ORDER OF THE COURT (Tenth Chamber)

17 May 2018 ( )

(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — EU trade mark — Opposition proceedings — Application for registration of the figurative mark including the word element ‘widiba’ — Rejection of the application for registration)

In Case C‑685/17 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 6 December 2017,

Banca Monte dei Paschi di Siena SpA, established in Sienna (Italy),

Wise Dialog Bank SpA (Banca Widiba SpA), established in Milan (Italy), represented by L. Trevisan and D. Contini, avvocati,

appellants,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

ING-DIBa AG, established in Frankfurt am Main (Germany),

intervener at first instance,

THE COURT (Tenth Chamber),

composed of E. Levits, President of the Chamber, A. Borg Barthet (Rapporteur) and F. Biltgen, Judges,

Advocate General: E. Tanchev,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, pursuant to Article 181 of the Rules of Procedure of the Court,

makes the following

Order

1 By their appeal, Banca Monte dei Paschi di Siena SpA and Wise Dialog Bank SpA (Banca Widiba SpA) ask the Court to set aside the judgment of the General Court of the European Union of 26 September 2017, Banca Monte dei Paschi di Siena and Banca Widiba v EUIPO — ING-DIBa (WIDIBA) (T‑84/16, not published, ‘the judgment under appeal’, EU:T:2017:661), by which the General Court dismissed their action seeking the annulment of the decision of the Second Board of Appeal of EUIPO of 26 November 2015 (Joined Cases R 112/2015-2 and R 190/2015-2), relating to opposition proceedings between ING-DIBa and Banca Monte dei Paschi di Siena.

2 In support of their appeal, the appellants rely essentially on two grounds of appeal. The first ground alleges infringement of Articles 60 and 80(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), and the second alleges infringement of Article 8(1)(b) of that regulation.

The appeal

3 Pursuant to Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

4 On 23 March 2018, the Advocate General took the following position:

‘1. I propose that the Court should dismiss the appeal in the present case as being, in part, manifestly inadmissible and, in part, manifestly unfounded and order the appellants to pay the costs, in accordance with Articles 137 and 184(1) of the [Rules of Procedure], for the following reasons.

The first ground of appeal: Infringement of Articles 60 and 80(1) of Regulation No 207/2009

2. There are two branches to the first ground of appeal.

3. In the first branch, the appellants argue that the General Court erred in law, in paragraphs 24 to 37 of the judgment under appeal, in considering that the Board of Appeal correctly rejected the appellants’ appeal as inadmissible under Rule 49(1) 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), as amended] because the statement of grounds had been filed outside the time limit prescribed by Article 60 of Regulation No 207/2009. The appellants contend that inadmissibility is too burdensome a penalty for a trivial failure to comply with a deadline before EUIPO and thus is disproportionate. The appellants further submit that Article 60 of Regulation No 207/2009 does not provide that a late filing of the statement of grounds constitutes a ground for inadmissibility of the appeal itself. Rather, that ground of inadmissibility is laid down in Rule 49(1) of Regulation No 2868/95 which is a delegated act. Consequently, according to the appellants, by declaring the appeal inadmissible, the Board of Appeal allowed an implementing provision which goes beyond Article 60 of Regulation No 207/2009 to be the basis for the loss of rights to the appellants’ detriment.

4. Having regard to settled case-law, an appeal which, without even including an argument specifically identifying the error of law allegedly vitiating the contested judgment, confines itself to reproducing the pleas in law and arguments previously submitted to the General Court, amounts in reality to no more than a request for re-examination of the application submitted to the General Court which the Court does not have jurisdiction to undertake (see, for example, judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 54 and the case-law cited).

5. In the present case, by virtue of the arguments advanced in support of the first branch of the first ground of appeal, the appellants reproduce in almost identical terms the arguments that had already been submitted in the proceedings before the General Court. The appellants thereby seek, in reality, to request the Court to re-examine their application submitted to the General Court without identifying specifically the error of law vitiating the General Court’s reasoning in the judgment under appeal.

