JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
4 May 2022 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark TAXMARC – Prior EU figurative mark TAXMAN – Suspension of proceedings – Article 71(1) of Delegated Regulation (EU) 2018/625)
In Case T‑619/21,
PricewaterhouseCoopers Belastingadviseurs NV, established in Amsterdam (Netherlands), represented by R. Stoop, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Haufe-Lexware GmbH & Co. KG, established in Freiburg im Breisgau (Germany), represented by N. Hebeis, lawyer,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann (Rapporteur), President, U. Öberg and R. Mastroianni, 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
Background to the dispute
1        By its action based on Article 263 TFEU, the applicant, PricewaterhouseCoopers Belastingadviseurs NV, seeks annulment of the decision of the Fourth Board of Appeal of EUIPO of 21 July 2021 (Case R 131/2021‑4), relating to opposition proceedings between Haufe-Lexware GmbH & Co. KG and the applicant.
2        On 4 April 2019, the applicant filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), 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).
3        Registration as a mark was sought for the word sign TAXMARC.
4        The goods and services in respect of which registration was sought are in, inter alia, Classes 9, 35 and 42 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 9: ‘Computer software; software applications and web applications, including for smartphones, mobile telephones; computer software, computer software applications and web applications for administrative, financial and tax purposes; computer software extensions for providing existing computer software with additional functions; notebook computers, computers and media players; magnetic data carriers, recording discs; data processing equipment; electronic and digital publications, downloadable or on data carriers; apparatus for data processing; computers, peripheral devices for computers; parts of the aforementioned goods not included in other classes’;
–        Class 35: ‘Business management; Business administration; Office functions; accountancy; Accounting and book-keeping services; Market canvassing, market research and market analysis; Business organisation, business economic and business administration consultancy; Commercial intermediation services in the purchase and sale, and import and export of computer software, computer software applications and web applications, including for smartphones, mobile telephones, computer software, computer software applications and web applications for administrative, financial and tax purposes, computer software extensions for providing existing computer software with extra functions, and parts for the aforesaid goods; Commercial intermediation services in the purchase and sale, and import and export of notebook computers, computers and media players, magnetic data carriers, recording discs, data processing equipment, electronic and digital publications being downloadable or stored on carriers, equipment for processing data, computers, computer peripheral devices and parts for the aforesaid goods; Consultancy in the field of business management and business efficiency; Compilation of statistics; Accounting; Tax preparation; Compilation of fiscal data; Strategic business planning; Business analysis of fiscal data; Temporary placement of personnel, Including accountants and consultants; Organisation of events for commercial and advertising purposes; Compilation and management of data files; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet’;
–        Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design, development, updating, implementing and providing of software, software packages, software applications, mobile applications and web applications; platform as a service [PaaS]; infrastructure as a service [IaaS]; software as a service [SaaS]; cloud computing; data storage and transmission; design, development and updating of computer systems, computer networks and computers; automation services; IT and ICT specialists; consultancy and information regarding the aforesaid services; including the aforesaid services provided via electronic networks, including the internet’.
5        The trade mark application was published in European Union Trade Marks Bulletin No 2019/115 of 20 June 2019.
6        On 20 September 2019, the intervener, Haufe-Lexware, 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 and services referred to in paragraph 4 above and those in Class 36.
7        The opposition was based on the earlier EU figurative mark reproduced below:
8        The goods and services related to the following classes:
–        Class 9: ‘Downloadable electronic publications in the fields of tax, economics and law; Downloadable software on CD-ROMs and other data carriers in the fields of tax, economics and law; Downloadable tax return software; Tax return software on CD-ROMs and other data carriers’;
–        Class 35: ‘Professional business organisational consultancy and information in the fields of economics, tax, data processing, book-keeping and accounting, business management, time management and personnel, including via the internet, included in class 35; Business management assistance, namely in the preparation of tax returns, payroll preparation, travel cost invoices, receivables lists, business plans, and in the recording and management of absences from work; Outsourcing services in the field of IT and EDP, Namely business assistance; Collation, systemisation, updating and maintenance of data in databases and searchable online databases; Organisational project management in the IT and EDP sector; Mail order, including via online shops, of software products and printed matter’;
–        Class 42: ‘Software as a service (SaaS); Consultancy relating to software as a service (SaaS); Providing online, non-downloadable software; Rental of software; Computer software design; Electronic data back-up and Software update services; Technical consultancy relating to software technology and software systems; Technological user support services, namely being application service provider (ASP) services; Cloud computing; Technical project management in the field of IT and electronic data processing; Provision of search engines for the Internet; Security in the field of IT and EDP; All of the aforesaid services in class 42 being solely in the fields of tax, economics and law’.
9        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation 2017/1001.
10      On 24 November 2020, the Opposition Division upheld the opposition in part in respect of the goods and services in Classes 9, 35 and 42 and rejected it in respect of the services in Class 36.
11      On 20 January 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, and subsequently lodged, on 24 March 2021, a statement of grounds.
