Case T‑476/15

European Food SA

v

European Union Intellectual Property Office

‛EU trade mark — Invalidity proceedings — EU word mark FITNESS — Absolute grounds for refusal — No distinctive character — Descriptive character — Article 7(1)(b) and (c), Article 52(1)(a) and Article 76 of Regulation (EC) No 207/2009 — Rule 37(b)(iv) and Rule 50(1) of Regulation (EC) No 2868/95 — Production of evidence for the first time before the Board of Appeal’

Summary — Judgment of the General Court (Sixth Chamber), 28 September 2016

EU trade mark — Appeals procedure — Action brought against a decision by the Cancellation Division of EUIPO — Examination by the Board of Appeal — Scope — Application by analogy of Rule 50(1) of Regulation No 2868/95 in the context of invalidity proceedings based on absolute grounds for refusal — Not permissible

EU trade mark — Appeals procedure — Appeal against a decision of the Opposition Division of EUIPO — Examination by the Board of Appeal — Scope — Facts and evidence not produced in support of the opposition within the period prescribed for that purpose — Account taken — Discretion of the Board of Appeal

EU trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Invalidity proceedings concerning absolute grounds for refusal — Examination restricted to the submissions of the parties

EU trade mark — Definition and acquisition of the EU 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 — Interest to be protected of a private nature

EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Aim — Need to preserve availability

EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Separate examination of the various grounds for refusal — Interpretation of the grounds for refusal in the light of the public interest underlying each of them

See the text of the decision. (see para. 31)

See the text of the decision. (see para. 33)

As regards the relative grounds for refusal set out in Article 8 of Regulation No 207/2009 on the EU trade mark, it is clear from the scheme of that regulation and from the wording of that provision that Article 8 seeks to resolve possible conflicts between a mark for which registration is sought and the rights of the proprietor of an earlier trade mark, for example where the marks and the products in question are identical or where they are similar and there exists a likelihood of confusion. Therefore, the interest the protection of which can be sought under that provision is above all of a private nature, even if it simultaneously protects a certain public interest such as avoiding the likelihood of confusion on the part of consumers. (see para. 34)

See the text of the decision. (see para. 38)

It is clear from Article 76(1) of Regulation No 207/2009 that, when examining absolute grounds for refusal, the Boards of Appeal of EUIPO are required to examine the facts of their own motion in order to determine whether the mark for which registration is sought comes within one of the grounds for refusal of registration set out in Article 7 of that regulation. In invalidity proceedings, however, EUIPO cannot be required to carry out afresh the examination which the examiner conducted, of his own motion, of the relevant facts which could have led him to apply the absolute grounds for refusal. It follows from the provisions of Articles 52 and 55 of Regulation No 207/2009 that the EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the review carried out by EUIPO in the examination of an application for registration. By virtue of that presumption of validity, EUIPO’s obligation, under Article 76(1) of Regulation No 207/2009, to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for an EU trade mark carried out by the examiners of EUIPO and, on appeal, by the Boards of Appeal during the procedure for registration of that mark. In the context of invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question. It follows from the foregoing that, in invalidity proceedings, the Board of Appeal is not required to examine of its own motion the relevant facts which might have led it to apply the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 207/2009. (see paras 46-49)

It is in no way apparent from Rule 37(b)(iv) of Regulation No 2868/95 that the Board of Appeal is required to regard evidence that has not been submitted before the Cancellation Division as belated. That rule states merely that the application for a declaration of invalidity must include the evidence on which it is based. Therefore, the rule does not imply that any evidence submitted after the filing of the application for a declaration of invalidity, either before the Cancellation Division or before the Board of Appeal, is to be regarded as belated. In addition, it must be stated that Regulations No 207/2009 and No 2868/95 do not contain any provisions setting a time limit for the production of evidence in relation to an application for a declaration of invalidity based on an absolute ground for refusal. This is in contrast to certain provisions making provision for time limits, and for the consequences of non-compliance with such time limits, applicable in opposition proceedings; and invalidity proceedings based on relative grounds for refusal. Moreover, it should be recalled that there is continuity, in terms of functions, between the different departments of EUIPO which adjudicate at first instance, such as the examiner, and the Opposition and Cancellation Divisions, on the one hand, and the Boards of Appeal, on the other. In the light of the foregoing, it must be held that Article 76 of Regulation No 207/2009, read in conjunction with Rule 37(b)(iv) of Regulation No 2868/95, does not imply that evidence submitted for the first time before the Board of Appeal must be regarded as belated by the Board of Appeal in invalidity proceedings based on an absolute ground for refusal. (see paras 55-58)

See the text of the decision. (see paras 60-62)