JUDGMENT OF THE GENERAL COURT (First Chamber)

29 May 2018 ( *1 )

(EU trade mark — Invalidity proceedings — EU word mark SHERPA — Earlier national word mark SHERPA — Declaration of partial invalidity — Subject matter of the proceedings before the Board of Appeal — Genuine use of the trade mark — Article 42(2) of Regulation (EC) No 207/2009 (now Article 47(2) of Regulation (EU) 2017/1001) — Article 53(1)(a) of Regulation No 207/2009 (now Article 60(2)(a) of Regulation 2017/1001) — Relative ground for refusal — Likelihood of confusion — Article 8(1)(a) and (b) of Regulation No 207/2009 (now Article 8(1)(a) and (b) of Regulation 2017/1001))

In Case T‑577/15,

Xabier Uribe-Etxebarría Jiménez, residing in Erandio (Spain), represented by M. Esteve Sanz, 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

Núcleo de comunicaciones y control, SL, established in Madrid (Spain), represented by P. López Ronda, G. Macías Bonilla, G. Marín Raigal and E. Armero Lavie, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 17 July 2015 (Case R 1135/2014-2), relating to invalidity proceedings between Núcleo de comunicaciones y control and Mr Uribe-Etxebarría Jiménez,

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová, President, P. Nihoul (Rapporteur) and J. Svenningsen, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Registry of the General Court on 1 October 2015,

having regard to the response of EUIPO lodged at the Court Registry on 14 January 2016,

having regard to the response of the intervener lodged at the Court Registry on 12 February 2016,

having regard to the reassignment of the case to the First Chamber and to a new Judge-Rapporteur,

having regard to the written questions put by the Court to the applicant and to EUIPO and their answers to those questions lodged at the Court Registry on 16 and 15 December 2016 respectively,

further to the hearing on 28 November 2017,

gives the following

Judgment

Background to the dispute

1 On 26 May 2011, the applicant, Mr Xabier Uribe-Etxebarría Jiménez, 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 The trade mark in respect of which registration was sought is the word sign SHERPA.

3 The goods and services in respect of which registration was sought fall within, inter alia, Classes 9 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. In the trade mark application, those goods and services correspond, for each of those classes, to the following description: – Class 9: ‘Handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; MP3 and other digital format audio and video players; hand held computers, personal digital assistants, electronic organisers, electronic notepads; magnetic data carriers; telephones, mobile phones, computer gaming machines, videophones, cameras; radio sets; radio transmitters; camcorders; computer hardware and software; computer software and firmware, namely, operating system programs, data synchronisation programs, and application development tool programs for personal and handheld computers; character recognition software, telephony management software, software for mobile phones; telephone-based information retrieval software and hardware; software for the redirection of messages; games software; pre-recorded computer programs for personal information management; database management software; electronic mail and messaging software; database synchronisation software; computer programs for accessing, browsing and searching online databases; computer hardware and software for providing integrated telephone communication with computerised global information networks; parts and accessories for handheld and mobile digital electronic devices; parts and accessories for mobile phones; bags for mobile telephones; cases adapted for mobile phones; mobile telephone cases made of leather or imitation of leather; mobile telephone covers made of cloth or textile materials; batteries and cells; rechargeable batteries; chargers; chargers for electrical batteries; headphones; stereo headphones; in-ear headphones; stereo speakers; loudspeakers; audio speakers for home; personal stereo speaker apparatus; microphones; car audio apparatus; apparatus for connecting and charging portable and handheld digital electronic devices; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; parts and fittings for all the aforementioned goods, except apparatus and instruments for selecting television programmes and other programmes, expressly not including goods of all kinds for use with military vehicles and all-terrain vehicles (whether or not for military use) and goods of all kinds for military use’; – Class 42: ‘Scientific services; industrial analysis and research services; design and development of computer hardware and software; multimedia and audiovisual software consulting services; providing search engines for obtaining data via communications networks; application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing temporary use of online non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs; providing online facilities, via a global computer network, to enable users to program the scheduling of audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs as they will be aired; providing search engines for obtaining data on a global computer network; operating search engines; computer consulting and support services for scanning information into computer discs, all the aforesaid services in Class 42 not relating to the providing of access (computer software) to brokerage platforms for performing and carrying out securities transactions and transactions with other tradeable financial instruments (other than the providing of internet access)’.

