JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
3 October 2017 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark 520Barcode Hellas — Relative ground for refusal — Article 8(4) of Regulation (EC) No 207/2009 (now Article 8(4) of Regulation (EU) 2017/1001) — Identification of the nature of the sign cited in opposition — Other earlier sign 520 — Identification of the goods and services on which the opposition is based)
In Case T‑453/16,
Ellinikos Syndesmos Epicheiriseon gia ti Diacheirisi ton Diethnon Protypon GS1, established in Argiroupoli Attikis (Greece), represented by A. Mouzaki, lawyer,
applicant,
v
Office of the European Union for Intellectual Property (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
520 Barcode Hellas — AE Diacheirisis Diethnon Protypon kai Parochis Symvouleutikon Ypiresion, established in Kifisia Attikis (Greece), represented by A. Roussou, M.-M. Theodoridou and F. Christodoulou-Kardiopoulis, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 14 June 2016 (Case R 238/2015-4), relating to opposition proceedings between Ellinikos Syndesmos Epicheiriseon gia ti Diacheirisi ton Diethnon Protypon GS1 and 520 Barcode Hellas — AE Diacheirisis Diethnon Protypon kai Parochis Symvouleutikon Ypiresion,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins, President, M. Kancheva and J. Passer (Rapporteur), Judges,
Registrar: X. Lopez Bancalari, Administrator,
having regard to the application lodged at the Court Registry on 10 August 2016,
having regard to the response of EUIPO lodged at the Court Registry on 19 October 2016,
having regard to the response of the intervener lodged at the Registry of the Court on 20 October 2016,
having regard to the written questions put by the Court to EUIPO and its replies to those questions lodged at the Court Registry on 24 March 2017,
further to the hearing on 11 May 2017,
gives the following
Judgment
Background to the dispute
1        On 14 May 2012, the intervener, 520Barcode Hellas — AE Diacheirisis Diethnon Protypon kai Parochis Symvouleutikon Ypiresion, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 6, 7, 9, 11, 14, 16, 20, 29, 30, 35, 36, 37, 38, 39, 41, 42, 43 and 45 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 6: ‘Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores’;
–        Class 7: ‘Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines’;
–        Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; radio frequency identification (RFID) tags; barcode readers; barcode scanners; optical readers; optical character readers; data and information processing apparatus and systems; electronic publications-downloadable; downloadable electronic newsletters delivered by e-mail in the field of the supply chain; computer programs and systems for collecting, editing, organising, modifying, marking, transmitting, storing, sharing, distributing data and information related to products and goods of any nature; computer hardware; computer software’;
–        Class 11: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’;
–        Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;
–        Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; printed matter; printed publications; manuals, handbooks; prospectuses; numbering apparatus’;
–        Class 20: ‘Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’;
–        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fat’;
–        Class 30: ‘Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice’;
–        Class 35: ‘Advertising; business management; business administration; office functions; provision of commercial and business information by means of computer data base; commercial and business information services provided by access to a computer database; advisory services to the management of businesses; business management consultation in the field of standards; arranging subscriptions; databases management; providing of a web-based online portal/an online computer website that provides users and/or customers and/or subscribers and/or members access to information and data; registration, transcription, composition, compilation and systematisation of mathematical and statistical data; information and data compiling and analysing relating to standards; business marketing services; business consultancy, advisory, information and research services; compilation, registration, systemisation and providing of directory information (mathematical data) in the form of barcodes and number series; compilation and dissemination of information and advertising material relating to barcodes and number series and the application thereof; consultancy with regard to all the aforesaid services’;
–        Class 36: ‘Insurance; financial affairs; monetary affairs; real estate affairs’;
–        Class 37: ‘Building construction; repair; installation services’;
–        Class 38: ‘Telecommunications; providing access to computer databases; providing user access to computer networks; electronic mail’;
–        Class 39: ‘Transport; packaging and storage of goods; travel arrangement’;
–        Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; electronic publications; publication of printed matter; arranging and conducting of colloquiums, seminars and conferences’;
–        Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; scientific (and industrial) services with regard to calculation and research in the field of the marking and application of barcodes and number series; consultancy with regard to all the aforesaid services; technical consulting in respect of the application of the standards; article numbering/number series; development of software for the supply chain; certification/quality control’;
–        Class 43: ‘Services for providing food and drink; temporary accommodation’;
–        Class 45: ‘Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 2012/154 of 14 August 2012.
5        On 13 November 2012, the applicant, Ellinikos Syndesmos Epicheiriseon gia ti Diacheirisi ton Diethnon Protypon GS1, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), against registration of the mark applied for in relation to all the goods and services covered by the trade mark application and mentioned in paragraph 3 above.
