JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
16 December 2011 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark PROTIVITAL – Earlier national word and figurative marks PROTIPLUS, PROTI and PROTIPOWER – Late submission of documents – Discretion granted by Article 74(2) of Regulation (EC) No 40/94 (now Article 76(2) of Regulation (EC) No 207/2009) – Concept of a provision to the contrary – Rule 20(1) of Regulation (EC) No 2868/95 – Rule 50(1) of Regulation No 2868/95)
In Case T‑109/09,
Bernhard Rintisch, residing in Bottrop (Germany), represented by A Dreyer, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Valfleuri Pâtes alimentaires SA, established in Wittenheim (France), represented by F. Baujoin, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 21 January 2009 (Case R 1660/2007-4) relating to opposition proceedings between Bernhard Rintisch and Valfleuri Pâtes alimentaires SA,
THE GENERAL COURT (Seventh Chamber),
composed of A. Dittrich, President, I. Wiszniewska-Białecka and M. Kancheva (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 17 March 2009,
having regard to the response of OHIM lodged at the Court Registry on 7 July 2009,
having regard to the response of the intervener lodged at the Court Registry on 22 June 2009,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,
gives the following
Judgment
Background to the dispute
1        On 6 January 2006, the intervener, Valfleuri Pâtes alimentaires SA, 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The mark for which registration was sought is the word sign PROTIVITAL.
3        The goods in respect of which registration was sought are in, inter alia, Classes 5, 29 and 30 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, inter alia, for each of those classes, to the following description:
–        Class 5: ‘Hyperproteinic food pastes (for medical purposes), in particular hyperproteinic food pastes (for medical purposes) with a base of milk proteins [or] egg whites; hyperproteinic substances, foodstuffs and beverages for medical purposes; food preparations, food supplements and nutritional supplements (for medical purposes); proteins and protein preparations (for medical purposes); vitamin preparations; preparations of trace elements for human and animal use; dietetic substances, foodstuffs and beverages (for medical purposes)’;
–        Class 29: ‘Food supplements, nutritional supplements and dietetic substances (not for medical purposes), in particular with a base of milk proteins [or] egg whites; proteins and protein preparations for human consumption; eggs, egg whites, egg yolks, powdered egg; milk and other dairy products; dishes, prepared (or cooked) meals, preserves and terrines with a base of meat, fish, poultry, game and/or vegetables; all the aforesaid goods equally being hyperproteinic products [or] dietetic preparations’;
–        Class 30: ‘hyperproteinic food pastes, in particular hyperproteinic food pastes with a base of milk proteins [or] egg whites; dishes, prepared (or cooked) meals, preserves and terrines, all the aforesaid goods equally being hyperproteinic products [or] dietetic preparations’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 30/2006 of 24 July 2006.
5        On 24 October 2006, Mr Bernhard Rintisch, the applicant, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based, inter alia, on the following earlier rights:
–        German word mark PROTIPLUS, filed on 4 December 1995 and registered on 20 May 1996, under number 395 49 559, in respect of goods in Classes 29 and 32;
–        German word mark PROTI, filed on 22 January 1997 and registered on 3 March 1997, under number 397 02 429, in respect of goods in Classes 29 and 32;
–        German figurative mark represented below, filed on 24 February 1996 and registered on 5 March 1997, under number 396 08 644, in respect of goods in Classes 29 and 32:
7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8        On 16 January 2007, in order to prove the existence and the validity of the earlier marks referred to in paragraph 6 above, the applicant submitted to OHIM (i) registration certificates issued by the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office), dated March 1996, October 1996 and March 1997 respectively, and (ii) extracts from the Deutsches Patent- und Markenamt online register, dated 8 January 2007, which, for each of the earlier marks, contained the words ‘Marke eingetragen’ (‘registered mark’) under the heading ‘Letzter Verfahrensstand’ (latest procedural stage), and, for the earlier marks Nos 395 49 559 and 396 08 644, dates in 2006 under the heading ‘Verlängerungsdatum’ (renewal date). A translation into the language of the proceedings was provided only for the registration certificate for each of the earlier marks.