4 The trade mark application was published in Community Trade Marks Bulletin No 135/2011 of 20 July 2011, and the word sign SHERPA was registered as a European Union trade mark on 27 April 2012 under No 10000339.

5 On 23 November 2012, the intervener, Núcleo de comunicaciones y control, SL, filed an application with EUIPO for a declaration of invalidity under Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001) read in conjunction with Article 8(1)(a) and (b) of that regulation (now Article 8(1)(a) and (b) of Regulation 2017/1001).

6 That application concerned all of the goods and services covered by the contested trade mark and was based on the existence of an earlier mark, namely, the Spanish word mark SHERPA, which had been registered on 22 March 1999 under No 2187342, for goods in Class 9 corresponding to the following description: ‘Systems for the processing of information, in particular, systems for supervision and checking’.

7 Before the Cancellation Division, the applicant requested that the intervener prove genuine use of the earlier mark. That request was based on Article 57(2) and (3) of Regulation No 207/2009 (now Article 64(2) and (3) of Regulation 2017/1001), according to which an EU trade mark proprietor may request proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier mark has been put to genuine use in the territory in which it is protected.

8 Following that request, the intervener submitted documents intended to prove that genuine use.

9 On 31 July 2013, the applicant amended his trade mark application by introducing the following restriction at the end of the list of goods in Class 9 (‘the restriction’): ‘expressly not including systems for supervision and checking and systems for the processing of information intended for supervision and checking’.

10 In its observations of 11 October 2013, the intervener indicated to EUIPO that it would maintain its application for a declaration of invalidity of the contested trade mark despite the restriction.

11 On 27 February 2014, the Cancellation Division of EUIPO gave a decision partially upholding the intervener’s application for a declaration of invalidity. In that decision, it considered that the evidence submitted by the intervener established use of the earlier mark only in relation to systems for the processing of information and systems for supervision and checking in industrial processes.

12 On 25 April 2014, 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 Cancellation Division.

13 In the context of that procedure, on 27 June 2014, the applicant lodged a statement setting out the grounds of his appeal. On the same day, he submitted another document to EUIPO, entitled ‘Additional statement setting out the grounds of appeal’. Those two documents were lodged before the expiry of the time limit laid down for that purpose.

14 By decision of 17 July 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. Given that neither party had stated that it disagreed with the assessment carried out by the Cancellation Division regarding the proof of genuine use of the earlier trade mark, the Board’s examination was restricted to an analysis of the application of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(a) and (b) of that regulation.

15 In that context, the Board of Appeal defined the public to be taken into account for the assessment of the trade marks. According to the Board, that definition depended on the goods and services concerned. The relevant public for the goods in Class 9 was both the general public and a specialised public, but it was only a specialised public for the services in Class 42 (paragraph 26 of the contested decision).

16 As regards the comparison of the goods and services, the Board of Appeal confirmed the Cancellation Division’s assessment according to which some of the contested goods in Class 9 were identical to the Class 9 goods covered by the earlier mark (paragraphs 32, 33 and 34 of the contested decision). Furthermore, like the Cancellation Division, the Board considered that some of the other Class 9 goods covered by the contested trade mark and some of the Class 42 services covered by that same trade mark were similar to the goods covered by the earlier mark (paragraphs 31, 36 and 37 of the contested decision).

17 As regards the comparison of the signs, the Board of Appeal agreed with the Cancellation Division’s assessment, which was not disputed by the parties, concluding that they were identical (paragraph 39 of the contested decision).