6        The opposition was based, according to the notice of opposition published by EUIPO (page 3), on the following claims:
7        In addition, under the section of the notice of opposition headed ‘Grounds for the opposition’ (page 4), the applicant, in essence, stated the following:
–        the applicant is the Greek member of the international not-for-profit association GS1 (‘GS1 AISBL’);
–        GS1 AISBL’s objective is to design and implement global standards and solutions to improve efficiency and visibility throughout the supply and demand chain across all sectors;
–        GS1 AISBL has property rights in the GS1 numbering system;
–        one of the building blocks of the GS1 system is the GTIN (Global Trade Identification Number); the GTIN-13, composed of 13 digits, is the world’s most widely used identification system, with the global guarantee of a unique number;
–        the GS1 prefix, which corresponds to the first two or three digits of any GTIN, identifies the GS1 AISBL member organisation that the manufacturer has joined;
–        the prefixes 520 and 521 are reserved by GS1 AISBL for Greece;
–        the applicant is the sole authorised member of GS1 AISBL for Greece since 14 April 2011;
–        the prefixes 520 and 521 are administered by the applicant and cannot be administered by any other organisation;
–        GS1 AISBL granted a license to the applicant for the unique number banks 520 and 521; for the abovementioned reasons, the mark applied for cannot be registered as an EU mark because the applicant has property rights in those signs, which were acquired prior to the date of priority claimed for registration of the mark applied for, and those signs confer on GS1 AISBL and the applicant the right to prohibit the use of a subsequent trade mark.
8        The opposition was based on all the goods and services covered by Classes 1 to 45.
9        The ground relied on in support of the opposition was that set out in Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001).
10      By letter of 24 January 2013, EUIPO informed the applicant that its opposition was found admissible ‘at least in so far as it is based on the following earlier right: non-registered trade mark “520”’. In that letter, EUIPO goes on to ask the applicant to substantiate, where appropriate, the earlier right that was found admissible as well as any other earlier rights filed as a basis for the opposition.
11      The applicant responded by its observations of 13 March 2014.
12      On 28 November 2014 the Opposition Division described the right cited in opposition as the following non-registered trade mark (‘the alleged non-registered trade mark cited in opposition’):
13      The Opposition Division rejected the opposition on the ground that proof of the condition for the application of Article 8(4) of Regulation No 207/2009, relating to the more than mere local significance of the sign cited in opposition, was insufficient.
14      On 23 January 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. In that appeal, the applicant disputed, inter alia, the Opposition Division’s description of the right cited in opposition.
15      By decision of 14 June 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.
16      In particular, after endorsing the description of the right cited in opposition that had been adopted by the Opposition Division, the Board of Appeal found that the applicant’s non-registered trade mark was neither clear nor precise and that the applicant had failed to identify it. According to the Board of Appeal, the explanation that the word element of the mark is ‘520’ is only partly correct. It claims that the representation of the mark cited in opposition, the typical 13-digit barcode 5 200000 000009, contradicts the applicant’s explanation that the mark cited in opposition is any 13-digit barcode starting with ‘520’. The Board of Appeal argues that, with this explanation, the applicant is seeking to protect a concept rather than a specific non-registered trade mark. According to the Board of Appeal, the fact that several barcodes have a common feature, in this instance, the prefix ‘520’, does not mean that they may be regarded as a unique trade mark. Neither EUIPO nor any operator is in a position to clearly understand the sign, since that concept is neither clear nor precise.
17      Furthermore, the Board of Appeal found that the applicant’s indication that the mark cited in opposition is protected for all the goods and services in Classes 1 to 45 is insufficiently clear and precise. It held that the reference to Classes 1 to 45 to designate the goods and services on which the opposition is based is equally insufficient.
18      The Board of Appeal added that, even were it to take into consideration only the representation of the mark cited in opposition and to assume that the indication ‘Classes 1 — 45’ refers to all the goods and services covered by the Nice Classification, the opposition would have to be rejected. The applicant had failed to show use of the mark cited in opposition as represented.
19      The Board of Appeal stated that, even were it to consider, in the alternative, that the representation provided or the GTIN-13 were precise, or it were to assume that the opposition was only based on the number 520, it would not have found that any trade mark had been used.
20      None of the barcodes produced in the documents before the Board of Appeal referred to trade mark use. There was nothing to show that, by using a barcode, economic operators aimed to distinguish their goods from those of other economic operators. Nothing permitted the conclusion to be drawn that end consumers could see a badge of origin in a barcode.