6. It follows that the first branch of the first ground of appeal must be rejected as manifestly inadmissible.

7. In the second branch, the appellants argue that the General Court wrongly considered, in paragraphs 38 to 42 of the judgment under appeal, that the Board of Appeal did not err in law in finding that it was not appropriate to grant the request for restitutio in integrum. In the appellants’ view, the assessment which led to the rejection of the request for restitutio in integrum was unduly strict with respect to the due care requirement, and the Board of Appeal did not take proper account of the rationale of Article 81(1) of Regulation No 207/2009 which is to safeguard intellectual property rights and means of redress.

8. In paragraphs 27 to 31 of the judgment under appeal, the General Court recalled, on the basis of settled case-law, the requirements for restitutio in integrum under Article 81(1) of Regulation No 207/2009 and the Board of Appeal’s finding that the circumstances invoked by the appellant could not be regarded as abnormal and inevitable for the purposes of fulfilling the due care requirement set down in that provision, with the result that the request for restitutio in integrum had to be rejected.

9. In paragraph 39 of the judgment under appeal, the General Court considered that no arguments had been put forward to permit the conclusion that the Board of Appeal was wrong to refuse to consider that the circumstances invoked were exceptional or unforeseeable for the purposes of Article 81(1) of Regulation No 207/2009.

10. In paragraph 40 of the judgment under appeal, the General Court underlined that, prior to the expiry of the time limit in question, the Registry of the Boards of Appeal had twice reminded Banca Monte dei Paschi di Siena’s representative that it was required to file a written statement setting out the grounds of the appeal, but that no follow-up action was taken by that representative.

11. Furthermore, in paragraph 41 of the judgment under appeal, the General Court correctly held, on the basis of the case-law set out in paragraph 28 of the judgment under appeal, that the argument that the appellants were not directly responsible for the failure to comply with the time limit in question because that failure was caused by a lapse on the part of their representative must also be rejected.

12. In these circumstances, the second branch of the first ground of appeal must be rejected as manifestly unfounded.

The second ground of appeal: Infringement of Article 8(1)(b) of Regulation No 207/2009

13. There are two branches to the second ground of appeal.

14. In the first branch, the appellants submit that the General Court erred in law, in paragraphs 49 to 53 of the judgment under appeal, in considering that the scope of its review was limited to examining the likelihood of confusion between the marks at issue only in respect to the “credit cards” covered by the mark applied for, and in stating that it was not seized of the assessment of the likelihood of confusion with respect to all the goods and services which were the objective of the opposition. In this regard, the appellants assert that the argument, according to which the General Court’s review had to include the other goods and services covered by the mark applied for, had been put forward in the proceedings before the Opposition Division, and therefore, the General Court’s finding, in paragraph 51 of the judgment under appeal, that that argument had been raised before it for the first time was incorrect. The appellants additionally allege that the General Court breached their right to an effective remedy and to a fair trial, as enshrined in Article 47 of the Charter of Fundamental Rights of the European Union, and Article 65 of Regulation No 207/2009, by endorsing, in paragraphs 73 to 75 of the judgment under appeal, the Opposition Division’s findings.

15. Under settled case-law, it follows from Article 65 of Regulation No 207/2009 that the purpose of actions before the General Court is to review the legality of the decisions of the Boards of Appeal of EUIPO and that, as a result, facts not submitted by the parties before the departments of EUIPO cannot be submitted at the stage of the appeal brought before the General Court. Neither can the General Court re-evaluate the factual circumstances in the light of evidence adduced for the first time before it, since the legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see, for example, judgment of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 47 and the case-law cited).

16. Moreover, the Court has held that, in appeal proceedings against decisions of the Boards of Appeal of EUIPO which involve appeals against decisions of the Opposition Division, the party having demanded the registration of the mark in question does not have the power to alter before the General Court the terms of the dispute, as delimited in the respective claims and allegations that that party and the party opposing the trade mark application have submitted (see, for example, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 43 and the case-law cited).