9        On 23 January 2007, OHIM communicated to the applicant the date of the commencement of the adversarial stage of the opposition proceedings, pursuant to Rule 18(1) and Rule 19(1) and (2) 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), in the version applicable to the facts of the case. In that communication, OHIM advised the applicant that a renewal certificate had to be provided for marks whose registration was more than 10 years old. Similarly, OHIM stated that the existence and the validity of the earlier marks relied on in support of the opposition had to be proved by official documents translated into the language of the proceedings. In that respect, OHIM set a time-limit of 4 June 2007 for the submission of evidence. Lastly, OHIM advised the applicant that, if the evidence for the existence and the validity of the earlier marks was not filed within the required time-limit, the opposition would be rejected without any examination as to its merits, in accordance with Rule 20(1) of Regulation No 2868/95.
10      On 11 September 2007, OHIM informed the applicant of its finding that he had failed to substantiate, within the time-limit laid down, the existence and the validity of the earlier marks. OHIM also informed the applicant that no further observations could be submitted, and that it would give its ruling on the opposition on the basis of the evidence before it.
11      On 19 September 2007, the Opposition Division rejected the opposition on the ground that the applicant had failed to prove, within the time‑limit set, the existence and the validity of the earlier marks relied on in support of the opposition. First of all, the Opposition Division found that, although it could be considered, on the basis of the certificates submitted to OHIM on 16 January 2007, that the earlier marks had been registered in 1995, 1996 and 1997 respectively, that was not sufficient to establish that they were valid as at 4 June 2007, the time-limit set by OHIM, all the more so because, under the national legislation, the protection of German trade marks ends upon the expiry of a period of 10 years from the date of application. In addition, the Opposition Division found that, in accordance with Rule 19(4) of Regulation No 2868/95, the online extracts, dated 8 January 2007, could not be taken into account for the purposes of proving that the earlier marks had been renewed, since they had not been translated into the language of the proceedings.
12      On 23 October 2007, the applicant filed a notice of appeal with OHIM against the Opposition Division’s division, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009). In the appeal, the applicant requested that the Board of Appeal refuse to register the mark applied for on the basis that there was a likelihood of confusion. To that end, he included as an annex to the written pleading setting out the grounds of the appeal, for each of the earlier marks, inter alia, an extract from the online register and a declaration from the Deutsches Patent- und Markenamt, together with a translation of that declaration into the language of the proceedings. The declaration stated that the earlier marks had been renewed, before the date on which the notice of opposition was filed, until 2015, 2016 and 2017 respectively.
13      By decision of 21 January 2009 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal without assessing the merits of the opposition. It found that the Opposition Division had been correct to conclude that the applicant had not duly substantiated, within the time-limits laid down, the existence and the validity of the earlier marks relied on in support of the opposition.
14      In particular, the Board of Appeal considered, first, that the registration certificates submitted to OHIM on 16 January 2007 were not sufficient to prove that the earlier marks were still in force at the date on which the notice of opposition was filed. Second, it found that the fact that the online extracts from the register, dated 8 January 2007, had not been translated was sufficient justification in itself for refusing to take them into account.
15      The Board of Appeal also found that the documents included as an annex to the written pleading setting out the grounds of his appeal on 23 October 2007 could not be taken into account, on the ground that they had been filed after the expiry of the time-limit set by OHIM, that is, after 4 June 2007.
16      Lastly, the Board of Appeal stated that neither the Opposition Division nor the Board of Appeal itself had discretion under Article 74(2) of Regulation No 40/94 (now Article 76(2) of Regulation No 207/2009) to take into account documents that had not been filed before expiry of the time-limit set by OHIM, having regard to Rule 20(1) of Regulation No 2868/95 which provides expressly that an action must be dismissed where documentary evidence is submitted late. The Board of Appeal further stated that, in any event, even if it were to be held that it enjoyed a discretion to accept documents filed late with the Opposition Division, the Board would have exercised such a discretion against the applicant and not against the rights and interests of the other party to the proceedings, since the latter had not acted improperly and had in no way contributed to the late submission of evidence by the applicant.