Forms of order sought
21      The applicant brought the present action on 10 August 2016.
22      On 8 March 2017 the Court asked questions of EUIPO by way of the measures of organisation of procedure. EUIPO replied to those questions by letter of 24 March 2017.
23      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
24      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
25      The intervener claims that the Court should:
–        dismiss the action;
–        uphold the contested decision.
Law
26      In support of its action, the applicant relies on two pleas for annulment, alleging, first, infringement of Article 8(4) of Regulation No 207/2009 and, secondly, infringement of Articles 75 and 76 of the regulation (now Articles 94 and 95 of Regulation 2017/1001).
First plea in law, alleging infringement of Article 8(4) of Regulation No 207/2009
First part, alleging manifest errors of assessment concerning the sign cited in opposition and the goods and services on which the opposition is based
27      The applicant claims, in essence, that the Board of Appeal infringed Article 8(4) of Regulation No 207/2009 by failing to have regard to the fact the opposition was based on the prefix ‘520’ as ‘another sign’ within the meaning of that provision. According to the applicant, the Board of Appeal made manifest errors of assessment in finding that ‘the [mark cited in opposition] is neither clear nor precise; neither is the list of goods and services on which the opposition is based’.
28      EUIPO and the intervener dispute the applicant’s position.
29      It should be recalled that, pursuant to Article 8(4) of Regulation No 207/2009, the proprietor of a sign other than a registered trade mark may oppose registration of an EU trade mark if that sign satisfies four conditions cumulatively: (i) the sign must be used in the course of trade; (ii) it must be of more than mere local significance; (iii) the right to that sign must have been acquired in accordance with EU law or with the law of the Member State in which the sign was used prior to the date of application for registration of the EU trade mark; and (iv) the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark (see judgments of 23 October 2013, Dimian v OHIM — Bayer Design Fritz Bayer (Baby Bambolina), T‑581/11, not published, EU:T:2013:553, paragraph 22 and the case-law cited, and of 21 January 2016, BR IP Holder v OHIM — Greyleg Investments (HOKEY POKEY), T‑62/14, EU:T:2016:23, paragraph 19 and the case-law cited). Those conditions are cumulative. Thus, where a sign does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) of Regulation No 207/2009 cannot succeed (judgment of 23 October 2013, Baby Bambolina, T‑581/11, not published, EU:T:2013:553, paragraph 22).
30      It is necessary to determine the exact nature of the applicant’s sign cited in opposition to the trade mark application.
31      This necessary determination also answers a central argument of the first plea for annulment. The applicant claims that the opposition is based on the sign ‘520’ and ‘not at all’ on the alleged non-registered trade mark cited in opposition. The applicant maintains that the prefix ‘520’ is ‘another sign’ within the meaning of Article 8(4) of Regulation No 207/2009, and therefore is not a mark.
32      As confirmed at the hearing, the documents before the Court show that, when filing its opposition online, the applicant selected ‘Other’ within a list of terms and expressions describing various rights when completing the section of the notice of opposition headed ‘Type of Mark’. The selection was intended to narrow down a previous option by which the applicant had described the right cited in opposition as being a ‘non-registered trade mark or other sign used in the course of trade’.
33      Thus, by selecting ‘Other’, the applicant indicated that the sign cited in opposition was opposed as another sign rather than as a non-registered trade mark.
34      The fact that the applicant’s notice of opposition, as published by EUIPO and found in the administrative file transmitted to the Court, included section headings that were inappropriate because they referred unambiguously to the notion of trade mark (see, for instance, ‘Type of Mark’ and the other headings in the excerpt of the notice of opposition reproduced in paragraph 6 above) — while the right that was expressly cited in opposition was ‘another sign’ and not a ‘mark’ — constituted an IT error on EUIPO’s part, recognised as such by EUIPO in its replies to the Court’s written questions.
35      At the hearing, EUIPO did not deny that those inappropriate section headings in the notice of opposition in the present case may have played a role in the Opposition Division, and then the Board of Appeal, developing its line of reasoning in respect of the applicant’s opposition as if it were based on a ‘non-registered trade mark’, whereas the opposition was, in fact, based on ‘another sign’ within the meaning of Article 8(4) of Regulation No 207/2009.
36      In any event, it should be noted that the considerations set out in paragraphs 32 to 34 above, relating to the nature of ‘another sign’ of the sign cited in opposition by the applicant on page 4 of the notice of opposition, are largely supported by the section headed ‘Grounds for the opposition’, on page 4 of the notice of opposition, as well as by the applicant’s observations of 13 March 2014 lodged in response to EUIPO’s letter of 24 March 2013.