12      On 5 March 2021, in parallel with the present opposition proceedings, the applicant filed an application with EUIPO for a declaration that the earlier mark was invalid.
13      By decision of 21 July 2021 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it found that, in order to assess the likelihood of confusion between the marks at issue, the relevant territory was that of the European Union and that the relevant public was the general public and the professional public, which will have a level of attention varying from average to high. It held that the contested goods and services in Classes 9, 35 and 42 were partially identical and partially similar to the earlier goods and services. It found that, on account of the similarities between the word elements of the signs, to which consumers paid greater attention, the signs at issue were visually similar to an average degree, that the degree of aural similarity varied from average to high and that no conceptual comparison was possible or was result-neutral, or even that that comparison led to a finding of similarity due to the use of the term ‘tax’, which was of no use to the applicant. It further found that the degree of inherent distinctiveness of the earlier mark as a whole was normal and that the argument based on the descriptive character of the word ‘tax’ had to be rejected for the relevant Hungarian public and that there was therefore a likelihood of confusion on the part of that public. Lastly, the Board of Appeal found that, notwithstanding the applicant’s application for a declaration of invalidity of the earlier mark filed on 5 March 2021, there was no need to suspend the present appeal proceedings. It noted, inter alia, that the applicant had filed the application for a declaration of invalidity at a late stage of the present opposition proceedings, more than three months after having been informed of the Opposition Division’s decision and after having filed its appeal against that decision. It stated that it was not appropriate to allow the applicant to ‘change the forum’ after having received a negative decision, particularly since, in the present case, the applicant had not been diligent given that it had made the application for a declaration of invalidity only after having filed the notice of appeal in the present proceedings. The Board of Appeal therefore took the view that, after weighing up the competing interests of both parties, it was consistent with the principle of sound administration and with the objective of ensuring the proper conduct of the proceedings that it should be able to rule on the substance of the case without there being any need to suspend the proceedings.
Forms of order sought
14      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs of this action and order the intervener to pay the costs of the proceedings before the Cancellation Division and the Board of Appeal.
15      EUIPO contends that the Court should:
–        uphold the second plea in law;
–        in the alternative, reject the first plea in law;
–        order each party to bear its own costs.
16      The intervener contends that the Court should dismiss the action.
Law
17      The applicant puts forward two pleas in law in support of its action. The first plea alleges infringement of Article 8(1)(b) of Regulation 2017/1001, in that the Board of Appeal erred in finding that there was a likelihood of confusion. The second plea alleges infringement of Article 71(1)(b) 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), in that the Board of Appeal committed a manifest error of assessment in rejecting the applicant’s request for a suspension of proceedings.
18      The Court considers it appropriate to examine first of all the second plea in law, alleging infringement of Article 71(1)(b) of Delegated Regulation 2018/625.
19      The applicant submits that the Board of Appeal misinterpreted Article 71(1) of Delegated Regulation 2018/625. First, it submits that the request for a suspension of proceedings may be made at any time and that it was in the light of the Opposition Division’s decision that it realised it had to demonstrate more convincingly the earlier mark’s lack of distinctive character. Secondly, the Board of Appeal did not take sufficient account of its interests and failed to assess the chances of success of the invalidity proceedings, thus vitiating its decision by a manifest error of assessment. It adds that the Board of Appeal erred in beginning its review with the assessment of the likelihood of confusion.
20      EUIPO contends that the second plea raised by the applicant is well founded.
21      The intervener submits that suspension is not an obligation and that the decision of the Board of Appeal, which took account of the interests of both parties, is well founded in the present case.
22      Under Article 71(1)(b) of Delegated Regulation 2018/625, as regards opposition, revocation and declaration of invalidity and appeal proceedings, the competent department or Board of Appeal may suspend proceedings at the reasoned request of one of the parties in inter partes proceedings, where a suspension is appropriate under the circumstances of the case, taking into account the interests of the parties and the stage of the proceedings.
23      It follows from recital 17 of Delegated Regulation 2018/625 that Article 71(1) of that regulation is intended to increase the clarity, consistency and efficiency of opposition, revocation, invalidity and appeal proceedings. In that regard, it must be noted that, if the earlier mark relied on in support of an opposition loses its validity in the course of the proceedings, that opposition becomes devoid of purpose (see judgment of 28 May 2020, Cinkciarz.pl v EUIPO – MasterCard International (We IntelliGence the World and Others), T‑84/19 and T‑88/19 to T‑98/19, EU:T:2020:231, paragraph 45 and the case-law cited).
24      Furthermore, it follows from the wording of Article 71(1) of Delegated Regulation 2018/625 that the Board of Appeal has broad discretion in deciding whether or not to suspend the current proceedings, suspension remaining an option for the Board of Appeal (see judgment of 28 May 2020, We IntelliGence the World and Others, T‑84/19 and T‑88/19 to T‑98/19, EU:T:2020:231, paragraph 46 and the case-law cited).