Forms of order sought by the parties
17      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
18      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
19      The intervener contends that the Court should:
–        uphold the contested decision and dismiss the action;
–        order the applicant to pay the costs.
Law
20      In support of the action, the applicant relies on three pleas in law, alleging (i) infringement by the Opposition Division of Article 8(1)(b) of Regulation No 40/94, (ii) infringement by the Board of Appeal of Article 74(2) of Regulation No 40/94 and misuse of powers, and (iii) infringement by the Board of Appeal of Article 8(1)(b) of Regulation No 40/94.
The plea in law alleging infringement by the Opposition Division of Article 8(1)(b) of Regulation No 40/94
21      The applicant submits that the Opposition Division infringed Article 8(1)(b) of Regulation No 40/94, in that it rejected the opposition without taking into account the online extracts from the register of the Deutsches Patent- und Markenamt submitted to OHIM on 16 January 2007 and without, therefore, examining the merits of the opposition.
22      OHIM and the intervener dispute the applicant’s arguments.
23      Under Article 63(1) of Regulation No 40/94 (now Article 65(1) of Regulation No 207/2009), actions may be brought before the General Court only against decisions of the Boards of Appeal. It must accordingly be held that it is only pleas directed against those decisions which are admissible in such an action (see Case T-303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita) [2005] ECR II-1917, paragraph 59).
24      It must be held that, since the present plea alleges infringement by the Opposition Division of Article 8(1)(b) of Regulation No 40/94, it is not directed against a decision of the Board of Appeal.
25      It follows that the present plea in law must be rejected as inadmissible.
The plea in law alleging infringement by the Board of Appeal of Article 74(2) of Regulation No 40/94 and misuse of powers
26      The applicant puts forward, in essence, two pleas in law. The first plea in law alleges infringement of Article 74(2) of Regulation No 40/94, in that the Board of Appeal concluded that it did not have the discretion to take into account the documents submitted late to the Opposition Division which were intended to prove the existence and the validity of the earlier marks. The second plea in law alleges misuse of powers.
27      OHIM and the intervener dispute the applicant’s arguments.
28      First of all, it is clear from Rule 19(1) to (3) of Regulation No 2868/95 that it is for the opponent to provide proof of the existence, validity and scope of protection of the earlier marks, including proof of their renewal, within the time-limit laid down by OHIM, and that proof must be filed in the language of the proceedings or be accompanied by a translation.
29      It must also be noted that the time-limit laid down to that end by OHIM expired on 4 June 2007 and that it was not until the applicant filed his notice of appeal against the Opposition Division’s decision – namely 23 October 2007 – that he furnished the translation of the evidence concerning renewal of the earlier marks. In the context of that appeal, the applicant requested the Board of Appeal, inter alia, to take into account the translation on the basis of Article 74(2) of Regulation No 40/94.
30      In the first place, as regards the alleged infringement of Article 74(2) of Regulation No 40/94, it should be pointed out that, under that provision, ‘[OHIM] may disregard facts or evidence which are not submitted in due time by the parties concerned’.
31      According to settled case-law, it is clear from Article 74(2) of Regulation No 40/94 that, as a general rule, the submission of facts and evidence by the parties remains possible after the expiry of the time‑limits to which such submission is subject under the provisions of Regulation No 40/94 and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late (Case C-29/05 P OHIM v Kaul [2007] ECR I-2213, paragraph 42; Case T-86/05 K & L Ruppert Stiftung v OHIM – Lopes de Almeida Cunha and Others (CORPO livre) [2007] ECR II-4923, paragraph 44; and judgment of 22 September 2011 in Case T-250/09 Cesea Group v OHIM – Mangini & C. (Mangiami), not published in the ECR, paragraph 18).
