JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

20 September 2017 ( *1 )

(EU trade mark — Opposition proceedings — Application for EU figurative mark BADTORO — Earlier EU figurative and word marks TORO — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Similarity of the goods and services — Article 8(1)(b) of Regulation (EC) No 207/2009 — Suspension of the administrative proceedings — Rule 20(7)(c) of Regulation (EC) No 2868/95)

In Case T‑386/15,

Jordi Nogues, SL, established in Barcelona (Spain), represented by M.J. Sanmartín Sanmartín and E. López Parés, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Grupo Osborne, SA, established in El Puerto de Santa María (Spain), represented by J.M. Iglesias Monravá, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 17 April 2015 (Case R 2570/2013‑2) relating to opposition proceedings between Grupo Osborne and Jordi Nogues,

THE GENERAL COURT (Seventh Chamber),

composed of M. van der Woude, President, I. Ulloa Rubio and A. Marcoulli (Rapporteur), Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Court Registry on 10 July 2015,

having regard to the response of EUIPO lodged at the Court Registry on 30 November 2015,

having regard to the response of the intervener lodged at the Court Registry on 25 November 2015,

further to the hearing on 15 December 2016,

having regard to the order of 15 February 2017 reopening the oral part of the procedure,

having regard to the written question from the Court to the parties of 16 February 2017 and to the responses to that question lodged at the Court Registry by the applicant, EUIPO and the intervener on 6, 1 and 6 March 2017, respectively,

having regard to the decision of 8 March 2017 ending the oral part of the procedure,

gives the following

Judgment ( 1 )

…

Forms of order sought

11 The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs.

12 EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs.

Law

…

14 The issue of whether the Board of Appeal erred in not suspending the proceedings before it must be assessed before that of whether there is a likelihood of confusion between the mark applied for and the earlier mark (judgment of 25 November 2014, Royalton Overseas v OHIM – S.C. Romarose Invest (KAISERHOFF), T‑556/12, not published, EU:T:2014:985, paragraph 52). The Court will therefore first of all examine the first plea.

The first plea, alleging the illegality of the refusal to suspend the proceedings before the Board of Appeal

…

16 At this stage, it is important to note that the applicant had sought, both before the Opposition Division and before the Board of Appeal, a suspension of the proceedings pending delivery of the decision of the Juzgado de lo Mercantil No 1 de Alicante (Commercial Court No 1, Alicante). That court, as an EU trade mark court, was dealing with a counterclaim for a declaration of invalidity of the earlier EU word marks TORO, registered for the intervener under No 2844264 and No 1722362. The counterclaim had been introduced by the applicant following the action brought by the intervener seeking annulment of the Spanish word mark BADTORO, registered under No 2782026 in respect of goods and services in Classes 25 and 35.

17 In that regard, it must be held that the counterclaim for a declaration of invalidity brought by the applicant did not concern any of the earlier marks invoked by the intervener in opposition to the application for registration of the contested mark in respect of the goods in Class 32. Those national proceedings were therefore irrelevant with regard to the assessment of the opposition brought by the intervener to the application for registration of the mark applied for in respect of the goods in Class 32.

18 Consequently, supposing it to be established, the illegality of the refusal to suspend the proceedings would be incapable of vitiating the contested decision in so far as it concerns the opposition to the registration of the mark applied for in respect of the goods in Class 32. To that extent, the plea must therefore be rejected as ineffective.

19 It is, by contrast, appropriate to examine the various limbs of the plea in so far as they concern the decision relating to the opposition to the application for registration of the mark applied for in respect of the services in Class 35. The Court considers it expedient to examine, first of all, the fourth limb of the first plea as regards the errors of fact affecting the refusal to suspend the proceedings.

20 In that regard, the Court notes that Rule 20(7)(c) 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), applicable to proceedings before the Board of Appeal in accordance with Rule 50(1) of that regulation, provides that EUIPO may suspend opposition proceedings where a suspension is appropriate in the circumstances.

21 According to the case-law, the Board of Appeal’s discretion as to whether or not to suspend proceedings is broad. Suspending proceedings remains optional for the Board of Appeal, which will do so only if it considers it appropriate. Proceedings before it are therefore not automatically suspended as a result of a request for suspension by a party before it (judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 30).

22 The fact that the Board of Appeal has a broad discretion to suspend proceedings before it does not mean that the assessment of that discretion 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 ascertaining that no manifest error of assessment or misuse of powers has occurred (judgments of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 31, and of 21 October 2015, Petco Animal Supplies Stores v OHIM – Gutiérrez Ariza (PETCO), T‑664/13, EU:T:2015:791, paragraph 32).

23 In that regard, it follows from the case-law that, even if it were established that an action was pending before a national court in which the earlier trade mark on which a contested decision was based was under challenge, that fact would not be a sufficient basis, in itself, for categorising the Board of Appeal’s refusal to suspend proceedings as a manifest error of assessment. 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 application for an EU mark is being contested, but also those of the other parties. The decision whether or not to suspend the proceedings must follow upon a weighing of the competing interests (see judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 33 and the case-law cited).

