Case T‑840/14

International Gaming Projects Ltd

v

Office for Harmonisation in the Internal Market

(Trade Marks and Designs) (OHIM)

‛Community trade mark — Opposition proceedings — Application for a Community figurative mark Sky BONUS — Earlier national word mark SKY — Relative ground for refusal — Likelihood of confusion — Restriction of the goods designated in the trade mark application — Article 8(1)(b) of Regulation (EC) No 207/2009 — Inadmissibility’

Summary — Order of the General Court (Fourth Chamber), 11 March 2016

Community trade mark — Appeals procedure — Action before the EU judicature — Limitation of the list of products and services after the decision of the Board of Appeal — Consequences

(Rules of Procedure of the General Court, Art. 188; Council Regulation No 207/2009, Arts 26(1)(c), 43(1), 65(2), and 76)

Under Article 65(2) of Regulation No 207/2009, the General Court may annul or alter a decision of a Board of Appeal of OHIM only ‘on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of [that] Regulation or of any rule of law relating to their application or misuse of power’. In the light of Article 76 of that regulation, that review of legality must be carried out having regard to the factual and legal context of the dispute as it was brought before the Board of Appeal. It follows that the Court may annul or alter a decision against which an action has been brought only if, at the time when the decision was adopted, it was vitiated by one of those grounds for annulment or alteration. The Court may not, however, annul or alter that decision on grounds that come into existence subsequent to its adoption.

Furthermore, although Article 26(1)(c) of Regulation No 207/2009 requires that ‘an application for a Community trade mark shall contain … a list of the goods … in respect of which the registration is requested’, Article 43(1) of that regulation provides that ‘[t]he applicant may at any time withdraw his Community trade mark application or restrict the list of goods … contained therein’.

It is true that, with regard to an application for a Community trade mark covering a number of goods, the Court has already interpreted a declaration made by a trade mark applicant to it, and thus subsequent to the decision of the Board of Appeal, to the effect that the applicant was withdrawing its application solely in respect of certain of the goods covered by the initial application, either as a declaration that the contested decision was being challenged only in so far as it referred to the remainder of the goods concerned, or, if such a declaration was made at an advanced stage of the proceedings before the Court, as a partial withdrawal of the action. If, however, by its restriction of the list of goods covered by the Community trade mark application, the trade mark applicant is not seeking to withdraw one or more goods from that list, but to alter a characteristic of those goods, such as their purpose or their description, it is possible that that alteration may affect the examination of the Community trade mark carried out by the bodies of OHIM during the administrative procedure. In those circumstances, to allow that alteration at the stage of the action before the Court would amount to changing the subject matter of the proceedings pending, which is prohibited by Article 188 of the Rules of Procedure. Such an alteration therefore cannot affect the legality of the contested decision or be taken into account by the Court when it examines the merits of the case.

It must be held that, having regard to that case-law, a clarification formulated in the course of the proceedings, whereby the applicant does not withdraw any of the goods forming the subject matter of its application for a Community trade mark, but merely specifies their purpose so that it is no longer trying to protect the goods contained in general as a broader category but only in so far as they serve that particular purpose constitutes an alteration of the factual background of the dispute as it was brought before the Board of Appeal and formed the subject matter of the contested decision, in that it implies that all other purposes of those goods which might have come into consideration in the context of the comparison of the goods must be disregarded. It follows that that alteration is such as to affect the assessment that could have been undertaken by the Board of Appeal on, inter alia, the similarity of the goods in question and, thus, necessarily alters the subject matter of the proceedings as brought before the Court.

By its application, the applicant cannot obtain a partial annulment of the contested decision on the ground that it is based on an assessment — not made by the Board of Appeal — of a likelihood of confusion between the marks in question by including in that assessment goods with a specific purpose on which the Board of Appeal had not been asked to rule. On the contrary, in the context of the comparison of the goods in question, the Board of Appeal was deemed to check whether all the potential purposes of those goods gave reason for concluding that they were similar or even identical. In that regard, it should be noted that, in the assessment of the similarity of goods, all the relevant factors of the relationship existing between those goods must be taken into account, including, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Furthermore, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both an identity or similarity of the marks in question and an identity or similarity of the goods or services that they designate, those conditions being cumulative. Where it is precisely the comparison of the goods with their generic and varied characteristics as applied for initially — and not those specified a posteriori — which led the Board of Appeal to find that there was a likelihood of confusion between the marks in question, that concerns a comprehensive and inseparable assessment by the Board of Appeal in the contested decision, which is not capable of being annulled in part.

(see paras 19, 20, 22-25)