32      Moreover, it is equally apparent from Article 74(2) of Regulation No 40/94 that a party has no unconditional right to have facts and evidence submitted out of time taken into consideration by OHIM. In stating that the latter ‘may’, in such a case, decide to disregard such facts and evidence, Article 74(2) of Regulation No 40/94 grants OHIM a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account (OHIM v Kaul, paragraph 31 above, paragraph 43).
33      In addition, the possibility for parties to proceedings before OHIM to submit facts and evidence after the expiry of the periods specified for that purpose is conditional upon there being no provision to the contrary. It is only if that condition is met that OHIM has a discretion – recognised by the Court of Justice when it interpreted Article 74(2) of Regulation No 40/94 – as regards the taking into account of facts and evidence submitted out of time (CORPO livre, paragraph 31 above, paragraph 47, confirmed by the order of 5 March 2009 in Case C‑90/08 P K & L Ruppert Stiftung v OHIM, and Mangiami, paragraph 31 above, paragraph 19).
34      In the present case, the Board of Appeal found, in paragraphs 38 to 40 of the contested decision, that there was an express provision to the contrary, according to which, as held in the case-law, the rejection of the opposition was mandatory, and not merely an option subject to OHIM’s discretion. The Board of Appeal considered that Rule 20(1) of Regulation No 2868/95, applicable to proceedings before it pursuant to Rule 50(1) of that regulation, prevented the discretion under Article 74(2) of Regulation No 40/94 from being exercised by it.
35      Rule 20(1) of Regulation No 2868/95, in the version applicable to the facts of the case, provides:
‘If until expiry of the period referred to in Rule 19(1) the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well his entitlement to file the opposition, the opposition shall be rejected as unfounded.’
36      The first and third subparagraphs of Rule 50(1) of Regulation No 2868/95, in the version applicable to the facts of the case, provide:
‘Unless otherwise provided, the provisions relating to proceedings before the department which has made the decision against which the appeal is brought shall be applicable to appeal proceedings mutatis mutandis.
…
Where the appeal is directed against a decision of an Opposition Division, the Board shall limit its examination of the appeal to facts and evidence presented within the time-limits set in or specified by the Opposition Division in accordance with the Regulation and these Rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 74(2) of [Regulation No 40/94].’
37      It is clear from reading the above provisions together that, in the absence of any provision to the contrary, the Board of Appeal is bound to apply Rule 20(1) of Regulation No 2868/95 in the proceedings before it and, therefore, to find that the submission of evidence after the expiry of the period specified for that purpose by OHIM, in order to establish the existence, validity and scope of protection of the earlier mark, results in the rejection of the opposition without the Board of Appeal having a discretion in that regard (see, to that effect and by analogy, Case T‑171/06 Laytoncrest v OHIM – Erico (TRENTON) [2009] ECR II-539, paragraphs 54 to 56).
38      The applicant submits that the end of the third subparagraph of Rule 50(1) of Regulation No 2868/95, and, in particular, the reference therein to Article 74(2) of Regulation No 40/94, is precisely the provision to the contrary which would, in all events, preclude Rule 20(1) of that regulation from being applied to proceedings before the Board of Appeal. However, that argument cannot be upheld.
39      It must be noted at the outset that, since the notice of opposition was filed on 24 October 2006, the version of Regulation No 2868/95 applicable to the present case is that in force after the amendment by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4). In particular, according to recital 7 of that regulation, one of the aims of that amendment was to reframe completely the provisions concerning the opposition procedure in order to specify clearly, inter alia, the legal consequences of procedural deficiencies.
40      In addition to the risk of applying circular reasoning to the provisions in question, accepting the interpretation put forward by the applicant would result in the scope of Rule 20(1) of Regulation No 2868/95, as amended, being limited significantly.