37      Accordingly, in that section of the notice of opposition and in those subsequent observations, the purpose of which was, respectively, to help define and specify, where appropriate, the terms of the opposition, nowhere did the applicant rely on a non-registered trade mark, but always on ‘another sign’ composed exclusively of the prefix ‘520’. Nowhere did the applicant invoke that prefix as a non-registered trade mark. Nowhere did the applicant put forward the graphic representation provided in the opposition form and depicted in paragraph 6 above (namely, a barcode with the 13-digit row of numbers 5 200000 000009 underneath it) as an earlier non-registered trade mark either.
38      In the light of the foregoing, it is appropriate to conclude that, despite and beyond the reference, in the notice of opposition, to ‘the GS1 barcode and prefix’ and to the graphic representation of a barcode with the 13-digit sequence 5 200000 000009 underneath it, the opposition was, in actual fact, based on the trigraph ‘520’ as ‘another sign’.
39      Moreover, it should be noted that, at the beginning of the opposition proceedings, EUIPO had informed the applicant that its opposition was found admissible ‘at least in so far as it is based on the following earlier right: non-registered trade mark “520”’ (EUIPO letter to the applicant of 24 January 2013).
40      That assessment was correct, save, however, that the sign ‘520’ was invoked as ‘another sign’ within the meaning of Article 8(4) of Regulation No 207/2009, and not as a ‘non-registered trade mark’.
41      In addition, and even though the intervener’s opinion does not affect the objective identification of the sign cited in opposition, it can be noted that, in its observations in response of 20 May 2014, the intervener expressly and consistently took the same position as the applicant, namely that the opposition was based on the sign ‘520’. At best, the intervener stated that it was on an assumption on its part that it identified the earlier right cited in opposition by the applicant as being the trigraph ‘520’.
42      In its observations of 15 October 2014 the applicant, in essence, continued to develop its line of reasoning on the prefix ‘520’.
43      In the light of the foregoing considerations, the Opposition Division thus erred in stating in its decision of 28 November 2014, without any reference or even any statement of reasons in respect of the sign ‘520’, that the opposition was based on the ‘[alleged non-registered trade mark cited in opposition] used in Greece’. The Opposition Division made no reference to the other information set out in the notice of opposition.
44      On the basis of that statement, the Opposition Division found, without any difficulty, that the evidence produced by the applicant referred only to signs other than the alleged non-registered trade mark cited in opposition.
45      The Opposition Division accordingly rejected the opposition for lack of proof of use of the sign, without any statement of reasons on the issue of proof of use of the prefix ‘520’, even though that trigraph was precisely the sign identified by the examiner as an admissible basis for the opposition (see paragraphs 10 and 39 above) and was in fact the sign that was covered by the notice of opposition (see paragraphs 32 to 38 above) and by all the exchanges of views between the parties in the administrative procedure (see paragraphs 41 and 42 above).
46      In its appeal against the decision of the Opposition Division the applicant specifically criticised EUIPO’s approach.
47      It contended that proof of use had been extensively adduced, ‘because [the] opposition is not based on the [alleged non-registered trade mark cited in opposition] but on the distinctive sign ... “520”’, and that the Opposition Division had erred in its identification of the earlier sign cited in opposition. As a result of that error, the Opposition Division could not properly assess whether or not the evidence produced by the applicant met the requirement for ‘use in the course of trade of more than mere local significance’ laid down in Article 8(4) of Regulation No 207/2009.
48      In its observations of 11 June 2015, the intervener adopted the Opposition Division’s approach in respect of the sign relied on in support of the opposition, while developing a subsidiary line of argument with regard to the prefix ‘520’.
49      In its observations in reply dated 3 September 2015, the applicant maintained its position, referring, inter alia, to the examiner’s letter of 24 January 2013.
50      The Board of Appeal made several findings in the contested decision.
51      While it started, as a first step and exactly as the Opposition Division had done, by finding at the outset that the opposition was based on ‘the [alleged non-registered trade mark cited in opposition]’ (paragraph 3 of the contested decision), a finding that would suggest that the Board of Appeal had no problem identifying the sign cited in opposition, as a second step, the Board of Appeal appeared to dismiss the appeal on the ground that the opposition was based on ‘an unregistered trade mark [that] is neither clear nor precise’ (paragraph 10 of the contested decision).