25      However, the fact that the Board of Appeal has broad discretion to suspend proceedings before it does not mean that its assessment falls outside the scope of judicial review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ensuring that there is no manifest error of assessment or misuse of powers (see judgment of 28 May 2020, We IntelliGence the World and Others, T‑84/19 and T‑88/19 to T‑98/19, EU:T:2020:231, paragraph 47 and the case-law cited).
26      In inter partes proceedings, the Board of Appeal must take into account the interest of each of the parties when exercising its discretion with respect to the suspension of the proceedings, and the decision whether or not to suspend the proceedings must follow upon a weighing up of the competing interests (see judgment of 21 October 2015, Petco Animal Supplies Stores v OHIM – Gutiérrez Ariza (PETCO), T‑664/13, EU:T:2015:791, paragraph 33; see, also, judgment of 28 May 2020, We IntelliGence the World and Others, T‑84/19 and T‑88/19 to T‑98/19, EU:T:2020:231, paragraph 50 and the case-law cited).
27      Moreover, the examination of the question of whether to suspend the proceedings before the Board of Appeal must be carried out before the examination of whether there is a likelihood of confusion (see judgment of 28 May 2020, We IntelliGence the World and Others, T‑84/19 and T‑88/19 to T‑98/19, EU:T:2020:231, paragraph 55 and the case-law cited).
28      First, in the present case, the Board of Appeal pointed out that the earlier mark had been registered on 7 September 2018 and found that the request for a suspension of proceedings had to be rejected on the grounds that the applicant had filed the application for a declaration of invalidity at a late stage. The applicant was alleged not to have been diligent because it did not exercise any appeal to oppose the registration of the earlier mark before the decision of the Opposition Division. It added that the invalidity proceedings were only at an early stage.
29      However, the Board of Appeal could not reject the request for a suspension of proceedings merely because the cancellation action against the earlier mark on which the opposition was based had been brought out of time, that is to say after the filing of the appeal, by pointing out the lack of diligence on the part of the proprietor of the mark applied for (see, to that effect, judgment of 25 November 2014, Royalton Overseas v OHIM – S.C. Romarose Invest (KAISERHOFF), T‑556/12, not published, EU:T:2014:985, paragraph 42).
30      Furthermore, as the applicant and EUIPO point out, it was while finding that the Opposition Division’s decision was unfavourable to it and before filing the grounds of its statement before the Board of Appeal that the applicant filed its request for suspension.
31      Secondly, the Board of Appeal found, in paragraph 77 of the contested decision, that, by weighing up the interests of both parties and in so far as they had the opportunity to submit detailed information in the context, first, of the proceedings before the Opposition Division and then before the Board of Appeal as regards the likelihood of confusion, it was consistent with the principle of sound administration and the objective of ensuring the proper conduct of the proceedings that it should be able to rule on the merits of the case without there being any need to suspend the proceedings.
32      In so doing, the Board of Appeal merely confirms that it weighed up the interests, without referring to any analysis in that regard. In particular, it did not carry out a prima facie assessment of the likelihood of success of the application for a declaration of invalidity and did not verify whether that application could have resulted in a decision that would have had an impact on the opposition, which could not be ruled out from the outset in the present case.
33      Furthermore, the mere fact that the parties had the opportunity to present detailed information both before the Opposition Division and before the Board of Appeal cannot be considered, in itself, to be the result of a weighing up of the competing interests by the Board of Appeal.
34      In the light of all the foregoing, it must be concluded that the Board of Appeal failed to carry out a weighing up of the parties’ competing interests within the meaning of the case-law cited in paragraph 26 above and, therefore, committed a manifest error of assessment in dismissing the action on the ground that there was a likelihood of confusion within the meaning of Article 8(1) of Regulation 2017/1001.
35      Accordingly, the applicant’s second plea in law must be upheld.
36      Since the examination of the question of suspension of the proceedings is prior to the decision on the opposition, the contested decision must be annulled in its entirety, without there being any need to examine the first plea.
Costs
37      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
38      Under Article 138(3) of the Rules of Procedure, the Court may order an intervener other than those referred to in Article 138(1) and (2) to bear its own costs.
39      Under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Therefore, as EUIPO points out, the form of order sought by the applicant cannot be granted in so far as it seeks an order that the intervener pay the costs relating to the proceedings before the Opposition Division.
40      Consequently, since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay the costs incurred by the applicant for the purposes of the proceedings before the Court, as requested by the applicant.
41      Pursuant to Article 138(3) of the Rules of Procedure, the intervener must bear its own costs in the proceedings before the Court.
42      As regards the claim that EUIPO and the intervener should be ordered to pay the costs of the proceedings before the Board of Appeal, it is for the Board of Appeal to rule, in the light of the present judgment, on the costs relating to those proceedings.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 July 2021 (Case R 131/2021‑4);
2.      Orders EUIPO to bear its own costs and to pay those incurred by PricewaterhouseCoopers Belastingadviseurs NV for the purposes of the proceedings before the Court;
3.      Orders Haufe-Lexware GmbH & Co. KG to bear its own costs relating to the proceedings before the Court.
Spielmann
Öberg
Mastroianni
Delivered in open court in Luxembourg on 4 May 2022.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.