41      If the evidence to establish the existence, validity and scope of an earlier mark – which, in accordance with the new wording of Rule 20(1) of Regulation No 2868/95, applicable to the present case, cannot be taken into account by the Opposition Division when it is filed late – could nevertheless be taken into consideration by the Board of Appeal by virtue of its discretionary power under Article 74(2) of Regulation No 40/94, the legal consequence laid down expressly in Regulation No 1041/2005 for that type of deficiency, namely the rejection of the opposition, might, in certain cases, have no practical effect.
42      It must therefore be held that the Board of Appeal did not err by finding that, in the circumstances of the present case, there was a provision which prevented evidence submitted late to OHIM by the applicant from being taken into account and that, therefore, the Board of Appeal did not have any discretion under Article 74(2) of Regulation No 40/94.
43      The applicant also submits that the Board of Appeal was incorrect to find that, in any event, it would have exercised its discretion under Article 74(2) of Regulation No 40/94 against the applicant. In the applicant’s submission, the Board of Appeal ought to have checked whether the conditions for exercising such discretion, laid down in OHIM v Kaul, paragraph 31 above, were met in the present case and state reasons.
44      In that regard, even though the Board of Appeal found that the circumstances of the present case prevented the discretion under Article 74(2) of Regulation No 40/94 from being exercised in favour of the applicant in any event, it is clear from paragraph 42 of the contested decision that that finding was made purely in the alternative and in the light of the fact that CORPO livre, paragraph 31 above, on which the Board of Appeal’s reasoning was based, was the subject of an appeal to the Court of Justice.
45      It should be pointed out, first of all, that in its order in K & L Ruppert Stiftung v OHIM, paragraph 33 above, the Court of Justice did not call in question the General Court’s approach in CORPO livre, paragraph 31 above. In addition, since, in accordance with the conclusion drawn in paragraph 42 above, the Board of Appeal did not have the discretion provided for in Article 74(2) of Regulation No 40/94, there is no need to examine the applicant’s arguments seeking a declaration that the contested decision was mistaken in that regard in the light of the conditions laid down by OHIM v Kaul, paragraph 31 above.
46      Lastly, as regards the applicant’s arguments in relation to the judgment in Case T‑407/05 SAEME v OHIM – Racke (REVIAN’s) [2007] ECR II‑4385, it must be noted that that judgment concerned a situation in which Rule 20(1) of Regulation No 2868/95, in the version applicable to the present case, had not yet been provided for by that regulation. In addition, even if – as the applicant claims – the judgment in REVIAN’s states at paragraph 51 that the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, such an examination does not, however, mean that, according to the case-law cited in paragraphs 32 and 33 above, the Board of Appeal may take into consideration facts or evidence submitted to the Opposition Division late where there is a provision to the contrary effect. To that end, it must be held that the Board of Appeal was correct to find, in paragraph 37 of the contested decision, that the documents filed late with the Opposition Division cannot be regarded as being lodged within the time-limits merely because an appeal has been filed (see, to that effect, OHIM v Kaul, paragraph 31 above, paragraph 61).
47      It follows that the Board of Appeal did not infringe Article 74(2) of Regulation No 40/94, in not taking into account, in the contested decision, the documents submitted late to the Opposition Division by the applicant which were intended to prove the existence and the validity of the earlier marks.
48      In the second place, as regards the alleged misuse of powers by the Board of Appeal, the Court finds that the application does not satisfy the minimum requirements for the admissibility of a complaint laid down in Article 21 of the Statute of the Court of Justice of the European Union and Article 44(1)(c) of the Rules of Procedure of the General Court, provisions which apply to intellectual property matters pursuant to Articles 130(1) and 132(1) of those Rules. In the present case, the applicant’s complaint, as submitted in the application, does not include any argument to demonstrate how the Board of Appeal misused its powers. The present complaint must therefore be declared inadmissible.