52      Then, as a third step, while reiterating the view that ‘[the applicant] failed in identifying the earlier trade mark’ (first sentence of paragraph 15 of the contested decision), a finding that would normally lead to a straightforward rejection of the opposition, the Board of Appeal nevertheless went on to hold that ‘[the applicant] based its opposition on any EAN-13 barcode starting with the number “520”’ (first sentence of paragraph 18 of the contested decision).
53      Lastly, as a fourth step, the Board of Appeal stated that ‘even if [it] were ... to assume that the opposition was only based on the number “520”, [it] cannot see any use of an unregistered trade mark’ (paragraph 29 of the contested decision).
54      The foregoing considerations show that, while referring to the lack of clarity of the right cited in opposition, the Board of Appeal nevertheless proceeded, in essence, on the basis of two different hypotheses:
–        as its principal hypothesis, that of the alleged non-registered trade mark cited in opposition being construed as unique (see the second sentence of paragraph 3 and the last sentence of paragraph 16 of the contested decision) or as one example of a multitude of marks consisting of ‘any EAN-13 barcode starting with the number “520”’ (see paragraph 18 of the contested decision);
–        as an alternative hypothesis, that of the opposition being based exclusively on the non-registered trade mark ‘520’ (paragraph 29 of the contested decision).
55      It is apparent from the foregoing considerations that, although a correct analysis of the notice of opposition, read as a whole, required a finding that the opposition was based on ‘another sign’, namely ‘520’, taken in isolation, and while, in addition, that finding was supported by all the applicant’s subsequent observations before EUIPO, the Opposition Division failed to have regard to that circumstance. As for the Board of Appeal, which essentially followed the Opposition Division’s approach, it broached the issue of the sign ‘520’ only as an alternative to its main finding by which it rejected the opposition it had wrongly understood as based on the alleged non-registered trade mark cited in opposition.
56      Accordingly, it must be held that the findings in the contested decision concerning the alleged non-registered trade mark cited in opposition are irrelevant to the assessment of the legality of that decision, since they do not relate to the sign ‘520’ cited in opposition.
57      In its action for annulment, the applicant makes no arguments regarding those findings in the contested decision, save for recalling once more that its opposition is based on the sign ‘520’, ‘another sign’ within the meaning of Article 8(4) of Regulation No 207/2009. All the applicant’s arguments, logically, concern that sign.
58      Consequently, in essence, the Court should not take into account the Board of Appeal’s findings concerning the alleged non-registered trade mark cited in opposition and, therefore, the barcode corresponding to the number sequence 5 200000 000009 or its numerous variations.
59      Those findings, inter alia, in paragraphs 15 to 20 of the contested decision, are irrelevant on two counts. First, they concern a sign other than the sign ‘520’ cited in opposition, and thus fail to provide a response to the opposition put forward by the applicant. Secondly, and in any event, the applicant states in its appeal that it makes no claim in respect of the alleged mark/s whose assertion EUIPO attributes to the applicant.
60      In the end, and irrespective of EUIPO’s findings concerning an alleged non-registered trade mark that supposedly consists of a barcode and a 13-digit number, the only issue before the Court is whether the contested decision is lawful in the light of its findings on ‘520’ as ‘another sign’, and the outcome of the action turns solely on that question.
61      However, the only finding in the contested decision concerning the sign ‘520’ is in the Board of Appeal’s alternative assessment in paragraph 29 of that decision.
62      In that paragraph, after a first finding concerning the representation provided and the GTIN-13, the Board of Appeal explains, as a second finding, that ‘even if [it] were ... to assume that the opposition was only based on the number “520”, [it] cannot see any use of an unregistered trade mark’.
63      The fact remains that, in the second finding of paragraph 29 of the contested decision, the Board of Appeal perceives the sign ‘520’ as ‘an unregistered trade mark’ only and not as ‘another sign’. And it is according to that perception as a mark that the Board of Appeal declared that it cannot see any use of the sign ‘520’.
64      However, since the opposition is based on ‘another sign’ within the meaning of Article 8(4) of Regulation No 207/2009, and not on a mark, the finding in paragraph 29 of the contested decision that no use, as a mark, of the sign cited in opposition could be seen has no relation whatsoever to the opposition, which finding is therefore devoid of relevance.
65      Moreover, such a finding is pointless: indeed, finding a lack of use, as a mark, of a sign that was not put forward as such in the opposition is a statement of the obvious. It is pointless because the issue in this instance is not the use of a sign as a mark but the use of ‘another sign’, therefore, by definition, not as a mark (see, in respect of a sign that cannot be regarded as a mark for lack of use as such, judgment of 30 June 2009, Danjaq v OHIM — Mission Productions (Dr. No), T‑435/05, EU:T:2009:226, paragraph 40).
