Case T-278/10

Wesergold Getränkeindustrie GmbH & Co. KG

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛Community trade mark — Opposition proceedings — Application for Community word mark WESTERN GOLD — Earlier national, international and Community word marks WESERGOLD, Wesergold, and WeserGold — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Distinctiveness of the earlier marks’

Summary — Judgment of the General Court (First Chamber), 21 September 2012

Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Decision omitting to carry out a factual 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 — Similarity of the marks concerned — Whether conceptual differences may neutralise visual or aural similarities — Conditions

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 — Complementary nature of the goods or services

Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Re-evaluation of the facts in the light of evidence produced for the first time before it — Exclusion

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

See the text of the decision. (see para. 26)

See the text of the decision. (see para. 35)

See the text of the decision. (see para. 40)

See the text of the decision. (see para. 58)

Under Article 64(1) of Regulation No 207/2009 on the Community trade mark, following the examination as to the merits of the appeal, the Board of Appeal is to decide on that appeal and, in doing so, it may ‘exercise any power within the competence of the department which was responsible for the contested decision’, that is to say, it may make a ruling itself on the opposition either by rejecting it or by declaring it to be well founded, thereby either upholding or reversing the contested decision. Thus, the absence of any specific invocation, submitted in the defence to the Board of Appeal of distinctive character enhanced by use, does not affect the obligation incumbent upon the Board of Appeal, where it decides on the opposition itself, to carry out a new, comprehensive examination of the merits of the opposition, in terms both of law and of fact. The extent of the examination which the Board of Appeal must undertake in relation to the decision under appeal is not, in principle, delimited by the pleas relied on by the party who has brought the appeal. A fortiori, the extent of the examination which the Board of Appeal must undertake is not limited by the lack of precision of certain pleas raised before it. (see paras 71, 80)