49      In the light of the foregoing, the present plea must be rejected as unfounded.
The plea alleging infringement by the Board of Appeal of Article 8(1)(b) of Regulation No 40/94
50      The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 40/94 since it failed to examine whether there was a likelihood of confusion between the marks at issue, relying, as evidence of the existence and the validity of the earlier marks, on the documents submitted on 16 January 2007. Furthermore, the applicant puts forward a whole series of arguments in order to prove the existence of a likelihood of confusion between the marks at issue.
51      OHIM and the intervener dispute the applicant’s arguments.
52      Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
53      It is clear from that provision, and from Rule 20(1) of Regulation No 2868/95, that proof of the existence and the validity of the earlier mark on which the opponent bases the notice of opposition is a prerequisite for examining the merits of that opposition by OHIM (see, to that effect, Case T-232/00 Chef Revival USA v OHIM – Massagué Marín (Chef) [2002] ECR II-2749, paragraph 44, and Case T‑420/03 El Corte Inglés v OHIM – Abril Sánchez and Ricote Saugar (Boomerang TV) [2008] ECR II-837, paragraph 67).
54      In the present case, in order to demonstrate the existence and the validity of each of the earlier marks, the applicant submitted to OHIM, within the time-limit set by OHIM in that regard, first, registration certificates issued by the Deutsches Patent- und Markenamt, together with a translation into the language of the proceedings, and, second, extracts from the online register of the Deutsches Patent- und Markenamt, dated 8 January 2007, for which no translation into the language of the proceedings was provided.
55      As regards, first, the registration certificates issued by the Deutsches Patent- und Markenamt, it must be found that – as stated in paragraph 27 of the contested decision – those certificates expressly stated that the protection of the earlier marks would end by 31 January 2007, and that, therefore, they were incapable of proving that the earlier marks were in force at the date of opposition.
56      Next, as regards the extracts from the online register of the Deutsches Patent- und Markenamt, it must be noted that Rule 19(4) of Regulation No 2868/95, in the version applicable to the facts of the case, provides:
‘[OHIM] shall not take into account … documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time-limit set by [OHIM].’
57      It follows that, since those extracts had not been translated into the language of the proceedings, the Board of Appeal was not entitled to take them into account for the purposes of proving that the earlier marks had been renewed before the date of opposition.
58      It must therefore be held that the Board of Appeal did not err in concluding, in paragraph 49 of the contested decision, that the existence and the validity of earlier marks had not been duly substantiated by the applicant and that, in the absence of such proof, it was not entitled to examine the merits of the opposition or to analyse, in particular, the existence of a likelihood of confusion between the marks at issue.
59      Consequently, it must be held that the Board of Appeal did not infringe Article 8(1)(b) of Regulation No 40/94.
60      As regards the arguments put forward by the applicant in order to prove the existence of a likelihood of confusion between the marks at issue, it should be remembered that, according to settled case-law, the Court’s assessment must be confined to the matters on which the Board of Appeal’s decision was based (see judgment of 27 April 2010 in Case T‑392/06 Union Investment Privatfonds v OHIM – Unicre-Cartão International De Crédito (unibanco), not published in the ECR, paragraph 44 and the case-law cited).
61      In the present case, in accordance with the conclusion drawn in paragraph 58 above, the Board of Appeal was correct to find that the applicant had not proved the existence or the validity of the earlier marks and that, accordingly, it was not entitled to carry out an examination of whether there was a likelihood of confusion between the marks at issue.
62      Accordingly, it is not necessary to examine the arguments put forward by the applicant in that regard.
63      In the light of those considerations, the present plea in law must be rejected as unfounded, together with the action in its entirety.
Costs
64      Under Article 87(2) 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.
65      Since the applicant has been unsuccessful, he must be ordered to pay the costs in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Mr Bernhard Rintisch to pay the costs.
Dittrich
Wiszniewska-Białecka
Kancheva
Delivered in open court in Luxembourg on 16 December 2011.
[Signatures]
* Language of the case: English.