66      Accordingly, the assertion in paragraph 29 of the contested decision has no relation to the opposition.
67      That is also the case with paragraph 33 of the contested decision. Indeed, none of the parties disputes the fact that a barcode does not refer to trade mark use and that it is not a trade mark affixed to the product being sold but consists in technical information that is of no interest to the general public. The issue is whether the sign ‘520’, upon contractual and technical use, led professionals, economic operators that are consumers and buyers of products for logistics and traceability, especially Greek professionals, to perceive a connection with the GS1 system.
68      At the hearing, EUIPO indeed expressly agreed that, following the Court’s written questions and the investigations carried out in that context, it could no longer claim that the applicant had based its opposition on a mark. The applicant had based its opposition on another sign. EUIPO went on to state that, as a result, it could no longer maintain the line of reasoning in paragraphs 29 to 33 of the contested decision, which demanded proof of use of the sign cited in opposition construed as a mark and established that such proof was lacking.
69      These observations at the hearing that the statement of reasons in paragraphs 29 to 33 of the contested decision does not correspond to the actual opposition are correct. Had it properly assessed the scope of the opposition, it would have been the Board of Appeal’s task to examine the applicant’s arguments set out, inter alia, in paragraph 7 of the contested decision, in particular those concerning the use of the sign ‘520’ as ‘another sign’.
70      It follows from the foregoing considerations that the Board of Appeal erred in law in its assessment of the nature of the opposition and in its assessment of the arguments put forward before it by the applicant.
71      As a result of that error, the Board of Appeal failed to examine the conditions for the application of the relative ground under Article 8(4) of Regulation No 207/2009, in respect of ‘520’ as ‘another sign’. In particular, the Board of Appeal failed to examine the issue of use in the course of trade of more than mere local significance, the issue of the nature of a potential right over that sign, that of the proprietor of such right and whether the latter may prohibit the use of a subsequent mark.
72      It is not for the Court to put itself in EUIPO’s place in exercising the powers vested in EUIPO by Regulation No 207/2009 (judgments of 6 February 2013, Maharishi Foundation v OHIM (TRANSCENDENTAL MEDITATION), T‑412/11, not published, EU:T:2013:62, paragraph 101, and of 16 June 2015, Polytetra v OHIM — EI du Pont de Nemours (POLYTETRAFLON), T‑660/11, EU:T:2015:387, paragraph 34).
73      In those circumstances, it is appropriate to conclude that the contested decision is vitiated by an error in the identification of the sign cited in opposition and, consequently, by a failure to carry out a proper examination of the conditions for the application of Article 8(4) of Regulation No 207/2009.
74      However, the question arises as to whether the contested decision can be upheld on the basis of the alternative ground for refusal that the indication that the sign cited in opposition is protected for all the goods and services in Classes 1 to 45 is not sufficiently clear and precise (paragraphs 21 to 23 of the contested decision) and that the reference to those classes to designate the goods and services on which the opposition is based is equally insufficient (paragraphs 24 and 25 of the contested decision).
75      The applicant disputes the Board of Appeal’s finding, claiming that it is based on a manifest error of assessment.
76      It should be noted that Rule 15(2)(f) 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), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4) (now Article 2(2)(g) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96) (OJ 2017 L 205, p. 1), provides that ‘the notice of opposition shall contain the goods and services on which the opposition is based’ (judgment of 24 May 2016, El Corte Inglés v EUIPO — Grup Supeco Maxor (Supeco), T‑126/15, EU:T:2016:307, paragraphs 23 to 28).
77      According to the Rule 17(4) of Regulation No 2868/95 (now Article 5(5) of Delegated Regulation 2017/1430), read in conjunction with Rule 17(2) thereof, if the notice of opposition does not comply with the requirements in Rule 15(2)(f) of the regulation, EUIPO is to inform the opposing party accordingly and to invite it to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time limit expires, EUIPO is to reject the opposition as inadmissible.
78      In addition, Rule 15(3)(a) of Regulation No 2868/95 (now Article 2(2)(i) of Delegated Regulation 2017/1430) provides that ‘the notice of opposition may contain an indication of the goods and services against which the opposition is directed’ and that ‘in the absence of such an indication the opposition shall be considered to be directed against all of the goods and services of the opposed Community trade mark application’.