18 In the light of the foregoing, the Board of Appeal found that there was a double identity, namely, an identity between the signs and an identity between some of the goods at issue. It also considered that there was a likelihood of confusion between the trade marks at issue for some of the other goods and for some services covered by the contested trade mark and deemed to be similar (paragraphs 40 to 47 of the contested decision).

Forms of order sought by the parties

19 The applicant claims that the Court should: – annul the contested decision; – order EUIPO and, if appropriate, the intervener to pay the costs, including those incurred for the purposes of the proceedings before the Board of Appeal.

20 EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs.

21 The intervener contends that the Court should: – dismiss the action; – uphold the contested decision; – order the applicant to pay the costs.

Law

22 As a preliminary point, it should be noted that, by its second head of claim, the intervener asks the Court to deliver a judgment upholding the contested decision.

23 In that regard, it should be pointed out that, given that ‘upholding the contested decision’ is tantamount to dismissing the action, that head of claim seeks, in essence, that the action be dismissed, and is thus indissociable from the intervener’s first head of claim (see judgment of 11 July 2017, Dogg Label v EUIPO — Chemoul (JAPRAG), T‑406/16, not published, EU:T:2017:482, paragraph 19 and the case-law cited).

24 For his part, the applicant puts forward three pleas in law in support of his action for annulment alleging, first, infringement of Article 63(1), Article 64(1) and Article 76(1) of Regulation No 207/2009 (now, respectively, Article 70(1), Article 71(1) and Article 95(1) of Regulation 2017/1001); secondly, infringement of Article 57(2) and (3) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation (now Article 47(2) and (3) of Regulation 2017/1001) and with Rule 22 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) (now Article 10 of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1); and, thirdly, infringement of Article 8(1)(a) and (b) of Regulation No 207/2009.

The first plea in law, concerning the refusal to examine the genuine use of the earlier mark

25 By his first plea, the applicant criticises the Board of Appeal for failing to assess whether the earlier mark had been put to genuine use, as it should have done under Article 63(1), Article 64(1) and Article 76(1) of Regulation No 207/2009.

26 That plea is based on two complaints.

The first complaint, concerning the failure to examine genuine use despite a request to that effect

27 By his first complaint, the applicant submits that the Board of Appeal should have examined genuine use because he had expressly asked it to do so in his statement setting out the grounds of appeal.

28 EUIPO and the intervener dispute the merits of that complaint.

29 As a preliminary point, it should be recalled that, in the contested decision, the Board of Appeal did not carry out a review as to whether the Cancellation Division’s assessment concerning the proof of genuine use of the earlier mark was well founded because that assessment had not been disputed before it (see paragraph 14 above).

30 Moreover, it should also be noted that the applicant submitted two statements to the Board of Appeal in support of his appeal.

31 In the first statement, he agreed with the Cancellation Division’s assessment of the genuine use of the earlier mark.

32 In the second statement, which he submitted as ‘additional’ to the first, the applicant stated, inter alia, ‘that it [was] in [his] interests … for the Board of Appeal to re-examine, as it [was] required to, the proof of use submitted by the applicant for invalidity and disputed in respect of the earlier registered trade mark of which it is the proprietor and on which its action for invalidity [was] based, because it [would] thus be confirmed that there [had been] no evidence of sufficient use of the trade mark to support the action’ and that, ‘in the alternative, it [would] also be confirmed that the trade mark [had] been used only in a very limited way for a very specific product which [had] nothing to do with the product and the services covered by the applicant’s trade mark’ (pages 2 and 3 of the second statement).

33 Having thus stated his intention to criticise the Cancellation Division’s assessment of the genuine use of the earlier mark, the applicant also put forward various arguments against that assessment in that second statement (pages 3 to 8 of the second statement).

34 On the basis of those arguments, he stated that, in his opinion, ‘it cannot be … concluded that the existence of genuine use of the [earlier] mark [had] been established’ (page 8 of the second statement).

35 First, it is clear from that submission, as stated by EUIPO, that the position which the applicant adopted, in his second statement, on the issue of genuine use of the earlier mark was contrary to the position he had taken on the same issue in his first statement, even though the second document was submitted only as ‘additional’ to the first, an adjective which indicated to EUIPO that the information in the second statement was being provided merely to support the positions adopted in the first statement.