17. In the present case, it is undisputed, as indicated in paragraphs 10 and 11 of the judgment under appeal, that the appellants did not file a written statement setting out the grounds of appeal against the decision of the Opposition Division within the requisite deadline and that the Board of Appeal rejected their appeal as inadmissible.

18. Following from paragraph 13 of the judgment under appeal, the Opposition Division’s decision became final with regard to the goods and services in classes 9, 36 and 38 covered by the mark applied for in respect of which the opposition had been upheld.

19. Moreover, according to paragraph 12 of the judgment under appeal, the Board of Appeal held that, as regards the comparison of the goods and services covered by the marks at issue, “credit cards” and “financial affairs” were complementary and should therefore be regarded as similar. The Board of Appeal then confirmed, after noting that the parties had not disputed the Opposition Division’s findings relating to the similarity of the signs at issue, the existence of that similarity. As a result, in the context of the global assessment of a likelihood of confusion, the Board concluded that there was a likelihood of confusion between those signs.

20. Consequently, the General Court correctly held, in paragraph 51 of the judgment under appeal, that the appellants’ argument that there was no likelihood of confusion between the marks at issue in so far as the goods and services, other than “credit cards” covered by the mark applied for, had been invoked for the first time before the General Court and that neither the Opposition Division nor the Board of Appeal had assessed the likelihood of confusion on the basis of that line of argument. Likewise, the General Court correctly held, in paragraph 53 of the judgment under appeal, that the scope of its review was limited to examining the likelihood of confusion between the marks at issue in respect to “credit cards”.

21. In these circumstances, the first branch of the second ground of appeal must be rejected as manifestly unfounded.

22. In the second branch, the appellants argue that the General Court breached Article 8(1)(b) of Regulation No 207/2009 by ruling, in paragraphs 57 to 69 and 73 to 83 of the judgment under appeal, that there existed a likelihood of confusion between the marks at issue in respect of the “credit cards” covered by the mark applied for and the “financial affairs” covered by the earlier mark. The appellants submit that the General Court’s assessment of the similarity between “credit cards” and “financial affairs” is incorrect because the public is aware of the differences between them. In addition, according to the appellants, the General Court erred in considering that the signs at issue were similar, since it did not take all of the relevant elements into account, and did not draw the appropriate consequences from the finding that the relevant public has a high degree of attentiveness.

23. Under Article 256 TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal is limited to points of law. The General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts and evidence are distorted, constitute a point of law which is subject, as such, to review by this Court on appeal (see, for example, judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 65 and the case-law cited).

24. In the present case, by their arguments put forward in support of the second branch of the second ground of appeal, the appellants, in reality, call into question the appraisal of the facts made by the General Court in the judgment under appeal and seek a new assessment of the underlying dispute without alleging distortion of the facts or evidence.

25. In those circumstances, the second branch of the second ground of appeal must be rejected as manifestly inadmissible.

26. Having regard to the foregoing, I am on the view that the appeal in the present case should be dismissed, in accordance with Article 181 of the [Rules of Procedure], as being, in part, manifestly inadmissible and, in part, manifestly unfounded and the appellants should be ordered to bear their own costs.’

5 For the same reasons as those given by the Advocate General, the appeal must be dismissed as being in part manifestly inadmissible and in part manifestly unfounded.

Costs

6 Under Article 137 of the Rules of Procedure of the Court of Justice, applicable to appeal proceedings by virtue of Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. Since the present order was adopted before the appeal was served on the other parties and, therefore, before the latter could have incurred costs, the appellants must be ordered to bear their own costs.

On those grounds, the Court (Tenth Chamber) hereby orders:

1. The appeal is dismissed as being in part manifestly inadmissible and in part manifestly unfounded.

2. Banca Monte dei Paschi di Siena SpA and Wise Dialog Bank SpA (Banca Widiba SpA) shall bear their own costs.

Luxembourg, 17 May 2018.





A. Calot Escobar E. Levits

Registrar President of the Tenth Chamber