79      With regard, in the first place, to the Board of Appeal’s finding that the indication that the sign cited in opposition is protected for all the goods and services in Classes 1 to 45 is not sufficiently clear and precise, it should be noted that that finding does not correspond to the requirements of Regulation No 2868/95 as amended. Indeed, Regulation No 2868/95 does not require the indication of the goods and services in respect of which the sign cited in opposition is protected, but only that of the goods and services on which the opposition is based (Rule 15(2)(f) of Regulation No 2868/95).
80      In addition, the present case differs from the case decided by the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361, paragraph 49), mentioned in paragraph 22 of the contested decision.
81      Indeed, the issue covered by the case that gave rise to the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), was not that of opposition to a trade mark application but a trade mark application, thus a procedure seeking to have an intellectual property right granted in respect of a sign and of specific goods and services. The Court of Justice stated that Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) should be interpreted as meaning that it required the goods and services for which the protection of the trade mark was sought to be identified by the applicant for that mark with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark (judgement of 19 June 2012, Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, point 1 of the operative part). In the present case, the applicant did not seek registration of a mark but opposed a trade mark application. Such an opposition is not designed to have an intellectual property right granted to the opposing party in respect of a sign and of particular goods and services, nor does it result in such a grant. Its aim is merely the refusal of the trade mark protection sought by a third party for all or part of the goods and services mentioned in that third party’s trade mark application.
82      It follows from the foregoing that the Board of Appeal’s first finding is based on a false premiss and on a judgment that has no relation to the present case.
83      With regard, in the second place, to the Board of Appeal’s finding that the reference to Classes 1 to 45 to designate the goods and services on which the opposition is based is insufficient, it should be rejected for the reasons set out below.
84      In the present case, the notice of opposition contained, in respect of the goods and services on which the opposition is based, the following indication: ‘Classes 1 — 45’. In addition, the notice of opposition contained, under the section headed ‘Explanation of grounds [for the opposition] and other remarks’, a description of the scope of use of the sign ‘520’ cited in opposition. According to that description, the sign ‘520’ was — with the sign ‘521’ — the GS1 prefix reserved by GS1 AISBL for Greece. It was also apparent from that description that the GS1 prefix formed the first two or three digits of the GTIN of any product and that the GS1 barcodes, which incorporate the GTIN, were used across all industry sectors, including retail, manufacturing and health care.
85      The information provided by the applicant in the application notice thus showed that the applicant intended to base its opposition to the trade mark application on ‘another sign’ used in the identification of all types of goods and services across all sectors. The identification and classification of the goods and services assumed by barcode systems, including the GS1 system, are in fact operations that may be carried out in the most diverse types of economic activities. The sign ‘520’ may thus be used in the broadest way possible as ‘another sign’.
86      Accordingly, it was not illogical, in that context and given the particular nature of the sign cited in opposition, for the applicant to refer, in the broadest way possible, to the goods and services in Classes 1 to 45, that is to say, to all goods and services.
87      Moreover, that reference was in response to the claim, itself also very broad, with regard to the goods and services of the mark applied for, a claim that extended far beyond the goods and services for stock management and product monitoring using barcodes and covered almost all marketable goods and services.
88      In fact, EUIPO accepted the definition of the goods and services cited in opposition as meeting the requirements of Regulation No 2868/95. Indeed, following the opposition, EUIPO failed to send a letter to the applicant under Rule 17(4) of Regulation No 2868/95, as it should have done if that definition infringed Rule 15(2)(f) of the regulation. Instead, by letter of 24 January 2013, pursuant to Rule 18(1) of Regulation No 2868/95 (now Article 6(1) of Delegated Regulation 2017/1430), EUIPO informed the applicant that its opposition was found admissible at least in so far as it was based on the earlier right ‘non-registered trade mark “520”’.
89      In its statement of case before the Opposition Division, the intervener, admittedly, claimed that it was not possible to compare the goods and services covered by the mark applied for and those covered by the earlier right cited in opposition, since the applicant had not explicitly mentioned the goods and services covered by the earlier right.
90      Nevertheless, the intervener’s criticism concerning that alleged impossibility to compare, claiming the absence of an explicit mention of the goods and services covered by the earlier right, was, in the context of the present case, purely formal and unsubstantiated.
91      Indeed, given that, on the one hand, the goods and services invoked under the sign ‘520’ cited in opposition, namely all the goods and services in Classes 1 to 45, encompassed the goods and services mentioned in the trade mark application and, on the other hand, the opposition was lodged against all the goods and services covered by the trade mark application, the definition of the scope of the comparison of the goods and services posed no difficulty.
