation in good faith, it should be noted at the outset that, in the present case, the principle of interpretation in good faith, as relied on by the applicant, must be understood as relating to the principle of sound administration.
39      The applicant’s line of argument according to which the Board of Appeal, in breach of that principle, did not take account of its intention to base the opposition on Article 8(1)(b) of Regulation 2017/1001 must be rejected.
40      In that regard, it follows from the case-law that, in order to determine the grounds on which a notice of opposition is based, it is necessary to examine the entire notice (see, by analogy, judgment of 24 March 2011, Cybergun v OHIM – Umarex Sportwaffen (AK 47), T‑419/09, not published, EU:T:2011:121, paragraph 21).
41      Furthermore, it follows from the principle of sound administration that it is for EUIPO, as a body of the European Union, to examine all the relevant particulars of a case with care and impartiality and to gather all the factual and legal information necessary to exercise its discretion (see, to that effect, judgment of 19 December 2012, Brookfield New Zealand and Elaris v CPVO and Schniga, C‑534/10 P, EU:C:2012:813, paragraph 51).
42      In the present case, the issue of the lack of identity between the mark applied for and the earlier marks, which is seemingly obvious, could lead to the belief that the applicant did not intend to base the opposition on Article 8(1)(a) of Regulation 2017/1001. However, it should be noted in that regard that the noun ‘hacker’ is present in the four earlier marks and that the applicant relied on four occasions, that is to say, for each of those marks, on the same ground of opposition, which seems to contradict the argument alleging the existence of a mere clerical error. Furthermore, the notice of opposition did not contain a statement setting out the grounds of the opposition and, on the basis of the information from that form alone, it was not possible to conclude with certainty that the applicant had intended to rely on another ground of opposition, in particular Article 8(1)(b) of Regulation 2017/1001. In those circumstances, the Board of Appeal could not interpret the notice of opposition as being based on a ground of opposition other than that referred to in Article 8(1)(a) of Regulation 2017/1001.
43      It follows from the foregoing that, contrary to the applicant’s assertions, the Board of Appeal did not disregard the relevant provisions of either Regulation 2017/1001 or Delegated Regulation 2018/625, or even infringe the principle of sound administration, in finding that the opposition was based exclusively on Article 8(1)(a) of Regulation 2017/1001.
44      The first and second pleas in law must therefore be rejected as unfounded.
The third plea in law, alleging infringement of the principles of equal treatment and sound administration, including the principle of procedural economy, as well as infringement of Article 41(1) of the Charter of Fundamental Rights
45      The applicant submits that the Board of Appeal should have examined the case in the light of Article 8(1)(b) of Regulation 2017/1001, in accordance with the EUIPO Guidelines for examination of European Union trade marks (‘the EUIPO Guidelines’) (Part C, Section 2, Chapter 1, paragraph 2.3). In that regard, it argues, in particular, that the Board of Appeal was required to take into consideration the decisions which it had already taken in respect of similar cases and that, by failing to do so, it infringed the principles of equal treatment and sound administration, as referred to in Article 41(1) of the Charter of Fundamental Rights. In addition, the applicant claims that the Board of Appeal, by interpreting the opposition too narrowly, could have wrongly obliged it to initiate new proceedings by submitting an application for a declaration of invalidity and, therefore, infringed the principle of procedural economy.
46      EUIPO explains that, in view of its response to the first and second pleas in law, it is not necessary to provide a specific response to the third plea in law.
47      In the first place, the applicant’s line of argument according to which the Board of Appeal (i) did not examine the case in the light of Article 8(1)(b) of Regulation 2017/1001 in accordance with the EUIPO Guidelines, and (ii) was required to take into consideration the decisions which it had already taken in respect of similar cases, must be rejected.
48      In that regard, it must be borne in mind that, according to the EUIPO Guidelines, if Article 8(1)(a) of Regulation 2017/1001 were the only ground relied on in support of an opposition but identity could not be established between the signs and/or between the goods or services at issue, it would still be for EUIPO to examine the case in the light of Article 8(1)(b) of that regulation.
49      However, it is clear from the case-law that the EUIPO Guidelines are not binding legal acts for the purpose of interpreting provisions of EU law (see, to that effect, judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48). Similarly, as regards EUIPO’s decision-making practice, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of that practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
50      As has been stated in paragraph 35 above, Article 8(1)(b) of Regulation 2017/1001 must be regarded as a specific ground of opposition different from that referred to in Article 8(1)(a) of that regulation.
51      It follows that the Board of Appeal cannot be criticised for not having followed the EUIPO Guidelines or any previous decision-making practice to that effect.
52      In the second place, as regards the applicant’s argument that the Board of Appeal, by interpreting the opposition too narrowly, could have wrongly obliged it to initiate new proceedings by submitting an application for a declaration of invalidity, it follows from the foregoing analysis that, in any event, the Board of Appeal did not err in finding that the opposition was based on Article 8(1)(a) of Regulation 2017/1001. The fact that the applicant may need to lodge a new application with EUIPO, this time for a declaration of invalidity, is merely a consequence of an incorrect choice which it made in the notice of opposition form. Consequently, that argument must be rejected as unfounded.
53      Therefore, in the light of the foregoing considerations, it is apparent that the Board of Appeal, in examining the opposition on the basis of Article 8(1)(a) of Regulation 2017/1001 alone, did not infringe the principles of equal treatment and sound administration, as referred to in Article 41(1) of the Charter of Fundamental Rights; nor did it infringe the principle of procedural economy.
54      Accordingly, the third plea in law must be rejected and the action must be dismissed in its entirety.
Costs
55      Under Article 134(2) of the Rules of Procedure of the General Court, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared.
56      In the present case, the applicant has been unsuccessful. Since EUIPO has also applied for annulment of the contested decision, it must be held that it has also been unsuccessful, with the result that each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Schalin
Škvařilová-Pelzl
Steinfatt
Delivered in open court in Luxembourg on 1 February 2023.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.