36 Secondly, it appears that the ‘additional statement’ submitted by the applicant contains two mutually incompatible passages, one of which disputes the Cancellation Division’s assessment, while the other accepts it. On the one hand, on pages 2 to 8 of that statement, the applicant criticised the position taken by the Cancellation Division on the issue of genuine use, as noted in paragraphs 32 to 34 above. On the other, on page 8 of that statement, he stated that ‘as … indicated in [his] previous statement, [he was] therefore in agreement with the Cancellation Division in so far as it state[d] that “the proof of use submitted by the applicant [did] not show that the trade mark [had] been used for the whole of this broad category of goods, but rather it prove[d] use of the earlier trade mark only in relation to systems for the processing of information and systems for supervision and checking in industrial processes”’.

37 In such a situation, the Board of Appeal would be substituting itself for the applicant if it made a choice between the contradictory positions taken by that applicant and if it determined, by means of inferences, the grounds on which the application is based. According to the case-law, it is for the applicant to establish the framework of the dispute by setting out precisely and coherently the requests he is submitting and the arguments he is putting forward. The documents submitted by the applicant must enable the Board of Appeal to understand why the applicant requests the Board to annul or alter a decision (see, to that effect, judgments of 28 April 2010, Claro v OHMI — Telefónica (Claro), T‑225/09, not published, EU:T:2010:169, paragraph 28, and of 16 May 2011, Atlas Transport v OHMI — Atlas Air (ATLAS), T‑145/08, EU:T:2011:213, paragraph 41).

38 At the hearing before the Court, the applicant indicated that the first statement contained his main arguments, but that it had to be considered to have become secondary following the submission of the second statement in so far as, even though the latter was submitted as additional to the first, that second statement significantly changed the applicant’s defence, with an issue not previously addressed becoming the focus of the criticisms that the applicant now levelled against the contested decision.

39 In that regard, it should be noted that, as indicated at the hearing by EUIPO, with the support of the intervener on this point, the statements submitted by parties before EUIPO must be intelligible in themselves, in accordance with the case-law cited in paragraph 37 above. In this case, the documents submitted by the applicant did not satisfy that requirement at the time of their submission, as indicated in paragraphs 35 to 38 above.

40 In those circumstances, the Board of Appeal was justified in rejecting the second statement submitted by the applicant in the light of the contradiction in that document and taking into account the fact that that statement was presented as being merely additional, the applicant having stated that the main arguments were set out in the first statement.

41 For those reasons, the first complaint put forward by the applicant must be rejected as unfounded.

The second complaint, concerning the continuity in terms of functions between the departments of EUIPO and the devolutive effect of appeals

42 By his second complaint, the applicant submits that the Board of Appeal should have examined whether the earlier mark had been put to genuine use without there being any need for a request to be made to that effect. According to him, that examination should have been carried out, irrespective of such a request, by virtue of the principle of the continuity in terms of functions between the departments of EUIPO and of the devolutive effect of appeals brought in that context. It follows from that principle and that effect that the Boards of Appeal must base their decisions on all of the matters of fact and of law raised by the parties at first instance.

43 EUIPO and the intervener dispute the applicant’s arguments.

44 In that regard, it should be noted that, according to the case-law, a request for proof of genuine use of an earlier mark adds to the invalidity proceedings the specific and preliminary issue of genuine use of the earlier mark, which, once raised by the trade mark proprietor, must be settled before a decision is taken on the application for a declaration of invalidity proper (judgment of 13 September 2010, Inditex v OHMI — Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 31).

45 The specific and preliminary character of that issue follows from the fact that the assessment of genuine use leads to a determination whether, for the purposes of the examination of the application for a declaration of invalidity, the earlier trade mark can be deemed to be registered in respect of the goods or services in question. That assessment does not, therefore, fall within the context of the examination of the application for a declaration of invalidity proper, alleging the existence of a likelihood of confusion with that trade mark (see, to that effect, judgment of 13 September 2010, OFTEN, T‑292/08, EU:T:2010:399, paragraph 33).

