Case T‑39/16

Nanu-Nana Joachim Hoepp GmbH & Co. KG

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark NANA FINK — Earlier EU word mark NANA — No similarity between the goods — Article 8(1)(b) of Regulation (EC) No 207/2009 — Extent of the examination to be carried out by the Board of Appeal — Obligation to rule on the entirety of the action)

Summary — Judgment of the General Court (Fifth Chamber), 6 April 2017

1. EU trade mark — Appeals procedure — Action before the EU judicature — Interpretation of the list of goods for which a trade mark is registered — Question forming part of the factual and legal context before the Board of Appeal — Lawfulness

   (Rules of Procedure of the General Court, Art. 188; Council Regulation No 207/2009, Art. 65(2))

2. EU trade mark — Appeals procedure — Decision on the appeal — Obligation of the Board of Appeal — Scope — Appeal not ruled upon in its entirety — Infringement of an essential procedural requirement — Consequences

   (Council Regulation No 207/2009, Art. 64(1), first sentence)

3. EU trade mark — Definition and acquisition of the EU trade mark — Identification of the goods or services concerned by the trade mark — Obligation on the applicant to specify the products or services covered by his application

   (Commission Regulation No 2868/95, Art. 1, Rule 2(2))

4. 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 — Criteria for assessment

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

5. 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 — Figurative mark NANA FINK and word mark NANA

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

6. 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 — Similarity between the goods or services in question — Criteria for assessment — Complementary nature of the goods and services

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

7. EU trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Criteria

   (Council Regulation No 207/2009)

1.  The purpose of actions brought before the Court pursuant to Article 65(2) of Regulation No 207/2009 on the Community trade mark is to secure a review of the lawfulness of decisions of the Boards of Appeal. In the context of that regulation, Article 76 thereof requires that review to be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal. Moreover, under Article 188 of the Rules of Procedure of the General Court, the pleadings lodged by the parties in proceedings before the Court may not change the subject matter of the proceedings before the Board of Appeal.

   In opposition proceedings, interpretation of the list of goods covered by the earlier mark constitutes a question which was part of the factual and legal context before the Board of Appeal. In order to be able to examine the identity or similarity of the goods at issue, the departments of the Office must always determine which goods are covered by the marks at issue and, in that context, they must, where appropriate, interpret the list of goods for which a mark is registered. An argument concerning the interpretation of the list of goods covered by the earlier mark cannot therefore be regarded as falling outside the scope of the dispute, as brought before the Board of Appeal. The issues which necessarily had to be resolved in order to rule in the opposition proceedings form part of the factual and legal framework before the Board of Appeal.

   (see paras 16, 17, 25, 26)

2.  According to the first sentence of Article 64(1) of Regulation No 207/2009 on the EU trade mark, ‘[f]ollowing the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal’. That obligation must be understood as requiring the Board of Appeal to rule on each of the heads of claim before it in its entirety, either by upholding it, rejecting it as inadmissible or rejecting it on substantive grounds. Since failure to meet that obligation may affect the content of the decision of the Board of Appeal, that obligation represents an essential procedural requirement, infringement of which can be raised by the General Court of its own motion.

   (see para. 37)

3.  Under Rule 2(2) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark, the list of goods and services for which a mark is applied for must be worded in such a way as to indicate clearly the nature of those goods and services.

   It follows that it is for the person requesting registration of a sign as a European Union trade mark to give, in the application, a list of the goods or services in respect of which the registration is requested and to provide, for each of those goods or services, a description clearly indicating their nature.

   That requirement of clarity has, furthermore, been reinforced by the case-law of the Court of Justice, according to which the goods and services for which the protection of a trade mark is sought must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.

   (see paras 43-45)

4.  See the text of the decision.

   (see paras 55, 56)

5.  See the text of the decision.

   (see paras 59, 80, 90-92)

6.  See the text of the decision.

   (see paras 68, 73, 74)

7.  See the text of the decision.

   (see para. 84)