24 In the present case, it is apparent from the wording of the contested decision that the Board of Appeal found that the Opposition Division had rejected the application for suspension on the ground that the opposition was founded on two other earlier EU marks and on an earlier Spanish mark, uncontested at national level. In addition, the Board of Appeal found that it was no longer appropriate to suspend the proceedings in so far as the Juzgado de lo Mercantil No 1 de Alicante (Commercial Court No 1, Alicante) had dismissed the counterclaim brought by the applicant in a judgment which had become final, according to submissions of the intervener which were not disputed. The intervener had, in its observations of 30 May 2014, informed the Board of Appeal of the existence of that judgment, while indicating that it would forward to it evidence of its definitive nature at a later date.

25 Although it is true that, in a judgment of 15 May 2014, the Juzgado de lo Mercantil No 1 de Alicante (Commercial Court No 1, Alicante) dismissed both the application for a declaration of invalidity of the Spanish word BADTORO, registered under No 2782026, and the counterclaim brought by the applicant, an appeal was brought against that judgment. The judgment was upheld by the Audiencia Provincial de Alicante (Provincial Court, Alicante, Spain) in a judgment of 15 January 2015 against which each party brought an appeal on a point of law before the Tribunal Supremo (Supreme Court, Spain), which was pending on the day of the contested decision.

26 It follows that the Board of Appeal based its decision to reject the application for suspension of the proceedings on the ground that the judgment of the Juzgado de lo Mercantil No 1 de Alicante (Commercial Court No 1, Alicante) had become final, notwithstanding the fact that it was under appeal.

27 Admittedly, as EUIPO claims, since the applicant applied for suspension of the proceedings, the applicant ought therefore to have informed EUIPO of the progression of the national proceedings. However, regrettable as it may be, the silence of the applicant on that matter cannot call into question the existence of the error of fact affecting the refusal to suspend the proceedings or amount to fault on the part of the applicant capable of depriving it of the possibility of relying on that illegality.

28 In those circumstances, the applicant is justified in maintaining that the Board of Appeal’s decision to refuse to suspend the proceedings was based on erroneous facts.

29 However, EUIPO and the intervener claim that that error of fact does not vitiate the contested decision in so far as the error had no bearing on that decision. Thus, they submit that, since the opposition was also based on three other marks uncontested in the context of the counterclaim, the outcome of the contested decision would not have been different had the application for invalidity of the EU mark in question been granted.

30 In that regard, it should be noted that, in the interests of procedural economy, the likelihood of confusion between the signs at issue in respect of the services in Class 35 was assessed by the Board of Appeal only in regard to the earlier EU word mark No 1722362. That mark was the subject of a counterclaim for a declaration of invalidity pending before the Tribunal Supremo (Supreme Court) at the date of the contested decision. That fact was justification for the Board of Appeal to exercise its discretion by weighing up the competing interests in order to decide whether or not to make use of its power to suspend the proceedings. However, in so far as it wrongly took the view that the judgment of the Juzgado de lo Mercantil No 1 de Alicante (Commercial Court No 1, Alicante) had become final, it did not make such an assessment.

31 Furthermore, in so far as the Court reviews the legality of the decisions of EUIPO bodies, it may not substitute its own reasoning for that of the competent EUIPO body which is the author of the contested act (judgment of 9 September 2010, Axis v OHIM – Etra Investigación y Desarrollo (ETRAX), T‑70/08, EU:T:2010:375, paragraph 29). It cannot therefore assess whether there is a likelihood of confusion in respect of a mark which has not been taken into account by EUIPO.

32 Consequently, the fact that the opposition, in respect of the services in Class 35, was also based on the earlier Spanish figurative mark No 2919417 cannot, in the absence of an assessment of the likelihood of confusion as regards that mark in the contested decision, establish that the error of fact made by the Board of Appeal did not have any actual effect on that decision.

33 Consequently, without it being necessary for the Court to rule on the other limbs of the first plea, and, as has been stated in paragraph 14 above, since the issue of the suspension of the proceedings must be assessed before that of whether there is a likelihood of confusion between the mark applied for and the earlier mark, the first plea must be upheld and the contested decision relating to the mark applied for in respect of the services in Class 35 must therefore be annulled. …

On those grounds, THE GENERAL COURT (Seventh Chamber) hereby:

1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 April 2015 (Case R 2570/2013‑2);

2. Orders EUIPO to bear its own costs and to pay those incurred by Jordi Nogues, SL;

3. Orders Grupo Osborne, SA to bear its own costs.

Van der Woude Ulloa Rubio Marcoulli Delivered in open court in Luxembourg on 20 September 2017. [Signatures]

( *1 ) Language of the case: Spanish.

( 1 ) Only the paragraphs of this judgment which the Court considers it appropriate to publish are reproduced here.