Case T‑24/16

Sovena Portugal - Consumer Goods, SA

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark FONTOLIVA — Earlier national word mark FUENOLIVA — Relative ground for refusal — Validity of the registration of the earlier mark — Submission of new facts and evidence before the General Court — Genuine use of the earlier mark — Power to alter — Article 8(1)(b), Article 42(2) and (3) and Articles 65 and 76 of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (Second Chamber), 13 December 2016

1. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Amendment of a decision by the Office — Assessment having regard to the competences conferred on the Board of Appeal

   (Council Regulation No 207/2009, Art. 65(3))

2. 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 — Likelihood of confusion with the earlier mark — Expiry of the earlier mark before registration of another mark — No conflict between the marks

   (Council Regulation No 207/2009, Art. 8(1)(b))

3. EU trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Opposition proceedings — Examination restricted to the submissions of the parties — Obligation on the parties to state facts and evidence in support — Cessation of the validity of the registration of the earlier mark

   (Council Regulation No 207/2009, Arts 41(3), and 76; Commission Regulation No 2868/95, Art. 1, Rules 19(2)(a)(ii), and 50(1), first and third subparas)

4. 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 — No contrary provision

   (Council Regulation No 207/2009, Art. 76(2); Commission Regulation No 2868/95, Art. 1, Rules 20(1), and 50(1))

5. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Definition — Interpretation taking account of the rationale of Article 42(2) and (3) of Regulation No 207/2009

   (Council Regulation No 207/2009, tenth recital and Art. 42(2) and (3); Commission Regulation No 2868/95, Art. 1, Rule 22(3))

6. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Definition — Criteria for assessment — Requirement of solid and objective evidence

   (Council Regulation No 207/2009, Art. 42(2) and (3))

7. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Application of the criteria to the case in question

   (Council Regulation No 207/2009, Art. 42(2) and (3))

8. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits

   (Council Regulation No 207/2009, Art. 65(2) and (3))

1.  A head of claim, submitted on appeal against a decision concerning opposition proceedings, asking that the General Court grant the application for protection in the European Union, is inadmissible. In reality it asks the Court to alter the contested decision, within the meaning of Article 65(3) of Regulation No 207/2009, by adopting the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation No 207/2009. However, in accordance with Article 64(1) of the same regulation, the Board of Appeal may only exercise the powers that are within the competence of the department which was responsible for the decision under appeal or remit the case back to that department for further prosecution. A decision on opposition matters which is contested before the Board of Appeal comes from an Opposition Division which has power to decide on opposition proceedings only and, where appropriate, if the objection is justified, to reject an application for protection in the European Union in respect of an international registration or registration of an EU trade mark, but which does not have power to grant that application. Furthermore, it must be recalled that having regard, first, to the registration procedure as laid down in the provisions of Title IV of Regulation No 207/2009, which first of all involves an initial control by an examiner, inter alia, in the light of the absolute grounds of refusal, then, if the result of that control is favourable, publication of the registration application with a view to allowing any potential opposition under the relative grounds for refusal and, secondly, to the provisions of Article 59 of that regulation concerning the persons entitled to appeal, according to which ‘any party to proceedings adversely affected by a decision may appeal’, a Board of Appeal would never be in a position to carry out a registration. Its decision can occur only in the context of an appeal brought against a decision taken following an initial unfavourable examination by an examiner, in which case, if it finds in favour of the appellant, the proceedings must continue by publication of the application for registration or in the context of proceedings against a decision of an Opposition Division, in which case, as has already been stated, it will not itself be able to grant the application for registration. Therefore, it is similarly not for the Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect.

   (see paras 12, 13)

2.  The function of an earlier mark as a means of identifying its origin cannot be undermined by another mark which is registered only after the term of protection of the earlier mark has expired. Thus, in the absence of any period during which the two marks coexist, no conflict can arise.

   (see para. 23)

3.  It does not follow from Articles 41(3) and 76 of Regulation No 207/2009 on the Community trade mark, and Rule 19(1) and (2)(a)(ii) and the first and third subparagraphs of Rule 50(1) of Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 or from the other applicable procedural provisions, that a Board of Appeal hearing an appeal against a decision of an Opposition Division which has ruled on a relative ground for refusal of registration would itself be required to raise of its own motion the question of the expiry of the validity of the registration of the earlier mark after the expiry of the period set by the Opposition Division for the opposing party to produce evidence of that validity.

   Furthermore, none of those provisions can be interpreted as requiring the opposing party to provide, on its own initiative, evidence that the registration of the earlier mark is valid until the time at which the Board of Appeal gives its ruling.

   The above findings are, however, without prejudice to the possibility for the applicant for the trade mark which has been the subject of the opposition proceedings to argue before the Board of Appeal that the evidence that the validity of the registration of the earlier mark has been maintained for a reasonable period, having regard to the proceedings before the Board of Appeal, was not adduced by the opponent, to encourage the latter to reply in that regard and the Board of Appeal to take that situation into account.

   (see paras 25-31)

4.  See the text of the decision.

   (see para. 33)

5.  See the text of the decision.

   (see para. 38)

6.  See the text of the decision.

   (see paras 39-41, 43)

7.  See the text of the decision.

   (see para. 42)

8.  See the text of the decision.

   (see para. 49)