46 It follows that, where the issue of genuine use is not expressly raised before the Board of Appeal, it does not constitute a matter of law which the Board of Appeal must necessarily examine in order to settle the dispute before it. In those circumstances, that issue must be regarded as not forming part of the subject matter of the dispute before the Board of Appeal (see judgment of 12 March 2014, El Corte Inglés v OHMI — Technisynthese (BTS), T‑592/10, not published, EU:T:2014:117, paragraph 21 and the case-law cited).

47 It follows that, contrary to what the applicant claims, the continuity in terms of functions between the departments of EUIPO and the devolutive effect of appeals brought before the Board of Appeal do not mean that issues relating to genuine use of the earlier mark will automatically be brought before the Board of Appeal where those issues have not been expressly raised before it by the applicant.

48 Both the second complaint of the first plea, and, in view of the response to the first complaint, the first plea in its entirety, must therefore be rejected.

The second plea in law, alleging an error of assessment in the analysis of the evidence to demonstrate genuine use of the earlier mark

49 By his second plea, the applicant submits that the Cancellation Division’s decision is vitiated by an error of assessment as regards the use of the earlier mark, in breach of Article 42(2) of Regulation No 207/2009 and Rule 22 of Regulation No 2868/95. In response to a question asked by the Court at the hearing, the applicant stated that that plea also alleged infringement of Article 57(2) and (3) of Regulation No 207/2009, which concerns the submission of proof of genuine use of the earlier mark in the context of invalidity proceedings.

50 In his written pleadings, the applicant states that that plea has been raised in the alternative and should be assessed by the Court only if it rejects the first plea examined above. Since that first plea has been rejected, in paragraph 48 above, it is necessary to examine the second plea. In the context of that alternative plea, the applicant analyses various documents provided by the intervener during the proceedings before the Cancellation Division and asks the Court to find that those documents do not have the required probative value to establish that the earlier mark has been put to genuine use.

51 EUIPO and the intervener dispute the admissibility and the merits of the plea.

52 In that regard, it should be recalled that, according to the case-law, actions brought before the General Court concerning trade marks seek review of the legality of decisions of the Boards of Appeal of EUIPO. In that context, the Court cannot re-evaluate the factual circumstances in the light of evidence which has been produced for the first time before it (see judgment of 16 April 2015, Matratzen Concord v OHMI — KBT (ARKTIS), T‑258/13, not published, EU:T:2015:207, paragraph 46 and the case-law cited).

53 In the present case, it has been established that the Board of Appeal did not carry out an independent and comprehensive examination of the evidence submitted by the intervener to demonstrate genuine use of the earlier mark, and that it was not required to do so in the absence of a clear request from the applicant to that effect.

54 It follows that, in accordance with the case-law cited in paragraph 52 above, that evidence cannot be examined by the Court and that the second plea must be rejected.

The third plea in law, alleging errors in the assessment of the identity or similarity of the goods and services

55 By his third plea, alleging infringement of Article 8(1)(a) and (b) of Regulation No 207/2009, the applicant claims that the Board of Appeal committed errors in its assessment of the identity or similarity between the goods and services covered by the trade marks at issue.

56 In his pleadings, the applicant states that that plea has been raised in the further alternative and must be examined if the contested decision is not annulled on the basis of the first and second pleas. Since the first and second pleas have been rejected, it is necessary to examine the third plea by examining, as a preliminary point, the observations made by the Board of Appeal concerning the relevant public and the comparison of the signs.

The relevant public

57 In order to assess the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, it being understood, first, that that consumer is reasonably well informed and reasonably observant and circumspect, and second, that his level of attention may vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHMI — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

58 In paragraph 26 of the contested decision, the Board of Appeal found that the relevant public for the goods in Class 9 included both the general public and a specialised public consisting of undertakings with specific expertise or professional experience. In the same paragraph, it noted that the services in Class 42 were intended for a public with scientific and technical expertise, whose level of attention was higher. As those findings were not called into question by the applicant and were well founded, they can be confirmed by the Court.