92      That scope corresponded to the goods and services listed in the trade mark application. Accordingly, and in contrast to the intervener’s — unsubstantiated — claim, it was possible to compare the goods and services.
93      Moreover, it should be noted that the intervener’s contention seems to contradict its assertion, in the same statement of case, that ‘the prefix “520” may be used by any company doing business in Greece for any product or service’.
94      The Opposition Division did not endorse the intervener’s argument nor did it find any difficulty in basing the opposition on all the goods and services in Classes 1 to 45.
95      By contrast, however, the Board of Appeal endorsed the intervener’s argument as an additional ground to reject the opposition.
96      The intervener maintains that position before the Court, arguing again that the indication of the goods and services on which the opposition was based did not allow ‘the economic operators to determine the extent of protection sought’. However, in essence, that argument has already been examined and rebutted. On the one hand, the opposition was not designed to obtain an intellectual property right that may be opposed by economic operators, but simply to have a third party’s trade mark application rejected for the goods and services mentioned in that application (see paragraph 81 above). On the other hand, given the terms of the opposition, its scope was precisely limited to the goods and services listed with regard to the mark applied for (see paragraphs 90 to 93 above).
97      Moreover, it should be observed that the present case does not pose any of the difficulties encountered in the case mentioned before the Court by EUIPO and decided by judgment of 24 May 2016, Supeco (T‑126/15, EU:T:2016:307).
98      The applicant in that case, the opponent to a trade mark application, sought, in essence, to have its opposition examined in respect of certain services (‘auctioneering’ and ‘rental of vending machines’) that were not included in the list of goods and services relied upon as the basis of the opposition (‘advertising, business management, business administration, office functions’). The Court logically rejected that claim, finding, in essence, that the Board of Appeal could not be required to take into consideration, for the purposes of its examination of the opposition, goods and services that were not mentioned in the notice of opposition as the basis of the opposition (judgment of 24 May 2016, Supeco, T‑126/15, EU:T:2016:307, paragraph 32). The problem facing EUIPO in Supeco was therefore different from that in the present case.
99      It is apparent from the foregoing considerations that neither the ground in the contested decision, alleging the insufficient identification of the goods and services on which the opposition was based, nor the arguments put forward by the intervener and EUIPO in support of that ground, are convincing in the circumstances of the present case.
100    The first part of the first plea for annulment is therefore well founded.
The second part, alleging an error by the Board of Appeal concerning proof of use of an earlier sign in the course of trade which is of more than mere local significance
101    In consequence, the second part of the first plea for annulment is also well founded. The misperception as a ‘mark’ of the sign cited in opposition resulted in EUIPO’s failure to assess the evidence adduced by the applicant regarding the use of the sign ‘520’ as ‘another sign’.
102    In fact, EUIPO has admitted as much before the Court. The contested decision did not examine whether the earlier right had been used in the course of trade with more than mere local significance. The Board of Appeal rejected the opposition on other grounds.
103    In conclusion, the first plea for annulment is well founded.
The second plea in law, alleging infringement of Articles 75 and 76 of Regulation No 207/2009
104    By this plea, the applicant criticises the Board of Appeal for failing to take into account certain documents lodged before EUIPO, without providing any reasons for so doing.
105    EUIPO’s explanations before the Court show that the failure to examine those documents was the direct consequence of EUIPO’s incorrect assessment of the sign cited in opposition. By wrongly perceiving the sign cited in opposition as a trade mark, EUIPO rejected the opposition on preliminary considerations that resulted in its failure to examine the documents produced by the applicant, even if only to assess their admissibility under Article 76 of Regulation No 207/2009.
106    It follows that the second plea for annulment is well founded.
Overall conclusion
107    In the light of all the foregoing considerations, the contested decision must be annulled.
Costs
108    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. Since EUIPO has been unsuccessful, it must be ordered to pay the costs, as applied for by the applicant.
109    Furthermore, under Article 138(3) of the Rules of Procedure, the Court may order an intervener other than those referred to in paragraphs 1 and 2 of that article is to bear its own costs. In the present case, it is appropriate to decide that the intervener shall bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Annuls the Decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 June 2016 (Case R 238/2015-4);
2.      Orders EUIPO to bear its own costs and pay those incurred by Ellinikos Syndesmos Epicheiriseon gia ti Diacheirisi ton Diethnon Protypon GS1; and
3.      Orders 520 Barcode Hellas — AE Diacheirisis Diethnon Protypon kai Parochis Symvouleutikon Ypiresion to bear its own costs.
Collins
Kancheva
Passer
Delivered in open court in Luxembourg on 3 October 2017.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.