Source: EURLEX
Language: en
Format: md

Case T‑126/15

El Corte Inglés, SA

v

European Union Intellectual Property Office (EUIPO)

‛EU trade mark — Opposition proceedings — Application for EU figurative mark Supeco — Earlier EU figurative mark SUPER COR — Relative ground for refusal — Likelihood of confusion — Extent of the examination carried out by the Board of Appeal — Goods and services on which the opposition is based — Article 8(1)(b) of Regulation (EC) No 207/2009 — Rule 15(2)(f) of Regulation (EC) No 2868/95 — Communication No 2/12’

Summary — Judgment of the General Court (Second Chamber), 24 May 2016

1. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Notice of opposition — Identification of the goods and services forming the basis of the opposition

   (Commission Regulation No 2868/95, Art. 1, Rule 15(2)(f))
2. EU law — Interpretation — Texts in several languages — Differences between the various language versions — Account to be taken of the overall scheme and purpose of the legislation in question
3. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Notice of opposition — Identification of the goods and services forming the basis of the opposition — Requirements of clarity and precision — Scope — Opposition based on only part of the goods and services covered by the earlier trade mark

   (Council Regulation No 207/2009, Art. 41; Commission Regulation No 2868/95, Art. 1, Rule 15(2)(f))

1. It follows from Rule 15(2)(f) of Commission Regulation (EC) No 2868/95 implementing Regulation No 40/94 on the Community trade mark, in most of the versions other than the French-language version, that the notice of opposition must contain the goods and services on which the opposition is based. In those circumstances, given the general scheme of the rules governing the opposition procedure and the purpose of the rules determining the content of the notice of opposition, the lack of reference to the goods and services on which the opposition is based, in the French-language version of that rule, an omission which is clearly a typographical error, does not allow that provision to be interpreted as not requiring an indication, in the notice of opposition, of those goods and services.

   (see paras 22, 28)
2. See the text of the decision.

   (see para. 25)
3. In order to comply with the requirements of clarity and precision enabling the competent authorities and economic operators to determine the extent of the protection sought, an applicant for a trade mark which uses all of the general indications of a particular class heading of the Nice Classification to identify the goods or services for which protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services. If the application relates to only some of those goods or services, the applicant will be required to specify which of the goods or services in that class are intended to be covered.

   Such requirements of clarity and precision must be regarded as binding also upon the opposing party, in relation to the designation of the goods and services on which the opposition is based, for the purposes of allowing EUIPO to decide on the opposition and the applicant for the mark that is the subject of the opposition to put forward its arguments in defence.

   Thus, in particular, where the opposing party indicates that it is basing its opposition on a portion of the goods and services covered by the mark of which it is the proprietor, it must indicate clearly and precisely the goods and services on which its opposition is based. In such circumstances, the Board of Appeal cannot be required to take into consideration, for the purposes of its examination of the opposition, goods and services that were not mentioned in the notice of opposition.

   (see paras 29, 30, 32)

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