59 Moreover, in paragraph 25 of the contested decision, the Board of Appeal considered that the relevant territory was that of the European Union, and the applicant did not dispute this. In response to a question asked during the hearing, EUIPO acknowledged its error in so defining the relevant territory, but argued that that error had no bearing on the legality of the contested decision. The applicant submitted that the error could affect the assessment of the conceptual similarity of the trade marks at issue. In that regard, it should be noted that, although the Board of Appeal made an error since, given that the earlier mark was a Spanish mark, the relevant territory to take into account was that of Spain, that error had no bearing on the legality of the contested decision. Indeed, the error is not capable of affecting the assessment of the visual, aural or even conceptual similarity of the trade marks at issue, since the marks are identical, or the assessment of the similarity of the goods and services at issue, as this does not appear to be dependent on what the relevant territory is, which, moreover, has not been argued in the present case.

The comparison of the signs

60 In the present case, the Board of Appeal, in paragraph 39 of the contested decision, considered that the signs at issue were identical, both being composed exclusively of the term ‘sherpa’. Since that finding is clear and has not been disputed by the applicant, it can be confirmed.

The comparison of the goods and services

– The first complaint, concerning the assessment of the similarity between the goods in Class 9 covered by the earlier mark and the services in Class 42 covered by the contested mark

61 In the contested decision, the Board of Appeal considered that some of the Class 42 services mentioned in the application for registration submitted by the applicant were similar to the Class 9 goods covered by the earlier mark.

62 The applicant disputes that finding for the following services: ‘multimedia and audiovisual software consulting services; providing search engines for obtaining data via communications networks; providing search engines for obtaining data on a global computer network’.

63 The finding of similarity made by the Board of Appeal is also criticised by the applicant for the following services: ‘application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing temporary use of online non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs; providing online facilities, via a global computer network, to enable users to program the scheduling of audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs as they will be aired’.

64 According to the applicant, those services are not complementary or similar to the software with industrial functions sold under the earlier mark, because, unlike the latter, the former can be used by only one end-user at a time.

65 In that regard, it should be noted that, as found by the Board of Appeal, the first set of services, referred to in paragraph 62 above, are complementary to the goods covered by the earlier mark, in respect of which genuine use has been established.

66 Their complementarity lies in the fact that the goods covered by the earlier mark require, for their use, the use of ‘software’ and ‘applications’, which are referred to by the Board of Appeal. Similarly, that ‘software’ and those ‘applications’ cannot be provided to the users without the products which enable their use, such as the supervision and checking systems sold by the intervener under the earlier mark the use of which has been established.

67 That assessment is not affected by the use of the goods covered by the earlier mark in industrial processes, since the term ‘industrial’ means only that, when used in an industrial context, the supervision and checking products covered by that trade mark may have a target public consisting of a significant number of users and be used as part of a process similar to that of mass production.

68 However, the existence of such complementarity between those goods sold under the earlier mark and the services covered by the contested mark does not preclude their possible similarity, given that, according to the case-law, similarity must be assessed taking into account all the relevant factors which characterise the relationship between the goods and services concerned, including their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see judgment of 11 July 2007, El Corte Inglés v OHMI — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

69 Therefore, the complementarity between the goods and services, and in particular the fact that they are used in combination or association with one another, can lead the relevant public to perceive those goods and services as being similar.

70 In the present case, the Board of Appeal’s finding of similarity based on complementarity must be confirmed in view of the complex nature of the goods and services concerned and, in particular, of the difficulty which even a specialised public would have in separating the equipment from the software or application, given that it is necessary for the two of them to function together.

71 The second set of services, referred to in paragraph 63 above, may be considered as being similar even if there is a low degree of similarity with the goods covered by the earlier mark, as found by the Board of Appeal, in so far as those services can be provided by the same undertakings and are intended for the same public.

