Case T‑240/13

(publication by extracts)

Aldi Einkauf GmbH & Co. OHG

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛Community trade mark — Opposition proceedings — Application for Community figurative mark Alifoods — Earlier international and Community word marks ALDI — Relative ground for refusal — No likelihood of confusion — No similarity between the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 — Rule 19(2)(a)(ii) of Regulation (EC) No 2868/95’

Summary — Judgment of the General Court (Ninth Chamber), 26 November 2014

Community trade mark — Observations of third parties and opposition — Facts, evidence and observations submitted in support of the opposition — Proof of the existence, validity and scope of the protection of an earlier international trade mark — Extract from the OHIM database concerning an international registration designating the Community — Not included

(Council Regulation No 207/2009, Art. 152; Commission Regulation No 2868/95, Art. 1, Rule 19(2)(a)(ii))

Since the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is not responsible for managing international registrations and is not the administration by which the trade mark was registered, for the purposes of Rule 19(2)(a)(ii) of Regulation No 2868/95, implementing Regulation No 40/94 on the Community trade mark, an extract from OHIM’s database produced by the opposing party does not constitute proof of the existence, validity and scope of protection of an international trade mark.

That assessment is borne out by a teleological interpretation of Article 152 of Regulation No 207/2009 on the Community trade mark. Pursuant thereto, publication relating to an international registration designating the European Community does not incorporate a list of the goods or services in respect of which protection is claimed. Such lists are not translated by OHIM and, accordingly, are only available in the three languages in which WIPO publishes international registrations, namely English, Spanish and French.

If the information published by OHIM were regarded as sufficient proof of the existence, validity and scope of protection of the international trade mark at issue, and also as satisfactorily proving that, in that regard, the international registration designating the Community is treated as a Community trade mark, it would mean that the international registration received preferential treatment. Since, in all opposition proceedings — including those conducted in a language which is not among those in which WIPO publishes international registrations — documents proving the existence of earlier rights must be available in the language of the proceedings, international registrations designating the Community would be exempted in that respect in cases where the language of the opposition proceedings was one of the other two official languages of OHIM, that is to say, German or Italian. In such cases, the list of goods or services in respect of which registration is sought would not in fact be available in the language of proceedings. However, neither Regulation No 207/2009 nor Regulation No 2868/95 provides for such preferential treatment.

Furthermore, if the information published by OHIM were regarded as sufficient proof of the existence, validity and scope of protection of the trade mark at issue only in opposition proceedings in which the language of the proceedings is also one of the three languages in which WIPO publishes international registrations, not only would such a situation be contrary to the wording and interpretation of the regulation in question, but it would create, in legal terms, uncertainty and inequality.

(see paras 28-31)