Case T‑664/13

Petco Animal Supplies Stores, Inc.

v

Office for Harmonisation in the Internal Market

(Trade Marks and Designs) (OHIM)

‛Community trade mark — Opposition proceedings — Application for the Community word mark PETCO — Earlier Community figurative mark PETCO — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Suspension of the administrative proceedings — Rule 20(7)(c) and Rule 50(1) of Regulation (EC) No 2868/95 — Plea which does not support the form of order sought — Prohibition on ruling ultra petita — Inadmissibility’

Summary — Judgment of the General Court (Second Chamber), 21 October 2015

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity of the marks concerned — Criteria for assessment — Composite mark

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Word mark PETCO and figurative mark PETCO

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Assessment of the likelihood of confusion — Determination of the relevant public — Attention level of the public

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Criteria for assessment

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment

If the General Court finds that the Board of Appeal of the Office of Harmonisation in the Internal Market (Trade Marks and Designs) has made a manifest error of assessment in refusing to suspend proceedings before it on an appeal from the Opposition Division pending the decision on an application filed with OHIM for a declaration that the earlier mark is invalid, all of its assessments on the substance of the appeal are necessarily called into question. The chamber would not have been able to examine the appeal and partially uphold the applicant’s claim if it had suspended the appeal proceedings. Furthermore, if the decision refusing to suspend the appeal proceedings were annulled, the Board of Appeal, before which the case would again be brought, would be required to suspend the appeal proceedings and, following the suspension, draw the appropriate conclusions from the invalidity proceedings in respect of the earlier mark, as regards the analysis of the merits of all the arguments which the applicant put forward against the Opposition Division’s decision. It follows that the decision refusing to suspend the appeal proceedings is not severable from the other reasons for the contested decision, by which the Board of Appeal ruled on the substance of the appeal. Consequently, if a plea alleging that the refusal to suspend the appeal proceedings is unlawful were upheld, the Court would have to annul the contested decision in its entirety and, consequently, inasmuch as it has been seised only of a claim for partial annulment, to rule ultra petita. Since the European Union Court before which an action for annulment has been brought may not rule ultra petita, the scope of the annulment which it pronounces may not go further than that sought by the applicant. Such an independent plea, which does not support the claims for partial annulment, must therefore be dismissed as inadmissible. (see paras 20, 22, 24, 29, 30)

Under Article 21 of the Statute of the Court of Justice of the European Union, applicable to the procedure before the General Court by virtue of the first paragraph of Article 53 thereof, and Article 44 of the Rules of Procedure of the General Court of 2 May 1991, the application initiating proceedings must indicate, inter alia, the subject-matter of the dispute and contain the form of order sought by the applicant. The form of order sought must be set out in a precise and unequivocal manner, since otherwise the Court would risk giving a ruling infra petita or ultra petita and disregarding the rights of the defendant. Since the European Union Court before which an action for annulment has been brought may not rule ultra petita, the scope of the annulment which it pronounces may not go further than that sought by the applicant. Thus, only the form of order set out in the originating application may be taken into consideration and the substance of the application must be examined solely with reference to the order sought in the application initiating proceedings. Article 48(2) of the Rules of Procedure of 2 May 1991 allows new pleas in law to be introduced on condition that they are based on matters of law or of fact which came to light in the course of the procedure. That condition governs a fortiori any amendment to the forms of order sought and, in the absence of matters of law or of fact which came to light in the course of the written procedure, only the order sought in the application may be taken into consideration. (see paras 24, 25)

The Board of Appeal of the Office of Harmonisation in the Internal Market (Trade Marks and Designs) has a broad discretion to suspend proceedings or not. Rule 20(7)(c) of Regulation No 2868/95, applicable to proceedings before the Board of Appeal in accordance with Rule 50(1) of that regulation, illustrates that broadness of discretion by providing that OHIM may suspend opposition proceedings where a suspension is appropriate under the circumstances. Suspending proceedings thus remains optional for the Board of Appeal, which will do so only if it considers it appropriate. Proceedings before the Board of Appeal are therefore not automatically suspended as a result of a request for suspension made by a party before it. The fact that the Board of Appeal has a broad discretion to suspend proceedings before it does not mean that its assessment falls outside the scope of judicial review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ensuring that there is no manifest error of assessment or misuse of powers. In that regard, it is apparent from the case-law that, in exercising its discretion with respect to the suspension of proceedings, the Board of Appeal must observe the general principles governing procedural fairness within a European Union governed by the rule of law. It follows that, in exercising that discretion, the Board of Appeal must take into account not only the interests of the party whose Community mark is contested, but also those of the other parties. The decision whether or not to suspend must follow upon a balancing of the competing interests. (see paras 31-33)

See the text of the decision. (see paras 39-41, 63)

See the text of the decision. (see paras 42, 48)

See the text of the decision. (see paras 43, 46)

See the text of the decision. (see paras 47, 50, 51, 62, 64)