72 For those reasons, the Board of Appeal was justified in finding that the services concerned were similar to the goods covered by the earlier mark, in respect of which genuine use was established.

– The second complaint, concerning the assessment of the identity or similarity between the goods in Class 9 covered by the earlier mark and the goods in Class 9 covered by the contested mark

73 As regards the comparison of the goods in Class 9, the Board of Appeal found, in the contested decision, that the following goods, which are covered by the contested trade mark, were identical to the goods covered by the earlier mark: ‘computer hardware and software; computer software and firmware, namely, operating system programs, data synchronisation programs, and application development tool programs for personal and handheld computers; character recognition software, telephony management software, software for mobile phones; telephone-based information retrieval software and hardware; software for the redirection of messages; pre-recorded computer programs for personal information management; database management software; electronic mail and messaging software; database synchronisation software; computer programs for accessing, browsing and searching online databases; computer hardware and software for providing integrated telephone communication with computerised global information networks’.

74 Moreover, the Board of Appeal found that other goods, identified below and also in Class 9, were similar to the Class 9 goods covered by the earlier mark: ‘handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; MP3 and other digital format audio and video players; hand held computers, personal digital assistants, electronic organisers, electronic notepads; magnetic data carriers; telephones, mobile phones, videophones, cameras; radio sets; radio transmitters; camcorders; parts and accessories for portable and mobile digital electronic devices; parts and accessories for mobile telephones; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; parts and fittings for all the aforementioned goods, except apparatus and instruments for selecting television programmes and other programmes, expressly not including goods of all kinds for use with military vehicles and all-terrain vehicles (whether or not for military use) and goods of all kinds for military use; expressly not including systems for supervision and checking and systems for the processing of information intended for supervision and checking’.

75 As regards those various goods, the applicant submits, principally, that, in the contested decision, the Board of Appeal did not take the restriction into account in the comparison of those goods. That restriction excludes the possibility of there being any identity or similarity between the goods covered by the contested mark and the goods covered by the earlier mark.

76 In the alternative, the applicant disputes the assessment made by the Board of Appeal to conclude that the goods in question were identical or similar.

77 EUIPO and the intervener reject the applicant’s arguments.

78 In that regard, it should be noted that, according to Article 26(1)(c) of Regulation No 207/2009 (now Article 31(1)(c) of Regulation 2017/1001), applications for EU trade marks are to contain a list of the goods or services in respect of which the registration is requested.

79 Moreover, under Article 43(1) of Regulation No 207/2009 (now Article 49(1) of Regulation 2017/1001), the applicant may at any time withdraw his EU trade mark application or restrict the list of goods or services contained therein.

80 In the present case, as stated in paragraph 9 above, the applicant made the restriction during the invalidity proceedings before the Cancellation Division.

81 Following the restriction, the list of goods in Class 9 covered by the contested mark ends with a phrase indicating that the list is ‘expressly not including systems for supervision and checking and systems for the processing of information intended for supervision and checking’.

82 There is nothing in the contested decision, beyond a mere mention of the restriction in paragraphs 30 and 35 made in relation to certain goods without any further indication, clarification or justification, to show that that restriction was subject to specific analysis by the Board of Appeal in the context of its assessments concerning the identity or similarity of the Class 9 goods covered by the trade marks at issue.

83 According to the case-law, taking into account such a restriction during the course of the administrative procedure may mean, depending on the circumstances of the case in question, that goods which were previously considered identical come to be considered to be merely similar (see, to that effect, judgment of 30 September 2015, Gat Microencapsulation v OHMI — BASF (KARIS), T‑720/13, not published, EU:T:2015:735, paragraph 40), with the result that, if the trade marks at issue are identical, and depending on the circumstances, the applicable provision is no longer Article 8(1)(a), but Article 8(1)(b) of Regulation No 207/2009.

84 In those circumstances, it should be held that the Board of Appeal made an error which could have affected its assessments of the identity or similarity between the Class 9 goods covered by the trade marks at issue.

