Judgment of the General Court (First Chamber) of 15 July 2015 — Cactus v OHIM — Del Rio Rodríguez (CACTUS OF PEACE CACTUS DE LA PAZ)

(Case T‑24/13)

‛Community trade mark — Opposition proceedings — Application for Community figurative mark CACTUS OF PEACE CACTUS DE LA PAZ — Earlier Community word mark CACTUS and earlier figurative mark Cactus — Genuine use of the earlier mark — Article 42(2) of Regulation (EC) No 207/2009 — Article 76(1) and (2) of Regulation No 207/2009’

1. Community trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Opposition proceedings — Examination restricted to the submissions of the parties (Council Regulation No 207/2009, Art. 76(1)) (see para. 23)

2. Community trade mark — Appeals procedure — Appeal brought against a decision of a unit of the Office ruling at first instance and referred to the Board of Appeal — Functional continuity between those two bodies — Examination of the appeal by the Board of Appeal — Scope (Council Regulation No 207/2009, Art. 76(1)) (see para. 24)

3. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Interpretation having regard to the rationale of Article 42(2) and (3) of Regulation No 207/2009 (Regulation No 207/2009, Art. 42, (2) and (3)) (see para. 44)

4. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark (Council Regulation No 207/2009, Arts 15(1)(a), and 42(2) and (3)) (see paras 46, 47)

5. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 42(2) and (3)) (see paras 49, 50)

6. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Criteria for assessment — Requirement of solid and objective evidence (Council Regulation No 207/2009, Art. 42(2) and (3)) (see para. 51)

7. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Time-limit set by the Office — Submission of additional evidence after expiry of the time-limit where there are new factors — Admissibility (Council Regulation No 207/2009, Arts 42(2) and (3), and 76(2); Commission Regulation No 2868/95, Art. 1, Rule 22(2)) (see paras 76-81)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 19 October 2012 (Case R 2005/2011-2), relating to opposition proceedings between Cactus SA and Isabel Del Rio Rodríguez.

Operative part

The Court:

1. Annuls point 1 of the operative part of the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 19 October 2012 (Case R 2005/2011-2) in so far as it rejected the opposition on the grounds that ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ services in Class 35 were not covered by the earlier marks;

2. Annuls point 2 of the operative part of the decision of the Second Board of Appeal of OHIM of 19 October 2012 referred to above in so far as it annulled the part of the decision of the Opposition Division allowing the opposition based on ‘natural plants and flowers, grains’ in Class 31, and point 1 of the operative part of that decision, which rejected the opposition based on those goods;

3. Dismisses the action as to the remainder;

4. Orders Cactus SA to pay one third of the costs incurred by the parties before the General Court and orders OHIM to pay two thirds of those costs.

Judgment of the General Court (First Chamber) of 15 July 2015 — Cactus v OHIM — Del Rio Rodríguez (CACTUS OF PEACE CACTUS DE LA PAZ)

(Case T‑24/13)

‛Community trade mark — Opposition proceedings — Application for Community figurative mark CACTUS OF PEACE CACTUS DE LA PAZ — Earlier Community word mark CACTUS and earlier figurative mark Cactus — Genuine use of the earlier mark — Article 42(2) of Regulation (EC) No 207/2009 — Article 76(1) and (2) of Regulation No 207/2009’

1. Community trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Opposition proceedings — Examination restricted to the submissions of the parties (Council Regulation No 207/2009, Art. 76(1)) (see para. 23)

2. Community trade mark — Appeals procedure — Appeal brought against a decision of a unit of the Office ruling at first instance and referred to the Board of Appeal — Functional continuity between those two bodies — Examination of the appeal by the Board of Appeal — Scope (Council Regulation No 207/2009, Art. 76(1)) (see para. 24)

3. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Interpretation having regard to the rationale of Article 42(2) and (3) of Regulation No 207/2009 (Regulation No 207/2009, Art. 42, (2) and (3)) (see para. 44)

4. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark (Council Regulation No 207/2009, Arts 15(1)(a), and 42(2) and (3)) (see paras 46, 47)

5. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 42(2) and (3)) (see paras 49, 50)

6. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Criteria for assessment — Requirement of solid and objective evidence (Council Regulation No 207/2009, Art. 42(2) and (3)) (see para. 51)

7. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Time-limit set by the Office — Submission of additional evidence after expiry of the time-limit where there are new factors — Admissibility (Council Regulation No 207/2009, Arts 42(2) and (3), and 76(2); Commission Regulation No 2868/95, Art. 1, Rule 22(2)) (see paras 76-81)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 19 October 2012 (Case R 2005/2011-2), relating to opposition proceedings between Cactus SA and Isabel Del Rio Rodríguez.

Operative part

The Court:

1. Annuls point 1 of the operative part of the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 19 October 2012 (Case R 2005/2011-2) in so far as it rejected the opposition on the grounds that ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ services in Class 35 were not covered by the earlier marks;

2. Annuls point 2 of the operative part of the decision of the Second Board of Appeal of OHIM of 19 October 2012 referred to above in so far as it annulled the part of the decision of the Opposition Division allowing the opposition based on ‘natural plants and flowers, grains’ in Class 31, and point 1 of the operative part of that decision, which rejected the opposition based on those goods;

3. Dismisses the action as to the remainder;