85 Since the Board of Appeal’s error could have had a decisive effect on the contested decision in so far as it concerned the application for registration of the contested mark for the goods in Class 9, it must lead to the annulment of the contested decision as regards the assessment carried out in relation to the goods in that class (see, to that effect, judgment of 9 March 2012, Colas v OHMI — García-Teresa Gárate and Bouffard Vicente (BASE-SEAL), T‑172/10, not published, EU:T:2012:119, paragraph 50 and the case-law cited).

86 In their pleadings, EUIPO and the intervener asked, in essence, for the Court to alter the contested decision if it found that that decision was vitiated by an error with regard to the examination of the restriction.

87 In that regard, it should be noted that, according to the case-law, the General Court has the power to alter decisions, but that exercise of that power must be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take. The Court cannot substitute its own reasoning for that of a Board of Appeal or carry out an assessment on which that Board of Appeal has not yet adopted a position (see, to that effect, judgment of 5 July 2011, Edwin v OHMI, C‑263/09 P, EU:C:2011:452, paragraph 72).

88 In the circumstances of this case, the Court cannot exercise that power to alter decisions without exceeding the limits set out by the case-law, since the Board of Appeal has not adopted a position, in the contested decision, on the scope and implications of the restriction as regards the assessment of the identity or similarity of the Class 9 goods covered by the trade marks at issue, with the result that there is no assessment in that connection for the Court to review and, if necessary, alter, in accordance with the case-law.

89 In those circumstances, it is necessary to uphold the second complaint of the third plea, to annul the contested decision in so far as it concerns the application for registration of the contested trade mark for the goods in Class 9 and, as was ultimately suggested by EUIPO during the hearing, to refer the case back to the Board of Appeal for a fresh decision on that part of the application.

90 However, in so far as, first, the Board of Appeal was justified in finding that the Class 42 services covered by the contested trade mark were similar to the Class 9 goods covered by the earlier mark, in respect of which genuine use had been established (see paragraph 72 above), and, secondly, the global assessment of the likelihood of confusion carried out by the Board, and not specifically disputed by the applicant, can be confirmed by the Court to be well founded, the present action should be dismissed in so far as it concerns the application for registration of the contested trade mark for the services in Class 42.

Costs

91 In the application, the applicant has claimed that EUIPO and, if appropriate, the intervener should be ordered to pay the costs.

92 Under Article 134(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the parties are to bear their own costs. However, if it appears justified in the circumstances of the case, the Court may order that one party, in addition to bearing his own costs, pay a proportion of the costs of the other party. In this case, EUIPO should be ordered to bear, in addition to its own costs, one third of the applicant’s costs.

93 Under Article 138(3) of the Rules of Procedure, the Court may order an intervener to bear its own costs. In this case, the intervener, which intervened in support of EUIPO, is to bear its own costs.

94 With regard to the applicant’s claim relating to the costs of the proceedings before the Board of Appeal, it will be for the Board of Appeal to decide, in the light of the present judgment, on the costs relating to those proceedings (judgment of 4 October 2017, Gappol Marzena Porczyńska v EUIPO — Gap (ITM) (GAPPOL), T‑411/15, not published, EU:T:2017:689, paragraph 209).

On those grounds, THE GENERAL COURT (First Chamber) hereby:

1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 July 2015 (Case R 1135/2014-2) in so far as it concerns the goods in Class 9 covered by the contested trade mark;

2. Dismisses the action as to the remainder;

3. Orders EUIPO to bear its own costs and one third of the costs incurred by Mr Xabier Uribe-Etxebarría Jiménez;

4. Orders Mr Uribe-Etxebarría Jiménez to bear two thirds of his own costs;

5. Orders Núcleo de comunicaciones y control, SL to bear its own costs.

Pelikánová Nihoul Svenningsen Delivered in open court in Luxembourg on 29 May 2018. [Signatures]

( *1 ) Language of the case: Spanish.